Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 1 of 26 PageID #: 907
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`Civil Action No. 14-1571-GMS
`
`
`JURY TRIAL DEMANDED
`
`Civil Action No. 14-1572-GMS
`
`
`JURY TRIAL DEMANDED
`
`FINAL JOINT CLAIM CHART
`
`Pursuant to the Court’s Scheduling Order, Plaintiff and Counterclaim-Defendant
`
`IOENGINE, LLC (“IOENGINE” or “Plaintiff”), Defendant Interactive Media Corp. D/B/A
`
`Kanguru Solutions (“IMC”), and Defendant and Counterclaim-Plaintiff Imation Corp.,
`
`(“Imation”) (Imation and IMC, collectively, the “Defendants”) hereby provide the following
`
`Final Joint Claim Chart, attached hereto as Appendix A. Appendix A includes the parties’
`
`
`
`1
`
`PayPal Ex. 1022, p. 1
`PayPal v. IOENGINE
`
`))))))))))
`
`
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`))
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`
`
`))))))))))
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`)))
`
`IOENGINE, LLC,
`
`
`
`
`
`INTERACTIVE MEDIA CORP. D/B/A
`KANGURU SOLUTIONS,
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`
`
`IOENGINE, LLC,
`
`
`Plaintiff and Counterclaim-
`Defendant,
`
`
`
`
`IMATION CORP.,
`
`
`v.
`
`
`
`
`Defendant and Counterclaim-
`Plaintiff.
`
`

`

`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 2 of 26 PageID #: 908
`
`
`
`respective proposed constructions for the disputed terms from the asserted claims1 of U.S. Patent
`
`No. 8,539,047 (the “’047 Patent”). The parties have met and conferred in an attempt to narrow
`
`their claim construction disputes, but have been unable to reach agreement as to the 10 terms set
`
`forth in Appendix A. The intrinsic and extrinsic evidence identified in Appendix A reflects the
`
`parties’ current understanding; the parties reserve the right to rely upon additional intrinsic and
`
`extrinsic evidence as needed. The parties will continue to meet and confer in an effort to further
`
`narrow the remaining claim construction disputes and reserve the right to propose one or more
`
`agreed-upon constructions or to decline to construe one or more of the currently disputed terms.
`
`Terms 1-4 in Appendix A have been proposed by IOENGINE for construction in
`
`both cases. The parties have agreed that terms 1-4 will be briefed and argued by Imation on
`
`behalf of both Imation and IMC. IMC agrees that any construction of terms 1-4 shall be binding
`
`upon IMC.
`
`Terms 5-7 in Appendix A have been proposed for construction by Imation and
`
`IMC. Terms 5-7 in Appendix A will be briefed and argued by Imation on behalf of both Imation
`
`and IMC. IMC agrees that any construction of terms 5-7 shall be binding upon IMC. Terms 8-
`
`10 in Appendix A have been proposed for construction by IMC and will be briefed and argued
`
`by IMC only. IOENGINE believes that any terms that are construed should be construed for all
`
`parties regardless of which party proposed the term for construction, and that any construction
`
`should be applied in both cases. Imation believes that any construction of terms 8-10 is not part
`
`of the litigation between IOENGINE and Imation, and any such construction should apply only
`
`to IMC and IOENGINE.
`
`1 IOENGINE has asserted Claims 1, 2 and 6-31 of the ’047 Patent against Imation and against
`IMC.
