Case 6:21-cv-00663-ADA Document 30 Filed 01/10/22 Page 1 of 34
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`INGENIOSHARE, LLC,
`
`Plaintiff,
`
`v.
`
`EPIC GAMES, INC.,
`
`Defendant.
`
`Civil Action No. 6:21-cv-00663-ADA
`JURY TRIAL DEMANDED
`
`EPIC GAMES INC.’S OPENING CLAIM CONSTRUCTION BRIEF
`
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`Case 6:21-cv-00663-ADA Document 30 Filed 01/10/22 Page 2 of 34
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`
`
`I.
`
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION............................................................................................................. 1
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`OVERVIEW OF THE PATENTS .................................................................................. 1
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`III. RELEVANT LEGAL STANDARDS .............................................................................. 3
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`IV. CONSTRUCTION OF THE DISPUTED TERMS ....................................................... 6
`
`A.
`
`Terms Appearing First in U.S. Pat. No. 8,744,407 ................................................. 6
`
`1.
`
`2.
`
`“process” ..................................................................................................... 6
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`“availability” ............................................................................................... 9
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`B.
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`Terms First Appearing in U.S. Pat. No. 10,142,810 ............................................. 12
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`1.
`
`2.
`
`3.
`
`4.
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`“text [messaging/message]” ...................................................................... 12
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`“indication” ............................................................................................... 16
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`“multimedia messaging” ........................................................................... 18
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`“group messaging” .................................................................................... 19
`
`a.
`
`b.
`
`It is unclear whether “group messaging” includes or
`excludes other communication options ......................................... 19
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`It is unclear how “group messaging” works with respect to
`a first user sending a message to a second user ............................ 20
`
`C.
`
`Terms First Appearing in U.S. Pat. No. 10,492,038 ............................................. 22
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`1.
`
`2.
`
`“predetermined message” ......................................................................... 22
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`“to provide an option” ............................................................................... 24
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`V.
`
`CONCLUSION ............................................................................................................... 28
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`i
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed Cir. 2012).....................................................................................10, 13, 22
`
`Abbott Labs. v. Novopharm Ltd.,
`323 F.3d 1324 (Fed. Cir. 2003)............................................................................................4, 17
`
`Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,
`262 F.3d 1258 (Fed. Cir. 2001)................................................................................4, 10, 13, 22
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006)........................................................................................5, 24, 25
`
`Comcast v. Rovi,
`IPR2019-00555, Paper 37, (Final Written Decision) (P.T.A.B. July 21, 2020) ......................27
`
`Digit. Retail Apps, Inc. v. H-E-B, LP,
`No. 6-19-CV-00167-ADA, 2020 WL 376664 (W.D. Tex. Jan. 23, 2020) ..............5, 12, 15, 16
`
`Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp.,
`93 F.3d 1572 (Fed. Cir. 1996)........................................................................................5, 12, 15
`
`Hoechst Celanese Corp. v. BP Chems. Ltd.,
`78 F.3d 1575 (Fed. Cir. 1996).......................................................................................... passim
`
`Indacon, Inc. v. Facebook, Inc.,
`824 F.3d 1352 (Fed. Cir. 2016)..................................................................................................4
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)..........................................................................................5, 6, 7
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995)......................................................................................................3
`
`Multiform Desiccants, Inc. v. Medzam, Ltd.,
`133 F.3d 1473 (Fed. Cir. 1998)................................................................................................17
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ......................................................................................................... passim
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)................................................................................3, 11, 15, 18
`
`ii
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`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)........................................................................................ passim
`
`Saint Lawrence Commc’ns, LLC v. ZTE Corp.,
`2016 WL 6275390 (E.D. Tex. Oct. 25, 2016) .........................................................................25
`
`Sci. Inc. v. R.J. Reynolds Tobacco Co.,
`No. CIV.A. AW-01-1504, 2003 WL 25818273 (D. Md. Dec. 4, 2003), report
`and recommendation adopted, No. CIV.A. AW-01-1504, 2004 WL 5683183
`(D. Md. Mar. 31, 2004) ............................................................................................................17
`
`
`Unless otherwise noted, all emphasis is added.
