` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 1 of 24 PageID 2469
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`SEVEN NETWORKS, LLC,
`Civil Action No. 3:17-cv-01495-M
` Chief Judge Barbara M.G. Lynn
`Plaintiff,
`v.
`
`ZTE (USA) INC. and ZTE CORPORATION,
`Defendants.
`DEFENDANT ZTE (USA), INC.'S
`OPENING CLAIM CONSTRUCTION BRIEF
`
`
`) ) ) ) ) ) ) ) ) ) )
`
`
`
`
`
`
`
`
`Page 1 of 24
`
`GOOGLE EXHIBIT 1026
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 2 of 24 PageID 2470
`
`
`INTRODUCTION
`I.
`Pursuant to paragraph 4-5 of Miscellaneous Order No. 62, ZTE (USA), Inc. (“ZTE”)
`hereby submits its Opening Claim Construction Brief regarding certain terms in U.S. Patent Nos.
`8,811,952 (“the ’952 Patent”), 9,247,019 (“the ’019 Patent”), 9,325,600 (“the ’600 Patent”),
`9,351,254 (“the ’254 Patent”), 9,516,127 (“the ’127 Patent”), and 9,516,129 (“the ’129 Patent”)
`(collectively, the “Asserted Patents”).
`II.
`LEGAL AUTHORITY
`A.
`General Principles of Claim Construction
`Claim construction is a matter of law for the court. Markman v. Westview Instruments,
`Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In this regard,
`claim construction focuses on the intrinsic evidence, including the claims themselves, the patent
`specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
`Cir. 2005) (en banc).
`“In construing claims, the analytical focus must begin and remain centered on the language
`of the claims themselves, for it is that language that the patentee chose to use to particularly point
`out and distinctly claim the subject matter which the patentee regards as his invention.” Braintree
`Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1354-55 (Fed. Cir. 2014) (internal quotations and
`alterations omitted). Claims are given their ordinary and customary meaning to a person of
`ordinary skill in the art at the time of the invention. Phillips, 415 F.3d 1303, 1313. Despite the
`importance of claim terms, Phillips made clear that “the person of ordinary skill in the art is
`deemed to read the claim term not only in the context of the particular claim in which the disputed
`term appears, but in the context of the entire patent, including the specification.” Id. Accordingly,
`the specification is the “primary basis for construing the claims.” Id. at 1316. However,
`“[c]onsistent with its scope definition and notice functions, the claim requirement presupposes that
`
`2
`
`
`Page 2 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 3 of 24 PageID 2471
`
`
`a patent applicant defines his invention in the claims, not in the specification. After all, the claims,
`not the specification, provide the measure of the patentee’s right to exclude.” Johnson & Johnston
`Assocs. Inc. v. R.E. Serv. Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir. 2002).
`The prosecution history also plays an important role in claim interpretation as intrinsic
`evidence that is relevant to the determination of how the inventor understood the invention and
`whether the inventor limited the invention during prosecution by narrowing the scope of the
`claims. Phillips, 415 F.3d at 1317. “[T]he prosecution history provides evidence of how the PTO
`and the inventor understood the patent.” Id. Because the prosecution history, however, “represents
`an ongoing negotiation between the PTO and the applicant . . . it often lacks the clarity of the
`specification and thus is less useful for claim construction purposes.” Id.
`B.
`Indefiniteness
`A claim is indefinite if, when “viewed in light of the specification and prosecution history,”
`it fails to “inform those skilled in the art about the scope of the invention with reasonable
`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). A court’s
`ability to ascribe “some meaning” to a term during claim construction does not save the term.
`Indeed, the Supreme Court has expressly disfavored such “post hoc” efforts to “ascribe some
`meaning to a patent’s claims.” Id. at 2130 (emphasis on original). As such, a claim is indefinite
`where “the claim language ‘might mean several different things’ and ‘no informed and confident
`choice is available among the contending definitions.’” Interval Licensing LLC v. AOL, Inc., 776
`F.3d 1364, 1371 (Fed. Cir. 2014) (quoting Nautilus, 134 S. Ct, at 2130 & n.8). Even if a definition
`is supported by the specification, “the claim is still indefinite if a person of ordinary skill in the art
`cannot translate the definition into a meaningfully precise claim scope.” Id. (citation omitted).