`
`
`
`2
`
`PayPal Ex. 1022, p. 2
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 3 of 26 PageID #: 909
`
`
`
`AGREED TO BY THE PARTIES:
`
`Dated: November 4, 2015
`
`
`
`
`OF COUNSEL:
`
`Jeffrey Ostrow
`jostrow@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`2475 Hanover Street
`Palo Alto, California 94304
`Telephone: (650) 251-5000
`
`Noah M. Leibowitz
`nleibowitz@stblaw.com
`Gregory T. Chuebon
`gchuebon@stblaw.com
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, New York 10017
`Tel: (212) 455-2000
`
`
`
`OF COUNSEL:
`
`Mark T. Stopa (BBO # 560264)
`STOPA & ASSOCIATES, LLC
`132 Central Street – Suite 209
`Foxboro, Massachusetts 02035
`Phone: (508) 543 – 0600
`Fax: (508) 543 – 0615
`mtstopa@verizon.net
`
`
`
`
`Respectfully submitted,
`
`Smith, Katzenstein & Jenkins, LLP
`
`/s/ Eve H. Ormerod
`Neal C. Belgam (#2721)
`Eve H. Ormerod (#5369)
`1000 West Street, Suite 1501
`Wilmington, Delaware 19899
`Telephone: (302) 504-1688
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`
`Attorneys for Plaintiff and Counterclaim-
`Defendant IOENGINE
`
`
`
`MORRIS JAMES LLP
`
` /s/ Kenneth L. Dorsney
`Kenneth L. Dorsney (#3726)
`500 Delaware Avenue, Suite 1500
`Wilmington, Delaware 19801
`(302) 888-6800
`kdorsney@morrisjames.com
`
`Attorneys for Defendant
`Interactive Media Corp. d/b/a
`Kanguru Solutions
`
`
`
`
`
`
`
`
`3
`
`PayPal Ex. 1022, p. 3
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 4 of 26 PageID #: 910
`
`
`
`RICHARDS, LAYTON & FINGER, P.A.
`
` /s/ Christine Haynes
`Frederick L. Cottrell III (#2555)
`Christine D. Haynes (#4697)
`One Rodney Square
`920 North King Street
`Wilmington, Delaware 19801
`(302) 651-7700
`cottrell@rlf.com
`haynes@rlf.com
`
`Attorneys for Defendant and Counterclaim-
`Plaintiff Imation Corp.
`
`
`
`OF COUNSEL:
`
`Kurt J. Niederluecke (MN #0271597)
`(admitted pro hac vice)
`Grant D. Fairbairn (MN #0327785)
`(admitted pro hac vice)
`Adam R. Steinert (MN #0389648)
`(admitted pro hac vice)
`FREDRIKSON & BYRON, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
`Telephone: 612.492.7000
`Facsimile: 612.492.7077
`kniederluecke@fredlaw.com
`gfairbairn@fredlaw.com
`asteinert@fredlaw.com
`
`
`
`4
`
`PayPal Ex. 1022, p. 4
`PayPal v. IOENGINE
`
`

`

`
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 5 of 26 PageID #: 911
`
`
`Plaintiff’s Terms for Construction:2
`
`NO.
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`Proposed by Plaintiff:
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Proposed Construction:
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`Proposed Construction:
`
`“executable program code stored
`thereon”
`
`’047 Patent, independent claims 1,
`24, 26, 27 and 30 (and dependent
`claims 25 and 31).
`
`1
`
`“a sequence of instructions that can be run
`from the portable device memory on which
`it is stored”
`
`Intrinsic Evidence:
`
`’047 Patent:
`
`’047 Patent at 2:55-66, 5:1-4, 5:20-31, 6:5-
`57, 28:46-50, and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047 Patent,
`January 25, 2013, Response to Office
`Action, at 10.
`
`Extrinsic Evidence:
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`
`No construction needed. The words
`“executable” and “stored” are easily
`understood. To the extent any
`construction is needed, Imation proposes
`“program code that can be run and is
`located thereon”
`
`Extrinsic Evidence:
`
`Microsoft Computer Dictionary, 173 (4th
`ed. 1999): “executable adj. Of,
`pertaining to, or being a program file
`that can be run….”; “executable n. A
`program file that can be run, such as
`file0.bat, file1.exe, or file2.com.”
`
`Microsoft Computer Dictionary, 424 (4th
`ed. 1999): “storage location n. The
`position at which a particular item can
`be found—either an addressed location
`or a uniquely identified location on a
`
`
`2 IOENGINE has proposed term nos. 1-4 for construction in both cases. The parties have agreed that terms proposed by IOENGINE
`will be briefed and argued by Imation on behalf of both Imation and IMC. IMC agrees that any construction of terms addressed by
`Imation shall be binding upon IMC.
`
`
`
`A-1
`
`PayPal Ex. 1022, p. 5
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 6 of 26 PageID #: 912
`
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`disk, tape, or similar medium.”
