Case 2:17-cv-00258-JRG Document 99 Filed 12/08/17 Page 1 of 12 PagelD #: 1699
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.,
`Plaintiffs,
`
`v.
`
`APPLE INC.,
`Defendant.
`
`§
`§
`§ Civil Action No. 2:17-cv-00258-JRG
`§
`§
`§
`§
`§
`§
`.§
`
`OPENING BRIEF OF PLAINTIFF ON CLAIM CONSTRUCTION
`
`Plaintiffs ("Uniloc") submit this opening brief, supporting their position on identified
`
`claim construction issues.
`
`"852 Patent
`
`The disputes, as to this patent, pertain to claim 18. In the below presentation of that
`
`claim, we have underlined those phrases or terms as to which the parties have competing
`
`constructions, and have put in italics any language Apple claims to be indefinite:
`
`18. A client device configured to execute a computer program to perform a remote update
`of a program configuration on the client device, the client device comprising:
`
`a processor;
`
`a memory coupled to the processor and storing the computer program which, when
`executed by the processor, (i) performs physical device recognition on the client device to
`determine machine parameters including account information for a user of the client
`device and features of software that the user of the client device is entitled to use, (ii)
`generates a unique device identifier for the client device, the unique device identifier is
`generated based at least in part on the determined machine parameters, and (iii) collects a
`unique software identifier for the software on the client device, the unique software
`identifier being unique to a particular copy of the software and to a particular user of the
`software; and
`
`1
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`Exhibit 2004, Page 1 of 12
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`

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`a transceiver configured to (i) send the unique device identifier and the unique software
`identifier to an update server via the Internet to determine, based on analyzing the unique
`device identifier and the unique software identifier, an updated program configuration,
`and (ii) receive, from the update server, the updated program configuration if the user
`associated with the unique device identifier is entitled to use features of the updated
`program configuration according to a license associated with the unique software
`identifier.
`
`18
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`examines or identifies
`software or hardware
`features of the client device
`or a geolocation environment
`of the client device
`
`"performs physical device
`recognition on the client
`device"
`
`APPLE'S PROPOSED
`CONSTRUCTION
`measures physical
`properties of a client
`device
`
`This phrase, where it appears in claim 18, is followed by "to determine machine
`
`parameters." That combined phrasing ("physical device recognition ... to determine machine
`
`parameters") seems to track the following language from the specification:
`
`Physical device recognition of at least one of a software, hardware and geo-location
`environment of the client device is performed to determine machine parameters.
`
`3:7-10 (emphasis added). The parallelism between the claim language and the above suggests
`
`that when physical device recognition on the client device is performed, what is recognized is "at
`
`least one of a software, hardware and geo-location environment of the client device." Uniloc's
`
`construction thus incorporates that language, while Apple's does not.
`
`Otherwise, the difference between the competing constructions is that Apple asks the
`
`Court to limit this phrase to "measures physical properties" of the device, a narrower
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`construction than Uniloc's "examines or identifies software or hardware features."
`
`But not all machine par ameters discussed in the specification can be determined by
`
`"measuring" physical properties. Adopting Apple's narrow construction would thus exclude,
`
`2
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`Exhibit 2004, Page 2 of 12
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`

