THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT,
`LLC
`
`v.
`
`HUAWEI DEVICE USA INC., et al.
`
`
`
`
`
` CASE NO. 2:17-CV-513-JRG
`
`
`§
`§
`§
`§
`§
`§
`§
`
`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
`
`Before the Court is the Opening Claim Construction Brief (Dkt. No. 165) filed by Plaintiff
`
`
`
`
`
`
`AGIS Software Development, LLC (“Plaintiff” or “AGIS”). Also before the Court are Defendants
`
`Huawei Device USA Inc., Huawei Device Co., Ltd., Huawei Device (Dongguan) Co., Ltd.
`
`(“Huawei”), HTC Corporation (“HTC”), LG Electronics Inc. (“LG”), Apple Inc. (“Apple”), and
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`ZTE (USA) Inc., and ZTE (TX), Inc.’s (“ZTE’s”) (collectively, “Defendants’”) Responsive Claim
`
`Construction Brief (Dkt. No. 175) and Plaintiff’s reply (Dkt. No. 186).1,2
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`
`
`
`
`
`
`1 On August 22, 2018, the Court consolidated the following cases, Agis Software Development LLC v. LG Electronics,
`Inc., 2:17-cv-515 (the “LG case”) and Agis Software Development LLC v. ZTE Corporation et al., 2:17-cv-517 (the
`“ZTE case”), under a new lead case, Agis Software Development LLC v. HTC Corporation, 2:17-cv-514 (the “HTC
`case”). (2:17-cv-514, Dkt. No. 57.) The Court set a Markman Hearing for the HTC case on December 17, 2018.
`(Id.) In addition, on September 28, 2018, the Court unconsolidated and transferred the ZTE case to the Northern
`District of California. (2:17-cv-514, Dkt. No. 78); (2:17-cv-513, Dkt. No. 203); (2:17-cv-517, Dkt. No. 85.)
`2 All citations to docket entries refer to entries in Case No. 2:17-cv-513.
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`
`Table of Contents
`
`I. BACKGROUND ....................................................................................................................... 3
`II. LEGAL PRINCIPLES ........................................................................................................... 4
`III. AGREED TERMS................................................................................................................. 8
`IV. DISPUTED TERMS .............................................................................................................. 9
`A. “a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations” ........................................................................ 9
`B. “means for attaching a forced message alert software packet to a voice or text message
`creating a forced message alert that is transmitted by said sender PDA/cell phone to the
`recipient PDA/cell phone, . . .” ........................................................................................... 11
`C. “[means for . . .] requiring the forced message alert software on said recipient PDA/cell
`phone to transmit an automatic acknowledgment to the sender PDA/cell phone as soon
`as said forced message alert is received by the recipient PDA/cell phone” ....................... 18
`D. “means for requiring a required manual response from the response list by the recipient
`in order to clear recipient’s response list from recipient’s cell phone display” .................. 20
`E. “means for receiving and displaying a listing of which recipient PDA/cell phones have
`automatically acknowledged the forced message alert and which recipient PDA/cell
`phones have not automatically acknowledged the forced message alert” .......................... 23
`F. “means for periodically resending said forced message alert to said recipient PDA/cell
`phones that have not automatically acknowledged the forced message alert” ................... 25
`G. “means for receiving and displaying a listing of which recipient PDA/cell phones have
`transmitted a manual response to said forced message alert and details the response
`from each recipient PDA/cell phone that responded” ........................................................ 28
`H. Claim 54 of the ’838 Patent, Claims 24, 29, and 31 of the ’251 Patent, Claims 28, 32,
`33, 34, and 36 of the ’055 Patent, and Claim 68 of the ’829 Patent ................................... 30
`I. “a forced message alert software application program” ....................................................... 36
`J. “manual response” ................................................................................................................ 39
`K. “the repeating voice alert” .................................................................................................. 42
`L. “group” ................................................................................................................................ 44
`M. “receiving a message from a second device” ..................................................................... 49
`N. “an identifier corresponding to the group” ......................................................................... 53
`O. “database of entities” .......................................................................................................... 54
`P. “Short Message Service (SMS) messages” ......................................................................... 56
`Q. “the other symbol” .............................................................................................................. 57
`R. “user selection of the sub-net” ............................................................................................ 57
`V. CONCLUSION...................................................................................................................... 59
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`I. BACKGROUND
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`
`
`Plaintiff brings suit alleging infringement of United States Patents Nos. 8,213,970 (“the
`
`’970 Patent”), 9,408,055 (“the ’055 Patent”), 9,445,251 (“the ’251 Patent”), 9,467,838 (“the ’838
`
`Patent”), and 9,749,829 (“the ’829 Patent”) (collectively, “the patents-in-suit”). (See Dkt. No. 165,
`
`Exs. A–E.)
