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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GoTV Streaming, LLC,
`Patent Owner
`____________________
`
`Case: IPR2023-00757
`U.S. Patent No. 8,989,715
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Filing Date: April 23, 2024
`
`
`
`
`
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...............................................................................1
`
`II. CLAIM CONSTRUCTION ..................................................................1
`
`A. “Customized to Said Application” Should Be Given Its Plain and
`
`Ordinary Meaning ........................................................................2
`B.
`“Application” Should Be Given Its Plain and Ordinary Meaning ........5
`C.
`“Generated in Part From Execution of Said Application” Should Be
`
`Given Its Plain and Ordinary Meaning .......................................... 11
`III. HARIKI IN COMBINATION WITH HARRIS RENDERS OBVIOUS
`
`CLAIMS 1-20 ................................................................................... 14
`
`A1. In the Hariki/Harris System, UI Packages Work in Concert With the
` Web Server’s Content to Properly Display Content on a Mobile Device
`
` ................................................................................................ 14
`A2. The ’715 Patent’s Claims Do Not Require the Claimed Application to
`
`Transmit Compiled Content and, Therefore, Hariki’s Web Browser
`
`Reads on the Claimed “Application”............................................. 18
`A3. The ’715 Patent’s Independent Claims Do Not Require That the
`
`Claimed “Application” Reside Remotely From the Mobile Device and,
`
`Therefore, Hariki’s Web Browser Reads on the Claimed “Application”
` ……………………………………………………………………… 20
`A4. The ’715 Patent’s Independent Claims Do Not Require That the
`
`Claimed “Application” Output Compiled Content and, Therefore,
`
`Hariki’s Web Browser Reads on the Claimed “Application” ............ 20
`B. Hariki’s UI Content Packages Are Applicable to HTML Files Within
`
`the Web Browser........................................................................ 21
`C. Hariki’s Web Server Application Resides With a UI Authoring Tool on
`
`a Server, and a Selected UI Content Package Configures Blocks to
`
`Render the Content on a Mobile Device ........................................ 23
`
`ii
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`D. Harris’ MCF That Generates and Transmits HTML Files Reads on the
`
`Claimed “Layout Solver” Because the ’715 Patent Claims Do Not
`
`Require the “Layout Solver” To Be the “Application”..................... 23
`E. Hariki’s Web Server Application Operates Remotely on a Remote
`
`Server and Serves Web Pages to Mobile Devices ........................... 25
`IV. THERE IS INSUFFICIENT NEXUS BETWEEN PETITIONER’S
`
`COMMERCIAL SUCCESS AND THE CHALLENGED CLAIMS TO
`
`ESTABLISH OBJECTIVE INDICIA OF NONOBVIOUSNESS ............. 25
`
`V. CONCLUSION ................................................................................. 26
`
`
`
`
`
`
`iii
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`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`EXHIBIT LIST
`Description
`U.S. Patent No. 8,989,715 (“’715Patent”)
`
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`Expert Declaration of Ben Bederson (“Bederson”)
`
`Curriculum Vitae of Benjamin B. Bederson, Ph.D.
`
`File History of U.S. Patent No. 8,989,715 (“’715FH”)
`
`(Corrected) File History of U.S. Patent No. 8,989,715
`
`File History of U.S. Patent No. 8,478,245 (“’245FH”)
`
`U.S. Patent Application Publication No. 2007/0150617 (“Hariki”)
`
`U.S. Patent Application Publication No. 2003/0023755 (“Harris”)
`
`U.S. Patent No. 7,447,486 (“Tamura”)
`
`U.S. Patent No. 6,996,627 (“Carden”)
`
`U.S. Patent No. 6,669,564 (“Young”)
`
`U.S. Patent No. 6,732,183 (“Graham”)
`
`U.S. Patent No. 6,507,727 (“Henrick”)
`
`Webpage excerpt from Computer History Museum at
`https://www.computerhistory.org/tdih/april/6/ (last accessed
`March 29, 2023)
`
`https://www.webdesignerdepot.com/2009/05/the-evolution-of-
`cell-phone-design-between-1983-2009/
`
`Excerpts from Dan R. Olsen, Jr., Developing user interfaces
`(1998)
`
`iv
`
`

`

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`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`No.
