Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 1 of 26 PageID #: 1386
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Civil Action No. 14-1571-GMS
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`JURY TRIAL DEMANDED
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`PUBLIC VERSION
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`Civil Action No. 14-1572-GMS
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`JURY TRIAL DEMANDED
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`PUBLIC VERSION
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`IOENGINE, LLC,
`
`Plaintiff,
`
`v.
`
`INTERACTIVE MEDIA CORP. D/B/A
`KANGURU SOLUTIONS,
`
`Defendant.
`
`IOENGINE, LLC,
`
`Plaintiff and Counterclaim-
`Defendant,
`
`v.
`
`IMATION CORP.,
`
`Defendant and Counterclaim-
`Plaintiff.
`
`PLAINTIFF IOENGINE, LLC’s OPENING CLAIM CONSTRUCTION BRIEF
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`PayPal Ex. 1023, p. 1
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 2 of 26 PageID #: 1387
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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`IV.
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`INTRODUCTION .................................................................................................. 1
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`BACKGROUND .................................................................................................... 2
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`LEGAL STANDARD ............................................................................................. 3
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`IOENGINE’S PROPOSED TERMS FOR CONSTRUCTION ............................. 3
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`A.
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`IOENGINE’s Proposed Constructions Are Based on the Intrinsic Evidence,
`Reflect the Essence of the Invention, and Aid the Jury .......................................... 4
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`1.
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`2.
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`“Program Code” is a Sequence of Instructions that Can be Run ................ 4
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`“Program Code” in the Construed Terms is Run From the Portable
`Device’s Memory........................................................................................ 5
`
`B.
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`Defendants’ Alternative Constructions are Improper ............................................. 7
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`1.
`
`2.
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`Defendants’ Proposed Constructions Do Not Reflect the ’047 Patent’s
`Requirement that Program Code is Run From the Portable Device
`Memory ....................................................................................................... 8
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`Defendants’ Proposed Constructions Improperly Delete “Program
`Code” From the Claims .............................................................................. 9
`
`V.
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`DEFENDANTS’ PROPOSED TERMS FOR CONSTRUCTION ...................... 10
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`A.
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`Defendants’ Constructions are Fundamentally Flawed ........................................ 10
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`1.
`
`2.
`
`3.
`
`4.
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`Defendants’ Artificial Limitation of “Without Relying on the
`Processing Power of the Host Computer Processor” is Unsupportable .... 11
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`Defendants’ Constructions Improperly Re-Write Other Claim
`Limitations ................................................................................................ 13
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`Defendants’ Construction of “Second Program Code” Conflates
`“Cause” with “Control” ............................................................................ 15
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`Defendants’ Proposed Constructions Would Only Confuse the Jury ....... 16
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`VI.
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`IMC’s PROPOSED TERMS FOR CONSTRUCTION ........................................ 17
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`A.
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`IMC’s Proposed Constructions are Unsupported and Unnecessary ..................... 17
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`1.
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`“Portable Device” ..................................................................................... 17
`
`i
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`PayPal Ex. 1023, p. 2
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 3 of 26 PageID #: 1388
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`2.
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`3.
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`“Processor” ............................................................................................... 19
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`“Memory” ................................................................................................. 20
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`VII.
