Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 1 of 25 PageID #: 7913
`
`
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`SEVEN NETWORKS, LLC,
`
`
`
`v.
`
`GOOGLE LLC,
`
`
`
`
`v.
`
`SAMSUNG ELECTRONICS AMERICA, INC. AND
`SAMSUNG ELECTRONICS CO., LTD.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`Defendants.
`
`CIVIL ACTION NO. 2:17-CV-442-JRG
`LEAD CASE
`
`PATENT CASE
`
`JURY TRIAL DEMANDED
`
`CIVIL ACTION NO. 2:17-CV-441-JRG
`CONSOLIDATED CASE
`
`
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`
`In accordance with P.R. 4-3 and the March 13, 2018 Docket Control Order (Doc. No.
`
`127), Plaintiff SEVEN Networks, LLC and Defendants Google LLC, Samsung Electronics
`
`America, Inc., and Samsung Electronics Co., Ltd., submit the following Joint Claim
`
`Construction and Prehearing Statement, except for any expert declarations, which the parties will
`
`file on May 18, 2018, in accordance with the parties’ Joint Motion to Amend the Court’s Docket
`
`Control Order [Doc. No. 171].
`
`I.
`
`AGREED CONSTRUCTIONS1
`
`Patent
`
`Term
`
`Agreed Construction
`
`’952
`
`“on a periodic basis”
`
`“at recurring approximately regular
`
`
`1 SEVEN is no longer asserting claim 16 of the ’816 patent and claims 10 and 26 of the ’129 Patent.
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 1
`
`Page 1 of 197
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`GOOGLE EXHIBIT 1034
`
`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 2 of 25 PageID #: 7914
`
`
`Patent
`
`Term
`
`Agreed Construction
`
`
`Claim 26
`
`intervals”
`
`“suppressing the aligned content requests”
`
`Claim 1.
`
`“preventing content requests that have
`been aligned from being sent”
`
`“offloading application traffic of an
`application onto a second channel”
`
`Claim 7.
`
`“alarms”
`
`Claims 11, 18.
`
`“diverting application traffic of an
`application onto a second channel”
`
`“time-based triggers used by applications
`to schedule tasks”
`
`“the digital content”
`
`Claims 1–9, 16, 19–22, 25, 27, and 29–30.
`
`“the digital content” refers to the
`“available digital content”
`
`DISPUTED CONSTRUCTIONS AND EVIDENCE
`
`’019
`
`’600
`
`’127
`
`’433
`
`
`II.
`
`The parties’ respective proposed constructions for disputed terms are listed below.
`
`Identification of intrinsic and extrinsic evidence is provided in Appendix A (for SEVEN) and
`
`Appendix B (for Google and Samsung).
`
`Patent
`
`’952
`
`Term
`
`“periodicity” 2
`
`Claim 26.
`
`SEVEN
`
`Google and Samsung
`
`No construction necessary.
`The term “periodicity” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“recurrence”).
`
`“recurrence at approximately
`regular intervals”
`
`’952
`
`“the periodicity of
`the synchronization
`requests occur at a
`
`No construction necessary.
`The term “the periodicity of
`the synchronization requests
`
`“the recurrence at
`approximately regular
`intervals of the
`
`
`2 The parties have listed each term as it appears in the patents, but will be briefing the terms in groups where
`appropriate. For example, Defendants intend to brief “periodicity” along with “the periodicity of the
`synchronization requests occur at a frequency according to remaining battery power on the mobile device.”
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 2
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`Page 2 of 197
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`

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`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 3 of 25 PageID #: 7915
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`synchronization requests
`occur at a frequency that the
`mobile device determines
`according to its remaining
`battery power”
`
`Indefinite
`
`frequency according
`to remaining battery
`power on the mobile
`device”
`
`Claim 26.
`
`’952
`
`“synchronization
`request”
`
`Claim 27.
`
`occur at a frequency
`determined according to
`remaining battery power on
`the mobile device” is used
`consistent with its plain and
`ordinary meaning, in light of
`SEVEN’s construction for
`“periodicity” above.
