Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`WAG ACQUISITION, L.L.C.,
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., and
`AMAZON.COM SERVICES LLC,
`
`Defendants.
`
`Civil Action No. 6:21-cv-00815-ADA
`
`OPENING CLAIM CONSTRUCTION BRIEF OF AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., AND AMAZON.COM SERVICES LLC
`
`CLERK, U.S. DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`
`BY: ________________________________
`
`FILED
`
`DEPUTY
`
`March 11, 2022
`
`BW
`
`Amazon / WAG Acquisition
`Exhibit 1008
`Page 1
`
`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 2 of 20
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...............................................................................................................1
`
`THE ASSERTED PATENTS ..............................................................................................1
`
`III.
`
`THE DISPUTED CLAIM TERMS AND PHRASES .........................................................3
`
`A.
`
`B.
`
`C.
`
`D.
`
`“the media source” ...................................................................................................3
`
`“playback rate” .........................................................................................................6
`
`“data rate” ................................................................................................................8
`
`“as required to maintain about a predetermined number of media data
`elements”................................................................................................................11
`
`IV.
`
`CONCLUSION ..................................................................................................................13
`
`
`
`i
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 2
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 3 of 20
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
`732 F.2d 1572 (Fed. Cir. 1984)................................................................................................10
`
`Amgen, Inc. v. Chugai Pharm. Co.,
`927 F.2d 1200 (Fed. Cir. 1991)................................................................................................12
`
`Bio-Rad Labs., Inc. v. Int’l Trade Comm’n,
`998 F.3d 1320 (Fed. Cir. 2021)..................................................................................................5
`
`Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`IPR2015-01036, Paper 17 (Oct. 20, 2016) ................................................................................8
`
`Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`IPR2015-01036, Paper 8 (Oct. 23, 2015) ..............................................................................7, 8
`
`Elkay Mfg. Co. v. EBCO Mfg. Co.,
`192 F.3d 973 (Fed. Cir. 1999)....................................................................................................8
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc.,
`815 F.3d 1314 (Fed. Cir. 2016)..................................................................................................5
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006)..................................................................................................9
`
`Impulse Tech. Ltd. v. Microsoft Corp.,
`665 F. App’x 872 (Fed. Cir. 2016) ......................................................................................5, 10
`
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016)..................................................................................................9
`
`MySpace, Inc. v. GraphOn Corp.,
`672 F.3d 1250 (Fed. Cir. 2012)..................................................................................................9
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) ...........................................................................................................11, 12
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................1
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................................................7
`
`Tech. Patents LLC v. T-Mobile (UK) Ltd.,
`700 F.3d 482 (Fed. Cir. 2012)..................................................................................................10
`
`ii
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 3
`
`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 4 of 20
`
`TABLE OF AUTHORITIES
`(CONTINUED)
`
`Page(s)
`
`V-Formation, Inc. v. Benetton Grp. SpA,
`401 F.3d 1307 (Fed. Cir. 2005)..............................................................................................7, 8
`
`Wastow Enters., LLC v. Truckmovers.com, Inc.,
`855 F. App’x 748 (Fed. Cir. 2021) ............................................................................................9
`
`OTHER AUTHORITIES
`
`American Heritage Dictionary (3d ed. 1996) ................................................................................13
`
`Concise Oxford Dictionary (9th ed. 1995) ....................................................................................13
`
`Harry Newton, Newton’s Telecom Dictionary (14th ed. 1998) ......................................................8
`
`Brad Hansen, The Dictionary of Computing & Digital Media (1999) ............................................9
`
`Webster’s Third New International Dictionary (1993) ..................................................................13
`
`
`
`iii
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 4
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 5 of 20
`
`
`
`Table of Exhibits
`
`2
`
`3
`4
`
`Exhibit Description
`1
`Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`IPR2015-01036, Paper 8 (Oct. 23, 2015)
`Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`IPR2015-01036, Paper 17 (Oct. 20, 2016)
`Harry Newton, Newton’s Telecom Dictionary (14th ed. 1998) (excerpt)
`Brad Hansen, The Dictionary of Computing & Digital Media (1999) (ex-
`cerpt)
`The Concise Oxford Dictionary (9th ed. 1995) (excerpt)
`5
`The American Heritage Dictionary (3d ed. 1996) (excerpt)
`6
`Webster’s Third New International Dictionary (1993) (excerpt)
`7
`Webster’s Dictionary of American English (1997) (excerpt)
`8
`The Oxford American Dictionary of Current English (1999) (excerpt)
`9
`10 WAG’s Proposed Claim Constructions (Feb. 18, 2022)
`11
`U.S. Patent No. 8,364,839, titled “Streaming Media Delivery System”
`12 WAG’s Disclosure of Extrinsic Evidence (Feb. 25, 2022)
`
`iv
`
`Amazon / WAG Acquisition
`Exhibit 1008
`Page 5
`
`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 6 of 20
`
`
`
`I.