`
`1016
`
`1017
`
`1018
`
`1019
`
`Description
`Alok Sinha, Client-server computing, in Communications of the
`ACM, 35, 7 (1992)
`
`Tim Berners-Lee, Robert Cailliau, Ari Luotonen, Henrik Frystyk
`Nielsen, and Arthur Secret, The World-Wide Web,
`Communications of the ACM 37, 8 76-82 (August 1994),
`available at http://dx.doi.org/10.1145/179606.179671
`
`Eric Kasten, HTML: A Gentle Introduction, Linux Journal (July
`1995), available at https://www.linuxjournal.com/article/1081
`
`U.S. Patent Application Publication No. 2013/0124961
`(“Linburn ”)
`
`1020
`
`U.S. Patent No. 8,111,326 (“Talwar”)
`
`1021
`
`1022
`
`Docket Control Order, GovTV Streaming, LLC v. Netflix, Inc., No.
`2:22-cv-07556-RGK-SHK, Dkt. 61 (C.D. Cal. Feb. 13, 2023)
`
`Complaint in GovTV Streaming, LLC v. Netflix, Inc., No. 2:22-cv-
`07556-RGK-SHK (C.D. Cal. October 17, 2022)
`
`1023
`
`Webarchive.gov Zenzui
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Memorandum In Opposition To GoTV Streaming, LLC’s Motion
`For Judgment As A Matter Of Law
`
`Declaration of Stephen A. Marshall in support of Petitioner’s
`unopposed motion for pro hac vice admission.
`
`Deposition of Mr. Stuart Lipoff (April 2, 2024) (“Lipoff Dep.”)
`
`Excerpts From Trial Transcript Day 2
`
`Associated, Cambridge Learner’s Dictionary (3rd ed. 2007)
`
`From, Merriam-Webster’s Collegiate Dictionary (11th ed. 2007)
`
`v
`
`

`

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`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`No.
`
`2001
`
`2002
`
`Description
`CAMPBELL-KELLY ET AL., Mainframes to Smartphones: A
`History of the International Computer Industry, Ch. 11 (Harvard
`Univ. Press 2015)
`
`GALAZZO, Timeline from 1G to 5G: A Brief History on Cell
`Phones (Sept. 21, 2020), available at
`https://www.cengn.ca/information-centre/innovation/timeline-
`from-1g-to-5g-a-brief-history-on-cell-phones/
`
`2003
`
`Media Mall – Games & Games – Motorola (March 23, 2006)
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Suite, Definition & Meaning - Merriam-Webster, available at
`https://www.merriam-webster.com/dictionary/suite
`
`U.S. Patent No. 7,380,205 to Bezrukov et al. (filed Oct. 28, 2003)
`TUTENEL ET AL., Rule-Based Layout Solving and Its
`Application to Procedural Interior Generation, Netherlands
`Organization for Scientific Research and the Netherlands ICT
`Research and Innovation Authority (2009)
`KRÖNER, Adaptive Layout of Dynamic Web Pages, Deutsches
`Forschungszentrum fur Künstliche Intelligenz GmH (2000)
`Scheduling Order, GoTV Streaming, LLC v. Netflix, Inc., 2:22-cv-
`07556 (C.D. Cal. issued Feb 14, 2023) (Doc. 62)
`Klausner Decisions re Motions to Stay Pending IPR, Docket
`Navigator (generated June 8, 2023)
`Order Granting Stipulated Stay Pending IPR, Flexstent, LLC v.
`Abbott Labs., No. 5-18-cv-02479 (C.D. Cal. Oct. 18, 2019)
`(Doc.77)
`Order Denying Renewed Stipulated Stay Pending IPR, Shenzhen
`Gooloo E-Commerce Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219
`(C.D. Cal. Jan. 12, 2023) (Doc. 95)
`
`vi
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`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`Description
`Renewed Joint Stipulation to Stay Case Pending Resolution of
`Inter Partes Reviews of ’653 Patent, Shenzhen Gooloo E-
`Commerce Co., Ltd. v. Pilot, Inc., No. 2-22-cv-02219 (C.D. Cal.
`Jan. 11, 2023) (Doc. 94)
`Klausner Time to Trial in Patent Cases, Docket Navigator
`(generated June 8, 2023)
`U.S. District Court—Judicial Caseload Profile for Central
`California from Federal Court Management Statistics–Profiles
`(Mar. 31, 2023)
`Order Denying Netflix’s Motions, including for Invalidity under §
`101, GoTV Streaming, LLC v. Netflix, Inc., 2:22-cv-07556 (C.D.
