Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 1 of 7 PageID #: 7542
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
`KASPERSKY LAB, INC.,
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`Defendants.
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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.,
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`Defendants.
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`Case No. 2:16-cv-00393-RWS
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`LEAD CASE
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`Case No. 2:16-cv-00871-RWS
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`Case No. 2:16-cv-00741-RWS
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`LEAD CASE
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`Case No. 2:16-cv-00858-RWS
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`PLAINTIFFS’ REPLY IN SUPPORT OF MOTION TO RECONSIDER
`A PORTION OF THIS COURT’S MEMORANDUM OPINION AND ORDER –
`00741 (Dkt. No. 233, - 00393 Dkt. No. 210) -- CONSTRUING CERTAIN TERMS
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`ORAL ARGUMENT REQUESTED
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 2 of 7 PageID #: 7543
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`The parties appear to agree as to how the terms in question are used in the art. Dr. Michael
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`Shamos provided ample evidence “application launcher program” was a term of art that meant “a
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`computer program that launches, i.e., starts another computer program,” which usage would
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`include programs that launched applications to be executed at a server. Dkt. No. 344-1 (“Shamos
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`Decl.”) at ¶ ¶ 26-32.1 Big Fish’s Opposition, Dkt. No. 352 (“Opp.”), did not argue otherwise
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`Similarly, “application program” (or “application”) is a term the art commonly uses to refer
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`to software written to perform a particular function for a user – as opposed to system software,
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`which is designed to operate the network – whether executed at a client or on a server, or whether
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`executed within the browser window.
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`1. The specification of the ’578 patent does not narrow the patent’s claims beyond
`their ordinary meaning.
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`The issue as to claim construction is whether anything in the intrinsic record of the ’578
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`patent would exclude from the asserted claims embodiments in which an application executes on
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`the server, rather than on the client, or executes within the browser window. Dr. Shamos found no
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`support for that exclusion. He even cited examples in the ’578 patent’s specification where an
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`application would be executed on the server or within the browser window. Shamos Decl. at ¶ ¶
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`47-49, 51-52.
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`Big Fish does not dispute those examples or otherwise respond to Dr. Shamos’s evidence.
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`2. Non-incorporated portions of the ’466 Prosecution History cannot be used to
`interpret claims of the ’578 patent.
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`Big Fish does not dispute the ’466 and ’578 patents lack a familial relationship, which can
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`only be formed if the patents are related by continuations, continuations-in-part, or divisionals.
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`1 As with the Motion, all citations in this Reply are to the docket in 2:16-cv-00741-RWS. The
`identical Motion, however, was also filed in 2:16-cv-00393-RWS, in which Kaspersky Lab, Inc.
`is a defendant. -393 Dkt. No. 293. Kaspersky does not oppose the Motion.
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`1
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 3 of 7 PageID #: 7544
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`Applications that do not have such a relationship are “presented to the patent office as patently
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`distinct inventions,” and for that reason the intrinsic record of one is not automatically part of the
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`intrinsic record of the other. Abbott Laboratories v. Dey, L.P., 287 F.3d 1097, 1104-05 (Fed. Cir.
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`2002). Patents are not formally related simply because their applications are commonly owned, or
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`have an overlap of inventors, or have similar subject matter. Id.
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`Although Big Fish argues there was only a partial overlap of inventors in Abbott, Opp. at
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`13-14, the same was true here. Big Fish also argues here the applications were filed the same day,
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`but simultaneous filing does not create the familial relationship Abbott required. In fact, Abbott
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`itself cited as support for its holding In re Berg, 140 F.3d 1428, 1435 n. 7 (Fed. Cir. 1998), in
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`which two applications had been filed the same day by the same inventor, without effecting a
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`familial relationship. Abbott, 287 F.3d at 1105.
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`Finally, Big Fish argues the Court should make an exception to Abbott because the ’578
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`application incorporated the ’466 Application2 by reference. But Goldenberg v. Cytogen, Inc., 373
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`F.3d 1158, 1167 (Fed. Cir. 2004) would reject that argument. Goldenberg also involved two patent
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`applications (the ’261 and ’262 applications) filed the same day, and the ’262 application had been
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`cited in the prosecution of the ’261 application. Because there was no familial relationship the
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`court excluded from the intrinsic record of the ’261 application events in the prosecution history
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`of the ’262 application other than at the ’261 application itself. Id. at 1167 (“this court’s precedent
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`takes a narrow view on when a related patent or its prosecution history is available to construe the
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`claims of a patent at issue and draws a distinct line between patents that have a familial relationship
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`and those that do not”).
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`2 To avoid confusion, this Reply will use the capitalized terms “’466 Application” to refer to the
`application for the ’466 patent and “’466 Prosecution History” to refer to the non-incorporated
`portion of the prosecution history that followed the filing of the ’466 Application.
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`2
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 4 of 7 PageID #: 7545
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`Big Fish attempts to distinguish Goldenberg as involving new material subsequently added
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`through a continuation in part. Opp at 14. But the court excluded that material because, unlike the
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`’262 application, it had not been incorporated. The same is true here.
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`Big Fish cites Microsoft Corp. v. Multi-Tech Systems, Inc., 357 F.3d 1340 (Fed. Cir. 2004),
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`and five other cases that found statements made in the prosecution of other patents to have been
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`relevant to claim construction of a patent in suit. Opp. at 10-11. But in all six3 of those cases –
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`unlike here – the patents had a familial relationship, and thus were not subject to the absolute bar
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`Abbott imposed.
