Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 1 of 33 PageID #: 1574
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.
`LTD.,
`
`
`Plaintiff,
`
`
`v.
`
`CHARTER COMMUNICATIONS, INC.,
`et al.,
`
`
` §
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`Defendants.
`______________________________________________________________________________
`
`TOUCHSTREAM TECHNOLOGIES, INC.
`LTD.,
`
`
`NO. 2:23-CV-00059-JRG
`(Lead Case)
`
`NO. 2:23-CV-00062-JRG
`(Member Case)
`
`Plaintiff,
`
` §
`§
`§
`§
`§
`
`§
`v.
`§
`
`COMCAST CABLE COMMUNICATIONS, §
`LLC d/b/a XFINITY, et al.,
`§
`
`§
`§
`
`Defendants.
`
`
`
`CLAIM CONSTRUCTION ORDER
`
`
`
`Before the Court is Touchstream Technologies, Inc.’s Opening Claim Construction Brief
`
`filed by Plaintiff Touchstream Technologies, Inc. (“Plaintiff” or “Touchstream”). (Dkt. No. 36.)
`
`Also before the Court is Defendants’ Responsive Claim Construction Brief filed by Charter
`
`Communications, Inc., et al. and Comcast Cable Communications, LLC, d/b/a Xfinity, et al.
`
`(collectively, “Defendants” and with Plaintiff, the “Parties”). (Dkt. No. 40.) Also before the Court
`
`

`

`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 2 of 33 PageID #: 1575
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`is Touchstream Technologies, Inc.’s Reply in Support of Its Opening Claim Construction Brief.
`
`(Dkt. No. 42.) The Court held a hearing on May 30, 2024. Having considered the Parties’ briefing
`
`along with arguments of counsel, the Court resolves the disputes as ordered herein.
`
`I.
`
`BACKGROUND
`
`Plaintiff alleges infringement of three patents: U.S. Patent No. 8,356,251 (“the ’251
`
`Patent”); U.S. Patent No. 11,048,751 (“the ’751 Patent”); and U.S. Patent No. 11,086,934 (“the
`
`’934 Patent”) (collectively, the “Patents-in-Suit”). The Patents-in-Suit all derive from the same
`
`patent family and are about casting and controlling content from a personal device, like a
`
`smartphone or tablet, to a second display unit, such as a TV or a computer monitor.
`
`
`
`The Patents-in-Suit all claim priority to the same provisional application and share the same
`
`specification. Accordingly, as the parties did in their briefing, citations in this Order will be to the
`
`specification of the ’251 Patent.
`
`
`
`The ’251 Patent and the ’751 Patent share the same title and abstract. The title is “Play
`
`control of content on a display device” and the Abstract states:
`
`A system for presenting and controlling content on a display device includes a
`network, a server system coupled to the network and comprising one or more
`servers, a display device coupled to the network and having a display, and a
`personal computing device operable to transmit a first message according to a
`specified format over the network to the server system. The server system stores an
`association between the personal computing device and the display device. The first
`message identifies user-selected content and a media player to play the content. The
`server system is operable, in response to receiving the first message from the
`personal computing device, to provide to the display device a second message
`identifying the user-selected content and the media player to play the content. In
`response to receiving the second message, the display device is operable to obtain
`a first media player needed to play the content, to load the media player and to
`present the content on the display.
`
`
`
`The ’934 Patent also bears the title “Play control of content on a display device,” however,
`
`the Abstract differs as follows:
`
`
`
`2
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 3 of 33 PageID #: 1576
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`A system for controlling playback of various types of content includes a first
`computing device that provides a unique identifier to a second computing device to
`establish an association there between. By virtue of the established association, the
`second computing device can send one or more messages to the first computing
`device, the one or more messages referencing a piece of content associated with a
`first media playing element of a plurality of media playing elements, and one or
`more commands corresponding to the first media playing element. The first
`computing device can select the first media playing element based on the received
`one or more messages, and control how the first media playing element plays the
`referenced piece of content utilizing the one or more commands.
`
`II.
`
`LEGAL STANDARDS
`
`“[T]he claims of a patent define the invention to which the patentee is entitled the right to
`
`exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
`
`Innova/Pure-Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
`
`“[T]he court has the power and obligation to construe as a matter of law the meaning of language
`
`used in the patent claim.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
`
`1995) (en banc); aff’g, 517 U.S. 370, 390 (1996).
`
`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
`
`specification, and the prosecution history. Id. at 979. The specification must contain a written
`
`description of the invention that enables one of ordinary skill in the art to make and use the
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`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, 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).
`
`When construing claims, “[t]here is a heavy presumption that claim terms are to be given
`
`their ordinary and customary meaning.” Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363,
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`1373 (Fed. Cir. 2013) (citing Phillips, 415 F.3d at 1312–13). Courts must therefore “look to the
`
`
`
`3
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 4 of 33 PageID #: 1577
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`words of the claims themselves . . . to define the scope of the patented invention.” Id. (citations
`
`omitted). “[T]he ordinary and customary meaning of a claim term is the meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as
`
`of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313. This “person of
`
`ordinary skill in the art is deemed to read the claim term not only in the context of the particular
`
`claim in which the disputed term appears, but in the context of the entire patent, including the
`
`specification.” Id.
`
`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). As the Supreme Court stated long 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 language employed in the claims.”
`
`Bates v. Coe, 98 U.S. 31, 38 (1878). 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., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
`
`The prosecution history also continues to play an important role in claim interpretation.
`
`Like the specification, the prosecution history helps to demonstrate how the inventor and the
`
`United States Patent and Trademark Office (“PTO”) understood the patent. Phillips, 415 F.3d at
`
`1317. Because the file history, however, “represents an ongoing negotiation between the PTO and
`
`the applicant,” it may lack the clarity of the specification and thus be less useful in claim
`
`construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
`
`relevant to the determination of how the inventor understood the invention and whether the
`
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`4
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`