`
`INTRODUCTION
`Pursuant to the Court’s Scheduling Order (Dkt. 35), Amazon.com, Inc., Amazon Web Ser-
`
`vices, Inc., and Amazon.com Services LLC (collectively, “Amazon”) submit their Opening Claim
`
`Construction Brief addressing the disputed terms of U.S. Patent Nos. 9,729,594 (the “’594 pa-
`
`tent”), 9,742,824 (the “’824 patent”), and 9,762,636 (the “’636 patent”) (collectively, the “asserted
`
`patents”).1
`
`The parties dispute constructions of four terms. While Amazon’s constructions are rooted
`
`in both the claim language and the specification, and capture the meaning of the terms as they
`
`would be understood by one of skill in the art at the time of the patents, WAG offers no construc-
`
`tions at all. Instead, it offers unarticulated plain and ordinary meanings that it intends to later
`
`stretch to cover what the patentee did not invent. Because any plain and ordinary meaning con-
`
`struction of the disputed terms will result in a battle of the experts on claim construction at trial,
`
`the Court should construe the terms now rather than allow WAG to prolong this case by attempting
`
`to argue positions directly contrary to the specification and the claim language cloaked as “plain
`
`and ordinary meanings.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362
`
`(Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding the scope of a claim
`
`term, it is the court’s duty to resolve it.”).
`
`II.
`
`THE ASSERTED PATENTS
`The asserted patents are related. They share an identical specification, list the same inven-
`
`tor, and are identically titled “Streaming Media Delivery System.”2 (’594 patent; ’824 patent; ’636
`
`patent; see Declaration of Dr. Dan Schonfeld (“Schonfeld Decl.”) ¶ 25.) As the title suggests, the
`
`patents are generally directed to streaming media (e.g., audio or video) over the Internet.
`
`
`1 The asserted patents are filed at Dkt. 1-1 (’824 patent), 1-2 (’594 patent), and 1-3 (’636 patent).
`2 For convenience, all specification citations herein are to the ’594 patent, but identical disclosures
`appear in the ’824 and ’636 patents.
`
`1
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 6
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 7 of 20
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`
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`(Schonfeld Decl. ¶ 26.) Streaming systems were in use before the patents. The specification
`
`acknowledges this. (’594 patent at 1:63-2:33; Schonfeld Decl. ¶ 27.) It claims, however, that these
`
`prior art systems sent data over the Internet at the same rate as the media was to be played to the
`
`user at his or her computer. (’594 patent at 2:57-3:4; Schonfeld Decl. ¶¶ 28-29.) Thus, any Internet
`
`connection slowdowns or drops would interrupt the data transfer, in turn disrupting the streaming
`
`at the user’s computer. (’594 patent at 2:34-40; Schonfeld Decl. ¶ 28.) Prior art streaming systems
`
`avoided these disruptions by using buffers—memory for temporarily storing data—at the users’
`
`computers to pre-buffer (store) received media data that can be played even if the Internet connec-
`
`tion is disrupted. (’594 patent at 2:41-63, 3:1-4; Schonfeld Decl. ¶ 28.) One can think of this
`
`buffered media data as a reserve to use in a time of need. According to the specification, however,
`
`because buffer levels in the existing streaming systems could not be increased while the media was
`
`playing at the user’s computer, certain (longer) Internet connection issues would deplete the buffer
`
`and interrupt media playing despite data buffering. (’594 patent at 3:5-15, 3:31-41; Schonfeld
`
`Decl. ¶ 29.)
