Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 1 of 19 PageID #: 4194
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-LPS
`
`C.A. No. 13-920-LPS
`
`))))))))))
`
`))))))))))
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`OATH HOLDINGS INC. and
`OATH INC.,
`
`Defendants.
`
`DEFENDANTS GOOGLE LLC’S, OATH HOLDINGS INC.’S AND
`OATH INC.’S RESPONSIVE CLAIM CONSTRUCTION BRIEF REGARDING
`CLAIM TERMS PARTICULAR TO US PATENT NO. 7,496,854
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CARROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801s
`(302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`
`Attorneys for Defendant Google LLC
`
`Jack B. Blumenfeld (#1014)
`Anthony Raucci (#5948)
`MORRIS, NICHOLS,
`ARSHT & TUNNEL LLP
`1201 North Market Street
`Wilmington, DE 19801
`(302) 658-9200
`jblumenfeld@mnat.com
`araucci@mnat.com
`
`Attorneys for Defendants
`Oath Holdings Inc. and Oath Inc.
`
`Dated: July 17, 2019
`6312701
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 2 of 19 PageID #: 4195
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`B.
`
`C.
`
`Page
`INTRODUCTION ............................................................................................................. 1
`A.
`The Law of Indefiniteness ..................................................................................... 1
`B.
`Arendi’s Improper Reliance on Unchallenged Means-Plus-Function Terms ........ 3
`CLAIM TERMS IN DISPUTE .......................................................................................... 4
`A.
`“means for marking without user intervention the first information to alert
`the user that the first information can be utilized in the second application
`program” (‘854 Patent, claims 13 and 31) ............................................................. 4
`“means for identifying without user intervention or designation the first
`information” (‘854 Patent, claims 13, 31, 50, 79) ................................................. 4
`“[means/computer-readable medium . . . including program instructions]
`for using a first computer program to analyze the document, without
`direction from the operator, to identify text in the document that can be
`used to search for related information” (‘854 Patent, claims 98 and 101) ............ 4
`“means for initializing the second application program” (‘854 Patent,
`Claim 15) ............................................................................................................... 7
`“means/computer-readable medium. . . for inserting/adding” (‘854 Patent,
`Claims 13, 50, 53, 98, 101) .................................................................................... 9
`“means for responding. . . by performing an operation related to a second
`operation” (‘854 Patent, Claims 31 and 79)......................................................... 12
`“first application program” (‘854 Patent, Claims 13, 31, 50, 79) ........................ 13
`“second application program” (‘854 Patent, Claims 13, 31, 50, 79) ................... 13
`
`D.
`
`E.
`
`i
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 3 of 19 PageID #: 4196
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`Atmel Corp. v. Info. Storage Devices, Inc.,
`198 F.3d 1374 (Fed. Cir. 1999)..................................................................................................1
`
`Blackboard, Inc. v. Desire2Learn,
`574 F.3d 1371 (Fed. Cir. 2009)..............................................................................................1, 8
`
`EON Corp. IP Holdings LLC v. AT&T Mobility LLC,
`785 F.3d 616 (Fed. Cir. 2015)....................................................................................................2
`
`GPNE Corp. v. Apple Inc.,
`830 F.3d 1365 (Fed. Cir. 2006)................................................................................................15
`
`Johns Hopkins Univ. v. CellPro, Inc.,
`152 F.3d 1342 (Fed. Cir. 1998)................................................................................................15
`
`Noah Sys. Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012)........................................................................................1, 3, 12
`
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005)................................................................................................15
`
`O.I. Corp. v. Tekmar Co., Inc.,
`115 F.3d 1576 (Fed. Cir. 1997)................................................................................................10
`
`One-E-Way, Inc. v. Int’l Trade Comm’n,
`859 F.3d 1059 (Fed. Cir. 2017)................................................................................................11
`
`Ruckus Wireless, Inc. v. Innovative Wireless Sols. LLC,
`824 F.3d 999 (Fed. Cir. 2016)..................................................................................................15
`
`Techno View IP, Inc. v. Facebook Tech., LLC,
`C.A. No. 17-386, 2018 WL 6427874 (D. Del. Dec. 7, 2018) ..................................................11
`
`TecSec, Inc. v. IBM Corp.,
`731 F.3d 1336 (Fed. Cir. 2013)..............................................................................................7, 9
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)................................................................................................10
`
`Statutes
`
`35 U.S.C. § 112 ......................................................................................................................2, 3, 10
`
`ii
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 4 of 19 PageID #: 4197
`
`Defendants Google LLC (“Google”), Oath Holdings Inc., and Oath Inc. (together “Oath”)
`
`file this brief in response to Arendi’s Opening Claim Construction Brief Addressing U.S. Patent
`
`Nos. 7,496,854 (“‘854 Patent”) and 7,921,356 (“‘356 Patent”).1
`
`I.
