Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 1 of 31 PageID #: 6302
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`MACROSOLVE, INC.,
`
`v.
`
`ANTENNA SOFTWARE, INC., et al,
`
`MACROSOLVE, INC.,
`
`v.
`
`NEWEGG, INC.
`
`MACROSOLVE, INC.,
`
`v.
`
`GEICO INSURANCE AGENCY, INC.,
`et al,
`
`§
`§ NO. 6:11-cv-287 MHS-KNM
`§
`§
`§
`
`LEAD CASE
`
`§
`§ NO. 6:12-cv-46 MHS-KNM
`§
`§
`§
`
`MEMBER CASE
`
`§
`§ NO. 6:12-cv-74 MHS-KNM
`§
`§
`§
`
`MEMBER CASE
`
`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion construes the disputed claim terms in U.S. Patent No.
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`7,822,816 (“the „816 Patent”). For the reasons stated herein, the Court adopts the constructions
`
`set forth below.
`
`BACKGROUND
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`Plaintiff MacroSolve, Inc. alleges that Defendants Newegg Inc. and GEICO Insurance
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`Agency, Inc. et al, (collectively “GEICO”) infringe the „816 patent. The „816 Patent discloses a
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`“System and Method for Data Management.” The prior art involved gathering data away from a
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`computer, traditionally on paper forms, and then later entering it into a computer. The invention
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`taught in the „816 Patent allows information to be gathered by a handheld device and transmitted
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`1
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`Petitioners – Exhibit 1013, p. 1
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`

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`Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 2 of 31 PageID #: 6303
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`to the second computer through a loosely connected network. This combination eliminates extra
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`steps and cuts down on delays and inaccuracies.
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`APPLICABLE LAW
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`
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`“It is a „bedrock principle‟ of patent law that „the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
`
`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent‟s intrinsic evidence to define
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`the patented invention‟s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
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`claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312–13;
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`Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
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`customary meaning as understood by one of ordinary skill in the art at the time of the invention.
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`Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
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`2003).
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`
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`Claim language guides the Court‟s construction of claim terms. Phillips, 415 F.3d at
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`1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
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`Other claims, asserted and unasserted, can provide additional instruction because “terms are
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`normally used consistently throughout the patent.” Id. Differences among claims, such as
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`additional limitations in dependent claims, can provide further guidance. Id.
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`
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`“[C]laims „must be read in view of the specification, of which they are a part.‟” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification „is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.‟” Id. (quoting Vitronics
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`2
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`Petitioners – Exhibit 1013, p. 2
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`

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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`terms, give a claim term a different meaning that it would otherwise possess, or disclaim or
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`disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes
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`terms possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
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`1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
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`Cir. 2004).
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`
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
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`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
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`claim „is rarely, if ever, correct.” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
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`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
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`the specification may aid the court in interpreting the meaning of disputed language in the
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`claims, particular embodiments and examples appearing in the specification will not generally be
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`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent. Home
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`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent”). The well-
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`3
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`Petitioners – Exhibit 1013, p. 3
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`

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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
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`prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
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`2002); see also Springs Window, 323 F.3d at 994 (“The disclaimer . . . must be effected with
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`„reasonable clarity and deliberateness.‟”) (citations omitted)). “Indeed, by distinguishing the
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`claimed invention over the prior art, an applicant is indicating what the claims do not cover.”
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`Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378–79 (Fed. Cir. 1988) (quotation omitted).
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`“As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice
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`function of the intrinsic evidence and protects the public‟s reliance on definitive statements made
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`during prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.
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`
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`Although, “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`4
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`Petitioners – Exhibit 1013, p. 4
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`
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`The patent in suit may contain means-plus-function limitations that require construction.
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`Where a claim limitation is expressed in means-plus-function language and does not recite
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`definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6.
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`Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, § 112
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`mandates that “such a claim limitation be construed to cover the corresponding structure . . .
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`described in the specification and equivalents thereof.” Id. (citing 35 U.S.C. § 112 ¶ 6.).
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`Accordingly, when faced with means-plus-function limitations, courts “must turn to the written
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`description of the patent to find the structure that corresponds to the means recited in the
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`[limitations].” Id.
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`
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`Construing a means-plus-function limitation involves two inquiries. The first step
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`requires “a determination of the function of the means-plus-function limitation.” Medtronic, Inc.
`
`v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has
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`determined the limitation‟s function, “the next step is to determine the corresponding structure
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`disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311. A
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`structure is corresponding “only if the specification or prosecution history clearly links or
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`associates that structure to the function recited in the claim.” Id. Moreover, the focus of the
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`corresponding structure inquiry is not merely whether a structure is capable of performing the
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`recited function, but rather whether the corresponding structure is “clearly linked or associated
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`with the [recited] function.” Id.
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`A. Agreed Terms
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`CLAIM TERMS
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`The parties have agreed to the construction of several terms. 4-5d Chart at 3 [Doc. No.
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`445-1 at 3].
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`5
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`Petitioners – Exhibit 1013, p. 5
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`