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`inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
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`Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that
`
`“a patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant
`
`to claim interpretation”).
`
`
`
`Intrinsic evidence, therefore, is the primary resource for claim construction. See Power-
`
`One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips, 415 F.3d at
`
`1312). But for claim terms with less-apparent meanings, courts consider “those sources available
`
`to the public that show what a person of skill in the art would have understood disputed claim
`
`language to mean[,] [including] the words of the claims themselves, the remainder of the
`
`specification, the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Phillips, 415 F.3d at 1314
`
`(quoting Innova, 381 F.3d at 1116). In those situations, “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 Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (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).
`
`
`
`However, the intrinsic record may not be sacrificed in favor of extrinsic evidence.
`
`According to Phillips, reliance on dictionary definitions, for example, at the expense of the
`
`specification had the effect of “focus[ing] the inquiry on the abstract meaning of words rather than
`
`on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`
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`5
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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., 572 U.S. 898, 910, 134 S. Ct. 2120, 2129 (2014). “[A] patent is invalid for
`
`indefiniteness if its claims, read in light of the specification delineating the patent, and the
`
`prosecutionhistory, fail to inform, with reasonable certainty, those skilled in the art about the scope
`
`ofthe invention.” Jd. The claims “must be precise enough to afford clear notice ofwhatis claimed,”
`
`but that consideration must be made while accounting for the inherent limitations of language. Jd.
`
`at 908. “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).
`
`lil.
`
`AGREED TERMS
`
`Theparties have submitted no agreed terms.
`
`IV.
`
`DISPUTED TERMS
`
`1. “media player’”/ “media player application”/ “media playing application”
`
`Plaintiff's Construction
`
`Defendants’ Construction
`
`“application software for
`playing back video content”
`
`
`
`
`
`(7751 Patent, claims 12,
`13, 14, 16)
`
`“media playing
`application”
`
`
`
`
`
`
`
`(251 Patent, claims 1, 2)
`
` “media player”
`Plain and ordinary meaning
`
`
`
`
`
`Plain and ordinary meaning
`“media player
`“application software for
`
`playing back content”
`application”
`
`
`
`
` (934 Patent, claims 17,
`
`

