Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 1 of 21
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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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`Civil Action No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`TOUCHSTREAM’S SUR-REPLY CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 2 of 21
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`TABLE OF CONTENTS
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`INTRODUCTION.............................................................................................................. 1
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`AGREED CONSTRUCTIONS......................................................................................... 1
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`I.
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`II.
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`A. “media player” ................................................................................................................ 1
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`III. DISPUTED CONSTRUCTIONS ..................................................................................... 1
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`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) ........................................... 1
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`B. “video file” / “video content” (’251 patent, claims 1, 6, 7) ............................................ 3
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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) ............................................... 5
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`D. “universal command” (’251 patent, claim 5) ................................................................. 6
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`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) ............................................... 7
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`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) ..................................................................................................................... 9
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`G. “action control command being independent of the particular media player”
`(’528 patent, claims 1, 27, 28; ’289 patent, claims 1 and 6) ........................................ 11
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`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) ........................................ 13
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`IV. CONCLUSION ................................................................................................................ 15
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 3 of 21
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`TABLE OF AUTHORITIES
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`Cases
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`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016) .................................................................................................. 7
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`Blackbird Tech. LLC v. ELB Elecs., Inc.,
`895 F.3d 1374 (Fed. Cir. 2018) ................................................................................................ 12
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`Copperhead Indus., Inc. v. Changer & Dresser, Inc.,
`No. 1:18-CV-01228-ACA, 2020 WL 429484 (N.D. Ala. Jan. 28, 2020) ................................... 4
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`Dow Chem. Co. v. Nova Chems. Corp.,
`809 F.3d 1223 (Fed. Cir. 2015) .................................................................................................. 3
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`Halliburton Energy Servs., Inc. v. M-I LLC,
`514 F.3d 1244 (Fed. Cir. 2008) .................................................................................................. 8
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`Home Diagnostics, Inc. v. LifeScan, Inc.,
`381 F.3d 1352 (Fed. Cir. 2004) .................................................................................................. 8
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`i4i Ltd. P’ship v. Microsoft Corp.,
`598 F.3d 831 (Fed. Cir. 2010) .................................................................................................... 8
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`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) .................................................................................................. 2
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .................................................................................................... 7
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`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................................... 3
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`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ................................................................................................ 13
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`Prima Tek II, LLC v. Polypap, SARL,
`318 F.3d 1143 (Fed. Cir. 2003) ................................................................................................ 13
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`Tate Access Floors, Inc. v. Interface Architectural Resources, Inc.,
`279 F.3d 1357 (Fed. Cir. 2002) .................................................................................................. 9
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 4 of 21
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`Twist, Inc. v. B. GSE Grp., LLC,
`No. 3:19-cv-00583, 2021 WL 2210892 (W.D.N.C. June 1, 2021) ............................................. 4
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`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016) ................................................................................................ 12
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`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) .................................................................................................. 2
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`Virnetx, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .................................................................................................. 5
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 5 of 21
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`I.
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`INTRODUCTION
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`Touchstream submits this sur-reply brief in response to Defendant Google LLC’s
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`(“Google”) reply claim construction brief (Dkt. 30).
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`II.
`AGREED CONSTRUCTIONS
`A. “media player”
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`The Parties agree that this term should be afforded its plain and ordinary meaning and no
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`further construction is necessary.
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`III. 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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`Google’s reply argument has multiple flaws. First, Google falsely states that “[a]s
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`Touchstream points out, the specification makes clear that the record that stores the association
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`between the personal computing device and display device uniquely connects (i.e., maps) the two
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`devices . . . .” (Dkt. 30 at 4,1 emphasis added). In fact, Touchstream pointed out the opposite: that
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`the association does not have to be unique or “one-to-one,” insofar as that means only two devices
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`can ever be connected. (Dkt. 29 at 10). Reading a “one-to-one” limitation into the claims
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`improperly excludes embodiments expressly disclosed in the specification, contravening
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`fundamental canons of claim construction. See Verizon Servs. Corp. v. Vonage Holdings Corp.,
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`1 Citations are to ECF page numbers.
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`503 F.3d 1295, 1305 (Fed. Cir. 2007) (“We normally do not interpret claim terms in a way that
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`excludes disclosed examples in the specification”).
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`Next, Google argues that the “association” must be “one-to-one” in order for the server to
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`identify the proper devices. But adding the term “one-to-one” to the construction does not support
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`this point. The plain and ordinary meaning of the term “association,” which refers to a connection
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`or correspondence (see Dkt. 29 at 9), indicates the relationship between the connected devices: the
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`server can identify the proper devices because of the connection or correspondence between them.