`
`
`
`The ’970 Patent, titled “Method of Utilizing Forced Alerts for Interactive Remote
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`Communications,” issued on July 3, 2012, and bears an earliest priority date of September 21,
`
`2004. The Abstract of the ’970 Patent states:
`
`The system and method having a specialized software application on a personal
`computer or a PDA/cell phone that that [sic] enables a participant to force an
`automatic acknowledgement and a manual response to a text or voice message from
`other participants within the same network. Each participant’s PDA/cell phone
`includes a force message alert software application program for both creating and
`processing these forced message alerts. The system and method enabled by the
`force message alert software application program provides the ability to (a) allow
`an operator to create and transmit a forced message alert from a sender PDA/cell
`phone to one or more recipient PCs and PDA/cell phones within the communication
`network; (b) automatically transmit an acknowledgement of receipt to the sender
`PDA cell phone upon the receipt of the forced message alert; (c) periodically resend
`the message to the recipient PCs and PDA/cell phones that have not sent an
`acknowledgement; (d) provide an indication of which recipient PCs and PDA/cell
`phones have acknowledged the forced message alert; (e) provide a manual response
`list on the display of the recipient PC and PDA/cell phone’s display that can only
`be cleared by manually transmitting a response; and (f) provide an indication on the
`sender PDA/cell phone of the status and content the [sic] manual responses.
`
`The ’838 Patent, titled “Method to Provide Ad Hoc and Password Protected Digital and
`
`
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`Voice Networks,” issued on October 11, 2016, and bears an earliest priority date of September 21,
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`2004. The Abstract of the ’838 Patent states:
`
`A method and system includes the ability for individuals to set up an ad hoc digital
`and voice network easily and rapidly to allow users to coordinate their activities by
`eliminating the need for pre-entry of data into a web or identifying others by name,
`phone numbers or email. This method is especially useful for police, fire fighters,
`military, first responders or other emergency situations for coordinating different
`organizations at the scene of a disaster to elevate conventional communication
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`problems either up and down the chain of command or cross communication
`between different emergency units. The method and system provides that the users
`are only required to enter a specific Server IP address and an ad hoc event name, a
`password and perhaps the name of the particular unit.
`
`The ’055 Patent, the ’251 Patent, and the ’829 Patent resulted from continuations of the
`
`
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`’838 Patent. Plaintiff asserts the ’829 Patent only against Apple. (See Dkt. No. 162, at 2 n.1.)
`
`
`
`Plaintiff has noted that the priority date for the patents-in-suit may be in dispute. (See Dkt.
`
`No. 165, at 3 n.2.) The parties have not shown that any such dispute would have an impact on
`
`how a person of ordinary skill in the art would understand the patents-in-suit.
`
`II. LEGAL PRINCIPLES
`
`
`
`Claim construction is an issue of law for the court to decide. Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). It
`
`is understood that “[a] claim in a patent provides the metes and bounds of the right which the
`
`patent confers on the patentee to exclude others from making, using or selling the protected
`
`invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
`
`
`
`“In some cases, however, the district court will need to look beyond the patent’s intrinsic
`
`evidence and to consult extrinsic evidence in order to understand, for example, the background
`
`science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms.
`
`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
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`subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
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`extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
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`discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”
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`Id. (citing 517 U.S. 370).
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`
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
`
`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
`
`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
`
`they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
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`which explains the invention and may define terms used in the claims. Id. “One purpose for
`
`examining the specification is to determine if the patentee has limited the scope of the claims.”
`
`Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`
`
`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
`
`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
`
`lexicographer, but any special definition given to a word must be clearly set forth in the
`
`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
`
`Although the specification may indicate that certain embodiments are preferred, particular
`
`embodiments appearing in the specification will not be read into the claims when the claim
`
`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
`
`
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
`
`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the patentee
`
`is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
`
`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
`
`are generally given their ordinary and customary meaning. Id. The ordinary and customary
`
`meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
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`inventors are usually persons who are skilled in the field of the invention and that patents are
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`addressed to, and intended to be read by, others skilled in the particular art. Id.
