Case 6:18-cv-00372-ADA Document 76 Filed 10/17/19 Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`FINTIV, INC.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Civil Action No.: 6:18-CV-372-ADA
`
`JURY TRIAL DEMANDED
`
`APPLE’S REPLY CLAIM CONSTRUCTION BRIEF
`
`Apple Ex. 1020, p. 1
` Apple v. Fintiv
`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 76 Filed 10/17/19 Page 2 of 21
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`TABLE OF CONTENTS
`
`II.
`
`III.
`
`TABLE OF CONTENTS ............................................................................................................. i
`TABLE OF AUTHORITIES ...................................................................................................... ii
`TABLE OF ACRONYMS .......................................................................................................... iv
`I.
`APPLE’S CONSTRUCTIONS PROPERLY GIVE THE CLAIM TERMS
`THEIR PLAIN AND ORDINARY MEANING IN LIGHT OF THE
`INTRINSIC RECORD .................................................................................................... 1
`APPLE’S CONSTRUCTIONS APPLY THE UNDERSTANDING OF A
`POSITA, NOT THE PERSPECTIVE OF A LAYPERSON ....................................... 6
`CLAIM CONSTRUCTIONS .......................................................................................... 7
`A.
`“Wallet Management Applet (WMA)” (claims 11 and 13) ................................... 7
`B.
`“Widget” (claims 11, 18, and 23) ........................................................................ 11
`C.
`“Mobile Wallet Application” (claims 11, 18, and 23) ......................................... 11
`D.
`“SE Information” (claims 14 and 23) .................................................................. 13
`E.
`“Mobile Device Information” (claims 14, 18, and 23) ........................................ 13
`F.
`“Over-the-Air (OTA) Proxy” (claim 23) and “OTA Proxy” (claim 16) ............. 14
`G.
`“Provision[ing]” (claims 11 and 23) .................................................................... 15
`CONCLUSION .............................................................................................................. 15
`
`IV.
`
`i
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Advanced Display Sys., Inc. v. Kent State Univ.,
`212 F.3d 1272 (Fed. Cir. 2000)..................................................................................................8
`
`Alloc, Inc. v. ITC,
`342 F.3d 1361 (Fed. Cir. 2003)..................................................................................................2
`
`Cadence Pharm. Inc. v. Exela PharmSci Inc.,
`780 F.3d 1364 (Fed. Cir. 2015)..................................................................................................5
`
`Cook Biotech, Inc. v. Acell, Inc.,
`460 F.3d 1365 (Fed. Cir. 2006)..................................................................................................8
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016)..................................................................................................2
`
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009)..............................................................................................4, 5
`
`Ethicon Endo-Surgery, Inc. v. United States Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996)....................................................................................................9
`
`GPNE Corp. v. Apple, Inc.,
`830 F.3d 1365 (Fed. Cir. 2016)..................................................................................................2
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)..................................................................................................4
`
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`558 F.3d 1368 (Fed. Cir. 2009)..................................................................................................2
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)..............................................................................................8, 9
`
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
`933 F.3d 1345 (Fed. Cir. 2019)..............................................................................................8, 9
`
`Kraft Foods, Inc. v. Int’l Trading Co.,
`203 F.3d 1362 (Fed. Cir. 2000)..................................................................................................9
`
`Nitride Semiconductors Co. v. RayVio Corp.,
`No. 5:17-cv-02952-EJD, 2018 WL 2183270 (N.D. Cal. May 11, 2018) ..................................6
`
`ii
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`NYKO Technologies Inc. v. Energizer Holdings Inc.,