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`A person of ordinary skill in the art―and even a lay juror―would be perfectly capable of
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`understanding the claimed “association” without further construction because the term is used in
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`its ordinary sense. (Dkt. 29 at 8-9). Google’s proposal reads in a preferred embodiment and creates
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`confusion.
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`Finally, Google does not even attempt to rebut Touchstream’s argument regarding the open
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`“comprising” transition clause in the claims (Dkt. 29 at 12 n.4), instead repeating the argument
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`that the claims recite only a single phone and a single display. But that argument fails. The claims
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`at issue in this case contain the transitional phrase “comprising,” and further recite “a personal
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`computing device” and “a display device” (or “a content presentation device”). The Federal
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`Circuit “has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries
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`the meaning of ‘one or more’ in open-ended claims containing the transitional phrase
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`‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)
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`(citations omitted). As the Federal Circuit went on to state, “the article ‘a’ receives a singular
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`interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the
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`article.” Id. No such “rare circumstances” are present here. To the contrary, the specification
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`expressly describes embodiments in which multiple personal computing devices connect to
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`multiple display devices, and it makes clear that these embodiments are within the scope of the
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`invention. (Dkt. 29 at 11-12).
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`Google’s attempt to limit this term to a “one-to-one mapping” improperly imports
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`limitations from the specification, ignores fundamental principles of claim interpretation, and
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`creates unnecessary confusion. The Court should find that this term has its plain and ordinary
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`meaning, and that no construction is needed.
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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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`Google has not met its burden to prove, by clear and convincing evidence, that these terms
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`Google’s Proposed Construction
`indefinite
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`are indefinite. To do so, Google must show that the “claims, read in light of the patent’s
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`specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the
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`art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 898–
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`99 (2014). Indefiniteness is “evaluated in light of knowledge extant in the art at the time the patent
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`application is filed. . . . It has long been the case that the patent need not disclose what a skilled
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`artisan would already know.” Dow Chem. Co. v. Nova Chems. Corp., 809 F.3d 1223, 1225 (Fed.
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`Cir. 2015) (citations omitted). Despite this established authority, Google has failed to provide any
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`evidence demonstrating that a skilled artisan would not have known the meanings of a “video file”
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`and “video contents.” Not only did it fail to provide a declaration or similar testimony in support
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`of its untenable position, it did not even provide a definition of what the level of skill in the art
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`would be. See, e.g., Twist, Inc. v. B. GSE Grp., LLC, No. 3:19-cv-00583, 2021 WL 2210892, at *8
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 8 of 21
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`(W.D.N.C. June 1, 2021) (“Since [Defendant] fails to identify the level of skill for a POSITA or
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`testimony from a POSITA, it is in no position to argue that a POSITA would have trouble
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`discerning the scope of the claims.”). In fact, Google never even refers to a person of ordinary skill
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`in the art in arguing that these terms are indefinite. Google cannot carry its heavy burden of proving
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`indefiniteness by clear and convincing evidence without any analysis of how a person of ordinary
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`skill in the art would understand these claim terms.
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`Google accuses Touchstream of relying on “attorney argument,” but it is Google’s burden
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`to show indefiniteness by clear and convincing evidence, and it is Google that offers only
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`unsupported attorney argument by alleging that these terms are indefinite without providing any
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`evidence regarding a person of skill in the art. See Twist, 2021 WL 2210892 at *8 (“[E]ach
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`‘uncertainty’ that [Defendant] alleges a POSITA might face is purely conjecture and attorney
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`argument. This is insufficient to prove indefiniteness.”); see also Copperhead Indus., Inc. v.
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`Changer & Dresser, Inc., No. 1:18-CV-01228-ACA, 2020 WL 429484, at *6–7 (N.D. Ala. Jan.
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`28, 2020) (“[Defendant] offers no evidence—much less clear and convincing evidence—that a
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`person of ordinary skill in the art would not understand the term actuator. . . . Therefore,
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`[Defendant] has not met its burden of establishing that ‘actuator’ is indefinite.”). Touchstream
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`merely pointed out, in its responsive brief, that even a lay person reading the claim in view of the
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`specification would understand the relationship between a “video file” and “video content”
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`(specifically, that a “file” is a container that holds “content”). See Twist, 2021 WL 2210892 at *8
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`(finding claim definite in part because “‘attached’ is an ordinary and common phrase for ‘joined’
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`or ‘fastened’ that even a lay person, who is not a POSITA, can understand”). Google has failed to
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`carry its burden to show these terms are indefinite, and the Court should reject Google’s assertion.