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Information Network IEEE Press, 403 (7th
`ed. 2000) “executable instruction,” “(A)
`An instruction that is the instruction set for
`a given computer and can be executed in
`its current form.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 181-82
`(7th ed. 2000) “code,” “(2) (A) A character
`or a bit pattern that is assigned a particular
`meaning; for example a status code”; “(3)
`(A) (computer terminology) In software
`engineering, computer instructions and
`data definitions expressed in a
`programming language or in a form output
`by an assembler, compiler, or other
`translator.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 874 (7th
`ed. 2000) “program,” “(6) A prepared
`sequence of instructions to the system to
`accomplish a defined task.”
`
`Microsoft Computer Dictionary, 424 (5th
`edition) “program,” “A sequence of
`instructions that can be executed by a
`computer. The term can refer to the
`original source code or to the executable
`
`
`
`A-2
`
`PayPal Ex. 1022, p. 6
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`2
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 7 of 26 PageID #: 913
`
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`Proposed by Plaintiff:
`
`“program code stored on the
`portable device memory”
`
`’047 Patent, independent claims 1,
`24, 26, 27 and 30 (and dependent
`claims 25 and 31).
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`
`Proposed Construction:
`
`No construction needed. The word
`“stored” is easily understood. To the
`extent any construction is needed,
`Imation proposes “program code located
`on the portable device memory”
`
`Extrinsic Evidence:
`
`Microsoft Computer Dictionary, 424 (4th
`ed. 1999): “storage location n. The
`position at which a particular item can
`be found—either an addressed location
`or a uniquely identified location on a
`disk, tape, or similar medium.”
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`(machine language) version.”
`Proposed Construction:
`
`“a sequence of instructions that can be run
`from the portable device memory on which
`it is stored”
`
`Intrinsic Evidence:
`
`’047 Patent:
`
`’047 Patent at 2:55-66, 5:1-4, 5:20-31, 6:5-
`57, 28:46-50, and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047 Patent,
`January 25, 2013, Response to Office
`Action, at 10, 13.
`
`Extrinsic Evidence:
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 403 (7th
`ed. 2000) “executable instruction,” “(A)
`An instruction that is the instruction set for
`a given computer and can be executed in
`its current form.”
`
`IEEE 100 The Authoritative Dictionary of
`
`A-3
`
`PayPal Ex. 1022, p. 7
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`Proposed by Plaintiff:
`
`3
`
` “containing executable program
`code”
`
`’047 Patent, independent claim 27.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 8 of 26 PageID #: 914
`
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 874 (7th
`ed. 2000) “program,” “(6) A prepared
`sequence of instructions to the system to
`accomplish a defined task.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 181-82
`(7th ed. 2000) “code,” “(2) (A) A character
`or a bit pattern that is assigned a particular
`meaning; for example a status code”; “(3)
`(A) (computer terminology) In software
`engineering, computer instructions and
`data definitions expressed in a
`programming language or in a form output
`by an assembler, compiler, or other
`translator.”
`
`Microsoft Computer Dictionary, 424 (5th
`edition) “program,” “A sequence of
`instructions that can be executed by a
`computer. The term can refer to the
`original source code or to the executable
`(machine language) version.”
`Proposed Construction:
`
`“containing a sequence of instructions that
`can be run from the portable device
`memory on which it is stored”
`
`A-4
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`
`Proposed Construction:
`
`No construction needed. The word
`“executable” is easily understood. To
`the extent any construction is needed,
`Imation proposes “containing program
`
`PayPal Ex. 1022, p. 8
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 9 of 26 PageID #: 915
`
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Intrinsic Evidence:
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`code that can be run”
`
`’047 Patent:
`
`Extrinsic Evidence:
`
`Microsoft Computer Dictionary, 173 (4th
`ed. 1999): “executable1 adj. Of,
`pertaining to, or being a program file
`that can be run….”; “executable2 n. A
`program file that can be run, such as
`file0.bat, file1.exe, or file2.com.”
