Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 1 of 19
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`
`
`Robert F. McCauley (SBN 162056)
`robert.mccauley@finnegan.com
`Jacob A. Schroeder (SBN 264717)
`jacob.schroeder@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`Gerald F. Ivey (pro hac vice)
`Smith R. Brittingham IV (pro hac vice)
`Elizabeth A. Niemeyer (pro hac vice)
`John M. Williamson (pro hac vice)
`Rajeev Gupta (pro hac vice)
`Aidan C. Skoyles (pro hac vice)
`Cecilia Sanabria (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone:
`(202) 408-4000
`Facsimile:
`(202) 408-4400
`
`Stephen E. Kabakoff (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3500 SunTrust Plaza
`303 Peachtree Street, N.E.
`Atlanta, GA 30308-3263
`Telephone:
`(404) 653- 6400
`Facsimile:
`(404) 653-6444
`
`Attorneys for Plaintiffs
`OpenTV, Inc., Nagravision S.A., and Nagra France S.A.S.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`
`OPENTV, INC., NAGRAVISION S.A., and
`NAGRA FRANCE S.A.S.
`
`
`Plaintiffs,
`
`
`Defendant.
`
`
`v.
`
`
`APPLE INC.,
`
`
`
`
`
`
`CASE NO. 5:15-cv-02008-EJD (NMC)
`
`PLAINTIFFS’ REPLY CLAIM
`CONSTRUCTION BRIEF
`
`Date: May 12, 2016
`Time: 1:30 p.m.
`Judge: Honorable Edward J. Davila
`Courtroom: 4, 5th Floor
`
`
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 2 of 19
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`
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`THE ’736 PATENT .............................................................................................................1
`
`A.
`
`B.
`
`C.
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`“automatic and direct access” [Claims 1, 8, 9] ........................................................1
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`“indicating” [Claims 1, 7-9] .....................................................................................5
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`“means for extracting . . .” [Claim 9] .......................................................................6
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`III.
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`THE ’169 PATENT .............................................................................................................7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`F.
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`“directive” [Claims 1, 2, 22, 23] ..............................................................................7
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`“prerequisite directive” [Claims 1, 2, 22, 23] ..........................................................9
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`“subset of said set of resources” [Claims 1,22,23] ................................................11
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`“wherein said prohibiting . . .” [Claim 12] ............................................................12
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`“a processing unit configured to . . .” [Claim 22] ..................................................13
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`The Preamble of Claim 22 Is Not Limiting [Claim 22] .........................................14
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`IV.
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`THE ’740 PATENT ...........................................................................................................15
`
`A.
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`“imprint of data” [Claim 1] ....................................................................................15
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`V.
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`CONCLUSION ..................................................................................................................15
`
`
`
`
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 3 of 19
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`
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Federal Cases
`
`Aristocrat Techs. Austl. Pty Ltd v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)......................................................................................................13
`
`Nautilus Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) .....................................................................................................................1
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..............................................................................................1, 5, 11
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376 (Fed. Cir. 2011)......................................................................................................13
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)......................................................................................................15
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)......................................................................................................13
`
`X2Y Attenuators, LLC v. Int’l Trade Comm’n,
`757 F.3d 1358 (Fed. Cir. 2014)......................................................................................................14
`
`Federal Statutes
`
`35 U.S.C. § 112 ....................................................................................................................................13
`
`ii
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 4 of 19
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`
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`I.
`
`INTRODUCTION
`
`The claims at issue in this case involve simple language for which OpenTV has proposed
`
`simple, easily-understood constructions. By contrast, Apple either offers no construction or ignores
`
`the plain language of the claims and intrinsic evidence. Apple contends that half of the claims are
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`indefinite, essentially assuming that a person of skill in the art has, in fact, no skill at all and would
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`be unable to understand or perform basic computer programming operations. For the remaining
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`terms, Apple either improperly adds limitations from the specification, or stretches certain claim
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`terms beyond their plain bounds. Rather than basing its constructions on the patent specifications
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`and file histories as understood by a POSA as OpenTV did, Apple improperly bases its approach to
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`claim construction on litigation-strategy. See Dkt. No. 85 at 8 (“Apple’s agreed and disputed
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`constructions are, in part, oriented toward clarifying whether the scope of the asserted claims extends
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`to what is disclosed by the prior art.”). This Court should adopt OpenTV’s proposed claim
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`constructions and reject Apple’s.