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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
`As with the previous term, Google has not met its burden to show that this term is
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`Google’s Proposed Construction
`indefinite
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`indefinite. First, contrary to Google’s arguments, claim differentiation does not require “different
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`words or phrases” in different claims. Instead, it stands more generally for the proposition that “the
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`presence of a dependent claim that adds a particular limitation raises a presumption that the
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`limitation in question is not found in the independent claim.” Virnetx, Inc. v. Cisco Sys., Inc., 767
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`F.3d 1308, 1316 (Fed. Cir. 2014). Here, dependent claim 2 recites a “converting” limitation
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`without using “wherein” language that would imply this claim is modifying or narrowing the
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`“converting” limitation from claim 1. Accordingly, the presumption is that the “converting”
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`limitation in claim 2 is not modifying or limiting the “converting” limitation in claim 1, but stands
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`as its own separate limitation, in addition to the “converting” limitation of claim 1.
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`Further, the specification supports such additional “converting” steps. For example, the
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`same embodiments that describe a “converting” step describe the use of “commands”―plural―to
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`control playback. See, e.g., ’251 patent at 5:62-6:3 (“[T]he system loads the appropriate set of
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`protocols . . . and converts the incoming commands from the mobile device 20 into the correct
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`JavaScript (or other programming) code used by the target device 22 to control the specific
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`player.”); 6:51-60:
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`Once the video is playing on the display device 22, the user of the mobile phone 20
`can control the playing of the video by entering appropriate commands (e.g., pause,
`fast forward, rewind, stop, play, etc.) through the mobile phone. . . . The message
`is transmitted to the server system 24, which copies the message into database
`entries associated with the particular display device 22 (i.e., after performing any
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`conversion of the command by the API adapter 26).
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`(emphases added). The specification expressly contemplates a series of commands that are sent
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`and then converted. Google’s argument regarding antecedent bases likewise fails because the
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`meaning of the claim is reasonably ascertainable based on the surrounding claims and the
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`specification. The claim is not indefinite.
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`D.
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` “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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`Google’s reply brief does not rebut Touchstream’s arguments that this term has its plain
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`and ordinary meaning and requires no construction. First, Google states that it stands on its
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`arguments in its opening brief. (Dkt. 30 at 8). But it then pivots, suggesting that the Court consider
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`adopting a particular alternative construction for the related terms “universal command” and
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`“universal playback control command.” The Court should reject Google’s proposal because it is
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`redundant and fails to give meaning to all of the claims’ terms. Google proposes reading a
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`conversion limitation into the claim term―“a standard command that is converted into a specific
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`command”―but claim 1 of the ’251 patent (in which the term “universal playback control
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`command” first appears) already recites the “converting” step: “converting, by the server system,
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`the universal playback control command into corresponding programming code to control playing
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`of the video content on the display device by the particular media player.” (’251 patent at 11:43-
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 11 of 21
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`46). “Claim constructions should give meaning to all of a claim’s terms,” and “[c]onstruing a claim
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`term to include features of that term already recited in the claims would make those expressly
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`recited features redundant.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016).
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`Google’s redundant construction fails this basic test.
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`Should the Court decide to adopt any construction for “universal command,” it should
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`adopt Touchstream’s alternative proposed construction, which reflects the term’s plain and
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`ordinary meaning and properly gives meaning to all of the claim’s terms.
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`E.
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` “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)
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`Google’s Proposed Construction
`[unique identification / synchronization]
`code assigned by the server system to the
`content presentation device
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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 “[unique identification code] /
`[synchronization code] associated with a
`content presentation device”
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`Rather than responding to Touchstream’s arguments, Google simply repeats its incorrect
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`assertion that the server is the only actor identified in the patent as performing assignment―then
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`doubles down on its flawed argument that its construction must be correct. Google’s argument
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`contravenes substantial case law from the Federal Circuit holding that “it is improper to read
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`limitations from a preferred embodiment described in the specification—even if it is the only
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`embodiment—into the claims absent a clear indication in the intrinsic record that the patentee
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`intended the claims to be so limited.” See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913
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`(Fed. Cir. 2004) (collecting cases) (emphasis added); see also Home Diagnostics, Inc. v. LifeScan,
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`Inc., 381 F.3d 1352, 1357 (Fed. Cir. 2004) (“[T]he applicant’s choice to describe only a single
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`embodiment does not mean that the patent clearly and unambiguously disavowed other
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`embodiments.”). Google does not cite any case law to the contrary in support of its position.
