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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 1 of 36
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.
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`Plaintiff,
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`v.
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`GOOGLE LLC
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`
`Defendant.
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`
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`
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`Civil Action No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`TOUCHSTREAM’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 2 of 36
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`TABLE OF CONTENTS
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`INTRODUCTION.............................................................................................................. 1
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`BACKGROUND OF THE ASSERTED PATENTS ....................................................... 1
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`I.
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`II.
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`III. AGREED CONSTRUCTIONS......................................................................................... 3
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`IV. DISPUTED CONSTRUCTIONS ..................................................................................... 4
`A. “an association between the personal computing device and the [display device /
`content presentation device]” (’251 patent, claim 1; ’528 patent, claims 1, 27, 28;
`and ’289 patent, claims 1, 6) .......................................................................................... 4
`B. “video file” / “video content” (’251 patent, claims 1, 6, 7) ............................................ 9
`C. “converting the command from the personal computing device into
`corresponding code to control the media player” (’251 patent, claim 2) ..................... 10
`D. “universal command” (’251 patent, claim 5) ............................................................... 11
`E. “unique identification code assigned to the content presentation device”
`(’289 patent, claims 1 and 6) and “synchronization code assigned to the content
`presentation device” (’528 patent, claims 1, 27) .......................................................... 14
`F. “[identify/identifying/include information indicating] a location of the particular
`media player” (’528 patent, claims 1, 27, 28; and ’289 patent, claims 1, 7) ................ 18
`G. “action control command being independent of the particular media player”
`(’528 patent, claims 1, 27, 28; ’289 patent, claims 1 and 6) ........................................ 23
`H. “identifying, [by the server system,] programming code corresponding to the
`action control command, wherein the programming code is for controlling
`presentation of the content presentation device using the particular media player”
`(’528 patent, claims 1, 27, 28; ’289 patent, claims 1 and 6) ........................................ 27
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`CONCLUSION ................................................................................................................ 30
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`i
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`V.
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 3 of 36
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`TABLE OF AUTHORITIES
`
`
`Cases
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`3M Innovative Props. Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013) .......................................................................................... 14, 15
`
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082 (Fed. Cir. 2003) ................................................................................................ 19
`
`AK Steel Corp. v. Sollac,
`344 F.3d 1234 (Fed. Cir. 2003) ................................................................................................ 11
`
`Bio-Rad Labs., Inc. v. Int’l Trade Comm’n,
`998 F.3d 1320 (Fed. Cir. 2021) ................................................................................................ 20
`
`Bushnell-Hawthorne, LLC v. Cisco Sys., Inc.,
`813 F. App’x 522 (Fed. Cir. 2018) ........................................................................................... 12
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) .................................................................................................. 24
`
`Chimie v. PPG Indus., Inc.,
`402 F.3d 1371 (Fed. Cir. 2005) ................................................................................................ 25
`
`Eidos Display, LLC v. AU Optronics Corp.,
`779 F.3d 1360 (Fed. Cir. 2015) .................................................................................................. 9
`
`Energizer Holdings, Inc. v. Int’l Trade Comm’n,
`435 F.3d 1366 (Fed. Cir. 2006) ................................................................................................ 12
`
`GPNE Corp. v. Apple Inc.,
`830 F.3d 1365 (Fed. Cir. 2016) ................................................................................................ 17
`
`Hill-Rom Servs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ...................................................................................... 6, 16, 24
`
`In re Downing,
`754 F. App’x 988 (Fed. Cir. 2018) ..................................................................................... 12, 13
`
`Info-Hold, Inc. v. Applied Media Techs. Corp.,
`783 F.3d 1262 (Fed. Cir. 2015) ................................................................................................ 17
`
`Kara Tech. Inc. v. Stamps.com Inc.,
`582 F.3d 1341 (Fed. Cir. 2009) ............................................................................................ 7, 29
`ii
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 4 of 36
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .................................................................................................. 17
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .......................................................................................................... 9, 13
`
`Oatey Co. v. IPS Corp.,
`514 F.3d 1271 (Fed. Cir. 2008) ................................................................................................ 21
`
`Omega Eng’g, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ................................................................................................ 25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................................... 15, 20
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`Praxair, Inc. v. ATMI, Inc.,
`543 F.3d 1306 (Fed. Cir. 2008) .......................................................................................... 24, 29
`
`ScriptPro LLC v. Innovation Assocs., Inc.,
`833 F.3d 1336 (Fed. Cir. 2016) .................................................................................................. 8
`
`Tech. Props. Ltd. LLC v. Huawei Techs. Co.,
`849 F.3d 1349 (Fed. Cir. 2017) ................................................................................................ 22
`
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................................... 23, 27
`
`Toshiba Corp. v. Imation Corp.,
`681 F.3d 1358 (Fed. Cir. 2012) ............................................................................................ 4, 21
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ............................................................................................ 8, 21
`
`Statutes
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`35 U.S.C. § 112 ............................................................................................................................. 11
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`iii
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 5 of 36
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`I.