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`Claim Terms
`Tokenizing said questionnaire
`Executing at
`least a portion of
`representing said questionnaire
`
`tokens
`
`Series of questions
`
`
`Agreed Claim Construction
`Assigning tokens to the questionnaire
`Executing at least some of the tokens so as to
`present a question or a statement requesting
`information
`No construction required
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`In view of the parties‟ agreements on the proper construction of each of the identified terms,
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`the Court ADOPTS AND APPROVES these constructions.
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`B. Disputed Terms
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`1. “questionnaire”
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`MacroSolve’s Proposed Construction Defendant Newegg’s Proposed Construction
`A request for information, whether collected
`A complete form or program that includes
`automatically or manually
`questions and internal branching logic, i.e.,
`instructions that provide a path from one
`question to another based upon a user‟s
`response.
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`
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`Defendant GEICO argues that “questionnaire” should be given its plain meaning and that
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`MacroSolve‟s construction is not the plain meaning of “questionnaire.” Doc. No. 438 at 4 n. 1.
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`MacroSolve and Defendant Newegg contend that the term “questionnaire” requires construction
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`and offer competing proposals. Based on the parties‟ arguments, there is an actual dispute over
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`the proper scope of the claim language. Therefore it must be resolved by the Court. O2 Micro
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`Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360 (Fed. Cir. 2008).
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`The parties dispute four key issues: (1) whether the “questionnaire” must be a form or
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`program; (2) whether the “questionnaire” must include internal branching logic; (3) whether the
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`“questionnaire” must be a “complete” form or program as Defendant Newegg proposes; and
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`(4) whether the “questions” in the questionnaire can be statements.
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`
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`6
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`Petitioners – Exhibit 1013, p. 6
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`

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`Program or Form
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`
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`MacroSolve contends that “questionnaire” is a broad term and can be any request for
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`information. Doc. No. 433 at 4. MacroSolve argues that the specification defines a
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`questionnaire as a series of questions or statements that calls for a response. Doc. No. 441 at 2.
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`MacroSolve points to patent language stating that “the series of questions/statements will
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`collectively be referred to as a questionnaire.” „816 Patent at 8:18–19. MacroSolve argues that
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`while a questionnaire is inclusive of forms or programs, it is not a requirement. Doc. No. 441 at
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`3. According to MacroSolve, the defining characteristic is a request for information. Id.
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`
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`Defendant Newegg argues that a questionnaire is more than simply a request for
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`information. Doc. No. 438 at 4. Newegg relies on language in the specification that analogizes a
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`“questionnaire” with a “program” or “form”. Id. The specification states that “questionnaire,”
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`form”, and “program” can be used interchangeably. „816 Patent at 8:19–24. Newegg contends
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`that by analogizing the questionnaire to a form or program, the applicant made it clear that a
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`questionnaire is more than just a request for information. Doc. No. 438 at 5.
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`
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`The phrase “program or form” should be included in the construction based on the
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`specification language. The specification states that “program” and “form” are used
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`interchangeably with “questionnaire.” „816 Patent at 8:22–24. Additionally, the specification
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`refers to the “questionnaire” as a program several times. Id. at 5:40–41 (“[T]he program and
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`user responses are coded in such a fashion as to substantially reduce the bandwidth
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`requirements . . . .”); Id. at 5:47–48 (“In practice, a program is created by entering a series of
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`prompts . . . .”). The claim language also references the “questionnaire” being created by a
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`computer. Id. at 14:43. Based on this language a questionnaire is something more than a
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`“request for information.”
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`7
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`Petitioners – Exhibit 1013, p. 7
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`

