Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 1 of 20
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Plaintiff,
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`Defendants.
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`Plaintiff,
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`Case No. 6:22-cv-00533-ADA-DTG
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`Case No. 6:22-cv-00535-ADA-DTG
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`DODOTS LICENSING SOLUTIONS LLC,
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`APPLE INC., BEST BUY STORES, L.P.,
`BESTBUY.COM, LLC, AND
`BEST BUY TEXAS.COM, LLC,
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`DODOTS LICENSING SOLUTIONS LLC,
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., BEST BUY STORES,
`L.P., BESTBUY.COM, LLC, AND
`BEST BUY TEXAS.COM, LLC,
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`
`
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`v.
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`v.
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`Defendants.
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`DEFENDANTS’ REPLY CLAIM CONSTRUCTION BRIEF
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`I. 
`II. 
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`III. 
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 2 of 20
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`TABLE OF CONTENTS
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`B.
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`C.
`D.
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`INTRODUCTION ............................................................................................................. 1 
`DISPUTED TERMS .......................................................................................................... 2 
`A.
`“is accessible” / “is available” (’083 patent, claims 1, 4, 9, 12; ’407 patent,
`claims 1, 13) ........................................................................................................... 2
`“lacks controls for manually navigating a network” (’083 patent, claims 1,
`4, 9, 12) .................................................................................................................. 5
`“frame” (’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13) ...................... 8
`“web browser readable language” (’545 patent, claim 1; ’407 patent, claims
`1, 13) ...................................................................................................................... 9
`“wherein accessing the networked information monitor defined by the
`networked information monitor template results in: transmission …
`reception … presentation” (’407 patent, claim 1) ................................................ 10
`“The method of claim 1, further comprising ...” (’407 patent, claim 2) .............. 13
`F.
`CONCLUSION ................................................................................................................ 14 
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`E.
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`
`
`i
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 3 of 20
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`TABLE OF AUTHORITIES
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`Cases
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`Page(s)
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`Abbott Lab’ys v. Syntron Bioresearch, Inc.,
`334 F.3d 1343 (Fed. Cir. 2003)..................................................................................................8
`
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009) (en banc) ..................................................................................7
`
`Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp.,
`533 F.3d 1362 (Fed. Cir. 2008)..................................................................................................7
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008)..................................................................................................7
`
`Ekchian v. Home Depot, Inc.,
`104 F.3d 1299 (Fed. Cir. 1997)..................................................................................................7
`
`EMA Electromechanics, Inc. v. Siemens Corp., et al.,
`No. 6:21-CV-1001-ADA, 2022 WL 526244 (W.D. Tex. Feb. 16, 2022) ................................12
`
`Gillespie v. Dywidag Sys. Int’l, USA,
`501 F.3d 1285 (Fed. Cir. 2007)..................................................................................................7
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc.,
`430 F.3d 1377 (Fed. Cir. 2005)..........................................................................................12, 13
`
`In re Katz Interactive Call Processing Pat. Litig.,
`639 F.3d 1303 (Fed. Cir. 2011)................................................................................................12
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`MasterMine Software Inc. v. Microsoft Corp.,
`874 F.3d 1307 (Fed. Cir. 2017)................................................................................................11
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................................................3, 4
`
`Rembrandt Data Techs., LP v. AOL, LLC,
`641 F.3d 1331 (Fed. Cir. 2011)..........................................................................................11, 12
`
`Rheox, Inc. v. Entact, Inc.,
`276 F.3d 1319 (Fed. Cir. 2002)..................................................................................................7
`
`Schindler Elevator Corp. v. Otis Elevator Co.,
`593 F.3d 1275 (Fed. Cir. 2010)..................................................................................................7
`
`Southwall Techs., Inc., v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995)....................................................................................................7
`
`ii
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 4 of 20
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`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015)..................................................................................................4
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`Univ. of Massachusetts v. L’Oreal S.A.,
`36 F.4th 1374 (Fed. Cir. 2022) ..................................................................................................8
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`Statutes
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`35 U.S.C. § 112 ..............................................................................................................................10
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`
`iii
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 5 of 20
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`I.
