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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: IPR2023-00758
`U.S. Patent No. 8,478,245
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Filing Date: April 23, 2024
`
`
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`IPR2023-00758
`Patent No. 8,478,245
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`TABLE OF CONTENTS
`
`B.
`C.
`
`
`INTRODUCTION ...............................................................................1
`I.
`II. CLAIM CONSTRUCTION ..................................................................1
`A.
`“Customized to Said Application” Should Be Given Its Plain and
`Ordinary Meaning.......................................................................2
`“Application” Should Be Given Its Plain and Ordinary Meaning .......5
`“Generated in Part From Execution of Said Application” Should Be
`Given Its Plain and Ordinary Meaning ......................................... 12
`III. HARIKI IN COMBINATION WITH HARRIS RENDERS OBVIOUS
` CLAIMS 1-33 ................................................................................... 15
`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..................................................................................... 15
`A2. The HTML Files Sent to the Mobile Device Are Generated Upon
`Execution of the Web Browser and, Therefore, Hariki’s Web Browser
`Reads on the Claimed “Application” ........................................... 19
`A3. The ’245 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
`B. Hariki’s UI Content Packages Are Applicable to HTML Files Within
`the Web Browser ...................................................................... 21
`C. Hariki’s Engines Read HTML Files and the Hariki/Harris System
`Reads on Claim 23 and Its Dependent Claims ............................... 22
`D. Hariki in View of Harris Disclose All the Claims of the ’245 Patent.
`............................................................................................... 23
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`E. Hariki’s Web Server Application Operates Remotely on a Remote
`Server and Serves Web Pages to Mobile Devices .......................... 24
`F. Hariki’s “Title Bars” Read on the Claimed “Ticker Information” .... 24
`IV. CONCLUSION ................................................................................. 26
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`No.
`1001
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`1002
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`1003
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`1004
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`EXHIBIT LIST
`Description
`U.S. Patent No. 8,478,245 (“’245Patent”)
`
`Expert Declaration of Ben Bederson (“Bederson”)
`
`Curriculum Vitae of Benjamin B. Bederson, Ph.D.
`
`File History of U.S. Patent No. 8,478,245 (“’245FH”)
`
`(Corrected) File History of U.S. Patent No. 8,478,245
`
`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/
`
`1014
`
`Excerpts from Dan R. Olsen, Jr., Developing user interfaces (1998)
`
`1015
`
`Alok Sinha, Client-server computing, in Communications of the
`ACM, 35, 7 (1992)
`
`iv
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`No.
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`1016
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`1017
`
`1018
`
`
`
`
`
`Description
`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 ”)
`
`1019
`
`U.S. Patent No. 8,111,326 (“Talwar”)
`
`1020
`
`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)
`
`U.S. Patent Application Publication No. 2003/0106022
`(“Goodacre”)
`
`1023 Webarchive.gov Zenzui
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`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 Admission Pro Hac Vice
`
`Excerpts From Trial Transcript Day 2
`
`Associated, Cambridge Learner’s Dictionary (3rd ed. 2007)
`
`From, Merriam-Webster’s Collegiate Dictionary (11th ed. 2007)
`
`Deposition of Mr. Stuart Lipoff (April 2, 2024) (“Lipoff Dep.”)
`
`v
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`No.
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`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
`
`2012
`
`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)
`
`Scheduling Order, (Feb. 14, 2023) (Doc. 62)
`
`Kluasner Motion to Stay Pending IPR Statistics
`
`Order Granting Stipulated Stay Pending IPR, Flexstent, LLC v.
`Abbot Labs., No. 5-18-cv-02479 (C.D. Cal. Oct. 18, 2019)
`(Doc.77)
`Order Denying Stay, Shenzhen Gooloo E-Commerce Co., Ltd. v.