`

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`
`
`
`
`The dispute over these claim terms is whether the prosecution history disclaimer applies to
`
`limit the meaning as Defendants propose.
`
`
`
`During prosecution of the ’251 Patent, in response to an office action rejection, the
`
`applicant stated in a footnote: “In the context of the present application, it is clear that a ‘media
`
`player’ refers to application software for playing back the video content. Thus, the claims and
`
`specification refer in some cases, for example, to ‘loading’ or ‘unloading’ a media player. . . . A
`
`particular display device, therefore, may, in some cases, be able to load or store any one of different
`
`media players.” (Dkt. 40-2 at 11).
`
`
`
`Defendants submit that their proposed construction should be adopted because it is the
`
`definition Touchstream advanced during prosecution. The specification, according to Defendants,
`
`confirm this definition because it makes clear that the claimed media player is application software,
`
`rather than hardware, and the media player is for playing back video content as opposed to content
`
`generally. Defendants further extend this construction to “media player application” and “media
`
`playing application” in the ’751 and ’934 Patents because “statements from prosecution of a
`
`familial patent relating to the same subject matter as the claim language at issue in the patent being
`
`construed . . . are relevant in construing the claims at issue.” Ormco Corp. v. Align Tech., Inc., 498
`
`F.3d 1307, 1314 (Fed. Cir. 2007). For this term, however, Defendants remove the requirement for
`
`“video” content because the ’751 and ’934 Patents claims do not specify the type of content.
`
`
`
`Plaintiff agrees that a “media player” is software for playing media but disagrees that it is
`
`a term that needs to be construed, arguing that it is a well-known, easily understood term to a jury.
`
`The prosecution history statement, according to Plaintiff, is coextensive with the plain and ordinary
`
`meaning and does not give rise to an actual claim scope dispute. Additionally, Plaintiff contends
`
`
`
`7
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`

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`that adding the “video content” limitation to “media player” in the ’251 Patent is unwarranted
`
`because the claim language already includes that limitation. In sum, Plaintiff contends that turning
`
`a well understood term like “media player” into “application software” is more likely to confuse
`
`the jury than leaving the claim as is.
`
`
`
`The Court first considers the term “media player” in the ’251 Patent within the relevant
`
`portion of claim 1. The claim language clearly sets forth a “media player for playing the video
`
`content . . . including a universal playback control command for controlling playing of the video
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`content on the display device by the particular media player.” Defendants’ proposed construction,
`
`“application software for playing back video content,” duplicates language already written into the
`
`claim. So, including the latter clause of “for playing back video content” would repeat almost
`
`identical language that is already present and cause unnecessary confusion. The Court declines to
`
`add the redundant language. Accordingly, the remainder of Defendants’ proposed construction for
`
`consideration is simply “application software” to replace the claim term “media player” due to
`
`statements from the prosecution history.
`
`
`
`Turning to the ’251 Patent file history, the cited language appears in a footnote in an office
`
`action response explaining that, by “media player,” the applicant “refers to application software
`
`for playing back the video content” that can be loaded or unloaded onto a particular display device.
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`(Dkt. 40-2 at 11.) The footnote appears in a section where the applicant was distinguishing the
`
`invention from prior art as to the limitation “one or more signals,” and not based on the “media
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`player.” (See id., at 14-17.) The purpose of the footnote appears to simply explain that the media
`
`player is software that can be installed or uninstalled on a display device. It was not a narrowing
`
`admission to overcome prior art. Indeed, software could not be a distinguishing feature of the
`
`invention because the Applicant acknowledged earlier on that the prior art already discloses a
`
`
`
`8
`
`

`

`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 9 of 33 PageID #: 1582
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`software program. (Id. at 13) (“Schwartz [U.S. Pub. No. 2011/0060998A1] discloses a system and
`
`method for managing Internet media content. As illustrated in FIG. 2 (reproduced below), the
`
`system can include a computing device (e.g., a mobile phone) that executes an application 10 (i.e.,
`
`a software program) . . . .”). Accordingly, the statement in the footnote is not the type of limiting
`
`representation about an invention that comes close to disclaiming claim scope. Indeed, Defendants
`
`do not even use the word “disclaimer” in making their argument here.
`
`
`
`During the hearing, Defendants stated their agreement to identify the “software” within the
`
`construction and drop “application.” Plaintiff also agreed that the “media player” is software.
`
`Accordingly, the Court will construe the term “media player” as “software for playing media.”
`
`
`
`As for the “media player applications” in the ’751 Patent and the “media playing
`
`applications” in the ’934 Patent, the Court agrees with Defendants that “[t]he common terminology
`
`and functions of these components suggest that the terms should be construed to have similar
`
`meanings with allowance for non-video content in the later two patents.” (Dkt. 40 at 11.) After all,
`
`the three patents are all related, have the same specification, and similar claim structure. And in
`
`these instances, the meaning of the disputed terms is even more apparent. The terms each contain
`
`the word “applications,” which makes it even more clear that the media player is software.
`
`The Court therefore finds the claim terms “media player” (’251 Patent claims 1, 2),
`
`“media player application” (’751 Patent claims 12, 13, 14, 16), and “media playing
`
`application” (’934 Patent claims 17, 18, 19) to mean “software for playing media.”
`
`
`
`
`
`
`
`9
`
`

