Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`WAG ACQUISITION, L.L.C.,
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`Plaintiff,
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`vs.
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`GOOGLE LLC and YOUTUBE, INC.,
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`Defendants.
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`Case No.: 6:21-cv-00816-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANTS GOOGLE LLC AND YOUTUBE, LLC’S OPENING
`CLAIM CONSTRUCTION BRIEF
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`Petitioners' Exhibit 1040
`Page 0001
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 2 of 21
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`TABLE OF CONTENTS
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`Page
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`B.
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`C.
`D.
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`INTRODUCTION ............................................................................................................. 1
`OVERVIEW OF THE ASSERTED PATENTS................................................................ 1
`LEGAL STANDARDS ..................................................................................................... 2
`A.
`Claim Construction ................................................................................................ 2
`B.
`Indefiniteness ......................................................................................................... 3
`DISPUTED CLAIM TERMS ............................................................................................ 3
`A.
`“as required to maintain about a predetermined number of media data
`elements” (ʼ594 Patent, cls. 1, 6, 11) ..................................................................... 4
`“a predetermined number of media data elements” (ʼ594 Patent, cls. 1, 6,
`11) .......................................................................................................................... 6
`“the media source” (ʼ594 Patent, cls. 1, 6, 11) ...................................................... 8
`“each sending is at a transmission rate as fast as the data connection
`between the server system and each requesting user system allows” (ʼ824
`Patent, cls. 1, 5, 9; ʼ636 Patent, cls. 1, 5, 9) ........................................................... 8
`“all of the media data elements that are sent by the server system to the
`requesting user systems are sent from the data structure under the control
`of the server system as the media data elements were first stored therein”
`(ʼ824 Patent, cls. 1, 5, 9; ʼ636 Patent, cls. 1, 5, 9) ............................................... 11
`“supplying, at the server system, media data elements representing the
`program” (ʼ824 Patent, cls. 1, 5, 9; ʼ636 Patents, cls. 1, 5, 9) ............................. 14
`CONCLUSION ................................................................................................................ 15
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`E.
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`F.
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`I.
`II.
`III.
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`IV.
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`V.
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`i
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`Petitioners' Exhibit 1040
`Page 0002
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 3 of 21
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`TABLE OF AUTOHRITIES
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`Page
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`Cases
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`Amgen, Inc. v. Chugai Pharm. Co.,
`927 F.2d 1200 (Fed. Cir. 1991)................................................................................................... 4
`
`CUPP Cybersecurity, LLC v. Trend Micro, Inc.,
`No. 3:18-cv-1251-M, 2021 WL 5865393 (Dec. 10, 2021) ......................................................... 9
`
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012)..................................................................................................... 3
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)......................................................................................... 3, 4, 14
`
`Media Rights Techs., Inc. v. Capital One Fin. Corp.,
`800 F.3d 1366 (Fed. Cir. 2015)................................................................................................... 8
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...................................................................................................... 1, 3, 4, 12
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`Network Appliance Inc. v. Sun Microsystems, Inc.,
`No. C-07-060532 EDL, 2008 WL 4193049 (N.D. Cal. Sept. 10, 2008) .................................. 10
`
`Pall Corp. v. Micron Separations, Inc.,
`66 F.3d 1211 (Fed. Cir. 1995)..................................................................................................... 4
`
`Pfizer Inc. v. Mylan Inc.,
`Civ. No. 15-26-SLR, 2016 WL 2641470 (D. Del. May 5, 2016 ................................................ 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................................... 2, 3
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999)................................................................................................... 3
`
`Qcue, Inc. v. Digonex Techs., Inc.,
`No. A-12-CA-484-SS, 2013 WL 4784120 (W.D. Tex. Sept. 5, 2013) ..................................... 10
`
`Sonix Tech. Co. v. Publications Int’l, Ltd.,
`844 F.3d 1370 (Fed. Cir. 2017)................................................................................................... 4
`
`Starhome GmbH v. AT&T Mobility LLC,
`743 F.3d 849 (Fed. Cir. 2014)..................................................................................................... 3
`
`ii
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`Petitioners' Exhibit 1040
`Page 0003
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 4 of 21
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Synthes (USA) v. Smith & Nephew, Inc.,
`547 F. Supp. 2d 436 (E.D. Pa. 2008) .......................................................................................... 4
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`Timecertain, LLC v. Authentidate Holding Corp.,
`No. 8:05-CV-1559-T-23EAJ, 2006 WL 3804830 (M.D. Fla. Dec. 22, 2006) ......................... 10
`
`Twin Rivers Eng’g, Inc. v. Fieldpiece Instruments, Inc.,
`No. 2:16-cv-04502-MLH, 2018 WL 1583382 (C.D. Cal. March 1, 2018) ................................ 5
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)................................................................................................. 2, 3
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`Statutes
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`35 U.S.C. § 112 ............................................................................................................................... 3
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`-iii-
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`Petitioners' Exhibit 1040
`Page 0004
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 5 of 21
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`I.