`Cal. issued May 24, 2023) (Doc. 109)
`Order re Scheduling Conference, GoTV Streaming, LLC v. Netflix,
`Inc., 2:22-cv-07556 (C.D. Cal. issued Feb. 13, 2023) (Doc. 61)
`Excerpts from Redacted and De-designated Corrected Declaration
`of Dr. John Villasenor Regarding Invalidity of U.S. Patent Nos.
`8,989,715; 8,478,245; and 8,103,865, GoTV Streaming, LLC v.
`Netflix, Inc., 2:22-cv-07556 (C.D. Cal. served June 23, 2023)
`Declaration of Joshua S. Wyde regarding authentication of
`exhibits (Aug. 10, 2023)
`Excerpts from Trial Transcript Day 2, GoTV Streaming, LLC v.
`Netflix, Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 18, 2023)
`Excerpts from Trial Transcript Day 3, GoTV Streaming, LLC v.
`Netflix, Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023)
`Defendant Netflix, Inc.’s Notice of Motion and Rule 50(a) Motion
`for Judgment as a Matter of Law, GoTV Streaming, LLC v. Netflix,
`Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023) (Dkt. 389)
`
`No.
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`Declaration of Mr. Stuart Lipoff (“Lipoff”)
`
`vii
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`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`Description
`Generate, Free On-Line Dictionary of Computing, available at
`https://foldoc.org/generate (last updated June 15, 1995)
`Output, TechTerms.com; The Computer Dictionary, available at
`https://techterms.com/definition/output (last updated December
`12, 2006)
`From, Merriam-Webster.com Dictionary, available at
`https://www.merriam-webster.com/dictionary/from (last visited
`December 12, 2023)
`Customized, Merriam-Webster.com Dictionary, available at
`https://www.merriam-webster.com/dictionary/customized (last
`visited Jan. 05, 2024)
`Application-Specific, Wiktionary, available at
`https://en.wiktionary.org/wiki/application-specific (last visited
`Dec. 15, 2023)
`Excerpt from 10-K statement filed by Netflix with the Securities
`and Exchange Commission (Jan. 26, 2023)
`Excerpt from Netflix Women In Tech Event - UI Engineering -
`August 2018, Jessica Berglund, Netflix UI engineer, 22:43–23:02,
`available at https://www.youtube.com/watch?v=YpIGejJiaBo
`Ethan Kao Deposition Designations Video, GoTV Streaming, LLC
`v. Netflix, Inc., No. 2:22-cv-07556 (C.D. Cal. Oct. 19, 2023) (Dkt.
`413-13)
`Deposition of Dr. Benjamin Bederson (Jan. 10, 2024) (“Bederson
`Dep.”)
`Second Declaration of Joshua S. Wyde regarding authentication of
`exhibits (Jan. 26, 2024)
`
`No.
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`Audio Transcription
`
`viii
`
`

`

`
`IPR2023-00757
`IPR2023-00757
`Patent No. 8,989,715
`Patent No. 8,989,715
`
`
`
`No.
`3001
`3001
`
`Exhibit 3004
`
`Exhibit 3003
`Exhibit 3003
`
`Ex. 3001
`Ex. 3001
`
`3002
`3002
`
`Ex. 3002
`Ex. 3002
`
`3003
`3003
`
`3004
`3004
`
`
`
`Exhibit 3004
`
`Description
`
`ix
`1X
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`AUTHORITIES LIST
`
`Cases
`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003) ..........................2
`B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373 (Fed. Cir. 2020).......... 17
`Bumble Trading LLC v. KinectUS LLC, IPR2021-00765, Paper 13 (Oct. 21, 2021)
`........................................................................................................ 10
`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014) ................9
`Interdigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318 (Fed. Cir.
`2012) .................................................................................................8
`Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341 (Fed. Cir. 2009) ....................4
`Los Angeles Biomedical v. Eli Lilly and Co., 849 F.3d 1049 (Fed. Cir. 2017) ........3
`Oracle Corp. v. Crossroads Systems, Inc., IPR2014-01207, Paper 78 (PTAB Jan.