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`from even the broadest claims, a number of described embodiments. Examples of machine
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`parameters in the specification that could not be determined by measuring physical properties
`
`include ""hard disk volume name, user name, computer name, user password, hard disk
`
`initialization date, or combinations thereof," 5:39-41; and "user account information, program
`
`information (e.g., serial number); location of a user within a given application program, and
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`features of the software/hardware the user is entitled to use," 5:52-55.
`
`As stated in Oatev Co. v. IPS Corp.. 514 F.3d 1271, 1276-77 (Fed. Cir. 2008):
`
`We normally do not interpret claim terms in a way that excludes embodiments disclosed
`in the specification. E.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295,
`1305 (Fed.Cir.2007) (rejecting proposed claim interpretation that would exclude
`disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg., F.P., 327
`F.3d 1364, 1369 (Fed.Cir.2003) (finding district court's claim construction erroneously
`excluded an embodiment described in an example in the specification, where the
`prosecution history showed no such disavowal of claim scope); see also Vitronics Corp.
`v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir.1996) (finding that a claim
`interpretation that excludes a preferred embodiment is "rarely, if ever, correct"). ...
`Where claims can reasonably [be] interpreted to include a specific embodiment, it is
`incorrect to construe the claims to exclude that embodiment, absent probative evidence
`on the contrary.
`
`18
`
`"machine parameters"
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`data representative of
`hardware components,
`software components, or data
`components specific to the
`client device
`
`APPLE'S PROPOSED
`CONSTRUCTION
`data determined by a
`hardware component,
`software component, or
`data component specific
`to the client device
`
`Apple draws its construction from the following sentence in the specification: "Each
`
`machine parameter is data determined by a hardware component, software component, or data
`
`component specific to the client device." 7:1-3 (emphasis added). In common parlance, however,
`
`"determined" could have two meanings. For example, "determining" an outcome could mean
`
`3
`
`Exhibit 2004, Page 3 of 12
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`

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`simply obtaining data representative of the outcome ("I checked the box score to determine the
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`outcome of last night's baseball game"), or it could mean causing the particular outcome ("His
`
`stellar pitching determined the outcome of last night's baseball game.")
`
`Uniloc believes the Court should avoid ambiguity in its jury instructions, and thus
`
`requests the instruction not include the ambiguous "determined." Uniloc suggests "representative
`
`of," but would accept any other unambiguous phrase that comports with all the embodiments in
`
`the specification.
`
`"generating a unique
`device identifier...based at
`least in part on the
`determined machine
`parameters"
`"updated program
`configuration"
`"entitled"
`
`ordinary meaning
`
`"unique device identifier"
`
`ordinary meaning
`
`18
`
`18
`
`18
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`ordinary meaning
`
`18
`
`ordinary meaning
`
`a software update
`
`APPLE'S PROPOSED
`CONSTRUCTION
`generating, from at least
`the determined machine
`parameters, a unique
`device identifier
`
`determined to be
`licensed
`a composite identifier
`(i.e., not a list or
`inventory) that uniquely
`identifies the client
`device
`
`Where a term or phrase has an ordinary meaning readily understandable by laypeople (as
`
`opposed to a technical term of art), and nothing in the patent suggests a different meaning,
`
`Uniloc will usually argue that no instruction be given. Uniloc's experience has been that
`
`unnecessarily "defining" readily understood claim language introduces unintended nuances, and
`
`creates grounds for appeal that would otherwise be avoided.
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`Exhibit 2004, Page 4 of 12
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`

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`We do not object to Apple's constructions as incorrect, but rather as unnecessary,
`
`unhelpful, and potentially misleading. For example, its construction of "unique device identifier"
`
`would require a further explanation to the jury of what is meant by the more complicated phrase
`
`"composite identifier (i. e., not a list or inventory)."
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`ordinary meaning
`
`18
`
`"a transceiver configured
`to (i) send the unique
`device identifier and the
`unique software identifier
`to an update server via the
`Internet to determine... an
`updated program
`configuration"
`
`APPLE'S PROPOSED
`CONSTRUCTION
`Indefinite1
`
`The only explanation Apple has given, as yet, for its indefiniteness position on this
`
`portion of the claim is: "the recited language causes the claim to improperly claim two statutory
`
`classes of invention (an apparatus and a method)."
`
`Apple misunderstands how claims are drafted. Claim 18, drawn to the features of a client
`
`device, was drafted as an apparatus claim. As such, the claim would be infringed by the making,
`
`offering for sale, selling, or importing of the claimed device, even if the device is never used.
`
`The claim does not require, for infringement, that the device's program actually be executed. The
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`above snippet of the claim only requires - by its use of "configured to" send certain identifiers -
`
`1 The '852 patent lias 18 claims. Claims 1-17 of the '852 patent are system claims, where the system includes a
`client device with certain features and an update server configured to operate with the client device. Claim 18, by
`contrast, is drawn only to the client device, which Apple manufactures. Uniloc's Amended Complaint, which asserts
`Apple infringes "at least" claim 18, does not limit the complaint to that claim.
`Uniloc believes Apple directly infringes claim 18. If so, Apple would also infringe claim 1 and various dependent
`claims, although perhaps only indirectly. Uniloc would likely limit its case at trial to claim 18, as proving direct
`infringement would obviate the need to prove indirect infringement. If, however, the Court were to rule that claim
`18 was indefinite, Uniloc will instead assert claim 1 and applicable dependent claims.
`
`5
`
`Exhibit 2004, Page 5 of 12
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`