`Moreover, a patent involving measurements must disclose a single known approach, or where
`multiple possible approaches exist, establish that one skilled in the art would know which approach
`
`3
`
`
`Page 3 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 4 of 24 PageID 2472
`
`
`to select. Dow Chem. Co. v. Nova Chems. Corp. (Canada), 803 F,3d 620, 630 (Fed. Cir. 2015).
`III. LEVEL OF ORDINARY SKILL IN THE ART
`ZTE submits that for the Asserted Patents, a person of ordinary skill in the art (“POSITA”)
`would have, at minimum, a bachelor’s degree in computer science, computer engineering,
`electrical engineering, or a related field, with at least two years of experience with power
`management, data communications, mobile operating systems, and application development.
`ZTE’s Appendix in support of its Opening Claim Construction Brief (“Appx.”) Ex. F (Kardach
`Decl. ¶30). Extensive experience and technical training may substitute for educational
`requirements, while advanced education such as a relevant MS or PhD might substitute for
`experience. Id.
`IV. DISPUTED TERMS AND PHRASES
`1.
`Terms for the Construction in the ’019 Patent
`a.
`“mobile device parameters” (claim 5)
`Defendant’s Proposed Construction
`Plaintiff’s Proposed Construction
`Indefinite
`Plain and ordinary meaning. No construction
`necessary.
` If the Court determines further construction is
`necessary, the term should be construed as
`“configuration variables of the mobile device.”
` The term “mobile device parameters” has no discernable meaning and is not amenable to
`construction. Accordingly, it is indefinite. Nothing in the claims, specification, or prosecution
`history provides any guidance or examples of what constitutes a “mobile device parameter[s].” In
`contrast to the term “mobile device parameters,” the applicant endeavored to clearly define a
`related term, “mobile device properties,”1 in the specification. Appx. Ex. A (’019 Patent at 8:5-
`
`1“Mobile device properties” is also found in claims 1 and 16 of the ’019 Patent, both claims of
`
`4
`
`
`Page 4 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 5 of 24 PageID 2473
`
`
`8) (“In addition, the local proxy 175 can identify and retrieve mobile device properties including,
`one or more of, battery level, network that the device is registered on, radio state, whether
`the mobile device is being used (e.g., interacted with by a user).”) (emphasis added); Id. at 25:23-
`27 (“The local proxy can delays or modifies data prior to transmission to the proxy serve and can
`additionally identify and retrieve mobile device properties including, one or more of, battery
`level, network that the device is registered on, radio state, whether the mobile device is being
`used.”) (emphasis added). Unlike the term “mobile device properties,” there is no guidance in the
`specification that would help a POSITA reasonably determine the scope of the term “mobile device
`parameters.” Moreover, the term “mobile device parameters” does not have a standard meaning in the
`art. Appx. Ex. F (Kardach Decl. at ¶79). Within the context of the ’019 Patent, “mobile device
`parameters” could mean a number of possible things to a POSITA, including, but not limited to
`(1) the type of operating system on the mobile device, (2) the version of the operating system on
`the mobile device, (3) the amount of memory on the mobile device, (4) the particular network card
`on the mobile device, and (5) type and/or speed of the processor on the mobile device. Id. Even
`assuming, arguendo, a POSITA could articulate a definition for the term “mobile device
`parameters,” that does not resolve the ambiguity of the claim. See Haliburton Energy Servs., Inc.
`v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Even if a claim terms definition can be reduced
`to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the
`definition into meaningfully precise claim scope.”) Such ambiguity means that there can be no
`reasonable certainty as to the metes and bounds of what is a “mobile device parameter[s].”
`Even if Plaintiff’s proposed construction “configuration variables of the mobile device”
`
`which are asserted by Plaintiffs in this action.