`29, 2016) .......................................................................................... 26
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)......................................7
`Rembrandt Diagnostics, LP v. Alere, Inc., Case No. 2021-1796 (Fed. Cir. Aug. 11,
`2023) ............................................................................................... 16
`Samsung Elecs. Co. v. Smart Mobile Techs. LLC, IPR2022-01248, Paper 13
`(PTAB Jan. 24, 2023). ........................................................................ 10
`Storage Technology Corp. v. Cisco Sys. Inc., 329 F.3d 823, 828 (Fed. Cir. 2003) ..6
`
`
`x
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`LISTING OF CHALLENGED CLAIMS
`
`Claim 1
`
`1[pre]
`
`1[a]
`
`1[b]
`
`1[c]
`
`1[d]
`
`1[e]
`
`1[f]
`
`1[g]
`
`A method of generating content that is renderable by a wireless
`device, said method comprising:
`
`transmitting, to said wireless device, an identification of a custom
`configuration of a plurality of rendering blocks of said wireless
`device,
`
`wherein said custom configuration is associated with an application
`and configures said plurality of rendering blocks to render content
`in a manner customized to said application; and
`
`transmitting, to said wireless device, compiled content comprising
`(i) first compiled content specific to a first page of said application
`and (ii) second compiled content specific to a second page of said
`application,
`
`wherein said compiled content is generated in part from execution
`of said application,
`
`wherein said compiled content comprises render commands
`expressed in a syntax that is generic to said wireless device, and
`
`wherein said custom configuration is applicable to said first and
`second compiled content,
`
`wherein said compiled content and said custom configuration are
`usable by a graphical user interface comprising said plurality of
`rendering blocks to generate renderable content based on said
`compiled content and said custom configuration.
`
`xi
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`

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`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`Claim 2
`
`[2]
`
`Claim 3
`
`[3]
`
`Claim 4
`
`[4]
`
`Claim 5
`
`[5]
`
`Claim 6
`
`[6]
`
`Claim 7
`
`[7]
`
`A method as described in claim 1 wherein said renderable content
`comprises audio content and display content.
`
`A method as described in claim 1 wherein said compiled content is
`partially resultant from said application operating on a remote
`server.
`
`A method as described in claim 1 wherein said compiled content is
`specific to the rendering capabilities of said wireless device.
`
`A method as described in claim 1 wherein each of said plurality of
`rendering blocks operates specific to a wireless device type of said
`wireless device and each is instructed using a syntax that is generic
`to said wireless device type.
`
`A method as described in claim 5 wherein said custom
`configuration comprises a syntax that is generic regarding said
`wireless device type.
`
`A method as described in claim 1 wherein said custom
`configuration comprises configuration information and content
`specific to said application.
`
`xii
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`Claim 8
`
`A method as described in claim 1 wherein said custom
`configuration is one of a plurality of memory-stored custom
`configurations stored by said wireless device, and wherein said
`method further comprises transmitting an identifier that identifies
`said custom configuration.
`
`A non-transitory computer readable medium comprising
`instructions therein that when executed by a processor implement a
`method of generating content that is renderable by a wireless device,
`said method comprising:
`
`transmitting, to said wireless device, an identification of a custom
`configuration of a plurality of rendering blocks of said wireless
`device,
`
`wherein said custom configuration is associated with an application
`and configures said plurality of rendering blocks to render content
`in a manner customized to said application; and
`
`transmitting, to said wireless device, compiled content comprising
`(i) first compiled content specific to a first page of said application
`and (ii) second compiled content specific to a second page of said
`application,
`
`wherein said compiled content is generated in part from execution
`of said application,
`
`wherein said compiled content comprises render commands
`expressed in a syntax that is generic to said wireless device, and
`
`wherein said custom configuration is applicable to said first and
`second compiled content,
`
`[8]
`
`Claim 9
`
`9[pre]
`
`9[a]
`
`9[b]
`
`9[c]
`
`9[d]
`
`9[e]
`
`9[f]
`
`xiii
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`

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`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`9[g]
`
`Claim 10
`
`[10]
`
`Claim 11
`
`[11]
`
`Claim 12
`
`[12]
`
`Claim 13
`
`[13]
`
`Claim 14
`
`[14]
`
`wherein said compiled content and said custom configuration are
`usable by a graphical user interface comprising said plurality of
`rendering blocks to generate renderable content based on said
`compiled content and said custom configuration.
`
`A non-transitory computer readable medium as described in claim 9
`wherein said renderable content comprises audio content and
`display content.