`II.
`
`THE ’736 PATENT
`A.
`A POSA would be “reasonably certain” as to the meaning of the claim term “automatic and
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`“automatic and direct access” [Claims 1, 8, 9]
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`direct access.” See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). And,
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`indeed, the PTAB had no trouble understanding this very same term in its June 24, 2014 decision.
`See Ex. 15 at *4-5.1 The PTAB’s decision is intrinsic evidence that strongly supports OpenTV’s
`position that “automatic and direct” is not indefinite. See Phillips v. AWH Corp., 414 F.3d 1303,
`
`1317 (Fed. Cir. 2005). Apple argues (1) that the “automatic and direct access” terms failed to add a
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`limitation during prosecution, and (2) that the Applicant’s explanation was inconsistent with the
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`claims as amended. Even if this were true—which it is not—neither of these points establishes that a
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`POSA would not be “reasonably certain” as to the meaning and scope of “automatic and direct
`
`
`1 Exhibits 1-15 refer to those attached to the March 29, 2016 Declaration of Rajeev Gupta in
`support of Plaintiff’s Opening Claim Construction Brief. Dkt. No. 81. Exhibits 16-18 refer to those
`attached to the accompanying Declaration of Rajeev Gupta in support of Plaintiff’s Reply Claim
`Construction Brief.
`
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 5 of 19
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`
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`access” in the context of the ’736 patent. Instead, “automatic and direct access” is a straightforward
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`claim term that a POSA would easily understand (whether the term added a limitation during
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`prosecution is irrelevant). Apple’s indefiniteness argument should be rejected out of hand.
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`Apple’s first argument, that the “automatic and direct access” language does not narrow the
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`claims, is meritless. Indeed, the prosecution history establishes the opposite. Applicant added the
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`“automatic and direct access” phrasing to overcome the examiner’s rejection of the then-pending
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`claims over Throckmorton. Ex. 4 at 1-4. In a summary following an examiner interview, the
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`examiner stated:
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`Applicant proposed adding language to the claims to indicate the
`‘automatic’ electronic extraction of address data and the establishment
`of a ‘direct link’, initiated by the user, to an online information source.
`These features, if added to the claims, would likely render them
`allowable over Throckmorton et al alone.
`Ex. 16. After the claims were amended to add the “automatic and direct access” limitation, the
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`examiner quickly issued a notice of allowance. Ex. 17. Thus, because Throckmorton did not disclose
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`at least “automatic and direct access” to information, the examiner allowed the amended claims.
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`Apple’s argument that “automatic and direct access” added nothing is inconsistent with the
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`prosecution history. Rather, the prosecution history demonstrates that the Applicant, the examiner,
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`and ultimately the PTAB, clearly understood the “automatic and direct access” limitation. Apple’s
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`argument that a POSA could not be “reasonably certain” as to the claim term’s meaning is
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`contradicted by the intrinsic record.
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`Apple nevertheless alleges that this newly added claim limitation “did not add limitations
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`beyond what one of ordinary skill already understood to exist in claim 8” and that a POSA “would
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`have understood that when a user clicked on a link, the user’s computer would have ‘automatically’
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`made a ‘direct’ connection . . . .” Dkt. No. 82 at 3. Apple, however, provides no substantive support
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`for this assertion and relies instead on an expert’s ipse dixit declaration that merely parrots the same
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`statement from Apple’s brief. See Dkt. No. 82 at 3, l. 23, citing Dkt. No. 83, Ex. 5 at ¶¶ 20-23. But in
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`the absence of the “automatic and direct” limitation, there is nothing to suggest that merely clicking
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`on a link necessarily causes a computer to “automatically” make a “direct connection.” Rather, after
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`the user clicked on a link, the system may have prompted the user to decide whether to continue, or
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 6 of 19
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`the user may have been provided an address to enter into a different system, consistent with the prior
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`art discussion in the ’736 patent. Neither of these actions would entail “automatic and direct access.”