`No. 12-cv-3001, 2013 WL 12129613 (C.D. Cal. June 12, 2013) ..............................................6
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................1, 13
`
`On Demand Mach. Corp. v. Ingram Indus., Inc.,
`442 F.3d 1331 (Fed. Cir. 2006)..................................................................................................5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................................1, 2, 3
`
`Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC,
`824 F.3d 999 (Fed. Cir. 2016)....................................................................................................5
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)..................................................................................................5
`
`Seachange Int’l, Inc. v. C-COR, Inc.,
`413 F.3d 1361 (Fed. Cir. 2005)..................................................................................................9
`
`Techno View IP, Inc. v. Oculus VR, LLC,
`No. 17-cv-386, 2018 WL 3872157 (D. Del. Aug. 15, 2018) .....................................................6
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)..................................................................................................4
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012)....................................................................4, 6, 7, 8, 11, 13, 14
`
`Trustees of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016)................................................................................1, 2, 3, 8, 12
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014)................................................................................................12
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................3
`
`Wang Labs., Inc. v. America Online, Inc.,
`197 F.3d 1377 (Fed. Cir. 1999)..................................................................................................2
`
`Whirlpool Corp. v. TST Water, LLC,
`No. 2:15-cv-1528-JRG, 2016 WL 3959811 (E.D. Tex. July 22, 2016).....................................7
`
`iii
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`TABLE OF ACRONYMS
`
`CCA: Contactless Card Applet
`NFC: Near Field Communications
`MNO: Mobile Network Operator
`OTA: Over-the-Air
`POS: Point of Sale
`SE: Secure Element
`SP: Service Provider
`TSM: Trusted Service Manager
`WMA: Wallet Management Applet
`WMS: Wallet Management System
`
`iv
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`The words of a claim define the invention. But the specification informs the meaning of
`those words. Fintiv, in its Responsive Claim Construction Brief (“Fintiv Opp.”) (D.I. 75), sets
`out on the wrong foot by consulting the specification post hoc—if at all—only for instances of
`lexicography or disclaimer when it should be looking to the specification in the first instance to
`ascertain the meaning of the disputed claim terms. Fintiv’s approach of deciding what a claim
`term means in the abstract and only then looking to the specification to change that meaning
`improperly derogates the role of the specification and is contrary to the seminal Phillips case
`which holds that the specification is the “single best guide to the meaning of a disputed term,”
`Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal citation omitted), and
`more recent cases holding that “[t]he only meaning that matters in claim construction is the
`meaning in the context of the patent,” Trustees of Columbia Univ. v. Symantec Corp., 811 F.3d
`1359, 1363 (Fed. Cir. 2016).
`Fintiv also asks the Court to ignore its duty to resolve the parties’ disputes as to the scope
`of the claim terms pursuant to O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
`1351 (Fed. Cir. 2008). It is telling that Fintiv’s briefing never once cites or acknowledges the
`well-known O2 Micro line of cases, not even in response to Apple’s Opening Brief (D.I. 71).
`Fintiv’s world—one in which virtually no claim term in any patent ever requires
`construction—is simply not the world that we live in. The parties’ claim scope disputes must be
`resolved, and they must be resolved in consideration of the complete intrinsic record, including
`the provisional applications. When this exercise is undertaken, Apple’s constructions prevail.
`
`I. APPLE’S CONSTRUCTIONS PROPERLY GIVE THE CLAIM TERMS THEIR
`PLAIN AND ORDINARY MEANING IN LIGHT OF THE INTRINSIC RECORD
`Apple’s proposed constructions accord the ’125 patent specification its proper role in
`discerning the ordinary and customary meaning of the disputed claim terms in the context in
`which they are used.