`
`A non-transitory computer readable medium as described in claim 9
`wherein said compiled content is partially resultant from said
`application operating on a remote server.
`
`A non-transitory computer readable medium as described in claim 9
`wherein said compiled content is specific to the rendering
`capabilities of said wireless device.
`
`A non-transitory computer readable medium as described in claim 9
`wherein each of said plurality of rendering blocks operates specific
`to a wireless device type of said wireless device and each is
`instructed using a syntax that is generic to said wireless device type.
`
`A non-transitory computer readable medium as described in claim
`13 wherein said custom configuration comprises a syntax that is
`generic regarding said wireless device type.
`
`xiv
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`Claim 15
`
`[15]
`
`Claim 16
`
`[16]
`
`Claim 17
`
`17[pre]
`
`A non-transitory computer readable medium as described in claim 9
`wherein said custom configuration comprises configuration
`information and content specific to said application.
`
`A non-transitory computer readable medium as described in claim 9
`wherein said method further comprises transmitting an identifier
`that identifies said custom configuration.
`
`A server that is programmed to generate content that is renderable
`by a wireless device, comprising:
`
`17[a]
`
`a library of applications
`
`a library of custom configuration data comprising a custom
`configuration that configures a plurality of rendering blocks of said
`wireless device to render content in a manner customized to an
`application from said library of applications requested by said
`wireless device; and
`
`a layout solver that transmits compiled content to said wireless
`device, said compiled content comprising (i) first compiled content
`specific to a first page of said application and (ii) second compiled
`content specific to a second page of said application,
`
`wherein said compiled content is generated in part from execution
`of said application by said server,
`
`wherein said compiled content comprises render commands
`expressed in a syntax that is generic to said wireless device, and
`
`17[b]
`
`17[c]
`
`17[d]
`
`17[e]
`
`xv
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`

`

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`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`17[f]
`
`17[g]
`
`Claim 18
`
`[18]
`
`Claim 19
`
`[19]
`
`Claim 20
`
`[20]
`
`wherein said custom configuration is applicable to said first and
`second compiled content,
`
`wherein said compiled content and said custom configuration are
`usable by a graphical user interface comprising said plurality of
`rendering blocks to generate renderable content based on said
`compiled content and said custom configuration.
`
`A server as described in claim 17 wherein said renderable content
`comprises audio content and display content.
`
`A server as described in claim 17 wherein said compiled content is
`specific to the rendering capabilities of said wireless device.
`
`A server as described in claim 17 wherein said custom configuration
`comprises configuration information and content specific to said
`application.
`
`xvi
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`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`I.
`
`INTRODUCTION
`
`
`
`Petitioner submits this Reply to Patent Owner’s (“PO”) Response, Paper 21
`
`(“POR”) concerning Claims 1-20 (“challenged claims”) of U.S. Patent No.
`
`8,989,715. PO’s arguments should be rejected and the challenged claims found
`
`unpatentable and cancelled for at least the reasons set forth in the IPR Petition, Paper
`
`2 (“Petition” or “Pet.”) and accompanying exhibits, the Board’s decision granting
`
`institution of the IPR, Paper 11 (“Decision” or “Inst. Dec.”), the deposition
`
`testimony of PO’s expert, Stuart Lipoff, and the additional reasons below.
`
`
`
`As explained below, PO’s arguments with respect to the challenged claims
`
`should be rejected at least because they hinge on unsupportable proposed claim
`
`constructions and because the prior art cited in the Petition reads on the challenged
`
`claims.
`
`II. CLAIM CONSTRUCTION
`
`PO proposes claim constructions for three terms in the POR in an attempt to
`
`narrow the claims without sufficient support. These terms need no construction, and
`
`Petitioner has ascribed their plain and ordinary meaning.
`
`
`
`1
`
`

`

`
`IPR2023-00757
`Patent No. 8,989,715
`
`
`
`A.
`
`“Customized to Said Application” Should Be Given Its Plain and
`Ordinary Meaning
`
`
`
`
`
`Claims 1[b]/9[b]/17[b]
`
`PO provides multiple narrow constructions – “tailored to,” “created for,”
`
`“consciously designed,” and “written for” an application – for the term “customized
`
`to said application” before settling on “created for” as PO’s proposed construction.
`
`POR, 16-17. However, for several reasons, this term needs no construction because
`
`POSITAs can readily understand its plain and ordinary meaning.