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`
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
`
`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
`
`the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long
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`ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions
`
`of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
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`language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
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`the specification, the Phillips court quoted with approval its earlier observations from Renishaw
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`PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
`
`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
`
`plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”
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`it may lack the clarity of the specification and thus be less useful in claim construction proceedings.
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`Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
`
`of how the inventor understood the invention and whether the inventor limited the invention during
`
`prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
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`Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
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`prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
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`
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
`
`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The court
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`did not impose any particular sequence of steps for a court to follow when it considers disputed
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`claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
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`weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
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`the general rule that the claims measure the scope of the patent grant.
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`
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`The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
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`patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
`
`in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
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`legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
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`claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
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`(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
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`S. Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co.
`
`v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
`
`III. AGREED TERMS
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`
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`In their July 23, 2018 Updated Joint Claim Construction and Prehearing Statement, the
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`parties stated that “the parties have been unable to agree on the constructions of any claim terms
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`at issue in this case.” (Dkt. No. 162, at 2.)
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`IV. DISPUTED TERMS
`
`A. “a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations”
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Governed by 35 U.S.C. § 112(6)
`
`Function:
`“facilitating the transmission of electronic
`files between said PDA/cell phones in
`different locations”
`
`Structure:
`Communication network server, ’970
`Patent at 2:36–43; 4:1–36.3
`
`
`Governed by 35 U.S.C. § 112(6)
`
`Function:
`“facilitating the transmission of electronic
`files between said PDA/cell phones in
`different locations”
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure:
`No sufficient corresponding structure
`disclosed. To the extent any structure is
`disclosed, it is a general purpose PDA or cell
`phone for implementing an undisclosed
`algorithm. The disclosures set forth at ’970
`Patent at 1:39–43; 2:36–43; 4:1–36; Figs. 2,
`3A, 3B, and 4. ’970 File History, Application
`12/324,122, Claims, 2008-11-26 do not
`provide an algorithm that corresponds to the
`claimed function.
`
`
`(Dkt. No. 162, App’x 1, at 1; Dkt. No. 165, at 4–5.) The parties submit that this term appears in
`
`Claim 1 of the ’970 Patent. (Dkt. No. 162, App’x 1, at 1.)
`
`
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`Plaintiff has argued that to the extent that Defendants are arguing that the disclosure fails
`
`to satisfy the algorithm requirement for computer-implemented means-plus-function terms, no
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`algorithm is necessary where the functions can be accomplished by a general purpose computer
`
`without special programming. (Dkt. No. 165, at 7.) Plaintiff has also submitted that Defendants
`
`
`3 Plaintiff previously proposed: “Communication network server, ’970 Patent at 1:39–43; 2:36–
`43; 4:1–36; Figs. 2, 3A, 3B, and 4.” (Dkt. No. 165, at 4–5.)
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`Apple, Huawei, and LG have identified corresponding structure in inter partes review (“IPR”)
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`petitions. (Id., at 5.)
`
`
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`Defendants respond that “Defendants will agree to AGIS’s proposed constructions (as
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`revised and reflected in the parties’ July 23, 2018 Joint Claim Construction Chart and Prehearing
`
`Statement)” for this term. (Dkt. No. 175, at 15 n.10.) Plaintiff’s reply brief acknowledges this
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`agreement. (See Dkt. No. 186, at 1 n.1.) This agreement also appears in the parties’ August 27,
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`2018 Joint Claim Construction Chart. (See Dkt. No. 194, App’x A, at 1–2.) At the September 13,
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`2018 hearing, the parties clarified that they have agreed that the corresponding structure is
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`“communications network server.”
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`
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`The Court therefore finds, as now agreed-upon by the parties, that “a data transmission
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`means that facilitates the transmission of electronic files between said PDA/cell phones in
`
`different locations” is a means-plus-function term, the claimed function is “facilitating the
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`transmission of electronic files between said PDA/cell phones in different locations,” and the
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`corresponding structure is “communications network server; and equivalents thereof.”
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`B. “means for attaching a forced message alert software packet to a voice or text message
`creating a forced message alert that is transmitted by said sender PDA/cell phone to the
`recipient PDA/cell phone, . . .”
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Governed by 35 U.S.C. § 112(6)
`
`Function:
`“attaching a forced message alert software
`packet to a voice or text message creating a
`forced message alert that is transmitted by
`said sender PDA/cell phone to the recipient
`PDA/cell phone”
`
`Structure:
`Algorithm set forth in Fig 2, 3A, 3B[,]
`7:8–63.