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`CONCLUSION ..................................................................................................... 20
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`ii
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`PayPal Ex. 1023, p. 3
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 4 of 26 PageID #: 1389
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`TABLE OF AUTHORITIES
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`CASES
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`Alcon Research, Ltd. v. Barr Labs. Inc.,
`No. 09-CV-0318-LDD, 2011 WL 3901878 (D. Del. Sept. 6, 2011) ........................................ 9
`
`Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)................................................................................................. 9
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004)............................................................................................... 13
`
`L’Oréal S.A. v. Johnson & Johnson Consumer Co.,
`No. CV 12-98-GMS, 2013 WL 3788803 (D. Del. July 19, 2013)............................................ 9
`
`Lewmar Marine, Inc. v. Barient, Inc.,
`827 F.2d 744 (Fed. Cir. 1987)................................................................................................... 8
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997)................................................................................................. 8
`
`Medtronic Navigation, Inc. v. BrainLab Medizinische Computersysteme GmbH,
`222 F. App’x 952 (Fed. Cir. 2007) ........................................................................................... 7
`
`Multiform Desiccants, Inc. v. Medzam, Ltd.,
`133 F.3d 1473 (Fed. Cir. 1998)................................................................................................. 3
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)............................................................................................... 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................................... 3, 7, 14
`
`Power-One, Inc. v. Artesyn Techs., Inc.,
`599 F.3d 1343 (Fed. Cir. 2010)............................................................................................... 16
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)................................................................................................. 3
`
`SanDisk Corp. v. Memorex Prods., Inc.,
`415 F.3d 1278 (Fed. Cir. 2005)............................................................................................... 13
`
`Schumer v. Lab. Comput. Sys., Inc.,
`308 F.3d 1304 (Fed. Cir. 2002)............................................................................................... 18
`
`Trusted Knight Corp. v. Int’l Bus. Machs. Corp.,
`C.A. No. 14-1063-LPS-CJB, 2015 WL 7307134 (D. Del. Nov. 19, 2015) .............................. 3
`
`iii
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`PayPal Ex. 1023, p. 4
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 5 of 26 PageID #: 1390
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................... 7, 14, 15
`
`OTHER AUTHORITIES
`
`IEEE 100: The Authoritative Dictionary of IEEE Standards Terms (7th ed. 2000) ........... 5, 19, 20
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`Microsoft Computer Dictionary (5th ed. 2002) ........................................................................ 4, 19
`
`Modern Dictionary of Electronics (7th ed. 1999) ......................................................................... 19
`
`iv
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`PayPal Ex. 1023, p. 5
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 6 of 26 PageID #: 1391
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`I.
`
`INTRODUCTION
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`The patent-in-suit, U.S. Patent No. 8,539,047 (the “’047 Patent”), claims an apparatus,
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`system, and method that enable a specific manner of communication between (i) a portable
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`electronic device (for example, a thumb drive) with its own processor and memory, which the
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`‘047 Patent refers to as a “tunneling client access point” or “TCAP”; (ii) a terminal (for example,
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`a personal computer), which the ‘047 Patent refers to as an “access terminal” or “AT”; and (iii) a
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`network (for example, the Internet), such that the communication can be made highly secure in a
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`way that was not previously possible. The claims provide for a terminal processor (e.g., the
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`processor in a personal computer) and a portable device processor (e.g., the processor in a secure
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`thumb drive or other portable electronic device) that are each capable of running a set of
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`instructions (i.e., program code) from the memory of the portable device. The portable device
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`processor executes instructions that cause a communication to be sent over a network in response
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`to user interaction with an interactive user interface presented on the terminal.
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`Plaintiff IOENGINE, LLC’s (“IOENGINE”) proposed constructions of the claim terms
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`are based on the clear language of the claims, specification, and other intrinsic evidence, aiding
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`the jury’s understanding that the claimed “program code” is a “sequence of instructions” stored
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`on and “run from” the memory of the portable device. IOENGINE’s proposed constructions
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`consistently reflect these fundamental concepts and, therefore, the essence of the invention.
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`In contrast, Defendants Interactive Media Corp. (“IMC”) and Imation Corp.’s (“Imation,”
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`together with IMC, “Defendants”) proposed constructions improperly import limitations from
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`the specification (or elsewhere) that do not exist in the claims and read out claim limitations that
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`Defendants’ find inconvenient. For example, and as discussed in detail below, Defendants’
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`proposed constructions add the artificial limitation, contrary to the specification and prosecution
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`history, that the claimed “program code” must be run “without relying on the processing power
`1
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`PayPal Ex. 1023, p. 6
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 7 of 26 PageID #: 1392
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`of the host computer processor.”1 This is irreconcilable with the specification, which explicitly
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`discloses that “the AT can execute program instructions from the TCAP’s memory.” ’047 Patent at
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`6:49-50 (JA014)2; see also id. at 2:58-60 (JA012) (the invention “includes providing the [portable
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`device] memory for access on the terminal [and] executing processing instructions from the [portable
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`device] memory on the terminal…”)3
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`II.
