Case 507-cv-00125-DF-CMC Document 194 Filed 08/15/06
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`IN THE UNITED STATES DISTRICT COURT
`OF THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`EPICREALM LICENSING LLC
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`AUTOFLEX LEASING INC et al
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`EPICREALM LICENSING LLC
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`FRANKLIN COVEY CO et aL
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`No 205CV163
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`No 205CV356
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`REPORT AND RECOMMENDATION
`REGARDING CLAIM CONSTRUCTION
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`Pursuant to the provisions of 28 U.S.C 636b1 and
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`and the Amended Order for the
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`Adoption of Local Rules for Assignment of Duties to United States Magistrate Judges the above
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`entitled and numbered cause of action was referred to the undersigned for pretrial purposes Claim
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`construction arguments in cause numbers 205-CV-163 and 205-CV-356 were combined and
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`Defendants submitted joint briefing The Court conducted
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`claim construction hearing on July 13
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`2006 This Report and Recommendation construes certain terms in United States Patent Nos
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`5894554 the 554 Patent and 6415335 the 335 Patent
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`Petitioner IBM – Ex. 1035, p. 1
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`

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`BACKGROUND
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`The 554 Patent
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`issued on April 13 1999 The 335 Patent
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`issued on July
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`2002 and is
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`divisional application of the 554 Patent
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`The 554 Patent and the 335 Patent share
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`common
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`specification.1 The patents generally relate to managing Web sites More particularly the patents
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`relate to managing dynamic Web page generation Col 215-23 The patents distinguish some Web
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`pages as having
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`static nature that remains static until manually modified and other Web pages as
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`being dynamic Web pages which contain content
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`that is generated dynamically by retrieving the
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`necessary requested data and generating the requested Web page dynamically Col 138-55 The
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`patents describe prior art Web servers as handling both static and dynamic Web page requests Col
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`364 Col 437 Figures 2-3 The techniques described in the patents include routing Web request
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`from the Web server to
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`Page server The Page server may than process the request and the Web
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`server is released to process other requests Col 220-35 Col 454 Col 632 In this manner
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`dynamic Web pages may be generated by the Page servers
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`Some of the claim construction disagreements involve common themes For example in
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`general the Plaintiff construes various terms so that Web servers and Page servers do not have to be
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`separate machines while the Defendants seek constructions that would include
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`separate machine
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`concept The Plaintiff also seeks constructions that do not include the concept of Uniform Resource
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`Locators URLs while the Defendants add the term URL to some of the constructions they seek
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`Other conflicting claim construction positions are more specific to individual
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`terms that are in
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`dispute
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`References to the specification will refer to the column and line numbers of the 554 Patent
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`Petitioner IBM – Ex. 1035, p. 2
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`II APPLICABLE LAW
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`It is
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`bedrock principle of patent law that the claims of patent define the invention to
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`which the patentee is entitled the right to exclude Phillips v.A WHCorp 415 F.3d 1303 1312
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`Fed Cir 2005 en banc quotinglnnova/Pure Water Inc
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`Safari WaterFiltration Sys Inc 381
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`F.3d 1111 1115 Fed Cir 2004 In claim construction courts examine the patents intrinsic
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`evidence to define the patented inventions scope See id C.R Bard Inc
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`US Surgical Corp
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`388 F.3d 858 861 Fed Cir 2004 Bell Atl NetworkServs Inc
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`CovadCommcns Group Inc
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`262 F.3d 1258 1267 Fed Cir 2001 This intrinsic evidence includes the claims themselves the
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`specification and the prosecution history See Phillips 415 F.3d at 1314 C.R Bard Inc 388 F.3d
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`at 861 Courts give claim terms their ordinary and accustomed meaning as understood by one of
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`ordinary skill
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`in the art at the time of the invention in the context of the entire patent Phillips 415
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`F.3d at 13 12-13 Alloc Inc
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`Intl Trade Comm
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`342 F.3d 1361 1368 Fed Cir 2003
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`The claims themselves provide substantial guidance in determining the meaning of particular
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`claim terms Phillips 415 F.3d at 1314 First