`
`INTRODUCTION
`
`A.
`
`The Law of Indefiniteness
`
`The Federal Circuit has made clear that for a computer-related means-plus-function
`
`limitation, the knowledge or skill-set of a person of ordinary skill in the art does not, and cannot,
`
`compensate for a patent specification’s failure explicitly to include and describe an algorithm for
`
`programming a computer to accomplish the specified function. See Blackboard, Inc. v.
`
`Desire2Learn, 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“A patentee cannot avoid providing
`
`specificity as to structure simply because someone of ordinary skill in the art would be able to
`
`devise a means to perform the claimed function.”); Atmel Corp. v. Info. Storage Devices, Inc., 198
`
`F.3d 1374, 1380 (Fed. Cir. 1999) (“[C]onsideration of the understanding of one skilled in the art
`
`in no way relieves the patentee of adequately disclosing sufficient structure in the specification.”)
`
`As a matter of law, merely reciting the claimed function (or desired result) in a claim and in the
`
`specification (e.g., analyze document text to identify contact information without user
`
`intervention) does not suffice as the disclosure of an algorithm, which, by definition, must contain
`
`a sequence of explicitly defined steps. See Blackboard, 574 F.3d at 1384 (finding patent disclosure
`
`insufficient as it described only outcome of the function to be performed, but not means for
`
`achieving that outcome); Noah Sys. Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012)
`
`1 Because the lone, disputed ‘356 claim term – “providing an input device configured by the
`document editing program” (’356 Patent, claims 1, 12) – is virtually identical to the ‘843 claim
`term – “providing an input device configured by the first computer program” (’843 Patent, claims
`1, 23) – Google and Oath address these terms together in Defendants’ responsive brief regarding
`the ‘843 and ‘993 Patents.
`
`1
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 5 of 19 PageID #: 4198
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`(rejecting argument that undisclosed algorithm was “in the common ken” of a skilled artisan).
`
`In direct contravention of the Federal Circuit’s clear mandate, Arendi does not point to any
`
`explicitly disclosed algorithms in the specification of U.S. Patent No. 7,496,854 (“the ‘854
`
`Patent”), but, instead, argues repeatedly that a person of ordinary skill in the art (“POSITA”) would
`
`understand the scope of the challenged means-plus-function terms of the ‘854 Patent, or be capable
`
`of devising a necessary algorithm using their technical knowledge. (See, e.g., “[a] person of
`
`ordinary skill would just as readily understand the scope of this claim term as she would ‘means
`
`for searching.’” D.I. 119 at 5; “‘[i]nserting information into an electronic document, based on user
`
`selection or otherwise, is a basic form of data transfer that a person of ordinary skill in the art
`
`would readily recognize and understand;” D.I. 119 at 10; “a person of ordinary skill in the art
`
`would understand how to employ rudimentary programming techniques to initialize the second
`
`application based on these inputs;” D.I. 119 at 13; “a person of ordinary skill in the art would
`
`appreciate the scope of ‘associated’ as provided by the claims.” D.I. 119 at 15.) Arendi’s analysis
`
`thus improperly “conflates the definiteness requirement of section 112, paragraphs 2 and 6, and
`
`the enablement requirement of section 112, paragraph 1.” EON Corp. IP Holdings LLC v. AT&T
`
`Mobility LLC, 785 F.3d 616, 624 (Fed. Cir. 2015), quoting Blackboard, 574 F.3d at 1385.
