Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 1 of 47 PageID #: 4059
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`PAPST LICENSING GMBH & CO., K.G.
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`CIVIL ACTION NO. 6:15-CV-01095-RWS
`
`(LEAD CASE)
`
`JURY TRIAL DEMANDED
`
`DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
`
`Papst Licensing GmbH & Co., KG.
`Petitioner - Apple, Inc.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2016-01843
`EXH. 2003
`
`1
`
`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 2 of 47 PageID #: 4060
`
`TABLE OF CONTENTS
`
`I.
`
`3.
`
`ARGUMENT ......................................................................................................................1
`The Means-Plus-Function Claims, ..........................................................................1
`A.
`1.
`Relevant Law...............................................................................................1
`2.
`The Connecting Device Terms....................................................................2
`a.
`The Connecting Device Terms Have No Structural
`Meaning.......................................................................................................5
`b.
`The Connecting Device Terms Are Limited To The
`Structure Disclosed In The Specification ....................................................6
`The Command Interpreter Terms ................................................................9
`a.
`Both the Intrinsic and the Extrinsic Evidence Shows the
`Command Interpreter Terms Have No Structural Meaning. .....................10
`b.
`The Command Interpreter Terms Are Indefinite Because
`There Is No Corresponding Structure Disclosed.......................................12
`Multi-Purpose Interface.........................................................................................15
`The Send a Parameter/Signal Terms .....................................................................19
`The Automatic Terms............................................................................................26
`1.
`Lenovo & Motorola Proposal: The Court Can Solve the Dispute
`and Preserve the Meaning of The Claims by Construing Only the
`Terms “Automatic” and “Automatically” .................................................26
`Defendants Samsung, LG, Apple, ZTE, and Huawei................................30
`2.
`Data Transmit/Receive Device..............................................................................32
`Simulating a Virtual File System to the Host........................................................33
`The Customary Terms ...........................................................................................36
`The User-Loaded Terms........................................................................................38
`The Input/Output Port............................................................................................39
`The Analog Acquisition Channel Terms...............................................................40
`
`B.
`C.
`D.
`
`E.
`F.
`G.
`H.
`I.
`J.
`
`-i-
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`2
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 3 of 47 PageID #: 4061
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Alfred E. Mann Found. for Sci. Research v. Cochlear Corp.,
`No. 2015-1580, 2016 WL 6803052 (Fed. Cir. Nov. 17, 2016)...........................................13, 14
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) .................................................................................................14
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .................................................................................................16
`Cellular Comm’ns Equip. LLC v. Samsung Elect. Co.,
`2016 WL 1237429 (E.D. Tex. Mar. 29, 2016) ............................................................................6
`Chrimar Sys. Inc. v. Alcatel-Lucent USA Inc.,
`2016 WL 1228767 (E.D.Tex. Mar. 28, 2016) ...........................................................................37
`Core Wireless Licensing v. LG Elec., Inc., et al.,
`2015 WL 6746910 (E.D. Tex., Nov. 04, 2015)...........................................................................2
`Fenner Investments, Ltd. v. Cellco Partnership,
`778 F.3d 1320 (Fed. Cir. 2015) .................................................................................................32
`In re Papst Licensing Digital Camera Patent Litigation,
`778 F.3d 1255 (Fed. Cir. 2015) (No. 2014-1110) .........................................................24, 34, 37
`Intellectual Ventures II, LLC v. Bitco,
`6:15-cv-60, 2016 WL 125594 (E.D. Tex., Jan. 11, 2016)...........................................................6
`Media Rights Techs., Inc. v. Capital One Finan. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015) ...................................................................................................2
`Microsoft Corp. v. Multi-Tech Systems,
`357 F.3d 1340 (Fed. Cir. 2004) ...........................................................................................23, 32
`Muniauction, Inc. v. Thomson Corp.,
`532 F.3d 1318 (Fed.Cir. 2008) ..................................................................................................37
`Omega Engineering, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ...........................................................................................20, 23