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`terms context
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`in the asserted claim can be very
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`instructive Id Other asserted or unasserted claims can also aid in determining the claims meaning
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`because claim terms are typically used consistently throughout
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`the patent
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`Id Differences among
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`the claim terms can also assist in understanding
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`terms meaning Id For example when
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`dependent claim adds
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`limitation to an independent claim it
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`is presumed that the independent claim
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`does not include the limitation Id at 13 1415
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`Claims must be read in view of the specification of which they are part Id quoting
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`Markinan
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`Westview Instruments Inc 52 F.3d 967 978 Fed Cir 1995
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`specification
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`is always highly relevant to the claim construction analysis Usually it is dispositive it
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`is the single
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`Petitioner IBM – Ex. 1035, p. 3
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`best guide to the meaning of disputed term Id quoting Vitronics Corp
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`Conceptronic
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`Inc
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`90 F.3d 1576 1582 Fed Cir 1996 Teleflex Inc
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`Ficosa
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`Am Corp 299 F.3d 1313 1325
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`Fed Cir 2002 This is true because
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`patentee may define his own terms give
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`claim term
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`different meaning than the term would otherwise possess or disclaim or disavow the claim scope
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`Phillips 415 F.3d at 1316 In these situations the inventors lexicography governs Id Also the
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`specification may resolve ambiguous claim terms where the ordinary and accustomed meaning of
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`the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained
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`from the words alone Teleflex Inc 299 F.3d at 1325 But although the specification may aid
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`the court
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`in interpreting the meaning of disputed claim language particular embodiments and
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`examples appearing in the specification will not generally be read into the claims Comark
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`Commc ns Inc Harris Corp 156 F.3d 1182 1187 Fed Cir 1998 see also Phillips 415 F.3d
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`at 1323 The prosecution history is another tool to supply the proper context for claim construction
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`because
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`patent applicant may also define
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`term in prosecuting the patent Home Diagnostics Inc
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`Lfescan Inc 381 F.3d 1352 1356 Fed Cir 2004 As in the case of the specification
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`patent
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`applicant may define
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`term in prosecuting
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`patent.
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`Although extrinsic evidence can be useful
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`it
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`is less significant than the intrinsic record in
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`determining the legally operative meaning of claim language Phillips 415 F.3d at 1317 quoting
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`C.R Bard Inc 388 F.3d at 862 Technical dictionaries and treatises may help
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`court understand
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`the underlying technology and the manner in which one skilled in the art might use claim terms but
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`technical dictionaries
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`and treatises may provide definitions that are too broad or may not be
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`indicative of how the term is used in the patent
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`Id at 1318 Similarly expert testimony may aid
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`court in understanding the underlying technology and determining the particular meaning of
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`term
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`Petitioner IBM – Ex. 1035, p. 4
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`in the pertinent
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`field but an experts conclusory unsupported assertions as to
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`terms definition is
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`entirely unhelpful
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`to
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`court Id Generally extrinsic evidence is less reliable than the patent and
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`its prosecution history in determining how to read claim terms Id
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`The patents in suit also contain means-plus-function
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`limitations that require construction
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`Where
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`claim limitation is expressed in means plus function language and does not recite definite
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`structure in support of its function the limitation is subject to 35 U.S.C 112
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`Braun Med Inc
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`Abbott Labs 124 F.3d 1419 1424 Fed Cir 1997 In relevant part 35 U.S.C
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`112
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`mandates that such
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`claim limitation be construed to cover the corresponding structure
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`described in the specification
