Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 1 of 15
`
`THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`APPLE INC., BEST BUY STORES, L.P.,
`BESTBUY.COM, LLC, and BEST BUY
`TEXAS.COM, LLC,
`
`
`Defendants.
`
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`BESTBUY.COM, LLC, and BEST BUY
`TEXAS.COM, LLC,
`
`
`Defendants.
`
`Case No.: 6:22-cv-00533-ADA
`
`
`Case No.: 6:22-cv-00535-ADA
`
`
`PLAINTIFF DODOTS LICENSING SOLUTIONS LLC’S
`SUR-REPLY CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`
`
`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 2 of 15
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`TABLE OF CONTENTS
`
`Introduction. ............................................................................................................ 1
`Disputed terms. ....................................................................................................... 1
`“is accessible”/“is available”
`(’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13) ..................................... 1
`“lacks controls for manually navigating a network”
`(’083 patent, claims 1, 4, 9, 12) .............................................................................. 4
`“frame” (’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13) ......................... 7
`“web browser readable language”
`(’545 patent, claim 1; ’407 patent, claims 1, 13) .................................................... 8
`“wherein accessing the networked information monitor defined by the
`networked information monitor template results in: transmission ... reception
`... presentation” (’407 patent, claim 1) ................................................................ 9
`“The method of claim 1, further comprising ...” (’407 patent, claim 2) ................. 11
`
`A.
`
`B.
`
`C.
`D.
`
`E.
`
`F.
`
`
`
`
`
`i
`
`
`
`
`
`I.
`II.
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`
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`
`
`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 3 of 15
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988)..................................................................................................8
`
`DealerTrack, Inc. v. Huber,
`674 F.3d 1315 (Fed. Cir. 2012)..................................................................................................8
`
`In re Downing,
`754 F. App'x 988 (Fed. Cir. 2018) .............................................................................................8
`
`MasterMine Software Inc. v. Microsoft Corp.,
`874 F.3d 1307 (Fed. Cir. 2017)............................................................................................9, 10
`
`PersonalWeb Techs. LLC v. Microsoft Corp.,
`No. 6:12-CV-663, 2013 U.S. Dist. LEXIS 110256 (E.D. Tex. Aug. 6, 2013) ..........................9
`
`PIN/NIP, Inc. v. Platte Chem. Co.,
`304 F.3d 1235, 1244 (Fed. Cir. 2002)........................................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..............................................................................................3, 8
`
`Rembrandt Data Techs., LP v. AOL, LLC,
`641 F.3d 1331 (Fed. Cir. 2011)................................................................................................10
`
`Sci. Applications Int'l Corp. v. United States,
`61 Fed. Cl. 373, 383 (2022) .......................................................................................................3
`
`Semcon IP Inc. v. Louis Vuitton N. Am., Inc.,
`No. 2:19-CV-00122-JRG, 2020 U.S. Dist. LEXIS 87492 (E.D. Tex. May 19,
`2020) ..........................................................................................................................................9
`
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015)..................................................................................................2
`
`Williamson v. Citrix Online, LLC,
` 792 F.3d 1339, 1346 (Fed. Cir. 2015) ......................................................................................2
`
`United States Auto. Ass'n v. Wells Fargo Bank, N.A.,
`No. 2:18-cv-00245-JRG, 2019 U.S. Dist. LEXIS 99285 (E.D. Tex. June 13,
`2019) ..........................................................................................................................................8
`
`
`
`ii
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 4 of 15
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`
`
`I.
`
`Introduction
`
`Defendants fail to rebut DoDots’ arguments. Instead, they gloss over them. Not only have
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`Defendants now changed positions but they base their entire brief on the false premise that
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`DoDots is attempting to broaden the claims. Not so. Indeed, most of the terms contain straight-
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`forward English words that a jury can readily understand. They have no special meaning and,
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`thus, should be given their plain and ordinary meaning. Nor do the terms require the addition of
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`non-exhaustive lists of examples that Defendants seek to jam into their constructions. And for the
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`remainder of the terms, DoDots simply uses the patentees’ clear lexicography.
