IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SHOPIFY INC. AND SHOPIFY (USA),
`INC.
`
`Plaintiffs and Counterclaim
`Defendants,
`
`
`v.
`
`EXPRESS MOBILE, INC.,
`
`Defendant and Counterclaim
`Plaintiff.
`
`Civil Action No. 19-439-RGA
`
`MEMORANDUM ORDER
`
`This is a patent case about website design tools. Shopify, Inc. and its U.S. subsidiary seek
`
`declaratory judgment of non-infringement of the patents belonging to Express Mobile, Inc.,
`
`which has filed a counterclaim of infringement. Currently before me is the issue of claim
`
`construction of various terms in those patents: U.S. Patent Nos. 6,546,397 (’397 patent),
`
`7,594,168 (’168 patent), 9,063,755 (’755 patent), 9,471,287 (’287 patent), and 9,928,044 (’044
`
`patent). The matter has been briefed (D.I. 117), and I heard oral argument on May 20, 2020 (D.I.
`
`128). The terms are construed as set out below.
`
`I.
`
`BACKGROUND
`
`The specifications of the ’397 and ’168 patents are substantively identical, and the
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`specifications of the ’755, ’287, and ’044 patents are substantively identical.
`
`The ’397 patent family describes a browser-based tool for building webpages. (’397
`
`patent at 1:6-8). The designer can make selections on various menus, and the system can preview
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`1
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`SAP Exhibit 1026
`SAP v. Express Mobile, Inc.
`IPR2021-01146
`Page 00001
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`

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`what the page will look like. (Id. at Abstract, 2:32-37). The data relating to the webpage is stored
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`in an external database. (D.I. 120-1, Ex. 1, “Schmandt Decl,” ¶ 52). When an end user accesses
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`the webpage, the user’s browser downloads a “run time engine” that is executed by a “virtual
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`machine.” (Id. ¶ 53). The run time engine retrieves data from the external database and uses that
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`data to display the webpage. (Id.). According to the specification, this technique is superior to
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`“conventional web site construction tools,” which were not designed for “serious multimedia
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`applications” and can be “remarkably slow and inefficient.” (’397 patent at 1:11-21).
`
`The ’755 patent family is specifically directed to displaying content on mobile devices,
`
`such as smartphones. (’755 patent at Abstract). The inventions enable designers to integrate
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`third-party web services into their content. (Schmandt Decl ¶ 55). The patent family discloses an
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`authoring tool that allows designers to customize the display for receiving inputs and displaying
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`outputs of web services. (Id.). Additionally, the patents disclose the concept of providing two sets
`
`of code to a user’s device: an “Application” and a “Player.” (Id. ¶ 58). The advantage of this
`
`system is that “all of the device-dependent programming is provided to the device only once (or
`
`possibly for some small number of upgrades), permitting a smaller Application, which is the
`
`same for each device.” (’755 patent at 5:52-55).
`
`II.
`
`LEGAL STANDARD
`
`“It is a bedrock principle of patent law that the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (internal quotation marks omitted). When construing patent claims, a
`
`court considers the literal language of the claim, the patent specification, and the prosecution
`
`history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977–80 (Fed. Cir. 1995) (en banc),
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`2
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`IPR2021-01146 Page 00002
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`aff’d, 517 U.S. 370 (1996). Of these sources, “the specification is always highly relevant to the
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`claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of
`
`a disputed term.” Phillips, 415 F.3d at 1315 (internal quotation marks omitted).
`
`“[T]he words of a claim are generally given their ordinary and customary meaning. . . .
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`[Which is] the meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention, i.e., as of the effective filing date of the patent application.”
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`Id. at 1312–13 (citations and internal quotation marks omitted). “[T]he ordinary meaning of a
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`claim term is its meaning to [an] ordinary artisan after reading the entire patent.” Id. at 1321
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`(internal quotation marks omitted). “In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay judges, and claim
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`construction in such cases involves little more than the application of the widely accepted
`
`meaning of commonly understood words.” Id. at 1314.
`
`When a court relies solely upon the intrinsic evidence—the patent claims, the
`
`specification, and the prosecution history—the court’s construction is a determination of law. See
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also make
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`factual findings based upon consideration of extrinsic evidence, which “consists of all evidence
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`external to the patent and prosecution history, including expert and inventor testimony,
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`dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317–19 (internal quotation marks
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`omitted). Extrinsic evidence may assist the court in understanding the underlying technology, the
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`meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic evidence,
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`however, is less reliable and less useful in claim construction than the patent and its prosecution
`
`history. Id.