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`INTRODUCTION
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`DoDots’ brief makes clear that its claim construction proposals are intended to broaden the
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`scope of the asserted claims to encompass technology that it did not invent. For example, in its
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`Responsive Brief, DoDots now claims to have invented mobile apps. Case 6:22-cv-00533-ADA,
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`Dkt. No. 88; 6:22-cv-00535-ADA, Dkt. No. 73 (Resp. Br.) at 1 (“In the late 1990s . . . the
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`inventors . . . developed ‘dot’ technology – which today is known as the mobile app.”); id. at 2
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`(“[T]he Kembels coined the terms ‘dot’ or ‘Networked Information Monitor (NIM”) – which today
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`are colloquially referred to as an app.”). However, the asserted patents are not directed to mobile
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`technology at all, much less apps for mobile devices. Indeed, in defending the same patents before
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`the PTAB, DoDots expressly distinguished its purported inventions from downloaded executable
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`programs; namely, the apps:
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`By contrast, the references relied upon by the Petitioners for this
`limitation all involve downloading executable programs, and are
`precisely what was distinguished by the inventors. This is not a
`nitpicky argument, this is the heart of the invention, and the
`inventors expressly distinguished their approach from “custom
`client software.”
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`Ex. 1 (Patent Owner Response to IPR 2019-01278 (’083 Patent)) at 5 (emphasis added). And its
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`expert confirmed that the ’545 patent, for example, “further emphasizes that a NIM [synonymous
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`with a “Dot”] is distinct from an application.” Ex. 2 (Declaration of Dr. Earl Sacerdoti to Patent
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`Owner Response to IPR2019-00988) at 2.
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`Because the functionality accused in Defendants’ products is precisely what DoDots
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`distinguished during prosecution, DoDots has resorted to claim construction positions that would
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`impermissibly broaden the scope of the claims beyond any semblance of the actual purported
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`inventions and ignore issues in certain asserted claims that render them indefinite. Defendants’
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`1
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 6 of 20
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`constructions, on the other hand, give proper credit to the intrinsic record of the asserted patents
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`and should be adopted.
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`II.
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`DISPUTED TERMS
`A.
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`“is accessible” / “is available” (’083 patent, claims 1, 4, 9, 12; ’407 patent,
`claims 1, 13)
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`DoDots’ Proposed Construction
`Defendants’ Proposed Construction
`“can be transmitted at the time the content is requested” Plain & ordinary meaning
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`The claims at issue require that content either “is accessible” or “is available,” but do not
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`resolve a fundamental question: when? Answering this question is critical to understanding
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`whether the claim limitation is satisfied, which is why a clarifying construction is necessary.
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`Rather than dispute this fundamental point driving Defendants’ proposed construction, DoDots
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`embraces it: “[T]hese terms say nothing about the timing of the delivery of content.” Resp. Br. at
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`7; see also id. at 5 (“There is nothing in the claims that relates to when the content must be
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`transmitted in response to receiving a request for content.”). Defendants’ construction is necessary
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`to resolve this ambiguity. Moreover, Defendants’ construction is dictated by the intrinsic record,
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`which uniformly demonstrates that in the purported invention, content must be accessible or
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`available at the time it is requested.
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`First, the structure of the claims demonstrates that the recited “content” must be available
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`or accessible when that content is requested. The shared use of “content” connects the availability
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`/ accessibility with the request limitations:
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`the first networked information monitor template comprises:
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`(1) a content reference that comprises a network location at which content
`for the first networked information monitor is accessible via a TCP/IP protocol;
`. . .
`(3) instructions configured (i) to cause the first networked information
`monitor to request content from the network location in the content reference via
`the TCP/IP protocol, and (ii) to cause the first networked information monitor to
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`2
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 7 of 20
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`generate the graphical user interface of the first networked information monitor
`with the content received from the network location via the TCP/IP protocol within
`the frame . . .