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`and equivalents
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`thereof
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`Id citing 35 U.S.C
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`112
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`Accordingly when faced with means-plus-function
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`limitations courts must turn to the written
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`description of the patent
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`to find the structure that corresponds to the means recited in the
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`Id
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`construing means-plus-function
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`limitation involves multiple inquiries The first step in
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`construing
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`means-plus-function limitation is
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`determination of the function of the means-plus-
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`function limitation Medtronic Inc
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`Advanced Cardiovascular Sys Inc 248 F.3d 1303 1311
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`Fed Cir 2001 Once
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`court has determined the limitations function the next step is to
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`determine the corresponding structure disclosed in the specification and equivalents thereof Id
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`structure disclosed in the specification is corresponding structure only if
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`the specification or
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`prosecution history clearly links or associates that structure to the function recited in the claim Id
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`Moreover the focus of the corresponding structure inquiry is not merely whether
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`structure is
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`capable of performing the recited function but rather whether the corresponding structure is clearly
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`linked or associated with the
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`function Id
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`Petitioner IBM – Ex. 1035, p. 5
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`III DISCUSSION
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`Disputed Claim Terms
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`Web Page
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`Web page is utilized in asserted claims
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`and 11 of the 554 Patent and
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`and
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`of the 335 Patent
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`The Plaintiff asserts that Web page does not need construction
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`Alternatively if construed the Plaintiff asserts that the proper construction of the term is content
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`displayable through Web browser The Defendants assert that the terms should be construed as
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`an HTML document accessible through URL
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`The Court first notes that
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`the Plaintiffs original briefing expressed concern
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`that
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`the
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`Defendants construction implies that dynamically generated Web pages are not included within the
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`term Web page The Court finds this concern
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`somewhat unfounded
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`and it
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`is noted that the
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`Defendants clearly referred to Web page in their briefing and oral argument as encompassing both
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`static and dynamic Web pages
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`The other assertions by the parties primarilyrevolve around two issues the inclusion of terms
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`HTML and URL in the construction
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`The Plaintiff argues that the term content is utilized in
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`the specification at least twice to describe what is displayed on Web page Col 147-51 Col 723-
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`26 Further the Plaintiff points out that in the Defendants own briefing Web pages are referred to
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`as containing content Defendants Brief at 11-12 The Plaintiff further asserts that the Defendants
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`are also attempting to read in limitations from the specification and that such
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`construction would
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`exclude documents formatted in other formats such as SGML XHTML XML and JPG
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`The Defendants state that HTML is
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`software language and argue that as described within
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`the specification HTML documents are what are sent back as Web pages Col 118-22 Figures
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`Petitioner IBM – Ex. 1035, p. 6
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`and
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`The Defendants also cite Microsoft Press Computer Dictionary definition which states that
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`Web page consists of an HTML file..
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`Defendants Brief at
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`The Defendants further assert
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`that content
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`in the specification refers to information included in Web page and that such content
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`itself does not form Web page
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`The Court notes that
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`the specification
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`does appear
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`to consistently refer to the HTML
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`language and does not mention other software languages However the Defendant does not identify
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`persuasive support within the specification that the invention must be limited to only one type of
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`software language Moreover Defendants have not persuaded the Court that
