Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 1 of 83 PageID #: 7462
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`
`Plaintiffs
`
`
`
`
`
`
`
`
`
`
`v.
`
`T-MOBILE USA, INC. and T-MOBILE US,
`INC
`
`LYFT, INC.
`
`
`UBER TECHNOLOGIES, INC. d/b/a UBER
`
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
` CASE NO. 2:21-CV-72-JRG-RSP
` (LEAD CASE)
`
`
`
` CASE NO. 2:21-CV-24-JRG-RSP
` (MEMBER CASE)
`
` CASE NO. 2:21-CV-26-JRG-RSP
` (MEMBER CASE)
`
`
`
`
`CLAIM CONSTRUCTION ORDER
`
`On October 21, 2021, the Court held a hearing to determine the proper construction of
`
`disputed terms in United States Patents No. 7,630,724, 7,031,728, 8,213,970, 9,408,055,
`
`9,445,251, 9,467,838, 9,749,829, 10,299,100, and 10,341,838. Before the Court is the Opening
`
`Claim Construction Brief (Dkt. No. 145) filed by Plaintiff AGIS Software Development LLC.
`
`Also before the Court is the Responsive Claim Construction Brief (Dkt. No. 156) filed by
`
`Defendants T-Mobile USA, Inc. and T-Mobile US Inc., Lyft, Inc., and Uber Technologies, Inc.
`
`d/b/a Uber (collectively, “Defendants”)1 as well as Plaintiff’s reply (Dkt. No. 166). Further before
`
`the Court is the parties’ joint claim construction chart filed pursuant to Local Patent Rule 4-3 (Dkt.
`
`No. 124). Having reviewed the arguments made by the parties at the hearing and in their claim
`
`construction briefing, having considered the intrinsic evidence, and having made subsidiary factual
`
`
`1 Defendant WhatsApp Inc. settled prior to the filing of Defendants’ responsive claim
`construction brief. (See Dkt. No. 151).
`
`
`
`
`- 1 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 2 of 83 PageID #: 7463
`
`findings about the extrinsic evidence, the Court hereby issues this Claim Construction Order. See
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); Teva Pharm. USA, Inc.
`
`v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`
`
`
`
`
`
`
`- 2 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 3 of 83 PageID #: 7464
`
`Table of Contents
`
`I. BACKGROUND ....................................................................................................................... 4
`II. LEGAL PRINCIPLES ........................................................................................................... 6
`III. AGREED TERMS............................................................................................................... 10
`IV. DISPUTED TERMS ............................................................................................................ 10
`A. “SMS / short message service (SMS) messages” ............................................................... 10
`B. “providing a cellular phone communication network for designated participating users” . 12
`C. “similarly equipped cellular phone,” “similarly equipped PDA cellular phone,” and
`“similarly equipped PDA/cellphone” ................................................................................. 12
`D. “said database including the generation of one or more symbols associated with a
`particular participating user” .............................................................................................. 17
`E. “accessing an application program in each cell phone for generating one or more symbols
`representative of one or more participant users, each of whom have a similarly equipped
`cellular phone” .................................................................................................................... 20
`F. “using the IP address previously” ........................................................................................ 25
`G. “map display” ...................................................................................................................... 29
`H. “free and operator selected text messages” ......................................................................... 32
`I. “establishing a cellular phone communication network for designated participants” ......... 36
`J. “providing initiating cellular phone calling software in each cellular phone that is
`activated by touching a symbol on the touch display that automatically initiates a cellular
`phone call using the stored cellular phone number to the participant represented by the
`symbol” ............................................................................................................................... 37
`K. “database” ........................................................................................................................... 38
`L. “receiving a message from a second device” ...................................................................... 38
`M. “message” ........................................................................................................................... 39
`N. “a forced message alert software application” and “a forced message alert software
`application program” .......................................................................................................... 39
`O. “manual response” .............................................................................................................. 43
`P. “a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations” ...................................................................... 44
`Q. “means for allowing a manual response to be manually selected from the response list
`or manually recorded and transmitting said manual response to the sender PDA/cell
`phone” ................................................................................................................................. 46