`
`To attempt to solve this perceived problem, the specification describes adding a server
`
`buffer. (’594 patent at 14:62-67; Schonfeld Decl. ¶ 30.) The server buffer stores sequential seg-
`
`ments of the media that the server receives from a media source. (’594 patent at 14:62-15:8;
`
`Schonfeld Decl. ¶¶ 31-33; see also ’594 patent at 5:33-45, 6:42-44.) The specification describes
`
`two separate embodiments for transferring the data elements from the server buffer to the user’s
`
`computer. The two embodiments use conventional “push” and “pull” paradigms. The first em-
`
`bodiment uses the “server-push” paradigm, in which the server itself initiates sending of the media
`
`data elements to the user. (’594 patent at 9:46-61, 10:45-49; Schonfeld Decl. ¶ 34.) The second
`
`embodiment uses the “client-pull” paradigm, in which the server sends the data elements to the
`
`user only in response to a request from the user’s computer, i.e., the client. (’594 patent at 14:42-
`
`2
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 7
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 8 of 20
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`
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`15:18; Schonfeld Decl. ¶¶ 34-36.)
`
`In the client-pull embodiment, which is the focus of the claims of the asserted patents, the
`
`data elements in the server buffer are numbered serially, and the user computer requests each data
`
`element sequentially by its serial number. (’594 patent at 14:42-60; Schonfeld Decl. ¶¶ 34-35.) In
`
`response, the server sends the requested media data elements from its buffer “more rapidly than
`
`they are played out by the user system” using “a rate faster than the playback rate, which may be
`
`the highest rate that the data connection between the server and the user computer will support.”
`
`(’594 patent at 13:35-38, 8:7-20; see also ’594 patent at 9:62-66, 14:53-56; Schonfeld Decl. ¶ 35.)
`
`As in conventional streaming systems, the user’s computer has a buffer that stores “a predeter-
`
`mined number of media data elements” that it deletes from the buffer as it plays them to the user.
`
`(’594 patent at 15:9-15; Schonfeld Decl. ¶ 36; see ’594 patent at 6:51-58.) The user computer
`
`keeps a record of the serial number of the last data element received from the server, so that it can
`
`request the next data element. (’594 patent at 14:45-60; Schonfeld Decl. ¶ 36.)
`
`III. THE DISPUTED CLAIM TERMS AND PHRASES
`A.
`
`“the media source”
`
`Term
`“the media source”
`
`’594 patent, claims 1, 6, 11
`
`Amazon’s Construction
`the storage device or live source
`device from which the stream-
`ing material originates
`
`WAG’s Construction3
`Plain and ordinary meaning
`
`Amazon’s construction of “media source” correctly interprets the term as the device from
`
`which the media originates, i.e., the source of the media data. WAG does not dispute that the
`
`media source may be the storage device or live source device from which streaming material orig-
`
`inates. But it maintains that the term should not be limited to the original source of the media,
`
`because the term also includes intermediate network servers over which data elements may pass
`
`3 WAG’s proposed constructions are attached as Exhibit 10 to the Declaration of Saina S. Shami-
`lov (“Shamilov Decl.”), filed concurrently herewith.
`
`3
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 8
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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 9 of 20
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`
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`on their way to the user’s computer. WAG’s interpretation is wrong because the patentee explic-
`
`itly distinguished the media source from such servers. (’594 patent at 12:45-67, claims 1, 6, 11;
`
`Schonfeld Decl. ¶¶ 44-45.)
`
`The specification explains that the user computer may request and receive media data ele-
`
`ments from a media source, or from a server that is not the media source. (’594 patent at 12:4-14,
`
`12:45-62; Schonfeld Decl. ¶ 44; see also Schonfeld Decl. ¶ 32.) According to the specification,
`
`the media source is a device that stores media files or provides a live media stream that is broadcast
`
`in real time. (’594 patent at 5:33-42 (“There are two fundamental types of streaming media . . . (i)
`
`material that originates from a source having a realtime nature, such as a radio or TV broadcast,
`
`and (ii) material that originates from a non-real-time source such as from a disk file.”), 6:42-44
`
`(“The media may come from a live source . . . or from a stored file on the server 12, or another
`
`storage device, such as a hard drive.”); Schonfeld Decl. ¶¶ 32, 41-43; see also ’594 patent at 14:8-
`
`15, 14:62-67 (“the server . . . receiv[es] the sequentially numbered media data elements from a
`
`broadcast media source or a file based media source”).) The user’s computer can request media
`
`data from the media source, which transmits the data in response. (’594 patent at 10:49-53, 11:13-
`
`16, 12:4-14.) Alternatively, the user’s computer can request media data from a server that receives
`
`the data from the source and, in turn, transmits the data to the requesting user computer. (Id. at
`
`12:45-62; see Schonfeld Decl. ¶ 44.) The specification provides an example of this alternative
`
`scenario:
`
`In another embodiment , . . . a system might include a source server
`computer co-located in a radio station studio, which transmits to a
`network distribution sever resident in a data center, to which users
`would connect. The source server [i.e., the media source] would fill
`its buffer,
`transfer
`the buffer
`to
`the network distribution
`server . . . , and then the network distribution server would transfer
`its buffer to the user . . . .