`
`5
`
`
`Page 5 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 6 of 24 PageID 2474
`
`
`were supported by the claim language and specification (which it is not), Plaintiff’s proposed
`construction is still untenable in that it fails to shed light on the meaning of the disputed term.
`There is nothing in the specification that defines what is a “configuration variable[s].” In this case,
`Plaintiff’s proposed construction is no clearer than the term “mobile device parameters” itself.
`Also, Plaintiff’s construction is not useful to a juror as it simply replaces “parameters” with
`“configuration variables,” which leaves the term equally undecipherable to a jury. In short,
`Plaintiff’s proposed construction raises more questions than it answers. Accordingly, even if the
`Court were inclined to adopt Plaintiff’s proposed construction, claim 5 should still be found invalid
`as indefinite. 2.
`Terms for the Construction of the ’600 Patent
`a.
`“non-common channel” (claim 7)
`Defendant’s Proposed Construction
`Plaintiff’s Proposed Construction
`Indefinite
`“application-specific data channel to an
` Alternative if not indefinite: “application
`application server”
`specific push channel”
`The term “non-common channel” does not have a clear and established meaning in the art
`and conveys different meanings to different POSITAs under different circumstances. Appx. Ex. I
`(Kardach Decl. at ¶43). For instance, as used in the ’600 Patent, the generic term “channel” is
`ambiguous and unclear as it could refer to any number of physical, logical, multiplexed, or radio
`communications paths. Id. In addition, while the specification of the ’600 Patent repeatedly refers
`to “overlapping push channels,” see, e.g., Appx. Ex. B (‘600 Patent Abstract, 2:9-3:7, 26:45-
`27:43), a POSITA would not be able to understand or determine with reasonable certainty what
`attribute of the channels was “overlapping” (e.g., the bandwidth, radio frequency, content, or
`logical grouping) or the proper scope or bounds of the claimed “channel.” Appx. Ex. F (Kardach
`Decl. at ¶43). Without this guidance, a POSITA would not be apprised of the scope of the claims
`
`6
`
`
`Page 6 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 7 of 24 PageID 2475
`
`
`with reasonable certainty, and as such, claim 7 of the ’600 Patent is indefinite. Id.
`The term “non-common channel” also does not have a standard meaning in the relevant
`technical field. Within the context of the ’600 Patent, a POSITA could understand “non-common
`channel” to mean a number of possible things, including, but not limited to:
`1. A channel which does not use the same network (e.g. public internet vs. home network)
`as one or more other channels;
`2. A channel which does not use the same transport protocol (e.g. TCP/IP vs. UDP/IP vs.
`OSI transport protocol) as one or more other channels;
`3. A channel which uses the same network and transport protocol as one or more other
`channels, but which uses a different application-layer protocol (e.g. HTTP vs. XMPP
`vs. WAP);
`4. A channel which does not use the same link-layer channel (e.g. WiFi, Bluetooth
`hopping pattern); or
`5. Any of the many non-control channels in cellular networks.
`Appx. Ex. F (Kardach Decl. at ¶44). Even if a POSITA could articulate a definition for the term
`“non-common,” the claim is still indefinite if a person of ordinary skill in the art cannot translate
`the definition into meaningfully precise claim scope. See Haliburton Energy Servs., Inc. v. M-I
`LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008); see also Dow Chem. Co. v. Nova Chems. Corp.
`(Canada), 803 F.3d 620, 630, 633-34 (Fed Cir. 2015) (holding that term “slope of strain
`hardening” was indefinite as there were at least four methods to measure the parameter, the
`methods could give different results, and the specification did not provide guidance as to which
`method should be used; “the patent and prosecution history must disclose a single known approach
`or establish that, where multiple known approaches exist, a person having ordinary skill in the art
`would know which approach to select”); Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335,
`1341-42 (Fed. Cir. 2015) (holding that term “molecular weight” was indefinite because it could be
`measured three different ways and the written description did not provide guidance as to which
`method to use).. Accordingly, the term “non-common channel” should be held invalid under
`Section 112(2).
