Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 1 of 13 PageID #: 1757
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`§
`§
`§ Case No. 2:16-cv-00741-JRG
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`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-JRG
`§ Case No. 2:16-cv-00859-JRG
`§ Case No. 2:16-cv-00860-JRG
`§ Case No. 2:16-cv-00863-JRG
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`§
`§
`§ Case No. 2:16-cv-00393-RWS
`§
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`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00394-RWS
`§ Case No. 2:16-cv-00396-RWS
`§ Case No. 2:16-cv-00397-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
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`UNILOC USA, INC., et al,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
`BLACKBOARD, INC.,
`BOX, INC.,
`ZENDESK, INC.,
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`Defendants.
`
`
`UNILOC USA, INC., et al,
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`Plaintiffs,
`
`
`v.
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`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`PIRIFORM, INC.,
`UBISOFT, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
`
`Defendants.
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`
`
`PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF
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`2701560.v1
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 2 of 13 PageID #: 1758
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`Overview of the Patents
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`Plaintiffs (“Uniloc”) have asserted claims from four IBM patents, all with effective filing
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`dates of December 14, 1998.
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`The ‘578 patent1 describes (what were in 1998) innovative methods of managing
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`configurable application programs on a computer network for a large enterprise. The IBM
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`inventors filed the ‘766 patent2 as a divisional of the ‘578, and thus it has the identical written
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`description (“the ‘578 disclosure”).
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`The ‘466 patent3 also describes methods of managing application programs, but the
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`written description of that patent differs from the ‘578 disclosure. The IBM inventors filed the
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`‘293 patent4 as a divisional of the ‘466, and thus it has a written description identical to that of
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`the ‘466. (Pinpoint references in this brief to the ‘466/’293 written description (“the ‘466
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`disclosure”) will be to the ‘466 patent. (Ex. C)).
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`Both the ’578 and ‘466 disclosures describe a computer network, which connects each
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`individual user’s computer terminal (“client terminal,” or simply “client”) to a remote server
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`(“server”) responsible for supporting that client, as well as for supporting a number of other
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`clients. The network, in turn, connects the remote servers to a central network management
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`server. FIG. 1 of the ‘466 patent graphically illustrates this server/client arrangement:
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`1 U.S. Patent No. 6,324,578 (Ex. A).
`2 U.S. Patent No. 6,728,766 (Ex. B).
`3 U.S. Patent No. 6,510,466 (Ex. C).
`4 U.S. Patent No. 7,069,293 (Ex. D).
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`2
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 3 of 13 PageID #: 1759
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`An application program (“application”) is software written to perform a particular
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`function for a user (as opposed to system software, which is designed to operate the network.)
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`Common examples of applications are word processing applications (e.g., Microsoft Word) and
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`spreadsheets (e.g., Excel).
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`In 1998, designers of computer networks for large enterprises were confronted with the
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`problem of peripatetic users, i.e., users who login at different times from different clients. The
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`IBM inventors, in these patents, describe innovative ways, circa 1998, they had reduced to
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`practice to allow a peripatetic user to access the user’s authorized applications from any client on
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`the network, while maintaining the user’s own selected preferences.
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 4 of 13 PageID #: 1760
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`Computer network designers in 1998 were also confronted by the problems of efficiently
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`distributing applications throughout the enterprise, and of then frequently (and efficiently)
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`updating those applications, while maintaining consistency among users, as to both application
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`updates and administrator preferences. The IBM inventors devised, and reduced to practice,
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`innovative ways to accomplish that.
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`Finally, the IBM inventors devised methods to manage the allocation of licenses to
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`applications in the enterprise environment, where the number of users accessing, or seeking to
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`access, an application would exceed the number of existing licenses.
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`Claim Construction Issues
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`Exhibit A to the Joint Claim Construction Statement and Prehearing Memorandum
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`(“JCCS”) listed 14 claim terms/phrases on which the parties had not reached agreement. Since
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`filing that document, the parties have eliminated certain disputes, and narrowed others. Uniloc
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`below lists, in what it sees as the order of priority, the remaining claim construction disputes.