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`BACKGROUND
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`1 Defendants attempt to add this limitation through their constructions of “first program code,”
`“second program code” and “third program code” / “third processing code.”
`2 Citations to “JA__” refer to pages of the Joint Appendix of Intrinsic Evidence.
`3 Emphasis added and internal citations omitted throughout, unless otherwise specified.
`4 Citations to “Ex. __” refer to the Exhibits in Support of Plaintiff’s Opening Claim Construction
`Brief field herewith.
`
`2
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`PayPal Ex. 1023, p. 7
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 8 of 26 PageID #: 1393
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`On November 19, 2010, Mr. McNulty filed U.S. Patent Application No. 12/950,321 (the
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`“’321 Application”) (a continuation of U.S. Patent Application No. 10/807,731, which was filed
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`on March 23, 2004). The ’321 Application issued on September 17, 2013 as the ’047 Patent.
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`III. LEGAL STANDARD
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`“A court construing a patent claim seeks to accord a claim the meaning it would have to a
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`person of ordinary skill in the art at the time of the invention.” Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (en banc). “Importantly, the person of ordinary skill in the art is
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`deemed to read the claim term not only in the context of the particular claim in which the
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`disputed term appears, but in the context of the entire patent, including the specification” and
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`“the prosecution history.” See id. (citing Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d
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`1473, 1477 (Fed. Cir. 1998)). “The construction that stays true to the claim language and most
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`naturally aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.” Id. at 1316 (citing Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`
`1250 (Fed. Cir. 1998)); see also Trusted Knight Corp. v. Int’l Bus. Machs. Corp., C.A. No. 14-
`
`1063-LPS-CJB, 2015 WL 7307134, at *2 (D. Del. Nov. 19, 2015).
`
`IV.
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`IOENGINE’S PROPOSED TERMS FOR CONSTRUCTION
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`IOENGINE proposes four, closely related terms for construction. All involve the term
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`“program code” and address two issues: “program code” is (a) a sequence of instructions that can
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`be run (b) from the portable device memory on which it is stored (see chart below).
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`
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`3
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`
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`PayPal Ex. 1023, p. 8
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 9 of 26 PageID #: 1394
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`PayPal Ex. 1023, p. 9
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 10 of 26 PageID #: 1395
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`is “a sequence of instructions that can be executed by a computer”); Ex. C (IEEE 100: The
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`Authoritative Dictionary of IEEE Standards Terms (7th ed. 2000)) at 874 (a “program” is “a
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`prepared sequence of instructions to the system to accomplish a defined task”).
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`The specification of the ’047 Patent also consistently describes the claimed program code
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`as a set of “instructions”: The portable device is “configured to issue a plurality of processing
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`instructions stored in the memory.” ’047 Patent at 2:65-66 (JA012); see also id. at 2:59-60
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`(JA012) (disclosing “executing processing instructions from the [portable device] memory on
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`the terminal”); id. at 6:10-12 (JA014) (disclosing that “the TCAP and in some cases the AT can
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`determine if the AT is capable of accessing program instructions stored in the TCAP’s
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`memory”); id. at 6:49-50 (JA014) (disclosing that “the AT can execute program instructions
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`from the TCAP’s memory”). Therefore, in each of its above proposed constructions, IOENGINE
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`proposes a unified, non-technical description of “program code” that will help the jury
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`understand that “program code” is a “sequence of instructions that can be run.”
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`2.