`
`Alternatively, if the Court determines that the term “non-common channel” is not
`
`7
`
`
`Page 7 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 8 of 24 PageID 2476
`
`
`indefinite, it should be construed as it is used consistently in the specification and in the file history
`– an “application specific push channel.” The specification repeatedly refers to the “non-common
`channel” as an “application specific channel.” Appx. Ex. B (’600 Patent at 1:40-42) (“by
`offloading application traffic from a propriety or application specific communication channel to
`a shared communication channel”) (emphasis added); Id. at 5:44-52 (“the disclosed innovation
`herein provides systems and methods for offloading or redirecting application traffic from the
`application-specific channel to a shared channel”) (emphasis added). Even Plaintiff’s expert, Dr.
`Michael T. Goodrich, agrees that the “non-common channel” is application specific. Appx. Ex. I
`(Goodrich Decl. ¶79).
`With respect to “push,” the prosecution history clearly explains that the “non-common
`channel” is a “push channel.” Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v.
`Mega Sys., LLC, 350 F.3d 1327, 1338-40 (Fed. Cir. 2003) (noting that the correct meaning of a
`claim term may be determined by reviewing the prosecution history). On February 5, 2016, in
`response to the November 5, 2015 Office Action, the applicant amended independent claims 1, 7,
`and 13 to include the following additional claim limitations: “wherein the first channel includes a
`non-common channel” and “wherein the second channel includes a common channel.” Appx. Ex.
`_G. In support of that amendment, the applicant explained that the “non-common channel” “as
`claimed” was limited to “push” channel. Specifically, the applicant responded as follows:
`Monitoring the application traffic over the second channel and
`unblocking the first channel based on the monitored application
`traffic may include receiving a push message from an additional
`push channel (i.e., second channel) and unblocking the blocked
`push channel (i.e., first channel) so that the application can perform
`an action in response to the message from the additional push
`channel. This may include re-blocking the unblocked push channel
`after the action has completed, such as denying blocking of the push
`channel until a radio of the mobile device is powered on. Thus, the
`method includes blocking a non-common push channel to offload
`the communication onto a common push channel.
`8
`
`
`
`
`
`Page 8 of 24
`
`

`

`(Kardach Decl. ¶51). Accordingly, the Court should adopt ZTE’s construction.
`
`
`
`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 9 of 24 PageID 2477
`
`. . . The cited references, separately or in combination, fail to teach or
`suggest (1) offloading application traffic from a non-common push
`channel to a common push channel and (2) unblocking the first
`channel bas so that the application can perform an action and re-
`blocking the first channel after the action has been completed, as
`claimed.
`. . . Similarly, nowhere does Annan teach or suggest that the first
`channel is a non-common push channel and the second channel (to
`which the first channel is offloaded) is a common push channel, as
`claimed.
`. . . The remaining references fail to overcome the shortcomings of
`Annan. Nowhere do the cited references teach or suggest offloading
`application traffic from a non-common push channel to a common
`push channel or unblocking the first channel bas so that the
`application can perform an action and re-blocking the first channel
`after the action has been completed, as claimed.
`Appx. Ex. G (Amendment and Response to November 5, 2015 Office Action at 6-10) (emphases
`added). A POSITA reviewing the Amendment and Response to the November 5, 2015 Office
`Action would understand that the “non-common channel” was a push channel. Appx. Ex. F
`b.
`“common channel” (claim 7)
`Defendant’s Proposed Construction
`Plaintiff’s Proposed Construction
`Indefinite
`“data channel shared by multiple applications”
` Alternative if not indefinite: “shared push
`channel”
`This term is indefinite for the same reasons the term “non-common channel” is indefinite.