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`In addition, MacroSolve‟s construction is too broad because it potentially encompasses
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`the prior art. The Background of the Invention section details the disadvantages of the prior art
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`and how the „816 invention avoids these drawbacks. Id. at 1:21–28. One problem with the prior
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`art was the use of paper forms and the inherent inaccuracies caused by needing to reenter
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`information. Id. The „816 Invention fixes this issue by eliminating the extra steps. Id. at 2:44–
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`46. This is possible because the “form may be entered on-line.” Id. at 10:12–13. Based on this
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`language, the patentee intended for a “questionnaire” to be more than a paper form. Thus a
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`“questionnaire” is a “program or form.”
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`Internal Branching Logic
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`
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`The second issue is whether the program must include “internal branching logic.”
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`Internal branching logic would be instructions that provide a path through the questionnaire
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`based on the user responses. MacroSolve argues that this is an unwarranted limitation on the
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`invention. Doc. No. 441 at 4. MacroSolve contends that while a questionnaire can contain
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`branching logic, it is not a requirement. Id. MacroSolve disputes Newegg‟s assertion that the
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`patent “consistently” describes a questionnaire as containing branching logic. Id. MacroSolve
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`argues that the portions of the patent Newegg relies on are referring to an optional feature. Id. at
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`5. In support, MacroSolve points to an example in the specification that contains no branching
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`logic. Id. Finally MacroSolve argues that Newegg‟s construction ignores the doctrine of claim
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`differentiation. Doc. No. 433 at 6. MacroSolve points to Claim 3, which contains the
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`requirement that a branching path be included. „816 Patent 14:1–4. MacroSolve argues that
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`reading a “branching logic” requirement into the construction of questionnaire would render this
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`portion of claim 3 redundant. Doc. No. 433 at 6.
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`8
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`Petitioners – Exhibit 1013, p. 8
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`

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`
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`Newegg contends that the „816 Patent consistently refers to a questionnaire as presenting
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`questions and being controlled by operating logic. Doc. No. 438 at 4. For the branching logic
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`requirement, Newegg points to patent language that states “the questionnaire is actually designed
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`to include internal branching logic that is implemented by the OIS.” „816 Patent at 8:19–24.
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`Newegg argues that this, along with repeated references to “programs”, shows that a
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`questionnaire contains operating logic. Doc. No. 438 at 5. In support, Newegg quotes portions
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`of the patent describing adaptive functionalities that would require internal branching logic. Id.
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`at 7. Newegg argues that MacroSolve‟s claim differentiation argument is misplaced because the
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`focus of claim 3 is not branching logic, but rather on adding extra requirements to the
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`questionnaire creation process. Id. at 8. Newegg cites to steps within Claim 3 that reference
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`“using a design computer” and “entering a series of questions into a questionnaire design
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`computer program.” Id. Newegg contends these are additional limitations and therefore claim
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`differentiation is not applicable. Id.
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`
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`“Internal branching logic” is only a preferred embodiment and not a requirement.
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`Branching logic is not mentioned in the method steps for Claim 1. In contrast, Claim 3 requires
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`the questionnaire to have a “branching path” for each question. „816 Patent at 14:1–4. Since
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`Claim 3 recites this requirement and is dependent on Claim 1, claim differentiation is applicable.
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`See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (“Where the
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`limitation that is sought to be „read into‟ an independent claim already appears in a dependent
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`claim, the doctrine of claim differentiation is at its strongest”). Newegg relies on language in the
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`specification stating that “the questionnaire is actually designed to include internal branching
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`logic . . . .” „816 Patent at 8:20–21. But that paragraph begins with a modifier that makes it
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`clear the specification is referring to a preferred embodiment. Id. at 8:12 (“According to the
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`9
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`Petitioners – Exhibit 1013, p. 9
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`

