Case 6:21-cv-01296-ADA-DTG Document 86 Filed 10/17/22 Page 1 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
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`IOENGINE, LLC,
` Plaintiff,
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`-v-
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`ROKU, INC.,
` Defendant.
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`
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`6:21-CV-01296-ADA
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`
`§
`§
`§
`§
`§
`§
`§
`§
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`CLAIM CONSTRUCTION ORDER AND MEMORANDUM IN SUPPORT THEREOF
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`Before the Court are the Parties’ claim construction briefs: Defendant’s Opening and Reply
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`briefs (ECF Nos. 51 and 70 respectively) and Plaintiff’s Response and Sur-Reply briefs (ECF Nos.
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`55 and 72, respectively). The Court provided preliminary constructions for the disputed terms the
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`day before the hearing. The Court held the Markman hearing on October 13, 2022. ECF No.80.
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`During that hearing, the Court informed the Parties of the final constructions for the disputed terms.
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`Id. This Order does not alter any of those constructions.
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`
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`I.
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`DESCRIPTION OF THE ASSERTED PATENTS
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`Plaintiff asserts U.S. Patent Nos. 10,448,819 and 10,972,584. Both patents are directed to
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`secure access to portable devices. The ’584 Patent is a continuation of the ’819 Patent. The two
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`patents appear to have identical specifications.
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`The Asserted Patents describe that, prior to the Asserted Patents, “no [portable computing
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`system] to securely access, execute, and process data is available in an extremely compact form.”
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`’819 Patent at 2:33–36. The specifications describe that “no solution exists that allows users to
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`employ traditional large user interfaces they are already comfortable with, provides greater
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`portability, provides greater memory footprints, draws less power, and provides security for data
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`on the device.” Id. at 2:43:48.
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`The Asserted Patents claim an apparatus, system, and method relating to a portable device,
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`which the specification also refers to as a “tunneling client access point” (“TCAP”). ’819 Patent
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`at Abstract. The Asserted Patents describes that the:
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`TCAP [is] very easy to use; at most it requires the user to simply plug the device
`into any existing and available desktop or laptop computer, through which, the
`TCAP can make use of a traditional user interface and input/output (I/O)
`peripherals, while the TCAP itself, otherwise, provides storage, execution, and/or
`processing resources. Thus, the TCAP requires no power source to maintain its data
`and allows for a highly portable “thumb” footprint. Also, by providing the
`equivalent of a plug-n-play virtual private network (VPN), the TCAP provides
`certain kinds of accessing of remote data in an easy and secure manner that was
`unavailable in the prior art.
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`Id. at 2:43–60.
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`Figure 1 depicts an exemplary embodiment of the claimed TCAP. Id.
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`Figure 1 depicts that User 133a plugs TCAP 130 into one of a variety of access terminals 127. Id.
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`at 3:54–56. Figure 1 also depicts that the combination of the portable drive and terminal
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`communicates through communication networks 113a and 113b to servers 110, 115, and 125
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`which may provide additional processing resources and/or storage capacity. Id. at 4:8–15.
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`The specification describes that the portable drive (i.e., TCAP 130) may use the terminal’s
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`capabilities to varying degrees, depending on its own capabilities. For example, the specification
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`describes that the portable drive may use the access terminal simply as a computer monitor. Id. at
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`10:49–52. As a second example, the portable drive may use the access terminal’s “input
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`peripherals as user input devices that control actions on the TCAP.” Id. at 4:57–58. Alternatively,
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`the portable drive “may optionally interconnect wirelessly with a peripheral device 912 and/or a
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`control device 911,” where the specification describes control devices as including “card readers,
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`dongles, finger print readers, gloves, graphic tablets, joysticks, keyboards, mouse (mice),
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`trackballs, trackpads, retina readers, and/or the like.” Id. at 24:46–48, 15:52–55. As a third
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`example, the specification also discloses that the portable device may have “a wireless component”
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`such as a “Bluetooth” or “an IEEE 802.11b” chip, which may provide networking functionality.
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`Id. at 24:32–35; 15:56–64.
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`
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`II.
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`LEGAL STANDARD
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`A. General principles
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her
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`own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term”
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`and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum
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`Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution
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`disclaimer precludes a patentee from recapturing a specific meaning that was previously
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`disclaimed during prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
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`2003). “[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing
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`actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26.