`PC Connector Solutions LLC v. SmartDisk Corp.,
`406 F.3d 1359 (Fed.Cir. 2005) ..................................................................................................37
`SmartPhone Techs. LLC v. ZTE Corp.,
`No. 6:12-CV-350-LED-JDL Mem. Opin. & Order of April 22, 2014......................................31
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362, 1365 (Fed. Cir. 2012) .......................................................................................16
`Triton Tech of Tex., LLC v. Nintendo of Am., Inc.,
`753 F.3d 1375 (Fed. Cir. 2014) ...........................................................................................13, 15
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ...................................................................................................20
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ..........................................................................................passim
`Statutes
`
`35 U.S.C. §112(2)............................................................................................................................2
`
`-ii-
`
`3
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 4 of 47 PageID #: 4062
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`In accordance with the Court’s Second Amended Docket Control Order (Dkt. No. 154),
`
`Defendants Apple Inc., Lenovo (United States) Inc. (“Lenovo”); Motorola Mobility LLC
`
`(“Motorola”); LG Electronics, Inc. LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm U.S.A., Inc., (“LG”); Huawei Technologies Co., Ltd. and Huawei Technologies
`
`USA, Inc. (“Huawei”); Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(“Samsung”); and ZTE (USA) Inc. (“ZTE”) (collectively “Defendants”) file this Responsive
`
`Claim Construction Brief. Defendants’ proposals, as set forth below, are consistent with the
`
`claim language and intrinsic evidence, and the Federal Circuit’s decision relating to two of the
`
`five asserted patents. Defendants’ proposals account for the numerous representations that the
`
`patentee made to the Patent Office during the prosecution of the asserted patents.
`
`I.
`
`ARGUMENT
`
`A.
`
`The Means-Plus-Function Claims1,2
`
`1.
`
`Relevant Law
`
`Although a presumption exists that § 112(6) does not apply to terms lacking the word
`
`“means,” that “presumption can be overcome and § 112, para. 6 will apply if the challenger
`
`demonstrates that the claim term fails to recite sufficiently definite structure or else recites
`
`function without reciting sufficient structure for performing that function.” Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339, 1349 (internal quotes and citations omitted). Therefore, the first
`
`step in analyzing a claim term lacking the word “means,” is whether the term “fails to recite
`
`sufficiently definite structure” or recites function in the absence of structure for performing that
`
`function. Id. The Williamson court explained that certain “[g]eneric terms such as ‘mechanism,’
`
`1 The five asserted patents share a common specification (hereinafter, the “specification”).
`2 For purposes of this section, none of the Defendants agree that Papst’s proposed construction is
`correct. Only Defendants Samsung, Lenovo, and Motorola affirmatively argue that § 112(6) is
`applicable. The other Defendants abstain from the § 112(6) argument but, contrary to Papst’s
`assertions, do not agree that Papst’s proposal is “unopposed.”
`-1-
`
`4
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 5 of 47 PageID #: 4063
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`‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may
`
`be used in a claim in a manner that is tantamount to using the word ‘means’ because they
`
`‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para.
`
`6.” Id. at 1350. Furthermore, adding a modifier to one of these nonce words, without more, does
`
`not connote identifiable structure. See Media Rights Techs., Inc. v. Capital One Finan. Corp., 800
`
`F.3d 1366, 1373 (Fed. Cir. 2015); see also Tracbeam, LLC v. T-Mobile US, Inc., 6:14-CV-678-
`
`RWS, 2016 WL 3751624, at *6 (E.D. Tex. July 14, 2016) (finding § 112(6) applicable where
`
`the plaintiff’s proposed construction “implicitly admits the[] terms are purely functional”).
`
`The Court may also consider “whether the intrinsic record redefined or disclaimed the
`
`plain meaning of [the term] in a way that impart[s] sufficient structure.” See Core Wireless
`
`Licensing v. LG Elec., Inc., et al., 2015 WL 6746910 at *8 (E.D. Tex., Nov. 04, 2015).
`
`However, a patentee may not avoid § 112(6) treatment “by arguing that the specification recites
`
`sufficient structure” or describes how the claimed feature “is connected to and interacts with the
`
`other components of the system, what processes the [feature in issue] performs, and what
`
`structural subcomponents might comprise [feature in issue].” Media Rights, 800 F.3d at 1373
`
`(2015). If the term at issue, read in light of the intrinsic record, fails to connote sufficient
`
`structure, §112(6) applies; the inquiry then turns to “whether the specification discloses
`
`sufficient structure that corresponds to the claimed function.” Williamson, 792 F.3d at 1351. In
`
`the event that the patent fails to disclose structure corresponding to the claimed function, then the
`
`claim is invalid for indefiniteness under 35 U.S.C. §112(2). See id. at 1354.