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`preferred arrangement . . . .”) Two paragraphs later the specification describes a client creating a
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`questionnaire and states “symbols . . . may be used to control conditional branching.” Id. at
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`8:38–40. This makes it clear that conditional branching is an optional feature.
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`Newegg argues that claim differentiation does not apply because Claim 3‟s focus is
`
`instead on other limitations like using a “design computer program” to create the questionnaire.
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`But the next two steps in Claim 3 show the “design computer” is there because it is needed to
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`create the branching logic. Step (a)(ii) involves identifying the possible answers, and step (a)(iii)
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`creates the branching path using the design computer. Id. at 13:65–14:4. Thus, the design
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`computer is not a new limitation but rather the antecedent basis that allows the branching path to
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`be created using “said questionnaire design computer program.” Id. at 13:67; 14:3–4.
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`The specification also gives an example of a practical use for the invention. A “mystery
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`shopper” application is detailed that involves the shopper entering information as she moves
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`through the drive-thru and receives her food. Id. at 10:38–11:8. The questions given in this
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`example follow a linear path rather than branching based on the shopper‟s answers. If the
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`questionnaire was required to contain branching logic this example would be read out of the
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`specification. Newegg argues that the shopper example does contain logic because the questions
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`still follow a logical order that begins at pulling into the drive-through and ends when the
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`customer receives her food. Markman T.R. at 18:13–19. But this is a linear logical order, not a
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`path with conditional branching.
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`There is a difference between operating logic and branching logic. Branching logic
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`would mean the questionnaire adapts and presents different questions depending on the
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`responses. Operating logic would not require this adaptability, but it would be needed just to
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`present any questionnaire. While the ability to branch is not necessary, some form of operating
`
`10
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`Petitioners – Exhibit 1013, p. 10
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`

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`logic is inherent in the idea of a program. Even the linear mystery-shopper example was
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`controlled by operating logic. „816 Patent at 11:9–11. In the Markman hearing, counsel for
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`MacroSolve agreed with the idea of questionnaires having some basic level of operating logic.
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`Markman T.R. at 29:12–15 (“[T]here may be one agreement. . . . [A] series of questions is going
`
`to have operating logic in some sense because they‟re going to be presented in order . . . .”). But
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`since the “program or form” construction already captures the idea of operating logic, including
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`it in the construction is unnecessary.
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`Based on the specification and claim language the questionnaire can branch but it is not
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`required. Accordingly, the construction of “questionnaire” will not contain a branching logic
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`requirement.
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`Complete Questionnaire
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`The third issue is whether the “questionnaire” must be “complete.” MacroSolve‟s
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`position is that the inclusion of “complete” in the construction is vague and circular. Markman
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`TR at 16:1–2. MacroSolve argues that the use of “comprising” in the claim language makes it
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`clear that other elements may be present. Doc. No. 433 at 5. An example is given in the patent
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`involving a questionnaire that is capable of being incrementally updated. „816 Patent at 9:1–8.
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`MacroSolve contends that this shows a questionnaire can be “incomplete” and yet still covered
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`by the patent claims. Doc. No. 433 at 5.
`
`
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`Newegg‟s position is that the word complete is not being used to denote a “consisting of”
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`transition. Instead, Newegg argues that the word “complete” would be included to make clear
`
`that the questionnaire being transmitted to the remote device includes everything Newegg
`
`believes is required. Doc. No. 438 at 9. Newegg contends that this is consistent with the
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`specification because the patent states the questionnaire is only sent “when [it] is complete.” Id.
`
`11
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`Petitioners – Exhibit 1013, p. 11
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`