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`INTRODUCTION
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`Touchstream’s claim construction positions are rooted in straightforward and longstanding
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`rules decided by the Federal Circuit. For example, if a claim term carries a customary meaning in
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`the industry, that meaning should apply barring extraordinary circumstances. Google, by contrast,
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`attempts to insert many narrowing limitations into its proposed constructions that are not supported
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`by the intrinsic evidence. Google repeatedly and improperly restricts the plain and ordinary
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`meaning of the claim terms by importing limitations that are inconsistent with the plain claim
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`language itself, the overall context of the terms and phrases in the claims, and the disclosures
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`provided in the specifications. The Court should also reject Google’s contention that certain terms
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`are indefinite because those terms’ plain language delineate their scope with more-than-reasonable
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`clarity.
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`II.
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`BACKGROUND OF THE ASSERTED PATENTS
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`Founded in 2011, Touchstream, d/b/a “Shodogg,” develops software that enables content
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`to be cast (e.g., accessed, displayed, and controlled) from a mobile device to a second display
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`screen (e.g., TV, computer, tablet, etc.). As the leader in developing casting technology,
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`Touchstream sought to protect its intellectual property, including through obtaining the patents-
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`in-suit. The patents-in-suit share a specification, and each claims priority to the same U.S.
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`Provisional Patent Application No. 61/477,998 (filed on April 21, 2011). The ’251 patent is a
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`continuation of the ’289 patent, and the ’528 patent is a continuation of the ’251 patent.
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`Prior to the disclosures provided in the patents-in-suit, while a user of a personal computing
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`device (e.g., a mobile device) could find, view, and control content on his or her device, this had
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`significant disadvantages (e.g., the size of the mobile device, power limitations, ability to watch
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`1
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 6 of 36
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`with others, etc.). To address these disadvantages, the technology disclosed in the patents-in-suit
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`enables a user to locate content on his or her mobile device, select a second device (e.g., a TV,
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`computer, tablet, etc.), and view and control the content on the second device using the mobile
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`device. This solution provides a user-friendly and seamless way of promoting and facilitating the
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`consumption content.
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`The patents-in-suit explain that a personal computing device may send a message to a
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`server system, where the message identifies (1) content to be presented and controlled, and (2) a
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`device on which the content will be presented and controlled. (’251 patent at 2:66-3:18). Based on
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`the information received in the message, the patents-in-suit teach that an association (as illustrated
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`in Figure 1, below) is created between the personal computing device and the content presentation
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`device through the server system:
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`’251 patent at Figure 1 (annotations added).
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`2
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 7 of 36
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`(See also, e.g., ’251 patent at 1:43-52). The messages that are exchanged between the personal
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`computing device, server system, and content presentation device dictate the manner in which
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`content is presented and controlled on the content presentation device (e.g., play, pause, etc.). (Id.
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`at 3:33-41).
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`The asserted independent claims recite that a mobile device may transmit a message to the
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`server system, the message identifying in part: (1) the content, (2) the second device (e.g., display
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`device), and (3) the manner in which to present and control the content. (See, e.g., ’289 patent,
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`Claim 1, at 11:28-42). These claims further recite that the association among the personal
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`computing device and display device may be stored so that the information relating to the
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`presentation and control over the displaying of the video content may be transmitted. (Id. at 11:32-
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`34).