`
`
`
`First, POSITAs reading the claim language can readily understand the plain
`
`and ordinary meaning of “customized to said application” from the expressly stated
`
`relationship between the custom configuration and the application. Specifically, the
`
`claims state that the “custom configuration is associated with an application.” It is
`
`this relationship that dictates how the custom configuration is applied to render
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`content in a manner customized to the application. PO tellingly disregards the
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`“associated with” language that precedes and gives meaning to the term “customized
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`to said application.” The Federal Circuit has held that “[w]hile certain terms may be
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`at the center of the claim construction debate, the context of the surrounding words
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`of the claim also must be considered in determining the ordinary and customary
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`meaning of those terms.” ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.
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`Cir. 2003). The specification confirms that no construction is needed for the claim
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`term beyond what is already described in the claims, i.e., “associated with.” ’715
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`Patent, 18:40-42 (“The custom configuration customizes the look and feel of the
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`content displayed on the wireless device from execution of the requested
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`application.”). Furthermore, the plain and ordinary meaning of “associated” is
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`“related to something.” Ex. 1027. Accordingly, the claim limitation only requires
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`that the custom configuration be related to an application and render content
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`consistent with the relationship between the custom configuration and the
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`application.
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`Second, the ’715 Patent does not limit “customized to said application” to
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`“created for” an application. The Federal Circuit has rejected narrow claim
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`construction of a term when the patent failed to sufficiently set out the narrower
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`meaning in the specification. In Los Angeles Biomedical v. Eli Lilly & Co., the patent
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`owner in the case argued two constructions, “constant level” and “steady state,” for
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`“continuous long-term regimen.” 849 F.3d 1049, 1062 (Fed. Cir. 2017). The Court
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`rejected the “steady state” construction because it was not disclosed in the
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`specification and rejected “constant level” because that applicant had not
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`“demonstrated a clear intention to limit the claim scope” by “set[ting] out [a]
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`different meaning in the specification in a manner sufficient to give one of ordinary
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`skill in the art notice of the change from ordinary meaning.” Id. Here, the phrase
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`3
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`“created for” is not used in the ’715 Patent specification. Therefore, as in Los
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`Angeles Biomedical, PO’s narrow claim construction should be rejected in favor of
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`its plain and ordinary meaning.
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`Third, while advocating for their already narrow construction, PO offers
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`additional constructions that further narrow the scope, including “consciously
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`designed for,” “tailored to,” “designed for” an application, and “made with the
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`application in mind.” POR, 16-17. However, “customized to said application”
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`should not be limited to any of these constructions. Kara Tech. Inc. v. Stamps.com
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`Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope
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`of his claims, and we will not limit him to his preferred embodiment or import a
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`limitation from the specification into the claims.”). The POR argues that the custom
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`configuration must correspond to an individual application (id., 17), suggesting a
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`strict one-to-one relationship, but PO cannot negate the language of the claims
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`themselves. The claims do not require that the custom configuration be consciously
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`designed or created exclusively for an application. The patent simply discloses that
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`there is a correspondence between a custom configuration and an application that
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`allows for rendering content on a mobile device. ’715 Patent, 2:52-54; 7:56-59;
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`11:4-6; 18:40-42.
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` Ultimately, the claims plainly state that the rendering blocks are configured to
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`render content for the application to the extent that the custom configuration is
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`“associated with” the application, which defines the relevant relationship between
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`the custom configuration and the application, such that the rendering blocks will be
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`customized. A claim construction is not necessary here because the scope of
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`“customized to said application” is clear from the words of the claim, and those
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`words should not be improperly or unnecessarily limited.
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`“Application” Should Be Given Its Plain and Ordinary Meaning
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`B.
`Claims 1[c]/9[c]/17[c] and 1[d]/9[d]/17[d]
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`PO attempts to construe “application” narrowly as “remote application,” but
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`PO’s arguments fail because PO ignores the claim language, argues contrary to the
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`patent’s written description, and takes Petitioner’s litigation positions out of context.
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`POR, 18-28.
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`As an initial but important matter, PO’s proposed claim construction of
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`“application” as “remote application” fails to construe the term “application” and
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`merely adds a material limitation to it. This is blatantly improper. The Federal
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`Circuit has held that “while proper claim construction requires an examination of the
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`written description and relevant prosecution history to determine the meaning of
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`claim limitations, additional limitations may not be read into the claims.” Storage
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`Tech. Corp. v. Cisco Sys. Inc., 329 F.3d 823, 828, 831 (Fed. Cir. 2003) (emphasis
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`added). PO’s limiting claim construction also fails for several other reasons.