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`“Program Code” in the Construed Terms is Run From the Portable
`Device’s Memory
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`The foundation of the ’047 Patent is that the executable program code, the “sequence of
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`instructions that can be run,” remains stored on and is run from the portable device memory,
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`regardless of whether it is executed by the processor on the portable device, or by the processor
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`on the user’s computer. This concept is described in several ways in the claims themselves, and
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`is incorporated into each and every independent claim. For example, Independent Claim 26
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`requires “providing the terminal with access to . . . program code stored on the portable device
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`memory which, when executed by the terminal processor . . . ”—an explicit requirement that the
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`program code be “stored on the portable device memory” “when executed by the terminal
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`processor.” See ’047 Patent at Claim 26 (JA027). As a further example, Independent Claim 24
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`5
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`PayPal Ex. 1023, p. 10
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 11 of 26 PageID #: 1396
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`likewise explicitly requires “executing . . . program code stored on the portable device
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`memory.” Id. at Claim 24 (JA027).
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`The specification also makes this requirement clear, explaining that the terminal (AT)
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`accesses program code from the portable device (TCAP). See, e.g.,’047 Patent at 28:47-50
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`(JA025) (“the TCAP allows the access terminal 1011 b to access its memory . . . and the access
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`terminal executes the module.”).5 Similarly, the ’047 Patent specification provides that, “[a]fter
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`engaging with the AT, the TCAP can provide its memory space to the AT 320.” ’047 Patent at
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`6:5-6 (JA014). Once the AT has accessed the TCAP’s memory, “the AT can execute program
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`instructions from the TCAP’s memory.” Id. at 6:49-50 (JA014). This concept is reinforced by
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`Figure 3, which illustrates that, first, the “TCAP provides [its] memory space to Access Terminal
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`(AT)” (at 320 below) and the AT “mounts the TCAP memory space” (at 325 below). Id. at Fig. 3
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`(JA004). Then, once it is confirmed that the “AT [is] capable of accessing instructions in TCAP
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`memory” (at 330 below), the “AT executes instructions from TCAP memory” (at 345 below). Id.
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`(JA004) (annotation added).
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`5 During prosecution of the ’047 Patent, the applicant further confirmed that the first, second, and
`third program codes are “stored on the portable device memory.” Response to Office Action
`dated 9/12/11 at 10 (JA038).
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`6
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`PayPal Ex. 1023, p. 11
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 12 of 26 PageID #: 1397
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`Id. at Fig. 3 (JA004) (annotation added). These citations are not exhaustive; the descriptions and
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`figures from the specification are universal in their description of the invention and are especially
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`instructive in construing the claim terms at issue. See Medtronic Navigation, Inc. v. BrainLab
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`Medizinische Computersysteme GmbH, 222 F. App'x 952, 955-56 (Fed. Cir. 2007)
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`(specification’s consistent description of the key component of the invention provided proper
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`basis for construction); Phillips, 415 F.3d at 1315 (“[T]he specification ‘is always highly
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`relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
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`the meaning of a disputed term.’”).
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`*
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`*
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`*
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`IOENGINE’s constructions of the first four disputed claim terms capture both of these
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`critical concepts. The “program code” in each of these claim terms is “a sequence of instructions
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`that can be run from the portable device memory on which it is stored.”
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`B.
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`Defendants’ Alternative Constructions are Improper
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`Defendants’ primary position, that no construction is needed for these terms, is improper
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`because, if left un-construed, a juror could potentially misunderstand key elements of the ’047
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`Patent. After all, the purpose of claim construction is to aid the trier of fact, and, as explained
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`above, the term “program code” is consistently used throughout the claims and specification in a
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`technical way that is not necessarily part of the ordinary lexicon of one not of skill in the art.
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`Further, Defendants’ alternative constructions ignore the explicit disclosures of the specification
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`discussed above, and would lead to confusing and ambiguous claim language. Tellingly,
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`Defendants did not provide a single citation to intrinsic evidence in support of their alternative
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`constructions. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (it
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`is improper to “proffer an interpretation for the purposes of litigation that would alter the
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`indisputable public record consisting of the claims, the specification and the prosecution history,
`7
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`PayPal Ex. 1023, p. 12
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 13 of 26 PageID #: 1398
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`and treat the claims as a ‘nose of wax’”).
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`1.