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`in light of the
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`specification one skilled in the art would assume Web page as referred to in the patents could only
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`be generated with the HTML language Further upon review of the whole specification and claims
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`with respect to Web pages the described concepts are not related to the intricacies of what particular
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`programming languages
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`are used to display Web page but
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`rather merely the higher
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`level
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`differentiation of static pre-existing Web pages verse dynamically generated Web pages In these
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`circumstances
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`the Court finds it
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`improper to incorporate the limitation of HTML within the more
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`general term Web page that is utilized in the claims themselves
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`With regard to the URL concept
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`the Plaintiff asserts that the Defendants definition adds
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`additional complexity to the claim construction as the meaning and scope of accessible through
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`URL could itself require construction
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`Further citing the extrinsic evidence that the Defendants
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`themselves put before the Court the Plaintiff argues that it
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`is known that when Web browser sends
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`request what
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`is actually sent does not match what
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`is commonly known as
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`full URL In oral
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`argument
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`the Plaintiff asserted that the Defendants extrinsic evidence shows URL as http_URL
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`http II host
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`thus requiring four components aprotocolHTTP
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`host
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`Petitioner IBM – Ex. 1035, p. 7
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`port and an absolute path Further the Plaintiffs argue that this same extrinsic evidence shows that
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`request most commonly is structured for example GET pub WWW TheProject.html HTTP
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`1.0 The Plaintiff asserts that this also emphasizes the concern over the ambiguity of the meaning
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`of accessible through URL
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`The Defendants turn to the specification which includes the statement
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`URL is Web
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`address that identifies the Web page and its location on the Web Col 130-33 The Defendants
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`also note the language that states
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`the appropriate Web site receives the URL the Web page
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`corresponding to the requested URL is located
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`Col 133-34 Further the Defendants point to
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`other examples in the specification such as Figure
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`which refer to the Web browser sending the
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`URL request At oral argument the Defendants also stated that what is sent by Web browser does
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`include the URL information
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`The arguments of the parties highlight some of the concerns the Court has with the inclusion
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`of the term URL
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`definition of the meaning of URL within the usage of the patent would further
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`be necessitated
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`as URL is alternatively referred to as what is examined by the Web browser
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`URL request is received by the Web server and URL request can be sent to
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`page server Col
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`413-14 Col 828-32 Col 838-39 The specification does not make clear what is the particular
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`structure and content
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`that is meant by the use of the term URL at each of these stages of the
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`process Again as with the HTML term this is not surprising as the specification and claims as
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`whole do not focus on the particular type of request that is made or the particular structure/content
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`of
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`request as it processed through the system beyond the static and dynamic distinction discussed
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`above Further to add the term accessible to the construction would necessitate
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`further claim
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`construction as to what accessible means As described within the specification Web page is
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`Petitioner IBM – Ex. 1035, p. 8
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`mechanism through which static and dynamic content may be displayed
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`The particular
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`addressing mechanism at each step of the processing of
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`dynamic Web page is not noted in the
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`specification to be
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`requirement or of particular importance to the claimed invention An inclusion
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`of the term URL would improperly incorporate limitations from the specification for the term Web
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`page which has meaning that is adequately described within the full context of the specification.2
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`Thus the Court construes Web page to mean Web content displayable through Web