`
`Unlike the enablement requirement (which focuses on whether a POSITA can make and
`
`use a claimed invention), a section 112 ¶ 6 disclosure serves the very different purpose of limiting
`
`a claim’s scope to the particular structure and/or algorithm explicitly disclosed in the patent
`
`specification, together with its equivalents. EON, 521 F.3d at 1336 (“[t]he question before us is
`
`whether the specification contains a sufficiently precise description of the ‘corresponding
`
`structure’ to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise
`
`some means to carry out the recited function.”) By repeatedly resorting to a POSITA’s knowledge
`
`2
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 6 of 19 PageID #: 4199
`
`to defend the sufficiency the challenged claim terms, Arendi attempts to divert the Court from
`
`determining, as it must, whether the specification explicitly discloses the series of steps required
`
`to program a general purpose computer (such as that shown and described in the ‘854 Patent’s Fig.
`
`16) to accomplish the recited functions. Instead, Arendi improperly invites the Court to conduct
`
`an enablement inquiry that is irrelevant to the current inquiry regarding section 112 ¶ 6. Of course,
`
`Arendi attempts this diversion and fails to point to explicit algorithm disclosures (i.e., explicit
`
`defined steps to be followed to achieve the desired functions/results) because such algorithm
`
`disclosures are completely absent from the ‘854 Patent specification.
`
`B.
`
`Arendi’s Improper Reliance on Unchallenged Means-Plus-Function Terms
`
`In order to decrease the burden on the Court and on the parties, during the claim
`
`construction meet-and-confer process, Google and Oath agreed to Arendi’s proposed constructions
`
`of certain of the ‘854 Patent’s means-plus-function elements. In making an agreement on these
`
`elements to reduce the number of claim terms requiring briefing and presentation to the Court,
`
`Google and Oath did not intend to, and did not, concede that the elements were properly supported
`
`by explicitly disclosed algorithms. Yet, Arendi now attempts to penalize Google and Oath for
`
`their agreements (and to mischaracterize the reasons for those agreements) by arguing that if a
`
`POSITA can understand the elements that Google and Oath did not challenge, then a POSITA
`
`could just as readily understand the scope of the claim terms challenged by Google and Oath.
`
`D.I 119 at 6-7. Setting aside the impropriety of Arendi’s effort to misuse Google’s and Oath’s
`
`good faith meet-and-confer efforts, the mere fact that one means-plus-function claim element
`
`might be sufficiently supported does not suggest, let alone compel a conclusion, that a different
`
`means-plus-function element is supported properly. See Noah, 675 F.3d at 1319 (“[w]e cannot
`
`allow disclosure as to one function to fill the gaps in a specification as to a different, albeit related,
`
`function. To hold otherwise would allow a patentee to employ generic functional claiming
`
`3
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 7 of 19 PageID #: 4200
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`unbounded by any reference to structure in the specification.”). Ultimately, Google’s and Oath’s
`
`decision not to challenge the “means for searching” elements as indefinite has no bearing on the
`
`indefiniteness analysis of the challenged claim terms.
`
`II.
`
`CLAIM TERMS IN DISPUTE
`
`A.
`
`“means for marking without user intervention the first information to alert
`the user that the first information can be utilized in the second application
`program” (‘854 Patent, claims 13 and 31)
`“means for identifying without user intervention or designation the first
`information” (‘854 Patent, claims 13, 31, 50, 79)
`“[means/computer-readable medium . . . including program instructions] for
`using a first computer program to analyze the document, without direction
`from the operator, to identify text in the document that can be used to search
`for related information” (‘854 Patent, claims 98 and 101)
`
`Defendants’
`Proposal
`Indefinite
`
`Arendi’s Present Proposal
`
`Function: marking without user intervention the first information to alert
`the user that the first information can be utilized in the second application
`program
`identifying without user intervention or designation the first information
`[means for/computer readable medium … including program instructions
`for] for using a first computer program to analyze the document, without
`direction from the operator, to identify text in the document that can be
`used to search for related information
`Structure: programming and logic configured to perform the algorithms
`disclosed at Col. 3 ll. 48-54, Col. 4 ll. 32-49, and Col. 10 ll. 17-22 or its
`equivalent”
`
`In its Opening Brief regarding these elements (D.I. 119 at 7), Arendi omitted many of the
`
`citations to the specification that it originally included in the Joint Claim Construction Chart (D.I.
`
`107 at 17, 18, 20, 21). This is not surprising given that, as explained in Google and Oath’s Opening
`
`Brief, none of those cited portions of the specification disclose an algorithm for accomplishing the
`
`claimed “marking” and “identifying” functions. D.I. 117 at 5-9.