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`2. “a synchronization code”/ “the synchronization code”
`
`°751 Patent, claim 12)
`
`“a synchronization code”/
`“the synchronization code”
`
`(251 Patent, claims 1, 8, 9, and
`
`Construction
`Plain and ordinary
`meaning
`
`Must be the same
`“synchronization code”
`throughout the claim.
`
`The dispute as to this term is whetherit is necessary to construe “a synchronization code”
`
`and “the synchronization code,” appearing in independent claims and dependent claims that
`
`dependtherefrom,to explicitly instruct that each instance of “the synchronization code” must refer
`
`to the same synchronization code accordingto their antecedentbasis relationship.
`
`Ensuring that claim terms have proper antecedentbasisis a well-settled attribute of patent
`
`drafting. The Manual of Patent Examining Procedure (MPEP) Section 2173.05(e) provides that a
`
`claim is unclear where it refers to “said lever” or “the lever” and the claim contains noearlier
`
`recitation or limitation of “a lever”and it is unclear as to what element the limitation was making
`
`reference. In that instance, the examiner should suggest corrections to resolve antecedent basis
`
`problems, such as revising the claim to identify “a lever” before reciting “the lever” to refer back
`
`to the previously identified lever. Moreover, the Federal Circuit has consistently held that a claim
`
`term that first appears with the indefinite article “a” and later appears with a definite article, such
`
`as “the,” shares an “antecedent basis” relationship and apply an “initial assumption”that the latter
`
`occurrence carries the same meaning as the former. See Microprocessor Enhancement Corp. v.
`
`Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (finding a single “claim term should
`
`be construed consistently with its appearance in other places in the same claim”); see also HowLink
`
`Global LLC v. Network Commc'ns Int'l Corp., 561 Fed. App’x 898, 903 (Fed. Cir. 2014) (claim
`
`10
`
`

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`terms “[b]ased on [an] antecedent basis relationship .
`
`.
`
`. carry the same meaning throughout the
`
`claims.”); Digital-Vending Servs. Int’l, LLC v. Univ. ofPhoenix, Inc., 672 F.3d 1270, 1275 (Fed.
`
`Cir. 2012) (a claim term “is presumed to have the same meaning throughoutall of the claims in
`
`the absence of any reason to believe otherwise.”’).
`
`During the hearing, Plaintiff agreed with Defendants that the antecedentbasis rule applies
`
`such that “the synchronization code”refers back to the same “‘a synchronization code,” and further
`
`that there is one synchronization code. Thus, there is no actual dispute in the scope or meaning of
`
`this term, which makesit unsuitable for claim construction. See O2 Micro Intern. Ltd. v. Beyond
`
`Innovation Tech. Co., Ltd., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (Claim construction “is a matter
`
`of resolution of disputed meanings and technical scope .
`
`.
`
`. .”). The Court finds the antecedent
`
`basis rule applies but declines to provide Defendants with an explicit instruction to present before
`
`the jury in order to “impeach an expert who might contradict Touchstream’s representation.” (Dkt.
`
`40 at 14.)
`
`The Court therefore finds
`
`“a synchronization code” and “the synchronization code” to
`
`havetheir plain and ordinary meanings.
`
`3. “synchronization code”
`
`Plaintiff's Construction|Defendants’ Construction
`
`remote computing device]”
`
`“synchronization code”
`
`(251 Patent, claims 1, 8, 9, and
`°751 Patent, claim 12)
`
`Plain and ordinary
`meaning
`
`“a code which can be
`obtained by a user from the
`[display device / content
`presentation device] and
`provided bythe userto the
`[personal computing device/
`
`11
`
`