`
`
`
`
`iii
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`I.
`
`INTRODUCTION
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`IngenioShare alleges Epic Games infringes sixty-nine claims from four patents relating to
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`systems, methods, and apparatuses for managing electronic communications. The asserted claims
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`contain a jumble of technical jargon mixed with confusing terms. It is clear from IngenioShare’s
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`infringement contentions and Epic Games’ invalidity contentions that a dispute exists about the
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`meaning (to the extent one is discernible) of certain claim terms. IngenioShare tries to side-step
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`claim construction by advocating “plain and ordinary meaning” for all the terms at issue, without
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`any elucidation of what it believes that meaning is. But where, as here, the parties have a dispute,
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`a “plain and ordinary meaning” construction should be rejected because it would effectively submit
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`legal questions to the jury. The court, not the jury, must resolve these disputes.
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`The Court should adopt Epic Games’ proposals, finding terms that are insolubly ambiguous
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`to be indefinite, and applying the proposed constructions for the remaining terms, which
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`constructions are grounded in the claim language, patent specifications, and extrinsic evidence.
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`II.
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`OVERVIEW OF THE PATENTS
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`IngenioShare alleges Epic Games infringes U.S. Patent Nos. 8,744,407 (the “’407 Patent”);
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`10,142,810 (the “’810 Patent”); 10,492,038 (the “’038 Patent”); 10,708,727 (the “’727 Patent”)
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`(the “Asserted Patents”). The claims in the Asserted Patents overlap significantly and share largely
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`identical specifications and figures. See generally, ’407 Patent; ’810 Patent; ’038 Patent; ’727
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`Patent (attached as Exs. J–M). Each Asserted Patent derives from the same provisional application
`
`(U.S. Provisional Patent Application No. 60/689,686) and has the same priority date of April 27,
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`2005.
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`The Asserted Patents’ claims are all directed
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`to managing person-to-person
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`communications from multiple devices such as “desk phones, fax, cell phones, electronic mails,
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`1
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`and instant messages.” See ’407 Patent, 1:34–37; ’810 Patent, 1:50–53; ’038 Patent, 1:59–62; ’727
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`Patent, 1:64–67. Specifically, the Asserted Patents disclose methods and systems of managing
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`communications by transmitting them via a “network-based portal,” and allowing the intended
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`recipients of communications to pick and choose which communications they actually receive.
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`See ’407 Patent, 3:19–21; ’810 Patent, 1:67–2:13; ’038 Patent, 4:10–14; ’727 Patent, 4:1–5. To
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`this end, the Asserted Patents describe a “person” (sometimes referred to as a “first user”)
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`attempting to send a message to a “user” (sometimes referred to as a “second user”). See, e.g.,
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`’407 Patent, 1:49–50 (“A person tries to electronically convey a message to the user.”); ’810
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`Patent, 2:24–25, cls. 1, 11, 19; ’038 Patent, 2:32–33, cls. 7, 38, 46; ’727 Patent, Abstract, 2:14–15,
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`cl. 1. The first user is provided with a number of communication options (sometimes referred to
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`as “communication modes” or “modes of communication”) including text messaging and voice
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`communications. See, e.g., ’407 Patent, cls. 53, 56; ’810 Patent, cls. 1, 11, 19; ’038 Patent, cls. 7,
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`38, 46; ’727 Patent, cl. 1.
`
`The Asserted Patents’ allegedly inventive aspect relates to communication features beyond
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`the first user’s ability to send a message to a second user. For example, a second user can
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`automatically block communications from a first user (see ’407 Patent, 3:54–57; ’810 Patent, 4:49–
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`52; ’038 Patent, 4:58–61; ’727 Patent, 4:39–42), and/or respond with a predetermined message.