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`Accordingly, when “an applicant’s statements are amenable to multiple reasonable interpretations,
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`they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725
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`F.3d 1315, 1326 (Fed. Cir. 2013).
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`A construction of “plain and ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`the parties’ dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is.
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`Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
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`Technical dictionaries may be helpful, but they may also provide definitions that are too broad or
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`not indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be
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`helpful, but an expert’s conclusory or unsupported assertions as to the meaning of a term are not.
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`Id.
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`B. Indefiniteness
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
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`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2.
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`A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about
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`the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as
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`indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective of one of
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`ordinary skill in the art as of the time the application was filed. Id. at 911.
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`
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`III. LEGAL ANALYSIS
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`A. Term #1: “terminal”
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`
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`Term
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`Plaintiff’s Proposed
`Construction
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`Defendants’ Proposed
`Construction
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`The term should be construed
`to have its plain and ordinary
`meaning: “computing device”
`
`
`to
`computing device
`“a
`control actions on the portable
`device”1
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`#1: “terminal”
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`U.S. Patent No. 10,447,819,
`Claim 1; U.S. Patent No.
`10,972,584, Claim 1
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`Proposed by Defendant
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`
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`The Parties’ Positions:
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`Defendant contends that its proposed construction is taken from the specification. Opening
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`at 8 (quoting ’819 Patent at 3:56–63, 4:57-58). Defendant contends that a plain-and-ordinary
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`meaning construction is wrong because it incorrectly focuses on “‘terminal’ in isolation and fails
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`to account for the particular function and purpose of the ‘terminal’ in the alleged invention” and
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`because it fails to provide any guidance to a jury as to what the term means in connection with the
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`asserted patents. Id. at 8–9.
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`1 During the Markman hearing, Defendant proposed an alternative construction—“a computing device through
`which the user engages the portable device”—which Defendant contends is based on ’819 Patent at 3:56–63. While
`the wording more closely tracks the disclosure in that passage, because the substance of the two constructions
`appears to be identical, the Court bases its analysis on Defendant’s original construction as the parties provided
`complete briefing for that construction.
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`Defendant contends that the specification uses “terminal” and “access terminal” or “AT”
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`interchangeably and that a POSITA would understand that they are the same. Id. at 9. Defendant
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`contends that the claims describe that a “terminal” includes components such as an “output
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`component configured to present an interactive user interface” (’819 Patent, Cl. 184) or “a
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`processor, output component, and a memory configured to store program code” (’584 Patent, Cl.
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`1). Id.
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`Defendants contend that the intrinsic evidence is “clear” that the terminal must “control
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`actions on the portable device through the user’s input.” Id. at 9–10 (’819 Patent at Abstract, 3:56–
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`63, 4:52–56, 4:57–58) (emphasis removed). Defendants contend that the specification describe
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`that if the terminal is connected to a network, then the terminal provides the portable device with
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`network connectivity. Id. at 10. Defendant contends that because “this arrangement of devices—
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`a portable device, connected to and being controlled by an access terminal, with the access terminal
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`optionally being connected to a communications network—is described consistently throughout
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`the Asserted Patents as the alleged invention” that ignoring the terminal’s role in this arrangement
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`would “would vitiate the alleged invention in the Asserted Patents.” Id. at 10–11.
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`Defendant contends that given the specification’s distinction between “terminal” and
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`“peripheral device,” a “terminal[] cannot be broadly interpreted to include any device that may
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`connect to the portable device.” Id. at 11. Defendant contend that the specification describes that
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`peripheral devices “may be audio devices, cameras, dongles …, external processors …, goggles,
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`microphones, monitors, network interfaces, printers, scanners, storage devices, video devices,
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`visors, and/or the like,” and that peripheral devices do not control the actions on the portable
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`device. Id. at 11 (quoting ’819 Patent at 15:56–64.). Therefore, based on those assertions,
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`Defendant contends that “the terminal/access terminal is a computing device that controls actions
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`on the portable device and is not just any device that can connect to, or communicate with, the
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`portable device.” Id.
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`Defendant contends that Applicant “distinguished the prior art on the basis that user-control
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`commands in its alleged invention are received through the claimed terminal, as opposed to being
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`received through the portable device.’ Id. at 12 (internal quotations omitted).