`Put simply: “The only meaning that matters in claim construction is the meaning in the
`context of the patent.” Trustees, 811 F.3d at 1363. There is no free-floating “plain” or
`
`1
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`“ordinary” meaning of claim terms—derived from general-purpose dictionaries or lay usage—
`that governs the claim-construction inquiry. See Eon Corp. IP Holdings LLC v. Silver Spring
`Networks, 815 F.3d 1314, 1321 (Fed. Cir. 2016) (“[T]he question is not whether there is a settled
`ordinary meaning of the terms in some abstract sense of the words.”). Rather, “the ordinary and
`customary meaning of a claim term is the meaning that the term would have to a person of
`ordinary skill in the art.” Phillips, 415 F.3d at 1313. And, “[i]mportantly, the person of ordinary
`skill in the art is deemed to read the claim term not only in the context of the particular claim in
`which the disputed term appears, but in the context of the entire patent, including the
`specification.” Id. The words of the claim define the invention. But the specification informs
`the meaning of those words.
`Apple’s claim constructions properly rely on the specification, including the provisional
`applications, to inform the plain and ordinary meaning of the disputed claims terms to a person
`of ordinary skill in the art (“POSITA”) in the context of the ’125 patent. As explained in
`Apple’s Opening Brief and further explained below, the specification defines the ordinary,
`contextual meaning of those terms through, for example, its description of the purpose of the
`invention, its use of language that describes the invention as a whole, and its consistent and
`repeated descriptions. See Apple Opening Br. at 11-14, 17-18, 21-22, 25-26, 28-29. There are
`scores of appellate decisions relying on precisely such clues to construe claim terms in view of
`the specification. See, e.g., GPNE Corp. v. Apple, Inc., 830 F.3d 1365, 1370-71 (Fed. Cir. 2016)
`(construing “pager” to mean what the specification “repeatedly and exclusively” described it as);
`ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1375 (Fed. Cir. 2009) (construing
`“spike” to require a pointed tip capable of piercing, based on repeated and uniform statements in
`the specification); Alloc, Inc. v. ITC, 342 F.3d 1361, 1369-70 (Fed. Cir. 2003) (construing claim
`to include limitation that the “very character of the invention” required); Wang Labs., Inc. v.
`America Online, Inc., 197 F.3d 1377, 1382 (Fed. Cir. 1999) (construing “frame” as character-
`based system, not bitmapped system, when specification consistently described it as such and
`mentioned bitmaps only in describing the prior art).
`
`2
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`Fintiv at times correctly recites the role of the specification in claim construction. See,
`e.g., Fintiv Opp. at 3 (“[clam construction] necessarily requires the Court to review the same
`resources as would [a POSITA] – the specification and the prosecution history”) (citing Phillips,
`415 F.3d at 1313). But Fintiv’s arguments fundamentally contradict the clear message from the
`case law cited above. Fintiv criticizes Apple for relying on the ’125 patent specification
`(including the provisional applications) to derive the meaning of the claim terms, in context, to a
`POSITA. See, e.g., id. at 7-9, 11-12, 14, 17-19. In particular, Fintiv takes the position that the
`specification can shed light on the meaning of claim terms—viz., to cabin the meaning of those
`terms—only when it contains statements that redefine a term (lexicography) or expressly carve
`out subject matter that would otherwise fall within the scope of the claims (disclaimer or
`disavowal). Id. at 7. For five of the seven disputed claim terms, Fintiv’s primary argument
`against Apple’s construction is that “there is [not] unmistakable evidence that the patentee
`disclaimed claim scope through clear disavowal or by acting as its own lexicographer.” Id. at 7
`(“wallet management applet”); see also id. at 11-12 (for “widget”); 14 (for “mobile wallet
`application”); 17 (for “mobile device information”); and 19 (for “OTA proxy”).
`But contrary to Fintiv’s position, the specification has an important role to play even
`absent lexicography or disavowal. Indeed, the en banc Federal Circuit in Phillips reaffirmed that
`“the specification ‘is always highly relevant to the claim construction analysis. Usually, it is
`dispositive; it is the single best guide to the meaning of a disputed term.’” 415 F.3d at 1315
`(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). And the
`Court has more recently confirmed that “[o]ur case law does not require explicit redefinition or
`disavowal.” Trustees, 811 F.3d at 1363. It is improper to decide on a “plain meaning” for claim
`terms and only then ask whether the specification alters that plain meaning. Rather, a court must
`look first to the guidance provided by the specification—even if it does not come in the form of
`express definitional or disavowing language—to determine the meaning of the claim term in the
`context of the patent in the first instance. See id. at 1363-64; Phillips, 415 F.3d at 1320-21.