`(’594 patent at 12:46-58.) Thus, the specification makes clear that the media source is a specific
`
`4
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 9
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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 10 of 20
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`
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`device that originates the media data, and not simply any server that may have a copy of the data
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`for transport in the network. (Schonfeld Decl. ¶ 44.) The patentee drew the same distinction in
`
`the claims.
`
`The ’594 patent claims require that the request for media data elements is sent to and re-
`
`ceived by the media source. (’594 patent, claim 1, 6, 11.) By contrast, the claims of the ’824 and
`
`’636 patents more generally require that the request is received “at the server system,” which may
`
`or may not be the “media source.” (Compare ’594 patent, claim 1, with ’824 patent, claims 1, 5,
`
`9, and ’636 patent, claims 1, 5, 9; see also ’594 patent, claims 6, 11; Schonfeld Decl. ¶ 45.) WAG
`
`seeks to eliminate this clear and intentional distinction in the claims by expanding “media source”
`
`to be any server, under the guise of its “plain and ordinary meaning.” That is not permitted:
`
`“[i]nventors are masters of their claims, and the words they use to describe and claim their inven-
`
`tion are decisive and binding.” Bio-Rad Labs., Inc. v. Int’l Trade Comm’n, 998 F.3d 1320, 1331
`
`(Fed. Cir. 2021); see also Impulse Tech. Ltd. v. Microsoft Corp., 665 F. App’x 872, 878 (Fed. Cir.
`
`2016) (patentee’s use of two different terms in the specification means they refer to “two separate
`
`concepts”); Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1317,
`
`1321 (Fed. Cir. 2016) (claim terms “mobile” and “portable” did not cover “fixed or stationary
`
`products” because the specification distinguished between “mobile”/”portable” units and
`
`“fixed”/”stationary” units). Nothing in the intrinsic record supports WAG’s attempt to rewrite the
`
`claims. (See Schonfeld Decl. ¶¶ 44-45.) Nor does WAG’s rewrite make linguistic sense. When
`
`a son sends a letter to his mother, that letter may travel through a post office, but the post office is
`
`not the source of the letter; the son is. Because Amazon’s construction is consistent with the in-
`
`trinsic record and WAG’s interpretation cloaked as a “plain and ordinary meaning” is designed to
`
`capture what the inventor did not claim, the Court should adopt Amazon’s construction. (See id.
`
`¶¶ 42-45.)
`
`5
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 10
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 11 of 20
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`
`
`B.