`
`SEVEN objects to
`Defendants’ late disclosure
`of this proposed term as
`being indefinite.3
`
`If the Court determines this
`term is at issue, no
`construction is necessary. The
`term “synchronization
`request” is not indefinite, and
`it is used consistent with its
`plain and ordinary meaning
`
`
`3 SEVEN’s position: The term “synchronization request” was not identified in Defendants’ P.R. 3-3 Invalidity
`Contentions (dated November 15, 2017) as allegedly indefinite. This term was also not identified in Defendants’
`P.R. 4-1 Disclosures (dated February 13, 2018). Accordingly, SEVEN contends that this term is not in issue.
`
`Defendants’ position: Defendants identified “synchronization requests” (plural) in independent claim 26 as
`indefinite in their P.R. 3-3 Invalidity Contentions and included a larger phrase containing this term in their P.R. 4-1
`Disclosures. SEVEN therefore had ample notice that this term was in dispute and Defendants would allege
`indefiniteness. The Court should construe this disputed claim term, as it is a fundamental dispute that has been
`presented prior to claim construction briefing and SEVEN cannot reasonably claim surprise. See EnerPol, LLC v.
`Schlumberger Tech. Corp., Case No. 2:17-cv-00394-JRG, Dkt. 99 at 5,6 (E.D. Tex. Jan. 31, 2018) (construing a
`term proposed months after the P.R. 4-1 deadline and noting there was no surprise because the proposed
`construction was included in the P.R. 4-3 statement). Where the parties “have a fundamental dispute regarding the
`scope” of a claim and “where the dispute has been presented prior to the Markman hearing and prior to the
`Markman briefing,” as is the case here, “it is both appropriate and necessary to consider the Parties’ dispute over the
`claim term.” Id.; see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 621 F.3d 1351, 1362 (Fed. Cir.
`2008) (“When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to
`resolve it.”). Here, there is no prejudice to SEVEN, who will have a full opportunity to brief this limitation.
`Moreover, the Court should address the indefiniteness of this term, as it is a question of law for the Court to
`adjudicate. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Federal
`Circuit has expressly allowed district courts to engage in a rolling approach to claim construction in various stages
`of litigation, see, e.g., Conoco, Inc. v. Energy & Envtl, Int'l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006). Since the
`Court has not conducted a claim construction hearing yet, SEVEN cannot reasonably claim unfair prejudice,
`especially when “finding claims indefinite is not a matter of adopting a different construction . . . to which the
`patentee needs to adjust, but a matter of concluding that no construction of the disputed claims is
`possible.” Accentra Inc. v. Staples, Inc., 851 F. Supp. 2d 1205, 1212 (C.D. Cal. 2011), aff’d in part, rev’d in part on
`other grounds and remanded, 500 F. App’x 922 (Fed. Cir. 2013).
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 3
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`Page 3 of 197
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`

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`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 4 of 25 PageID #: 7916
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`’019
`
`“delay content
`requests”
`
`Claim 1.
`
`’019
`
`“content requests”
`
`Claims 1, 5, 20.
`
`’019
`
`“align content
`requests”
`
`Claim 1.
`
`’019
`
`“key press”
`
`Claim 1.
`
`’019
`
`“user keystrokes”
`
`Claim 11.
`
`(i.e., “request to
`synchronize”).
`
`No construction necessary.
`The term “delay content
`requests” is used consistent
`with its plain and ordinary
`meaning (i.e., “defer content
`requests”).
`
`No construction necessary.
`The term “content requests”
`is not indefinite, and it is used
`consistent with its plain and
`ordinary meaning (i.e., “data
`requests”).
`
`No construction necessary.
`This phrase is clear and
`unambiguous, and all of the
`terms in it are being used
`consistent with their plain and
`ordinary meanings (i.e.,
`“adjust a timing of content
`requests to occur at
`approximately the same
`time”).
`
`No construction necessary.
`The term “key press” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“activation of a physical or
`touch screen key”).
`
`No construction necessary.
`The term “user keystrokes” is
`used consistent with its plain
`and ordinary meaning (i.e.,
`“user activations of physical
`or touchscreen keys”).
`
`“move content requests to a
`later point of time”
`
`
`Indefinite
`
`
`“adjust polling intervals of
`content requests to coincide
`regularly”
`
`“stroke or press of a
`keyboard”
`
`
`“strokes or presses of a
`keyboard by a user”
`
`’019
`
`“observed activity
`includes backlight
`
`The term “backlight status,”
`when considered in light of
`
`“the status of an illumination
`device positioned behind a
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 4
`
`Page 4 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 5 of 25 PageID #: 7917
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`status”
`
`Claim 12.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`“common channel”
`
`Claim 7.