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`that the device have programming that, if and when executed, would cause the transceiver to
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`send the claimed identifiers.
`
`By contrast, a method claim is not infringed until the method is actually performed.
`
`Because claim 18 was drafted so as not to require actual execution, for infringement, it is not a
`
`method claim.
`
`But the Court need not take Uniloc's word for this. The Federal Circuit, in its October
`
`30, 2017 decision in Mastermine Software, Inc. v. Microsoft Corporation, 874 F.3d 1307,
`
`comprehensively reviewed six other precedential Federal Circuit decisions that involved
`
`arguments that a claim improperly claimed two statutory classes of invention. In Mastermine,
`
`and three of the other six decisions, the court upheld claims of the following format, as drawn to
`
`an appar atus, and not a method:
`
`A system comprising [a] module ... wherein the ... module... presents... receives ...and
`generates.
`
`Mastermine, 874 F. 3d at 1315 (Though the claim "includes active verbs ... these verbs represent
`permissible functional language used to describe capabilities of the ... module.")
`
`A mobile station... that achieves a handover... by: storing..., holding ...,
`and... maintaining.
`
`HTC CORP. v. IPCom GmbH & Co., KG, 667 F.3d 1270 (Fed. Cir. 2012) (the claim "makes
`clear" that infringement occurs when one makes, uses, offers to sell, or sells the claimed
`apparatus").
`
`A processor for executing instructions comprising [a] pipeline stage [; the] stage
`performing... and producing....
`
`Microprocessor Enhancement Corp. v. Tex. Instruments Inc. (MFC), 520 F.3d 1367 (Fed. Cir.
`2008)("this claim "is clearly limited to a pipeline processor possessing the recited structure and
`capable of performing the recited functions, and thus is not indefinite"")-
`
`A "handheld device including: an image sensor, said image sensor generating data.""
`
`UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816 (Fed. Cir. 2016) (the claims "make clear
`that the 'generating data" limitation reflects the capability of that structure rather than the
`activities of the user"").
`
`6
`
`Exhibit 2004, Page 6 of 12
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`

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`By contrast, the court struck down claims of the following format, as drawn to both a
`
`method and apparatus:
`
`"The system ... [including an input means] and the user uses the input means."
`
`IP XL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005).
`
`A "system with an interface means for providing ... messages to ... certain ... callers,
`wherein [those] callers digitally enter data."
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011)
`
`"A ... device for transmitting signals... comprising .... [a] means for combining... bits...
`to form frames ... and [b] transmitting ... frames.
`
`Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011)
`
`After reviewing these authorities, it is clear- a "transceiver configured to send" in claim 18
`
`is drawn to an apparatus, not a method.
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`not a method claim; no
`performance order
`
`"a transceiver configured
`to ... (i) send... and (ii)
`receive..."
`
`18
`
`APPLE'S PROPOSED
`CONSTRUCTION
`The claimed "send[ing]"
`and "receiving]" must
`occur in order
`
`As discussed above, claim 18 is not a method claim, and does not claim a method. It
`
`would be infringed by making, offering for sale, selling, or importing the claimed device, even if
`
`the device is never used. All the claim requires, in this respect, is the device have a program that,
`
`if and when executed, would cause the transceiver to send certain identifiers to an update server
`
`and would cause the transceiver to receive a certain configuration from the update server.
`
`Because the claim does not even require performance (i.e., it does not require the sending and
`
`receiving actually occur), the claim would not require a performance order.
`
`7
`
`Exhibit 2004, Page 7 of 12
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`