`

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`
`
`This issue concerns whether the user must be involved in obtaining the synchronization
`
`code from the display device or content presentation device and providing it to the computer device
`
`or remote computing device.
`
`
`
`Plaintiff argues that nothing in the claims requires a user to obtain the synchronization code
`
`and that Defendants are seeking to insert unclaimed limitations derived from a single embodiment
`
`in the specification. Plaintiff cites to various specification disclosures that do not require user
`
`action, including one example where the display device may provide the synchronization code
`
`directly to the personal computing device without the user serving as an intermediary. (See ’251
`
`Patent, 2:16-26, 5:10-14, 5:21-23, 5:36-38.) Plaintiff further points to statements in the
`
`specification and dependent claim 9 to show that the IP and MAC addresses can be used as
`
`synchronization codes as well, to suggest that these types of data are typically transmitted
`
`automatically and not through acts of a user. (See e.g., id., at 2:24-26.)
`
`
`
`Defendants disagree, arguing that the specification makes clear that user action is
`
`necessary. Defendants draw a distinction within the disclosed embodiments between, on the one
`
`hand, using a synchronization code to create the association between the mobile phone and the
`
`display device, and on the other hand, display devices that have been pre-initialized for
`
`communication with the phone. In particular, Defendants argue that the latter example in the
`
`specification that does not require use of a synchronization code is not a claimed embodiment
`
`because the claims are not about pre-initialized display devices. Instead, Defendants argue that the
`
`’251 Patent claims 1, 8, 9, and ’751 Patent claim 12 all recite a “synchronization code,” which
`
`means they are claiming the alternate embodiment from the specification that requires user action
`
`to obtain the synchronization code. As additional support, Defendants point to the prosecution
`
`history of the ’251 Patent, when the examiner and applicant “discussed claim amendments that
`
`
`
`12
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 13 of 33 PageID #: 1586
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`could overcome the prior art of record,” and specifically the Schwartz reference. Defendants also
`
`cite an examiner amendment entered following an interview that added the “synchronization code”
`
`limitations before issuing a Notice of Allowability. (Dkt. 40-3 and 40-4.)
`
`
`
`The Court first looks at independent claim 1 of the ’251 Patent. The preamble sets forth
`
`that it is a “machine-implemented method” where a “server system” performs various steps of
`
`“assigning . . . a synchronization code to the display device,” “receiving . . . a message from a
`
`personal computing device . . . wherein the message includes the synchronization code,” and
`
`“storing . . . a record establishing an association between the personal computing device and the
`
`display device based on the synchronization code.” None of the steps includes an act performed
`
`by the user. The claim language leaves open how the personal computing device obtains the
`
`synchronization code or how the server system receives the synchronization code from the
`
`personal computing device.
`
`
`
`Claim 12 of the ’751 Patent is similarly worded. It is a “computer-implemented method”
`
`where the “content presentation device” performs the actions of “obtaining” the synchronization
`
`code and “providing” it to a remote computing device. User action is not required. Like claim 1 of
`
`the ‘251 patent, there is no limitation on how the content presentation device provides the
`
`synchronization code to a remote computing device.
`
`
`
`Turning to the specification, various embodiments are discussed, one of which is the
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`embodiment Defendants rely upon: “the user can select the display device by entering a
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`synchronization code uniquely associated with the particular display device.” (’251 Patent, 5:14–
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`16.) Also disclosed, however, are options that do not require user action at all, for example: “In
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`some implementations, the content provider is allowed to add links to videos for that web site (i.e.,
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`mobile site or an application). The link facilitates synchronization to the secondary device 22 (e.g.,
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`
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`13
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 14 of 33 PageID #: 1587
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`a television set) and allows the end-user to load and control the video on the secondary device.”
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`(Id., 9:28-33.) This is in addition to the disclosure that “[i]n some implementations, the user can
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`select the display device from a list of devices displayed on the mobile phone 20. The list can
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`include a field populated with names or identifications of display devices that previously have
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`been initialized for connection,” among other embodiments. (Id., 5:10–14; see also id., 5:21–23;
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`5:36–38.) Accordingly, the specification is not limited to the one embodiment identified by
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`Defendants.
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`
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`The prosecution history of the ’251 Patent does not support Defendants’ argument.
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`Although the Notice of Allowability filed by the examiner added the first three elements of claim
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`1 to overcome the prior art, there was no reference to “a code which can be obtained by a user
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`from the [display device / content presentation device] and provided by the user to the [personal
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`computing device / remote computing device]” as Defendants advocate. If this was a crucial
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`feature to distinguish the claim, the examiner would have included it. Nothing in the cited record
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`requires user action to perform the claimed method. Indeed, Defendants’ own proposed
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`construction does not require user action as it is written permissively (i.e., can be obtained by the
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`user).
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`“[C]laims should not be limited ‘to preferred embodiments or specific examples in the
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`specification.’” VLSI Tech. LLC v. Intel Corp., 53 F.4th 646, 652 (Fed. Cir. 2022). “[E]ven where
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`a patent describes only a single embodiment, claims will not be read restrictively unless the
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`patentee has demonstrated a clear intention to limit the claim scope using words or expressions of
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`manifest exclusion or restriction.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368,
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`1376 (Fed. Cir. 2015). In this case, the patent describes many embodiments, and Defendants seek
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`to limit the claims to one. The Court declines to do so.
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`14
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 15 of 33 PageID #: 1588
`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 15 of 33 PagelD #: 1588
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`The Court doesnot believe the term to be ambiguous or confusing whenreadin the context
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`of the full claim, the patent specification, and the prosecution history. A person of ordinary skill
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`in the art would be able to understand that a synchronization code, as used in the claims, is a code
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`used to synchronize or associate the display device and personal computing device that is
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`communicated by the server system to the display device or the personal computing device, and
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`back to the server system again.
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`The Court therefore finds the term “synchronization code” should have its plain and
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`ordinary meaning.
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`4. Order of the method claim stepsin the Patents-in-Suit
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`under relevant case law, and the jury|In the ‘’934 Patent,all steps of claim 17
`does not need instruction on ordering of|must occur in order.
`claim steps, as any ordering requirements
`2.A
`step
`Patent,
`°251
`the
`are reasonably clear from the clamms|In
`themselves.
`(“checking”) must occur after step 1.D
`(“receiving, in the server system, one
`or more signals’’)
`
`Defendants contend the plain language of the claims require the steps to be performed in a
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`certain order, as in their proposed construction. Plaintiff does not disagree, recognizing that the
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`claims logically require some steps to be performed after others, but argues that an express
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`instruction about the order of steps risks confusing the jury. In particular, Plaintiff points to how
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`claim 12 of the ’751 Patent, for example, contemplates a “second message”existing before the
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`receiving of a “first message,” even though the order of appearance has the “first message” being
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`introduced before the ’second message.” Thus, Plaintiff suggests, an explicit instruction about the
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`order of steps may be at odds with the structure of the claims.
`
`15
`
`Plaintiff's Construction
`Plain and ordinary meaning
`
`Defendants’ Construction
`In the ’751 Patent, all steps of claim 12
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`must occur in order. Theterms are not chronologically limited
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`
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`