`
`“playback rate”
`
`Term
`“playback rate”
`
`’594 patent, claims 1, 6, 11
`’824 patent, claims 1, 5, 9
`’636 patent, claims 1, 5, 9
`
`Amazon’s Construction
`a rate at which the data is encoded
`for playback to a user
`
`WAG’s Construction
`Plain and ordinary meaning
`
`The asserted claims recite “each media data element comprising a digitally encoded portion
`
`of the audio or video program and having a playback rate” and variations thereof. (’594 patent,
`
`claims 1, 6, 11; see also ’824 patent, claims 1, 5, 9 (“each media data element comprising a digitally
`
`encoded portion of the program and having a playback rate”); ’636 patent, claims 1, 5, 9 (“each
`
`media data element comprising a digitally encoded portion of the program and having a playback
`
`rate”).) Each media data element has a “playback rate” at the time the media data element is
`
`“suppl[ied] at the server system” (’824 patent, claims 1, 5, 9; ’636 patent, claims 1, 5, 9), and at
`
`the time the media player at the user’s computer “send[s] [a] request[]” for the media data element
`
`(’594 patent, claims 1, 6, 11)—i.e., before the media data element is sent to the user. (Schonfeld
`
`Decl. ¶¶ 50-51.) In other words, the “playback rate” is an intrinsic aspect of the media data element
`
`set before any transport. (See id. ¶¶ 48, 50-51.) The specification thus defines the “playback rate”
`
`as “the rate at which [media data] will be played out” to the user: media data “is simply transmitted
`
`from the server to the user at the rate at which it will be played out (the ‘playback rate’).” (’594
`
`patent at 5:60-65 (emphasis added); Schonfeld Decl. ¶ 48.) Thus, a POSITA would have under-
`
`stood that, in the patents, the playback rate is a characteristic of the encoded media elements—“a
`
`rate at which the data is encoded for playback to a user.” (Schonfeld Decl. ¶ 48.) WAG again
`
`offers a non-construction in the form of a “plain and ordinary meaning” so it can later argue the
`
`playback rate can be any rate at which the media data is actually played out to the user and not the
`
`rate at which the media data is intended to be played—directly contrary to the claim language and
`
`6
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 11
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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 12 of 20
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`
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`the specification. (See Schonfeld Decl. ¶¶ 49-52.)
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`The actual rate at which the media is played out to the user is controlled by the user.
`
`(Schonfeld Decl. ¶ 49.) A user could choose to play media data at any rate, for example, by lis-
`
`tening to an audiobook at 1.5x or 2x the intended rate set by the encoder. (Id.) The term “playback
`
`rate” does not and cannot refer to the actual rate at which the media is played out to the user,
`
`because in the claims, each media data element must have the “playback rate” before it is sent to
`
`the user. (’594 patent, claims 1, 6, 11; Schonfeld Decl. ¶¶ 50-51; see also ’594 patent at 5:60-65;
`
`Schonfeld Decl. ¶ 52.) Amazon’s construction is thus correct. See Phillips v. AWH Corp., 415
`
`F.3d 1303, 1314-15 (Fed. Cir. 2005) (en banc) (claims “must be read in view of the specification”
`
`and “the context of the surrounding words of the claim also must be considered in determining the
`
`ordinary and customary meaning of those terms”).
`
`Amazon’s construction is also identical to the construction of “playback rate” that the Pa-
`
`tent Office adopted in an inter partes review of U.S. Patent No. 8,364,839 (the “’839 patent”).
`
`(Shamilov Decl. Ex. 1, Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`
`IPR2015-01036, Paper 8 (Oct. 23, 2015) (“Duodecad Institution Decision”) at 10; see Schonfeld
`
`Decl. ¶ 47.) The ’839 patent is the grandparent of the asserted patents with an identical specifica-
`
`tion. (’594 patent at 1-2; ’824 patent at 1-2; ’636 patent at 1-2 (“Related U.S. Application Data”);
`
`Schonfeld Decl. ¶ 47; see also Shamilov Decl. Ex. 11, ’839 patent.) The Patent Office’s decision
`
`is cited on the face of each asserted patent, rendering the decision intrinsic evidence to be consid-
`
`ered during claim construction in this case. (’594 patent at 8; ’824 patent at 8; ’636 patent at 5);
`
`see V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (finding that
`
`information “cited in a patent or cited in the prosecution history of the patent constitutes intrinsic
`
`evidence” (citation omitted)). The Patent Office construed “playback rate” as “a rate at which the
`
`7
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 12
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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 13 of 20
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`
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`data is encoded for playback to a user,” as Amazon proposes here.4 (Shamilov Decl. Ex. 1, Duo-
`
`decad Institution Decision at 10.) The Patent Office reached its construction based on the defini-
`
`tion in the ’839 patent, which is repeated verbatim in the identical specification of the asserted
`
`patents: “media data . . . is simply transmitted from the server to the user at the rate at which it
`
`will be played out (the ‘playback rate’).” (Id. (emphasis added); Shamilov Decl. Ex. 11, ’839
`
`patent at 5:37-42 (emphasis added); see ’594 patent at 5:60-65.) The Patent Office’s construction,
`
`like Amazon’s, captures the definition in the specification, is consistent with the claim language,
`
`and is thus correct. Elkay Mfg. Co. v. EBCO Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999) (“When
`
`multiple patents derive from the same initial application, the prosecution history regarding a claim
`
`limitation in any patent that has issued applies with equal force to subsequently issued patents that
`
`contain the same claim limitation.”); (see Schonfeld Decl. ¶¶ 47-52).