`Here, the ’125 patent’s repeated and consistent characterization of “wallet management applet
`
`3
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`(WMA)” (Apple Opening Br. at 11-14; Apple Opp. (D.I. 74) at 9-13); “widget” (Apple Opening
`Br. at 16-18; Apple Opp. at 15-17); “mobile wallet application” (Apple Opening Br. at 20-22;
`Apple Opp. at 18-21); “mobile device information” (Apple Opening Br. at 25-26; Apple Opp. at
`24-25); and “OTA proxy” (Apple Opening Br. at 27-29; Apple Opp. at 26-27) dictate Apple’s
`proposed constructions.
`Even Fintiv’s own cited authority makes clear that the specification plays an important
`role in claim construction beyond lexicography and disclaimer. Fintiv relies predominantly on
`the Teleflex, Thorner, and Epistar cases, but that reliance is misplaced. Teleflex is clear that the
`“ordinary and customary meaning” of a claim term is determined by reference to, among other
`things, “the written description and the prosecution history.” Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Thorner similarly confirms that “[t]he words of a
`claim are generally given their ordinary and customary meaning as understood by a person of
`ordinary skill in the art when read in the context of the specification and prosecution history.”
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (emphasis
`added). It goes on to state that “[t]here are only two exceptions to this general rule”—namely,
`lexicography and disavowal. Id. (emphasis added). But the “general rule” to which those
`exceptions apply already accounts for the ordinary meaning provided by the specification. See
`also, e.g., Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“We
`depart from the plain and ordinary meaning of claim terms based on the specification in only two
`instances: lexicography and disavowal.”) (emphasis added).
`Fintiv’s repeated reliance on Epistar is particularly misplaced. To begin with, the
`Federal Circuit recited the same principle expressed in Thorner: “Generally, this court gives
`claim terms their ordinary and customary meanings, according to the customary understanding of
`a person of ordinary skill in the art who reads them in the context of the intrinsic record.”
`Epistar Corp. v. ITC, 566 F.3d 1321, 1332 (Fed. Cir. 2009) (emphasis added). Moreover, in
`Epistar, the losing party did not assert that the claim term in question (“transparent window
`layer”) had a particular ordinary meaning; it argued that the patentee had disclaimed using a
`
`4
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`specific substance (indium-tin oxide, or “ITO”) to make the window layer, and the Court rejected
`that argument. See id. at 1334-36; see also Cadence Pharm. Inc. v. Exela PharmSci Inc., 780
`F.3d 1364, 1369 (Fed. Cir. 2015) (refusing to limit “buffering agent” beyond the definition
`revealed by the specification).
`As the cases cited above make clear, the specification can reveal the ordinary and
`customary meaning of a term in a number of ways other than express redefinition or clear
`disclaimer. None of those cases resorted to lexicography or disavowal in relying on the
`specification to inform claim construction. As another example, in Ruckus Wireless, Inc. v.
`Innovative Wireless Solutions, LLC, 824 F.3d 999 (Fed. Cir. 2016), the Federal Circuit
`considered the meaning of the claim term “communications path,” and specifically the question
`whether that term was limited to wired communication or included wireless paths as well.