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`In any event, even if the ’466 and ’578 patents had had a familial relationship, the
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`applicants’ arguments in the ’466 Prosecution History cited in the Opinion, Dkt. No. 233 (“Opin.”)
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`at 29-30, would not support narrowing of the ’578 patent’s claims beyond their ordinary meaning.
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`The Opinion cited as its sole support for its construction of “application program,” the statement
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`in the Prosecution History of the ’466 patent:
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`an instance of the application program is requested through the desktop but executes locally
`at the client as a separate application from the browser interface. For example, Lotus Notes
`would not execute within the browser window.
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`Opin. at 20. But, as the Motion (at 8-10) explains, that statement was not directed to the meaning
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`of “application program.” The applicants were simply explaining the claimed invention of the ’466
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`patent executed locally at the client. All the claims of the ’466 patent contained the language
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`“provid[e]an instance of [the selected] application program[] to the client for execution responsive
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`3 Microsoft, 357 F.3d at 1342 (same parent application); Alexsam, Inc. v. Best Buy Co., Inc., No.
`2: 10CV93, 2012 WL 1188406 (E.D. Tex. April 9, 2012) (continuation); Omega Eng’g, Inc. v.
`Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (continuation-in-part); Teva Pharms USA, Inc. v.
`Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (continuations); Capital Mach. Co., Inc. v. Miller
`Veneers, Inc., 524 Fed. Appx 644, 649 (Fed. Cir. 2013) (parent or child); Verizon Servs. Corp. v.
`Vonage Holdings Corp., 503 F.3d 1295, 1306-07 (Fed. Cir. 2007)(divisional).
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`3
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 5 of 7 PageID #: 7546
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`to the selection” (emphasis added), which language does not appear in the asserted claims of the
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`’578 patent, or the ’293 patent. The asserted claims of the ’578 and ’293 patents, normally
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`construed, would thus include all applications, including those executed within the browser
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`window.
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`3. The prosecution history of the ’766 patent cannot be used to create an estoppel.
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`Nothing in the prosecution history of the ’766 patent contradicts Dr. Shamos’s evidence
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`the art’s use of “application launcher” to describe “a computer program that launches, i.e., starts,
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`another computer program,” would have been broad enough to include its launching the program
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`on either a client or a server.
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`At some point during the prosecution history of the ’766 patent, well after the ’578 patent
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`had issued, the examiner cited three prior art references, which the applicants then distinguished
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`by describing features of those references in a way Big Fish argues would have created an estoppel
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`as to the ’766 patent.4 Opp. at 10-12.
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`The Motion, citing Microsoft, raised two separate arguments why such an estoppel would
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`not have extended to the ’578 patent. First, the court should “limit [the] relevance” of statements
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`in the prosecution history of another patent to “interpretation of the [other patent] only” where
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`those statements “refer more specifically to the references cited against the claims of [that other]
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`patent only.” Microsoft, 357 F.3d at 1349 n. 5. Big Fish does not dispute the statements listed in
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`the Order (at 29) clearly fall in that category. On that basis alone, the Court should reject an
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`estoppel here.
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`4 Whether those statements would actually create an estoppel, even as to claims of the ’766
`patent, is doubtful. See Dkt. No. 165 at 8-10.
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`4
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 6 of 7 PageID #: 7547
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`Second, Microsoft recognized an earlier (and thus binding) opinion, Georgia-Pacific Corp.
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`v. United States Gypsum Co., 195 F.3d 1322, 1333 (Fed. Cir. 1999), had “rejected the argument
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`that the patentee was bound, or estopped, by a statement made in connection with a later
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`application on which the examiner of the first application could not have relied.” 357 F.3d at 1350.
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`That test was clearly met here. See, Dkt. No. 344 at 7. Big Fish cites language from Microsoft that
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`statements in another patent’s prosecution history may be considered for their relevance as to a
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`common term. But as Microsoft described, where “intrinsic evidence supported that broader
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`construction,” Georgia Pacific would control, because any narrowing could be based not on
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`relevance, but only upon an estoppel.
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`4. The Court may reconsider its construction.
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`If the Motion has succeeded in pointing out errors in the existing claim construction, it
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`would be in everyone’s interest – including Big Fish’s – to correct them now before subjecting
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`them to de novo review. In addition, twelve other cases on these patents are pending before six
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`other district court judges in various locations around the country. Motions based upon the Opinion
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`have already been filed in two of those actions, and in the others those judges are likely to await
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`this Court’s ruling on this Motion.
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`Plaintiffs did not waive their objections. They filed a motion for reconsideration before
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`dismissal, Dkt. No. 266, which this Court denied as moot because of the ineligibility ruling Dkt.
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`No. 267. Big Fish cites no case where, in the absence of a final judgment on the issue of claim
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`construction, a plaintiff was required to gratuitously argue that issue in an appeal of a judgment
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`based on other grounds.
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`5
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`Case 2:16-cv-00741-RWS Document 353 Filed 12/03/19 Page 7 of 7 PageID #: 7548
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`Date: December 3, 2019
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`Respectfully submitted,
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`/s/ James J. Foster
`Paul J. Hayes
`James J. Foster
`Kevin Gannon
`Prince Lobel Tye LLP
`One International Place - Suite 3700
`Boston, MA 02110
`Tel: 617-456-8000
`Email: phayes@princelobel.com
`Email: jfoster@princelobel.com
`Email: kgannon@princelobel.com
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`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
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`ATTORNEYS FOR THE PLAINTIFFS
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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 December 3, 2019.
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`/s/ James J. Foster
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