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`INTRODUCTION
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`Defendants Google LLC and YouTube, LLC (collectively, “Google”) respectfully submit
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`three claim terms in need of construction and three claim terms that are indefinite. For the three
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`terms to be construed, Google’s proposed constructions both (i) address the parties’ disputes over
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`the scope of the claims, and (ii) are in accordance with the plain language of the claims, intrinsic
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`record, and extrinsic evidence consistent with the intrinsic record. In contrast, Plaintiff WAG
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`Acquisition L.L.C.’s (“Plaintiff”) “plain meaning” constructions fail to offer any resolution to the
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`parties’ disputes over the scope of the claims. Accordingly, the Court should issue constructions
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`other than plain meaning and, for the reasons below, adopt Google’s proposed constructions.
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`Google has further identified three claim terms—“about a predetermined number,” “as fast
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`as the data connection . . . allows,” and “all of the media data elements that are sent by the server
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`system to the requesting user systems are sent from the data structure under the control of the
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`server system as the media data elements were first stored therein”—that render the claims
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`indefinite under the Supreme Court’s Nautilus standard. A main driver behind this standard was
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`that “absent a meaningful definiteness check, [] patent applicants face powerful incentives to inject
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`ambiguity into their claims.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014).
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`Plaintiff is attempting to use these three claim terms to do just that. Indeed, Plaintiff’s “plain
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`meaning” construction for each of these terms does nothing but maintain ambiguity in terms that
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`lack objective boundaries. For this reason, the Court should find these terms and the claims
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`containing them indefinite.
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`II.
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`OVERVIEW OF THE ASSERTED PATENTS
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`U.S. Patent Nos. 9,729,594 (the “ʼ594 Patent”), 9,742,824 (the “ʼ824 Patent”), and
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`9,762,636 (the “ʼ636 Patent”) (collectively the “Asserted Patents”) describe systems and methods
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`1
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`Petitioners' Exhibit 1040
`Page 0005
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 6 of 21
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`for streaming media via the Internet with reduced playback interruptions. All three patents are
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`directly related, share an identical specification, and claim priority to the same provisional
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`application filed on September 12, 2000.
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`The Asserted Patents claim systems and methods to stream audio and/or video media over
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`the Internet. The ’594 Patent claims a device/media player, and associated methods for operating
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`the media player, which receives the streaming media in the form of segmented media data
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`elements from a media source and utilizes a user-side buffer in the form of software or firmware
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`to maintain a predetermined number of media data elements in the user buffer during playback.
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`(’594 Patent, cls. 1, 6, 11.) As was well-known in the art, maintaining a buffer of media data
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`elements allows for reduced interruptions during playback. (Id., 6:59-7:5.)
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`Both the ’824 and ’636 Patents claim the server systems, and the methods associated with
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`the server systems, that provide the streaming media and associated media data elements to the
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`user systems, with the ’636 Patent including streaming media from a live source. (See ’824 Patent,
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`cls. 1, 5, 9; ’636 Patent, cls. 1, 5, 9.) For both patents, the media data elements that are sent to user
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`systems are first stored in a data structure under the control of the server system, and then sent to
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`user systems from that data structure. (Id.) All three patents’ claims recite a “pull” based approach
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`where the server system sends specific media data elements (identified by unique identifiers) to
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`the user system only in response to requests from the user system. (Id.; ʼ594 Patent, cls. 1, 6, 11.)