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`1. Whether the ‘578 and ‘293 patent claims require applications be executed at
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`the client.
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`In networks of the type the patents describe, a user can execute (i.e., run) an application
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`in one of two ways: 1) the application could be downloaded to, and then executed on, the client
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`terminal, or 2) the application could remain on the server and be executed by the user remotely.
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`The parties agree the asserted claims of the ‘466 patent (and claims 3, 9, and 15 of the
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`‘766 patent) are drawn to the first method. But the parties disagree as to the ‘578 and ‘293
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`patents. Uniloc’s position is the claims of the ‘578 and ‘293 patents cover both methods; by
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`contrast, defendants would limit the claims of those patents, as with the claims of the ‘466
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`patent, to the first method.
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 5 of 13 PageID #: 1761
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`Uniloc’s position is easy to explain: All claims of the ‘466 patent (and claims 3, 9, and 15
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`of the ‘766 patent) have language unambiguously requiring execution on the client. The
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`independent claims of the ‘466 patent, claims 1, 15, and 16, recite providing an application “to
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`the client for execution.” (The relevant claims of the ‘766 patent have identical language.) Thus,
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`during the prosecution history of the ‘466 patent, the inventors acknowledged that, in the claims
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`they were pursuing in the ‘466 patent, the applications “are executed at a client device rather
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`than having the application program execute at the server.” (Ex. E at UNILOC_IBM_0630)
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`But no similar language appears in the claims or prosecution of the ‘578 and ‘293 patents.
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`For example, while claim 1 of the ‘578 patent reads “executing the application program,” it says
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`nothing as to where the application, when executed, resides. The inventors appear to have drafted
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`the claims of the ‘578 patent to cover either method.
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`The claims of the ‘293 patent are directed to an exchange of applications from a central
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`management server to the remote servers, not from the remote server to the client. Thus, those
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`claims do not even mention executing the application program. During the prosecution history of
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`the ‘293 patent, the inventors distinguished certain prior art by pointing out the claim (that would
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`become claim 1 of the ‘293 patent) recited “an exchange, not involving a client, to enable
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`availability of a program” at a target on-demand server. (Ex. F at UNILOC_IBM_0668)
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`In the JCCS, defendants sought a construction of the ‘578 and ‘293 patent claims that
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`would require execution at the client. Their mechanism for obtaining that construction was to ask
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`that “application programs/applications” in all four of the patents, including the ‘578 and ‘293
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`patents, be defined as program code that “executes locally at the client.” (To the same end, they
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`also proposed adding “for download” to the availability the ‘293 patent claims would require.)
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 6 of 13 PageID #: 1762
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`But nothing in the ordinary and usual meaning of “application” would limit the term to
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`software executed only at the client; applications are frequently executed at remote servers.
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`In general, the Court must construe “application” to have its ordinary and usual meaning,
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`as to those patents. Phillips v. AWH Corp., 415 F. 3d 1303, 1312 (Fed. Cir. 2005)(“[T]he words
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`of a claim ‘are generally given their ordinary and customary meaning.’”). A Court may depart
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`from the plain and ordinary meaning in only two instances. Hill-Rom Servs., Inc. v. Stryker
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`Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). The first is when a patentee acts as his own
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`lexicographer. Id. The second is when the patentee disavows the full scope of the claim term in
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`the specification or during prosecution. Id.; Poly-America, L.P. v. API Industries, Inc., 839 F. 3d
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`1131, 1136 (Fed. Cir. 2016). Because the ordinary and usual meaning does not support their
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`position, to have any chance of success defendants must thus identify, in the intrinsic record of
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`6
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 7 of 13 PageID #: 1763
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`the ‘578 and ‘293 patents, a definition or disclaimer supporting a different construction of
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`“application.” The intrinsic record of these patents, however, contains no such definition or
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`disclaimer. Indeed, because the ‘578 patent issued on a first office action, nothing in its
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`prosecution history would or could limit its claims. And, as discussed above, the only relevant
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`statement in the ‘293 file history disclaimed involvement by the client.