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`III. AGREED CONSTRUCTIONS
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`Claim Term
`“media player” (’251 patent, claim 1; ’528
`patent, claims 1, 27, 28; and ’289 patent, claims
`1, 6)
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`Agreed Construction
`plain and ordinary meaning
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`Touchstream originally proposed the construction “a computer application operable to
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`present content and control presentation of the content” for this term to ensure that it was construed
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`consistently across all three patents-in-suit. Based on Google’s arguments in its opening brief,
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`Touchstream accepts a plain and ordinary meaning construction, which encompasses the media
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`player being both a “computer application” and further being capable of both presenting content
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`and controlling its presentation.
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`3
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 8 of 36
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`IV. DISPUTED CONSTRUCTIONS
`A. “an association between the personal computing device and the [display device /
`content presentation device]” (’251 patent, claim 1; ’528 patent, claims 1, 27, 28;
`and ’289 patent, claims 1, 6)
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`Touchstream’s Proposed Construction
`plain and ordinary meaning - no construction
`needed
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`Google’s Proposed Construction
`one-to-one mapping between the personal
`computing device and the [display device /
`content presentation device]
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`Touchstream submits that the simple term “association” is used here in its plain and
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`ordinary sense and requires no construction. An “association,” according to the patents-in-suit, is
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`simply a “connection” or “correspondence” between two things―here the “personal computing
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`device” and the “[display device / content presentation device].”1 The patents-in-suit use the term
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`“association” in its ordinary sense, which would be readily apparent to a person of ordinary skill
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`in the art, and even to a lay juror. “Absent disclaimer or lexicography, the plain meaning of the
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`claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). Because
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`the intrinsic record does not contain disclaimer or lexicography that justifies departing from the
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`plain meaning as understood by persons of ordinary skill in the art, the plain meaning of
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`“association” governs.
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`The intrinsic record shows that the term “association,” as used in the patents-in-suit, does
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`not deviate from its plain and ordinary meaning. The claims state that the “association” between
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`the personal computing device and the display device is established by “a record” that allows the
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`user to carry out the claimed method of using the personal computing device to control presentation
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`1 The asserted claims of the ’251 patent recite the term “display device,” while the asserted claims
`of the ’528 and ’289 patents recite the term “content presentation device.”
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`4
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 9 of 36
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`of content on the presentation device. (E.g., ’251 patent, Claim 1). The claimed “association,”
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`then, simply indicates a connection or relationship between the two devices so that the personal
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`computing device can be used to control presentation of content on the display device, consistent
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`with the plain and ordinary meaning of the term “association.”2
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`The specification repeatedly describes an “association” broadly as a “connection” or
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`“correspondence” between the personal computing device and the display device. For instance,
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`the specification explains how, in one embodiment, a look-up table “stores a correspondence
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`between a particular personal computing device (such as mobile phone 20) and target devices (e.g.,
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`the television set 22) to which the user command is directed.” (’251 patent at 4:55-59) (emphasis
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`added). The specification then explains how the “correspondence” is used to establish a
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`“connection” between the personal computing device (a “mobile phone” in this embodiment) and
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`the display device:
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`Once a connection is established between the mobile phone 20 and the display
`device 22, signals sent from the mobile device 20 to its associated database 32 are
`copied to a database 34 associated with the target device (e.g., television set 24)
`based on the correspondence between the mobile device and the target device listed
`in the look-up table 36 (block 122).
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`(Id. at 5:42-48) (emphasis added). More specifically, that “connection” or “correspondence” is
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`used to facilitate messaging between the personal computing device and the display device so that
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`the user can control playback of content on the display device using a media player:
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`Thus, the database 32 entries associated with a particular display device (e.g.,
`television set 24) provide a record of the messages received for that display device,
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`2 For instance, the 1997 Random House Webster’s Unabridged Dictionary, 2nd Edition, defines
`an “association” as “a connection or combination,” and further as “the act of associating or state
`of being associated,” where “associate” is defined as “to connect or bring into relation.” (Ex. A
`at 3).
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`5
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 10 of 36
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`as well as an indication of the identification of the device that sent each message,
`an indication of the media player required to play the video, and an indication of
`the selected video.
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`(Id. at 5:48-53). Nothing in these disclosures compels anything other than a plain and ordinary
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`meaning construction for the term “association.” The term is used in its ordinary sense, absent
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`any lexicography or disavowal, and neither the specification nor claims justifies narrowing the
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`term to a “one-to-one mapping.”