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`browser
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`Request
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`Request
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`is utilized in asserted claims
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`11 of the 554 Patent and
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`15 and 29 of the
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`335 Patent
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`The Plaintiff asserts that the proper construction of request is
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`message that asks
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`for content The Defendants assert
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`that
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`the term should be construed as
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`message containing
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`URL that asks for Web page specified by the URL
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`The Court first notes that the term request generally appears in the claims in different
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`circumstances
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`In some claims for example claim of the 554 Patent
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`request is first utilized with
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`relation to
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`dynamic Web page generation request and multiple references are then made to said
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`request Such claims also use the term other requests which imply request different from said
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`request Other claims for example claim 15 of the 335 Patent begin with the general use ofa
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`request but
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`later refer to dynamically generating
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`page in response to said request
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`These
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`claims also refer to other requests As noted in the specification
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`request can refer to static Web
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`Additional discussion regarding the inclusion of URL limitations is also provided below with regard to the
`term request
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`Petitioner IBM – Ex. 1035, p. 9
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`pages such as
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`static document or dynamic Web pages such as Web page dynamically generated
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`by an application Col 138-56 Col 416-32
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`Thus in its general use request is not limited to
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`dynamic or static requests It
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`is also noted that both types of claims consistently refer to either Web
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`page generation or page generation
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`The specification uniformly refers to pages in the context
`
`of Web pages Thus it
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`is not unreasonable that in light of the consistent specification one would
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`interpret requests as relating to requests for Web pages
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`The primary point of distinction between the proposed constructions relates to inclusion of
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`URL in the construction of request The specification notes that
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`Web browser allows Web
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`client
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`to request particular Web page from Web site by specifying Uniform Resource Locator
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`UIRL is Web address that identifies the Web page and its location on the Web Col
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`URL
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`129-32
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`The Defendants cites numerous places in the specification text in which URL request
`
`is
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`utilized to refer to what
`
`is requested The Plaintiff asserts that
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`request may be made at multiple
`
`points such as shown in Figure
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`between the Web client and Web server between the Web server
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`and the Dispatcher and between the Dispatcher and the Page servers
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`The Plaintiff
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`further argues
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`that once message is received by Web server
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`full URL is not utilized subsequently such as by
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`Page servers
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`The Defendants counter by noting numerous specification citations to the term URL
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`request
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`including route the URL request to
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`Page server and the dispatcher sends the URL
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`request to an appropriate Page server Col 69-10 Col 838-39 See Defendants Brief at 13-14
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`The Plaintiff responds that there is no teaching in the specification that
`
`page server utilizes URL
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`10
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`Petitioner IBM – Ex. 1035, p. 10
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`Moreover the Plaintiffs assert that it would be illogical
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`for
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`request provided to the page server to
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`utilize URL as such address would refer to the Web server
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`The Court notes that within the claims request is used in context of multiple steps of the
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`page generation process For example within claim
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`request may be provided to Web server
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`while said request
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`is also received by
`
`Page server The specification provides varied and not
`
`always consistent uses of the terms request and URL request As noted above URL request is
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`often utilized However the more general term request is also often utilized Col 21-12 Col