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`Defendants’ Proposed Constructions Do Not Reflect the ’047 Patent’s
`Requirement that Program Code is Run From the Portable Device
`Memory
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`Defendants’ proposed constructions do not resolve that the executable program code
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`remains stored on and is run from the portable device’s memory. Instead, although Defendants’
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`propose that the program code be “located” on the portable device memory, their constructions
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`leave the code ambiguously able to be “run” from anywhere. For example, if the program code
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`were copied from the portable device memory to the terminal’s hard drive, it would still be
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`“located” on the portable device memory even if it were “run” from the terminal’s hard drive.
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`This would eviscerate a significant purpose of the invention, which relies upon running program
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`code from the portable device’s memory in order to achieve higher levels of data security. See,
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`e.g., ’047 Patent at Abstract (JA001) (“This enables the user to observe data stored on the TCAP
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`without it being resident on the AT, which can be useful to maintain higher levels of data
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`security.”); id. at 6:40-43 (JA014) (“[C]ertain areas of the TCAP may be inaccessible until there
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`is an authorization. . . . [C]ertain areas and content on the TCAP may be encrypted.”). The
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`Defendants’ construction is contrary to the specification’s clear description of the purpose of the
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`invention and, therefore, is improper. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1574
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`(Fed. Cir. 1997); Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 750 (Fed. Cir. 1987)
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`(finding error where court did not consider specification and construed term in a way that was
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`contrary to inventor’s description and stated purpose of the invention).
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`As noted, Defendants do not cite any intrinsic evidence to support their proposed
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`constructions. And Defendants’ cited extrinsic evidence is ambiguous and is not inconsistent
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`with IOENGINE’s constructions. Defendants cite the definition of “storage location,” but that
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`term is not used in the claims. Moreover, the proffered definition is the “position at which a
`8
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`PayPal Ex. 1023, p. 13
`PayPal v. IOENGINE
`
`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 14 of 26 PageID #: 1399
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`particular item can be found,” which comports with IOENGINE’s constructions that the
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`“program code” is found on the portable device memory when it is executed.
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`2.
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`Defendants’ Proposed Constructions Improperly Delete “Program Code”
`From the Claims
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`In addition to failing to inform the jury that program code is run from the portable device
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`memory, Defendants’ proposed construction of “[First/Second] Program Code Stored on the
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`Portable Device Memory” is so truncated it improperly deletes all reference to “program code.”
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`Defendants’ proposals would lead to grammatically incoherent and indefinite claim
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`language. For example, were Defendants’ proposal to be adopted, the beginning of clause (a) of
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`Claim 24 would read: “executing [located on the portable device memory] to cause an interactive
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`user interface to be presented…”—leaving the jury to guess what, exactly, is executed. Clause
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`(b) of Claim 24, Clauses (a) and (b) of Claims 26 and 30, and Claims 25 and 31 each would have
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`similar grammatical problems. See Alcon Research, Ltd. v. Barr Labs. Inc., No. 09-CV-0318-
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`LDD, 2011 WL 3901878, at *6-7 (D. Del. Sept. 6, 2011) (“A claim construction that renders
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`asserted claims facially nonsensical ‘cannot be correct.’” (citing Becton, Dickinson and Co. v.
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`Tyco Healthcare Grp., LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010)); see also L’Oréal S.A. v.
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`Johnson & Johnson Consumer Co., No. CV 12-98-GMS, 2013 WL 3788803, at *1 n.6 (D. Del.
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`July 19, 2013) (refusing to adopt proposed constructions that would yield nonsensical results or
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`create unnecessary ambiguity).
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`Defendants’ proposals also remove almost all meaning from the terms, expanding them
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`to cover anything “located on the portable device memory,” whether program code or not. Under
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`Defendants’ proposal, for example, an image file or other data file that could never be
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`“executable” could be “first program code” so long as it were “located on the portable device
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`memory.” Even the absurd would not be out of reach: a serial number imprinted on the memory
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`9
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`PayPal Ex. 1023, p. 14
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 15 of 26 PageID #: 1400
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`PayPal Ex. 1023, p. 15
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 16 of 26 PageID #: 1401
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`add “first,” “second,” or “third” to the already addressed term “program code.” To the extent that
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`separate constructions are needed, IOENGINE’s proposed constructions are appropriate and
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`should be adopted. Moreover, IOENGINE’s proposed constructions of these terms make sense in
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`combination with IOENGINE’s constructions of its proposed terms (discussed above in Section
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`IV), aiding the jury and staying true to the spirit of the invention.