`R. “required response list” ....................................................................................................... 48
`S. “transmitting a selected required response from the response list in order to allow the
`message required response list to be cleared from the recipient’s cellphone display” ....... 52
`T. “each PDA/cell phone within a predetermined communication network is similarly
`equipped” ............................................................................................................................ 53
`
`
`
`
`- 3 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 4 of 83 PageID #: 7465
`
`U. “[a] method of receiving, acknowledging, and responding to a forced message alert from
`a sender PDA/cell phone to a recipient PDA/cell phone” .................................................. 54
`V. “each representing a different participant that has a cellular phone that includes said
`voice communication, free and operator selected text messages, photograph and video,
`a CPU, said GPS system and a touch screen display” ........................................................ 55
`W. “consisting of: a position of the participant symbol, positions of the one or more vehicle
`symbols, and a portion of the map displayed on the display of the mobile device” ........... 60
`X. “based on at least one criterion selected from the group consisting of: (1) passage of
`time, and (2) movement of the first vehicle” ...................................................................... 65
`Y. “event” and “event symbol” ................................................................................................ 66
`Z. “based on the participant selection data, performing one or more acts selected from the
`group consisting of: sending updated vehicle data to the first mobile device
`corresponding to the vehicle, sending updated participant data to the second mobile
`device corresponding to the participant, and sending a message to the first mobile device
`corresponding to the vehicle” ............................................................................................. 67
`AA. “receiving entity-of-interest data transmitted by the second mobile device, the entity-
`of-interest data comprising coordinates of a geographical location of a new entity of
`interest” ............................................................................................................................... 69
`BB. “obtaining first data provided by a first mobile device corresponding to a vehicle, the
`first data including a first identifier” and “obtaining second data provided by a second
`mobile device corresponding to a participant, the second data including a second
`identifier associated with the participant” .......................................................................... 74
`V. CONCLUSION...................................................................................................................... 78
`APPENDIX A .............................................................................................................................. 79
`
`
`
`
`
`
`I. BACKGROUND
`
`Plaintiff alleges infringement of United States Patents No. 7,630,724 (the “’724 Patent,”
`
`Dkt. No. 145 at Ex. A), 7,031,728 (the “’728 Patent,” id. at Ex. B), 8,213,970 (the “’970 Patent,”
`
`id. at Ex. C), 9,408,055 (the “’055 Patent,” id. at Ex. D), 9,445,251 (the “’251 Patent,” id. at Ex. E),
`
`9,467,838 (the “’838 Patent,” id. at Ex. F), 9,749,829 (the “’829 Patent,” id. at Ex. G), 10,299,100
`
`(the “’100 Patent,” id. at Ex. H), and 10,341,838 (the “’1,838 Patent” id. at Ex. I) (collectively, the
`
`“patents-in-suit”).
`
`
`
`
`- 4 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 5 of 83 PageID #: 7466
`
`
`
`Plaintiff submits that the patents-in-suit are “described generally as related to the field of
`
`map-based applications executed on smartphone devices and communication among operators of
`
`the map-based applications.” Dkt. No. 145 at 1. Defendants submit that the patents-in-suit are
`
`directed to ad hoc networks for coordinating activities of first responders, law enforcement, and
`
`military personnel. Dkt. No. 156 at 1.
`
`
`
`The ’728 Patent, for example, titled “Cellular Phone/PDA Communication System,” issued
`
`on April 18, 2006, and bears a filing date of September 21, 2004. The Abstract of the ’728 Patent
`
`states:
`
`
`
`A cellular PDA communication system for allowing a plurality of cellular phone
`users to monitor each others’ location and status, to initiate cellular phone calls by
`touching a symbol on the display screen with a stylus or finger which can also
`include conferencing calling. The system also provides for remote activation of a
`cellular phone by an initiator causing the remote cellular phone to annunciate audio
`announcements, to call another phone number, to increase the volume of the
`speaker, to vibrate or to display images or videos. All this is accomplished with a
`conventional cellular phone PDA that includes GPS navigation with an enhanced
`improved software program.
`
`Plaintiff submits: “Although the ’724, ’728, ’100, and [’]1[,]838 Patents were not asserted
`
`in the Huawei or Google case, certain claim terms that Defendants seek construction for that appear
`
`in the ’724, ’728, ’100, and ’1,838 Patents are also found in the other Asserted Patents. Each of
`
`the Asserted Patents are related such that they claim priority to either the ’724 [or the] ’728 Patent.”