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`’083 patent at 47:42-48:8; see also ’407 patent at 42:28-64. As shown with the claim language
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`above, content must be accessible, and it is then requested and used to generate a graphical user
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`interface. Id. Thus, the only logical time to measure the accessibility and availability of the content
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`is the time it is requested. That definition allows the rest of the claim to be fulfilled by having the
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`content received by and used in the generation of a graphical user interface. Thus, the structure of
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`the claim demonstrates that DoDots’ argument—i.e., that the availability / accessibility of content
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`is disconnected from the transmission for a content request—is built upon a flawed premise. Resp.
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`Br. at 5. DoDots’ myopic view of the claim language neglects the structure of the claims, which is
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`“highly instructive” in claim construction. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
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`Cir. 2005) (en banc).
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`Second, DoDots’ arguments directed at the specification are mistaken. Resp. Br. at 6-7.
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`DoDots does not dispute that the specification demonstrates content being transmitted upon
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`request, making it readily apparent that the time content must be accessible / available is when the
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`request and transmission occurs. Id. DoDots’ separate argument regarding the specification—that
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`Defendants read limitations in from preferred embodiments—ignores the passage describing “[t]he
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`present invention” rather than any particular embodiment. ’083 patent at 11:15-21; see also id. at
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`13:41-46, 15:23-26; ’407 patent at 7:57-60, 11:10-16. Indeed, Defendants cited law in their
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`Opening Brief demonstrating that describing the “present invention” in the specification “strongly
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`suggest[s] that the claimed invention is limited” as described, and DoDots provides no response.
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`See Case 6:22-cv-00533-ADA, Dkt. No. 81; 6:22-cv-00535-ADA, Dkt. No. 71 (Op. Br.) at 9
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`(quoting Rsch. Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 872 (Fed. Cir. 2010); Kaken Pharm.
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`Co. v. Iancu, 952 F.3d 1346, 1352 (Fed. Cir. 2020)). In any event, the specification’s consistent
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`3
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 8 of 20
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`description of how content is used by the purported invention is important because the
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`specification “is always highly relevant to the claim construction analysis” and “[u]sually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
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`1315. DoDots does not present any evidence refuting that the specification uniformly describes
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`content being requested, transmitted, and then displayed in the same instance. See, e.g., ’083 patent
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`at Figs. 8, 10; 18:41-47; 18:64-66; 19:9-17; 21:8-12; 22:19-28; 14:63-15:1. The specification thus
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`makes clear that the relevant time period for this limitation during which content must be
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`“available” or “accessible” is that time the content request is made.
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`Finally, DoDots wrongly accuses Defendants of relying on “wholly unrelated extrinsic
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`evidence.” Resp. Br. at 8 (emphasis in original). But the purported “extrinsic evidence” DoDots
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`identifies is actually precedential Federal Circuit case law, which is not extrinsic evidence at all.
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`See Phillips, 415 F.3d at 1317 (“[E]xtrinsic evidence . . . include[s] expert and inventor testimony,
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`dictionaries, and learned treatises.”). Moreover, DoDots fails in its attempt to distinguish Straight
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`Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1365 (Fed. Cir. 2015), which is applicable
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`to this issue. DoDots alleges that the claim language in Straight Path has a temporal aspect that is
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`missing from the claims at issue here. That distinction does not hold because “is available” and “is
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`accessible” are inherently temporal, just like the term “is connected” in Straight Path. Resp. Br. at
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`8. The question that must be answered with these claims is when the content is available or
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`accessible, and the reasoning in Straight Path confirms it is the time at which content is requested.
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`And Straight Path also dooms DoDots’ argument that the phrase “at the time” in Defendants’
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`proposed construction lacks precision and injects ambiguity into the claims. Resp. Br. at 6. Straight
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`Path construed “is connected” to mean “is connected to the computer network at the time that the
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`query is transmitted to the server.” Id. at 1363.
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`4
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 9 of 20
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`At bottom, Defendants’ construction clarifies the claim language and resolves when
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`content must be accessible and available, which DoDots’ plain and ordinary meaning proposal
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`does not do, leaving latent ambiguity in the claims.