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`Nor does anything in the intrinsic record of the ‘466 or ‘766 patents modify the ordinary
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`and usual meeting of “application.” Although, as discussed above, the claims of the ‘466 patent
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`are limited to execution on the client, that limitation arises not from including “application” in
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`the claims, but from including other, quite specific language.
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`2. Whether claims 6 and 8 of the ‘578 patent are indefinite.
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`In the JCCS, defendants proposed that claims 6 and 8 of the ‘578 patent be found
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`indefinite.
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`Although that document did not explain their position, their invalidity contentions (Ex. G
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`at 44-45) argued a person of skill in the art (POSITA) cannot determine what “the initiating
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`execution step” in those claims refers to.
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`A POSITA, however, would have certainty as to the scope of claims 6 and 8. Claim 1 of
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`the ‘578 patent, a method claim from which those claims depend, reads:
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`1. A method for management of configurable application programs on a network
`comprising the steps of:
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`installing an application program having a plurality of configurable preferences and a
`plurality of authorized users on a server coupled to the network;
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`distributing an application launcher program associated with the application program
`to a client coupled to the network;
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 8 of 13 PageID #: 1764
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`obtaining a user set of the plurality of configurable preferences associated with one of
`the plurality of authorized users executing the application launcher program;
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`obtaining an administrator set of the plurality of configurable preferences from an
`administrator; and
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`executing the application program using the obtained user set and the obtained
`administrator set of the plurality of configurable preferences responsive to a request from
`the one of the plurality of authorized users.
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`(Emphasis added.) The only step in claim 1 that mentions execution is the final step,
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`immediately above, which covers executing the application, using certain obtained sets of
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`preferences.
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`Claim 6 reads:
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`6. A method according to claim 1 wherein the step of executing is preceded by the step
`of storing the obtained user set and the obtained administrator set on a storage device
`coupled to the server and wherein the initiating execution step includes the step of
`retrieving the stored user set and the stored administrator set from the storage device.
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`(Emphasis added). A POSITA would understand claim 6 plainly adds to claim 1: A) storing
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`those obtained sets before executing the application, and B) retrieving the sets from storage as
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`part of initiating the application.
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`Claim 8 reads:
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`8. A method according to claim 1 wherein the initiating execution step includes the step
`of obtaining default preference values for any of the plurality of configurable preferences
`which are not specified by the user set or the administrator set.
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`(Emphasis added). A POSITA would understand claim 8 plainly adds to claim 1: obtaining
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`default preference values as part of initiating the application.
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`3.
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`Whether claims 20, 22, 24, 35, 37, and 39 of the ‘578 patent are indefinite.
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`Defendants contend these claims are indefinite, again arguing that a POSITA would not
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`understand the meaning of a particular limitation in each of these claims, relating to execution.
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 9 of 13 PageID #: 1765
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`For purposes of illustration, we will discuss, as representative, the limitation “the
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`computer readable program code means for executing the application program,” which appears
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`in claim 35 of the ‘578 patent, which, in turn, depends from claim 32 of that patent.
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`This phrase, and the other various phrases that defendants have listed, are means-plus-
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`function limitations. Courts construe means-plus-function limitations to cover the corresponding
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`structures disclosed in the specification that perform the claimed function. Northrop Grumman
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`Corp. v. Intel Corp., 325 F. 3d 1346, 1349-50 (Fed. Cir. 2003)(“In construing a means-plus-
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`function limitation, a court must identify both the claimed function and the corresponding
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`structure in the written description for performing that function)(citing Micro. Chem., Inc. v.
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`Great Plains Chem. Co., 194 F. 3d 1250, 1258 (Fed. Cir. 1999).