`There, the Court held that the context of the patent revealed an “ordinary meaning” that
`encompassed only wired communications paths for at least the following reasons: the title of the
`patent referred to “Telephone Lines”; the very first line of the specification described “[t]his
`invention” as one “particularly concerned” with “two-wire lines such as telephone subscriber
`lines”; and every embodiment used a telephone wire. Id. at 1003. The Court did not hold, and
`did not need to hold, that the patentee had redefined “communications path” or expressly
`informed the public that its invention excluded wireless communications. The specification
`conveyed that limitation in the way it talked about the invention. See also, e.g., On Demand
`Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006) (“[W]hen the scope of
`the invention is clearly stated in the specification, and is described as the advantage and
`distinction of the invention, it is not necessary to disavow explicitly a different scope.”); SciMed
`Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed. Cir. 2001)
`(“[T]he written description can provide guidance as to the meaning of the claims, thereby
`dictating the manner in which the claims are to be construed, even if the guidance is not provided
`in explicit definitional format.”).
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`5
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`District courts, too, have recognized that the specification guides the “plain and ordinary
`meaning” analysis even in cases that do not amount to lexicography or disavowal. For example,
`the Northern District of California confronted the claim terms “forming on” and “formed on” in
`a patent involving semiconductors manufactured with multiple layers. Nitride Semiconductors
`Co. v. RayVio Corp., No. 5:17-cv-02952-EJD, 2018 WL 2183270, at *5-*6 (N.D. Cal. May 11,
`2018). Although the claims themselves did not indicate whether a given layer could be “formed
`on” another one even if there were intervening layers, the specification made clear that this was
`impermissible. But it did so without expressly defining formation as happening directly on a
`particular layer, and without stating that intervening-layer arrangements were excluded from the
`scope of the claims. Rather, the district court relied on the specification’s careful description of
`layer formation, both in text and in figures, along with “the overall character of the invention”
`that revealed the importance of a particular structure. Id.; see also, e.g., Techno View IP, Inc. v.
`Oculus VR, LLC, No. 17-cv-386, 2018 WL 3872157, at *4-*5 (D. Del. Aug. 15, 2018)
`(construing “buffer” to require storage of image-related data based on plain meaning “in the
`context of the asserted patents”); NYKO Technologies Inc. v. Energizer Holdings Inc., No. 12-cv-
`3001, 2013 WL 12129613, at *6-*8 (C.D. Cal. June 12, 2013) (relying on specification to
`construe term “to couple to” and rejecting argument, based on Thorner, that express redefinition
`is required).
`Where, as here, the specification reveals the ordinary meaning of disputed claim terms,
`the Court should give the terms that meaning without demanding a further showing of
`lexicography or disavowal.
`
`II. APPLE’S CONSTRUCTIONS APPLY THE UNDERSTANDING OF A POSITA,
`NOT THE PERSPECTIVE OF A LAYPERSON
`Fintiv incorrectly states that Apple’s proposed constructions “provid[e] a layperson’s
`definition” of the claim terms instead of the meaning of the terms as understood by a POSITA.
`See Fintiv Opp. at 3-4. This is a blatant misstatement of Apple’s constructions, all of which
`reflect the meaning of the claims as understood by, and from the perspective of, a POSITA. See,
`
`6
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`e.g., Apple Opening Br. at 16 (“A person of ordinary skill in the art would understand widget in
`the ’125 patent to be a ‘user interface software application.’”). Apple has additionally provided
`the testimony of Dr. Turnbull, an expert with decades of experience in mobile applications and e-
`commerce, confirming that Apple’s proposed constructions are how a POSITA would
`understand the disputed terms. See Turnbull Decl. (D.I. 74-3) ¶¶ 79 (“my opinion is that a
`POSITA would understand the term ‘wallet management applet (WMA)’ in the ’125 patent to
`mean a software application for storing duplicate account specific information accessible to the
`mobile wallet application”), ¶ 89 (“widget”), ¶ 98 (“mobile wallet application”), ¶ 100 (“SE
`information”), ¶ 103 (“mobile device information”), ¶ 122 (“OTA proxy”).
`What Apple has said is that certain terms should be construed (consistent with their
`understanding to a POSITA) using terminology that aids the jury’s understanding, not as a jury
`would itself define the terms if left to its own devices. This, too, has been clear from the outset.