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`III. LEGAL STANDARDS
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`A.
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`Claim Construction
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`Claim terms are construed by giving words of the claim the meaning they would have to
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`one of ordinary skill in the art “in view” of the intrinsic record consisting of the claims,
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`specification, and file history. Phillips v. AWH Corp., 415 F.3d 1303, 1313-1315 (Fed. Cir. 2005);
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “The starting point
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`2
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`Petitioners' Exhibit 1040
`Page 0006
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 7 of 21
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`for any claim construction must be the claims themselves.” Pitney Bowes, Inc. v. Hewlett-Packard
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`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Once a court has examined the claim language, it may
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`then consider the rest of the intrinsic evidence, beginning with the specification and concluding
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`with the prosecution history. Vitronics Corp, 90 F.3d at 1582. Courts may also consider extrinsic
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`evidence, such as a dictionary definition or expert testimony, that “does not contradict any
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`definition found in or ascertained by a reading of the patent documents.” Starhome GmbH v.
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`AT&T Mobility LLC, 743 F.3d 849, 856 (Fed. Cir. 2014) (quoting Phillips, 415 F.3d at 1322-23.)
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`B.
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`Indefiniteness
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). All claims must satisfy the
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`definiteness standard of 35 U.S.C. § 112. A patent’s claims viewed in light of the specification
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`and prosecution history must inform those skilled in the art about the scope of the invention with
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`reasonable certainty. Nautilus, 572 U.S. at 901, 910-11. “The claims, when read in light of the
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`specification and the prosecution history, must provide objective boundaries for those of skill in
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`the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). That is, a
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`patent does not satisfy the definiteness requirement “merely because a court can ascribe some
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`meaning to a patent’s claims.” Id. at 1370–71 (internal quotation marks and citation omitted).
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`IV. DISPUTED CLAIM TERMS
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`The parties dispute the scope and meaning of the following claim terms.1 Google’s
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`1 During the parties’ two meet-and-confers and in follow-up correspondence, counsel for Google
`repeatedly sought Plaintiff’s positions regarding the interpretations of the terms discussed herein,
`such as “a predetermined number of media data elements,” “each sending is at a transmission rate
`as fast as the data connection . . . allows,” “all of the media data elements that are sent by the server
`system to the requesting user systems are sent from the data structure under the control of the
`server system as the media data elements were first stored therein,” and “supplying, at the server
`system, media data elements representing the program.” (Declaration of Cameron Vanderwall
`(“Vanderwall Decl.”), Ex. A.) Instead of providing its positions as to the scope of the claims or
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`3
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`Petitioners' Exhibit 1040
`Page 0007
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`constructions are well rooted in the intrinsic record.
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`A.
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`“as required to maintain about a predetermined number of media data
`elements” (ʼ594 Patent, cls. 1, 6, 11)
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`Google’s Construction
`Indefinite
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`Plaintiff’s Construction
`Plain and ordinary meaning
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`Nautilus cautions that, while absolute precision is unattainable, the definiteness
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`requirement “mandates clarity.” Nautilus, 572 U.S. at 910. Claims 1, 6, and 11 of the ’594 Patent
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`recite that the claimed media player automatically sends additional requests for media data
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`elements “as required to maintain about a predetermined number of media data elements” in
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`memory. The claim language and intrinsic evidence, however, fail to provide any objective bounds
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`or range for how many data elements are “about a predetermined number.” Interval Licensing,
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`766 F.3d at 1371.
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`While there is no general rule that terms of degree like “about” render claims indefinite,
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`the intrinsic evidence must provide enough certainty to one of skill in the art. Sonix Tech. Co. v.
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`Publications Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017); Pall Corp. v. Micron Separations,
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`Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) (when such a word of approximation is used, the
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`parameter’s “range must be interpreted in its technological and stylistic context”). Where the
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`claims, specification, and extrinsic record fail to provide sufficient guidance as to the numerical
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`range that “about” encompasses, the term has been found indefinite. Amgen, Inc. v. Chugai Pharm.