`
`“non-common
`channel”
`
`Claim 7.
`
`“monitoring the
`application traffic of
`the application”
`
`Claim 7.
`
`“blocking a first
`channel” / “re-
`blocking the first
`channel”
`
`Claim 7.
`
`non-emissive display”
`
`the broader phrase “observed
`activity includes backlight
`status” is used consistent with
`its plain and ordinary
`meaning (i.e., “observed
`activity includes whether a
`screen of the mobile device is
`on”).
`
`“data channel shared by
`multiple applications”
`
`“shared push channel”
`
`“application-specific data
`channel to an application
`server”
`
`“an application-specific push
`channel”
`
`
`“monitoring the offloaded
`traffic generated by the
`application”
`
`
`“ignoring, rejecting, or
`dropping all network traffic
`on the first channel”
`
`No construction necessary.
`This phrase is clear and
`unambiguous, and all of the
`terms in it are being used
`consistent with their plain and
`ordinary meanings.
`
`No construction necessary.
`The phrases “blocking a first
`channel” and “re-blocking the
`first channel” are not
`indefinite, and are used
`consistent with their plain and
`ordinary meanings.
`
`Indefinite
`
`“non-transitory
`computer readable
`media…comprising:
`blocking…;
`offloading…;
`monitoring…;
`unblocking…; re-
`blocking…”
`
`The preamble is limiting, it is
`not indefinite, and it is used
`consistent with its plain and
`ordinary meaning (i.e., “non-
`transitory computer readable
`media containing computer
`code to implement a
`processor controlled system
`
`’600
`
`’600
`
`’600
`
`’600
`
`’600
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 5
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`Page 5 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 6 of 25 PageID #: 7918
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`’254
`
`’254
`
`’254
`
`’127
`
`for reducing network traffic,
`comprising instructions for:”).
`
`“software-based mechanism
`for keeping the CPU awake”
`
`No construction necessary.
`These phrases are defined by
`the claim language itself,
`which makes it clear that an
`application is “not critical to
`user experience” when the
`application is “not identified
`on a whitelist.”
`
`No construction necessary.
`The term “keystrokes” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“activations of physical or
`touchscreen keys”).
`
`The term “backlight,” when
`considered in light of the
`broader phrase “exiting the
`power save mode when the
`backlight of the mobile
`device turns off” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“exit[ing] the power save
`mode when the screen of the
`mobile device turns on”).
`
`
`Claim 7.
`
`“system wakelock”
`
`Claims 1, 8, 9, 10,
`14, 15, 28, 32, and
`33.
`
`“not critical to user
`experience” /
`“wherein the
`application is non-
`critical”
`
`Claims 1, 10, 28.
`
`“keystrokes”
`
`Claims 2, 6, 7, 11,
`13, 29, 31.
`
`“exiting the power
`save mode when the
`backlight of the
`mobile device turns
`on”
`
`Claims 10, 17.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`“the actual wakelock
`controlling the CPU wakeup
`state, and is triggered by the
`wakelocks set by the
`applications”
`
`Indefinite
`
`“strokes or presses of a
`keyboard”
`
`
`
`“[the status of] an
`illumination device
`positioned behind a non-
`emissive display”
`
`
`
`’127
`
`“enter[ing] a power
`save mode based on a
`backlight status”
`
`The term “backlight status,”
`when considered in light of
`the broader phrase “enter[ing]
`
`“[the status of] an
`illumination device
`positioned behind a non-
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 6
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`Page 6 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 7 of 25 PageID #: 7919
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`emissive display”
`
`
`“move the timing of one or
`more triggers to a later point
`of time”
`
`Indefinite
`
`Plain and ordinary meaning
`
`
`Claims 10, 17.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`“delay a timing of
`one or more triggers”
`
`Claims 10, 17.
`
`“at least a subset of
`the triggers are
`associated with
`wakelocks”
`
`Claims 10, 17.
`
`’127
`
`’127
`
`’127
`
`“wakelock[s]”
`
`Claims 10, 17.
`
`a power save mode based on
`a backlight status” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“enter[ing] a power save
`mode based on whether a
`screen is on”).