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`In its response, Plaintiff agrees with Defendant that terminal is a computing device.
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`Response at 5–6 (citing 3:56–59). But Plaintiff disagrees the construction of terminal should
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`include “control actions on the portable device.” Id. at 6. In support of that argument, Plaintiff
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`contends that Claim 184 of the ’819 Patent “requires only that the terminal comprise ‘an output
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`component configured to present an interactive user interface’,” and that Claims 1, 39 and 73 of
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`the ’584 Patent require that the terminal include a network interface. Id. at 6–7.
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`Plaintiff contend that Defendant’s proposed construction improperly imports a limitation
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`from the specification and that the embodiments Defendant cite are permissive and non-limiting.
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`Response at 7. As a first example, Plaintiff contends that some embodiments use permissive
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`language such as “may” or “can.” Id. (citing ’819 Patent at Abstract (“one embodiment”), 3:56–
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`63, 4:52–56, 4:57–58). As a second example, Plaintiff contends that Defendant’s citation of 4:52–
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`58 of the ’819 Patent ignores that the following sentence recites “[i]f the user’s action 215 is one
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`that is directed at executing on the TCAP 215, then the AT will not be involved in any execution.”
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`Id. at 7 (quoting ’819 Patent at 4:66-5:1).
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`Plaintiff contends that Defendant is incorrect that a portable device cannot have its own
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`input/output components and network interface. Id. at 8. With respect to input/output components,
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`Plaintiff contends that the specification describes that the portable device “may optionally
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`interconnect wirelessly with a peripheral device 912 and/or a control device 911,” where the
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`specification describes control devices as including “card readers, dongles, finger print readers,
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`gloves, graphic tablets, joysticks, keyboards, mouse (mice), trackballs, trackpads, retina readers,
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`and/or the like.” Id. (quoting ’819 Patent at 24:46–48, 15:52–55). Plaintiff contends that this
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`disclosure and other passages indicates—contrary to Defendant’s argument—that the portable
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`device can be controlled by its own input devices. Id. at 8–9 (quoting ’819 Patent at 9:49–52,
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`22:55–57, Fig. 10, 24:46-48, 15:52–55, 22:51-54).
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`With respect to network interface, Plaintiff contends that the asserted claims disclose that
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`the portable drive may comprise a network interface. Id. at 9–10 (quoting ’819 Patent, Cl. 184
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`(“the portable device comprising: a network interface configured to enable the transmission of
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`communications between the portable device and the communications network node”); see also
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`’584 Patent, Cls. 1, 39, 73). Similarly, Plaintiff contends that other claims require that the
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`terminal—and not the portable device—comprise a network interface. Id. at 10 n.7. (citing ’819
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`Patent, Cl. 49). Plaintiff contends that the specification provides examples of portable devices
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`having their own network interfaces. Id. at 10. As a first example, Plaintiff contends that Figure
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`10 depicts that portable device comprises network interface 1010. Id. As a second example,
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`Plaintiff contends that the specification also discloses “a wireless component” such as a
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`“Bluetooth” or “an IEEE 802.11b” chip and that “the [portable device] may optionally interconnect
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`wirelessly with a peripheral device 912.” Id. (citing 24:32–35; 15:56–64). Plaintiff also contends
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`that the specification describes embodiments where the “portable device—not the terminal—
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`handles the necessary network communications functionality.” Id. (citing ’819 Patent at 12:48–
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`53, 10:30-34, 25:45–49, 25:60–64).
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`With respect to Defendant’s prosecution history argument, Plaintiff contends that the
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`statements were with respect to unasserted claims. Id. at 11. Plaintiff also contends that the “Iida
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`reference addressed in the prosecution arguments cited by [Defendant] does not disclose a portable
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`device having a network interface; the network interface was provided by the terminal of Iida.”
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`Id.
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`In its reply, Defendant contends that the “asserted patents make clear that not just any
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`computing device can be a terminal,” but rather that the “terminal” should “[1] provide a
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`compatible mechanism of engagement to the [portable device] and [2] provide an operating
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`environment for the user to engage the [portable device] through the [terminal].” Reply at 3 (citing
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`’819 Patent at 3:56–63). Defendant contends that its proposed construction is taken from the
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`specification. Id. (citing ’819 Patent at 4:57–58 (“The user may employ the AT’s input peripherals
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`as user input devices that control actions on the [portable device].”)).