`
`’047 Patent at 2:55-66, 5:1-4, 5:20-31, 6:5-
`57, 9:13-17, 9:20-24, 9:33-37, 28:46-50,
`and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047 Patent,
`January 25, 2013, Response to Office
`Action, at 10, 13.
`
`Extrinsic Evidence:
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 403 (7th
`ed. 2000) “executable instruction,” “(A)
`An instruction that is the instruction set for
`a given computer and can be executed in
`its current form.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 874 (7th
`ed. 2000) “program,” “(6) A prepared
`sequence of instructions to the system to
`accomplish a defined task.”
`
`
`
`A-5
`
`PayPal Ex. 1022, p. 9
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`4
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 10 of 26 PageID #: 916
`
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`Proposed by Plaintiff:
`
`“first program code stored on the
`portable device memory”/ “second
`program code stored on the portable
`device memory”
`
`’047 Patent, independent claims 24,
`26 and 30 (and dependent claims 25
`and 31).
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 181-82
`(7th ed. 2000) “code,” “(2) (A) A character
`or a bit pattern that is assigned a particular
`meaning; for example a status code”; “(3)
`(A) (computer terminology) In software
`engineering, computer instructions and
`data definitions expressed in a
`programming language or in a form output
`by an assembler, compiler, or other
`translator.”
`
`Microsoft Computer Dictionary, 424 (5th
`edition) “program,” “A sequence of
`instructions that can be executed by a
`computer. The term can refer to the
`original source code or to the executable
`(machine language) version.”
`Proposed Construction:
`
`“first a sequence of instructions that can be
`run from the portable device memory on
`which it is stored” / “second a sequence of
`instructions that can be run from the
`portable device memory on which it is
`stored”
`
`Intrinsic Evidence:
`
`A-6
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`
`Proposed Construction:
`
`See term numbers 5 and 6 below for
`Imation’s proposed constructions for the
`phrases “first program code” and
`“second program code”
`
`No construction of “stored on the
`portable device memory” is needed.
`The word “stored” is easily understood.
`To the extent any construction is needed,
`Imation proposes “located on the
`
`PayPal Ex. 1022, p. 10
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 11 of 26 PageID #: 917
`
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`’047 Patent:
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`portable device memory”
`
`Extrinsic Evidence:
`
`Microsoft Computer Dictionary, 424 (4th
`ed. 1999): “storage location n. The
`position at which a particular item can
`be found—either an addressed location
`or a uniquely identified location on a
`disk, tape, or similar medium.”
`
`’047 Patent at 2:55-66, 5:1-4, 5:20-31, 6:5-
`57, 9:13-17, 9:20-24, 9:33-37, 28:46-50,
`and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047 Patent,
`September 12, 2011, Response to Office
`Action, at 10, 13.
`
`Extrinsic Evidence:
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 403 (7th
`ed. 2000) “executable instruction,” “(A)
`An instruction that is the instruction set for
`a given computer and can be executed in
`its current form.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`Information Network IEEE Press, 874 (7th
`ed. 2000) “program,” “(6) A prepared
`sequence of instructions to the system to
`accomplish a defined task.”
`
`IEEE 100 The Authoritative Dictionary of
`IEEE Standards Terms, Standards
`
`
`
`A-7
`
`PayPal Ex. 1022, p. 11
`PayPal v. IOENGINE
`
`

`

`
`
`
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 12 of 26 PageID #: 918
`
`
`NO.
`
`CLAIM TERM AND AFFECTED
`CLAIMS
`
`DEFENDANTS’ PROPOSED
`CONSTRUCTION(S)
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Information Network IEEE Press, 181-82
`(7th ed. 2000) “code,” “(2) (A) A character
`or a bit pattern that is assigned a particular
`meaning; for example a status code”; “(3)
`(A) (computer terminology) In software
`engineering, computer instructions and
`data definitions expressed in a
`programming language or in a form output
`by an assembler, compiler, or other
`translator.”
`
`Microsoft Computer Dictionary, 424 (5th
`edition) “program,” “A sequence of
`instructions that can be executed by a
`computer. The term can refer to the
`original source code or to the executable
`(machine language) version.”
`
`A-8
`
`PayPal Ex. 1022, p. 12
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 13 of 26 PageID #: 919
`
`
`Defendants’ Terms for Construction:3
`
`
`
`
`
`NO.