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`In cases involving a computer-related invention, a POSITA would understand the
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`structure corresponding to “computer readable program code means for executing the application
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`program” would be the code (including its relevant algorithms) written to cause a processor to
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`execute the application. Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F. 3d 1361, 1365
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`(Fed. Cir. 2010).
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`In their invalidity contentions, defendants seem to be arguing that a POSITA cannot
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`determine whether this limitation is the same as the “computer readable program code means for
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 10 of 13 PageID #: 1766
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`providing an instance of the application program … for use in executing the application
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`program” (in claim 32).
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`But a POSITA, who is assumed to know the law on means-plus-function claims, would
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`be certain of what each claim covers. The structure corresponding to the above quoted phrase
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`from claim 32 would be the code written to cause the processor to provide an instance of the
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`application (i.e., a copy of an executable version of the program that has been written to the
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`computer’s memory) for use in executing the application. By contrast, as explained above, the
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`structure that dependent claim 35 adds to the structures of claim 32 is the code written to cause
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`the processor to execute the application.
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`Stated more succinctly, the relevant code of claim 32 provides an executable copy of the
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`program for use in executing the application; the code of claim 35 actually executes the program.
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`Although the above discusses only claims 32 and 35, the analysis is identical for the other
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`pairs of claims defendants cite.
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`4.
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`The construction of “license availability.”
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`All parties seem to agree that “license availability” refers to a “determination that a user
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`can be issued a license to the selected application.”
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 11 of 13 PageID #: 1767
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`The issue remains in dispute, however, because two holdout defendants want to
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`gratuitously add to that definition “distinct from any determination that the user is authorized to
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`access the selected application program.”
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`Uniloc opposes that condition. In general, Uniloc believes defining something by saying
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`what it is not is poor practice. But here, it could also mislead the jury by wrongly implying a
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`claim does not cover licensing availability software that includes, as a first step in allocating
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`licenses, determining which users are authorized.
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`5. What the jury should be told re “instance of an application program.”
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`The parties seem to agree on what an “instance of a program” means, but disagree as to
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`what the jury should be told.
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`Uniloc feels lay jurors will not understand the term, and thus the more detailed the
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`description, the better. Thus, Uniloc asks the Court to instruct:
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`A program is a sequence of instructions that indicates which operations the computer
`should perform on a set of data. An instance of a program is a copy of a program that is
`understandable by a computer’s central processing unit and that is ready to run as soon it
`is copied from storage into memory.
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`Defendants would go along with “an executable copy of an installed program.”
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`Attached as Ex. H is a document from the Linux Information Project, which was
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`circulated among the parties, and forms the basis of the more specific proposals above.
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 12 of 13 PageID #: 1768
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`Date: May 18, 2017
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`Respectfully submitted,
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`/s/ James J. Foster
`Paul J. Hayes
`Kevin Gannon
`James J. Foster
`Prince Lobel Tye LLP
`One International Place - Suite 3700
`Boston, MA 02110
`Tel: 617-456-8000
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Anthony M. Vecchione
`anthony@nelbum.com
`Texas State Bar No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
`
`James L. Etheridge
`Texas State Bar No. 24059147
`Ryan S. Loveless
`Texas State Bar No. 24036997
`Brett A. Mangrum
`Texas State Bar No. 24065671
`Travis Lee Richins
`Texas State Bar No. 24061296
`ETHERIDGE LAW GROUP, PLLC
`2600 E. Southlake Blvd., Suite 120 / 324
`Southlake, Texas 76092
`Telephone: (817) 470-7249
`Facsimile: (817) 887-5950
`Jim@EtheridgeLaw.com
`Ryan@EtheridgeLaw.com
`Brett@EtheridgeLaw.com
`Travis@EtheridgeLaw.com
`
`ATTORNEYS FOR THE PLAINTIFFS
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`Case 2:16-cv-00741-RWS Document 151 Filed 05/18/17 Page 13 of 13 PageID #: 1769
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on May 18, 2017.
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`/s/ James J. Foster
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