Case 2:19-cv-00172-JRG-RSP Document 109 Filed 05/11/20 Page 1 of 70 PageID #: 3465
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`GREE, INC.,
`
`
`
`
`
`v.
`
`Plaintiff,
`
`SUPERCELL OY,
`
`
`Defendant.
`
`
`
`
`
`Case No. 2:19-cv-00070-JRG-RSP
`Case No. 2:19-cv-00172-JRG-RSP
`
`CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
`
`This Order addresses the claim-construction disputes presented by the parties in Case No.
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`2:19-cv-00070-JRG-RSP (the “’070 Case”) and Case No. 2:19-cv-00172-JRG-RSP (the “’172
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`Case”). Before the Court is the opening claim construction briefs of GREE, Inc. (“Plaintiff”) (’070
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`Case Dkt. No. 115 and ’172 Case Dkt. No. 71, both filed on Feb. 25, 2020),1 the responses of
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`Supercell Oy (“Defendant”) (’070 Case Dkt. No. 126 and ’172 Case Dkt. No. 79, both filed under
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`seal on Mar. 10, 2020), and Plaintiff’s replies (’070 Case Dkt. No. 130 and ’172 Case Dkt. No. 82,
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`both filed on Mar. 17, 2020). The Court held a hearing on the issues of claim construction and
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`claim definiteness on April 14, 2020. Having considered the arguments and evidence presented by
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`the parties at the hearing and in their briefing, the Court issues this Order.
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`
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`1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
`are to the page numbers assigned through ECF.
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`1
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`Table of Contents
`
`I.
`
`II.
`
`BACKGROUND ............................................................................................................... 4
`A.
`The ’137 and ’481 Patents ...................................................................................... 4
`B.
`The ’873 and ’302 Patents ...................................................................................... 5
`C.
`The ’655 Patent ....................................................................................................... 6
`LEGAL PRINCIPLES ..................................................................................................... 7
`A.
`Claim Construction ................................................................................................. 7
`B.
`Departing from the Ordinary Meaning of a Claim Term ...................................... 10
`C.
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 11
`III. AGREED CONSTRUCTIONS...................................................................................... 12
`IV. CONSTRUCTION OF DISPUTED TERMS ............................................................... 12
`A.
`Case No. 2:19-cv-070 ........................................................................................... 12
`A-1.
`“player character” ..................................................................................... 12
`A-2.
`“game content”.......................................................................................... 15
`A-3. The Selection of Game Content Terms ..................................................... 17
`A-4. The “Point” and “Parameter Value” Terms .............................................. 20
`A-5.
`“when a sum of the points …” .................................................................. 23
`A-6.
`“at appropriate timing” ............................................................................. 25
`A-7.
`“in a state being identical to or different from the state of being
`displayed in the first field” ........................................................................ 28
`“possessed objects” ................................................................................... 30
`A-8.
`“request for transfer”................................................................................. 33
`A-9.
`A-10. “in response to the request for transfer” ................................................... 35
`A-11. “second object” ......................................................................................... 36
`A-12. “transfer information” ............................................................................... 40
`A-13. “grant the second object …,” “granting, by the server, the second
`object …,” and “granting the second object …”....................................... 42
`A-14. “notifying the device of the second user that the first object is
`transferred, or that the second object is granted” ...................................... 46
`A-15. “shooting effective range” ........................................................................ 47
`A-16. “touch operation” ...................................................................................... 49
`A-17. The Display-a-Frame Terms ..................................................................... 53
`A-18. “identify a second touch operation at the touch panel as an
`instruction for an attack when the first frame is displayed” ..................... 57
`Case No. 2:19-cv-172 ........................................................................................... 59
`B-1.
`“shooting effective range” ........................................................................ 59
`
`B.
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`2
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`“first touch operation” and “second touch operation” .............................. 60
`B-2.
`B-3. The Display-a-Frame Terms ..................................................................... 62
`B-4.
`“identify a second touch operation at the touch panel as an
`instruction for an attack when the frame is displayed” and “second
`touch operation in the frame” ................................................................... 64
`“first frame” .............................................................................................. 65
`B-5.
`“a slide operation”..................................................................................... 68
`B-6.
`CONCLUSION ............................................................................................................... 70
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`V.
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`3
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`Case 2:19-cv-00172-JRG-RSP Document 109 Filed 05/11/20 Page 4 of 70 PageID #: 3468
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`I.