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`Further, assignment by the server is not the only embodiment contemplated, as
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`Touchstream pointed out in its responsive brief. (Dkt. 29 at 21). While Google contends that the
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`specification “strongly suggests” that the code should not be an IP or MAC address (neither of
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`which would be assigned by the server), the language Google cites—i.e., “can be different” and
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`“preferably, the synchronization code is different”—at most suggests that the code could be, but
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`does not have to be, different. This language certainly does not amount to the clear and
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`unmistakable disavowal required for disclaimer. See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d
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`831, 844 (Fed. Cir. 2010) (“The specification’s permissive language, ‘could be edited,’ ‘can be
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`created,’ and ‘ability to work,’ does not clearly disclaim systems lacking these benefits.”);
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`Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Additionally,
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`the specification states that ‘preferably’ none of these clays are added; this strongly suggests that
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`absence of clays is simply a preferred embodiment.”).
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`Google also argues that the server system must assign the code because the claims recite a
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`method of controlling presentation and “the steps in the body of the claim recite steps performed
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`by ‘a server system.’” But Google does not explain why the server’s role in controlling
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`presentation of content (as the preamble recites) means that the server must also assign a
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`synchronization code. Further, while some steps in the body of the claim are recited as being
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`performed by the server system (e.g., receiving messages from the personal computing device,
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`identifying programming code), others recite no such requirement (e.g., assigning the code, storing
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 13 of 21
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`a record). Where the patentee meant for steps to be performed by the server, he said so. See Tate
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`Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1371 (Fed. Cir.
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`2002) (rejecting narrow construction based on single embodiment in part because “where the
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`patentee meant to constrict the claim to [that embodiment], he said so clearly”). Google’s
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`arguments should be rejected: this term requires no construction. But if the Court believes one is
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`necessary, it should adopt Touchstream’s alternative proposal, which is properly based on the plain
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`and ordinary meaning of the claim terms.
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`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)
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`Touchstream’s Proposed Construction
`plain and ordinary meaning, which is, provide
`information that locates or may be used to
`locate the particular media player
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`Google’s Proposed Construction
`[identify/identifying/including information
`indicating] an Internet address from where
`the media player is obtained by the content
`presentation device
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`Contrary to Google’s assertions, Touchstream does not “ignore” the word “location” in this
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`claim term. Touchstream simply points out that the word “location” has its plain and ordinary
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`meaning here, rather than improperly reading a preferred embodiment into the claims (as Google
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`does in attempting to limit “location” to “an Internet address”). And unlike Google’s construction,
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`Touchstream’s construction gives patentable weight not only to the term “location,” but also to the
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`claim terms “identify,” “identifying,” and “including information indicating” by capturing their
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`plain and ordinary meaning: that is, “to provide information that locates or may be used to locate.”
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`Nor does Touchstream conflate identifying the media player with identifying its location,
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`as Google alleges. Rather, Touchstream’s construction expressly contemplates that the provided
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`information must be sufficient to locate the media player, not merely identify it.
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`Google’s final two arguments fail together because Google again disregards an express
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`embodiment―discussed first in the specification and then in the claims―in which the media
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`player is already located on the content presentation device and is therefore not on the Internet at
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`all. Google argues that the location could nonetheless still be an Internet address because the media
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`player may have been “previously located on the Internet.” (Dkt. 30 at 12). But Google’s only
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`support for this convoluted argument is that the media player is obtained over a network in a
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`preferred embodiment. The claims should not be read so narrowly in view of the specification,
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`which expressly contemplates (1) that “the message from the mobile phone includes . . . the
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`location and name of the media player” (’251 patent at 4:29-33), (2) that in one embodiment of the
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`invention, the media player is “not already loaded in the display device” and must be obtained
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`“from a content provider” (id. at 6:36-40), and (3) that in another, separate embodiment, the “media
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`player already is loaded in the display device” (id. at 6:42-43). Absent disclaimer or disavowal,
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`the term “location” should be construed broadly enough to encompass both embodiments, which
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`mandates rejecting Google’s overly-narrow construction limiting the location to “an Internet
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`address.”2
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`As noted above, Google’s final argument―concerning claim differentiation―fails for
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`similar reasons. First, Touchstream’s own argument in its responsive brief would not vitiate any
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`(unspecified) limitations of the ’528 patent, as Google alleges. (Dkt. 30 at 13). Touchstream simply
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`2 Google also argues, without support, that the personal computing device “has no knowledge” of
`whether the media player is already loaded on the content presentation device. (Dkt. 30 at 12). But
`if the personal computing device has no knowledge of where the media player is located, there
`would be no reason for it to provide location information as expressly claimed.