`
`
`Governed by 35 U.S.C. § 112(6)
`
`Function:
`“attaching a forced message alert software
`packet to a voice or text message creating a
`forced message alert that is transmitted by
`said sender PDA/cell phone to the recipient
`PDA/cell phone, said forced message alert
`software packet containing a list of possible
`required responses”
`
`Indefinite under 35 U.S.C. § 112(b)
`
`Structure:
`No sufficient corresponding structure
`disclosed. To the extent any structure is
`disclosed, it is a general purpose PDA or cell
`phone for implementing an undisclosed
`algorithm. The disclosures set forth at ’970
`Patent at Fig 2, 3A, 3B[,] 7:8–63. ’970 File
`History, Application 12/324,122, Claims,
`2008-11-26 do not provide an algorithm that
`corresponds to the claimed function.
`
`
`(Dkt. No. 162, App’x 1, at 3; Dkt. No. 165, at 7; Dkt. No. 186, at 1; Dkt. No. 194, App’x A, at 2–
`
`3.) The parties submit that this term appears in Claim 1 of the ’970 Patent. (Dkt. No. 162, App’x
`
`1, at 3.)
`
`
`
`
`
`(1) The Parties’ Positions
`
`Plaintiff argues that Defendants’ proposal of “said forced message alert software packet
`
`containing a list of possible required responses” “does not describe the function of the ‘means for
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`attaching,’ but merely identifies a structural requirement for the packet which is attached.” (Dkt.
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`No. 165, at 8.) As to corresponding structure, Plaintiff submits that Figure 3A “details the
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`operation of attaching a forced message alert packet to a voice or text message.” (Id.) Plaintiff
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`also submits that Defendants Apple, Huawei, and LG have identified corresponding structure in
`
`IPR petitions. (Id., at 7.)
`
`
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`Defendants respond that their proposal for the claimed function is necessary and has an
`
`impact on whether the specification discloses sufficient corresponding structure. (Dkt. No. 175,
`
`at 16.)
`
`
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`Plaintiff replies that “the term ‘said forced message alert software packet containing a list
`
`of possible required responses’ is separated from the ‘means for attaching’ by a comma, and is
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`thus a different structural limitation.” (Dkt. No. 186, at 2.) Plaintiff also argues that, “[r]egarding
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`the sufficiency of the algorithm, AGIS and its expert assert that the flowchart in Figure 3A is the
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`algorithm.” (Id., at 2; see id., at 3.)
`
`
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`
`
`(2) Analysis
`
`Title 35 U.S.C. § 112, ¶ 6 provides: “An element in a claim for a combination may be
`
`expressed as a means or step for performing a specified function without the recital of structure,
`
`material, or acts in support thereof, and such claim shall be construed to cover the corresponding
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`structure, material, or acts described in the specification and equivalents thereof.”
`
`
`
`The parties disagree about whether the claimed function includes “said forced message
`
`alert software packet containing a list of possible required responses.”
`
`Claim 1 of the ’970 Patent recites (emphasis added):
`
`1. A communication system for transmitting, receiving, confirming receipt, and
`responding to an electronic message, comprising:
`
`a predetermined network of participants, wherein each participant has a
`similarly equipped PDA/cell phone that includes a CPU and a touch screen display
`a CPU [sic] and memory;
`
`a data transmission means that facilitates the transmission of electronic files
`between said PDA/cell phones in different locations;
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`a sender PDA/cell phone and at least one recipient PDA/cell phone for each
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`electronic message;
`
`a forced message alert software application program including a list of
`required possible responses to be selected by a participant recipient of a forced
`message response loaded on each participating PDA/cell phone;
`means for attaching a forced message alert software packet to a voice or
`
`text message creating a forced message alert that is transmitted by said sender
`PDA/cell phone to the recipient PDA/cell phone, said forced message alert
`software packet containing a list of possible required responses and requiring the
`forced message alert software on said recipient PDA/cell phone to transmit an
`automatic acknowledgment to the sender PDA/cell phone as soon as said forced
`message alert is received by the recipient PDA/cell phone;
`
`means for requiring a required manual response from the response list by
`the recipient in order to clear recipient’s response list from recipient’s cell phone
`display;
`
`means for receiving and displaying a listing of which recipient PDA/cell
`phones have automatically acknowledged the forced message alert and which
`recipient PDA/cell phones have not automatically acknowledged the forced
`message alert;
`
`means for periodically resending said forced message alert to said recipient
`PDA/cell phones that have not automatically acknowledged the forced message
`alert; and
`
`means for receiving and displaying a listing of which recipient PDA/cell
`phones have transmitted a manual response to said forced message alert and details
`the response from each recipient PDA/cell phone that responded.