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`Case 2:23-cv-00059-JRG Document 74 Filed 07/09/24 Page 16 of 33 PageID #: 1589
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`
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`“When analyzing whether an order exists between steps of a method claim, the
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`presumption is that limitations may be performed in any order.” Datanet LLC v. Dropbox, Inc.,
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`2023 WL 7545234, at *3 (W.D. Tex. Nov. 10, 2023) (citing Altiris, Inc. v. Symantec Corp., 318
`
`F.3d 1363, 1369 (Fed. Cir. 2003)). “Courts first look at the ‘claim language to determine if, as a
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`matter of logic or grammar, they must be performed in the order written’ and, if not, whether the
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`specification ‘directly or implicitly requires such a narrow construction.’” Id.
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`
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`Here, in most instances, the claim language establishes a certain order to the steps that
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`proceed in a logical manner. In claim 12 of the ’751 Patent, each step in the method references and
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`builds upon the preceding step, thereby creating an obvious progression of the steps, as follows:
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`12. A computer-implemented method for remotely presenting various types of
`content, comprising:
`obtaining, by a content presentation device, a synchronization code
`associated with
`the content presentation device, wherein
`the associated
`synchronization code is stored on a remote server device;
`providing, by the content presentation device, the synchronization code to
`a remote computing device in communication with the remote server device,
`wherein the provided synchronization code causes the remote server device to store
`an association between the content presentation device and the remote computing
`device;
`r