`
`(Dkt. No. 145 at 2 n.2.)
`
`
`
`The ’724 Patent resulted from a continuation of the ’728 Patent. The ’970 Patent, the ’055
`
`Patent, the ’251 Patent, the ’838 Patent, and the ’829 Patent resulted from a series of continuation
`
`and continuation-in-part applications based on the ’724 Patent and, in turn, the ’728 Patent. The
`
`Court previously construed disputed terms in the ’970 Patent, the ’055 Patent, the ’251 Patent, the
`
`’838 Patent, and the ’829 Patent in:
`
`
`
`
`- 5 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 6 of 83 PageID #: 7467
`
`AGIS Software Development LLC v. Huawei Device USA Inc., et al., No. 2:17-CV-
`513, Dkt. No. 205 (E.D. Tex. Oct. 10, 2018) (“Huawei”); and
`
`
`AGIS Software Development LLC v. Google LLC, et al., No. 2:19-CV-361 (Lead
`Case), Dkt. No. 147 (E.D. Tex. Dec. 8, 2020) (“Google”).
`
`The ’100 Patent likewise resulted from continuation and continuation-in-part applications
`
`
`
`claiming priority back to the ’728 Patent, and the ’1,838 Patent resulted from a continuation of the
`
`’100 Patent.
`
`
`
`Shortly before the start of the October 21, 2021 hearing, the Court provided the parties with
`
`preliminary constructions with the aim of focusing the parties’ arguments and facilitating
`
`discussion. Those preliminary constructions are noted below within the discussion for each term.
`
`II. LEGAL PRINCIPLES
`
`
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.’” Phillips, 415 F.3d at 1312 (quoting
`
`Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
`
`Claim construction is clearly 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). “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, 135 S. Ct. at 841
`
`(citation omitted). “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.” Id. (citing 517 U.S. 370).
`
`
`
`
`- 6 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 7 of 83 PageID #: 7468
`
`
`
`To determine the meaning of the claims, courts start by considering the intrinsic evidence.
`
`See Phillips, 415 F.3d at 1313; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861
`
`(Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d 1258,
`
`1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification,
`
`and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, 388 F.3d at 861. Courts
`
`give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in
`
`the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312–
`
`13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
`
`
`
`The claims themselves provide substantial guidance in determining the meaning of
`
`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim can
`
`be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim’s
`
`meaning because claim terms are typically used consistently throughout the patent. Id.
`
`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
`
`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
`
`the independent claim does not include the limitation. Id. at 1314–15.
`
`
`
`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. at 1315
`
`(quoting Markman, 52 F.3d at 979). “[T]he specification ‘is always highly relevant to the claim
`
`construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
`
`disputed term.’” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90
`
`F.3d 1576, 1582 (Fed. Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
`
`1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term
`
`a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope.
`
`Phillips, 415 F.3d at 1316. In these situations, the inventor’s lexicography governs. Id. The
`
`
`
`
`- 7 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 8 of 83 PageID #: 7469
`
`specification may also resolve the meaning of ambiguous claim terms “where the ordinary and
`
`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
`
`the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough
`
`the specification may aid the court in interpreting the meaning of disputed claim language,
`
`particular embodiments and examples appearing in the specification will not generally be read into
`
`the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)
`
`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord
`
`Phillips, 415 F.3d at 1323.
`
`
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
`
`Inc. v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a
`
`patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution history (or file
`
`wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been
`
`disclaimed or disavowed during prosecution in order to obtain claim allowance.” Standard Oil
`
`Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
`
`
`
`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
`
`determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
`
`(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
`
`court understand the underlying technology and the manner in which one skilled in the art might
`
`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
`
`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
`
`testimony may aid a court in understanding the underlying technology and determining the
`
`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
`
`
`
`
`- 8 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 9 of 83 PageID #: 7470
`
`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
`
`evidence is “less reliable than the patent and its prosecution history in determining how to read
`
`claim terms.” Id.
`
`
`
`The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
`
`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
`
`legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
`
`claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
`
`(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
`
`S. Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co.