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`But if the claim were rewritten as a method claim (which it is not), Uniloc would have
`
`difficulty understanding what factual situation could arise that would be excluded from the scope
`
`of the claim.
`
`APPLE'S PROPOSED
`CONSTRUCTION
`Indefinite
`
`18
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`examines or identifies
`software or hardware
`features of the client device
`or a geolocation environment
`of the client device, to
`determine machine
`parameters, including
`account information for a
`user [] and features of
`software that the user is
`entitled to use
`
`"performs physical device
`recognition on the client
`device to determine
`machine parameters,
`including account
`information for a user []
`and features of software
`that the user is entitled to
`use"
`
`The above language appears in the following portion of the claim:
`
`a memory coupled to the processor and storing the computer program which, when
`executed by the processor, (1) performs physical device recognition on the client device
`to determine machine parameters including account information for user of the client
`device and features of software that the user of the client device is entitled to use, (ii)
`generates a unique device identifier... and (iii) collects a unique software identifier.
`
`The language describes some of the functionality the claimed computer program provides.
`
`Apple has provided only a sketchy outline of its indefiniteness position: "the recited
`
`language is internally inconsistent and/or inoperative." Uniloc had asked Apple to provide a
`
`more detailed explanation, for Uniloc to rebut in this opening brief, but Apple declined. Given
`
`the sketchiness of the argument. Uniloc has little to rebut at this point.
`
`Although Apple argues claim 18 is "internally inconsistent," Apple did not point out the
`
`inconsistency. Uniloc sees none.
`
`Exhibit 2004, Page 8 of 12
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`

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`Equally puzzling is Apple's cryptic statement that the language is "inoperative." Uniloc
`
`does not understand what that means, as to this clause.
`
`After Apple provides more information about its position, Uniloc will respond further.
`
`U99 Patent
`
`Claim 1 of this patent, with disputed terms underlined, reads:
`
`A method for delivering information to two or more user devices, the method comprising:
`
`retrieving the information from one or more data records that associate the information
`with one or more predetermined locations, a predetermined maximum amount of time, a
`predetermined likelihood, and one or more predetermined actions; and
`
`for each of the two or more user devices:
`
`predicting whether the user device will be at any of the one or more predetermined
`locations within the predetermined maximum amount of time with at least the
`predetermined likelihood: and
`
`in response to the predicting that the user device will be at any of the one or more
`predetermined locations with the predetermined maximum amount of time with at least
`the predetermined likelihood, performing the one or more predetermined actions; wherein
`at least one of the actions includes delivering the information to the user device.
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`no performance order
`
`1
`
`Ordering of claim Us
`method steps
`
`APPLE'S PROPOSED
`CONSTRUCTION
`The steps of the method
`recited in claim 1 must
`be performed in order;
`i.e., claimed "retrieving"
`step must occur before
`the claimed "predicting"
`step
`
`In general, infringement of a method claim does not require that steps be performed in the
`
`order they appear- in the claim. Interactive Gift Exp, Inc. v. CompuServe Inc, 256 F.3d 1323,
`
`1342 (Fed. Cir. 2001) ("Unless the steps of a method actually recite an order, the steps are not
`
`Exhibit 2004, Page 9 of 12
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`