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`Proposed by Imation and
`IMC:
`
`“first program code”
`
`’047 Patent, independent
`claims 1, 24, 26, 27 and 30
`(and dependent claims 21,
`22, 25, 28, 29 and 31).
`
`5
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Proposed Construction:
`
`Plain meaning, no
`construction necessary.
`
`To the extent that a
`construction is required: “a
`first a sequence of
`instructions, stored on the
`portable device memory”
`
`Intrinsic Evidence:
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`Proposed Construction:
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`Proposed Construction:
`
`“program code that causes
`the host computer to display
`an interactive user interface
`and causes the portable
`device processor – without
`relying on the processing
`power of the host computer
`processor – to run other
`program code stored on the
`portable device memory”
`
`“program code that causes
`the host computer to display
`an interactive user interface
`and causes the portable
`device processor – without
`relying on the processing
`power of the host computer
`processor – to run other
`program code stored on the
`portable device memory”
`
`’047 Patent:
`
`Intrinsic Evidence:
`
`Intrinsic Evidence:
`
`’047 Patent at 2:57-66, 5:1-4,
`5:20-24, 6:5-57, 9:13-17,
`
`’047 Prosecution History:
`
`’047 Prosecution History:
`
`
`3 Terms 5-7 have been proposed for construction by Imation and IMC. Terms 5-7 will be briefed and argued by Imation on behalf of
`both Imation and IMC. IMC agrees that any construction of terms 5-7 shall be binding upon IMC. Terms 8-10 have been proposed
`for construction by IMC and will be briefed and argued by IMC only. IOENGINE believes that any terms that are construed should
`be construed for all parties regardless of which party proposed the term for construction, and that any construction should be applied
`in both cases. Imation believes that any construction of terms 8-10 is not part of the litigation between IOENGINE and Imation, and
`any such construction should apply only to IMC and IOENGINE.
`
`
`
`A-9
`
`PayPal Ex. 1022, p. 13
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 14 of 26 PageID #: 920
`
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`Office Action dated May 12,
`2011, pp. 6-14.
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`Office Action dated May 12,
`2011, pp. 6-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Office Action dated February
`15, 2012, pp. 2-8.
`
`Office Action dated February
`15, 2012, pp. 2-8.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`
`
`
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`9:20-24, 9:33-37, 28:46-50,
`and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047
`Patent, September 12, 2011,
`Response to Office Action, at
`10, 13.
`
`Extrinsic Evidence:
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 403 (7th ed. 2000)
`“executable instruction,”
`“(A) An instruction that is
`the instruction set for a given
`computer and can be
`executed in its current form.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 874 (7th ed. 2000)
`“program,” “(6) A prepared
`sequence of instructions to
`
`A-10
`
`PayPal Ex. 1022, p. 14
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 15 of 26 PageID #: 921
`
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`the system to accomplish a
`defined task.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 181-82 (7th ed. 2000)
`“code,” “(2) (A) A character
`or a bit pattern that is
`assigned a particular
`meaning; for example a
`status code”; “(3) (A)
`(computer terminology) In
`software engineering,
`computer instructions and
`data definitions expressed in
`a programming language or
`in a form output by an
`assembler, compiler, or other
`translator.”
`
`Microsoft Computer
`Dictionary, 424 (5th edition)
`“program,” “A sequence of
`instructions that can be
`executed by a computer. The
`term can refer to the original
`source code or to the
`executable (machine
`
`A-11
`
`PayPal Ex. 1022, p. 15
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 16 of 26 PageID #: 922
`
`
`
`
`NO.
`
`
`
`6
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`Proposed by Imation and
`IMC:
`
`“second program code”
`
`’047 Patent, independent
`claims 1, 24, 26, 27 and 30.
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`language) version.”
`Proposed Construction:
`
`Plain meaning, no
`construction necessary.
`
`To the extent that a
`construction is required: “a
`second a sequence of
`instructions, stored on the
`portable device memory”
`
`Intrinsic Evidence:
`
`’047 Patent:
`
`’047 Patent at 2:57-66, 5:1-4,
`5:20-24, 6:5-57, 9:13-17,
`9:20-24, 9:33-37, 28:46-50,
`and Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047
`Patent, September 12, 2011,
`Response to Office Action, at
`10, 13.