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`Lastly, Defendants attempt to improperly seek narrow claim scope by arguing for a
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`disclaimer that does not exist. Accordingly, the Court should adopt DoDots’ constructions and
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`reject Defendants’ constructions.
`
`II.
`
`Disputed terms
`
`A.
`
`“is accessible”/“is available”
`(’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13)
`
`DoDots’ Proposed Construction
`Plain and ordinary meaning
`
`Defendants’ Proposed Construction
`“can be transmitted at the time the content is
`requested”
`
`
`Defendants do not dispute that these terms are easily understandable. Nevertheless,
`
`Defendants seek to inject a temporal limitation to limit when content “is available” or “is
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`accessible.”1 See D.I. 932 at 2 (Defendants’ Reply Brief). Worse yet, Defendants’ language adds
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`ambiguity—what constitutes “at the time” of a request? There is, however, absolutely nothing in
`
`
`1 The claims only recite where content is retrieved from (a “network location”) and how content
`is retrieved (“via a TCP/IP protocol”). See ’083 patent, 47:42-48:8; ’407 patent, 42:37-40.
`
` 2
`
` Docket citations are to DoDots Licensing Solutions LLC v. Apple Inc. et al., Case No.: 6:22-cv-
`00533-ADA.
`
`
`1
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 5 of 15
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`
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`the claims or specification that limits the timing regarding content availability/accessibility.
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`Indeed, Defendants admit that the claims are silent as to timing. Id. So Defendants
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`manufacture an issue where none exists, stating that the “claims as issue require that content
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`either ‘is accessible’ or ‘is available’, but do not resolve a fundamental question: when?” Id. But
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`no such question needs to be resolved. The claims were drafted and issued without a temporal
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`limitation. The claims’ silence about when content is available/accessible is dispositive. There is
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`no reason to now add such a limitation. The fact that nothing is claimed about timing is not an
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`invitation to add limitations that don’t exist. See, e.g., Williamson v. Citrix Online, LLC, 792
`
`F.3d 1339, 1346 (Fed. Cir. 2015) (finding reversible error where the court construed terms as
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`requiring a “pictorial map,” when “the claim language itself contains no such ‘pictorial map’
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`limitation.”)
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`Nor is there anything in the specification that requires inserting a temporal limitation into
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`the claims. Recognizing they have nothing of substance to argue, Defendants resort to
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`mischaracterizing the record, stating that DoDots “provides no response” and fails to “refute”
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`their “evidence” citing to passages mentioning the words “present invention.” See ‘083 patent,
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`11:15-21. But Defendants did not present any evidence for DoDots to refute (because there is no
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`evidence). As DoDots already pointed out in its Responsive brief (D.I. 88 at 6-7), none of the
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`specification passages that Defendants cite mentions the words “accessible” or “available.”
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`Moreover, none of the passages imposes any restriction on the timing of content retrieval.
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`Indeed, there is simply no discussion whatsoever in the specification about specifically
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`sequencing the steps that Defendants would like this Court to read into the claims. And many of
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`the claims are device claims that describe structure and functional capabilities which cannot
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`logically be ordered.
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`2
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 6 of 15
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`
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`Defendants double-down on Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d
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`1356, 1365 (Fed. Cir. 2015), but that case does nothing for them. Though Defendants quibble
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`about DoDots referring to this case as “extrinsic evidence”3, they cannot quibble with the well-
`
`established principle that patents are construed based on their own intrinsic/extrinsic evidence –
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`not that of unrelated patents, which address different technology, and use different claim
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`language. Though the Federal Circuit’s pronouncements of law may be precedential, the
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`application of law to facts is a case-by-case inquiry. See Phillips v. AWH Corp., 415 F.3d 1303,
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`1314 (Fed. Cir. 2005). “The construction of a term in a patent claim is a highly contextual
`
`exercise that is dependent upon the content of the particular patent in which the term appears,
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`and one cannot always apply the construction of a claim term from one patent to an unrelated
`
`patent in an unrelated lawsuit.” PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1244 (Fed.