`
`
`No construction necessary.
`The phrase “delay a timing of
`one or more trigger” is used
`consistent with its plain and
`ordinary meaning (i.e., “defer
`a timing of one or more
`triggers”).
`
`No construction necessary.
`The phrase “at least a subset
`of the triggers are associated
`with wakelocks” is not
`indefinite, and it is used
`consistent with its plain and
`ordinary meaning.
`
`SEVEN objects to
`Defendants untimely
`proposing extrinsic evidence
`for this term after the P.R.
`4-2 deadline.4
`
`The term “wakelock[s]”
`should be construed as “a
`software-based mechanism
`for indicating that an
`application needs the mobile
`device to stay awake.”
`
`’127
`
`“receive a selection
`
`The phrase “receive a
`
`Indefinite
`
`
`4 Defendants’ position: Defendants inadvertently omitted this term from their P.R. 4-2 disclosures and served a
`corrected version including this term on May 7, 2018 after the error was discovered.
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 7
`
`Page 7 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 8 of 25 PageID #: 7920
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`from a user whether
`to optimize traffic”
`
`Claims 33, 42.
`
`’127
`
`“optimize
`background traffic”
`
`Claims 33, 42.
`
`“optimizes the use of
`battery, CPU and
`memory resources”
`
`Claims 13, 30, 38,
`and 48.
`
`
`
`selection from a user whether
`to optimize traffic” is not
`indefinite, and it is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“receive a selection from a
`user whether to adjust traffic
`to conserve network or
`mobile device resources”).
`
`Indefinite
`
`Indefinite
`
`The phrase “optimize
`background traffic” is not
`indefinite, and it is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“adjust background traffic to
`conserve network or mobile
`device resources”).
`
`The phrase “receive a
`selection from a user whether
`to optimize traffic” is not
`indefinite, and it is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“conserves the use of battery,
`CPU, and memory
`resources”).
`
`’127
`
`’127
`
`’129
`
`’129
`
`“adjust a timing of
`activities . . . to
`reduce usage of at
`least one resource”
`
`Claims 33, 42.
`
`No construction necessary.
`The phrase “adjust a timing of
`activities . . . to reduce usage
`of at least one resource” is
`used consistent with its plain
`and ordinary meaning.
`
`“move a timing of activities
`to reduce usage of at least one
`resource of the mobile
`device”
`
`“block”
`
`Claims 1, 17.
`
`“executing in a
`background” /
`“executing in
`
`No construction necessary.
`The term “block” is used
`consistent with its plain and
`ordinary meaning.
`
`No construction necessary.
`These phrases are not
`indefinite, and are used
`
`“intercept”
`
`
`Indefinite
`
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 8
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`Page 8 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 9 of 25 PageID #: 7921
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`Indefinite
`
`“the illumination device
`positioned behind a non-
`emissive display”
`
`“the illumination device
`positioned behind a non-
`emissive display”
`
`’129
`
`’129
`
`’129
`
`consistent with their plain and
`ordinary meanings.
`
`No construction necessary.
`The phrase “executing in a
`foreground” is not indefinite,
`and it is used consistent with
`its plain and ordinary
`meaning.
`
`The term “backlight [status],”
`when considered in light of
`the broader phrase “detected
`activity status is based on a
`backlight [status] of the
`mobile device being off” is
`used consistent with its plain
`and ordinary meaning (i.e.
`“detected activity status is
`based on a screen of the
`mobile device being off”).
`
`The term “backlight,” when
`considered in light of the
`broader phrase “detected
`activity status is further based
`on a time that the backlight
`has been off,” is used
`consistent with its plain and
`ordinary meaning (i.e.,
`“detected activity status is
`further based on a time that
`the screen has been off”).
`
`
`background”
`
`Claims 1, 17.
`
`“executing in a
`foreground”
`
`Claims 1, 17.
`
`
`“detected activity
`status is based on a
`backlight [status] of
`the mobile device
`being off”
`
`Claims 1, 17.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`“detected activity
`status is further
`based on a time that
`the backlight has
`been off”
`
`Claims 2, 18.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`’129
`
`“detected activity that The term “backlight,” when
`
`“the illumination device
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 9
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`Page 9 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 10 of 25 PageID #: 7922
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`positioned behind a non-
`emissive display”
`
`considered in light of the
`broader phrase “detected
`activity that is based on the
`backlight of the mobile
`device being turned on,” is
`used consistent with its plain
`and ordinary meaning (i.e.,
`“detected activity that is
`based on the screen of the
`mobile device being turned
`on”).