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`First, PO is incorrect that any construction, let alone a limiting construction,
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`is necessary. PO argues in part that the application must be remote in order to
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`transmit compiled content to the mobile device. However, Claims 1 and 9 do not
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`require that an application transmit compiled content to a mobile device. The claims
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`are directed to “transmitting, to said wireless device, compiled content,” which only
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`requires that compiled content be transmitted to a mobile device from some source.
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`In deposition, PO’s expert could not point to any claim language that required the
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`application to transmit compiled content; instead, he stated that the compiled content
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`“needs to be external to the wireless device” and “come from a source side of the
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`information.” Lipoff Dep., 48:20-49:4.
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`There is no claim language that requires the application to transmit the
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`compiled content, which even PO’s expert cannot refute. Furthermore, even if a
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`particular embodiment in the patent discloses a remote application transmitting the
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`compiled content to a mobile device, it would be improper to import that
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`embodiment into the claim. Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
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`875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
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`description may not be read into a claim when the claim language is broader than
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`6
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`the embodiment.”). PO’s position that the “application” must run remotely from the
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`mobile device is precisely what Superguide Corp. bars, namely, reading a narrow
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`embodiment, such as the one disclosed in Fig. 5 of the ’715 Patent, into much
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`broader claim language that only requires “transmitting, to said wireless device,
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`compiled content.” Transmission of compiled content by a server meets this claim
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`limitation under the plain and ordinary meaning, without limitation on where the
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`claimed application is located.
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`
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`Second, claim differentiation further supports Petitioner’s position and PO is
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`incorrect to argue otherwise. “[T]he presence of a dependent claim that adds a
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`particular limitation gives rise to a presumption that the limitation in question is not
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`present in the independent claim.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
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`Cir. 2005). Claims 3 and 11, which depend from independent Claims 1 and 9,
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`respectively, first introduce the limitation that the application resides on a remote
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`server and give rise to the presumption that the application is not required to be
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`remote from the mobile device in Claims 1 and 9. This is confirmed by the two
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`independent claims not even including the terms “server” or “remote.” The
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`embodiment captured by Claim 17 includes a server and states that a layout solver
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`on the server transmits compiled content to the wireless device, but does not disclose
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`where the layout solver is in relation to the application. ’715 Patent, 22:27-28. PO’s
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`expert states that the layout solver transmits the compiled content upon receiving
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`some input from a library of applications but does not say that the actual application
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`transmits the compiled content. See Lipoff Dep., 77:9-78:5.
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`Claim differentiation “can be overcome by strong contrary evidence such as
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`definitional language in the patent or a clear disavowal of claim scope.” Interdigital
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`Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012)
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`(emphasis added). The ’715 Patent specification does not define the application as
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`one that resides only on a remote server and the independent claims do not disavow
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`that the application could reside elsewhere, other than on a remote server. This is
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`fatal as “the presumption [of claim differentiation] is ‘especially strong’ in this case,
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`because ‘the limitation in dispute is the only meaningful difference between an
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`independent and dependent claim, and one party is urging that the limitation in the
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`dependent claim should be read into the independent claim.’” Id., 1324-25.
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`Third, contrary to PO’s argument, it is not necessary to limit “application” to
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`“remote application” to avoid written description issues. It is settled law that “[e]ven
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`when the specification describes only a single embodiment, the claims of the patent
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`will not be read restrictively unless the patentee has demonstrated a clear intention
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`to limit the claim scope using ‘words or expressions of manifest exclusion or
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`restriction.’” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir.
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`
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`8
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`2014). The independent claims are purposefully broad and do not claim a remote
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`application in order to capture all possible locations of the application. ’715 Patent,
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`20:28-35. Furthermore, POSITAs would have understood that the application can
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`reside on a mobile device in one embodiment just as it can reside on a server in
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`another. Bederson, ¶¶60, 91 (“Web browsers are client applications…a web browser
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`can open a special kind of document written using Hypertext Markup Language
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`(HTML) and render it.”). Therefore, PO’s attempt to limit the claims to one
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`embodiment – where the application is remote – fails to observe the understanding
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`of POSITAs and scope of known