`See supra at IV.3.a. The term “common channel” also does not have a standard meaning in the
`relevant technical field. Appx. Ex. F (Kardach Decl. ¶53). Within the context of the ’600 Patent,
`
`9
`
`
`Page 9 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 10 of 24 PageID 2478
`
`
`a POSITA could understand “common channel” to mean a number of possible things, including,
`but not limited to:
`1. A channel which uses the same network (e.g. public Internet vs home network) as one
`or more other channels;
`2. A channel which uses the same transport protocol (e.g. TCP/IP vs UDP/IP vs OSI
`transport) as one or more other channels;
`3. A channel which uses the same network and transport protocol as one or more other
`channels, and which also uses the same application-layer protocol (e.g. HTTP vs XMPP
`vs WAP);
`4. A channel which uses the same link-layer channel (e.g. WiFi, Bluetooth hopping
`pattern) as one of more other channels; or
`5. The shared control channel used in cellular networks. For example, in GSM cellular
`networks a control channel is shared by all mobile phones to coordinate the setup of a
`connection between a given mobile phone and the cellular network. It is called the
`“Common Channel”.
`Id. Even if a POSITA could articulate a definition for the term “common,” the claim is still
`indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully
`precise claim scope. See Haliburton, 514 F.3d at 1251; Dow, 803 F.3d at 633-34; Teva, 789 F.3d
`at 1341-42. Accordingly, the term “common channel” should be held invalid under Section
`112(2). Alternatively, if the Court determines that the term “common channel” is not indefinite, it
`should be construed as it is used consistently in the specification and in the file history – a “shared
`push channel.” The specification makes clear that the “common channel” is a “shared channel.”
`Appx. Ex. F (Kardach Decl. ¶55); Appx. Ex. B (’600 Patent at 1:40-42) (“by offloading application
`traffic from a propriety or application specific communication channel to a shared
`communication channel”) (emphasis added); Id. at 5:44-52 (“the disclosed innovation herein
`provides systems and methods for offloading or redirecting application traffic from the
`application-specific channel to a shared channel”) (emphasis added). Even Plaintiff’s expert, Dr.
`Michael Goodrich, agrees that the “common channel” is a shared communication (or data) channel.
`See Appx. Ex. I (Goodrich Decl. at ¶69).
`
`10
`
`
`Page 10 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 11 of 24 PageID 2479
`
`
`With respect to “push,” the prosecution history supports ZTE’s construction that the
`“common channel” is a “push channel” for the same reasons as the term “non-common channel”
`is a “push channel” – including the Applicant’s repeated explanation that “as claimed” the
`“common channel” was limited to “push” channels. See supra at IV.3.a. Accordingly, the Court
`should adopt ZTE’s construction.
`3.
`Terms for the Construction of the ’254 Patent
`a.
`“system wakelock”
`Disputed Term
`Defendant’s Proposed
`Plaintiff’s Proposed
`Construction
`Construction
`“system wakelock”
`Plain and ordinary meaning.
`“software-based mechanism
` Claims 1, 8, 10, 14, 15, 28,
`No construction necessary.
`for keeping the CPU awake”
`32, 33
` The term “system wakelock” should receive its plain and ordinary meaning, which is
`readily understood from the specification of the ‘254 patent:
`In some embodiments, the wakelock optimizer monitors such wakelocks,
`and once they are observed to be acquired, releases the system wakelock (which
`is the actual wakelock controlling the CPU wakeup state, and is triggered by
`the wakelocks set by the applications) while monitoring whether any other, non-
`targeted, wakelock is acquired, and restore the system wakelock if they are. The
`wakelock optimizer also considers end user activity and screen state as parameters
`to restore the system wakelock if needed. Identification [sic] which wakelock
`caused the system wakelock to get set can be achieved through, for example, using
`"dumpsys -power" command in Android platform.
`
`See Appx. Ex. C (‘254 Patent at 5:28-39).