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`B.
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`“lacks controls for manually navigating a network” (’083 patent, claims 1, 4,
`9, 12)
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`Defendants’ Proposed Construction
`“lacks controls for manually navigating a network (e.g., a
`forward browsing button, a backward browsing button, a
`URL entry field, and/or other manual navigation controls)”
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`DoDots’ Proposed Construction
`Plain & ordinary meaning
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`DoDots intends to broaden the scope of the asserted claims to capture technology that it
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`
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`did not invent. Defendants’ proposed construction is extracted word-for-word from DoDots’
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`remarks during prosecution. In order to distinguish the purported invention from prior art and
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`obtain patent protection, DoDots expressly enumerated the types of controls that are outside the
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`scope of said invention (e.g., a forward browsing button, a backward browsing button, a URL entry
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`field, and/or other manual navigation controls). Op. Br. at 14-15. DoDots cannot now distance
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`itself from that choice, despite alleging that it invented “‘dot’ technology – which today is known
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`as the mobile app.” Resp. Br. at 1. To be sure, DoDots did not invent mobile apps.
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`The crux of the parties’ dispute over this term is whether the scope of “lacks controls for
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`manually navigating a network” should include “other manual navigation controls” found in the
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`prior art at the time of purported invention. Op. Br. at 12-15. Based on unquestionable disavowal
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`of claim scope during prosecution, the answer is yes. Id. Stated another way, in addition to lacking
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`a forward browser button, a backward browsing button, and a URL entry field that may be found
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`in a traditional web browser, the purported invention also lacks other manual navigation controls.
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`Id. This is an important distinction because the Barnett reference that the applicant sought to
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`5
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 10 of 20
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`distinguish during prosecution teaches numerous other manual navigation controls for navigating
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`internet content. Id.
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`Barnett generally relates to a web-based calendaring application. Ex. 3 (U.S. Pat. No.
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`6,369,840 (“Barnett”)) at 1:5-10 (“The present invention relates generally to software for
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`generating and manipulating computer-implemented planning calendars, and more particularly to
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`a system and method of multi-layered online calendaring and purchasing.”). Barnett teaches
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`numerous other manual navigation controls, including navigation bars, links, buttons, etc., that
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`allow a user to navigate manually to another web page, element, or screen.
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`Ex. 3 (Barnett) at 7:25-46 (highlighting added).
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`Specifically, Barnett teaches that “Navigation bar 507 provides links to other pages in
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`system 100, including My Calendar pages 307-310, Favorite Events pages 313-315, and Event
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`Directory pages 317-319. Buttons 503 and 504 provide access to Event Directory pages 317-319
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`and My Calendar pages 307-310, respectively. Links 505 provide access to a Group Calendar
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`feature, as described in more detail.” Id. at 9:21-27; see also, e.g., id. at 12:1-7 (“Navigation bar
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`6
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 11 of 20
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`801 provides links to the available views. Navigation bar 507 provides links to other screens, as
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`described elsewhere in this disclosure.”); Figs. 5, 6, 8, 11 (emphases added).
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`To overcome the Barnett reference, DoDots explicitly stated that the purported invention
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`excludes such other manual navigation controls. See Op. Br. at 14-15; Op. Br., Ex. 1 (12/13/2010
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`Amendment), at 10-11. Thus, the claims must be construed to exclude such navigation controls.
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`Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) (“[b]y distinguishing the
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`claimed invention over the prior art, an applicant is indicating what the claims do not cover.”); Bd.
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`of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1373 (Fed. Cir. 2008);
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`Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (a patent
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`owner “is not entitled to any interpretation that is disclaimed during prosecution.”). The Federal
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`Circuit has consistently limited patent claims to a patentee’s disclaimers during prosecution.1
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`Defendants’ construction replicates this representation that was critical to DoDots
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`receiving a patent. DoDots should not be allowed to recapture the disavowed claim scope. Bd. of
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`Regents, 533 F.3d at 1373; Schindler, 593 F.3d at 1285.