`
`2.
`
`The Connecting Device Terms
`
`Term Dispute
`
`Plaintiff’s Construction
`
`“a first connecting device for
`interfacing the host device with
`the interface device via the multi-
`
`“a component or group of
`components for interfacing the
`interface device with the host
`
`Defendants Samsung, Lenovo,
`and Motorola Construction
`Subject to §112(6)
`Function: [Agreed] interfacing the host
`device with the interface device via the
`
`-2-
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`5
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 6 of 47 PageID #: 4064
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`Term Dispute
`
`Plaintiff’s Construction
`
`the host
`
`interface of
`
`purpose
`device”
`[’399 Patent, claims 1, 11; ’449
`Patent, claims 1, 17]
`“interfacing of the host device
`with a first connecting device of
`the interface device via the multi-
`purpose interface of the host
`device”
`[’399 Patent, claims 14]
`“a second connecting device for
`interfacing the interface device
`with the data transmit/receive
`device”
`[’399 Patent, claims 1, 11; ’449
`Patent, claims 1, 17]
`data
`the
`“interfacing
`of
`transmit/receive device with a
`second connecting device of the
`interface device”
`[’399 Patent, claims 14]
`
`device”
`If M+F, alternatively:
`Function: [Agreed]
`Structure: Fig. 1 and associated
`text
`
`“a component or group of
`components for interfacing the
`interface device with the data
`transmit/receive device”
`If M+F, alternatively:
`Function: [Agreed]
`Structure: Fig. 1 and associated
`text (’399 and ’449 Patents)
`
`Defendants Samsung, Lenovo,
`and Motorola Construction
`multi-purpose interface of the host
`device.
`Structure: 12xx structures as described
`at ’399, col. 9:30-48 and Fig. 2.
`
`Subject to §112(6)
`Function: [Agreed] interfacing the
`interface device with the data
`transmit/receive device.
`Structure: 15xx structures as described
`at ’399, col. 9:49-64 and Fig. 2.
`
`The Connecting Device Terms meet the standard for applying § 112(6) treatment under
`
`Williamson because they have no structural meaning and the specification does not redefine the
`
`meaning of “connecting device” in a way that connotes structure—both facts are admitted by
`
`both Papst and its expert. For years Papst argued that the Connecting Device Terms were
`
`purely functional terms.3 Now, faced with the Federal Circuit’s subsequent Williamson decision,
`
`Papst reverses course and attempts to argue that the Connecting Device Terms somehow convey
`
`structural meaning and are not subject to the requirements of § 112(6). Those arguments fail at
`
`every turn. “Device” is a well-established “nonce” word that reflects nothing more than a verbal
`
`
`3 Papst relied on this exaction position in persuading the Federal Circuit to vacate the MDL
`Court’s claim construction order when it asserted that, “the plain meaning of ‘device’ [in the
`“second connecting device”] … only signifies something ‘designed to serve a purpose or
`perform a function.” Ex. 16, Br. for Appellant Papst at 65. Remarkably, Papst now asserts that
`the Federal Circuit opinion somehow instructs this Court that it cannot limit the “connecting
`device” terms to “an embodiment.” See Dkt. 175 (“Papst Br.”) at 5. Contrary to Papst’s
`assertion the Federal Circuit was merely applying general rules about whether embodiments
`serve to limit claim terms that are not means-plus-function terms. 778 F.3d at 1263-64.
`
`-3-
`
`6
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 7 of 47 PageID #: 4065
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`construct that is tantamount to using the word “means.” Williamson, 792 F.3d at 1350. Papst
`
`proposed construction is “a component or group of components for interfacing the interface
`
`device with the host device.” Papst’s proposal merely replaces the well-established nonce word
`
`“device” with another well-established nonce word “component” and removes the modifier
`
`“connecting.” See MPEP § 2181(b). This creates an entirely new clause, which itself is claimed
`
`in terms of means-plus-function. Thus, the plain language of the Connecting Device Terms
`
`indicates that § 112(6), even as defined by Papst, should apply.