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`Co., 927 F.2d 1200, 1217-18 (Fed. Cir. 1991) (“about” used in a claim reciting “at least about
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`160,000 IU/AU” was indefinite since it did not apprise as to how much below the 160,000 value
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`was being claimed); Synthes (USA) v. Smith & Nephew, Inc., 547 F. Supp. 2d 436, 454-55 (E.D.
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`any clarity as to the scope of their plain meaning, counsel for Plaintiff refused to engage
`notwithstanding specific inquiries by counsel for Google. (Id.) Accordingly, Google is at a loss
`for what Plaintiff contends to be these terms’ plain and ordinary meaning, as discussed further
`below.
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`4
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`Petitioners' Exhibit 1040
`Page 0008
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`Pa. 2008) (“less than about 2%” was held indefinite since a competitor would not know how much
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`above 2% would qualify as “about 2%”); cf. Pfizer Inc. v. Mylan Inc., Civ. No. 15-26-SLR, 2016
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`WL 2641470, at *2 (D. Del. May 5, 2016) (construing “about” to refer to the standard variability
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`of ± 0.2° 20 as the range of error recognized in the field of the invention). Here, the intrinsic and
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`extrinsic evidence fail to provide any guidepost, let alone an explicit number or numerical range,
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`to interpret what “about a predetermined number of media data elements” comprises. (Declaration
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`of Dan Schonfeld (“Schonfeld Decl.”), ¶¶ 63-64, 68.)
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`The term “about” does not appear in the ʼ594 Patent’s specification. When discussing the
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`“predetermined number of media data elements,” the specification either states “a predetermined
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`number” or “predetermined level” (ʼ594 Patent, 2:50-53, 3:13-15, 6:52-54, 6:59-65, 7:20-30, 11:1-
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`5), “predetermined buffer level” (id., 13:32-35, 13:52-56, 14:16-26, 14:32-38, 14:67-15:5, 15:9-
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`15, 15:22-24, 15:25-27), or mentions “approximately maintain[ing] the predetermined number”
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`(id., 6:65-7:2, 14:38-41, 15:15-18). “Approximately” provides no more clarity than “about” as it
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`too fails to indicate a numerical range of media data elements that must be loaded and maintained
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`in the user buffer and does not provide any context for understanding such a range. Cf. Twin Rivers
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`Eng’g, Inc. v. Fieldpiece Instruments, Inc., No. 2:16-cv-04502-MLH, 2018 WL 1583382, at *4-
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`*6 (C.D. Cal. March 1, 2018) (rejecting patentee’s proposed construction enlarging limitation
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`“allowing a selected IR energy range of approximately 8 to approximately 10 microns to pass” to
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`include IR energy between 8 and 14 microns after reviewing the intrinsic and extrinsic evidence).
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`Further, a person of ordinary skill in the art could not determine how “about a
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`predetermined number of media data elements” is calculated and thus would not understand with
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`any certainty the range “the predetermined number of media data elements” maintained must fall
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`within to meet the claimed limitation. (Schonfeld Decl., ¶ 66.) There are many conditions such
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`5
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`Petitioners' Exhibit 1040
`Page 0009
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`as data connection speeds, network performance, and media player capabilities/specifications that
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`could inform the construction of “about a predetermined number of media data elements,” but
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`without guidance in the intrinsic evidence as to which factors are taken into account or used in any
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`purported calculation, “about” cannot be reasonably estimated. (Id., ¶¶ 62-68.)
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`B.
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`“a predetermined number of media data elements” (ʼ594 Patent, cls. 1, 6, 11)
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`Google’s Construction
`“a specified number of media data elements,
`set prior to the start of playback of the audio or
`video program”
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`Plaintiff’s Construction
`Plain and ordinary meaning
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`Based on the parties’ meet and confer discussion, there appears to be agreement that
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`“predetermined” in the context of the claims—and otherwise—means to be set in advance. (See
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`e.g, Schonfeld Decl., ¶ 70; Vanderwall Decl., Ex. 8 (Webster’s Dictionary of American English ©
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`1997), p. 579 (defining “predetermined” as “to settle in advance: The result was predetermined
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`even before we met.”); Ex. 9 (The Oxford American Dictionary of Current English © 1999), p.