`
`BACKGROUND
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`In the two cases addressed in this Order, Plaintiff alleges infringement of five U.S. Patents. In
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`the ’070 Case, Plaintiff asserts four U.S. Patents: No. 9,604,137 (the “’137 Patent”), No. 9,774,655
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`(the “’655 Patent”), No. 9,795,873 (the “’873 Patent”), and No. 9,956,481 (the “’481 Patent”). In
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`the ’172 Case, Plaintiff asserts U.S. Patent No. 10,286,302 (the “’302 Patent”). The ’137, ’655,
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`’873, ’481, and ’302 Patents are collectively referred to herein as the “Asserted Patents.”
`
`A. The ’137 and ’481 Patents
`
`The ’137 Patent and ’481 Patent are related through a priority claim. The ’481 Patent purports
`
`to be a continuation of the application that issued as the ’137 Patent. They each list an earliest
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`priority claim to a foreign application filed on March 4, 2013.
`
`The abstract of the ’137 Patent provides:
`
`A server provides a game that improves the interest in and taste of a battle event
`and increases the interest in and real enjoyment of the entire game. The server
`includes an information storage device that stores information related to the game,
`and a controller that accesses the information, performs various computations, and
`displays game images on a terminal device. In a battle event of this game, multiple
`character cards are aligned and displayed in a first field, and a player selects
`therefrom a character card to be used for a battle with an enemy character. The first
`field is replenished with another character card alternative to the selected character
`card as needed so that the player can further select an additional character card
`therefrom.
`
`The abstract of the ’481 Patent provides:
`
`A recording medium and server provide a game that improves the interest in and
`taste of a battle event and increases the interest in and real enjoyment of the entire
`game. The recording medium provides a game including a predetermined battle
`event comprising at least one battle. In a battle event of this game, game contents
`are displayed in a first field, and a player selects therefrom a game content to be
`used for a battle with an enemy character. The first field is replenished with another
`game content alternative to the selected game content as needed so that the player
`can further select an additional game content therefrom.
`
`Claim 1 of the ’137 Patent, an exemplary server claim, recites as follows, with disputed claim
`
`language emphasized:
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`4
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`1. A server connected to a terminal device operated by a player through a
`communication line to provide a game including a predetermined battle event
`comprising at least one battle, comprising:
`an information storage device that stores information related to the game; and
`a controller that accesses the information, performs computation on the game,
`and displays images of the game on the terminal device, wherein
`the information storage device holds, as part of the information related to the
`game, plural kinds of player characters and at least one kind of enemy
`character associated with the predetermined battle event, information on a
`game content corresponding to each of the player characters, a point set for
`each of the player characters and/or each of the game contents, and
`information on an upper limit of a point set for the battle or the
`predetermined battle event,
`the controller displays a plurality of the game contents in a first field on the
`terminal device so that the player can select at least one desired game content
`from the plurality of the game contents to attack the enemy character in the
`predetermined battle event, and
`the controller permits the player to select the game contents when a sum of the
`points of the player characters and/or the game content selected by the
`player is less than or equal to the upper limit of the point, and
`the controller sequentially subtracts the point of the selected game content from
`the upper limit of the point, and adds a predetermined amount to the upper
`limit of the point at appropriate timing or restores the upper limit of the point.
`
`B. The ’873 and ’302 Patents
`
`The ’873 Patent and ’302 Patent are related through a priority claim. The ’302 Patent purports
`
`to be a continuation of the application that issued as the ’873 Patent. They each list an earliest
`
`priority claim to a foreign application filed on February 26, 2013.
`
`The abstracts of the ’873 and ’302 Patents are identical and provide:
`
`According to one embodiment, a shooting game control method, which is executed
`by a computer incorporated in a device including a display and a touch panel,
`includes accepting a touch operation on the touch panel; displaying a first frame
`indicative of a shooting effective range on the display in accordance with a position
`of the touch operation; accepting an instruction for an attack on an attack target in
`a state in which the first frame is displayed; determining whether the attack target
`in a game image displayed on the display is within the first frame or not, at a time
`point when the instruction for the attack has been accepted; and con- trolling the
`attack on the attack target in the game image in accordance with a result of the
`determining.
`
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`5
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`Claim 1 of the ’873 Patent, an exemplary computer-readable medium claim, recites as follows,
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`with disputed claim language emphasized:
`
`1. A non-transitory computer-readable medium including computer-program
`instructions, which when executed by an electronic device including a display
`configured to display a game image and a touch panel provided integral with the
`display, cause the electronic device to:
`identify a first touch operation on the touch panel;
`cause the display to display a first frame indicative of a shooting effective
`range in accordance with a position of the first touch operation;
`identify a second touch operation at the touch panel as an instruction for an
`attack when the first frame is displayed; and
`control to attack in accordance with a display position of the first frame when
`the instruction for the attack is identified.