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`Ex. 18 at ¶ 5. A system such as Throckmorton or a television program announcing a website to users
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`and providing a link that the user would separately enter into a different system does not provide
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`“automatic and direct” access. Id. Adding the “automatic and direct” limitations during prosecution
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`further distinguished the claimed invention over the prior art and resulted in the allowance of the
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`pending claims. Accordingly, this Court should reject Apple’s argument that the amendment added
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`nothing.
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`Apple’s second argument likewise fails. Apple incorrectly argues that the “explanation
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`provided by the applicant [while making the ‘automatic and direct’ amendment] is inconsistent with
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`the claims as amended.” Dkt. No. 82 at 2. In making the amendment over Throckmorton, Applicant
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`pointed out that the as-amended claims covered a system where the user is linked “direct to the
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`additional content, without the need for intermediate steps.” Ex. 4 at 6. Applicant clarified that “in
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`Applicant’s invention, the user never has to leave the screen to access additional content because
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`access is ‘direct’ from the user to the content.” Id. Unlike Apple’s unsupported assertions,
`Applicant’s explanation is entirely consistent with the issued claims.2
`In attempting to show that the Applicant’s statements during prosecution are inconsistent
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`with the claims, Apple points to discussion during the prosecution of a subsequent continuation
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`application where the Examiner recognized that the specification and claims do not require the user
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`to “leave the screen.” Dkt. No. 82 at 4. This is not only irrelevant since the continuation involves
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`different claims, but it also fails to demonstrate any purported inconsistency in comments made
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`during prosecution of the ’736 patent claims.
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`Apple also argues that the “automatic and direct” phrases apply only to access after the user
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`2 As part of its argument, Apple draws a meaningless and confusing distinction between “a
`link ‘in’ a video and . . . a link ‘with’ a video.” Dkt. No. 82 at 4. Whether the link is provided in the
`vertical blanking interval of an analog signal or in a digital stream of data in a digital signal, the link
`to content is presented “in” or “with” a video. Ex. 18 at ¶ 8. The claims do not require, as Apple
`suggests, that the link be actually “in the display of the video to the user.”
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 7 of 19
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`
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`has provided a command such as by clicking on a link. Dkt. No. 82 at 4. Apple argues, incorrectly,
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`that this sequence of operations is inconsistent with OpenTV’s proposed construction. The
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`preambles of the independent claims discuss providing “automatic and direct access” to online
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`information. This “access” is access before the user has provided a command, i.e., the access is
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`provided automatically in that the user sees the option for such access without having to navigate
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`through menus as in Throckmorton, i.e., “without the user performing additional steps.” Ex. 18 at
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`¶ 6. And, once the user has provided the command, the access is direct in the sense that the user is
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`taken directly to the online information source from the user’s perspective (recognizing that
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`connections through the public Internet may involve multiple hops from a client to a server). Id.; Ex.
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`15 at *5. When the claims refer to the related term “automatically and directly establishing . . .,” they
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`are referring to access after the user has provided the command requesting a connection because the
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`connection itself is “established.” The connection is established automatically in the sense that the
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`user receives access without performing additional steps; the connection is established directly in the
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`sense that it is direct from the user’s perspective. This sequence is entirely consistent with OpenTV’s
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`proposed construction.
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`Apple’s argument that “direct from the user’s perspective” is vague is again based on a
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`misreading of the specification. See Dkt. No. 82 at 5. Specifically, Apple seizes on a description in
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`the patent regarding the shortcomings of 1996-era cable/broadcast providers. Id. at 5, citing Ex. 1 at
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`2:59-67. In those systems, access was limited to information sources “directly available through the
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`unitary cable or broadcast provider.” That is, such systems would not be able to access information
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`beyond their cable provider. The specification goes on to state that “[b]y contrast, the present
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`invention facilitates direct automated user access to an unlimited number of online information
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`providers . . . .” Ex. 1 at 2:63-67. Apple relies on these disclosures in arguing that “direct” access
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`that passes “through a cable or broadcast provider . . . is not the claimed invention.” Dkt. No. 82 at 5.