`
`v. Publications Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
`
`
`
`“[P]rior orders in related cases do not bar the Court from conducting additional
`
`construction in order to refine earlier claim constructions.” TQP Dev., LLC v. Intuit Inc., No. 2:12-
`
`CV-180-WCB, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J., sitting by
`
`designation).
`
`
`
`In general, however, prior claim construction proceedings involving the same patents-in-
`
`suit are “entitled to reasoned deference under the broad principals of stare decisis and the goals
`
`articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
`
`per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
`
`at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP, 2014 WL 2810016, at *6 (“[P]revious claim
`
`constructions in cases involving the same patent are entitled to substantial weight, and the Court
`
`has determined that it will not depart from those constructions absent a strong reason for doing
`
`
`
`
`- 9 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 10 of 83 PageID #: 7471
`
`so.”); see also Teva, 135 S. Ct. at 839–40 (“prior cases will sometimes be binding because of issue
`
`preclusion and sometimes will serve as persuasive authority”) (citation omitted); Finisar Corp. v.
`
`DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the importance of uniformity
`
`in the treatment of a given patent”) (quoting Markman v. Westview Instruments, Inc., 517 U.S.
`
`370, 390 (1996)).
`
`III. AGREED TERMS
`
`
`
`The parties reached agreement on constructions as stated in their August 17, 2021 Joint
`
`P.R. 4-3 Claim Construction and Prehearing Statement (Dkt. No. 124, Ex. A). Those agreements
`
`are set forth in Appendix A to the present Claim Construction Memorandum and Order.
`
`A. “SMS / short message service (SMS) messages”
`
`IV. DISPUTED TERMS
`
`
`“SMS / short message service (SMS) messages”
`(’724 Patent, Claim 9; ’055 Patent, Claims 3, 12, 13; ’251 Patent, Claims 7, 30)
`
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`“cellular based messages of limited size
`consisting of text and numbers”
`
`
`IP-based)
`than
`(rather
`“cellular-based
`messages of limited size consistent of text and
`numbers”
`
`
`Dkt. No. 124, Ex. B at 1; id., Ex. C at 4; id., Ex. D at 1; id., Ex. E at 3.
`
`
`
`In Huawei, the Court adopted the agreement of the parties in that case that the term “short
`
`message service (SMS) messages” means “cellular based messages of limited size consisting of
`
`text and numbers.” Huawei at 56.
`
`
`
`Defendants submit that “[a]fter considering the arguments by both sides, the Court adopted
`
`its own construction, which is the construction Defendants propose here.” Dkt. No. 156 at 3 (citing
`
`Google at 86–92). Defendants also note that the Huawei construction, which preceded Google,
`
`
`
`
`- 10 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 11 of 83 PageID #: 7472
`
`was an agreed-upon construction that was not submitted for analysis by the Court until Google.
`
`See id. at 2.
`
`
`
`The parties in Google disputed the proper construction for “short message service (SMS)
`
`messages,” and the Court construed the term to mean “cellular-based (rather than IP-based)
`
`messages of limited size consisting of text and numbers.” Google at 86–92 (emphasis added).
`
`Google rejected a proposal in that case that “SMS” is limited to the Global System for Mobile
`
`Communications (GSM). Id. at 90–91 (“Although this evidence perhaps establishes that the term
`
`‘Short Message Service (SMS)’ has been known in the art as having a particular meaning in the
`
`context of GSM, Defendants fail to adequately demonstrate that the term ‘Short Message Service
`
`(SMS)’ has been known in the art as limited to GSM.”). Nonetheless, the Court explained that it
`
`“adopt[ed] a construction that gives effect to the patentee’s distinction between cellular-based
`
`messages and ‘IP-based’ messages.” Id. at 91.
`
`
`
`Plaintiff replies by agreeing that the Court should adopt the Google construction. Dkt. No.
`
`166 at 1; see Dkt. No. 171, App’x A at 22.
`
`
`
`Shortly before the start of the October 21, 2021 hearing, the Court provided the parties with
`
`the following preliminary construction: “‘cellular-based (rather than IP-based) messages of limited
`
`size consisting of text and numbers’ [Agreed Construction].” No party raised any objection to this
`
`construction.