`
`Cir. 2002); and see Sci. Applications Int'l Corp. v. United States, 161 Fed. Cl. 373, 383 (2022)
`
`(noting that defendants “argued, unsuccessfully, that the use of similar Registration Terms in the
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`claims of other patents supports its argument” and finding that unrelated patents were extrinsic
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`evidence that could not overcome intrinsic evidence).
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`Ultimately, here, the ordinary meaning of the claim language is “readily apparent” to
`
`persons of ordinary skill and lay persons alike. Phillips v. AWH Corp., 415 F.3d at 1314.
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`Defendants should not be permitted to add new limitations and ambiguity into the claims. Thus,
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`Defendants’ construction should be rejected.
`
`
`3 The unrelated patent claims in Straight Path is unquestionably “extrinsic” evidence in this case.
`See, e.g., Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015, 1023 (Fed. Cir. 2020)
`(rejecting an argument that relied “on extrinsic evidence related to the word ‘low,’ including
`dictionary definitions, grammar references, and claim constructions adopted for unrelated
`patents.”)
`
`3
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 7 of 15
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`
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`B.
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`“lacks controls for manually navigating a network”
`(’083 patent, claims 1, 4, 9, 12)
`
`DoDots’ Proposed Construction
`Plain and ordinary meaning
`
`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)”
`
`
`Context is key here—and Defendants ignore it because it is unhelpful to them.
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`Navigation controls can be (1) web browser-based controls for navigating a network
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`(e.g., Internet) from one webpage (one URL) to another webpage (another URL), or (2) other
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`controls for navigating through content provided to a device (e.g., navigating from one screen to
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`another screen to move around within a “dot” (app)).
`
`The disputed language “lacks controls for manually navigating a network”4 was added to
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`the claims during prosecution. In particular, patentees sought to distinguish their technology
`
`from web browsers-based technology, which provide manual controls for navigating “a
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`network.” Defendants now assert that DoDots disclaimed all controls used to navigate, including
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`those simply used to navigate between screens in dots (apps). That position is unsupportable.
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`First, that position conflicts with the intrinsic evidence. Indeed, the specification of the ’083
`
`patent5 explicitly describes the NIM (mobile app) user interface having fundamental (and
`
`necessary) controls to navigate between screens displayed by the interface—and specifically a
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`forward control, a backward control, and other control buttons.
`
`
`4 Unless otherwise noted, all emphasis has been added.
`5 The ’083 patent claims priority to U.S. Patent Application No. 09/558,922, which issued as
`U.S. Pat. No. 7,756,967, and incorporates by reference the disclosure of the ’967 patent in its
`entirety. See ’083 patent, 1:8-10.
`
`4
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 8 of 15
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`
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`Ex. B (U.S. Patent No. 7,756,967), 17:45-49.
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`Second, the list of examples discussed during prosecution made explicit reference to
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`browser controls not being used: “a forward browsing button” and a “backward browsing
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`button” (which would move forward and backward between webpages) and a “URL entry field”
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`(which would move directly to another webpage). See, e.g., Ex. C at 10, (12/13/2010 Response
`
`to Office Action, ’083 Prosecution History). DoDots objected to the inclusion of this list out of
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`concern that Defendants would try to confuse the jury into believing that the patents excluded
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`non-browsing controls. Courts have excluded exemplary lists for exactly this reason—because
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`they can mislead a jury. See PersonalWeb Techs. LLC v. Microsoft Corp., No. 6:12-CV-663,
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`2013 U.S. Dist. LEXIS 110256, at *11 (E.D. Tex. Aug. 6, 2013) (declining to construe a term to
`
`include a non-exhaustive list of examples).
`
`Defendants initially attempted to obscure the misleading nature of the exemplary list in
`
`their construction. In particular, in their opening brief, Defendants recognized that, during
`
`prosecution, patentees were distinguishing their invention “specifically from so-called
`
`‘conventional web browsers.’” D.I. 81 at 12. Indeed, Defendants repeatedly emphasized that the
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`invention differed from a “web browser,” operated “without the use of web browser,” and did
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`not utilize the “user web navigation” and controls “typically provided by a web-browser.” D.I.
`
`81 at 13. When discussing the Barnett prior art reference, they cited to statements that DoDots’
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`invention “does not have ‘manual navigation controls’ found in conventional web browsers.” Id.