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`3
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`
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`III. CONSTRUCTION OF DISPUTED TERMS
`
`1.
`
`“virtual machine” (’397 and ’168 patents)
`
`a. Express Mobile’s Construction: “abstract machine emulated in software”
`
`b. Shopify’s Construction: “abstract machine that is emulated in software and that
`executes intermediate code in the instruction set of that machine”
`
`c. Court’s Construction: “software that emulates a physical machine”
`
`The parties agree that a “virtual machine” is a software program that emulates the
`
`
`
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`functions of a physical machine. Shopify seeks the additional limitation that the machine
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`“executes intermediate code in the instruction set of that machine.”
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`
`
`There is little intrinsic evidence on the meaning of this term. The specification refers to a
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`“virtual machine” only once, identifying a “Java Virtual Machine” in the descriptions of
`
`drawings. (’397 patent at 35:34-38). According to Shopify, a Java virtual machine (JVM) uses
`
`Java bytecode, which is a type of intermediate code. (D.I. 117 at 10). That may be so. But the
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`“Java Virtual Machine” mentioned in the specification is clearly just one possible embodiment,
`
`not the invention itself. It is improper to “import a feature from a preferred embodiment into the
`
`claims.” Acumed LLC v. Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007).
`
`
`
`In X.Commerce, Inc. v. Express Mobile, Inc., the court rejected the similar argument that
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`this claim term is limited to “compiled code.” WL 10704439, at *3 (N.D. Cal. Sept. 12, 2018).
`
`The court concluded that although “the specification was drafted to explain the invention in the
`
`context of the JVM, the then-dominant virtual machine in the particular technological context, . .
`
`. [i]t simply does not follow . . . that the patent claims are limited to virtual machines that execute
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`4
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`IPR2021-01146 Page 00004
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`compiled code.” I agree, and I see no reason that “executes intermediate code in the instruction
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`set of that machine” should be any different. I therefore reject Shopify’s proposed construction.
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`I construe this term as “software that emulates a physical machine” because I believe it
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`will be easier for a jury to readily understand than “abstract machine emulated in software,”
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`which could lead to unnecessary confusion around the word “abstract.” Express Mobile’s
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`counsel indicated at oral argument that Express Mobile had no objection to this construction.
`
`(D.I. 128 at 12:18-23).
`
`2.
`
`“run time engine” (’397 and ’168 patents)
`
`a. Express Mobile’s Construction: “file that is executed at runtime that facilitates the
`retrieval of information from the database and generates commands to display a web
`page or website”
`
`b. Shopify’s Construction: “file that is executed at runtime that reads information from
`the database and generates virtual machine commands to display a web page or
`website”
`
`c. Court’s Construction: “file that is executed at runtime that reads information from the
`database and generates commands to display a web page or website”
`
`The parties have two disputes about this term. First, they dispute whether the run time file
`
`“reads” information or merely “facilitates the retrieval of information.” Second, they dispute
`
`whether the run time file generates “virtual machine commands” or just “commands.”
`
`As to the first dispute, the specification repeatedly describes the run time engine as
`
`“read[ing]” information from the database. (See ’397 patent at 5:52-57, 45:44-57). Admittedly,
`
`these references appear in descriptions of embodiments, but there is no intrinsic support for
`
`Express Mobile’s argument that the run time engine “facilitates the retrieval of information.”
`
`That wording is also needlessly vague. See X.Commerce, 2018 WL 10704439, at *3 (finding that
`
`5
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`IPR2021-01146 Page 00005
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`this same proposed construction “introduces unwarranted ambiguity not grounded in anything
`
`expressly described in the specification.”).
`
`
`
`As to the second dispute, there is less intrinsic support for Shopify’s proposal that the file
`
`must generate “virtual machine commands.” Shopify notes that during prosecution, the applicant
`
`mentioned “virtual machine commands” while distinguishing the invention from the prior art.
`
`That feature, however, was not presented as a distinction. Rather, the applicant was arguing the
`
`invention was novel because it disclosed a run time engine and a separate database of user
`
`settings. (D.I. 69-2, Ex. 10 at 5 (“In contrast, the claimed invention generates web pages using
`
`two features: a run time engine and a database of user settings.”)). Thus, I find that the file
`
`executes “commands,” not necessarily “virtual machine commands.”
`
`3.