`Pilot, Inc., No. 2-22-cv-02219 (C.D. Cal. Jan. 12, 2023) (Doc. 95)
`Renewed Stipulated Motion to Stay, 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
`
`U.S. District Court — Judicial Caseload Profile Central Cal. (Mar.
`31, 2023)
`
`vi
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`
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`No.
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`2013
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`2014
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`2015
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`2016
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`2017
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`
`
`
`
`Description
`Order Denying Netflix's Mtns Inc'l 101 Invalidity (May 24, 2023)
`(Dkt. 109).pdf
`Order re Scheduling Conference (Feb. 13, 2023) (Doc. 61)
`
`Excerpts from Corrected Villasenor Invalidity Expert Declaration
`(June 23, 2023)(Redacted & Dedesignated).pdf
`Zhang, Systematic Approach to Construct and Assess Power Elec.
`Conversion Architectures, IET Journals (2019)
`US7404032 (Ware et al.)
`
`2018 Wyde Declaration
`
`2019
`
`2020
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`2021
`
`2022
`
`2023
`
`2024
`
`2025
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`2026
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`2027
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`2028
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`2029
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`Excerpts from Trial Transcript Day 2 (Oct. 18 2023)
`
`Excerpts from Trial Transcript Day 3 (Oct. 19 2023)
`
`Netflix's JMOL re Infringement (Oct. 19 2023) (Dkt. 389)
`
`Declaration of Mr. Stuart Lipoff (“Lipoff”)
`
`Generate, FOLDOC
`
`Output, Tech Terms
`
`From, Merriam-Webster
`
`Customized, Merriam-Webster
`
`Application-Specific, Wiktionary
`
`Ticker, Merriam-Webster
`
`Dr. Benjamin Bederson Deposition Transcript (Jan. 10, 2024)
`(“Bederson Dep.”)
`
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`No.
`2030
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`Description
`Second Declaration of Joshua S. Wyde
`
`3001
`
`3002
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`Ex. 3001
`
`Ex. 3002
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`AUTHORITIES LIST
`
`Cases
`ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082 (Fed. Cir. 2003) ..........................3
`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) ................8
`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
`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
`
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`LISTING OF CHALLENGED CLAIMS
`
`Claim 1
`
`[1pre]
`
`1[a]
`
`1[b]
`
`[1c]
`
`[1d]
`
`[1e]
`
`[1f]
`
`[1g]
`
`A method of rendering content on a wireless device, said method
`comprising:
`
`receiving 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;
`
`receiving compiled content 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;
`
`using a graphical user interface comprising said plurality of rendering
`blocks to generate renderable content based on said compiled content and
`said custom configuration; and
`
`rendering said renderable content on said wireless device, wherein said
`receiving compiled content comprises: receiving first compiled content
`specific to a first page of said application; and receiving second compiled
`content specific to a second page of said application
`
`wherein said custom configuration is applicable to both said first and
`second compiled content.
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`Claim 2
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`
`
`
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`A method as described in claim 1 wherein said using a graphical user
`interface comprising said plurality of rendering blocks to generate
`renderable content comprises: processing said compiled content using a
`reader of said wireless device; and issuing commands from said reader to
`individual rendering blocks of said graphical user interface based on said
`rendering commands of said compiled content.
`
`A method as described in claim 1 wherein said render able 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 6 wherein said custom configuration
`comprises a syntax that is generic regarding said wireless device type.
`
`[2]
`
`Claim 3
`
`[3]
`
`Claim 4
`
`[4]
`
`Claim 5
`
`[5]
`
`Claim 6
`
`[6]
`
`Claim 7
`
`[7]
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`Claim 8
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`
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`
`
`[8]
`
`Claim 9
`
`[9]
`
`Claim 10
`
`[10]
`
`Claim 11
`
`[11]
`
`Claim 12
`
`[12pre]
`
`A method as described in claim 1 wherein said custom configuration
`comprises configuration information and con tent specific to said
`application.