`
`C. The ’655 Patent
`
`The ’655 Patent lists an earliest priority claim to a foreign application filed on September 20,
`
`2012.
`
`The abstract of the ’655 Patent provides:
`
`A server including a first storage module for storing possessed objects of a first user
`and a second user, a communication module for receiving from a device of the first
`user a request for transfer of an object from the first user to the second user, a second
`storage module for storing an object transfer relationship between the first user and
`the second user in response to the request for transfer, and a benefit granting module
`for granting a predetermined benefit to the second user if a condition for granting a
`benefit in relation to an object transfer relationship of the second user with other
`users is satisfied when an object is transferred in response to the request for transfer.
`
`Claim 1 of the ’655 Patent, an exemplary server claim, recites as follows, with disputed claim
`
`language emphasized:
`
`1. A server for providing a service to a plurality of devices respectively used
`by a plurality of users, and communicating with the plurality of devices, the
`server comprising:
`a storage medium for storing possessed objects respectively possessed by the
`plurality of users, acquired in the service and used in the service, wherein the
`storage medium stores, for each of the plurality of users, transfer
`information indicating a transfer or a user who has transferred an object to
`any of the plurality of the users;
`a communication module for sending, to a device of a first user among the
`plurality of users, display data for selecting a first object from the possessed
`
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`6
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`objects possessed by the first user and selecting a second user from the
`plurality of users, wherein the communication module receives from the
`device of the first user a request for transfer of the selected first object from
`the first user to the second user; and
`a processor configured to:
`update the transfer information of the second user in response to the request
`for transfer, for determining;
`determine whether the transfer information of the second user satisfies a
`condition for granting a second object when the first object is transferred in
`response to the request for transfer, for granting;
`grant the second object used in the service to the second user if the transfer
`information of the second user satisfies the condition for granting the
`second object; and
`for notifying control notifying the device of the second user that the first
`object is transferred, or that the second object is granted.
`
`II.
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`LEGAL PRINCIPLES
`
`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted)
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`(“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant
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`community at the relevant time.”) cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
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` “The claim construction inquiry . . . begins and ends in all cases with the actual words of the
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`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
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`all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
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`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)) overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed.
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`Cir. 2015). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
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`v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
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`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
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`improper to read limitations from a preferred embodiment described in the specification—even if
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`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history
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`may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
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`may aid a court in understanding the underlying technology and determining the particular
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`meaning of a term in the pertinent field, but an expert’s conclusory, unsupported assertions as to a
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`term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent
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`and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has
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`explained the role of extrinsic evidence in claim construction:
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`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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
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`B. Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
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`specification or during prosecution.”2 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
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`(Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
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`Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
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`2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
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`in two instances: lexicography and disavowal.”). The standards for finding lexicography or
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`disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
`
`
`2 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366
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`(“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a
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`claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded as
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`the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
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`“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
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`Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2
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`and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from
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`the perspective of one of ordinary skill in the art as of the time the application for the patent was
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`filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit to
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`comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson
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`Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in
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`effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.
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`Cir. 2012).
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`When a term of degree is used in a claim, “the court must determine whether the patent
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`provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
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`F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
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`used in a claim, “a court must determine whether the patent’s specification supplies some standard
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`for measuring the scope of the [term].” Ernie Ball, Inc. v. Earvana, LLC, 502 F. App'x 971, 980
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`(Fed. Cir. 2013) (citations omitted). The standard “must provide objective boundaries for those of
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`skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
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`III. AGREED CONSTRUCTIONS
`
`The parties have agreed to the following constructions set forth in their Joint Claim
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`Construction Charts (‘070 Case Dkt. No. 131; ’172 Case Dkt. No. 84).
`
`“second field”
`
`Term3
`
`Agreed Construction
`a field that is different from the first field
`
`’481 Patent Claims 1, 6, 7, 8
`•
`“second field different from the first field”
`
`•
`•
`
`’481 Patent Claim 4
`’137 Patent Claims 8, 10, 13
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`a field that is different from the first field
`
`Having reviewed the intrinsic and extrinsic evidence of record, the Court hereby adopts the
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`parties’ agreed constructions.
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`IV. CONSTRUCTION OF DISPUTED TERMS
`
`A. Case No. 2:19-cv-070
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`A-1. “player character”
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`Disputed Term
`
`“player character”
`
`•
`•
`
`’137 Patent Claims 1, 14, 16
`’481 Patent Claims 1, 7, 8
`
`Defendant’s Proposed
`Plaintiff’s Proposed
`Construction
`Construction
`plain and ordinary meaning characters on the second field
`of the game that correspond
`to game contents selected by
`a player
`
`
`
`
`3 For all term charts in this order, the listed claims are those identified by the parties in their Joint
`Claim Construction Charts.