`
`“Application” (’755, ’287, and ’044 patents)
`
`a. Express Mobile’s Construction: “device-independent software code containing
`instructions for a device”
`
`b. Shopify’s Construction: “device-independent code that is generated by the authoring
`tool, is partitioned from the Player, and is interpreted or executed by the Player”
`
`c. Court’s Construction: “device-independent code which contains instructions for a
`device and which is separate from the Player”
`
`The parties agree (and the specification is explicit) that the “Application” is “device-
`
`
`
`independent” software code. Shopify argues the Application must also be: 1) “generated by the
`
`authoring tool;” 2) “partitioned from the Player;” and 3) “interpreted or executed by the Player.”
`
`
`
`For the first issue, Shopify points to a statement by the applicant during prosecution that
`
`the authoring tool generates the Application and the Player. (D.I. 117 at 68). That statement,
`
`however, is explaining a drawing from the application and is not clearly limiting the invention
`
`itself. (D.I. 69-2, Ex.19 at 8-9). The specification itself is vague on how the Application is
`
`6
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`generated. Claim 26 of the ’755 patent depends on claim 23 and adds only the limitation that the
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`Application and Player are “generated using an authoring tool.” This narrower claim suggests a
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`broader reading of “Application” in claim 23 because otherwise the claims would be identical.
`
`While claim differentiation “is not a hard and fast rule,” Hill-Rom Servs., Inc. v. Stryker Corp.,
`
`755 F.3d 1367, 1374 (Fed. Cir. 2014), there is no contrary evidence in the specification here that
`
`would override that presumption. Therefore, I decline to require that the Application be
`
`“generated by the authoring tool.”
`
`
`
`Second, Shopify argues that the Application is “partitioned from the Player.” During
`
`prosecution, the applicant touted separation of the Application and Player as a novel innovation
`
`over the prior art. (See D.I. 69-2, Ex. 18 at 12, 13) (“[T]he claimed invention, in contrast,
`
`operates by partitioning the code required for functionality into device-independent code and
`
`device-dependent code.”) (D.I. 69-2, Ex. 19 at 8) (“[P]artitioning code for accessing web
`
`services into an Application and a Player has an advantage for maintaining websites.”) (D.I. 69-
`
`2, Ex. 15 at 11) (acknowledging that a prior art reference, “McCain,” discloses an authoring tool
`
`that provides code stored in a database, but arguing that “[t]here is no teaching or suggestion in
`
`McCain of an authoring tool that provides two separate codes.”). Glenn E. Weadock, Express
`
`Mobile’s expert, acknowledged during his deposition that “creating a separate application and
`
`player—having two different things, having an application and a player that are distinct from
`
`each other has certain benefits.” (D.I. 120-1, Ex. 3 at 175:24-176:16).
`
`
`
`Express Mobile does not dispute that the Application must be “separate” or “distinct”
`
`from the Player. (D.I. 117 at 72; D.I. 128 at 72:5-7). Rather, Express Mobile’s concern is that the
`
`word “partitioned” could artificially limit the term. Express Mobile points to an embodiment in
`
`7
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`the specification in which the Player and Application are integrated on a single server (although
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`they presumably remain separate sets of code). (’755 patent at 7:30-3). Shopify does not argue
`
`there must be some physical barrier between the Application and the Player. Although the
`
`applicant used the word “partitioned” during prosecution, I will not adopt that word here to avoid
`
`a construction that could be read as excluding an embodiment described in the specification. See
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`MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007) (“[A] claim
`
`interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever,
`
`correct.”). Given the applicant’s clear statements during prosecution though, I decide the
`
`Application must be “separate” from the Player.
`
`
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`Finally, Shopify argues the Application is “interpreted or executed by the Player.” In
`
`support of this construction, Shopify cites the specification’s disclosure that the “Player
`
`interprets or executes the Application” (’755 patent at 6:6-7) and the applicant’s statement during
`
`prosecution that “the Player interprets the Application” (D.I. 69-2, Ex. 15 at 9). Both these
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`statements, however, appear to be describing embodiments, not the invention itself. The
`
`specification statement is in a section labeled, “Mode(s) for Carrying Out the Invention,” which
`
`describes various drawings. For the prosecution statement, the previous paragraph begins, “The
`
`Present Application includes embodiments . . . ,” which suggests the subsequent statement about
`
`the Player interpreting the Application is a description of one of those embodiments featured in
`
`the application.