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`See ’810 Patent, Figs. 8, 9 (outlining predetermined audio and text messages to respond to
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`incoming communications); ’038 Patent, Figs. 8, 9 (same); ’727 Patent, Figs. 8, 9 (same).
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`Additionally, the second user can set a status indicating whether he or she is busy, resting, or
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`available to communicate with a first user. See ’810 Patent, 6:8–9, Fig. 4; ’038 Patent, 6:19–20,
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`Fig. 4; ’727 Patent, 5:66–67, Fig. 4. Further, an indication about a message may provide
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`information about the message, such as the “voice, tone, pace, accent, and/or mood” of the
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`2
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`message. See, e.g., ’810 Patent, 18:27–34; ’038 Patent, 18:37–41; ’727 Patent, 18:20–27.
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`Moreover, even when the second user receives a message from the first user, each user’s contact
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`information (e.g., phone number or email address) is not provided to the other user by virtue of the
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`message being received. See ’407 Patent, 2:8–15, 4:27–37, cl. 53; ’810 Patent, 2:50–57, 5:22–32,
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`cls. 1, 11, 19; ’038 Patent, 2:58–65, 5:32–43, cls. 7, 38, 46; ’727 Patent, 2:40–47, 5:12–23, cl. 1.
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`In short, the alleged invention claimed by the Asserted Patents allows a first user to attempt sending
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`a message to a second user, while providing other communications features.
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`III. RELEVANT LEGAL STANDARDS
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`“An infringement analysis entails two steps. The first step is determining the meaning and
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`scope of the patent claims asserted to be infringed. The second step is comparing the properly
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`construed claims to the device accused of infringing.” Markman v. Westview Instruments, Inc., 52
`
`F.3d 967, 976 (Fed. Cir. 1995) (citation omitted). The first step, claim construction, is a question
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`of law that relies primarily on intrinsic evidence, including the claim language, the specification,
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`and the prosecution history, to determine the scope of disputed claims. See Phillips v. AWH Corp.,
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`415 F.3d 1303, 1321 (Fed. Cir. 2005).
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`There are several instances where a term must be construed beyond its plain and ordinary
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`meaning. Construction is necessary “when a term has more than one ‘ordinary’ meaning or when
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`reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute,” in which case the
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`plain and ordinary meaning “may be inadequate.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
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`Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Indeed, because claim construction “is a question of
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`law that must be decided by the court,” where the parties dispute the scope of a claim term,
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`adopting a “plain and ordinary meaning” construction would improperly “submit[] a legal question
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`to the jury.” See id. at 1360. Construction is also necessary where the patentee, “acting as his or
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`her own lexicographer, has clearly set forth an explicit definition of the term different from its
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`ordinary meaning.” Phillips, 415 F.3d at 1319. A patentee may explicitly define a term using by
`
`using a parenthetical phrase. See Abbott Labs. v. Novopharm Ltd., 323 F.3d 1324, 1327, 1330
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`(Fed. Cir. 2003) (construing “solid surfactant” in accordance with ensuing parenthetical phrase).
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`Similarly, a claim term should be construed where “it is apparent from the patent and prosecution
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`history that the inventor used the term with a different meaning” from its plain and ordinary
`
`meaning. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996).
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`Construction is likewise required where a term has no plain and ordinary meaning, in which case
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`the term “cannot be construed broader than the disclosure in the specification.” Indacon, Inc. v.
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`Facebook, Inc., 824 F.3d 1352, 1357 (Fed. Cir. 2016).
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`In cases where construction is required, “the patent’s specification and prosecution history
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`must be consulted[.]” Phillips, 415 F.3d at 1319. “[T]he specification is always highly relevant
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`to the claim construction analysis. Usually it is dispositive; it is the single best guide to the
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`meaning of a disputed term.” Id. at 1315 (internal quotation marks omitted). Indeed, “[t]he
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`construction that stays true to the claim language and most naturally aligns with the patent’s
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`description of the invention will be, in the end, the correct construction.” Id. at 1316 (citation
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`omitted). “The inventor’s words that are used to describe the invention—the inventor’s
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`lexicography—must be understood and interpreted by the court as they would be understood and
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`interpreted by a person in that field of technology.” Id. at 1477. Additionally, “when a patentee
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`uses a claim term throughout the entire patent specification, in a manner consistent with only a
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`single meaning, he has defined that term ‘by implication.’” Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001) (citation omitted); see id. at 1273
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`(“[T]he patentees defined the term ‘mode’ by implication, through the term’s consistent use
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`throughout the [] specification.”).