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`Google’s proposed construction is both confusing and unsupported by the intrinsic record.
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`It will not aid the jury in understanding this term, as it raises more questions than it answers. For
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`example, what constitutes a “one-to-one” mapping? Does it exclude other associations between
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`the personal computing device and other display devices? Does it exclude other associations
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`between a display device and other personal computing devices? Google describes a “one-to-one
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`mapping” as a “direct connection between two items,” but this is no more helpful. What, exactly,
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`is a “direct” connection, and how does it differ here from an “indirect connection”? Does this
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`preclude infringement when a home WiFi router is used for device connectivity? Google’s
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`proposal converts a commonly-used term understandable by a lay person into something technical
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`and confusing.
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`Further, Google’s proposed construction is unsupported by the intrinsic record. Google
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`improperly attempts to read a preferred embodiment into the claims without providing any
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`justification for doing so. “The patentee is entitled to the full scope of his claims, and we will not
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`limit him to his preferred embodiment or import a limitation from the specification into the
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`claims.” Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009); see also Hill-
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`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1373 (Fed. Cir. 2014) (refusing to deviate from
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`6
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 11 of 36
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`plain and ordinary meaning where specification stated that figures were exemplary only and
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`“merely illustrate[d] embodiments of the invention”) (citations omitted). The portions of the
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`specification to which Google cites, describing a single connection, make clear that they are
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`exemplary only and not meant to limit the scope of the invention. The specification states, for
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`instance, “In this example, it is assumed that, at most, a single connection is established at any
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`given time between a particular mobile phone and a display device,” and goes on to state
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`“However, as explained below, other scenarios are also possible to establish group connections
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`(e.g., multiple mobile phones connected to the same display device).” (’251 patent at 4:60-65)
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`(emphasis added).
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`Indeed, the specification does go on to describe embodiments with (1) multiple personal
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`computing devices connected to one display device (’251 patent at 8:8-32); (2) one personal
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`computing device connected to multiple display devices (id. at 8:33-44); and (3) multiple personal
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`computing devices connected to multiple display devices (id. at 8:45-9:2), further showing that
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`Google’s proposed construction is improperly based on a non-limiting exemplary embodiment.
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`The specification makes clear that an association or “connection” between these multiple personal
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`computing devices and display devices is a fundamental part of these embodiments.3 The
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`3 See ’251 patent at 8:29-32 (“The look-up table 36 in the server system 24 stores the connections
`established between the personal computing devices of the users in the group and the display
`device (see FIG. 15).”); 8:33-37 (“A fourth scenario involves one user’s smartphone and multiple
`display devices (FIG. 11). In this example, a user opens the application on his smartphone to
`establish a connection to a first display device and then repeats the process for multiple display
`devices.”); 8:45-51 (“A fifth scenario involves multiple users’ smartphones and multiple
`connected display devices (FIG. 12). . . . Each user establishes a connection from her smartphone
`to the display device where she is located.”); 8:66-9:2 (“The look-up table 36 in the server system
`24 stores the connections established between the personal computing devices of the users in the
`group and the display devices (see FIG. 15).”).
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 12 of 36
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`specification does not describe these embodiments as separate or distinct inventions compared to
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`the single-phone/single-display embodiment; rather, it expressly connects them all, stating
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`“[e]xamples of several scenarios that can be implemented using the system described above are
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`described in the following paragraphs.” (Id. at 7:12-15) (emphasis added). As the Federal Circuit
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`has highlighted, a claim construction that excludes other disclosed embodiments―as Google’s
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`“one-to-one” construction would―is rarely correct, and Google provides no justification for doing
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`adopting such a construction here. See Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
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`1295, 1305 (Fed. Cir. 2007) (stating that courts “normally do not interpret claim terms in a way
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`that excludes disclosed examples in the specification”); see also ScriptPro LLC v. Innovation
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`Assocs., Inc., 833 F.3d 1336, 1341-42 (Fed. Cir. 2016) (holding that where a specification
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`expressly contemplates other embodiments or purposes,” that “specification’s focus on one
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`particular embodiment or purpose cannot limit the described invention”).4
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`The asserted claims use the term “association” in its ordinary sense, and thus its meaning
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`would be readily apparent to both a person of ordinary skill in the art and a layperson. Google has
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`failed to point to any instances of disclaimer or lexicography that would justify a departure from
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`this plain meaning. Further, Google’s proposal is both confusing and improperly narrow—
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`excluding multiple embodiments from the asserted claims. Accordingly, the Court should reject
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`Google’s construction and construe this term as having its plain and ordinary meaning.