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`Defendant contends that Plaintiff is incorrect that “any component or function of the
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`terminal, beyond a basic ‘computing device,’ must be explicitly recited in the claims,” rather that
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`the additional requirements in the claims “simply serve[] to further limit [Plaintiff’s] alleged
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`invention by specifying one way for the user to interact with the portable device.” Id. at 4.
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`Defendant further contends that the specification describes that a “terminal” should “provide [1] a
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`way to connect the terminal to the portable device and [2] an operating environment for the user
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`to engage the portable device through the terminal.” Id. at 4 (’819 Patent at 3:56–63 (“Access
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`terminals (ATs) may be any number of computing devices such as servers, workstations, desktop
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`computers, laptops, portable digital assistants (PDAs), and/or the like. The type of AT used is not
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`important other than the device should provide a compatible mechanism of engagement to the
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`TCAP 130 and provide an operating environment for the user to engage the TCAP through the
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`AT.”)). Defendant contends that this functionality is not permissive, but is required. Id. at 4–5.
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`Defendant contends that Plaintiff conflates “execution of certain portable-device
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`functionality with the control imparted by the ‘terminal.’” Id. at 5 (emphasis in original).
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`Defendant contend, however, that “the portable device’s ability to execute code says nothing about
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`whether a user can control the portable device without the terminal.” Id.; id. at 7 (arguing same
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`regarding Plaintiff’s argument that the portable device may execute all functionality apart from a
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`“small applet” that runs on the terminal).
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`With respect to Plaintiff’s argument that that the specification describes that the portable
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`device “may optionally interconnect wirelessly with a peripheral device 912 and/or a control
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`device 911”—thus indicating that the portable device may have its own control device and that the
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`terminal is not required to control the portable device—Defendant contends that Plaintiff
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`improperly relies on a drafting error. Id. at 6. More specifically, Defendant contends that the
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`specification consistently describes that “user input 911” is part of the “back-end portable device
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`server and are only shown in the figures as being connected to the back-end portable-device server
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`and not the portable device itself.” Id. (citing ’819 Patent at Fig. 9, 13:61–66, 15:28–33). Rather,
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`at least according to Defendant, when the specification introduces the portable device in Figure
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`10, “there is no ‘user-input device 911’ depicted. Rather, there is a terminal with a keyboard and
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`mouse to control actions on the portable device.” Id. Defendant contends that it is improper for
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`Plaintiff to use a drafting error “to turn the patent disclosure on its head and allow for portable
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`device control without using the terminal.” Id.
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`With respect to Plaintiff’s counter-arguments to Defendant’s prosecution history
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`arguments, Defendant first contends that arguments directed towards one claim is relevant in
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`interpreting other claims. Id. at 7. Defendant also contends that the “Examiner indicated that all
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`claims were allowable in view of [Applicant’s] prior arguments for claims 1, 92, and 138.” Id.
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`Defendant next contends that the same term in different claims should have the same meaning. Id.
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`at 7–8 (citing In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016)).
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`In its sur-reply, Plaintiff first contends that Defendant does not argue that its proposed
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`construction is rooted in the claim language, but rather that Defendant “seeks to substantially alter
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`the claims using a handful of non-limiting specification embodiments[.]” Sur-Reply at 4. With
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`respect to the passage that Defendant repeatedly cites (’819 Patent at 3:59–63), Plaintiff contends
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`that this passage “says nothing about the terminal exerting ‘control’ over the portable device;”
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`rather, Plaintiff contends that “providing a ‘compatible mechanism of engagement to the portable
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`device’ simply means being compatible with an appropriate connection technology e.g., USB or
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`Bluetooth.” Id.
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`With respect to the Defendant’s argument that the “small applet” running on the terminal
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`is directed towards execution and does not prevent the requirement of user-control of the portable
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`device through the terminal, Plaintiff contends that it makes “no sense” that a terminal that is only
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`used as a display, but also controls the portable device. Id. at 5.