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`620 (defining “predetermined” as “determine or decree beforehand”).) The parties’ lone dispute
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`regarding this claim term arises from the query of when the “number of media data elements” is
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`set. (Vanderwall Decl., Ex. A.) Google’s proposed construction adheres to the intrinsic and
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`extrinsic evidence. Specifically, in the context of the intrinsic record, “a predetermined number
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`of data elements” means “a specified number of media data elements, set prior to the start of
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`playback of the audio or video program.” (Schonfeld Decl., ¶¶ 69-72.) Plaintiff, in contrast, has
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`refused to give “predetermined” any meaning in the context of the claims2–even in light of
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`Google’s direct inquiries regarding what Plaintiff believes to be the point of reference
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`2 Google understands that Plaintiff has provided a position to Amazon.com, Inc. (“Amazon”)
`regarding the meaning of this term during the meet-and-confers held with respect to Civil Action
`No. 6:21-cv-00815-ADA (Plaintiff’s suit against Amazon). Plaintiff has not taken the same
`position in this matter, and instead has opted for silence.
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`6
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`Petitioners' Exhibit 1040
`Page 0010
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 11 of 21
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`(“predetermined as to what”). (Vanderwall Decl., Ex. A.)
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`Google’s construction is supported by both the plain language of the claims and the
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`specification. Claim 1 of the ʼ594 Patent, for example, recites that “as the received media data
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`elements are played, the media player automatically send[s] additional requests for subsequent
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`media data elements for storage in the memory of the media player as required to maintain about
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`a predetermined number of media data elements in the memory of the media player during
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`playing.” (ʼ594 Patent, cl. 1 (emphasis added); see also id., cls. 6, 11.) Accordingly, as the claim
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`language explains how the media player maintains the “predetermined number of media data
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`elements” in the user buffer “during playing,” the “predetermined number of media data elements”
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`would necessarily have to be set prior to playback. (Schonfeld Decl., ¶¶ 69-72.)
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`Likewise, when describing the claimed player and system, the ʼ594 Patent’s specification
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`states:
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`User computer 18 is associated with media player software incorporating user
`buffer 20. The user buffer 20 is provided with means for storing a predetermined
`number of the data elements. User buffer 20 is a conventional computer storage
`mechanism such as a hard disk, or, preferably, an electronic storage arrangement
`such as Random Access Memory (RAM) as suggested by the illustration. A buffer
`manager 22 is also associated with the user computer 18. The buffer manager 22,
`having the form of software or firmware, is provided with means for receiving and
`storing a predetermined number of media data elements which are received
`sequentially by the media player, playing the data out sequentially as audio
`and/or video, and deleting media data elements from the buffer as they are played
`out (or displacing them by newly arrived elements).
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`(ʼ594 Patent, 6:51-65 (emphasis added); see also id., 6:65-7:2, 7:20-30, 15:9-18.) The
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`specification thus also makes clear that the setting of the “predetermined number of media data
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`elements” takes place before playing the data out sequentially. (Schonfeld Decl., ¶¶ 69-72.)
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`7
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`Petitioners' Exhibit 1040
`Page 0011
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 12 of 21
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`C.
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`“the media source” (ʼ594 Patent, cls. 1, 6, 11)
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`Google’s Construction
`“the storage device or live source device from
`which the streaming material originates”
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`Plaintiff’s Construction
`Plain and ordinary meaning
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`Google incorporates by reference Amazon’s arguments from Civil Action No. 6:21-cv-
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`00815-ADA regarding the construction of “the media source” as “the storage device or live source
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`device from which the streaming material originates.”
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`D.