`
`It is also undisputed that nothing in the specification or prosecution would inform one of
`
`skill in the art about the structural nature of the “connecting device” term or otherwise impart
`
`structure to it. As Dr. Perry opines, one of ordinary skill in the art would not understand the
`
`specification to redefine the terms “device” or “connecting device” in a way that imparts
`
`structure to the terms. See, e.g., Ex. 1, Dec. 6, 2016 Decl. of Dewayne E. Perry, Ph.D. (“Perry
`
`Decl.”) ¶¶ 38-39.4 Dr. Fernald asserts that the word “device” is used broadly without imparting a
`
`specific structural definition to “connecting device.” See Ex. 2, Dkt. 175-8, Decl. in supp. of
`
`Papst’s Br. (“Fernald Decl.”) ¶ 35 (noting that the inventor intended “connecting device” to be
`
`broadly understood and “[i]f the Inventor’s intent was to narrow the scope of the claims which
`
`recite “connecting device,” e.g. to a specific connector type or family, the Inventor could have
`
`chosen an appropriate and more narrow term.”); Ex. 4, Fernald Tr. at 36:22-37:5 (admitting that
`
`the inventor “used the term ‘device’ broadly across the specification). Moreover, Papst admits
`
`that “’connecting device’ plainly describes the function is performs ….” Papst Br. at 9.
`
`Adding the modifier “connecting”—which does no more than parrot the claimed
`
`function— connotes no definite structure. Perry Decl. ¶ 38. As a result, § 112(6) applies and the
`
`
`4 All exhibits herein are attached to the Declaration of Jonathan L. Hardt.
`-4-
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`7
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 8 of 47 PageID #: 4066
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`Court should adopt the Defendants’ proposed construction because it is supported by the
`
`specification and is the only proposed construction that avoids a “black box” with no structural
`
`limitation on the claimed function.
`
`a.
`
`The Connecting Device Terms Have No Structural Meaning
`
`Dr. Fernald admits that the specific hardware (i.e., the components) needed to comprise
`
`the connecting devices is both “flexible” and “non-essential,” and depends on the devices that
`
`will be connected together. See, e.g., Fernald Tr. at 31:2-6; 34:13-35:7. He admits the specific
`
`components comprising the connecting devices “could vary depending upon . . . design choices”
`
`because there are “usually multiple ways of solving [the] problems” of connecting devices
`
`together. See id. at 35:4-7. Dr. Fernald admits that to impart structural meaning to the term
`
`“connecting device,” additional details, not found in the specification or claims, are needed
`
`because “there is not one specific way” of forming a connecting device “that is essential to
`
`meeting the remaining parts of the claim.” Id. at 35:13-15; see also id. at 31:2-6, 36:9-16.
`
`Dr. Fernald’s admissions are the logical result of his definition of “connecting device”
`
`and the functional nature of Papst’s proposed constructions for the Connecting Device Terms.
`
`He admits that he defines “connecting device” in functional terms,5 and he confirms that Papst’s
`
`constructions are the result of merging the functions carried out by the Connecting Device Terms
`
`with the phrase “component or group of components.”6 This leads Dr. Fernald to conclude that
`
`the Connecting Device Terms are not limited to any specific type or family of connectors. See
`
`Fernald Tr. at 39:6-15;7 see also Perry Decl. ¶¶ 40-41.
`
`
`5 Dr. Fernald confirmed that the portion of his definition, after the word “for,” merely recites the
`function carried out by the connecting device. See id. at 29:21-30:25.
`6 Dr. Fernald also admits that the function of the connecting devices and the functional
`component of Papst’s proposed construction are the same. See id. at 54:7-56:10.