`See, e.g., Apple Opening Br. at 16 (absent a POSITA’s construction, “[t]he jury will be confused
`as to what a widget is or does and run a significant risk of misinterpreting the term differently
`from how it is used in the asserted claims”) (citing, e.g., Whirlpool Corp. v. TST Water, LLC, No.
`2:15-cv-1528-JRG, 2016 WL 3959811, at *11 (E.D. Tex. July 22, 2016) (“[t]hese disputed terms
`are technical terms and are potentially confusing, so ‘[t]he Court believes that some construction
`of the disputed claim language will assist the jury to understand the claims’”).
`
`III. CLAIM CONSTRUCTIONS
`
`“Wallet Management Applet (WMA)” (claims 11 and 13)
`A.
`Fintiv’s misunderstanding and misapplication of Thorner is at an apex with respect to the
`term “wallet management applet (WMA),” where, notwithstanding hundreds of references in the
`intrinsic record describing this term consistent with Apple’s proposed construction, Fintiv
`contends that the specification cannot inform its meaning “unless there is unmistakable evidence
`that the patentee disclaimed claim scope through clear disavowal or by acting as its own
`lexicographer.” Fintiv Opp. at 7. As discussed more fully in Section I, Fintiv misunderstands
`
`7
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`the law regarding the role of intrinsic evidence in construing claims more generally, as well as
`the clear language of Thorner, specifically.
`Fintiv’s misapprehension of the role intrinsic evidence plays in claim construction is
`perhaps best illustrated by its criticism that Apple “cites extensively to the provisional
`applications” instead of the ’125 patent itself.1 Fintiv Opp. at 8. Fintiv fails to appreciate that
`the provisionals—which are all incorporated by reference—are themselves part and parcel of the
`specification of the ’125 patent. See Apple Opening Br. at 1-2, 9; (citing Advanced Display Sys.,
`Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000); Trustees, 811 F.3d at 1365-66)
`Apple Opp. at 6-7 (citing Cook Biotech, Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir.
`2006)). For the same reason, Fintiv’s related accusation—that Apple “fails to provide the Court
`with full citations to the specification of the ’125 patent,” Fintiv Opp. at 8—is misplaced
`(especially considering that Fintiv fails to cite any of the provisional applications even a single
`time). Apple has cited and discussed as many specification passages—from both ’125 patent
`itself and the provisionals—as 75 pages of briefing allow.
`As it relates to the “WMA,” Fintiv misstates the law regarding coined terms. Coined
`terms present one situation where the claims should be limited to the written description
`notwithstanding a lack of disclaimer or lexicography. See Apple Opening Br. at 10-11; Apple
`Opp. at 10-11. Fintiv’s attempt to paint Federal Circuit authorities regarding this point of law—
`Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345 (Fed. Cir. 2019) and Interval
`Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014)—as limited to their facts is
`unpersuasive. Fintiv claims that Iridescent only applies to claim terms reciting a “term of
`degree” (e.g., “high quality”) and that Interval only applies to “purely subjective claim phrase”
`(e.g., “unobtrusive manner”). Fintiv Opp. at 9-10. But the answer to the question of whether a
`
`1 Fintiv’s related accusation—that Apple “fails to provide the Court with full citations to the
`specification of the ’125 patent,” Fintiv Opp. at 8—defies credulity given that Fintiv fails to cite
`any of the provisional applications even a single time. Apple has cited and discussed as many
`specification passages—from both ’125 patent itself and the provisionals—as 75 pages of
`briefing allow.
`
`8
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`Apple Ex. 1020, p. 13
` Apple v. Fintiv
`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 76 Filed 10/17/19 Page 14 of 21
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`“disputed term is a coined term” is yes when “it has no ordinary and customary meaning,”
`without other qualifications. Iridescent, 933 F.3d at 1353 (citing Interval, 766 F.3d at 1371).