`
`
`
`The Court therefore hereby construes “SMS / short message service (SMS) messages” to
`
`mean “cellular-based (rather than IP-based) messages of limited size consisting of text and
`
`numbers.”
`
`
`
`
`- 11 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 12 of 83 PageID #: 7473
`
`B. “providing a cellular phone communication network for designated participating users”
`
`
`“providing a cellular phone communication network for designated participating users”
`(’724 Patent, Claims 9, 16)
`
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Preamble is not limiting.
`
`
`Preamble is limiting
`
`
`Dkt. No. 124, Ex. B at 1; id., Ex. C at 5; id., Ex. D at 2–3; id., Ex. E at 6.
`
`
`
`In their October 19, 2021 Joint Claim Construction Chart, the parties submit the following
`
`agreement: “Preamble is limiting.” Dkt. No. 117, App’x A at 27. Shortly before the start of the
`
`October 21, 2021 hearing, the Court provided the parties with the following preliminary
`
`construction: “Entire preambles of Claims 9 and 16 are limiting [Agreed Construction].” No party
`
`raised any objection to this construction.
`
`
`
`The Court therefore hereby finds that the entire preambles of Claims 9 and 16 of the
`
`’724 Patent are limiting.
`
`C. “similarly equipped cellular phone,” “similarly equipped PDA cellular phone,” and
`“similarly equipped PDA/cellphone”
`
`
`“similarly equipped cellular phone”
`(’724 Patent, Claim 9; ’728 Patent, Claim 7)
`
`“similarly equipped PDA cellular phone”
`(’724 Patent, Claim 16)
`
`“similarly equipped PDA/cellphone”
`(’970 Patent, Claim 1)
`
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`Plain and ordinary meaning
`
`
`Indefinite
`
`
`- 12 -
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 13 of 83 PageID #: 7474
`
`Dkt. No. 124, Ex. B at 1 & 2; id., Ex. C at 2, 5 & 6; id., Ex. D at 3 & 8; id., Ex. E at 2 & 8; Dkt.
`
`No. 117, App’x A at 30.
`
`
`
`Shortly before the start of the October 21, 2021 hearing, the Court provided the parties with
`
`the following preliminary constructions:
`
`Term
`
`“similarly equipped cellular phone”
`(’724 Patent, Claim 9)
`
`
`“similarly equipped cellular phone”
`(’728 Patent, Claim 7)
`
`
`“similarly equipped PDA cellular phone”
`(’724 Patent, Claim 16)
`
`
`“similarly equipped PDA/cell phone”
`(’970 Patent, Claim 1)
`
`
`Construction
`
`“cellular phone equipped with at least a CPU,
`a GPS navigational system, an
`interact
`message transmitter and receiver, and a touch
`screen display”
`
`“cellular phone equipped with at least voice
`communication, free and operator selected text
`messages, photograph and video, a CPU, a
`GPS navigation system, and a touch screen
`display”
`
`“PDA cellular phone equipped with at least a
`CPU, a GPS navigational system, and a touch
`screen display”
`
`“PDA/cellphone equipped with at least a CPU,
`a touch screen display, and memory”
`
`
`
`
`
`
`
`
`Plaintiff agreed with the Court’s preliminary constructions. Defendants disagreed.
`
`(1) The Parties’ Positions
`
`Plaintiff submits the opinions of its expert that “similarly equipped” would be readily
`
`understood by a person of ordinary skill in the art as “pertain[ing] to common hardware and
`
`software features.” Dkt. No. 145 at 10 (quoting id., Ex. J, Aug. 17, 2021 McAlexander Decl. at
`
`¶ 36).
`
`
`
`Defendants respond that these terms are indefinite because “[n]one of the patent
`
`specifications . . . provide any guidance—let alone objective boundaries—for determining when
`
`
`
`
`- 13 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 14 of 83 PageID #: 7475
`
`two cellular phones are ‘similarly equipped,’” and “[n]o guidance is provided on which or how
`
`many features devices must include to be similar.” Dkt. No. 156 at 5 & 6.
`
`
`
`Plaintiff replies by reiterating that “similarly equipped” pertains to common hardware and
`
`software features. See Dkt. No. 166 at 2–3.