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`That is incorrect. To facilitate access “to an unlimited number of online information providers,” the
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`invention must provide access that passes through an Internet service provider. The ’736 patent
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`specifically contemplates using the “public internet” to make direct connections. Ex. 1 at 5:29-34;
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`Ex. 15 at *5. The specification contradicts Apple’s argument.
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 8 of 19
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`
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`Accordingly, this Court should adopt OpenTV’s proposed construction and hold the claim
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`term is not indefinite.
`B.
`Apple admits that the specification of the ’736 patent expressly describes “indicating” in one
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`“indicating” [Claims 1, 7-9]
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`embodiment as an automatic indication provided to the user. See Ex. 1 at 9:15-29; Dkt. No. 82 at 6.
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`However, focusing on the lack of the word “automatic,” Apple then argues that the other
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`embodiments are directed to non-automatic indications. Apple’s argument is meritless because it
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`ignores the context in which the other embodiments discuss the automatic indication. For example,
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`in one embodiment, the specification teaches that the indicator may be “a logo or message to be
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`displayed for the user at points in the program which coincide with the presence of an embedded
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`online information provider address.” Ex. 1 at 3:58-4:4. The indicator here is also being
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`automatically provided to the user because the user performs no special action to receive the
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`indication. In yet another embodiment, the “indicator signal generator 46” displays an indicator “to
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`signal the user that an address of an online provider . . . is available.” Id. at 6:13-15. Again, the
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`indication is automatic because it is a “signal” to the user that an address is available. In sum, the
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`’736 patent consistently describes the claimed “indication” as an automatic indication.
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`Moreover, for similar reasons to the “automatic and direct access” limitation, the “indicating”
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`limitation in the ’736 patent denotes an “automatic” indication. Again, the prosecution history’s
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`treatment of Throckmorton confirms OpenTV’s position on this point. Apple’s construction of
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`“indication” contemplates indications that are hidden in a nest of menus—the exact type of
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`indications disclosed by Throckmorton and distinguished by the Applicant. Specifically, the
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`Applicant amended the claims to provide “automatic and direct access.” Ex. 4. This added limitation
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`provided the basis of the examiner’s subsequent allowance of the pending claims. Ex. 16. In fact,
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`each claim was amended to recite “automatic and direct access” that was distinguishable over
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`Throckmorton, which did not disclose an automatic indication because the links were hidden in
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`menus.
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`In an apparent effort to revive an invalidity position based on Throckmorton, Apple ignores
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`the prosecution history, seeking to construe “indication” as if those amendments to the claim were
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`Case No. 5:15-cv-02008-EJD (NMC)
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 9 of 19
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`never made. But well-established principles of claim construction dictate that the prosecution history
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`be considered when construing claims. Phillips, 414 F.3d at 1317. Accordingly, because both the
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`specification and file history directly contradict Apple’s argument, the Court should adopt
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`OpenTV’s proposed construction.
`C.
`As OpenTV demonstrated in its opening brief, the specification discloses a specific structure
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`“means for extracting . . .” [Claim 9]
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`corresponding to the “means for extracting.” The specification notes that “[a]ddress extraction [sic]
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`42 is constructed to electronically store, e.g., via a register or memory device (not shown), the
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`detected address for use in accessing the online service provider at the selection of the user.” Ex. 1 at
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`5:57-60. In doing so, it describes adequate structure to perform the claimed function. Apple’s
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`argument that the patent describes only a “black box” ignores the detailed disclosure in the
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`specification that the address extractor must store “via a register or memory device the detected
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`address . . . .” There is no basis to ignore the discussion in the specification regarding the address
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`extractor shown in Figures 2 and 3. The disclosure makes clear that the address extractor is a
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`particular arrangement of software and hardware coupled to a register or memory device, which has
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`the ability to extract an address from an incoming signal. Moreover, the specification makes clear
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`that the “details of the construction of address extractor 42 are well known in the art and need not be
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`disclosed in further detail.” Ex. 1 at 6:5-7. As described in Dr. Almeroth’s supplemental declaration,
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`a web browser is just one example of a kind of well-known address extractor that could be
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`implemented to store addresses from incoming web communications. Ex. 18 at ¶ 10. Any person
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`with a bachelor’s degree in computer science, i.e., a POSA, would be fully capable of understanding
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`that an address extractor performs the simple task of extracting an address from a web page or other
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`data format. And indeed, the examiner never issued any rejection on this basis, and the PTAB found
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`the discussion in the specification sufficiently supported the term. See Ex. 15 at *6-7.