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`When construing claim terms, “claims are interpreted with an eye toward giving effect to
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`all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). To read
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`claim language as superfluous, as opposed to limiting, “would render the scope of the patent
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`ambiguous, leaving examiners and the public to guess about which claim language the drafter
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`deems necessary to his claimed invention . . . .” Id. Similarly, as this Court has recognized,
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`“[w]hen an applicant uses different terms in a claim it is permissible to infer that he intended his
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`choice of different terms to reflect a differentiation in the meaning of those terms.” Digit. Retail
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`Apps, Inc. v. H-E-B, LP, No. 6-19-CV-00167-ADA, 2020 WL 376664, at *8 (W.D. Tex. Jan. 23,
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`2020) (“Clearly, the terms ‘verifying’ and ‘spot-checking’ are distinct terms that are not
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`interchangeable.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579
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`(Fed. Cir. 1996) (“If the terms ‘pusher assembly’ and ‘pusher bar’ described a single element, one
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`would expect the claim to consistently refer to this element as either a “pusher bar” or a “pusher
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`assembly,” but not both[.]”).
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`“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
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`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those
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`skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572
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`U.S. 898, 901 (2014). “Even if a claim term’s definition can be reduced to words, the claim is still
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`indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully
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`precise claim scope.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`IV. CONSTRUCTION OF THE DISPUTED TERMS
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`A.
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`Terms Appearing First in U.S. Pat. No. 8,744,4071
`1.
`
`“process”
`
`Patents and
`Claims2
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`’407 Patent:
`Claims 53, 56
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`Claim Term
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`Epic Games’ Proposed
`Construction
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`IngenioShare’s Proposed
`Construction
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`“process”
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`Indefinite
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`Plain and ordinary meaning
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`Construction of the term “process” is necessary because a POSITA would not have
`
`understood the scope of the claimed “process” with reasonable certainty. See Nautilus, 572 U.S.
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`at 901.
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`First, the independent claims of the ’407 Patent fail to define “process” in a way that would
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`help a POSITA discern “meaningfully precise claim scope.” See Interval Licensing, 766 F.3d at
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`1371 (holding that a term is indefinite if a POSITA would not have understood the term with
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`meaningfully precise claim scope). For example, claim 53 recites “[a] server comprising: at least
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`one computing device . . . wherein at least one computing device is configured to . . . set a process
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`for the message using one or more rules.” ’407 Patent, cl. 53; see also id., cls. 1, 8, 24, 39 (similar
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`disclosures). This recitation would not have helped a POSITA understand the scope of the term
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`“process,” as it provides no information regarding the steps of the process. The independent claims
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`merely state that the process is “set . . . using one or more rules,” is “for the message,” and may
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`1 Epic Games presents terms to be construed in the order provided in the Court’s Nov. 17, 2021
`Standing Order.
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`2 The listed claims include independent and dependent claims that expressly recite the disputed
`claim term. Epic Games’ proposed constructions additionally apply to all claims (regardless of
`whether they recite the disputed term) that depend on such claims. Epic Games’ proposed
`constructions apply to each element of the asserted claims, independent or dependent, using the
`same or similar language as the terms and phrases proposed for construction.