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`1 See Southwall Techs., Inc., v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“Claims
`may not be construed one way in order to obtain their allowance and in a different way against
`accused infringers.”); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (“Explicit
`arguments made during prosecution to overcome prior art can lead to a narrow claim interpretation
`because ‘[t]he public has a right to rely on such definitive statements made during prosecution’”)
`(quoting Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)); Abbott
`Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009) (en banc) (“the prosecution history
`can often inform the meaning of the claim language by demonstrating . . . whether the inventor
`limited the invention in the course of prosecution, making the claim scope narrower than it would
`otherwise be”) (quoting Phillips, 415 F.3d at 1317); Gillespie v. Dywidag Sys. Int’l, USA, 501 F.3d
`1285, 1291 (Fed. Cir. 2007) (“[t]he patentee is held to what he declares during the prosecution of
`his patent”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1379 (Fed. Cir. 2008)
`(“the sum of the patentees’ statements during prosecution would lead a competitor to believe that
`the patentee had disavowed” devices otherwise covered by the claim language).
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`7
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 12 of 20
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`C.
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`“frame” (’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13)
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`Defendants’ Proposed Construction DoDots’ Proposed Construction
`Plain and ordinary meaning
`“area upon a display of the Dot instantiation in which
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`data may be rendered”
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`or
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`“area upon a display of the NIM instantiation in which
`data may be rendered” (NEW)2
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`Neither DoDots’ proposed original construction nor its newly proposed alternative
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`construction for “frame” cures the indefiniteness problem created by its proposals. Even assuming
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`that “Dot” and “NIM” (i.e., “networked information monitor”) are analogous terms (see Resp. Br.
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`at 12), DoDots has failed to show that “the [Dot/NIM] instantiation” has an antecedent basis in
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`any relevant claim (it does not). The phrase remains disconnected from the surrounding claim
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`language. See Univ. of Massachusetts v. L’Oreal S.A., 36 F.4th 1374, 1380 (Fed. Cir. 2022)
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`(explaining the word “the” in a claim “is the language for invoking an antecedent—for repeating,
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`not departing from, the claim’s prior reference to” a claim limitation). For at least this reason, there
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`is no reason to depart from the plain and ordinary meaning of “frame.”
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`Because substitution of DoDots’ construction for the term “frame” presents serious
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`challenges with the claim language, it therefore indicates that the applicant did not express an
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`intent to redefine the term. See Abbott Lab’ys v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1354
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`(Fed. Cir. 2003) (holding that lexicographer definition must have “reasonable clarity,
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`deliberateness, and precision” for redefinition to occur). Plain and ordinary meaning controls this
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`term.
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`2 DoDots proposed a new alternate construction for this term for the first time in its Responsive
`Brief. Resp. Br. at 11-12.
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`8
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 13 of 20
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`D.
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`“web browser readable language” (’545 patent, claim 1; ’407 patent, claims 1,
`13)
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`Defendants’ Proposed Construction
`“standard Internet content that is capable of being parsed
`by a browser, such content including HTML, Java script,
`XML, CSS, streaming media, Flash, HTTPS, cookies,
`etc.,”
`
`DoDots’ Proposed Construction
`“standard Internet content that is
`capable of being parsed by a
`browser” (NEW)3
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`Although DoDots initially proposed that this term should be afforded its plain and ordinary
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`meaning, DoDots offered a new construction in its responsive brief, which recognizes that the
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`patentee expressly defined the term “web browser readable language” in the ’083 patent
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`specification. Resp. Br. at 13. Thus, there is no dispute that the patentee’s lexicography governs
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`the construction of the term. But without any citation to law and with little explanation, DoDots
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`improperly urges the Court to adopt an incomplete version of the express definition for this term.
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`Id. DoDots’ sole argument in its brief is that the patentee’s definition of “web browser readable
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`language” includes “additional non-limiting examples which are neither useful nor proper.” Id.