`
`
`
`Express Mobile proposes that the Application “contain[s] instructions for a device.”
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`Given that Shopify’s briefing does not address this point, and it seems to make sense, I will
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`include it in the construction.
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`4.
`
`“Player” (’755, ’287, and ’044 patents)
`
`a. Express Mobile’s Construction: “Software code that facilitates the execution of an
`application on a device”
`
`b. Shopify’s Construction: “an executable file of device-specific instructions for the
`processor of the device that is generated by the authoring tool, is partitioned from the
`Application, and interprets or executes the Application”
`
`c. Court’s Construction: “device-specific code which contains instructions for a device
`and which is separate from the Application”
`
`Based on the same intrinsic evidence discussed above for the “Application,” I conclude
`
`the “Player” is not necessarily “generated by the authoring tool,” nor must it “interpret[] or
`
`execute[] the Application.” And for the same reasons as above, the Player is “separate” from the
`
`Application.
`
`Shopify argues the Player is a file of “device-specific” instructions. The parties agree (as
`
`discussed above) that the “Application” is “device-independent” code, but they disagree on
`
`whether the corresponding “Player” is “device-specific” code. The Abstract discloses, “Devices
`
`are provided with Players specific to each device and Applications that are device independent.”
`
`(’755 patent at Abstract). The Federal Circuit has explained that “[w]hile a statement in the
`
`Abstract may operate as a clear expression of manifest exclusion,” courts should be cautious not
`
`to give the Abstract too much weight in claim construction because “[t]his section of a patent
`
`speaks generally to the invention and, much like the syllabus of an opinion, sets forth general
`
`information about the document’s content.” Innova/Pure Water, Inc. v. Safari Water Filtration
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`Sys., Inc., 381 F.3d 1111, 1121 (Fed. Cir. 2004).
`
`The specification discloses numerous embodiments that feature a Player with device-
`
`specific instructions. See ’755 patent at 5:8-24; 23:43-46; 33:12-15; 33:26-28. Shopify also
`
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`points to the applicant’s statements during prosecution referring to a device-specific player.
`
`These statements are worth quoting at length:
`
`The present invention relates to the field of displaying information on a device,
`such as a mobile device, over a network. One embodiment is an authoring tool
`that generates files which together provide content over a network. The files
`include a Player (sometimes referred to herein as a “first code”) specific to each
`device (that is, the code is “device-dependent”) and an Application (sometimes
`referred to herein as a “second code”) that is device-independent. The
`device-dependent Player is activated by a web browser or other software or
`through a signal to device by a special telephone numbers (sic), such as a short
`code (see, for example, Paragraph [0049]).
`
`In one aspect of the present invention, the device-independent Application and
`device-dependent Player are both provided to a device, such as a smartphone.
`Both codes are executed or interpreted on the same device, which communicates
`with a web service.
`
`
`(D.I. 69-2, Ex. 19 at 8).
`
`
`The present patent application consistently use the words “Application” (with a
`capital A) and “Player” (with a capital P) to refer to code that is provided to
`devices for accessing web services, where an Application is device-dependent
`code and a Player is device-dependent code.
`
`
`(Id. at 9-10, n.1) (emphasis in original). Notwithstanding the obvious typo in this
`
`sentence, its intended meaning is clear.
`
`
`Since this code [described in prior art, McCain] operates on devices to access the
`web, and includes user interfaces for such devices, the code is by necessity
`device-dependent, and is not equivalent to the claimed “Application.” More
`specifically, since the code is generated to run on a specific device, such as server
`34, McCain is teaching the generation of a Player.
`
`(Id. at 12).
`
`
`There is no teaching or suggestion in McCain of an authoring tool that provides
`two separate codes: a device-dependent code (such as the claimed Player) and
`device-independent code (such as the claimed Application).
`
`
`(D.I. 69-2, Ex. 15 at 11)
`
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`IPR2021-01146 Page 00010
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`There is no teaching or suggestion in McCain of using such a solution database in
`an authoring tool to generate both a device-dependent and device-dependent
`codes, as claimed.
`
`(Id. at 12). Notwithstanding the obvious typo in this sentence, its intended meaning is
`
`clear.
`
`Express Mobile responds that the specification explicitly discloses an embodiment where
`
`the Player is not device-specific:
`
`In one embodiment, one of the codes is a Player, which is a thin client
`architecture that operates in a language that manages resources efficiently, is
`extensible, supports a robust application model, and has no device specific
`dependencies.