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 15 of 21
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`explained that the term “location” should not be limited to “an Internet address” by noting that
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`some claims (as in the ’528 patent) require the media player to be obtained over a network, while
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`others (as in the ’289 patent) do not. Google then alleges that “claim 10 [sic] merely adds an
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`additional claim limitation in the case where the media player has already been obtained over the
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`Internet,” but Claim 11 (which Google presumably meant to cite) simply recites that “the content
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`presentation device is operable to load the particular media player in the content presentation
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`device if the particular media player is not already loaded in the content presentation device.”
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`Claim 11 recites nothing about the Internet or obtaining the media player over a network, as Google
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`alleges. And Claim 11 provides no support for Google’s assertion that an Internet address would
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`be provided to the content presentation device even though the media player is not even located
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`on the Internet. Touchstream’s proposed construction, which merely interprets the plain and
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`ordinary meaning of these claim terms in view of the specification and claims, does not suffer from
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`any of these flaws, and should therefore be adopted by the Court.
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`G. “action control command being independent of the particular media player” (’528
`patent, claims 1, 27, 28; ’289 patent, claims 1 and 6)
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`Touchstream’s Proposed Construction
`plain and ordinary meaning - no construction
`needed
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`Google’s Proposed Construction
`action control command being in a standard
`format that must be converted for use by the
`particular media player
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`Much like in its opening brief, Google’s reply arguments for reading the word “standard”
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`into this term all relate to a standard command rather than a standard format (e.g., “it is clear from
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`the specification that the commands received from the personal computing device are ‘standard,’”
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`Dkt. 30 at 10, emphasis added). As Touchstream pointed out in its responsive brief, a command
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`could be standard (such as play, pause, stop, etc.) yet be in any format―standard or non-standard
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`11
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 16 of 21
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`(i.e., JSON or a unique format concocted by a developer). (Dkt. 29 at 30). Google also points to
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`Touchstream’s construction of “universal command” as alleged support for reading “standard
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`format” into this claim. But Touchstream’s use of “standard” in that construction corresponds to
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`the claim term “universal,” which likewise describes the command itself, rather than the format of
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`the command.
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`Google’s argument that the term “convert” must be read into the claims because it appears
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`in the “Summary” section of the specification is also misplaced. “[I]t is certainly not the case that
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`everything in . . . the summary of the invention constitutes a mandatory claim limitation to be read
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`into claims. . . . This should not be interpreted as any sort of hard rule regarding claim
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`construction.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016). A
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`disclaimer or disavowal of claim scope must still be clear and unmistakable, requiring “words or
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`expressions of manifest exclusion or restriction” in the intrinsic record. Id. (quoting Teleflex, Inc.
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`v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)). Here, the term “convert” in the
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`Summary section is prefaced by “in some implementations,” rather than by more limiting language
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`such as “the present invention.” Id.; see also Blackbird Tech. LLC v. ELB Elecs., Inc., 895 F.3d
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`1374, 1377 n.2 (Fed. Cir. 2018) (“In cases where we have held limitations ought to be read in, it
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`was not simply because those limitations appeared in the Summary of the Invention. There was
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`specific language that made clear those limitations were important to the claimed invention.”).
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`Google also points to the language “each time” in the specification, but that, too, appears only in
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`a preferred embodiment. (’251 patent at 5:54-64; “each time” appears in paragraph beginning “[i]n
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`the illustrated implementation . . .”). Again, in the absence of clear and unmistakable disclaimer
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`or disavowal―such as some express statement in the specification about the importance of a
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`Case 6:21-cv-00569-ADA Document 32 Filed 02/03/22 Page 17 of 21
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`feature to the claimed invention (which Google has not pointed to here)―there is no reason to
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`depart from this term’s plain and ordinary meaning.
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`Google’s final argument, relying on the prosecution history, is also unavailing because the
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`applicant did not actually disavow any meaning of this claim limitation in adding it during
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`prosecution. Google suggests that because “[t]he Applicant noted the import of this limitation to
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`avoid prior art during prosecution,” it must be construed to have something other than its plain and
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`ordinary meaning. (Dkt. 30 at 15). But Google cites no case law to support this theory. Rather, the
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`case law makes clear that prosecution disclaimer narrows the plain and ordinary meaning of a term
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`only “where the patentee has unequivocally disavowed a certain meaning to obtain his patent.”
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`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Here, there was no
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`disavowal and therefore no disclaimer, as Google even admits: “Google does not argue that the
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`prosecution history provides a disclaimer to the claim language.” (Dkt. 30 at 15). Far from ignoring
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`“the import of this limitation” then, as Google alleges, Touchstream merely points out that this
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`claim term should be construe