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`After being called-out by DoDots, Defendants completely shifted their position and
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`5
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 9 of 15
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`
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`changed their argument away from web browsers. Defendants now focus on a few words of
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`generic language in an attempt to artificially expand the scope of DoDots’ alleged disclaimer.
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`D.I. 93 at 5. Specifically, Defendants incorrectly assert that patentees’ exclusion of “other
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`manual navigation controls” (when distinguishing the Barnett references) relates to all types of
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`controls for navigating—not just web browser controls. Unlike its opening brief, Defendants now
`
`simply ignore that the patentees’ discussion of “other manual navigation controls” was only in
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`the context of web browsers as shown below.
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`
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`Ex. C at 10.
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`And Defendants now claim a sweeping disclaimer as to all types of navigation
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`buttons/controls in any context (web browser or not). But there is simply no disclaimer (let alone
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`a clear and unmistakable disclaimer) of buttons/controls for navigating through content provided
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`to a device (e.g., navigating from one screen to another screen within an “dot” (app)). Genuine
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`Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (“For a statement
`
`during prosecution to qualify as a disavowal of claim scope, it must be ‘so clear as to show
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`reasonable clarity and deliberateness,’ and ‘so unmistakable as to be unambiguous evidence of
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`disclaimer.’”). Any disclaimer relates only to controls used for navigating “a network”—and that
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`is already reflected in the language “lacks controls for manually navigating a network.”
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`Tellingly, instead of discussing what was actually said during prosecution (above),
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`Defendants discuss Barnett’s specification and their view that Barnett discloses generic
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`6
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 10 of 15
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`
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`navigation e.g., between screens. But Defendants gloss over the fact that the portions of Barnett
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`that Defendant now cite are not what was discussed during prosecution. Ex. D at 4 (citing
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`Barnett, 7:25-30; 8:60-9:27) (9/13/2010 Office Action, ’083 Prosecution History.) Indeed, the
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`patentees specifically explained that Barnett’s disclosures did not extend beyond web browsing.
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`Ex. C at 10. As such, the evidence shows that patentees’ entire argument regarding “other
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`manual navigation controls” was limited to distinguishing over web browsers.
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`In view of the foregoing, and contrary to Defendants’ assertion, there is not (nor can there
`
`be) a clear and unmistakable disclaimer disclaiming controls for navigating through content
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`provided to a device. Thus, DoDots’ construction should be adopted and Defendants’
`
`construction should be rejected.
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`C.
`
`“frame” (’083 patent, claims 1, 4, 9, 12; ’407 patent, claims 1, 13)
`
`Defendants’ Proposed Construction
`Plain and ordinary meaning
`
`DoDots’ Proposed Construction
`“area upon a display of the Dot instantiation
`in which data may be rendered”
`
`or
`
`“area upon a display of a NIM instantiation
`in which data may be rendered
`
`
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`Defendants do not dispute that the patentees provided clear lexicography for this term. So
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`Defendants assert a contrived reason for rejecting this lexicography. After conceding that “Dot”
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`and “NIM” (i.e., “networked information monitor” recited in the claims) are analogous terms
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`(because the Federal Circuit said so) and with nothing else to argue, Defendants now claim that
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`DoDots’ use of the term “the” instead of “a” NIM instantiation results in a lack of antecedent
`
`basis in the claim. Rather than creating “serious challenges” as Defendants suggest, the solution
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`is simply to change the word “the” to “a,” which DoDots has proposed in the chart above.
`
`7
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 11 of 15
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`
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`Nevertheless, even using the word “the,” DoDots’ construction is not an issue because “the lack
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`of an antecedent basis does not render a claim indefinite as long as the claim apprises one of
`
`ordinary skill in the art of its scope.” In re Downing, 754 F. App’x 988, 996 (Fed. Cir. 2018).
`
`Thus, DoDots’ construction should be adopted.
`
`D.
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`“web browser readable language”
`(’545 patent, claim 1; ’407 patent, claims 1, 13)
`
`DoDots’ Proposed Construction
`“standard Internet content that is capable of
`being parsed by a browser”
`
`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.”