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`218-35 Col 433-53 Col 58-59 Col 620-32 Col 75-6 In at least two of these instances
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`language stating requests or hits is utilized Col 438-39 Col 75-6 Further the Defendants
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`have not shown within the specification that
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`Page server utilizes URL Thus even when URL
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`request is provided in the specification it
`
`is not clear that such request is required to contain URL
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`or is merely request generated from an initial URL provided at Web client To require request
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`to include URL would thus include limitations that the specification does not clearly support and
`
`clearly require
`
`The remaining dispute between the parties relates to the use of content verse Web page
`
`This dispute relates to the underlying meaning of the term Web page as discussed above and thus
`
`does not need to be re-addressed As the Court has noted the context of the patent is uniformly
`
`directed towards Web page requests Under the guidance provided in Phillips it
`
`is appropriate when
`
`viewing the specification and the language of the claims themselves to limit request to Web page
`
`applications Thus the Court construes request to mean
`
`message that asks for Web
`
`page with the term Web page having the construction provided herein
`
`11
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`Petitioner IBM – Ex. 1035, p. 11
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`Page Server
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`Page server is utilized in asserted claims
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`and 9-11 of the 554 Patent and
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`15-16 1922 and 29 of the 335 Patent The Plaintiff asserts that the proper construction of page
`
`server is
`
`processing system operable to receive
`
`request and dynamically generate content
`
`in
`
`response to the request
`
`The Defendants assert
`
`that
`
`the term should be construed as page-
`
`generating software that generates
`
`dynamic Web page on machine separate from the Web server
`
`machine
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`In the claim construction Oral Argument
`
`the Plaintiff agreed to the use of page-
`
`generating software in place of the term
`
`processing system as previous proposed by the
`
`Plaintiff The differences between the parties with regard to the use of content verse Web page
`
`are rooted in the basic dispute over the meaning of Web page as discussed above Both parties
`
`include the concept of dynamic generation in their proposed constructions
`
`In the post oral hearing briefing the parties each acknowledged that the primary dispute
`
`regarding the construction of page server is whether
`
`the Page server has to be on machine
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`separate from the Web server As discussed below the Court agrees with the Plaintiff with regard
`
`to this point of dispute
`
`Each party points to the specification to support their asserted position The Plaintiff asserts
`
`that the specification includes statements that indicate that the Page server could operate on the same
`
`machine as the Web server
`
`In particular the Plaintiffs have pointed to passages which state
`
`FIG illustrates
`typical computer system 100 in which the present
`operates Col 266-67
`
`invention
`
`The preferred embodiment of the present
`invention is implemented as
`module which may be executed on
`computer system such as computer system 100
`conventional manner Col 355-58
`in
`
`software
`
`12
`
`Petitioner IBM – Ex. 1035, p. 12
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`Figure
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`illustrates
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`computer system having
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`processor bus memory and mass storage Further
`
`it
`
`is stated that the preferred embodiment of the present
`
`invention may be implemented on
`
`personal computer or alternatively
`
`workstation Col 267-Col 35 The Plaintiff asserts that this
`
`language is consistent with the specification as whole by asserting that the specification describes
`
`partitioned software architecture in which in some embodiments the software modules may all
`
`reside on the same machine and in other embodiments the software modules may reside on different
`
`computers
`
`The Plaintiff also points to
`
`passage that describes an embodiment
`
`that does not have the
`
`advantage of off-loading the processing of Web requests from the Web server machine to
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`separate machine Col 526-36 However
`
`the Court notes that
`
`this passage makes specific
`
`reference to the division between Web server and Dispatcher
`
`and it
`
`is not clear in this passage
`
`alone that the Page server is also included in this use of
`
`single machine
`
`The Defendants argue that the specification describes
`
`distinction over the prior art that
`
`amounts to an explicit characterization of the invention that disclaims the prior art See SciMedLfe
`
`Sys
`
`Advanced Cardiovascular Sys 242 F.2d 1337 1343 Fed Cir 2001
`
`In particular
`
`the
`
`Defendants point to
`
`passage of the specification that describes the multi-threading techniques of
`
`prior art Web servers Col 432-53 This passage concludes with
`
`claimed invention addresses
`
`this need by utilizing
`
`partitioned architecture to facilitate the creation and management of custom
`
`Web sites and servers The Defendants assert that this clearly demonstrates that the purpose of the
`
`invention was to partition the various modules on separate machines As to the passages cited by
`
`the Plaintiff
`
`the Defendants assert
`
`those passages do not describe the entirety of the claimed
`
`invention The Plaintiff asserts that the passage cited by the Defendants is directed toward the Web
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`13
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`Petitioner IBM – Ex. 1035, p. 13
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`site management need recited in the passage and this need is addressed by
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`partitioned
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`architecture
`
`The parties have thus each pointed to somewhat conflicting passages of the specification to
`
`support
`
`their positions
`
`The passages cited by the Plaintiff establish that
`
`there is not
`
`clear
`
`disavowal within the specification of the use of
`
`partitioned software architecture on
`
`single
`
`machine The Defendants do correctly point
`
`to cases which stand for the proposition that when the
`
`specification makes clear that the invention does not include
`
`particular feature than that feature is
`
`deemed to be outside of the reach of the claims of the patent Defendants
`
`Joint Sur-Reply
`
`However
`
`in the specification before this Court the specification does not make clear that the
`
`invention must only be operated on separate machines
`
`The Court construes page server to be page-generating software that generates
`dynamic Web page
`
`Web Server
`
`Web Server is utilized in asserted claims
`
`and 11 of the 554 Patent and 1-2 of the 335
`
`Patent The Plaintiff asserts that the proper construction of Web server is