`
`is based on the
`backlight of the
`mobile device being
`turned on”
`
`Claims 3, 19.
`
`(The italicized
`portions did not
`appear in
`Defendants’ amended
`4-1 disclosures but
`are necessary for
`proper context.)
`
`’129
`
`“battery charge
`status”
`
`Claims 6, 22.
`
`“first application is
`inactive”
`
`Claim 9.
`
`’816
`
`’816
`
`SEVEN objects to
`Defendants untimely
`proposing extrinsic evidence
`for this term after the P.R.
`4-2 deadline.5
`
`The phrase “battery charge
`status” should be construed as
`“battery level.”
`
`The phrase “first application
`is inactive” is clear and
`unambiguous, it is not
`indefinite, and it is being used
`consistent with its plain and
`ordinary meaning.
`
`Plain and ordinary meaning
`
`
`Indefinite
`
`Indefinite
`
`“determining whether
`the first application is
`inactive based on the
`time the first
`application was last
`accessed”
`
`Claim 9.
`
`The phrase “determining
`whether the first application
`is inactive based on the time
`the first application was last
`accessed” is clear and
`unambiguous, it is not
`indefinite, and it is used
`consistent with its plain and
`ordinary meaning.
`
`
`5 Defendants’ position: Defendants inadvertently omitted this term from their P.R. 4-2 disclosures and served a
`corrected version including this term on May 7, 2018 after the error was discovered.
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 10
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`Page 10 of 197
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`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 11 of 25 PageID #: 7923
`
`
`Patent
`
`’816
`
`’816
`
`’158
`
`’158
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`“an application . . . is
`inactive”
`
`Claim 13.
`
`“blocking”
`
`Claims 9 and 11.
`
`“identifying, from the
`mobile device, user
`information and the
`mobile device
`information of the
`mobile device” / “the
`user information and
`mobile device
`information
`concerning the
`mobile device are
`provided to a
`network server”
`
`Claim 10.
`
`“identifying, from the
`mobile device, user
`information and the
`mobile device
`information of the
`mobile device”
`
`Claim 10.
`
`Indefinite
`
`“intercepting”
`
`Order of steps: first limitation
`has to occur before the second
`limitation
`
`The phrase “an application . .
`. is inactive” is clear and
`unambiguous, it is not
`indefinite, and it is being used
`consistent with its plain and
`ordinary meaning.
`
`No construction necessary.
`The term “blocking” is used
`consistent with its plain and
`ordinary meaning.
`
`The step of “identifying, from
`the mobile device, user
`information and the mobile
`device information of the
`mobile device” is not required
`to occur before the element
`“the user information and
`mobile device information
`concerning the mobile device
`are provided to a network
`server.”
`
`No construction necessary.
`This phrase is clear and
`unambiguous, and the terms
`in it are being used consistent
`with their plain and ordinary
`meanings.
`
`“identifying, from the mobile
`device, user information and
`the mobile device information
`of the mobile device,
`excluding information that
`identifies the mobile device, a
`user of the mobile device, or a
`service provider account
`associated with the mobile
`device”
`
`’158
`
`“provisioning the
`application on the
`mobile device”
`
`Claim 10.
`
`No construction necessary.
`This phrase is clear and
`unambiguous, and all of the
`terms in it are being used
`consistent with their plain and
`
`“implementing
`configurations, implementing
`settings, or installing
`additional components
`required to operate the
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 11
`
`Page 11 of 197
`
`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 12 of 25 PageID #: 7924
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`’158
`
`’433
`
`’433
`
`ordinary meanings, which is
`“preparing the application for
`use on the mobile device.”
`
`No construction necessary.
`This phrase is clear and
`unambiguous, and all of the
`terms in it are being used
`consistent with their plain and
`ordinary meanings.
`
`application on the mobile
`device”
`
`“the requirements for
`operating the application,
`specifies non-application
`package components to be
`installed to provision the
`application on the mobile
`device”
`
`No construction necessary.