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`(citing „816 Patent at 8:57–58). Newegg agrees that the questionnaire can be updated, but argues
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`that it still must be complete when sent. Doc. No. 438 at 9.
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`
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`The claim language does not indicate that a questionnaire must be “complete.” Including
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`“complete” in the construction is unnecessary and could lead to confusion. Adding “complete”
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`to the definition could imply there are certain features, like branching logic, that must be
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`included before the questionnaire can be sent. As previously discussed, optional features like
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`branching logic are not required. Accordingly the questionnaire does not need to be “complete.”
`
`
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`
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`Statements or Questions
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`The fourth issue is whether the questionnaire can contain statements instead of questions.
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`MacroSolve argues that based on the patent language, the questionnaire can contain “questions
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`or statements.” Doc. No. 441 at 3 (citing „816 Patent at 8:12–19). MacroSolve contends that a
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`blank field with a label like “Name:” is still requesting a response from the user and could be
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`part of a “questionnaire.”
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`
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`Newegg appears to have conceded that the questionnaire can contain statements. During
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`the Markman hearing Newegg‟s counsel represented that the definition for questionnaire could
`
`include the phrase “questions or statements requesting information.” Markman TR 22:6–10.
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`
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`In case there is still a dispute, the questionnaire can include either questions or
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`statements. The specification states that “[f]or purposes of the instant disclosure, the series of
`
`questions/statements will collectively be referred to as a questionnaire.” Col 8:17–19. Based on
`
`this language the “questionnaire” can include questions or statements.
`
`
`
`
`
`
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`12
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`Petitioners – Exhibit 1013, p. 12
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`

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`Court’s Construction
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`In light of the claim language and intrinsic evidence, “questionnaire” is construed to
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`mean “a program or form that includes a question or statement, which calls for a
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`response.”
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`
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`2. “tokens”
`
`MacroSolve’s Proposed Construction
`Any non-reducible textual element in data that
`is being parsed
`
`
`Defendants’ Proposed Construction
`Non-reducible computer code that is being
`parsed
`
`
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`Both parties agree that a token is non-reducible and that it is something being parsed.
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`The only disagreement is whether tokens should be “textual elements in data” or “computer
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`code.” MacroSolve argues that “token” is a term of art in computer science and proposes a
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`definition from the Microsoft Computer Dictionary, 5th Edition. Doc. No. 433 at 10. Defendants
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`contend that “textual element in data” is vague and not found in the specification. Doc. No. 438
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`at 10. Defendants believe that replacing “textual element in data” with „computer code‟ is
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`appropriate because the specification and claims indicate the tokens must be understandable by a
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`computer. Id. MacroSolve agrees that tokens are “computer code” but contends that it is only
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`individual atomic elements, not the entire code, that must be non-reducible. Doc. No. 441 at 7.
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`At the hearing, the Court proposed that tokens be construed as “any non-reducible
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`element of the computer code that is being parsed.” Markman T.R. at 37:24–25. The parties
`
`generally agreed with this definition. Id. at 39:21–23; Id. at 41:19–21. The inclusion of
`
`“element” addresses MacroSolve‟s concern that it is not the entire computer code that must be
`
`non-reducible. Id. at 38:21–24. But both parties did have concerns with how “computer code”
`
`could be interpreted. Defendants wanted it to be clear that a token has to represent something
`
`13
`
`Petitioners – Exhibit 1013, p. 13
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`

`

`Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 14 of 31 PageID #: 6315
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`else. MacroSolve agreed that this was inherent to the idea of a token. Id. at 38:11–12.
`
`MacroSolve‟s key concern was that Defendants may later argue that “computer code” means a
`
`specific programming language or type of code. Id. at 39:1–4. But Defendants made it clear that
`
`“computer code” was suggested to clarify that the code is understandable by a computer. Id. at
`
`37:11–13.
`
`
`
`Court’s Construction
`
`Based on this understanding of “computer code,” “tokens” is construed to mean “any
`
`non-reducible element of the computer code that is being parsed.”
`
`
`
`3. “terminating said first wireless modem or wireless LAN network connection [Clam 1] /
`
`taking said handheld remote computing device out of electronic communication [Claim
`
`11]”
`
`MacroSolve’s Proposed Construction
`No construction required
`
`Defendants’ Proposed Construction
`Causing the network connection to become
`unavailable
`
`
`
`
`
`The parties agree that terminating the network ends the connection. Markman T.R. at
`
`52:2–3. The dispute is whether the connection is still “available” after being terminated.
`
`MacroSolve‟s position is that terminating the network does not mean it is unavailable, only that
`
`there is no longer a network connection. Id. at 52:18–21. MacroSolve likens it to putting a
`
`phone in airplane mode; there is no network connection on the phone, but the network is still
`
`“available” if the user chooses to reconnect. Id. at 52:13–15. Newegg contends that the network
`
`still being available would go against the plain meaning of “terminating the network.” Id. at
`
`51:2–3. Newegg argues that the Patent never references the network being terminated yet still
`
`being available. Id. at 51:16–18.
`
`14
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`Petitioners – Exhibit 1013, p. 14
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`