`
`
`Without identifying any case law, Defendants boldly assert that DoDots’ construction
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`(which excludes a non-limiting list of examples) is “contrary to the law of lexicography.” D.I 93
`
`at 9. Not so. To the contrary, it is Defendants’ construction that violates a fundamental cannon of
`
`law: “particular embodiments and examples appearing in the specification will not generally be
`
`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
`
`1988); accord Phillips, 415 F.3d at 1323; see also DealerTrack, Inc. v. Huber, 674 F.3d 1315,
`
`1322 (Fed. Cir. 2012)) (declining to limit a term to a list of examples in the specification).
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`Defendants argue that their list is “part of the definition.” D.I 93 at 9. But the plain words
`
`of the specification make clear that the list is a non-limiting list of examples because of the
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`permissive conditional introduction “such as” and the open-ended closing “etc.” Indeed, courts
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`regularly find that such lists are neither necessary nor appropriate for inclusion in claim
`
`construction. See, e.g., United States Auto. Ass’n v. Wells Fargo Bank, N.A., No. 2:18-cv-00245-
`
`JRG, 2019 U.S. Dist. LEXIS 99285, at *38 (E.D. Tex. June 13, 2019) (rejecting a proposed
`
`construction because “the entire list is exemplary rather than that a particular criterion [] based
`
`on at least one of the items in the list but not necessarily on all items in the list or that not every
`
`8
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 12 of 15
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`
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`item in the list must be used to monitor.”); Semcon IP Inc. v. Louis Vuitton N. Am., Inc., No.
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`2:19-CV-00122-JRG, 2020 U.S. Dist. LEXIS 87492, at *26 (E.D. Tex. May 19, 2020) (rejecting
`
`the incorporation of examples introduced with conditions with “such as,” “e.g.,” “including,” and
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`“various” and noting that “the expressly exemplary nature of the listed conditions counsel
`
`against reading an "internal limitation into the claim”).
`
`Notably, this case mirrors PersonalWeb Techs. LLC v. Microsoft Corp., No. 6:12-CV-
`
`663, 2013 U.S. Dist. LEXIS 110256, at *11 (E.D. Tex. Aug. 6, 2013). Similar to Defendants
`
`here, the PersonalWeb defendants argued that omitting examples was “ignor[ing] the remainder
`
`of the patentee’s definition” Id. The court rejected this position:
`
`Any further construction would be unnecessary. Defendants include several
`illustrative examples in their proposed construction, but the specification makes
`clear that those examples are merely permissive. … It would be misleading to
`include a non-exhaustive list of examples in the construction
`
`
`
`Id. Thus, Defendants’ addition of a non-exhaustive list of examples should be rejected.
`
`E.
`
`“wherein accessing the networked information monitor defined by the
`networked information monitor template results in: transmission ...
`reception ... presentation” (’407 patent, claim 1)
`
`DoDots’ Proposed Construction
`plain and ordinary meaning
`
`The phrase is not indefinite. Claim 1 ties functional language to structure. MasterMine
`
`Defendants’ Proposed Construction
`Indefinite
`
`Software Inc. v. Microsoft Corp, 874 F.3d 1307, 1316 (Fed. Cir. 2017) (claims are definite
`
`because “the functional language here does not appear in isolation, but rather, is specifically tied
`
`to structure”). Defendants continue to rely on a disingenuous reading of claim 1 (ignoring claim
`
`structure and language) to suggest that the MasterMine standard is not met. In particular,
`
`Defendants attempt to inappropriately sever the functional language from the recited structural
`
`component by making the conclusory statement that the “computer program modules” do not
`
`9
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 13 of 15
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`perform “transmission,” “reception” and “presentation.” D.I. 93 at 11.6 Such a position, however,
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`is at odds with claim 1, which clearly recites “computer program modules” are capable of
`
`“accessing” instructions to “result in” the performance of certain functions.
`
`
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`’407 Patent, claim 1.