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`With respect to Defendant’s argument that there is not support in the specification that
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`control device 911 in Figure 9 provides input to the portable device because any such description
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`in the specification is merely a “draftsman error,” Plaintiff contends that Defendant’s assertion is
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`“pure speculation” and that Defendant’s expert conceded that there is “no reasonable basis to
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`impute such error.” Id. at 5–6. Plaintiff further contends that because the specification describes
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`that at “[m]uch of the description of the TCAPS of FIG 9 applies to the TCAP [of FIG 10],” further
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`supports Plaintiff’s contention that the “incorporation of devices 911 (and 912) of Figure 9 into
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`the TCAP in Figure 10” is not a drafting error. Id. at 6 (quoting ’819 Patent at 22:25–29). Plaintiff
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`also contends that Defendant does not provide any reason why a portable device could not
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`wirelessly connect with control device 911 or peripheral device 912. Id.
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`With respect to the prosecution history, Plaintiff first contends that Defendant is “unable
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`to account for the multiple differences between the three claims (1, 92, and 138) referenced in the
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`portion of the prosecution history it cites, and the Asserted Claims.” Id. at 6–7. For example,
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`Plaintiff contends that “multiple limitations in those claims expressly tie the first program code to
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`the terminal—but no such limitations are present in the Asserted Claims.” Id. at 7. Plaintiff also
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`contends that Defendant cannot explain why those statements should also apply to the Asserted
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`Claims, nor does Defendant respond to Plaintiff’s explanation that the Iida prior art reference did
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`not disclose the portable device having its own network interface. Id. at 7. Plaintiff finally
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`contends that Defendant is incorrect that Examiner indicated that all claims were allowable in view
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`of Applicant’s arguments for Claims 1, 92, and 138; rather, Plaintiff contends that the Examiner’s
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`statement of allowance only recites “the substance of applicant’s remarks filed on 07/18/2019 with
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`respect to the added claim limitation point out the reason claims are patentable over the prior art
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`of record.” Id. at 7–8 (quoting Opening, Ex. A3 at IOENGINE-R-0002471) (emphasis in
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`Plaintiff’s brief).
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`The Court’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the Court agrees
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`with Plaintiff and finds that the proper construction is plain-and-ordinary meaning for the reasons
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`that follow. First, the “heavy presumption” is that terms should be construed according to their
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`plain-and-ordinary meaning. Azure Networks, 771 F.3d at 1347. Second, Defendant does not
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`expressly allege lexicography or disclaimer, which are the only two exceptions to the general rule
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`that a term should be construed as having its plain-and-ordinary meaning. Thorner, 669 F.3d at
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`1365.
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`Third, the passage that Defendant heavily relies on (’819 Patent at 3:56–63) does not
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`support its proposed construction. Opening at 8, 9, 10, and 12; Reply at 1, 3, 4, 5, and 6. This
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`passage provides:
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`Access terminals (ATs) may be any number of computing devices such as servers,
`workstations, desktop computers, laptops, portable digital assistants (PDAs), and/or
`the like. The type of AT used is not important other than the device should provide
`a compatible mechanism of engagement to the TCAP 130 and provide an operating
`environment for the user to engage the TCAP through the AT.
`
`
`’819 Patent at 3:56–63. The Court disagrees with Defendant that this particular passage limits the
`
`scope of “terminal” to require that it “control actions on the portable device.” As an initial matter,
`
`this passage does not even use the word “control.” Rather, this passage describes that the terminal
`
`(AT) should provide “a compatible mechanism of engagement” to the portable device. ’819 Patent
`
`at 3:59–63. The Court agrees with Plaintiff that the plain meaning of “compatible mechanism of
`
`engagement” describes that the terminal needs to have a mechanism or interface that both terminal
`
`and portable device can use to engage, i.e., connect together. The sentences that immediately
`
`follow support the Court’s conclusion. These sentences describe various mechanisms to connect
`
`the terminal to the portable device. Id. at 3:63–65 (USB connector), 3:65–67 (Bluetooth, WiFi, or
`
`other wireless connections), 3:67-4:3 (use of Java of Windows runtime environments to interact
`
`with the terminal’s input/output mechanisms). Therefore, taken as a whole, this passage describes
`
`that while there is a range of terminals with a variety of capabilities, the minimum capability that
`
`all terminals must have is the ability to connect with the portable device, e.g., via USB, Bluetooth,
`
`WiFi, etc. By contrast, the Court concludes that nothing in this passage explicitly or implicitly
`
`limits the scope of “terminal” to require that it “control actions on the portable device.”