`There are various reasons why a term may not have an ordinary and customary meaning, and the
`case law does not limit coined terms to “terms of degree” or “subjective” phrases.
`Because WMA is “not sufficiently clear on its face to provide guidance to a person of
`ordinary skill in the art as to the meaning of the term,” it is a coined term. Id. at 1351. Fintiv’s
`assertion that WMA “is a commonly understood term by one of ordinary skill in the art” because
`the term “applet” appears in a dictionary misses the mark entirely. Fintiv Opp. at 6. The phrase
`being construed is “wallet management applet (WMA),” not the standalone term “applet.”
`Apple previously discussed the errors associated with this approach to claim construction. See
`Apple Opp. at 23; see also Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d
`1572, 1578 (Fed. Cir. 1996) (“We acknowledge that the term ‘connected to’ could, in other
`contexts, be broadly construed. Nevertheless, in the context of this claim, the district court
`correctly concluded that the entire phrase ‘connected to said longitudinal slots’ must be read
`narrowly.”). Moreover, Fintiv’s assertion is contrary to all of the evidence cited in Apple’s
`Opening Brief at page 11 (e.g., Exs. 10 and 11 show no prior usage in any U.S. patent or
`application) and Apple’s Opposition Brief at pages 8-9 (e.g., expert testimony from Dr. Turnbull
`that WMA was not a term of art (¶¶67-69) and that a POSITA’s understanding of the term
`“applet” does not mean that WMA was a known term of art (¶¶70-74)).
`Fintiv’s argument that Apple’s construction “violates the doctrine of claim
`differentiation” because dependent claim 16 recites that “the WMA is a software application
`configured to store account specific information” (Fintiv Opp. at 7) is flawed for the same
`reasons as the companion argument in Fintiv’s Opening Brief for the term “widget.” See Apple
`Opp. at 15-17. To recap in brief, Fintiv’s argument that claim differentiation is a requirement
`rather than a presumption is incorrect as a matter of law (see, e.g., Kraft Foods, Inc. v. Int’l
`Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000)), and the presumption is overcome in
`situations like this one, where the intrinsic evidence consistently describes the claim term in a
`
`9
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`Apple Ex. 1020, p. 14
` Apple v. Fintiv
`IPR2020-00019
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`Case 6:18-cv-00372-ADA Document 76 Filed 10/17/19 Page 15 of 21
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`way that is necessary to “achieve an object of the invention” (Seachange Int’l, Inc. v. C-COR,
`Inc., 413 F.3d 1361, 1370 (Fed. Cir. 2005)). The WMA, as already discussed in Apple’s prior
`briefing, is necessary to achieve the object of the invention: allowing users to view and access
`account specific information. See, e.g., Apple Opening Br. at 13-14; Apple Opp. at 13-14.
`Fintiv repeats its argument that Apple’s construction cannot be correct because the
`specification sometimes uses the term “may” in the vicinity of passages that discuss the WMA.
`Fintiv Opp. at 8. Apple addressed this argument in its Opposition Brief. See Apple Opp. at 10-
`11. Perhaps more importantly, Fintiv has no response whatsoever to the specification passages
`that expressly state, for example, that “[t]he WMA 21 is a software application to reside within
`the within the secure element of the mobile device which stores account specific information
`such as a credit card number” without any qualifiers, exceptions, or accompanying permissive
`verbiage. ’846 provisional application, ¶42.
`In contrast to the myriad specification passages cited by Apple in support of its
`construction, Fintiv musters but one passage which it contends describes a “variation[] or
`modifi[ed]” embodiment that is inconsistent with Apple’s construction of WMA. Fintiv Opp. at
`8 (citing ’125 patent, 10:3-8). Upon closer examination, however, this passage also supports
`Apple’s construction, not Fintiv’s. This paragraph in which the cited passages appears is
`discussing limiting the numb