`
`processing system
`
`capable of processing an HTTP request and producing
`
`response
`
`to such
`
`request
`
`The
`
`Defendants assert that the terms should be construed as machine running Web server executable
`
`capable of storing locating and returning Web pages in response to Web client requests In the
`
`claim construction Oral Argument
`
`the Plaintiff stated that it would agree to language including
`
`software in place of the Plaintiffs originally proposed system language similarto the Plaintiffs
`
`agreement with regard to page server
`
`14
`
`Petitioner IBM – Ex. 1035, p. 14
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`

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`Page 15 of 34 PagelD
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`3980
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`The focus point of the dispute between the parties is whether the term Web server requires
`
`machine or whether the term may merely represent software or
`
`combination of the two Both the
`
`Plaintiff and Defendants cite conflicting extrinsic evidence to support their positions in the form of
`
`dictionaries industry guides and protocols Some of the Plaintiffs extrinsic evidence includes
`
`citations to extrinsic evidence first brought before the Court by the Defendants
`
`The conflicting
`
`extrinsic evidence presented by the parties fits the rationale presented in Phillips regarding the
`
`cautions that should be considered relating to such evidence
`
`Looking to the specification the Plaintiff points to passages in which Web server is not
`
`used to describe machine In particular the Plaintiff points to the statement in the specification
`
`that
`
`The preferred embodiment of the present
`invention is implemented as
`module which may be executed on
`computer system such as computer system 100
`conventional manner Col 355-58
`in
`
`software
`
`The Plaintiff also highlights the following passage
`
`This embodiment
`
`is appropriate for Web servers such as NetsiteTM from Netscape
`number of public domain Web servers such as
`that support such extensions
`NCSATM from the National Center
`for Supercomputing Applications at
`the
`University of Illinois Urbana-Champaign however do not provide support for this
`400 is an
`type of extension Thus in an alternate embodiment
`Interceptor
`via an intermediate program to Web server 201
`independent module connected
`simple CGI application program that connects
`This intermediate program can be
`Interceptor 400 to Web server 201 Alternate intermediate programs the perform the
`same functionality can also be implemented Col 463-Col 57
`
`The Defendants counter that the specification uses the terms Web server Web server
`
`executable and Web server machine and that the proper interpretation
`
`is that the machine is
`
`referred to as Web server machine the software is referred to as the Web server executable and
`
`15
`
`Petitioner IBM – Ex. 1035, p. 15
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`

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`Page 16 of 34 PagelD
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`3981
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`the combination is referred to as Web server To support this argument the Defendants cite to
`
`various passages and figures in the specification Figures 2-4 Col 439-4 Col 459-62 Col 57-
`
`36
`
`While the Defendants may be correct that Web server may be utilized at times as indicating
`
`combination of machine and software the specification clearly does not require the term Web
`
`server to include machine The passages of the specification noted above by the Plaintiff make
`
`clear that the Web server is contemplated to be at least in one embodiment software It
`
`is also noted
`
`that in general in other passages of the specification the term Web server machine is more often
`
`used when describing the machine component and Web server to describe merely the software
`
`component Thus for example it
`
`is noted that the Web servers process each of these requests on
`
`single machine namely the Web server machine Interceptor 400 resides on the Web server
`
`machine as an extension to Web server 201 and the Dispatcher can however also reside on the
`
`same machine as the Web server Col 439-42 Col 461-62 Col 520-21 Passages such as these
`
`imply utilization of the term Web server as the software module as opposed to the combination
`
`of both the machine and software Thus some usage of Web server implies just software and at
`
`other times implies
`
`combination of software and hardware
`
`The Court construes Web server to be software or machine having software that
`receives Web page requests and returns Web pages in response to the requests
`
`HTTP-complaint device
`
`HTTP-complaint device is utilized in asserted claims 15-16 and 19 of the 335 Patent The
`
`Plaintiff asserts that HTTP-complaint
`
`device does not need construction
`
`Alternatively
`
`if
`
`16
`
`Petitioner IBM – Ex. 1035, p. 16
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`

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`Page 17 of 34 PagelD
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`construed the Plaintiff asserts that the proper construction is
`
`device that understands HTTP and
`
`whose behavior is affected by an HTTP request The Defendants assert that the terms should be
`
`construed as machine running an executable capable of storing locating and returning Web pages
`
`in response to Web client requests
`
`The Defendants assert
`
`the same constmction
`
`for the terms Web server and HTTP
`
`complaint device The Defendants
`
`construction is based upon their assertion that the term does
`
`not appear in the specification and that the specification only discloses Web server for performing
`
`the function described in the language surrounding the use ofHTTP-compliant
`
`device As such
`
`the Defendants assert that HTTP-compliant device should be construed the same as Web server
`
`as that
`
`is the only corresponding device described and enabled in the specification
`
`To hold
`
`otherwise assert
`
`the Defendants would result in claim that is overbroad and invalid for not being
`
`described and enabled
`
`Regarding the maxim that claims should be construed to be valid in Phillips the Federal
`
`Circuit guidance
`
`states that this maxim is limited to cases in which the court concludes after
`
`applying all the available tools of claim construction that the claim is still ambiguous Phillips
`
`415 F.3d at 1327 The Court does not find that in light of the specification the term in question is
`
`ambiguous to one skilled in the art Thus the Defendants validity concerns should be more properly
`
`addressed with regard to validity motions
`
`The Defendants also assert that the more general construction proposed by the Plaintiff would
`
`be so broad as to even encompass Web client However the claim language itself makes clear that
`
`this concern is not valid as there is substantial
`
`functional
`
`language regarding what happens at the
`
`HTTP-compliant device including the transferring of
`
`request from the HTTP-compliant device to
`
`17
`
`Petitioner IBM – Ex. 1035, p. 17
`
`

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`Page 18 of 34 PagelD
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`3983
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`page server intercepting the request at the HTTP-compliant device and concurrently processing
`
`other requests at the HTTP-compliant
`
`device
`
`The Defendants do however
`
`raise valid concerns over
`
`the