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`
`Proposed Construction:
`
`Proposed Construction:
`
`“program code that enables
`the portable device processor
`– without relying on the
`processing power of the host
`computer processor – to (i)
`receive communications from
`the interactive user interface
`and (ii) control
`communications sent through
`the host computer’s network
`interface to a remote
`communications network
`node”
`
`“program code that enables
`the portable device processor
`– without relying on the
`processing power of the host
`computer processor – to (i)
`receive communications from
`the interactive user interface
`and (ii) control
`communications sent through
`the host computer’s network
`interface to a remote
`communications network
`node”
`
`Intrinsic Evidence:
`
`Intrinsic Evidence:
`
`’047 Prosecution History:
`
`’047 Prosecution History:
`
`Office Action dated May 12,
`2011, pp. 6-14.
`
`Office Action dated May 12,
`2011, pp. 6-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Extrinsic Evidence:
`
`Office Action dated February
`
`Office Action dated February
`
`
`
`A-12
`
`PayPal Ex. 1022, p. 16
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 17 of 26 PageID #: 923
`
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`15, 2012, pp. 2-8.
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`15, 2012, pp. 2-8.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 403 (7th ed. 2000)
`“executable instruction,”
`“(A) An instruction that is
`the instruction set for a given
`computer and can be
`executed in its current form.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 874 (7th ed. 2000)
`“program,” “(6) A prepared
`sequence of instructions to
`the system to accomplish a
`defined task.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 181-82 (7th ed. 2000)
`“code,” “(2) (A) A character
`or a bit pattern that is
`assigned a particular
`meaning; for example a
`
`A-13
`
`PayPal Ex. 1022, p. 17
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`7
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 18 of 26 PageID #: 924
`
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`Proposed by Imation and
`IMC:
`
`“third program code” /
`“third processing code”
`
`’047 Patent, independent
`claims 1, 24, 26, 27 and 30.
`
`
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`status code”; “(3) (A)
`(computer terminology) In
`software engineering,
`computer instructions and
`data definitions expressed in
`a programming language or
`in a form output by an
`assembler, compiler, or other
`translator.”
`
`Microsoft Computer
`Dictionary, 424 (5th edition)
`“program,” “A sequence of
`instructions that can be
`executed by a computer. The
`term can refer to the original
`source code or to the
`executable (machine
`language) version.”
`Proposed Construction:
`
`Plain meaning, no
`construction necessary.
`
`To the extent that a
`construction is required: “a
`third a sequence of
`instructions, stored on the
`portable device memory”
`
`A-14
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`
`Proposed Construction:
`
`Proposed Construction:
`
`“program code run on the
`portable device processor –
`without relying on the
`processing power of the host
`computer processor – that
`causes a communication to
`be sent through the host
`computer’s network interface
`to a communications network
`
`“program code run on the
`portable device processor –
`without relying on the
`processing power of the host
`computer processor – that
`causes a communication to
`be sent through the host
`computer’s network interface
`to a communications network
`
`PayPal Ex. 1022, p. 18
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 19 of 26 PageID #: 925
`
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Intrinsic Evidence:
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`node”
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`node”
`
`’047 Patent:
`
`Intrinsic Evidence:
`
`Intrinsic Evidence:
`
`’047 Patent at 2:57-66, 5:1-4,
`5:20-24, 6:5-57, 7:29-33,
`9:13-17, 9:20-24, 9:33-37,
`12:66-13:5, 16:40-46, 20:26-
`33, 25:12-22, 28:46-59, and
`Fig. 3.
`
`’047 Prosecution History:
`
`Prosecution History of ’047
`Patent, September 12, 2011,
`Response to Office Action, at
`10, 13.
`
`Prosecution History of ’047
`Patent, June 14, 2012,
`Response to Office Action, at
`12.
`
`Prosecution History of ’047
`Patent, January 25, 2013,
`Response to Office Action, at
`12.