`
`
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`12
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`The Parties’ Positions
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`Plaintiff submits: The term “player character” is composed of common words and is readily
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`understood without construction. Defendant’s proposed construction injects improper limitations.
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`For example, the requirement that the player character be on the second field contradicts an
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`embodiment in which player characters are displayed on the first field. ’070 Case Dkt. No. 115 at
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`13–14.
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`In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
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`its position: ’137 Patent col.13 ll.20–53, col.13 ll.64–66.
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`Defendant responds: The ’137 and ’481 Patents describe the player character as exclusively
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`displayed on the second field. This is expressed in Claims 1, 7, and 8 of the ’481 Patent. And the
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`independent claims of these patents express that the game contents correspond to the player
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`character. ’070 Case Dkt. No. 126 at 8–9.
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`In addition to the claims themselves, Defendant cites the following intrinsic evidence to
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`support its position: ’481 Patent figs.4–9, col.12 l.65, col.20 ll.41–44.
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`Plaintiff replies: Claim 1 of the ’137 Patent expressly allows that player characters may be
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`selected from the first field. ’070 Case Dkt. No. 130 at 6.
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`Analysis
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`The dispute distills to whether “player character” inherently has two attributes: (1) the
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`character is necessarily on the second field; and (2) the character necessarily corresponds to game
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`content. The term does not inherently have these attributes.
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`The correspond-to-game-contents attribute advocated by Defendant expressly appears in
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`some claims, and thus is not an inherent attribute of “player character.” For example, Claim 1 of
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`the ’137 Patent recites “information on a game content corresponding to each of the player
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`
`
`13
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`

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`Case 2:19-cv-00172-JRG-RSP Document 109 Filed 05/11/20 Page 14 of 70 PageID #: 3478
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`characters.” ’137 Patent col.29 ll.34–36. The Court understands that a player character corresponds
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`to the game content “corresponding to each of the player characters” and thus the limitation
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`Defendant advocates is otherwise found in the claims and should not be read as an inherent
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`attribute of “player character.” See Phillips, 415 F.3d at 1314 (“To begin with, the context in which
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`a term is used in the asserted claim can be highly instructive. To take a simple example, the claim
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`in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not
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`inherently mean objects made of steel.”).
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`The “player character” is not necessarily on the second field. Even if all the embodiments in
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`the ’137 and ’481 Patents describe the player character as being on the second field, this is not
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`enough to read a second-field limitation into “player character.” See Thorner, 669 F.3d at 1366
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`(“It is likewise not enough that the only embodiments, or all of the embodiments, contain a
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`particular limitation. We do not read limitations from the specification into claims; we do not
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`redefine words. Only the patentee can do that.”); SRI Int’l v. Matsushita Elec. Corp., 775 F.2d
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`1107, 1121 (Fed. Cir. 1985) (en banc) (“The law does not require the impossible. Hence, it does
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`not require that an applicant describe in his specification every conceivable and possible future
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`embodiment of his invention.”). Nothing that Defendant identifies rises to the exacting standard
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`for lexicography or disclaimer such that a second-field limitation should be construed as inherent
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`to the “player character.”
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`Accordingly, the Court rejects Defendant’s proposed construction and determines that “player
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`character” has its plain and ordinary meaning without the need for further construction.
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`
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`14
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`

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`Case 2:19-cv-00172-JRG-RSP Document 109 Filed 05/11/20 Page 15 of 70 PageID #: 3479
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`A-2. “game content”
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`Disputed Term
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`“game content”
`
`•
`•
`
`’137 Patent Claim 1, 14, 16
`’481 Patent Claim 1–5, 7, 8
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`The Parties’ Positions
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`Defendant’s Proposed
`Plaintiff’s Proposed
`Construction
`Construction
`plain and ordinary meaning an item capable of being held
`and selected by the player
`which corresponds to, but is
`different from, player
`characters
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`Plaintiff submits: The “game content” is not necessarily distinct from “player characters.” In
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`fact, the ’137 Patent describes that game contents may “include ones corresponding to identical . .
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`. player characters.” ’070 Case Dkt. No. 115 at 14–15
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`In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
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`its position: ’137 Patent col.5 ll.16–19.
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`Defendant responds: The independent claims of the ’137 and ’481 Patents expressly recite
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`“information on a game content corresponding to . . . the player characters” indicating that “game
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`content” corresponds to player characters but is not the same as “player characters.” Further, “game
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`content” is defined in these patents as “denot[ing] contents or items capable of being held and
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`managed by the player during the game” (quoting ’137 Patent col.