`
`This “means for attaching . . .” limitation should be read as a whole, in particular as to the
`
`
`
`limitations of “said forced message alert software packet containing . . . and requiring . . . .”
`
`Plaintiff has failed to persuasively support its contention that this means-plus-function term ends
`
`with the comma. (Dkt. No. 186, at 2 & 4.) Instead, the entire limitation is limiting as part of this
`
`means-plus-function term. See Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308,
`
`1319 (Fed. Cir. 2003) (“In identifying the function of a means-plus-function claim, a claimed
`
`function may not be improperly narrowed or limited beyond the scope of the claim language.
`
`Conversely, neither may the function be improperly broadened by ignoring the clear limitations
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`contained in the claim language.”) (citing Micro Chem. Inc. v. Great Plains Chem. Co., 194 F.3d
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`1250, 1258 (Fed. Cir. 1999)).
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`As to the corresponding structure, the parties agree that an algorithm is required. See WMS
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`Gaming Inc. v. Int’l Gaming Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (“In a means-plus-
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`function claim in which the disclosed structure is a computer, or microprocessor, programmed to
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`carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the
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`special purpose computer programmed to perform the disclosed algorithm.”); see also Blackboard,
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`Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384–85 (Fed. Cir. 2009) (rejecting argument that “a
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`person skilled in the art could readily fashion a computer-based means for performing the
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`[claimed] function”).
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`Plaintiff has cited Figure 3A of the ’970 Patent as setting forth an algorithm for the claimed
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`function. Figure 3A of the ’970 Patent is reproduced here:
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`Plaintiff has not shown, however, that any disclosure in Figure 3A is clearly linked to the
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`claimed function of attaching a forced message alert that contains a list of possible required
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`responses and that also requires transmission of an automatic acknowledgement. See Williamson
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`v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (“Structure disclosed in the
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`specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or
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`associates that structure to the function recited in the claim.”) (citations omitted; emphasis added).
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`Nonetheless, the written description discloses:
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`Referring now to FIG. 2, in order to set up a communication network that utilizes
`the forced message alert system, the forced message alert software application
`program must be installed on a plurality of PCs and/or PDA/cell phones. The
`application will provide for a forced alert message that can be designated for
`transmission according to several criteria: a.) A single PC and/or PDA/cell phone,
`b.) The list of users currently participating in the network, and c.) A user or
`administrator predefined list of network participants.
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` A
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` required response list which will be either preinstalled in the phone application
`software or sent with the forced message alert will be presented to the user operator
`upon receipt of the forced message. When the forced text or voice alert is received,
`the user operator is presented with the required response list. In order to clear the
`forced text message alert from the user operator’s PC or PDA/cell phone display,
`the user operator is required to select a reply from this list. If the alert is a voice
`message, the message keeps repeating at a defined rate until the user operator
`selects from the required response list. A military default response list would
`typically consist of choices such as, “will comply,” “will not comply,” and “have
`complied.” However, depending on the nature of the industry in which the users in
`the communication network are in, this default response list could vary
`significantly.
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` *
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` * *
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`Referring now to FIG. 3A and FIG. 3B, the process of sending a forced message
`alert from a PC or PDA/cell phone begins with a sender selecting the forced
`message alert software application program on a sender PC or PDA/cell phone. The
`sender can then select by said sender PC or PDA/cell phone to type a text message
`or record a voice message or select the text alert or voice alert from a list. . . . The
`response list from which the message receiver must select can either be included in
`the forced alert message or be preloaded in each phone. The forced alert message
`is then transmitted via TCP/IP or other digital transmission means to every PC or
`PDA/cell phone designated to receive the forced message alert either directly or
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`through a server whose function is to retransmit the messages to the correct users
`in the communications network.
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`After the forced message alert is transmitted, the sender PC or PDA/cell phone
`monitors for and receives electronic transmissions with acknowledgments of
`receipt from the PCs or PDA/cell phones that have received the forced message
`alert. . . .
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` *
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` * *
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`Referring now to FIG. 4, the process of receiving, acknowledging and responding
`to a forced message alert from the sender PC or PDA/cell phone begins when an
`electronic transmission is received by a recipient PC or PDA/cell phone. . . .
`Immediately following the detection of the forced message alert,