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`Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 15 of 31 PageID #: 6316
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`No construction
`
`is needed
`
`for “terminating said . . . network connection” or
`
`“taking . . . out of electronic communication.” The plain language of the claim should control.
`
`The plain language of the claim recites “terminating said first wireless . . . network connection.”
`
`„816 Patent at 13:37–38 (emphasis added). Requiring the network to also be “unavailable” is an
`
`unwarranted limitation. The only requirement is that the device is no longer connected to the
`
`network.
`
`Court’s Construction
`
`Because the plain language of the claim states that the connection only has to be
`
`terminated, no further construction is required for this term.
`
`
`
`4. “after said first wireless modem or wireless LAN connection is terminated [Claim 1] /
`
`after said handheld remote device has been taken out of electronic communication with
`
`said first computer [Claim 11]”
`
`MacroSolve’s Proposed Construction
`No construction required
`
`
`
`Defendants’ Proposed Construction
`After
`the network
`connection becomes
`unavailable and before another network
`connection becomes available.
`
`The issue for the “after said first wireless modem” term is whether the tokens must be
`
`executed before a new connection is established. MacroSolve‟s believes that the terms are clear
`
`and do not need to be construed. Doc. No. 433 at 15. MacroSolve argues that since the claim
`
`language only imposes an “after” requirement; the tokens only have to be executed after the first
`
`connection is terminated. Id. MacroSolve‟s position is that while the invention can operate
`
`without a network connection, it is not a requirement. Markman T.R. at 43:23–44:1.
`
`15
`
`Petitioners – Exhibit 1013, p. 15
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`

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`Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 16 of 31 PageID #: 6317
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`MacroSolve contends that the numerous references to operating without a network connection
`
`are only referring to the first network connection. Id. at 48:10–14.
`
`Defendants believe that the tokens must be executed while there is no network
`
`connection. Doc. No. 438 at 19. Defendants contend that this is consistent with the specification
`
`and prosecution history. Doc. No. 438 at 24. The specification references a “loosely networked”
`
`computer system that is tolerant of intermittent connections and capable of temporarily storing
`
`information if a network connection is unavailable. „816 Patent at 4:61–5:3. Defendants also
`
`cite to a 2009 Amendment where the applicant stated that the invention is “designed to operate
`
`without a network connection.” Feb. 4, 2009 Amendment at 14. Defendants argue that the
`
`ability to operate without a network connection is a key feature of the invention and the applicant
`
`essentially narrowed the scope by repeatedly referring to it in the Feb. 2009 Amendment.
`
`Defendants‟ additional language would essentially limit when step (g) of Claim 1 and
`
`step (h) of Claim 11 could occur. The claim language explicitly requires the “executing” step to
`
`occur after the network connection is terminated in Claim 1, and after the remote computing
`
`device is taken out of electrical communication with the first computer in Claim 11. But the
`
`claims do not contain a similar temporal requirement regarding when the second connection
`
`must be established. In other words, the claim language does not require the “executing” step to
`
`occur before the device is in communication with a second wireless modem or wireless LAN
`
`network (Claim 1) or a second computer (Claim 11), as Defendants‟ proposed construction
`
`would require. Instead, the steps could occur in the following order:
`
`Claim 1:
`
`(e) terminating said first wireless modem or wireless LAN network connection
`with said remote computing device;
`(g) establishing a second wireless modem or wireless LAN network connection
`between said remote computing device and a server;
`
`16
`
`Petitioners – Exhibit 1013, p. 16
`
`

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`Case 6:11-cv-00287-MHS-KNM Document 493 Filed 01/21/14 Page 17 of 31 PageID #: 6318
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`(f) after said first wireless modem or wireless LAN network connection is
`terminated, executing at least a portion of said plurality of tokens representing
`said questionnaire at said remote computing device to collect a response from
`a user;
` (h)