Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 1 of 9 PageID #: 3461
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`UNILOC USA, INC., et al.,
`
`Plaintiffs,
`
`
`v.
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`
`
`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`PIRIFORM, INC.,
`UBISOFT, INC.,
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`Defendants.
`
`
`UNILOC USA, INC., et al.,
`
`Plaintiffs,
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`
`v.
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`
`
`ADP, LLC,
`BIG FISH GAMES, INC.,
`BLACKBOARD, INC.,
`BOX, INC.,
`ZENDESK, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
`
`Defendants.
`
`
`§
`§
`§ Case No. 2:16-cv-00393-RWS
`§
`
`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-00741-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-RWS
`§ Case No. 2:16-cv-00859-RWS
`§ Case No. 2:16-cv-00860-RWS
`§ Case No. 2:16-cv-00863-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
`
`
`OPENING SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
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`

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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 2 of 9 PageID #: 3462
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`The Court ordered the parties to file supplemental claim construction briefs, with respect
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`to two newly-disputed terms. Although the terms are newly disputed, the different constructions
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`arise from an issue the parties earlier briefed: whether claims of the ’578 (and ’293) patents
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`require applications be executed at the client -- a construction that would exclude those systems
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`that execute applications at the server. (Dkt. 140, pp. 4-7; Dkt. 150, pp. 5-10; Dkt. 155, pp. 2-
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`10).1 How the Court decides that issue should control the construction here.
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`I.
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`“Application Launcher Program”
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`Terms and
`Phrases
`
`Plaintiff’s Proposed
`Construction
`
`Defendants’ Proposed
`Construction
`
`“application
`launcher
`program”
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` “a program distributed to a
`client to initially populate a
`user desktop and to request
`execution of the application
`program”
`
`“a program distributed to a
`client to initially populate a
`user desktop and to request
`the application program from
`a server”
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`
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`All of the claims of the ’578 patent require an “application launcher program”
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`(hereinafter, “launcher”).2 The ’578 patent describes a launcher as a program the server
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`distributes to a client to “initially populate the user desktop” (12:26-27)3 by “provid[ing] for a
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`user interface” (e.g., displaying an icon that corresponds to the application) “to execute the
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`application.” (3:64 – 4:2). The program is called a “launcher” because when the user “selects”
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`the application (by, e.g., mouse-clicking on the icon), the launcher requests execution of
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`1 All docket cites are to 2:16-cv-00393-RWS.
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`2 “An application launcher program” is required only by dependent claims of the ’466 (3-6, 10-
`11, 18-21, 25-26, 31-34, 38-39); ’766 (2, 8, 14); and ’293 (10) patents.
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`3 Citations in this section are to columns and lines of the ’578 patent specification.
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`1
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 3 of 9 PageID #: 3463
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`(“launches”) the application itself. The launcher could have other functions, depending upon the
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`embodiment.4
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`The written description of the ’578 patent describes different embodiments of the
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`launcher, but features common to all embodiments include 1) the launcher is associated with an
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`application; 2) the launcher is distributed to a client; 3) the launcher “populates” the desktop,
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`e.g., it causes the desktop to display an icon corresponding to the associated application; and 4)
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`the user’s selecting the icon causes the launcher to request execution of the application: (“The
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`[launcher] provides … to the server [a] request to initiate execution of the application.”) (4:6-9);
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`(“Upon selection of the icon displayed by the [launcher], the selected application is ‘launched’
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`by requesting the URL of the application from the … server.”) (8:14-17); (“The display icon is
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`displayed through the browser’s graphic user interface representing the users’ desktop and
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`allowing an authorized user to execute an application … by selecting the displayed icon of the
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`[launcher].” (10:58-62).
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`Uniloc draws its proposed construction directly from the “Summary of the Invention” in
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`the specification of the ’578 patent, which describes the launcher as providing user information
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`to the server “along with the request to initiate execution of the application,” (4:6-9) (emphasis
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`added). As for Defendants’ proposal --“request the application… from a server”-- the “Summary
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`of the Invention” does not even mention that. Rather, that particular way of approaching
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`execution of the application is not mentioned until later in the patent (11:60-12:1), and then only
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`as a characteristic of an “alternative” embodiment (11:27-30). Defendants’ proposed
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`4 For example, the ’578 patent describes the launcher as determining the user ID and providing
`user information to the server (4:6-8), and providing an interface to allow a user to specify the
`configurable parameters of the application. (3:66-67; 10:52-54.)