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`However, DoDots fails to acknowledge that these “examples,” which are included in Defendants’
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`proposed claim construction, are part of the definition that the patentee submitted to the PTO in
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`seeking the issuance of the ’083 patent, a related patent to the ’545 and ’407 patents. Op. Br. at 17.
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`DoDots’ argument is contrary to the law of lexicography that requires the adoption of the
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`definition used by the patentee before the PTO to obtain its patent. Id. at 18 (citing cases). DoDots
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`does not even address any of the cases cited in Defendants’ Opening Brief, nor does DoDots cite
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`any case law in support of its argument that only a portion of a patentees’ express definition of a
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`term should be used, especially where the parties agree that the patentee engaged in lexicography.
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`Thus, DoDots has no legally supported argument as to why the Court should adopt some but not
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`3 DoDots proposed a new construction for this term for the first time in its Responsive Brief. Resp.
`Br. at 13.
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`9
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 14 of 20
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`all of the patentees’ own definition of this term. As such, the Court should adopt Defendants’
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`construction, which is taken verbatim from the patentees’ definition provided to the PTO.
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`E.
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`“wherein accessing the networked information monitor defined by the
`networked information monitor template results in: transmission … reception
`… presentation” (’407 patent, claim 1)
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`Defendants’ Proposed Construction DoDots’ Proposed Construction
`Indefinite
`Plain & ordinary meaning
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`As established in Defendants’ Opening Brief, claim 1 of the ’407 patent impermissibly
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`recites both a system and a method of using that system, and is therefore indefinite under 35 U.S.C.
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`§ 112. Op. Br. at 19-21. The preamble of claim 1 indicates that the claim is directed to an apparatus
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`(i.e., a “client computing device”), yet the body of claim 1 recites four distinct method steps (i.e.,
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`“transmission,” “reception” and two “presentation” steps). Id.; ’407 patent at claim 1. DoDots’
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`arguments to the contrary are incorrect. Resp. Br. at 13-15.
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`First, DoDots incorrectly contends that the recited method steps merely “represent
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`permissible functional language used to describe the capabilities of the claimed module.” Resp.
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`Br. at 13-15 (emphasis in original). Specifically, DoDots contends that the claim language
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`preceding the limitation at issue “makes clear that the claim is directed to structure (an apparatus),
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`which is ‘configured to’ access content and perform specified functions.” Id. at 14 (citing ’407
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`patent, claim 1) (emphasis in original). The structure of claim 1 fails to support DoDots’ argument.
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`Claim 1 recites in relevant part:
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`one or more processors configured to execute one or more computer
`program modules, the one or more computer program modules
`being configured to access the networked information monitor
`defined by the networked information monitor template,
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 15 of 20
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`’407 patent, claim 1 (emphasis added). There is no dispute that the claimed “accessing” is
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`functional language that describes the capabilities of the recited “computer program modules.”
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`However, the claim next recites (in the limitation at issue):
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`wherein accessing the networked information monitor defined by
`the networked information monitor template results in:
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`
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`transmission, over a network to a web server . . .
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`reception, over the network from the web server . . .
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`presentation, on the display . . .
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`presentation, on the display within the frame . . .
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`’407 patent, claim 1 (emphases added). Contrary to DoDots’ assertion (Resp. Br. at 14), the claim
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`does not recite the “transmission,” “reception” and “presentation” steps as functions that the
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`“computer program modules” are configured to perform. Rather, the distinct method steps are
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`recited in isolation, untethered to any structural component, and must occur as a result of the
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`claimed “accessing.” Id. (“accessing the networked information monitor . . . results in:” the four
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`claimed method steps). Thus, unlike the claimed “accessing,” the recited “transmission,”
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`“reception” and “presentation” steps are not merely permissible functional language describing the
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`capabilities of any recited structural component. DoDots’ cited case law is therefore inapposite.
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`Resp. Br. at 14-15.
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`As the Federal Circuit explained in MasterMine, where functional language appears in
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`isolation and not specifically tied to recited structure—as here—a claim is indefinite for
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`impermissibly mixing apparatus and method claim elements. MasterMine Software Inc. v.