`
`
`
`At the October 21, 2021 hearing, Defendants submitted that the purpose of the claimed
`
`invention is to allow first responders to communicate with one another, and Defendants argued
`
`that the devices need some (albeit undefined) degree of similarity to achieve this purpose, not just
`
`having for example, any CPU, any GPS system, and so forth.
`
`
`
`
`
`
`
`(2) Analysis
`
`Claim 16 of the ’724 Patent, for example, recites (emphasis added):
`
`16. A method of providing a cellular phone communication network for designated
`participating users, each having a similarly equipped PDA cellular phone that
`includes a CPU, a GPS navigational system and a touch screen display comprising:
`
`selecting an icon that establishes rapid voice call initiation and
`communication to the users of the cellular telephone PDA/GPS network system by
`touching their symbol on the phone’s a [sic] touch screen;
`
`transmitting high speed internet rapid transmission of operator selected text
`messages, photographs, voice recordings and video to other cellular phone users
`using the touch screen;
`
`accessing a server for establishing high speed internet communications
`between said cellular phone network users and said server; and
`
`generating at the server networks enabling anonymous voice and data
`communications so that neither the originator of the phone call or data transmission
`nor the receiver of the phone call or data transmission need to know the other’s
`phone number, name or other identifier other than a symbol location on a map.
`
`Surrounding claim language provides sufficient context such that the scope of the disputed
`
`term is reasonably clear. In this above-reproduced claim, each participating user has a “similarly
`
`equipped PDA cellular phone” with reference to each phone having “a CPU, a GPS navigational
`
`system and a touch screen display.” The phrase “similarly equipped” assists in understanding the
`
`significance of the particular equipment recited by this other claim language in the context of the
`
`
`
`
`- 14 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 15 of 83 PageID #: 7476
`
`network and the users. The ACQIS case cited by Defendants is therefore distinguishable. See
`
`ACQIS LLC v. Alcatel-Lucent USA Inc., No. 6:13-CV-638, Dkt. No. 188, 2015 WL 1737853, at
`
`*9‒*10 (E.D. Tex. Apr. 13, 2015) (Davis, J.). The opinions of Defendants’ expert in this regard
`
`are likewise unpersuasive. See Dkt. No. 156, Ex. 1, Aug. 17, 2021 Shekhar Decl. at ¶ 63 (“For
`
`example, there is no guidance in the intrinsic record on which or how many features of a cellular
`
`phone must be determined to be similar for the devices to be deemed ‘similarly equipped’ as
`
`required.”).
`
`
`
`In light of this context provided by surrounding claim language, Defendants do not meet
`
`their burden to show that the phrase “similarly equipped” gives rise to any lack of reasonable
`
`certainty. See Nautilus, 134 S. Ct. at 2129; see also Sonix, 844 F.3d at 1377 (“Indefiniteness must
`
`be proven by clear and convincing evidence.”). The opinions of Plaintiff’s expert are more
`
`persuasive in this regard, opining for example that “[a] POSITA would understand that location is
`
`communicated or shared among similarly equipped cellular phones to the extent those phones have
`
`the disclosed GPS feature.” See Dkt. No. 145, Ex. J, Aug. 17, 2021 McAlexander Decl. at ¶ 36;
`
`see id. at ¶¶ 36–38. The Court thus rejects Defendants’ argument that this is “facially subjective claim
`
`language without an objective boundary.” See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
`
`1373 (Fed. Cir. 2014).
`
`
`
`Defendants argue that the phrase “similarly equipped” must carry some meaning apart from
`
`other claim language because, generally, “claims are interpreted with an eye toward giving effect
`
`to all terms in the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). The
`
`phrase “similarly equipped” assists in understanding the significance of the particular equipment
`
`recited by this other claim language in the context of the network and the users. Alternatively,
`
`even if “similar equipped” were deemed to be redundant, this does not necessarily give rise to
`
`
`
`
`- 15 -
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 213 Filed 11/10/21 Page 16 of 83 PageID #: 7477
`
`indefiniteness because “surplusage may exist in some claims.” Decisioning.com, Inc. v. Federated
`
`Dep’t Stores, Inc., 527 F.3d 1300, 1312 n.6 (Fed. Cir. 2008); accord ERBE Elektromedizin GmbH
`
`v. Can