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`2
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 4 of 9 PageID #: 3464
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`construction describes only one embodiment, which the inventors relegated to a later portion of
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`the specification.
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`Defendants’ construction does not cover all launchers. For example, it would not cover
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`launchers that request execution at the server. As discussed in earlier briefing (Dkt. 140, p.4;
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`Dkt. 155, pp. 2-3), applications can be executed at either the server or at the client. When an
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`application is executed at the server, the launcher would not request the application from the
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`server. Rather, the launcher would need only provide the server with a “request to initiate
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`execution of the application,” as the Summary of the Invention provides.
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`The specification does describe an embodiment in which, per the Defendants’
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`construction, the launcher requests an application from the server. (11:65-12:1). But the ’578
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`patent does not refer to this as “the invention,” but rather as one of the “[a]lternative preferred
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`embodiments… described in” the ’466 patent.5 (11:27-30) (emphasis added).
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`Defendants’ proposed construction not only excludes all systems that execute
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`applications at the server, it does not even cover a described embodiment that executes
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`applications at the client. The specification includes an embodiment where the launcher
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`distributed to the client includes the entire application the vendor provided. (14:32-34). Because
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`that launcher already includes the application, it would not “request the application” from the
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`server, as Defendants’ construction would require. A construction that would read out a
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`preferred embodiment is rarely, if ever, correct. Vitronics v. Conceptronic, Inc., 90 F.3d 1576,
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`5 As discussed in earlier briefing (Dkt. 140, pp. 4-5; Dkt. 155, pp. 2, 6-7), claims of the ’466
`patent are limited to embodiments that execute applications at the client, rather than the server,
`because those claims include “providing an instance of the [application] to the client for
`execution.” The same limitation appears in claims 3, 9, and 15 of the ’766 patent (Dkt. 140, Ex.
`B). Those claims of the ’766 patent should be classified with the ’466 patent claims for these
`claim construction purposes.
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`3
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 5 of 9 PageID #: 3465
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`1583-84 (Fed. Cir. 1996). Nothing in the specification suggests a reason why the inventors
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`would have wanted to exclude this – or any other – embodiment.
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`II.
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`“Available for Use”
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`Terms and
`Phrases
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`Plaintiff’s Proposed
`Construction
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`Defendants’ Proposed
`Construction
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`
`
` “make the application
`program available for use”
`
` “make the application
`available for access and
`download, responsive to user
`requests”
`
`“make the
`application
`program
`available for
`use”
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`
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`This term appears only in the claims of the ’293 patent. The IBM inventors directed the
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`’293 patent to the portion of a network that stores an application on a central network
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`management server and then transfers that application, as part of a file packet, to an intermediate
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`server.
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`“Available for use,” given its ordinary and customary meaning, is not limiting.
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`Typically, a user would select an application by clicking the corresponding icon on his desktop.
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`If that application had been made “available for use” at the server, it could either be executed
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`there or downloaded to the client for execution, depending upon the how the system was
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`designed.
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`Defendants, by asking the Court to require the application be available for download,
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`seek to narrow the claim to exclude systems that execute the application at the server.
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`There is no basis for imposing that restriction. The intrinsic evidence does not support it.
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`The relevant portion of Claim 1 of the ’293 patent, as originally filed, was written:
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`A method for distribution of application programs to a target station on a network
`comprising the steps executed on a centralized network management server coupled to
`the network of … distributing the file packet to the target station.
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`4
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 6 of 9 PageID #: 3466
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`Gannon Dec., Ex. A, ’293 patent file history at Application UNILOC_IBM_2016_1254. As thus
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`drafted, the claim only required the application be distributed to the server. During the
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`prosecution, however, the last line of the above claim was amended, to add the language in
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`dispute:
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` A method for distribution of application programs to a target on-demand server on a
`network comprising the steps executed on a centralized network management server
`coupled to the network of… distributing the file packet to the target on-demand server to
`make the application program available for use by a user at a client.
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`Gannon Dec., Ex. A, at 12/7/04 Amendment UNILOC_IBM_2016_1306-07 (emphasis added).