`
`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 further said identifying said custom
`configuration comprises receiving an identifier that identifies said custom
`configuration.
`
`A method as described in claim 1 further comprising receiving and
`storing said custom configuration.
`
`A method as described in claim 1 wherein said plurality of rendering
`blocks of said graphical user interface comprises: a first block that
`controls the rendering of ticker information across a display screen of
`said wireless device; a second block that controls the rendering of button
`images on said display screen; and a third block that controls the
`rendering of audio on a speaker of said wireless device.
`
`A non-transitory computer usable medium comprising instructions
`therein that when executed by a processor implement a method of
`rendering content on a wireless device, said method comprising:
`
`[12a]
`
`receiving an identification of a custom configuration of a plurality of
`rendering blocks of said wireless device,
`
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`[12b]
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`[12c]
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`[12d]
`
`[12e]
`
`[12f]
`
`[12g]
`
`Claim 13
`
`[13]
`
`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;
`
`receiving compiled content 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;
`
`using a graphical user interface comprising said plurality of rendering
`blocks to generate renderable content based on said compiled content and
`said custom configuration; and
`
`rendering said renderable content on said wireless device, wherein said
`receiving compiled content comprises: receiving first compiled content
`specific to a first page of said application; and receiving second compiled
`content specific to a second page of said application,
`
`wherein said custom configuration is applicable to both said first and
`second com piled content.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said using a graphical user interface comprising said plurality of
`rendering blocks to generate renderable content comprises: processing
`said compiled content using a reader of said wireless device; and issuing
`commands from said reader to individual rendering blocks of said
`graphical user interface based on said rendering commands of said
`compiled content.
`
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`Claim 14
`
`
`
`
`
`[14]
`
`Claim 15
`
`[15]
`
`Claim 16
`
`[16]
`
`Claim 17
`
`[17]
`
`Claim 18
`
`[18]
`
`Claim 19
`
`[19]
`
`A non-transitory computer usable medium as described in claim 12
`wherein said renderable content comprises audio content and display
`content.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said compiled content is partially result ant from said application
`operating on a remote server.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said compiled content is specific to the rendering capabilities of
`said wireless device.
`
`A non-transitory computer usable medium as described in claim 12
`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 usable medium as described in claim 17
`wherein said custom configuration comprises a Syntax that is generic
`regarding said wireless device type.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said custom configuration comprises configuration information
`and content specific to said application.
`
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`Claim 20
`
`
`
`
`
`[20]
`
`Claim 21
`
`[21]
`
`Claim 22
`
`[22]
`
`A non-transitory computer usable medium as described in claim 12
`wherein said custom configuration is one of a plurality of memory-stored
`custom configurations stored by said wireless device and wherein further
`said identifying said custom configuration comprises receiving an
`identifier that identifies said custom configuration.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said method further comprises receiving and storing said custom
`configuration.
`
`A non-transitory computer usable medium as described in claim 12
`wherein said plurality of rendering blocks of said graphical user interface
`comprises: a first block that controls the rendering of ticker information
`across a display screen of said wireless device; a second block that
`controls the rendering of button images on said display screen; and a third
`block that controls the rendering of audio on a speaker of said wireless
`device.
`
`[23a]
`
`Claim 23
`[23pre] A wireless device operable to communicate with a remote server, said
`wireless device comprising:
`a transceiver coupled to a bus and operable to receive a custom
`configuration that is associated with an application,
`said transceiver also operable to receive compiled content generated in part
`from execution of said application and
`comprising a plurality of rendering commands expressed in a syntax that
`is generic to said wireless device;
`
`[23b]
`
`[23c]
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`[23d]
`
`[23e]
`
`[23f]
`
`[23g]
`
`[23h]
`
`Claim 24
`
`[24]
`
`Claim 25
`
`[25]
`
`a memory coupled to said bus and operable to store said compiled content
`and said custom configuration;
`a processor coupled to said bus and operable to implement the following:
`a graphical user interface comprising a plurality of rendering blocks and
`operable to generate renderable content based on said compiled content
`and said custom configuration
`wherein said custom configuration is operable to configure said plurality
`of rendering blocks to render content in a manner customized to said
`application;
`an engine for reading said compiled content and responsive thereto for
`causing said graphical user interface to generate said renderable content
`based on said render commands;
`a display device coupled to said bus and operable to render a portion of
`said renderable content, wherein said com piled content comprises: a first
`compiled content specific to a first page of said application; and a second
`compiled content specific to a second page of said application, wherein
`said custom configuration is applicable to both said first and second
`compiled content.