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`“each sending is at a transmission rate as fast as the data connection between
`the server system and each requesting user system allows” (ʼ824 Patent, cls. 1,
`5, 9; ʼ636 Patent, cls. 1, 5, 9)
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`Google’s Construction
`Indefinite
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`Plaintiff’s Construction
`Plain and ordinary meaning
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`The claim limitation “each sending is at a transmission rate as fast as the data connection
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`between the server system and each requesting user system allows” is indefinite in claims 1, 5, and
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`9 of the ’824 Patent and the ’636 Patent, as a person of ordinary skill in the art could understand
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`the limitation as at least requiring “each sending” to be at one of the three following transmission
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`rates: (1) the maximum possible capacity of the data connection, (2) the available bandwidth on a
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`data connection, and/or (3) the permitted bandwidth for uses on a data connection.3 (Schonfeld
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`Decl., ¶¶ 75-81.) The intrinsic evidence does not provide guidance for a person of ordinary skill
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`in the art to discern between these multiple interpretations; hence, the limitation is indefinite. (Id.)
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`In situations where there are multiple meanings, a patent claim may be found indefinite if
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`the claim, when read in light of the specification and the prosecution history, does not provide an
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`objective basis for those of skill in the art to make an informed and confident choice among the
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`contending definitions. Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1371
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`3 Google attempted to discuss this with Plaintiff, providing these three possible interpretations,
`Plaintiff refused to confirm its understanding of the limitation. (Vanderwall Decl., Ex. A.)
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`8
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`Petitioners' Exhibit 1040
`Page 0012
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 13 of 21
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`(Fed. Cir. 2015) (“a claim is indefinite if its language might mean several different things and no
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`informed and confident choice is available among the contending definitions” (internal quotation
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`marks and citation omitted)); CUPP Cybersecurity, LLC v. Trend Micro, Inc., No. 3:18-cv-1251-
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`M, 2021 WL 5865393, at *6-*7 (Dec. 10, 2021) (finding term “file transfer speeds” in limitation
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`“a virtual file interface configured to assist in transferring data at file transfer speeds between the
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`host device and the secure digital security system” indefinite, because the specification did “not
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`provide sufficient guidance of the meaning of transferring data ‘at file transfer speeds’ to give
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`notice to the public of the boundaries between infringing and innocent activity”).
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`The specification here does not provide adequate guidance to inform a person of ordinary
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`skill in the art of a correct interpretation among the three identified above. In fact, the specification
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`provides individual support for each of the three interpretations. (Schonfeld Decl., ¶¶ 75-76.) The
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`specification supports the maximum possible capacity or speed interpretation because it repeatedly
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`states that the media data elements are sent by the server to the user computer “as fast as the data
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`connection between the user and the server will allow.” (See, e.g., ’824 Patent, 14:66-15:1, 15:44-
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`46.) This disclosure does not have any language cabining what it means to send elements “as fast
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`as the data connection . . . will allow.” (Schonfeld Decl., ¶ 76.) For example, a person of ordinary
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`skill could reasonably understand from this language that if the data connection between the user
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`and the server system was at a maximum speed of 56,000 bits per second, the media data elements
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`should be sent at a maximum speed of 56,000 bits per second. (Id.)
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`There is also support in the specification for the alternative construction of this limitation
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`as referring to “the available bandwidth on a data connection.” (Id., ¶¶ 77-79.) As understood by
`
`a person of ordinary skill, a connection between a user computer and a server can be limited by
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`various factors, including the download of multiple files simultaneously. (Id.) In such a scenario,
`
`9
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 14 of 21
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`on the same 56,000 bits per second connection as mentioned above, if the combined download rate
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`of the other files was 36,000 bits per second, when a user connects to a server to stream media, the
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`media data elements could only be sent to the user at a rate equal to the available bandwidth of
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`20,000 bits per second. (Id.) The specification describes a scenario in which a user’s Internet
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`connection has the necessary average bandwidth capacity to allow reception of a program, but the
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`actual delivery rate can still fluctuate above or below the average available bandwidth. (Id.) As a
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`person of skill in the art would know, this fluctuation of available bandwidth can occur based on
`
`the quality of the user’s Internet connection, which in turn depends on various factors including a
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`user’s location, networking hardware specifications, and momentary Internet congestion at various
`
`points along the route over which the user’s data flows.4 (Id.) At least one embodiment in the
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`ʼ824 and ʼ636 Patents addresses these potential fluctuations, and contemplates that the server will
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`send data to the user computer at either the “highest rate that the data connection” will support, or
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`“any lower rate that is a higher than the playback rate.” (’824 Patent, 8:15-24.)