`7 “Q. Is it your opinion that the term ‘connecting device’ is not limited to a specific connector
`-5-
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`8
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 9 of 47 PageID #: 4067
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`Courts in this District have found §112(6) to be applicable in similar circumstances in
`
`which the terms at issue are merely “verbal constructs” and are not limited to a particular class of
`
`structures. See, e.g., Cellular Comm’ns Equip. LLC v. Samsung Elect. Co., 2016 WL 1237429,
`
`at *8 (E.D. Tex. Mar. 29, 2016) (“disclosure that the controlling entity ‘may be’ a dedicated
`
`software agent or a Digital Rights Management (DRM) agent . . . does not demonstrate that the
`
`term ‘controlling entity’ refers to any particular class of structures.”); Intellectual Ventures II,
`
`LLC v. Bitco, 6:15-cv-60, 2016 WL 125594 at *26 (E.D. Tex., Jan. 11, 2016) (finding the term
`
`“encryption/decryption module” was not limited beyond the function identified in the
`
`specification); see also Williamson, 792 F.3d at 1350 (“Generic terms such as ‘mechanism,’
`
`‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs.”).
`
`Here, the “Connecting Device Terms” fail to “recite sufficiently definite structure,” and as such §
`
`112(6) applies. See Williamson, 792 F.3d at 1349.
`
`b.
`
`The Connecting Device Terms Are Limited To The Structure
`Disclosed In The Specification
`
`The parties agree that the claimed function of the “first connecting device” is “interfacing
`
`the host device with the interface device via the multi-purpose interface of the host device” and
`
`that the claimed function of the “second connecting device” is “interfacing the interface device
`
`with the data transmit/receive device.” The corresponding structure in the specification must
`
`therefore perform these functions. See Williamson, 792 F.3d at 1351-52.
`
`Figure 2 of the patents shows the corresponding structure for the first connecting device
`
`(yellow highlighting) and the second connecting device (pink highlighting):
`
`
`type? A. Yes. Q. Is it your opinion that the term ‘connecting device’ is not limited to a specific
`connector family? [] A. Yes, that's correct.”
`
`-6-
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`9
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 10 of 47 PageID #: 4068
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`In describing Fig. 2, the specification provides specific detail about the structure of the
`
`two connecting devices:
`
`the first connecting device 12 of FIG. 1 contains the following components: an
`SCSI interface 1220 and a 50-pin SCSI connector 1240 . . . an EPP (enhanced
`parallel port) [1260] . . .connected to a 25-pin D-shell connector 1280 . . . a 25-pin
`connector 1282 which permits the attached of 8 digital outputs and 8 digital inputs
`1284 .
`
`* * *
`
`the second connecting device comprises 8 BNC inputs with the calibration relay
`1505, a block 1510 with 8 device amplifiers with an overvoltage protection of ±75 V,
`this block being connected in turn to sample/hold (S&H) circuits 1515. …. Each
`sample/hold circuit is connected to a corresponding input of an 8-channel multiplexer
`1520 which feeds its output signals via a programmable amplifier 1525 into an
`analog/digital converter (ADC) with 12 bit and 1.25 MHz 1530 and to the DSP 1300.
`The ADC 1530 is controlled by means of a 20-bit timer 1535, as known by persons
`skilled in the art. The programmable amplifier 1525 and the 8-channel multiplexer
`1520 are controlled via an amplifier channel selection circuit 1540 which is in turn
`controlled by the DSP 1300.
`
`’399 patent, col. 9:30-64 (emphasis added).
`
`These disclosures constitute the only structure identified in the specification for either
`
`“connecting device.” The 12xx and 15xx structures, corresponding to the first connecting device
`
`12 and second connecting device 15 of Fig. 1 respectively, are necessary to perform the claimed
`
`“interfacing” functions. See Perry Decl. ¶¶ 48-50, 52-54. The “first connecting device” requires
`
`-7-
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`10
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 11 of 47 PageID #: 4069
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`any one of the three pairs of structures shown in Fig. 2 described in the specification. See ’399
`
`patent, col. 9:30-48 ((i) SCSI interface 1220/SCSI connector 1240; (ii) EPP 1260/connector
`
`1280; and (iii) digital outputs and inputs 1284/connector 1282)). The only disclosed structure for
`
`the “second connecting device” requires all the 15xx structures depicted in Fig. 2. See ’399
`
`patent, col. 9:49-64. Remarkably, Papst asserts that the corresponding structure is simply the
`
`black boxes found in Figure 1. See Papst Br. at 12.
`
`Although Papst asserts that its proposed structure is “limited to only what is necessary to
`
`perform the function,” it is in fact devoid of any structure whatsoever. In fact, Papst’s expert
`
`admits that Fig. 1 and its description do not convey any structure and that the exact structure of
`
`boxes 12 and 15 will vary based on the design choices. See Fernald Tr. at 59:21-24; see also id.