`
`The wireless device as described in claim 23 wherein said engine is
`further operable to issue commands to individual rendering blocks of said
`graphical user interface based on said plurality of rendering commands of
`said compiled content.
`
`The wireless device as described in claim 23 further comprising an audio
`rendering device coupled to said bus and wherein said renderable content
`comprises audio content and display content.
`
`xvi
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`Claim 26
`
`
`
`
`
`[26]
`
`Claim 27
`
`[27]
`
`Claim 28
`
`[28]
`
`Claim 29
`
`[29]
`
`Claim 30
`
`[30]
`
`Claim 31
`
`[31]
`
`The wireless device as described in claim 23 wherein 25 said compiled
`content is partially resultant from said application operating on a remote
`server.
`
`The wireless device as described in claim 23 wherein said compiled
`content is specific to the rendering capabilities of said wireless device.
`
`The wireless device as described in claim 23 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.
`
`The wireless device as described in claim 28 wherein said custom
`configuration is expressed in a syntax that is generic to said wireless
`device type.
`
`The wireless device as described in claim 23 wherein said custom
`configuration comprises configuration information and content specific to
`said application.
`
`The wireless device as described in claim 23 wherein said custom
`configuration is one of a plurality of memory-stored custom
`configurations stored in said memory.
`
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`Claim 32
`
`
`
`
`
`The wireless device as described in claim 23 wherein said plurality of
`rendering blocks of said graphical user interface comprises: a first block
`that controls the rendering of ticker information across said display
`screen of said wireless device; a second block that controls the rendering
`of button images on said display screen; and a third block that controls
`the rendering of audio on a speaker of said wireless device.
`
`The wireless device as described in claim 23 wherein said plurality of
`rendering blocks of said graphical user interface comprises: a first block
`that controls the rendering of a scroll bar on said display screen of said
`wireless device; a second block that controls the rendering of an input
`box on said display screen of said wireless device; and a third block that
`control the rendering of a text display region on said display screen of
`said wireless device.
`
`[32]
`
`Claim 33
`
`[33]
`
`
`
`
`
`
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`I.
`
`INTRODUCTION
`
`
`
`
`
`
`
`Petitioner submits this Reply to Patent Owner’s (“PO”) Response, Paper 21
`
`(“POR”) concerning Claims 1-33 (“challenged claims”) of U.S. Patent No.
`
`8,478,245. 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 10 (“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
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`claims.
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`II. CLAIM CONSTRUCTION
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`PO proposes claim constructions for three terms in the POR in an attempt to
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`narrow the claims without sufficient support. These terms need no construction, and
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`Petitioner has ascribed their plain and ordinary meaning.
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`1
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`IPR2023-00758
`Patent No. 8,478,245
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`A.
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`“Customized to Said Application” Should Be Given Its Plain and
`Ordinary Meaning
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`Claims 1[b]/12[b]/23[f]
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`PO provides multiple narrow constructions – “tailored to,” “created for,”
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`“consciously designed,” and “written for” an application – for the term “customized
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`to said application” before settling on “created for” as PO’s proposed construction.
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`POR, 20-21. However, for several reasons, this term needs no construction because
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`POSITAs can readily understand its plain and ordinary meaning.