`
`C.
`
`“data rate”
`
`Term
`
`“data rate”
`
`’594 patent, claims 1, 6, 11
`’824 patent, claims 1, 5, 9
`’636 patent, claims 1, 5, 9
`
`Amazon’s Construction
`the actual rate at which the data
`connection delivers data to the
`[media player / requesting user
`system] at any given time
`
`WAG’s Construction
`Plain and ordinary meaning
`
`Unlike “playback rate,” which is the rate at which the media is encoded for playback, “data
`
`rate” is the actual rate at which the data is delivered to the user’s computer, as dictionaries at the
`
`time of the patents confirm. (Shamilov Decl. Ex. 3, Harry Newton, Newton’s Telecom Dictionary
`
`(14th ed. 1998) at 211-212 (“data rate” is “rate at which a channel carries data,” and “data
`
`rate . . . may be very different (i.e., less) than what the channel is theoretically capable of”);
`
`
`4 In its final written decision, the PTAB adopted its construction of “playback rate” as final.
`(Shamilov Decl. Ex. 2, Duodecad IT Services Luxembourg S.a.r.l v. WAG Acquisition, LLC,
`IPR2015-01036, Paper 17 (Oct. 20, 2016) at 9.) The PTAB’s final written decision is also cited
`on the face of the asserted patents, rendering it intrinsic evidence. (’594 patent at 8; ’824 patent at
`8; ’636 patent at 6); see V-Formation, Inc., 401 F.3d at 1311.
`
`8
`
`Amazon / WAG Acquisition
`Exhibit 1008
`Page 13
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`

`

`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 14 of 20
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`
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`Shamilov Decl. Ex. 4, Brad Hansen, The Dictionary of Computing & Digital Media (1999) at 76
`
`(“data rate” is “[t]he speed at which the data flows”); Schonfeld Decl. ¶ 58.)
`
`Indeed, the claims require that the data connection, over which the user’s computer receives
`
`the media, “has a data rate more rapid than the playback rate” of the media data elements. (’594
`
`patent, claim 1, 6, 11; ’824 patent, claims 1, 5, 9; ’636 patent, claims 1, 5, 9.) The specification
`
`states that “[w]ith the present invention,” the server sends media data to the user “at a higher than
`
`playback rate.” (’594 patent at 9:36-39.) Thus, the claimed “data rate” must be the rate at which
`
`the data connection actually delivers data to the user for the present invention to work. (Schonfeld
`
`Decl. ¶ 54); Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016)
`
`(claim scope is limited by statements in specification describing “the present invention”); Honey-
`
`well Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that “[t]he public
`
`is entitled to take the patentee at his word” when the specification states that “the present inven-
`
`tion” is a fuel filter). “An inventor is entitled to what he has invented, and no more.” MySpace,
`
`Inc. v. GraphOn Corp., 672 F.3d 1250, 1256 (Fed. Cir. 2012). And according to the patents, this
`
`actual data rate is important: sending media data “at a higher than playback rate” is what purport-
`
`edly distinguishes the alleged invention from the prior art. (’594 patent at 13:67-14:4, 5:60-65;
`
`Schonfeld Decl. ¶ 30.) Sending media data at a rate higher than the playback rate allegedly allows
`
`media data to be built up in the user buffer during playing, which purportedly reduces interruptions
`
`in playback on the user’s computer. (’594 patent at 6:13-29, 9:62-66, 10:22-39, 13:66-14:4;
`
`Schonfeld Decl. ¶¶ 30, 57.) In order to achieve this alleged benefit, the claimed “data rate” must
`
`be the rate at which data is actually delivered to the user. (Schonfeld Decl. ¶ 57); Wastow Enters.,
`
`LLC v. Truckmovers.com, Inc., 855 F. App’x 748, 751 (Fed. Cir. 2021) (device claims are limited
`
`to a universal folding boom trailer where “[t]he specification . . . ties the stated benefits of the
`
`invention over prior art to the use of a universal folding boom trailer”).