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`4 In a footnote, Google argues that these embodiments involving multiple personal computing
`devices and/or multiple display devices are not covered by the asserted claims, because the claims
`“recite a single display device and single personal computing device.” (Dkt. No. 25 at 7). But
`Google ignores the fundamental tenet that the claims at issue use open “comprising” clauses, and
`thus do not exclude additional personal computing devices or presentation devices from the scope
`of the claims.
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 13 of 36
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`B. “video file” / “video content” (’251 patent, claims 1, 6, 7)
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`Touchstream’s Proposed Construction
`plain and ordinary meaning - no construction
`needed
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`While Google alleges that these terms are used interchangeably in the claims and are
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`Google’s Proposed Construction
`indefinite
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`therefore indefinite, a person of ordinary skill in the art―and even a lay person―would readily
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`understand the distinction between a video “file” and the video “content” stored thereon. Therefore
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`the terms are not indefinite.
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`Whether a claim is indefinite is judged from the perspective of a person of ordinary skill
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`in the art, and proving indefiniteness requires clear and convincing evidence. Nautilus, Inc. v.
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`Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). In assessing indefiniteness, a limitation
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`should be considered “in the context of the particular claim in which the disputed term appears,
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`[and] in the context of the entire patent, including the specification.” Eidos Display, LLC v. AU
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`Optronics Corp., 779 F.3d 1360, 1365 (Fed. Cir. 2015) (quoting Phillips, 415 F.3d at 1313).
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` Properly considered in the context of the claims, the terms “video file” and “video content”
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`are not used interchangeably, as Google alleges, but rather are used in an ordinary sense that would
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`make the distinction between them clear to a skilled artisan, and even to a layperson. The plain
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`language of the claims makes clear that a video file is specified in signals from the personal
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`computing device; those signals specify the particular video file “to be acted upon” (E.g., ’251
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`patent, Claim 1) (emphasis added). The plain language of the claims also makes clear that video
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`content is what is actually played back and controlled by the media player in response to commands
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`sent from the personal computing device. For instance, the claims recite that the media player is
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`used “for playing the video content” and “for controlling playing of the video content on the display
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 14 of 36
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`device.” (Id.) (emphasis added).
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`These uses of “file” and “content”―with the file storing the content, which is then played
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`back―are also consistent with the plain and ordinary meanings of those terms. A skilled
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`artisan―and even a lay juror―would readily understand a “file” as a container that stores
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`“content.” The file can be moved around (e.g., copied-and-pasted, downloaded, etc.), and its
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`contents go with it. A user can double click on a file on his or her computer to view its “content.”
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`Similarly, here, a user can retrieve a “video file” and play back its “content,” for instance by
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`streaming over the Internet or by loading the file into an appropriate player and pressing “play,”
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`“stop,” etc.
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`The specification likewise reflects this distinction between a video “file” and the video
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`“content” contained in the file by making clear that video “files” are downloaded from “content
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`providers,” and the video associated with the file―i.e., the “content” provided by the “content
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`provider”―is then played back and controlled using various commands such as “pause, fast
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`forward, rewind, stop, play, etc.” (’251 patent at 6:35-54, Fig. 6). The plain meaning of these terms,
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`the context in which they are used in the asserted claims, and the specification make the distinction
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`between them clear. Each has a definite and distinct meaning that would be understood by both a
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`person skilled in the art and a layperson. The Court should therefore reject Google’s assertion that
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`these terms are indefinite.