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`First, POSITAs reading the claim language can readily understand the plain
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`and ordinary meaning of “customized to said application” from the expressly stated
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`relationship between the custom configuration and the application. Specifically, the
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`claims state that the “custom configuration is associated with an application.” It is
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`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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`2
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`Patent No. 8,478,245
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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.” ’245
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`Patent, 18:41-43 (“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 ’245 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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`3
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`IPR2023-00758
`Patent No. 8,478,245
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`skill in the art notice of the change from ordinary meaning.” Id. Here, the phrase
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`“created for” is not used in the ’245 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 its 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, 20-21. 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., 21), but PO cannot
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`negate the language of the claims themselves. The claims do not require that the
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`custom configuration be consciously designed or created for an application. The
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`patent simply discloses that there is a correspondence between a custom
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`configuration and an application that allows for rendering content on a mobile
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`device. ’245 Patent, 2:54-56, 7:59-62, 11:5-8, 18:41-43.
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`4
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`Patent No. 8,478,245
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` Ultimately, the claims tell us that the rendering blocks are configured to render
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`content for the application to the extent that the custom configuration is “associated
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`with” the application, which defines the relevant relationship between the custom
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`configuration and the application, such that the rendering blocks will be customized.
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`A claim construction is not necessary here because the scope of “customized to said
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`application” is clear from the words of the claim, and those words should not be
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`improperly or unnecessarily limited.
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`B.
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`“Application” Should Be Given Its Plain and Ordinary Meaning
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`Claims 1[f]/12[f]/23[h] and 1[c]/12[c]/23[b]
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`PO attempts to construe “application” narrowly as “remote application,” but
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`the arguments fail because PO ignores the claim language, takes Petitioner’s
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`litigation positions out of context. POR, 22-31.
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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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`5
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`IPR2023-00758
`Patent No. 8,478,245
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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 run remotely from the
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`mobile device in order for the device to receive compiled content from the
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`application. However, Claims 1, 12, and 23 do not require that a mobile device
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`receive compiled content from an application. The claims are directed to “receiving
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`compiled content,” which only requires that compiled content be received from some
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`source. In deposition, PO’s expert could not point to any claim language that
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`required the mobile device to receive compiled content transmitted by an
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`application; instead, he stated that the compiled content “needs to be external to the
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`wireless device” and “come from a source side of the information.” Lipoff Dep.,
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`48:20-49:4.
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`There is no claim language that requires the mobile device to receive compiled
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`content that is transmitted by an application, which even PO’s expert cannot refute.
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`Furthermore, even if a particular embodiment in the patent discloses a mobile device
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`receiving compiled content from a remote application, it would be improper to
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`import that embodiment into the claim. Superguide Corp. v. DirecTV Enterprises,
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`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in
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`6
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`IPR2023-00758
`Patent No. 8,478,245
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`the written description may not be read into a claim when the claim language is
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`broader than the embodiment.”). PO’s position that the “application” must run
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`remotely from the mobile device is precisely what Superguide Corp. bars, namely,
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`reading a narrow embodiment, such as the one disclosed in Fig. 5 of the ’245 Patent,
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`into much broader claim language that only requires “receiving compiled content.”
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`Reception of compiled content at a mobile device meets this claim limitation under
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`the plain and ordinary meaning, without limitation on where the claimed application
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`is located.
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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 4, 15 and 26, which depend from independent Claims 1, 12, and
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`23, respectively, first introduce the limitation that the application resides on a remote
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`server and gives rise to the presumption that the application is not required to be
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`remote from the mobile device in the independent claims. This is confirmed by
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`Claims 1 and 12 not even including the terms “server” or “remote.” The embodiment
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`captured by Claim 23 includes a remote server but does not say that the mobile
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`7
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`IPR2023-00758
`Patent No. 8,478,245
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`device receives compiled content transmitted by the application. ’245 Patent, 22:51-
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`23:15.
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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 ’245 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
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