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`optionally include “transmitting the message.” See, e.g., id., cl. 53 (“wherein even if the process
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`includes transmitting the message to the second device . . . .”). These recitations do nothing to
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`explain what the process is, much less what it means for a process to be “for the message” or for
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`one or more (unidentified) rules to be used to “set” the process. A POSITA reading these claims
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`would not understand, for instance, what the steps of the process are, what the result of the process
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`is, or what the “one or more rules” are. At best, these claims indicate that either the process or the
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`rules are “based on at least a status associated with the user and an access priority associated with
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`the person.” E.g., id. (grammatically ambiguous). But the claims do not describe how the “status”
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`and “access priority” affect the process. Thus, a POSITA would have had no reasonable certainty
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`as to the scope of the term “process” in light of the independent claims. Wicker Decl. ¶ 32.
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`Second, the dependent claims that refer to a “process” do not clarify the scope of this term.
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`Several of the dependent claims recite the same or similar language from the independent claims.
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`See ’407 Patent, cls. 7, 23, 38. The other dependent claims that include the term “process” merely
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`add limitations to the claimed process without providing guidance on what that term (as used by
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`the independent claims) entails. The dependent claims indicate that the process may, for example:
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`• Depend on an urgency level of the message. See id., cls. 3, 9, 25, 40, 55.
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`• Depend on a mode of communication of the message. See id., cls. 10, 26, 56.
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`• Cause an additional message to be sent. See id., cls. 15–17, 31, 34, 36, 45, 46, 48.
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`• Set an appointment between the first and second user. See id., cls. 22, 37, 51.
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`Importantly, none of these examples explains the steps or rules of the independently claimed
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`“process.” Rather, they merely indicate that “process” as used in the independent claims does not
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`encompass the above examples. See Phillips, 415 F.3d at 1314–15 (“[T]he presence of a dependent
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`claim that adds a particular limitation gives rise to a presumption that the limitation in question is
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`not present in the independent claim.”); Wicker Decl. ¶¶ 33–34.
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`Dependent claim 19 further illustrates this point. This claim requires that the process
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`“determin[es] whether the message should be delivered to the user based on at least one attribute
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`of the message,” and either “deliver[s] the message” or “declin[es] to deliver the message.” ’407
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`Patent, cl. 19; see also id., cls. 30, 44. As noted above, this dependent claim indicates that the
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`scope of the independently claimed “process” does not include making the determination described
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`in claim 19. See Phillips, 415 F.3d at 1314–15. But it also does not explain how the process of
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`claim 19 makes this determination. For instance, the claim does not describe what rules (if any)
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`are consulted, what the “at least one attribute of the message” is, how the “attribute” relates to the
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`rules (if any), and how the “attribute” affects the determination. See id. This claim (and the other
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`dependent claims) therefore provide no guidance regarding the scope of the independently claimed
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`“process.” Wicker Decl. ¶ 34.
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`Third, the specification provides no assistance. The summary of the invention simply
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`parrots the unhelpful claim language: “[i]n one embodiment . . . a process is set to manage the
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`message using one or more rules[.]” ’407 Patent, 1:50–56. It does not provide any clarification
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`of the process’s operation, stating only that the “process can depend on the mode of communication
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`of the message” and that the “process allows the user to receive the message.” Id., 1:64–65, 2:8–
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`9. But other than these cursory statements, the specification, like the claim language, does not
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`clarify what the steps of the process are, what the result of the process is, or what the “one or more
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`rules” are. See generally id.; Interval Licensing, 766 F.3d at 1371 (holding that even if a term can
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`be defined, it is indefinite if a POSITA would not have understood the term with meaningfully
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`precise claim scope).
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`Fourth, dictionary definitions confirm that a POSITA would have needed to understand
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`the steps of a process to understand its scope. In the computing context, dictionaries indicate that
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`a “process” comprises several steps. See Ex. A (Collins English Dictionary (2005)) at 1292
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`(“computing to perform mathematical and logical operations on (data) according to programmed
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`instructions in order to obtain the required information); Ex. C (Microsoft Computer Dictionary
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`(2002)) at 423 (“[a] program or part of a program; a coherent sequence of steps undertaken by a
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`program.”); Ex. D (Newton’s Telecom Dictionary (2005)) at 672 (“[a]n operating system object
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`that consists of an executable program, a set of virtual memory addresses, and one or more
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`threads. When a program runs, a process is created.”). Thus, a POSITA would have needed to
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`understand a process’s series of steps in order understand the scope of the process. See Wicker
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`Decl. ¶ 36.