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`Apple also argues that the disclosed modem coupled with appropriate hardware and software
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`is insufficient structure to perform the “automatically establishing” function. Yet, Apple admits that
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`a modem maintains a connection to an Internet Service Provider that would be used for establishing
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`communication with online information sources. Whether the modem is “always on” is irrelevant to
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 10 of 19
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`the modem’s ability to automatically establish a communications link. The specification and claims
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`do not require the literal connection to the Internet must be “always on” or that it be somehow set up
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`only for a momentary connection to an online information source and then disconnected. Apple’s
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`proffered understanding of the claimed function is simply inconsistent with how the web worked in
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`1996. Ex. 18 at ¶ 11. As Apple points out, at the time of the invention, even a first year computer
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`science student would understand that a modem provided a telephone connection to the Internet for
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`facilitating, i.e., “establishing,” requests and responses to web pages. But a modem does not function
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`alone to perform the connection, and OpenTV does not argue that the modem alone established the
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`connection. Rather, the specification indicates that the modem works together with associated
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`hardware and software, “automatically establishing” the connection as claimed. See, e.g., Ex. 1 at
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`6:59-65, 8:60-65, 8:53-57. Indeed, it was well known to use a structure such as the disclosed modem
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`54 with usual hardware and software to provide the “automatically establishing” functionality
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`claimed in claim 9. Ex. 18 at ¶ 11.
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`Accordingly, the Court should find that the patent discloses sufficient structure
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`corresponding to the claimed “means” function as OpenTV proposes.
`III. THE ’169 PATENT
`“directive” [Claims 1, 2, 22, 23]
`A.
`Apple argues that “directives” should not be limited to declarations “formed using a
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`computer language (e.g., HTML, Javascript, CSS, etc.) . . .” because directives “may include other
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`languages.” Dkt. No. 82 at 11-12. But OpenTV’s proposed construction specifically contemplates
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`other languages because HTML, Javascript, and CSS are listed only as potential examples with an
`“etc.” in the proposed construction.3
`As explained in OpenTV’s opening claim construction brief, the specification makes clear
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`that directives are formed using a computer language and could not be unbounded so as to include
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`the simple “human” commands that Apple’s proposal would allow. Dkt. No. 81 at 10-12. In Apple’s
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`3 Curiously, in support of its proposed construction of “imprint of data” in the ’740 patent,
`Apple takes a contrary approach and lists examples of the claimed imprint, arguing the examples are
`“helpful to the jury.” See Dkt. No. 82 at 23.
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 11 of 19
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`brief, Apple points to the use of “declarations or instructions across diverse implementations
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`including television, video cassette recorder (VCR), video game console, mobile/cell phone,
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`banking, e-mail, video-on-demand, and electronic program guide (EPG).” Dkt. No. 82 at 11 (citing
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`Ex. 2 at 3:5-16, 6:58-7:12). Each of these examples would use a “declaration or instruction” that was
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`formed using a computer language, consistent with OpenTV’s proposed construction. Ex. 18 at ¶ 14.
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`Contrary to Apple’s suggestion, it is not possible to provide a “directive” in the form of a non-
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`computer-language instruction to a cell phone’s processor requiring it to begin a presentation, such
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`as by instructing it to “please begin the presentation.” Declarations for all of the systems that Apple
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`identifies in its brief are formed using computer languages to create or manipulate resources and
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`content needed for a presentation. Id. Each is a computer system and accordingly requires computer-
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`language instructions to perform tasks. Apple’s unbounded construction should be rejected.