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`1.
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`Defendants’ Artificial Limitation of “Without Relying on the Processing
`Power of the Host Computer Processor” is Unsupportable
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`Each of Defendants’ proposed constructions for these three terms injects the limitation
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`“without relying on the processing power of the host computer processor” to describe how the
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`portable device is to run program code, receive communications from the interactive user
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`interface, or communicate with the communications network node. This is a purely litigation-
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`inspired limitation that is not in the claims and not supported by the intrinsic evidence.
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`Defendants cite to no support in the claims or specification for this limitation. Indeed, the
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`specification is directly to the contrary. It explicitly provides that the terminal processor can run
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`program code from the portable device’s memory. See, e.g., ’047 Patent at 28:47-54 (JA025)
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`(“[T]he TCAP allows the access terminal 1011b to access its memory 1029 across its I/O 1008
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`and the access terminal executes the module.”); id. at 6:49-50 (JA014) (“[T]he AT can execute
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`program instructions from the TCAP’ s memory.”); id. at Fig. 3, at 345 (JA004) (The “AT
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`executes instructions from TCAP memory”).
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`Further, the specification explicitly discloses the participation of the terminal’s processor
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`for functions such as network communications. See id. at 6:49-51 (JA014) (“[T]he AT can
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`execute program instructions from the TCAP’s memory, which allows the TCAP to use the AT’s
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`I/O . . . .”). It is clear that the processing power of the host computer processor is relied upon for
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`the transmission of communications over the network: the ’047 Patent discloses that such
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`11
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`PayPal Ex. 1023, p. 16
`PayPal v. IOENGINE
`
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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 17 of 26 PageID #: 1402
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`network communications are sent using the access terminal’s own communication protocols. See
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`id. at 25:17-19 (JA024) (“The [Access Terminal’s] operating system may provide
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`communications protocols that allow the TCAP controller to communicate with other entities
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`through an access terminal.”). And the ’047 Patent explains that data may pass through the
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`terminal on its way to a network or server. For example, the ’047 Patent contemplates that a
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`malicious access terminal could attempt to capture data moving through the access terminal to a
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`server. See id. at 12:66-13:5 (JA017-018) (“[V]arious encryption formats may be used by the
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`TCAP to send information securely to the backend servers . . . . [E]ven if data moving out of the
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`TCAP and across the AT were captured at the AT, such data would not be readable because the
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`data was encrypted by the TCAP’s processor.”).
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`Defendants’ reliance on the prosecution history to support this added limitation is
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`misplaced—the prosecution history does not say that program code must be run by the portable
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`device processor without relying on the processing power of the host computer. Instead, it
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`suggests only that, in the claimed invention, not all of the “processing power” is provided by the
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`terminal processor. This was in contrast to the prior art cited by the Examiner, which relied
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`entirely on the terminal’s “processing power.” See Response to Office Action dated 6/14/12 at
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`10 (JA074) (“James repeatedly discloses, teaches and suggests that all of the ‘processing power’
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`is provided by the host computer processor and that the applications software stored on the
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`portable memory device is exclusively executed by the host computer processor.”).
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`Distinguishing the situation where all of the processing power is provided by the host computer
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`means only that the portable device processor must be involved in some way, not that the
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`portable device processor itself provides all of the “processing power” with none provided by
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`the terminal. ‘Less than all’ does not equal ‘none.’ Thus, the statements made during prosecution
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`12
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`PayPal Ex. 1023, p. 17
`PayPal v. IOENGINE
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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 18 of 26 PageID #: 1403
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`are not a disclaimer—certainly not the sort of clear disclaimer that would be required to inject a
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`limitation into the claims despite the clear disclosure in the specification. See SanDisk Corp. v.