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`Because the term “process” has undefined claim scope, the term is indefinite. See Nautilus,
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`572 U.S. at 910.
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`2.
`
`“availability”
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`Patents and Claims
`
`Claim Term
`
`’407 Patent: Claims 53, 54
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`“availability”
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`’810 Patent: Claims 1, 11, 19
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`’038 Patent: Claims 7, 38, 46
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`’727 Patent: Claim 15
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`Epic Games’
`Proposed
`Construction
`
`“willingness to
`communicate”
`
`IngenioShare’s
`Proposed
`Construction
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`Plain and ordinary
`meaning
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`Construction of the term “availability” is necessary because the patentee used the specific
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`meaning of that term in the field of communications as a “willingness to communicate.” See
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`9
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`Case 6:21-cv-00663-ADA Document 30 Filed 01/10/22 Page 14 of 34
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`Phillips, 415 F.3d at 1319; Hoechst Celanese, 78 F.3d at 1578. This is in contrast to a user’s
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`online/offline presence. In the field of network-based communications, a user’s “presence” refers
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`to whether his or her electronic device is switched on and connected to a network. See Wicker
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`Decl. ¶ 40. For example, if a user turns her electronic device on and logs in to a chat platform, but
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`then sets her status to “Do Not Disturb” (thereby preventing others from reaching her), she is
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`“present” on the network but not “available” to receive messages. See id. Based on its
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`infringement contentions, however, IngenioShare appears to contend that a user’s “availability” is
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`the same as a user’s presence. See, e.g., Ex. G3 (Plaintiff’s Preliminary Infringement Contentions
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`(excerpted)) at 11 (citing only online/offline status in support of “availability” with respect to the
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`’727 Patent), 18–19, 22–27 (same with respect to the ’038 Patent), 31–34 (same with respect to
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`the ’810 Patent), 37–40 (same with respect to the ’407 Patent). Because the parties have a dispute,
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`IngenioShare’s “plain and ordinary meaning” proposal should be rejected and the Court should
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`construe the term as “willingness to communicate,” which is rooted in the specification and
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`supported by extrinsic evidence.
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`First, the Asserted Patents’ specifications make clear that, when they use the term
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`“availability,” they are referring to the second user’s willingness to communicate, and not whether
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`the second user is online or offline. Specifically, the Asserted Patents indicate in Figure 4
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`(common to all four patents) that “Available” is a user-defined status, which can be selected from
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`other statuses such as “Important meeting,” “Ordinary meeting,” “Sleeping,” “Resting,” and “User
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`defined.” See ’407 Patent, 5:10–11 (“The user can define a number of status[es], as shown in
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`FIG. 4.”), Fig. 4; ’810 Patent, 6:8–9, Fig. 4; ’038 Patent, 6:19–20, Fig. 4; ’727 Patent, 5:66–67,
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`3 Because IngenioShare used non-consecutive page numbering in its Preliminary Infringement
`Contentions, Epic Games’ citations to these excerpted contentions are to the page number of the
`PDF.
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`Fig. 4. These availability indicators are set by the second user to allow receipt of certain
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`communications and to filter out unwanted communications. See ’407 Patent, 3:31–33 (describing
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`users using these availability indicators to “determine who can reach them at what conditions”);
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`’810 Patent, 3:47–58, 4:25–27; ’038 Patent, 3:65–67, 4:33–36; ’727 Patent, 3:46–48, 4:14–17. For
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`example, “if the user is having his yearly review meeting with his boss,” he could change his status
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`to “Important meeting,” which would allow him to “avoid [a] call from his grandchild[.]” See
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`’407 Patent, Fig. 4, 2:61–63; ’810 Patent, Fig. 4, 3:53–55; ’038 Patent, Fig. 4, 3:62–64; ’727 Patent,
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`Fig. 4, 3:43–45. As used consistently throughout the Asserted Patents’ specifications, a second
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`user’s status of “Available” indicates his/her willingness to receive certain communications. See
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`Bell Atl., 262 F.3d at 1271 (“[W]hen a patentee uses a claim term throughout the entire patent
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`specification, in a manner consistent with only a single meaning, he has defined that term ‘by
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`implication.’”); In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1149–50 (Fed Cir. 2012)
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`(construing term in view of specification’s usage where specification “repeatedly, consistently,
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`and exclusively” described the term in a certain way).