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`Microsoft Corp., 874 F.3d 1307, 1316 (Fed. Cir. 2017) (distinguishing asserted claims from the
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`indefinite claims in Rembrandt, holding that “unlike the claims in Rembrandt, the functional
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 16 of 20
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`language here does not appear in isolation, but rather, is specifically tied to structure . . .”) (citing
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`Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011)).
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`In Rembrandt, the Federal Circuit held that an apparatus claim limitation (i.e., “a data
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`transmitting device”) that included the method step “transmitting the trellis encoded frames” was
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`invalid for indefiniteness because the patent claim at issue recited a method step untethered to any
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`claimed structure. Id. at 1339-40 (citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
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`1377, 1384 (Fed. Cir. 2005)); see also EMA Electromechanics, Inc. v. Siemens Corp., et al., No.
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`6:21-CV-1001-ADA, 2022 WL 526244, at *11 (W.D. Tex. Feb. 16, 2022) (“In Rembrandt Data,
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`the patent claim at issue recited a method step untethered to any claimed structure.”) (internal
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`citation omitted). Here, the steps following “results in:” (i.e., transmission; reception; presentation
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`. . . of the viewer graphical user interface; and presentation . . . of the time-varying content) appear
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`in isolation, untethered to any claimed structure, and the claim is therefore indefinite.
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`Second, DoDots incorrectly contends that dependent claim 2, which begins “the method of
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`claim 1,” should be ignored as “nothing more than a clear typographical error.” Resp. Br. at 15.
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`As established in Section II.F., DoDots ignores that claim 2 recites yet another method step that
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`must be performed (i.e., “modifying a feature of said viewer graphical user interface . . .”). Thus,
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`the preamble of claim 2 (i.e., “the method of claim 1”) is not a typographical error nor any other
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`type of error that a Court may correct. Id. Instead, claim 2 exacerbates the IPXL problem, adding
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`further ambiguity as to whether claim 1 would be infringed by an apparatus that enables the
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`performance of the claimed “transmission,” “reception” and “presentation” steps, or when the
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`steps are actually performed. Op. Br. at 20-21; IPXL, 430 F.3d at 1384; Rembrandt, 641 F.3d at
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`1339; In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011).
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`Case 6:22-cv-00533-ADA Document 93 Filed 04/26/23 Page 17 of 20
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`Because claim 1 of the ’407 patent impermissibly recites both an apparatus and a method
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`of using that apparatus, it is indefinite.
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`F.
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`“The method of claim 1, further comprising ...” (’407 patent, claim 2)
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`Defendants’ Proposed Construction
`Indefinite
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`DoDots’ Proposed Construction
`Correction of a clear typographical error:
`“The client computing device of claim 1,
`further comprising…”
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`Claim 2 of the ’407 patent adds a second layer of IPXL indefiniteness atop of claim 1’s
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`inclusion of method claim limitations in an apparatus claim. Dependent claim 2 actually recites a
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`“method” rather than a “client computing device” as claimed in independent claim 1. Recognizing
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`this disconnect, DoDots asserts that claim 2 includes a typographical error requiring correction by
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`the Court. Resp. Br. 16-18. But correction is not an appropriate remedy here.
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`As DoDots recognizes, a claim may only be corrected if “the correction is not subject to
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`reasonable debate based on consideration of the claim language and the specification . . . .” Resp.
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`Br. at 17 (quoting Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003).
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`Here, there is complete and utter ambiguity as to whether there is an error in claim 2, and if so,
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`how to fix it. As described above, claim 1 is claimed as an apparatus, but includes multiple method
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`steps. Thus, it is unclear if the error is with claim 2 being claimed as a method, or with claim 1
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`being claimed as an apparatus. A skilled artisan would likely just as well consider correcting claim
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`1 to recite a method than to correct claim 2 to recite an apparatus, creating reasonable debate.
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`This ambiguity is compounded by the fact that claim 2 recites an additional method step:
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`“modifying a feature of said viewer graphical user