`
`Plaintiff has not identified any basis for departing from this meaning. Plaintiff’s lead
`citations to support this construction post-date the issuance of the patent in January 2015, and
`could not demonstrate the perspective of a POSITA at that time. See SEVEN’s Preliminary
`Proposed Claim Constructions and Extrinsic Evidence at A-6 – A-7 (citing Keeping the Device
`
`11
`
`
`Page 11 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 12 of 24 PageID 2480
`
`
`Awake, Android Developers, https://developer. android.com/training/scheduling/wakelock.html
`(last visited Dec 28, 2017); see also (“PowerManager.WakeLock, Android Developers,
`https://developer.android.com/reference/ android/os/ PowerManager.WakeLock.html (last visited
`Dec
`28,
`2017);
`and
`PowerManager,
`Android
`Developers,
`https://developer.android.com/reference/android/os/PowerManager.html (last visited Dec 28,
`2017)). The remaining citations describe the terms “wakelock,” and “lock,” not “system
`wakelock.” See SEVEN’s Preliminary Proposed Claim Constructions and Extrinsic Evidence at
`A-7 – A-8 (citing Wakelocks for Android, Intel (Sept. 20, 2012) and Lock, DICTIONARY OF
`COMPUTER SCIENCE, ENGINEERING, AND TECHNOLOGY (Phillip Laplante ed., 2001)).
`These terms appear to be used differently within the specification, and appear to have different
`meanings. See Appx. Ex. C (‘254 Patent at 5:36-39) (“Identification [sic] which wakelock caused
`the system wakelock to get set can be achieved through, for example, using "dumpsys -power"
`command in Android platform.”) Plaintiff also references possible testimony by Dr. Hugh Smith,
`see SEVEN’s Preliminary Proposed Claim Constructions and Extrinsic Evidence at A-8, but no
`declaration by Dr. Smith or any other expert appears to have been submitted in support of
`Plaintiff’s claim construction.
`
`b.
`“not critical to user experience”
`Disputed Term
`Defendant’s Proposed
`Construction
`Indefinite
`“not critical to user
`experience”
` Claims 1, 10, 28
`12
`
`Plaintiff’s Proposed
`Construction
`This phrase is defined by the
`claim language itself, which
`makes it clear that an
`application is “not critical to
`
`
`
`
`
`Page 12 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 13 of 24 PageID 2481
`
`
`user experience” when the
`application is “not identified
`on a whitelist.”
`What is “critical to user experience” is inherently subjective, and therefore the scope of
`the claim cannot be ascertained with reasonable certainty. Cf. Nautilus, 134 S. Ct. at 2129. An
`application that is critical to the experience of one user may not be critical to another. Similarly,
`designers and engineers of mobile devices (i.e., persons of ordinary skill in the art) may differ in
`which applications they consider critical to user experience. A map application may be critical
`to user experience when the user is actively consulting her device for navigation, but not critical
`if the device is in the user’s pocket.
`The Federal Circuit has held that analogous terms are indefinite. E.g., Interval Licensing,
`766 F.3d at 1371 (“The patents’ ‘unobtrusive manner’ phrase is highly subjective and, on its face,
`provides little guidance to one of skill in the art. . . . As the district court observed, ‘whether
`something distracts a user from his primary interaction depends on the preferences of the particular
`user and the circumstances under which any single user interacts with the display.’”) (citation
`omitted). In a leading case before Nautilus, the Federal Circuit found the term “aesthetically
`pleasing” indefinite due to its intrinsic subjectivity. Datamize, LLC v. Plumtree Software, Inc.,
`417 F.3d 1342, 1350 (Fed. Cir. 2005) (“In the absence of a workable objective standard,
`‘aesthetically pleasing’ does not just include a subjective element, it is completely dependent on a
`person’s subjective opinion.”), abrogated on other grounds by Nautilus, 134 S. Ct. 2120. This
`insight from Datamize applies equally well after Nautilus. E.g., Versata Software, Inc. v. Zoho
`Corp., 213 F. Supp. 3d 829, 835 (W.D. Tex. 2016) (“Although Datamize was determined under
`the more difficult pre-Nautilus framework for finding indefiniteness, the Court nevertheless finds
`it instructive, as its reasoning comports with the test for indefiniteness established in Nautilus.”).
