Case 1:14-cv-01572-GMS Document 102 Filed 03/21/16 Page 1 of 3 PageID #: 1972
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IOENGINE, LLC,
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`Plaintiff,
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`v.
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`INTERACTIVE MEDIA CORP.
`d/b/a KAN GURU SOLUTIONS,
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`Defendant.
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`IOENGINE, LLC,
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`,Plaintiff and Counterclaim-Defendant,
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`V.
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`IMATION CORP.,
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`Defendant and Counterclaim-Plaintiff.
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`IMATION CORP.,
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`Counterclaim-Plaintiff,
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`V.
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`IOENGINE, LLC. and SCOTT F. McNULTY,
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`~ounterclaim-Defendants.
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`Civil Action No. 14-1571-GMS
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`Civil Action No. 14-1572-GMS
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`[JURY TRIAL DEMANDED]
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`PayPal Ex. 1012, p. 1
`PayPal v. IOENGINE
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`

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`Case 1:14-cv-01572-GMS Document 102 Filed 03/21/16 Page 2 of 3 PageID #: 1973
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`ORDER CONSTRUING THE TERMS OF
`U.S. PATENT NO. 8,539,047
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`After having considered the submissions of the parties, and hearing oral argument on the
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`matter, 'IT IS HEREBY ORDERED, ADJUDGED, and DECREED that, as used in the asserted
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`claims of U.S. Patent No. 8,539,047 (the "'047 patent"):
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`1. The term "portable device" is construed to have its plain and ordinary meaning. 1
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`2. The term "processor" is construed to have its plain and ordinary meaning.2
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`3. The term "memory" is construed to have its plain and ordinary meaning. 3
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`4. The terms "first program code," "second program code," "third program
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`code/ third processing code," "executable program code stored thereon," and
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`1 The court rejects Interactive Media Corp.'s ("Interactive's") proposed construction of "personal
`computing device." The court does not believe Interactive's construction would add clarity to the
`technical and nontechnical meaning of the terms. Interactive argues that throughout the '047 patent
`specification and prosecution history, the inventor differentiated the claimed invention from prior art by
`emphasizing the primacy of the "portable device" in providing the processing power to process data.
`(D.I. 41 at 4.) However, the court agrees with the plaintiff, IOENGINE, LLC ("IOENGINE"), that this
`alone is not a sufficient reason to replace the word portable with personal. (D.I. 42 at 18). Moreover, the
`court is persuaded that the specification suggests that the device is not only for individual use. (D.I. 41 at
`4.) Finally, while the specification emphasizes the independent computing power, (id.), this does not
`persuade the court to construe portable device as computing device. The court concludes that this claim
`does not require a construction that is more precise than plain and ordinary meaning. See US. Surgical
`Corp v. Ethico~, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ("Claim construction is a matter ofresolution
`of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee
`covered by the claims .... ").
`
`2 The court rejects Interactive's proposed construction of "a microprocessor." Interactive argues
`that the Microsoft Computer Dictionary entry for "processor" refers users to .the term "microprocessor."
`(D.I. 41 at 8.) As additional support, Interactive posits that the '047 specification describes an
`embodiment that supports its proposed construction. (Id. at 9.) The court agrees with IOENGINE that
`Interactive's proposal unnecessarily and improperly limits the claim to one type of processor. (D.I. 42 at
`17, 19.)
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`3 The court rejects Interactive's proposed construction of the term "memory" as "any mechanism
`and/or embodiment allowing a processor to affect the storage and/or retrieval of information." (D.I. 41 at
`9.) The court agrees with IOENGINE that memory is a term that is readily understood and needs no
`construction. (D.I. 42 at 20.) Moreover, there are many potential embodiments of memory. (Id.)
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`2
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`PayPal Ex. 1012, p. 2
`PayPal v. IOENGINE
`
`

`

`Case 1:14-cv-01572-GMS Document 102 Filed 03/21/16 Page 3 of 3 PageID #: 1974
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`"program code stored on the portable device memory" are construed to have
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`their plain and ordinary meaning. 4
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`Dated: March.1_J_, 2016
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`4 The court rejects the proposals of both defendant Imation Corp. ("Imation") and IOENGINE,
`which do nothing to improve the meaning of claim terms that are already clearly understood when read in
`the context ofthe claim overall. To begin with, it is not necessary for the court to construe the meaning
`of first, second and third, which is self-evident and not really in dispute. As for the meaning of "program
`code," IOENGINE's construction ignores Mr. McNulty's decision during prosecution to amend the claim
`to replace the term "program code" with "sequence of instructions." (DJ. 62 at 4.) The court declines to
`construe this language in a way that interferes with this decision.
`More generally, the court declines to construe terms that are already evident from reading the
`entire claim. The Federal Circuit has instructed courts not to "interpret claim terms in a vacuum, devoid
`of the context of the claim as a whole." Kyocera Wireless Corp. v. Int 'l Trade Comm 'n, 545 F .3d 1340,
`1347 (Fed. Cir. 2008). To the extent that the surrounding claim language provides a context for
`understanding "first program code," "second program code," and "third program code," the court believes
`the meaning of these terms is clear when considered in the context of the entire claim. As IOENGINE
`points out, injecting additional limitations for particular terms standing independently will likely confuse
`the jury. (D.I. 52 at 51.) For example, the words "first program code" are embedded in a claim that states
`"first program code which, when executed, causes an interactive user interface to be presented on the first
`output component, wherein the interactive user interface is configured to enable the user to cause the
`portable device processor to execute program code stored on the portable device memory" and need no
`further explanation. ('047 at 31 :3-8.)
`The court also declines IOENGINE's invitation to construe "executable program stored thereon"
`to mean "a sequence of instructions that can be run from the portable device memory on which it is
`stored.". (D.I. 42 at 4-5.) First, the parties agree that "executable" means "can be run," which is
`consistent with its plain and ordinary meaning. "Where there is a point of departure between the parties is
`that IOENGINE believes that a fundamental part of the patent and the invention is that the program code
`is stored on the portable device memory and is run from the portable device memory on which it is
`stored." (D.I. 52 at 12.) When the words are not excerpted and the claim is read in its entirety: "a
`memory having executable program code stored thereon," there is no need to guess at what thereon refers
`to: it refers back to the word memory. The meaning of the claim is clear when read holistically.
`Applying the same logic, the court rejects IOENGINE's proposal to construe "program code
`stored OJ.) the portable device memory" to mean "containing a sequence of instructions that can be run
`from the portable device memory on which it is stored." The claim read in entirety already conveys that
`the program can be executed on the program device memory. The court need not impose further
`limitations on words that already have a clear meaning within the context of the whole claim. See
`Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) ("proper claim
`construction ... demands interpretation of the entire claim in context, not a single element in isolation.");
`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) ("While certain terms may be at the
`center of the claim construction debate, the context of the surrounding words of the claim also must be
`considered .... ").
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`3
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`PayPal Ex. 1012, p. 3
`PayPal v. IOENGINE
`
`