`
`Defendants’ reliance on MasterMine and Rembrandt Data Techs., LP v. AOL, LLC, 641
`
`F.3d 1331, 1339 (Fed. Cir. 2011) is unhelpful to them. Defendants cite those cases for the
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`unremarkable proposition that claims are invalid when there is a “method step untethered to any
`
`claimed structure.” But that is not the case here—structural language (computer modules) is
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`clearly tied to the claimed functions. Thus, these cases support DoDots’ position.
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`Finally, contrary to Defendants’ assertion, claim 2 does not “exacerbate[] the IPXL
`
`problem” by adding further ambiguity. D.I. 93 at 11. When the Court corrects the typographical
`
`
`6 Defendants have also underlined the phrase “results in,” but they have not offered any
`explanation of why. D.I. 93 at 11. That language actually proves that the computer program
`module is tied to the permissible functional language.
`
`10
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`

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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 14 of 15
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`error (as discussed in Section II.F), claim 2 simply expands on the functions that the “computer
`
`program modules” are capable of performing. The recitation of additional functionality in claim
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`2 does not alter the contextual evidence demonstrating the need to correct a clear error. claimz
`
`F.
`
`“The method of claim 1, further comprising ...”
`(’407 patent, claim 2)
`
`DoDots’ Proposed Construction
`Correction of a clear typographical error:
`
`“The client computing device of claim 1,
`further comprising…”
`
`The term is not indefinite. Defendants simply attempt to manufacture a debate regarding
`
`Defendants’ Proposed Construction
`Indefinite
`
`correction, arguing that it is “unclear if the error is with claim 2 being claimed as a method, or
`
`with claim 1 being claimed as an apparatus.” D.I. 93 at 13. But their rationale is contrived and
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`relies on circular reasoning. Ultimately, Defendants argue that claim 2 cannot be corrected
`
`because claim 1 is indefinite and, conversely, that claim 1 is indefinite because claim 2 cannot be
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`corrected. This Court should reject this logical fallacy.
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`Here, correction is not subject to reasonable debate. As much as Defendants seek to
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`muddy the water, claims 1 and 3-12 (which surround claim 2) are all device claims and, thus,
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`provide unmistakable context and support for correction. D.I. 88 at 16-17. The prosecution
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`history, where the error was made, also clearly demonstrates that there was a ministerial drafting
`
`error. Notably, Defendants chose to ignore the relevant portions of the prosecution history. D.I.
`
`93 at 13. During prosecution, patentees inadvertently used “method” when they added a new
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`claim. See D.I. 88 at 17-18. It is worth repeating that during prosecution, independent claim 1
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`was a device claim while claims 12 through 22 were method claims. Patentees added new
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`dependent claim 23 (now claim 2) which numerically followed method claim 22 but depended
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`from device claim 1. Because claim 23 came after the method claims, patentees unintentionally
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`Case 6:22-cv-00533-ADA Document 96 Filed 05/10/23 Page 15 of 15
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`started claim 23 with “the method of . . . ” even though it depended from claim 1. This is the type
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`of error that the Court can and should correct.
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`Dated: May 10, 2023
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`Respectfully submitted,
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`/s/ Jason S. Charkow
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`Raymond W. Mort, III
`Texas State Bar No. 00791308
`raymort@austinlaw.com
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`THE MORT LAW FIRM, PLLC
`501 Congress Ave, Suite 150
`Austin, Texas 78701
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`Tel/Fax: (512) 865-7950
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`Of Counsel:
`Ronald M. Daignault (pro hac vice)*
`Chandran B. Iyer (pro hac vice)
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`Scott R. Samay (pro hac vice)*
`Jason S. Charkow (pro hac vice)*
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`Shalu Maheshwari (pro hac vice)*
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`Richard Juang (pro hac vice)*
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`Oded Burger ((pro hac vice)*
`Zachary H. Ellis (State Bar No. 24122606)*
`rdaignault@daignaultiyer.com
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`cbiyer@daignaultiyer.com
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`ssamay@daignaultiyer.com
`jcharkow@daignaultiyer.com
`smaheshwari@daignaultiyer.com
`rjuang@daignaultiyer.com
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`oburger@daignaultiyer.com
`zellis@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22102
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`*Not admitted in Virginia
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`ATTORNEYS FOR PLAINTIFF
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`12
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