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`Second, a POSITA would have understood from contemporaneous inventors in the field
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`of electronic communications that a second user’s “availability” refers to the second user’s
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`willingness to communicate. See Wicker Decl. ¶ 43. This is explained in U.S. Patent Application
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`No. 2002/0116461 [hereinafter “Diacakis”], which teaches an Internet-based communications
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`system. There, the term “availability” is expressly defined as “the willingness of an individual
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`who is present on one or more communications networks to be reached by one or more persons.”
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`Ex. H (Diacakis), [0027]. By contrast, Diacakis defines the term “presence” as “the ability of an
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`individual to access a particular communications network.” Id. at [0026]. Thus, “if a person is
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`near a landline or wireless telephone and has the intention or willingness to answer the phone
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`11
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`when a particular person calls, the person is not only present but available on the telephone
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`network.” Id. at [0027].
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`A determination that “availability” has its “plain and ordinary” meaning would be
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`inadequate to resolve the parties’ dispute (see O2 Micro, 521 F.3d at 1361), and the Court should
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`construe “availability” as “willingness to communicate.”
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`B.
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`Terms First Appearing in U.S. Pat. No. 10,142,810
`1.
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`“text [messaging/message]”
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`Patents and
`Claims
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`Claim Term
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`Epic Games’ Proposed
`Construction
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`’810 Patent:
`Claims 1, 11, 19
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`’038 Patent:
`Claims 35, 41
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`’727 Patent:
`Claim 10
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`“text messaging”
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`“SMS messaging”
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`“text message”
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`“SMS message”
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`“text message”
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`“SMS message”
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`IngenioShare’s
`Proposed
`Construction
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`Plain and ordinary
`meaning
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`Construction of the terms “text messaging” and “text message” is necessary because the
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`patentee did not use the term in a broad sense to refer to any and every kind of text-based
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`communication. See Phillips, 415 F.3d at 1319; Hoechst Celanese, 78 F.3d at 1578. The patentee
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`used the broader term “text communication” in other Asserted Patents, and used “text messaging”
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`in dependent claims to narrow the scope of text communications. In addition, the patentee
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`consistently used the term “text messaging” to refer to SMS (“Short Message Service”) messaging,
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`which is a standardized way mobile phones send and receive text communications over a wireless
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`network. Wicker Decl. ¶¶ 23–24, 46. Thus, the term “text messaging” should be given the
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`construction “SMS messaging.”
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`12
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`Case 6:21-cv-00663-ADA Document 30 Filed 01/10/22 Page 17 of 34
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`First, based on the claim language itself, the term “text messaging” cannot refer to every
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`type of “text communication.” In fact, the ’038 and ’727 Patents use the term “text
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`communication” broadly to refer to text-based communications, of which text (SMS) messaging
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`is one example. For instance, the ’727 Patent recites “text communication” in independent claim 1
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`and narrows this scope to “text message” in dependent claim 10. See ’727 Patent, cls. 1, 10.
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`Similarly, the ’038 Patent recites “text communication” in independent claims 7, 38, and 46 and
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`narrows this scope to “text message” in dependent claims 13, 14, 17, 20, 25–27, 35, 41, and 68–
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`70. ’038 Patent, cls. 7, 13, 14, 17, 20, 25–27, 35, 38, 41, 46, 68–70. An applicant’s choice to use
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`two different terms in his claims indicates his intention that such terms have differen