`
`9
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 14
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`

`

`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 15 of 20
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`
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`In the parties’ conference of counsel, WAG rejected Amazon’s construction and instead
`
`suggested that the “data rate” can be a potential rate at which the data connection could theoreti-
`
`cally deliver data. But the “data rate” in the asserted patents is not a theoretical rate at which the
`
`data connection could deliver data—it is the actual rate at which data is delivered, which reflects
`
`any Internet slowdowns that occur. (’549 patent 3:20-27, 4:40-43; Schonfeld Decl. ¶¶ 55-57.)
`
`Indeed, the patents clearly distinguish between the capacity of an Internet connection and the actual
`
`rate at which data is delivered, which “can fluctuate widely”:
`
`Even if a user’s Internet connection has the requisite average band-
`width capacity to allow reception of the program, the actual rate of
`delivery of data to the user can fluctuate widely above, and more
`particularly, below, this average, as a function of the quality of the
`user’s connectivity at any given time.
`(’594 patent at 5:7-20 (emphasis added); see Schonfeld Decl. ¶¶ 59-60.) The patentee explicitly
`
`distinguished the actual data rate from the theoretical bandwidth of the connection, referring to the
`
`latter as “data rate capabilities of the connection.” (’594 patent at 5:60-65 (emphasis added);
`
`Schonfeld Decl. ¶ 56); Impulse Tech. Ltd., 665 F. App’x at 878 (specification “describes the sensor
`
`viewing area . . . and the ‘defined physical space’ using different terms, thus suggesting that they
`
`are two separate concepts”). The data rate of the connection is the actual rate at which the con-
`
`nection delivers data at any given time, as Amazon’s construction correctly captures. (Schonfeld
`
`Decl. ¶¶ 59-60.) If the data rate were merely a theoretical capability of the data connection, as
`
`WAG intends to argue, the claims would allow the media data elements to be sent at the playback
`
`rate and read on prior art systems that the patents criticize for purportedly causing frequent inter-
`
`ruptions because “the user’s buffer level can never be increased or replenished while it is playing.”
`
`(’594 patent at 3:5-15, 5:60-65; Schonfeld Decl. ¶ 57); Tech. Patents LLC v. T-Mobile (UK) Ltd.,
`
`700 F.3d 482, 493-94 (Fed. Cir. 2012) (affirming district court’s construction where the alternative
`
`construction “would arguably cover the very . . . system that the patent criticized”); ACS Hosp.
`
`10
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`Amazon / WAG Acquisition
`Exhibit 1008
`Page 15
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`

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`Case 6:21-cv-00815-ADA Document 37 Filed 03/11/22 Page 16 of 20
`
`
`
`Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984) (“claims should be so con-
`
`strued, if possible, as to sustain their validity”). There is simply no support in any of the intrinsic
`
`record for WAG’s interpretation of the term. The Court should adopt Amazon’s construction to
`
`prevent WAG from improperly stretching the claims to cover technologies that the inventor did
`
`not conceive.
`
`D.
`
`“as required to maintain about a predetermined number of media data
`elements”
`
`Term
`“as required to maintain
`about a predetermined
`number of media data ele-
`ments”
`
`’594 patent, claims 1, 6, 11
`
`Amazon’s Construction
`Indefinite under § 112, ¶ 2. “A prede-
`termined number of media data ele-
`ments” means “a specified number of
`media data elements, set prior to the
`start of playback of the audio or video
`program.”
`
`WAG’s Construction
`Plain and ordinary mean-
`ing
`
`For this term, WAG yet again proposes a “plain and ordinary meaning” construction. But
`
`plain meaning only confirms the indefiniteness of the language, as the term fails to “afford clear
`
`notice of what is claimed.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014).
`
`The ’594 patent claims require “maintain[ing] about a predetermined number of media data ele-
`
`ments in the memory of the media player.” (’594 patent, claims 1, 6, 11.) The “memory of the
`
`media player” is the user buffer referenced in the specification, and stores media data elements
`
`before they are played out. (Schonfeld Decl. ¶ 68; ’594 patent at 6:51-58, 15:15-18; see Schonfeld
`
`Decl. ¶ 36.) But the plain and ordinary meaning of “about a predetermined number” could en-
`
`compass a range of 1% above or below the “predetermined number” of elements in the buffer, or
`
`5%, 10%, or 50%. (See Schonfeld Decl. ¶¶ 63, 68.) The claims, specification, and prosecution
`
`history are silent on what range of us