`
`(’755 patent at 1:55-67).
`
`In its briefing, Shopify argues this reference to “no” device specific dependencies must
`
`have been a typo. (D.I. 117 at 76). Given the frequency of typos on this point in the prosecution
`
`history (as in the two excerpts quoted above), this argument has a plausible basis in fact. At oral
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`argument, Shopify’s counsel offered another explanation: “no device specific dependencies” is
`
`referring to “language,” not to the “Player.” (D.I. 128 at 113:9-17). Presumably, this argument is
`
`based on the quoted sentence being able to be read as either:
`
`In one embodiment, one of the codes is a Player, which is a thin client
`architecture that (1) operates in a language that manages resources efficiently, (2)
`is extensible, (3) supports a robust application model, and (4) has no device
`specific dependencies.
`
`Or,
`
`In one embodiment, one of the codes is a Player, which is a thin client
`architecture that operates in a language that (1) manages resources efficiently, (2)
`is extensible, (3) supports a robust application model, and (4) has no device
`specific dependencies.
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`The argument has grammatical appeal. But whether a POSITA would understand it one way or
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`the other for non-grammatical reasons has not been fleshed out in the briefing or at oral
`
`argument.
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`
`
`This debate over whether the Player is necessarily device-specific implicates a limited
`
`number of the asserted claims. Claims 1, 12, and 27 of the ’755 patent and claim 1 of the ’287
`
`patent all explicitly define the “Player” as “device-dependent code” (which I understand to mean
`
`the same thing as “device-specific” code). Claims 1 and 15 of the ’044 patent, however, do not
`
`define the “player” (with a lower-case “p” in those claims). The ’044 patent shares the
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`specification of the ’755 and ’287 patents, and it was prosecuted as a continuation of the ’755
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`patent application.
`
`
`
`I conclude that a person of ordinary skill in the art, looking at this intrinsic evidence as a
`
`whole, would understand the Player to be “device-specific.” The single reference to “no device
`
`specific dependencies” is not enough to override the repeated references in the prosecution
`
`history and the specification to the “device-specific” or “device-dependent” Player. During
`
`prosecution, the applicant represented the “device-independent” Application and the “device-
`
`dependent” Player as central to the invention. In particular, the applicant cited these features as
`
`the key innovations over the prior art of McCain. (See D.I. 69-2, Ex. 15 at 11, 12). “[P]rosecution
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`history may be critical in interpreting disputed claim terms because it contains the complete
`
`record of all the proceedings before the Patent and Trademark Office, including any express
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`representations made by the applicant regarding the scope of the claims.” Sunovion Pharm., Inc.
`
`v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013).
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`The Federal Circuit has held that even when “prosecution history statements do not rise
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`to the level of unmistakable disavowal, they do inform the claim construction. For example, an
`
`applicant’s repeated and consistent remarks during prosecution can define a claim term by
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`demonstrating how the inventor understood the invention.” Personalized Media Commc’ns, LLC
`
`v. Apple Inc., 952 F.3d 1336, 1340 (Fed. Cir. 2020) (cleaned up). Here, the applicant made
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`“repeated and consistent remarks” indicating that the Player was device-specific. A person of
`
`ordinary skill would rely on those remarks over the single arguably ambiguous specification
`
`reference to “no device specific dependencies,” which could be read as referring to “language.”
`
`
`
`Regardless, the prosecution history evidence also meets the higher standard of
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`prosecution history disclaimer. “[A] patentee may limit the meaning of a claim term by making a
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`clear and unmistakable disavowal of scope during prosecution. This may occur, for example,
`
`when the patentee explicitly characterizes an aspect of his invention in a specific manner to
`
`overcome prior art.” Purdue Pharma L.P. v. Endo Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir.
`
`2006). Here, the patentee distinguished the prior art McCain by pointing to the “device-
`
`dependent code (such as the claimed Player) and device-independent code (such as the claimed
`
`Application).” (D.I. 69-2, Ex. 15 at 11). This statement, along with the other consistent
`
`representations to the patent examiner, constitute “clear and unmistakable disavowal” of a
`
`device-independent Player.