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`Finally, a person of ordinary skill can interpret this limitation to require the transmittal to
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`occur at the permitted bandwidth for use on the data connection.5 (Schonfeld Decl., ¶ 80.) The
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`4 If this limitation were to be construed as allowing a rate equal to the available bandwidth, it
`would be indefinite as it is impossible to accurately determine whether a single media data element
`was sent using the available bandwidth at any given moment. (Schonfeld Decl., ¶¶ 77-79.) This
`is because of how quickly and unpredictably network conditions and available bandwidth
`fluctuate. (Id.) It would thus be impossible to differentiate infringing activity from innocent
`activity.
`5 If this limitation were to be construed as relating to the permitted bandwidth for use on the data
`connection, this limitation would be a tautology, rendering the limitation indefinite. (Schonfeld
`Decl., ¶ 80 (explaining why this construction would render the limitation a tautology).) See, e.g.
`Qcue, Inc. v. Digonex Techs., Inc., No. A-12-CA-484-SS, 2013 WL 4784120, at *4 (W.D. Tex.
`Sept. 5, 2013) (rejecting plaintiff’s construction because it would be a meaningless tautology);
`Timecertain, LLC v. Authentidate Holding Corp., No. 8:05-CV-1559-T-23EAJ, 2006 WL
`3804830, at *4 (M.D. Fla. Dec. 22, 2006) (holding that plaintiff’s urged construction “is [a] mere
`tautology and would render the patent indefinite”); Network Appliance Inc. v. Sun Microsystems,
`Inc., No. C-07-060532 EDL, 2008 WL 4193049, at *35 (N.D. Cal. Sept. 10, 2008) (construing
`
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 15 of 21
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`specification explicitly suggests this meaning when it discloses “the server sends buffered media
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`data to the user ‘as fast as the network connection will permit.’” (’824 Patent, 16:3-9.) Moreover,
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`the specification discloses an embodiment of the claimed invention that sends media data elements
`
`to the user at a rate that matches the “constant fill rate” of the server buffer after the predetermined
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`amount of data stored in the server buffer has been transferred to the user. (Id., 8:25-33.) This
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`indicates that either the server or user system “allows” data to be sent and received at a certain
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`rate, and the transmission rate is not merely based on the available bandwidth or the maximum
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`available capacity. (Schonfeld Decl., ¶ 80.) A person of ordinary skill in the art would also
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`understand that this “allow[ed]” rate can further depend on the service provided by the Internet
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`service provider and any potential throttling protocols it enacts.
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`Since the three interpretations discussed above are each supported by the intrinsic evidence,
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`a person of ordinary skill in the art has no guidance to discern the correct interpretation of the
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`claim language. As a result, this claim limitation is indefinite.
`
`E.
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`“all of the media data elements that are sent by the server system to the
`requesting user systems are sent from the data structure under the control of
`the server system as the media data elements were first stored therein” (ʼ824
`Patent, cls. 1, 5, 9; ʼ636 Patent, cls. 1, 5, 9)
`
`Google’s Construction
`Indefinite
`
`Plaintiff’s Construction
`Plain and ordinary meaning
`
`
`
`Claims 1, 5, and 9 of the ’636 and ’824 Patents describe “stor[ing] the media data elements
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`in a data structure under the control of the server system” and require that “all of the media data
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`elements that are sent by the server system to the requesting user systems are sent from the data
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`structure under the control of the server system as the media data elements were first stored
`
`therein.”
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`claim term in favor of defendant because applying plaintiff’s proposed construction would result
`in “an even more confusing tautology”).
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`11
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`Case 6:21-cv-00816-ADA Document 37 Filed 03/14/22 Page 16 of 21
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`Google asserts that this term is indefinite based on its understanding of Plaintiff’s position
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`on the scope of the claim language from a review of its infringement contentions. That is,
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`Plaintiff’s position