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`Memorex Prods., Inc., 415 F.3d 1278, 1286 (Fed. Cir. 2005) (disclaimer must be “clear and
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`unmistakable”); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003)
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`(disclaimer only “where the patentee has unequivocally disavowed a certain meaning”).
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`Defendants also cite to portions of Office Actions where the Examiner described the
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`basis for rejections. However none of these Office Actions offer any support for Defendants’
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`proposed constructions. Where the Examiner addresses a portable device processor, the
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`Examiner merely states that the portable device processor can execute program code, not that it
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`must do so “without relying on the processing power of the host computer processor.”
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`Regardless of the fact that the Examiner’s remarks are not supportive of Defendants’
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`construction, they are also entirely irrelevant: statements by the Examiner do not create a
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`disclaimer. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
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`1124 (Fed. Cir. 2004) (“It is well settled, however, that it is the applicant, not the examiner, who
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`must give up or disclaim subject matter that would otherwise fall within the scope of the
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`claims.”).
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`2.
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`Defendants’ Constructions Improperly Re-Write Other Claim Limitations
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`Defendants’ proposals inject language from elsewhere in the claims into the terms “first
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`program code,” “second program code” and “third program code”/“third processing code.”
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`Defendants’ re-write of the claims is imprecise, however, and impermissibly alters the meaning
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`of the claims.
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`Defendants’ construction of “first program code” adds that the first program code “causes
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`the portable device processor . . . to run other program code stored on the portable device
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`memory.” This conflicts with the language of the claim itself, which requires only that the “first
`13
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`PayPal Ex. 1023, p. 18
`PayPal v. IOENGINE
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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 19 of 26 PageID #: 1404
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`program code . . . causes an interactive user interface to be presented on the [terminal’s] output
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`component”—not that it cause “other code” to be executed by the portable device processor. See,
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`e.g., ’047 Patent at Claim 1, element (c)(1) (JA027). The interactive user interface that is
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`presented is “configured to enable the user to cause the portable device processor to execute
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`program code.” Id. (JA027). This is not the same as the first program code causing the portable
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`device processor to execute other program code; per the claim language, it is the user’s
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`interaction with the presented interactive user interface—not the first program code—that
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`causes the portable device processor to execute code. A construction that is contrary to the very
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`language of the claims is improper. See, e.g., Phillips, 415 F.3d at 1312 (“[I]t is ‘unjust to the
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`public, as well as an evasion of the law, to construe [the invention] in a manner different from
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`the plain import of its terms.’”); see also Vitronics, 90 F.3d at 1583.
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`Defendants make a similar error in their construction of “second program code,” deleting
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`the limitation that it is the user’s interaction with the interactive user interface that causes the
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`communication to be sent to the portable device. See, e.g., ’047 Patent, Claim 1, element (c)(2)
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`(JA027) (Executing the second program code “enables the portable device to . . . receive a
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`communication resulting from user interaction with the interactive user interface.”). Under
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`Defendants’ proposal, no user interaction with the user interface is required; the communication
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`could be completely dissociated from any user interaction with the user interface so long as the
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`communication came “from” the user interface. This is not what the claim says.
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`In addition, the claims require only that the second program code enable the portable
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`device to “cause a communication to be sent.” See, e.g., id. (JA027). In its proposed construction
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`of “second program code,” Defendants unjustifiably remove both the “a” and the “to be”
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`modifiers, apparently requiring that the portable device control all communications sent through
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`14
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`PayPal Ex. 1023, p. 19
`PayPal v. IOENGINE
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`Case 1:14-cv-01572-GMS Document 68 Filed 12/11/15 Page 20 of 26 PageID #: 1405
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`the host computer’s network interface and that those communications are sent immediately.
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`Defendants cite no intrinsic or extrinsic support for adding these limitations to the claims and
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`they are improper. See Vitronics, 90 F.3d at 1583.
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`In their proposed construction for “third program code”/“third processing code