`
`
`
`Shopify further argues that the Player must be an “executable file” and that it must
`
`contain “instructions for the processor of the device.” The intrinsic evidence does not support
`
`these limitations. Shopify cites a reference in the specification that the Player code contains
`
`“instructions for the processor,” but this reference is to a single embodiment. (’755 patent at 5:9-
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`12). Similarly, Shopify cites isolated statements in the prosecution history about “executable”
`
`code. (D.I. 69-2, Ex. 18 at 9; Ex. 15 at 10). These references are not the kind of repeated and
`
`consistent remarks that would narrow the definition of the term. According to Express Mobile’s
`
`expert, Glenn E. Weadock, “if (as the patent describes) the player can ‘extend the operating
`
`system,’ it could consist of multiple files called by the operating system, none of which is
`
`executable on its own . . . At most, the specification suggests that the Player contains instructions
`
`that, eventually, are executable.” (D.I. 118-1, Ex. 2 ¶ 106). Thus, I reject these proposed
`
`limitations. As with Application though, I include that the code “contains instructions for a
`
`device” (although not necessarily the processor of the device) because that language does not
`
`appear to be in dispute. (See D.I. 117 at 77) (Express Mobile acknowledging that the Player
`
`contains instructions).
`
`
`
`I understand “device-specific” and “device-dependent” to be interchangeable terms. I
`
`think it might help a jury to use the former rather than the latter. When listening to testimony,
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`“device-specific” is easier to differentiate from “device-independent” than “device-dependent”
`
`is.
`
`5.
`
`“device-dependent code” (’755 and ’287 patents)
`
`a. Express Mobile’s Construction: “code that is aware of device type or device-specific
`functions”
`
`b. Shopify’s Construction: “executable code that differs depending on the device
`platform”
`
`c. Court’s Construction: “code that is specific to the operating system, programming
`language, or platform of a device”
`
`
`
`
`
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`14
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`IPR2021-01146 Page 00014
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`6.
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`“device-independent code” (’755 and ’287 patents)
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`a. Express Mobile’s Construction: No construction necessary
`Alternative: “code that is not aware of or dependent on device type or device-specific
`functions”
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`b. Shopify’s Construction: “code that is the same for every device platform”
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`c. Court’s Construction: “code that is not specific to the operating system, programming
`language, or platform of a device”
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`The claims of the ’755 and ’287 patents explicitly define the Application as “device-
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`
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`independent code” and the Player as “device-dependent” code. Express Mobile suggests that
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`device-dependent code is “aware” of device type or device-specific functions (and consequently,
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`device-independent code is “not aware”). The specification does describe software in one
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`embodiment as being “aware” of device functions. (’755 patent at 34:4-11). I do not think it
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`would be helpful though to have the jury ponder the metaphysical question of whether software
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`is “aware” of anything.
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`
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`The specification at one point defines “device-specific” routines as “codes that are
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`specific to the operating system, programming language, or platform of specific devices.” (Id. at
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`3:58-62). This definition is consistent with how the applicant discussed device-dependent code
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`during prosecution: “If a new device comes on the market, or if it is found that the device-
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`dependent code for a specific device needs an update, a new Player is developed and provided to
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`those specific devices.” (D.I. 69-2, Ex. 19 at 8). This definition is preferable to Shopify’s
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`proposed construction, which adds the unnecessary word “executable” and requires that the code
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`differ based only on the device “platform.” Thus, I construe “device-dependent code” to mean:
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`“code that is specific to the operating system, programming language, or platform of a device”
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`(removing only a redundant “specific” from the specification language).
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`For “device-independent code,” I adopt the inverse of this definition: “code that is not
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`specific to the operating system, programming language, or platform of a device.” Shopify
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`proposes that the code must be “the same for every device platform.” This definition is too
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`narrow because the code could theoretically be “device-independent” while not being the same
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`for all devices. That is, the code could differ based on some other factors that are “independent”
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`of the device platforms.
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`IV.
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`CONCLUSION
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`The Joint Claim Construction Brief (D.I. 117) had twenty-six disputed terms. Before the
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`Markman hearing, I directed that the parties reduce the number of terms that would be argued to
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`no more than ten, and I asked to have them argued in order of importance. (D.I. 126). Despite
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`lengthy argument, only four terms were addressed. (D.I. 128 at 122). I have resolved the four
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`terms. I also resolved two others that were closely related to the ones that were argued. (See
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`D.I. 128 at 124). The ones that have not been resolved will not be resolved unless the parties
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`dispute them at the time of the summary judgment briefing. (See D.I. 126).
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`The parties should submit within five days a proposed order, suitable for submission to a
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`jury, construing the terms as indicated.
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`Entered this 23rd day of June, 2020.
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`_/s/ Richard G. Andrews___
`United States District Judge
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