`
`at 61:9-25, 70:24-71:12.
`
`These admissions acknowledge the fact that Papst’s proposed structure is nothing more
`
`than a black box that can change to fit any device capable of performing the function of the
`
`claim. Such a construction is exactly the type of functional claiming that Congress and the
`
`Williamson decision prevent. In contrast, Defendants’ proposed structure actually identifies
`
`structure performing the claimed function and is clearly supported by the specification. The
`
`Court should therefore adopt Defendants’ construction for the two “first connecting device”
`
`-8-
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`11
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`

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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 12 of 47 PageID #: 4070
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`terms and find the structure corresponding to the agreed function is the “12xx structures as
`
`described at ’399 patent, col. 9:30-48 and Fig. 2,” and the structure corresponding to the agreed
`
`function for the two “second connecting device” terms is the “15xx structures as described at
`
`’399 patent, col. 9:49-64 and Fig. 2.”
`
`3.
`
`The Command Interpreter Terms
`
`Term Dispute
`
`“first command
`interpreter”
`[’399 patent, claims 1,
`11]
`
`Plaintiff’s
`Construction
`“a program that receives a
`command and executes some
`function
`based
`on
`that
`command”
`If M+F, alternatively:
`Function: [Agreed]
`Structure: ’399 Patent Fig.
`1; 6:19-26, 6:48-55
`
`“second command
`interpreter” [’399 patent,
`claims 1, 11]
`
`“a program that receives a
`command and executes some
`function
`based
`on
`that
`command”
`If M+F, alternatively:
`Function: [Agreed]
`Structure: ’399 Patent Fig.
`1; 6:19-26, 6:48-55
`
`Defendants Samsung, Lenovo, and
`Motorola Construction
`Subject to §112(6)
`Function: [Agreed] when receiving an inquiry
`from the host device as to a type of a device
`attached to the multi-purpose interface of the host
`device, sends a signal, regardless of the type of the
`data transmit/receive device attached to the second
`connecting device of the interface device, to the
`host device which signals to the host device that it
`is an input/output device customary in a host
`device, whereupon the host device communicates
`with the interface device by means of the [driver
`for the input/output device customary in a host
`device] [specific driver for the multi-purpose
`interface].
`Structure: No algorithm, source code, or flow
`chart is disclosed for performing the recited
`function, therefore the term is indefinite.
`Subject to §112(6)
`Function: [Agreed]
`interpret a data request
`command from the host device to the type of
`input/output device signaled by the first command
`interpreter as a data
`transfer command for
`initiating a transfer of the digital data to the host
`device.
`Structure: No algorithm, source code, or flow
`chart is disclosed for performing the recited
`function, therefore the term is indefinite.
`
`Claims 1 and 11 of the ’399 patent include the related terms “first command interpreter”
`
`and “second command interpreter” (collectively, “Command Interpreter Terms”). For the
`
`reasons set forth below, the Command Interpreter Terms should be construed under § 112(6)
`
`and, as such, should be found indefinite for failure to disclose structure for the claimed function.
`
`-9-
`
`12
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 13 of 47 PageID #: 4071
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`a.
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`Both the Intrinsic and the Extrinsic Evidence Shows the Command
`Interpreter Terms Have No Structural Meaning.
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`The term “command interpreter,” as used in the Command Interpreter Terms, is purely
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`functional in nature and does not have a “sufficiently definite meaning as the name for
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`structure.” See Williamson, 792 F.3d at 1349. This is borne out by Papst’s own construction for
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`this term: “a program that receives a command and executes some function based on the
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`command.” Indeed, Papst asks the Court to construe the Command Interpreter Terms identically
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`using its same functional definition.