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`C. “converting the command from the personal computing device into corresponding
`code to control the media player” (’251 patent, claim 2)
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`Touchstream’s Proposed Construction
`plain and ordinary meaning - no construction
`needed
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`Google’s Proposed Construction
`indefinite
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 15 of 36
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`Google alleges that this term is indefinite because it “repeats language from claim 1,” but
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`Google’s indefiniteness argument requires contorting the disputed claim language in an attempt to
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`create confusion and ignores the more plausible and common-sense reading. Claim 1 requires
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`“converting, by the server system, the universal playback control command into corresponding
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`programming code to control playing of the video content on the display device by the particular
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`media player.” Claim 2 recites “the method of claim 1 including . . . converting the command from
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`the personal computing device into corresponding code to control the media player.” “Dependent
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`claims are presumed to be of narrower scope than the independent claims from which they
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`depend.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1242 (Fed. Cir. 2003); see also pre-AIA 35
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`U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all
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`the limitations of the claim to which it refers.”). Thus a person of ordinary skill in the art would
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`understand claim 2 to simply add a further limitation requiring “converting.” Under this
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`straightforward interpretation, there is no confusion about the scope of claim 2, and Google has
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`not met its heavy burden to show otherwise by clear and convincing evidence.
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`D. “universal command” (’251 patent, claim 5)
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`Google’s Proposed Construction
`indefinite
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`Touchstream’s Proposed Construction
`plain and ordinary meaning - no construction
`needed
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`alternatively, plain and ordinary meaning,
`which is “a standard command used for
`controlling playback of media content such as
`play or pause”
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` A
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` person of ordinary skill in the art, and even a lay juror, would readily understand that the
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`“universal command” recited in this dependent claim 5 is merely a shorthand for the “universal
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 16 of 36
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`playback control command” of independent claim 1, and that both the “universal playback control
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`command” and “universal command” terms are used in their ordinary sense to mean exactly what
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`the terms “universal,” “playback control,” and “command” suggest: a standard command used for
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`controlling playback of media content, such as “play” or “pause.” Accordingly, this term should
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`be afforded its plain and ordinary meaning, and the Court should reject Google’s argument that
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`this term is indefinite.
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`Google’s primary argument—that “universal command” is indefinite because it lacks an
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`antecedent basis in claim 1—fails because “the lack of an antecedent basis does not render a claim
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`indefinite as long as the claim apprises one of ordinary skill in the art of its scope and, therefore,
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`serves the notice function required by [§ 112 ¶ 2].” In re Downing, 754 F. App’x 988, 996 (Fed.
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`Cir. 2018) (citations omitted); see also Bushnell-Hawthorne, LLC v. Cisco Sys., Inc., 813 F. App’x
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`522, 526 (Fed. Cir. 2018) (“The lack of antecedent basis . . . does not end the [indefiniteness]
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`inquiry.”). Indeed, “[w]hether [a] claim, despite lack of explicit antecedent basis . . . nonetheless
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`has a reasonably ascertainable meaning must be decided in context.” Energizer Holdings, Inc. v.
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`Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006).
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`Energizer is on-point. There, an independent claim recited “an anode gel comprised of
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`zinc,” and its dependent claim recited “said zinc anode.” The Federal Circuit reasoned that it was
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`“apparent that the claim can be construed” and concluded that “‘anode gel’ is by implication the
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`antecedent basis for ‘said zinc anode.’” Id. at 1371 (overturning the lower court’s indefiniteness
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`finding). There was, after all, no other “anode” claimed that was made of “zinc.” The case for
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`indefiniteness is even weaker here, given that there is no real possibility of confusion (as might be
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`possible with “anode gel” and “anode”). Here, the term “universal playback control command” in
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`Case 6:21-cv-00569-ADA Document 29 Filed 01/06/22 Page 17 of 36
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`claim 1 of the ’251 patent is by implication the antecedent basis for “universal command” in claim
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`5. Claim 1 refers to only one “universal” command; the term “universal” is not used anywhere else
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`in the claims. What else, then, could the “universal command” of claim 5 be? See in re Downing,
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`754 F. App’x at 996 (finding term “the end user” not indefinite for lack of antecedent basis where
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`independent claim recited only one “end user,” and asking “[w]ho else could the end user be?”).
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`Further, the specification makes it clear that the “universal command” recited in claim 5 is
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`the same as the “universal playback control command” of claim 1. See Nautilus, 134 S. Ct. at 2124
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`(claims must be “read in light of the specification” in evaluating indefiniteness). For example,
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`when discussing a particular embodiment, the specification describes the