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`ordinarily construed to require one."); Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70
`
`(Fed. Cir. 2003). As claim 1 does not recite an order, the steps can be performed in any order.
`
`Thus, the "predicting" step may occur before the "retrieving" step, or vice versa.
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`determined beforehand
`
`"predetermined"
`
`1
`
`APPLE'S PROPOSED
`CONSTRUCTION
`determined in advance
`of the claimed method
`being performed
`
`It would appear both parties would agree "predetermined" would mean "determined in
`
`advance" or "determined beforehand." The remaining question is: before what? Certainly the
`
`term would encompass whatever is determined before performance of the first step of the
`
`method. But what about something determined after performance of the first step, but before
`
`performance of the last step? Uniloc's proposal flexibly encompasses both; Apple's does not.
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`"data records that relate the
`information to"
`
`"data records that associate
`the information with"
`
`1
`
`APPLE'S PROPOSED
`CONSTRUCTION
`associate = include or
`refer to
`"data records that
`include or refer to the
`information to"
`
`All the patent requires is an association that relates the information to the predetermined
`
`factors. The embodiments in the specification are in accord2.
`
`Apple's construction does not imply an association, as the claim requires. When that
`
`construction is substituted into the claim: "retrieving information from... data records that
`
`2 As "associates" would be easily understood, this may be a term as to which the best construction is simply
`"ordinary meaning."
`
`10
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`Exhibit 2004, Page 10 of 12
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`

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`include the information with" the predetermined factors, the claim no longer suggests the
`
`information and factors are associated. Neither does "retrieving information from ... data records
`
`that refer to the information with" the predetermined factors imply they are associated.
`
`5
`
`CLAIM TERMS AND PHRASES UNILOC'S PROPOSED
`CONSTRUCTION
`day- and time-based patterns
`related to a current time and
`a current day and movement
`patterns related to a current
`location of the user device
`
`"patterns that involve day-
`and time-based and
`movement related to a
`current time, a current day,
`and a current location"
`
`APPLE'S PROPOSED
`CONSTRUCTION
`Indefinite
`
`Claim 3 requires "analyzing a location history of the user device for day-and time-based
`
`patterns related to the current time in the current day." Claim 4 requires "analyzing a location
`
`history of the user device for movement patterns related to the current location of the user
`
`device." These claims are easily understandable, and conform to specific examples in the
`
`specification.
`
`Claim 5 was intended to describe a method that includes the analyzing steps of both
`
`claim 3 and claim 4, and would be so understood by a person skilled in the art, who has read the
`
`patent and its prosecution history. The drafter first combined "day-and time-based patterns" and
`
`"movement patterns" by writing, albeit clumsily, "patterns that involve day and time-based and
`
`movement. He then combined "related to a current time and a current day" and "related to a
`
`current location of the user device" by writing "related to a current time, a current day, and a
`
`current location of the user device."
`
`11
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`Exhibit 2004, Page 11 of 12
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`

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`Case 2:17-cv-00258-JRG Document 99 Filed 12/08/17 Page 12 of 12 PagelD #: 1710
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`Dated: December 8,2017 Respectfully submitted,
`
`/s/ Aaron Jacobs
`Paul J. Hayes
`Kevin Gannon
`Daniel McGonagle
`James J. Foster-
`Aaron Jacobs
`PRINCE LOBEL TYE, LLP
`One International Place, Suite 3700
`Boston, MA 02110
`Telephone: (617) 456-8000
`Facsimile: (617) 456-8100
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: dmcgonagle@princelobel.com
`Email: jfoster@princelobel.com
`Email: ajacobs@princelobel.com
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar- No. 00797142
`Anthony M. Vecchione
`anthony @ nelbum. com
`Texas State Bar- No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`Tel: (817) 377-9111
`Fax:(817)377-3485
`
`ATTORNEYS FOR THE PLAINTIFFS
`
`CERTIFICATE OF SERVICE
`
`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3)
`on December 8, 2017.
`
`/s/ Aaron S. Jacobs
`
`12
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`Exhibit 2004, Page 12 of 12
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`