`The terms “service,” “service
`plan,” and “service policy”
`are used consistent with their
`plain and ordinary meanings.
`
`“MVNO service” / “MVNO
`service plan” / “MVNO
`service policy”
`
`“the requirements for
`operating the
`application, specifies
`components to be
`installed to provision
`the application on the
`mobile device”
`
`Claim 10.
`
`“service” / “service
`plan” / “service
`policy”
`
`Claims 1, 2, 13, 14,
`16, 30.
`
`“a first server . . . ,
`the first server
`configured to: receive
`a unique
`
`SEVEN objects to
`Defendants’ late proposed
`phrase, and late § 112(6)
`contention.6
`
`MPF 112(6) construction
`(“configured to” limitation):
`
`Function: “receive a unique
`
`
`6 SEVEN’s position: Defendants’ Proposed Terms and Claim Elements for Construction (dated February 13, 2018)
`identified “first server” for construction but nowhere identified “the first server configured to: receive a unique
`authentication token from the mobile device over the mobile network, and provide a service to the mobile device via
`the mobile network, wherein the service is associated with the unique authentication token and branded by an entity
`other than an entity that operates the mobile network.” The latter language was not identified until April 21, 2018,
`when Defendants served their Revised Proposed Terms and Claim Elements for Construction. Thus, Defendants’
`identification of this phrase was untimely and Defendants have waived their ability to propose the language for
`construction.
`
`In addition, Defendants’ Revised 4-1 disclosures add a contention that the phrase should be governed § 112(6) but
`P.R. 4-1 required Defendants to have identified this contention back in February when Defendants served their
`original 4-1 disclosures. Defendants have therefore also waived their § 112(6) contention.
`
`Defendants’ position: Defendants identified the “a first server . . . configured to” limitation as governed by § 112(6)
`first in its P.R. 3-3 disclosure in November 2017 and then again in its revised P.R. 4-1 disclosures. SEVEN therefore
`had ample notice that this term was in dispute and Defendants would allege § 112(6) and indefiniteness. The Court
`should construe this disputed claim term, as it is a fundamental dispute that has been presented prior to claim
`construction briefing and SEVEN cannot reasonably claim surprise. See EnerPol, LLC v. Schlumberger Tech.
`Corp., Case No. 2:17-cv-00394-JRG, Dkt. 99 at 5,6 (E.D. Tex. Jan. 31, 2018) (construing a term proposed months
`after the P.R. 4-1 deadline and noting there was no surprise because the proposed construction was included in the
`P.R. 4-3 statement). Where the parties “have a fundamental dispute regarding the scope” of a claim and “where the
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 12
`
`Page 12 of 197
`
`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 13 of 25 PageID #: 7925
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`
`If this phrase is determined to
`be properly at issue by the
`Court, it should be given its
`plain and ordinary meaning.
`This phrase is clear and
`unambiguous, it is not
`governed by pre-AIA 35
`U.S.C. § 112(6), and all of the
`terms in it are being used
`consistent with their plain and
`ordinary meanings.
`
`
`authentication token
`from the mobile
`device over the
`mobile network, and
`provide a service to
`the mobile device via
`the mobile network,
`wherein the service is
`associated with the
`unique authentication
`token and branded by
`an entity other than
`an entity that
`operates the mobile
`network”
`
`Claim 1.
`
`’433
`
`“second server
`configured to monitor
`usage of the mobile
`network by the
`mobile device”
`
`Claim 1.
`
`No construction necessary.
`This phrase is clear and
`unambiguous, is not
`indefinite, is not governed by
`pre-AIA 35 U.S.C. § 112(6),
`and all of the terms in it are
`being used consistent with
`their plain and ordinary
`meanings.
`
`authentication token from the
`mobile device over the
`mobile network, and provide
`a service to the mobile device
`via the mobile network,
`wherein the service is
`associated with the unique
`authentication token and
`branded by an entity other
`than an entity that operates
`the mobile network”
`
`Structure: no disclosure
`beyond a server and thus not
`adequately disclosed and
`indefinite
`
`Non-MPF construction:
`
`P&O meaning
`
`§ 112(6) construction:
`
`Function – indefinite,
`“monitoring the number of
`voice minutes, number of data
`bits, and/or number of text
`messages transferred over the
`mobile network by the mobile
`device”
`
`
`
`dispute has been presented prior to the Markman hearing and prior to the Markman briefing,” as is the case here, “it
`is both appropriate and necessary to consider the Parties’ dispute over the claim term.” Id.; see also O2 Micro Int’l
`Ltd. v. Beyond Innovation Tech. Co., Ltd., 621 F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties present a
`fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”). Here, there is no
`prejudice to SEVEN, who will have a full opportunity to brief this limitation. Moreover, the Court should address
`the indefiniteness of this phrase, as it is a question of law for the Court to adjudicate. See Datamize, LLC v.
`Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Federal Circuit has expressly allowed district
`courts to engage in a rolling approach to claim construction in various stages of litigation, see, e.g., Conoco, Inc. v.
`Energy & Envtl, Int'l, L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006). Since the Court has not conducted a claim
`construction hearing yet, SEVEN cannot reasonably claim unfair prejudice, especially when “finding claims
`indefinite is not a matter of adopting a different construction . . . to which the patentee needs to adjust, but a matter
`of concluding that no construction of the disputed claims is possible.” Accentra Inc. v. Staples, Inc., 851 F. Supp. 2d
`1205, 1212 (C.D. Cal. 2011), aff’d in part, rev’d in part on other grounds and remanded, 500 F. App’x 922 (Fed.
`Cir. 2013).
`
`Joint Claim Construction and Prehearing Statement
`
`
`
`Page 13
`
`Page 13 of 197
`
`

`

`Case 2:17-cv-00442-JRG Document 172 Filed 05/15/18 Page 14 of 25 PageID #: 7926
`
`
`Patent
`
`Term
`
`SEVEN
`
`Google and Samsung
`
`Structure - no disclosure
`beyond a server distinct from
`the first server and thus not
`adequately disclosed and
`indefinite
`
`Non-§ 112(6) construction:
`
`Indefinite, otherwise “second
`server distinct from the first
`server configured to monitor
`the number of voice minutes,
`number of data bits, and/or
`number of text messages
`transferred over the mobile
`network by the mobile
`device”
`
`’433
`
`“monitoring usage of
`the mobile network
`by the mobile
`
`SEVEN objects to
`Defendants’ late § 112(6)
`contention for this phrase.7
`
`§ 112(6) construction:
`
`Function – indefinite,
`
`
`7 SEVEN’s position: Defendants did not allege this phrase invoked § 112(6) until Defendants served their P.R. 4-2
`disclosures on April 27, 2018. Neither Defendants’ invalidity contentions, original P.R. 4-1 disclosures, nor Revised
`P.R. 4-1 disclosures identified this phrase as a § 112(6) limitation. Defendants have therefore waived this
`contention.
`
`Defendants’ position: Defendants identified this term for construction in its P.R. 4-1 disclosures, reserved its right
`to argue that other terms were indefinite in its revised P.R. 4-1 disclosure, and then disclosed the terms was
`indefinite in its P.R. 4-2 disclosures. SEVEN therefore had ample notice that this term was in dispute and
`Defendants would allege § 112(6) and indefiniteness. The Court should construe this disputed claim term, as it is a
`fundamental dispute that has been presented prior to claim construction briefing and SEVEN cannot reasonably
`claim surprise. See EnerPol, LLC v. Schlumberger Tech. Corp., Case No. 2:17-cv-00394-JRG, Dkt. 99 at 5,6 (E.D.
`Tex. Jan. 31, 2018) (construing a term proposed months after the P.R. 4-1 deadline and noting there was no surprise
`because the proposed construction was included in the P.R. 4-3 statement). Where the parties “have a fundamental
`dispute regarding the scope” of a claim and “where the dispute has been presented prior to the Markman hearing and
`prior to the Markman briefing,” as is the case here, “it is both appropriate and necessary to consider the Parties’
`dispute over the claim term.” Id.; see also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 621 F.3d 1351,
`1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding the scope of a claim term, it is the
`court’s duty to resolve it.”). Here, there is no prejudice to SEVEN, who will have a full opportunity to brief this
`limitation. Moreover, the Court should address the indefiniteness of this phrase, as it is a question of law for the
`Court to adjudicate. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The
`Federal Circuit has expressly allowed district courts to engage in a rolling approach to claim construction in various
`stages of litigation, see, e.g., Conoco, Inc. v. Ener