`
`
`
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`Case 6:21-cv-01296-ADA-DTG Document 86 Filed 10/17/22 Page 15 of 33
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`Fourth, Defendant’s proposed construction improperly imports a limitation from the
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`specification. Phillips, 415 F.3d at 1320 (Fed. Cir. 2005) (“One of the cardinal sins of patent law
`
`[is] reading a limitation from the written description into the claims.”)). In particular, Defendants
`
`heavily rely on the following passages from the ’819 Patent: 3:56–63 (e.g., Opening at 8), 4:48-
`
`56, (e.g., Opening at 9), 4:57–58 (e.g., Opening at 8), and 4:66–5:1 (e.g., Reply at 5). But the first
`
`passage, 3:56–63, is in context of the first embodiment which is described between 3:51–4:42.
`
`The latter three passage are in the context of the second embodiment which is described between
`
`4:43–5:46. Even if these passages described that the terminal “control[s] actions on the portable
`
`device” as required by Defendant’s proposed construction, Defendant has not shown that there is
`
`“a clear indication in the intrinsic record that the patentee intended the claims” to be limited to
`
`limitations from a preferred embodiment. Liebel-Flarsheim, 358 F.3d at 913.
`
`Fifth, Defendant’s proposed construction improperly limits the claim scope by requiring
`
`the terminal to control the portable device. More specifically, because both claims are
`
`“comprising” claims, the claims leave open the possibility that an unclaimed component could
`
`control the portable drive. Given this possibility, because Defendant’s proposed construction
`
`requires the terminal to control the portable drive, it improperly limits the claim scope.
`
`Sixth, with respect to Defendant’s prosecution arguments, the Court agrees with Plaintiff
`
`that Applicant did not disclaim any claim scope during prosecution. In particular, Defendant does
`
`not appear to respond to Plaintiff’s explanation that the Iida prior art reference did not disclose the
`
`portable device having its own network interface, which provides a distinct basis for patentability
`
`of the Asserted Claims.
`
`Furthermore, contrary to Defendant’s assertion, Examiner did not indicate that the claims
`
`were allowable based in view of [Applicant’s] prior arguments for claims 1, 92, and 138. Rather,
`
`
`
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`Case 6:21-cv-01296-ADA-DTG Document 86 Filed 10/17/22 Page 16 of 33
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`Examiner stated that the claims were allowable based on “the substance of applicant’s remarks
`
`filed on 07/18/2019 with respect to the added claim limitation point out the reason claims are
`
`patentable over the prior art of record.” Opening, Ex. A3 at IOENGINE-R-0002471 (emphasis
`
`added). Based on that statement, the Court agrees with Plaintiff that the Examiner’s words were
`
`directed to amended claims, and not all claims.
`
`Based on the foregoing, the Court concludes that Defendant has not met the “exacting”
`
`standard necessary to find that Applicant disavowed claim scope during prosecution. Hill-Rom,
`
`755 F.3d at 1371.
`
`Seventh, the Court disagrees with Defendant that the term needs to be construed in order
`
`to aid the jury as “terminal” is not a particularly technical word and is one that a lay juror has likely
`
`encountered.
`
`Therefore, for the reasons described above, the Court’s final construction for “terminal” is
`
`plain-and-ordinary meaning.
`
`
`
`
`
`B. Term #2: “first program code which, when executed…”
`
`Term
`
`Plaintiff’s Proposed
`Construction
`
`Defendants’ Proposed
`Construction
`
`No construction is necessary.
`If a construction is necessary,
`the term should be construed
`to have its plain and ordinary
`meaning.
`
`
`“first program code which,
`when executed by the terminal
`processor”
`
`
`#2: “first program code which,
`when executed…”
`
`U.S. Patent No. 10,972,584,
`Claim 184
`
`Proposed by Defendant
`
`
`
`The Parties’ Positions:
`
`The limitation that this term appears in is as follows:
`
`
`
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`Case 6:21-cv-01296-ADA-DTG Document 86 Filed 10/17/22 Page 17 of 33
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`first program code which, when executed, presents an interactive user interface on
`the terminal output component, receives a command resulting from user
`manipulation of a user interface element of the interactive user inter