`The written description does not give any more clarity to what is “critical to user
`
`13
`
`
`Page 13 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 14 of 24 PageID 2482
`
`
`experience.” The specification notes that criticality could vary “on an application-by-application
`basis,” but that does not help determine what is critical. Appx. Ex. C (’254 Patent at 31:53-55).
`The specification also says that criticality could be based on “determining that a wakelock is
`unnecessary for operation of the mobile device.” Id. at 31:49-52. But in the context of claims 1,
`10, and 28, this is unhelpful and circular. Those claims cover a system that decides whether to
`release or hold a wakelock (i.e., whether the wakelock is necessary for operation) based on whether
`an application is critical to user experience, not the other way around.
`Plaintiff’s argument that the term is defined by other claim language (“not identified on a
`whitelist”) is incorrect. It is true that an otherwise-indefinite claim term may be defined in the
`written description. E.g., Personalized Media Commc’ns, LLC v. ITC, 161 F.3d 696 (1998). But
`here, the purported definition “not identified on a whitelist” is not part of the written description.
`The specification contains no mention of a whitelist. The originally-filed claims of the ’254 Patent
`do not mention a whitelist. The concept of an application whitelist was first introduced by a claim
`amendment in the middle of prosecution. See Appx. Ex. H (Response to Non-Final Office Action
`dated Feb. 11, 2016, pgs. 2-5). It is well-established that claims modified by amendment are not
`part of the written description of the invention. E.g., Anascape, Ltd. v. Nintendo of Am. Inc., 601
`F.3d 1333, 1337 (Fed. Cir. 2010). The public notice and fairness purposes of the statutory
`definiteness requirement would be frustrated if new definitions for originally-indefinite terms
`could be imported into the claims, long after filing the application, from outside the written
`description. Moreover, even it could be used, the purported definition does not provide sufficient clarity
`for what is “critical to user experience.” The other claim language may provide an example of one
`category of what is “not critical to user experience,” but it leaves open the possibility that there
`may be additional types of applications that are also not critical. And according to standard claim
`
`14
`
`
`Page 14 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 15 of 24 PageID 2483
`
`
`construction canons, the two terms should not be construed to be co-extensive because that would
`effectively read the phrase “critical to user experience” out of the claims. See Comark
`Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (“There is presumed
`to be a difference in meaning and scope when different words or phrases are used in separate
`claims. To the extent that the absence of such difference in meaning and scope would make a
`claim superfluous, the doctrine of claim differentiation states the presumption that the difference
`between claims is significant.” (citation omitted)).
`4.
`Terms for the Construction of the ’127 Patent
`a.
`“to enter and exit the power save mode is further based on a
`charging status of the mobile device”
`Disputed Term
`Defendant’s Proposed
`Plaintiff’s Proposed
`Construction
`Construction
`“to enter and exit the power
`Indefinite
`Plain and ordinary meaning.
`save mode is further based on
`No construction necessary.
`a charging status of the
` If the Court determines
`mobile device”
` Claims 16, 21
`further construction is
`necessary, the term should be
`construed as “to enter and
`exit the power save mode is
`further based on a charging
`status (one or more) of the
`mobile device.”
`The parties’ dispute focuses on what the term “charging status” means. This phrase is
`indefinite as it fails to inform those skilled in the art, with reasonable certainty, about the scope of
`the invention. Indeed, the phrase “charging status” never appears in the specification and fails to
`inform a POSITA of the particular mobile device environment necessary to satisfy the “charging
`status” conditions.
`Additionally, while the individual words of the phrase may be known, the phrase as a whole
`fails to clarify as to what constitutes a “charging status” of the mobile device. For example, the
`“charging status” of a mobile device can mean any of the following scenarios: the device is
`
`15
`
`
`Page 15 of 24
`
`

`

`
` Case 3:17-cv-01495-M Document 79 Filed 02/21/18 Page 16 of 24 PageID 2484
`
`
`currently plugged into a power source (or it is not);