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`Apple also argues that a POSA “would not understand directives utilized with live broadcasts
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`to be limited to ‘computer languages.’” Dkt. No. 82 at 11. Apple and its expert provide no support
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`for such a position. There is nothing unique about a “live broadcast” that would require forming the
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`directives in ways other than using a “computer language.” Ex. 18 at ¶ 16. And the patent itself
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`points out that directives “may [be] utilized with digitally recorded programs as well as with live
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`broadcasts.” Ex. 2 at 3:36-38. In the context of the ’169 patent, directives are declarations or
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`statements written in a computer language addressed to a computer system (see Ex. 2 at 4:31-35,
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`47:2-10), not in a plain-English potentially human-spoken form like Apple’s proposed construction
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`implies. Apple is correct that the directives do not need to be written in the specific computer
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`languages provided in the specification, i.e., HTML, Javascript, and CSS, but they do need to be
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`written in a computer languages. OpenTV agrees that the specification “contemplates other
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`embodiments,” but nothing in the specification would lead a POSA to understand that a directive
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`could include directives other than those formed with a computer language. The specification
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`regularly uses pseudocode to describe exemplary embodiments (see, e.g., Ex. 2 at 21:25-32, 22:1-5,
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`26:52-53), and makes numerous references to computer languages. Dkt. No. 81 at 10-12; see also
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`Ex. 2 at 2:33-35, 4:31-35, 47:2-10. The ’169 patent does not list every known computer language
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`because it does not need to. While the specification contemplates directives in any and all computer
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 12 of 19
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`languages, it does not contemplate directives in human language, as Apple suggests. Accordingly,
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`this Court should adopt OpenTV’s proposed construction.
`B.
`Apple argues that a “prerequisite directive” is indefinite because it is indistinguishable from a
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`“prerequisite directive” [Claims 1, 2, 22, 23]
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`directive. But, in doing so Apple (1) imposes a special “format” requirement that does not exist in
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`the claims or the specification and (2) asserts an alleged inconsistency between the independent and
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`dependent claims, which ignores the clear explanation of the “timeout” functionality in the
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`specification.
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`First, Apple states that “neither the claims nor the specification limit ‘prerequisite directive’
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`to a particular format.” Dkt. No. 82 at 13. But this does not mean that a “directive” is the same thing
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`as a “prerequisite directive.” Rather, the prerequisite directive is any directive that specifies a
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`particular subset of resources, as OpenTV proposes. Ex. 2 at 21:8-20, 26:47-56. Apple’s focus on the
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`“format” of the directive is irrelevant. Indeed, the format would change based on whether the
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`“directive” was formed in HTML, CSS, Javascript, or some other computer language. Ex. 18 at ¶ 19.
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`It is not the case, as Apple argues, that a POSA must be able to distinguish a prerequisite directive
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`from a different directive “based on its format.” Rather, prerequisite directives are distinguishable
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`from directives based on how and why they are used, irrespective of their “format.” Ex. 2 at 21:8-20,
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`26:47-56. Prerequisite directives indicate that a subset of resources is a prerequisite for initiating a
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`presentation. Id. By contrast, directives can include declarations or other statements formed using a
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`computer language that are used for broader purposes. See, e.g., id. at 2:33-57, 19:18-21:3.
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`Directives could indicate a full list of all resources associated with a presentation, but could also
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`provide more context for how to use those resources, such as indicating the position of those
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`resources, or simply indicating other resources that are not required to initiate the presentation. Id.
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`There is no merit to Apple’s position that prerequisite directives are indistinguishable from
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`directives.
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`Second, Apple argues that the function of the prerequisite directive in claim 23 differs from
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`its function in claims 1, 13, and 22, allegedly rendering those claims indefinite. Apple’s argument,
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`however, ignores the express language of claim 23, which nullifies that argument. Claim 23 states
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
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`Case 5:15-cv-02008-EJD Document 87 Filed 04/19/16 Page 13 of 19
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`that the prerequisite directive “indicates that acquisition of a subset of said set of resources is a
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`prerequisite for the presentation” (the part Apple quotes), as opposed to other claims which refer to
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`“initiating the presentation.” Yet, Apple ignores the final element of claim 23 requiring the system to
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`“prohibit the presenting of said presentation until said subset of resources are acquired,” i.e., the
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`subset of resources indicated by the prerequisite directive. Apple also mysteriously contends that
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`because the resources indicated in claim 23 are a prerequisite for the presentation, this is somehow
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`inconsistent with the use in claims 1, 13, and 22 where they are a prerequisite for initiati