`
`Extrinsic Evidence:
`
`’047 Prosecution History:
`
`’047 Prosecution History:
`
`Office Action dated May 12,
`2011, pp. 6-14.
`
`Office Action dated May 12,
`2011, pp. 6-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Response to Office Action
`dated September 12, 2011,
`pp. 1-14.
`
`Office Action dated February
`15, 2012, pp. 2-8.
`
`Office Action dated February
`15, 2012, pp. 2-8.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Response to Office Action
`dated June 14, 2012, pp. 9-
`14.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Office Action dated October
`25, 2012, pp. 2-9.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`Response to Office Action
`dated January 25, 2013, pp.
`2-13.
`
`
`
`A-15
`
`PayPal Ex. 1022, p. 19
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 20 of 26 PageID #: 926
`
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 403 (7th ed. 2000)
`“executable instruction,”
`“(A) An instruction that is
`the instruction set for a given
`computer and can be
`executed in its current form.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 874 (7th ed. 2000)
`“program,” “(6) A prepared
`sequence of instructions to
`the system to accomplish a
`defined task.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`Press, 181-82 (7th ed. 2000)
`“code,” “(2) (A) A character
`or a bit pattern that is
`assigned a particular
`meaning; for example a
`
`A-16
`
`PayPal Ex. 1022, p. 20
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`8
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 21 of 26 PageID #: 927
`
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`Proposed by IMC:
`
`“portable device”
`
`’047 Patent, independent
`claims 1, 24, 26, 27 and 30
`(and dependent claims 2, 6,
`7, 8, 9, 10, 11, 12, 13, 14, 15,
`16, 17, 18, 19, 20, 21, 22, 23,
`25, 28 and 31).
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`status code”; “(3) (A)
`(computer terminology) In
`software engineering,
`computer instructions and
`data definitions expressed in
`a programming language or
`in a form output by an
`assembler, compiler, or other
`translator.”
`
`Microsoft Computer
`Dictionary, 424 (5th edition)
`“program,” “A sequence of
`instructions that can be
`executed by a computer. The
`term can refer to the original
`source code or to the
`executable (machine
`language) version.”
`Proposed Construction:
`
`Non-limiting preamble. Plain
`meaning; no construction
`necessary.
`
`To the extent that a
`construction is required:
`“electronic device capable of
`being transported”
`
`A-17
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`
`Imation has not requested
`construction of this phrase.
`
`Proposed Construction:
`
`“Personal Computing
`Device”
`
`Intrinsic Evidence:
`
`’047 Patent:
`
`’047 Patent at 1:19-25, 2:25-
`67, 4:61-65, 9:25-28, and
`
`PayPal Ex. 1022, p. 21
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 22 of 26 PageID #: 928
`
`
`DEFENDANT IMATION’S
`PROPOSED
`CONSTRUCTION(S)
`
`DEFENDANT IMC’S
`PROPOSED
`CONSTRUCTION(S)
`21:44-52.
`
`CLAIM TERM AND
`AFFECTED CLAIMS
`
`PLAINTIFF’S PROPOSED
`CONSTRUCTION(S)
`Intrinsic Evidence:
`
`’047 Patent:
`
`’047 Patent at 2:39-48, 2:55-
`58, 2:63-3:6, and 4:46-65.
`
`Extrinsic Evidence:
`
`Microsoft Computer
`Dictionary, 412 (5th ed.
`2002): “portable…2. Light
`enough, rugged enough, and
`free enough of encumbering
`external connections to be
`carried by a user.”
`
`Modern Dictionary of
`Electronics, 578 (7th ed.
`1999): “portable data
`medium, A data medium
`intended to be transportable
`easily and independently of
`the mechanism used in
`interpreting it.”
`
`IEEE 100 The Authoritative
`Dictionary of IEEE
`Standards Terms, Standards
`Information Network IEEE
`
`
`
`A-18
`
`PayPal Ex. 1022, p. 22
`PayPal v. IOENGINE
`
`

`

`
`
`NO.
`
`9
`
`
`
`Case 1:14-cv-01572-GMS Document 49 Filed 11/04/15 Page 23 of 26 PageID #: 929
`
`
`CLAIM TERM AND
`AFFECTED C