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`The inventors explained the amendments were intended:
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`to clarify …that the file packet is distributed to “make the application program available
`for use by a user at a client,” as described, for example, at [the portion of the patent
`application that reads:
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`
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`“[T]he servers … are provided with an on-demand server application [that]
`includes the ability to import the necessary definitional information and create the
`appropriate files to install and register a transferred file packet containing an
`application program on the local server in a manner which makes it recognized
`and available to users at clients served by the server.” ’466 patent 17:40-49
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`Gannon Dec., Ex. A, at 12/7/04 Amendment UNILOC_IBM_2016_1312.
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`As can be seen from the above discussion from the prosecution history, the amendment
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`was not intended to prescribe, and thus did not discuss, where applications would be executed.
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`Rather, the added language was intended to clarify the application was not merely distributed to
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`the server, but distributed in a way that it would be recognized and available to users. Rembrandt
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`Wireless Technologies, LP v. Samsung Electronics Co., 853 F.3d. 1370, 1376 (2017) (“While the
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`specification is the principal source of the meaning of a disputed term, the prosecution history
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`may also be relevant. Here, the clearest statement in the intrinsic record regarding the meaning
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`of the …limitation is the descriptive statement the applicant made to the examiner when he
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`inserted the limitation into the claims.”) (citations omitted).
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`5
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 7 of 9 PageID #: 3467
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`In previous briefing, Defendants had attempted to read in a requirement of execution at
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`the client, by citing portions of the common ’466/’293 specification describing that feature. (Dkt.
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`150, pp. 5-7). Uniloc pointed out, however, that in the ’466 prosecution, the PTO issued a
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`restriction requirement,6 finding that the claimed invention of (what would be) the ’293 patent
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`was distinct from what the ’466 patent claims. (Dkt. 155, pp.6-7). The portions of the ’466
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`patent specification that appear to pertain exclusively to the ’273 patent claims consist of: 3:47-
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`50;7 4:10-21; 5:28-54; 6:28-39; 17:18-20:59; and FIGS. 8-10. None of those portions mention
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`where applications are executed.
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`This issue of whether the ’578 (and ’293) patent claims should be construed to limit
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`execution to the client was earlier briefed in conjunction with two other terms:
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`Terms and
`Phrases
`“application
`program(s) /
`application(s)”
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`Plaintiff’s Proposed
`Construction
`“code associated with
`performing a particular
`function for a user”
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`“registration
`operations”
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`
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`“registration of the
`application program at the
`target on-demand server so
`that it will be available to
`users from client computers”
`[see note 1 below]
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`Defendants’ Proposed
`Construction
`“application level software
`program code for underlying
`application level functions
`that executes locally at the
`client as a separate
`application from the
`browser”
`“registration of the
`application program at the
`target on-demand server(s)
`so that it will be available for
`access and download
`responsive to user requests
`from client computers”
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`6 37 C.F.R. § 1.142(a) (“If two or more independent and distinct inventions are claimed in a
`single application, the examiner in an Office action will require the applicant in the reply to that
`action to elect an invention to which the claims will be restricted, this official action being called
`a requirement for restriction (also known as a requirement for division).”)
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`7 To maintain consistency with earlier briefing, the citations in this section to the ’293 patent
`specification are to column and line numbers of the ’466 patent specification. Dkt. 140, Ex. C.
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`6
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 8 of 9 PageID #: 3468
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`The above italicized portions of Defendants’ proposed constructions would limit the
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`claims to systems where applications are executed at the client. The sections of earlier briefing
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`as to that issue apply as well to the two newly disputed terms.
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`As the previous briefs discuss, the IBM inventors directed the four patents-in-suit to
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`separate, distinct inventions. They directed the ‘466 patent to an invention that requires
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`execution at the client, and thus included language in the claims of the ’466 patent to that effect.
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`By contrast, the inventors directed the ’578 (and ’293) patents to inventions agnostic to whether
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`applications are executed at the client or server, and thus used nonlimiting language in drafting
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`the claims of those patents.
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`Dated: July 18, 2017
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`
`
`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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`7
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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
`
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`Case 2:16-cv-00741-RWS Document 210 Filed 07/19/17 Page 9 of 9 PageID #: 3469
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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 July 18, 2017.
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`/s/ James J. Foster
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