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`Because of the purely functional nature of the term “command interpreter,” it is not
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`surprising that any of the experts in this case, or in the MDL proceeding, can provide a
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`sufficiently detailed meaning for “command interpreter” as the name for structure. Dr. Fernald,
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`Papst’s expert before this Court, simply invokes Papst’s construction as the meaning for the term
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`“command interpreter,” but concedes that a “program” is another word for software, and that
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`Papst’s construction consists of nothing more than the generic functional steps performed by the
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`software’s algorithm.8 Papst’s MDL expert, Mr. Robert Zeidman, on the other hand, testified
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`that command interpreters can constitute “hardware or software or some combination.”9 Neither
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`Dr. Fernald nor Mr. Zeidman could describe with any specificity the details of the structure for
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`the claimed “command interpreter.” Indeed, when Dr. Fernald was confronted with a dictionary
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`definition from his own declaration that provided a narrowly tailored definition of the term
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`“command interpreter,” he testified that any such definition would be inapplicable to the claim
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`terms at issue because, in his words, the definition “is far too narrow.” Fernald Tr. at 85:12-20.
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`In Dr. Fernald’s opinion, any program carrying out the generic functions in Papst’s
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`8 Fernald Decl. ¶¶ 42, 45; see also Fernald Tr. at 73:4-15.
`9 See Ex. 5, June 28, 2016, Zeidman Tr. at 83:20-84:3; see also Ex. 6, Zeidman Supp. Decl. (Dkt.
`No. 634-1) at ¶¶6, 11-16.
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 14 of 47 PageID #: 4072
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`proposed construction could be a “command interpreter,” even though the specific attributes of
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`the program will vary depending on multiple unknown design features including at least, the
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`operating system employed, the programming language used, and the algorithm needed to carry
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`out the function. See, e.g., Fernald Tr. at 89:5-15; 81:16-23; 82:12-23; 81:2-9; and 78:23-79:5.
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`Dr. Perry agrees and therefore opines that the term “command interpreter” describes only a
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`functional concept that can be carried out in a variety ways, depending on the context. Perry
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`Decl. ¶¶ 63-64. “Command interpreter” does not connote structure of any kind to one of skill in
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`the art. Perry Decl. ¶ 60.
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`Additionally, one of ordinary skill in the art would not understand the claim language, the
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`specification or the prosecution history to impart structure to the term “command interpreter.”
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`Perry Decl. ¶¶ 61-64; see also Williamson, 792 F.3d at 1351. The only reference in the
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`specification to the Command Interpreter Terms occurs in column 6. See ’399 patent, col. 6:48-
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`67; cf. id. at 6:3-26. But as Dr. Perry explains, these disclosures do nothing more than parrot the
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`agreed functions found in the Command Interpreter Terms. Perry Decl. ¶¶ 63-64 (explaining
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`that the inquiry instruction and the read command examples provided in column 6 are, at best,
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`recitations of the functions of the first command interpreter and second command interpreter).
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`Additionally, Dr. Perry opines that a person of ordinary skill in the art would understand
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`that any program developed to carry out these agreed functions would vary in many different
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`ways depending on implementation choices. Perry Decl. ¶¶ 63-64. Dr. Perry further opines that
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`many different algorithms could be used to implement the concepts identified in column 6, and
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`those disclosures fail to provide any detail about the structure of the “command interpreter.”
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`Perry Decl. ¶¶ 63-64, 67, 71. Papst’s expert agrees on both fronts, conceding that the meaning of
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`“command interpreter” as understood to a person skill in the art “depend[s] on the context”
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`Case 6:15-cv-01095-RWS Document 185 Filed 12/06/16 Page 15 of 47 PageID #: 4073
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`(Fernald Tr. at 85:12-17; see also id. at 86:25-87:13), and will vary from implementation-to-
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`implementation. See id. at 18:9-21; see also id. at 19:7-14.
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`Neither Papst nor its expert can refute the opinions of Dr. Perry that the term “command
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`interpreter” is not understood by persons of ordinary skill in the art to have a sufficiently definite
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`meaning as the name for structure. See Williamson, 792 F.3d at 1349; see also Tracbeam, at *7
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`(finding the defendant rebutted the presumption against § 112(6) applicability where, inter alia,
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`“[d]espite being deposed on this very topic [the plaintiff’s] expert never clearly states that these
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`terms convey a well understood meaning to one of ordinary skill in the art.”). This Court has
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`previously found § 112(6) applicable in similar situations where the plaintiff’s proposed
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`construction of the term is purely functional, and should do so here. See Tracbeam, 2016 WL
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`3751