`
`4
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 8 of 19 PageID #: 4201
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`Arendi argues that as a preliminary step to “marking” and “identifying,” the specification
`
`describes “analyzing a document containing text to determine whether it contains types of
`
`information that can be searched.” D.I. 119 at 7.2 Arendi points to the following paragraph:
`
`A program then executes and retrieves the typed information from the document, and
`searches an information management source, such as a database, file, database program,
`contact management program, etc. (hereinafter called “database”) to determine if the
`information, such as the name or part of the name typed and searched by the program exists
`in the database.
`
`D.I. 119 at 7-8 (citing ‘854 Patent, Ex. 3 at 3:48-543.) But this specification passage does not
`
`actually disclose an algorithm (i.e., a series of steps to be executed by a general purpose computer)
`
`to accomplish the analysis of text in a document to find specific types of information. Instead, it
`
`only describes what happens after analysis of the document has already occurred, namely, retrieval
`
`of analyzed information so that the information can be used to search the contact database.
`
`Arendi next cites to the only part of the ‘854 specification that uses the word “analyzing”
`
`as supposedly “explain[ing] what the computer program does, i.e., identifying first information,
`
`and how it does it, i.e., analyzing formatting, designators, abbreviations, and common names”:
`
`The program analyzes what the user has typed in the document at step 4, for example, by
`analyzing (i) paragraph/line separations/formatting, etc.; (ii) street, avenue, drive, lane,
`boulevard, city, state, zip code, country designators and abbreviations, etc.; (iii) Mr. Mrs.
`Sir, Madam, Jr., Sr. designators and abbreviations, etc.; (iv) Inc., Ltd., P.C., L.L.C,
`designators and abbreviations, etc.; and (v) a database of common male/female names, etc.
`
`D.I. 119 at 8 (citing Ex. 3 at 4:25-39). While this passage identifies some kinds of information that
`
`might be used as part of “analyzing,” the passage (and the specification as a whole) describes no
`
`specific steps that can be executed on a general purpose computer to accomplish the analysis—no
`
`steps that define how a computer can and should recognize particular bits as text; no steps that
`
`2 Arendi makes this argument notwithstanding that in the claims at issue, the phrase “to analyze
`the document” appears only in claims 98 and 101.
`3 Exhibits 1-7 refer to exhibits filed in connection with the Parties’ Opening Claim Construction
`Briefs, D.I. 117 & D.I 119. Exhibit No. 8 accompanies this brief
`
`5
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 9 of 19 PageID #: 4202
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`define how a computer can and should recognize specific text as any of the exemplary information
`
`types mentioned; no steps that define how a computer can and should determine how to treat or
`
`handle particular information types if they are detected; and no steps that define how any of the
`
`foregoing can be done “without direction from the operator.” In short, this passage does nothing
`
`more than say, “[t]he program analyzes what the user has typed”, without providing any explicit
`
`guidance as to how this analysis should be accomplished on a general purpose computer. As
`
`Google and Oath explained in their Opening Brief, and as Dr. Fox confirmed, textual document
`
`analysis is no trivial matter and, therefore, a specific algorithm must explicitly be disclosed in the
`
`‘854 specification as a matter of law. D.I. 117 at 8, Ex. 7A, ¶¶ 40-42. The specification’s mere
`
`reference to information types that might be used in an undefined, desired process for analyzing
`
`and recognizing text in a document does not provide a sufficient, explicit algorithm.
`
`Turning to the common, recited functions of the means-plus-function elements—
`
`“marking” and/or “identifying” text “without user intervention”—Arendi does not even attempt to
`
`identify algorithms in the specification for executing these claimed functions. Realizing there are
`
`none, Arendi suggests that because the ‘854 specification refers at a high-level to marking and
`
`identifying text with user intervention (“e.g., by highlighting, selecting, italicizing, underlining,
`
`etc.”, Ex. 3 at 10:21), the specification somehow implicitly describes marking and identifying
`
`without user intervention. According to Arendi, “[i]f user selection through highlighting,
`
`italicizing, underlining, etc. qualify as user intervention, then ‘without user intervention’ and
`
`‘without direction from the operator’ mean no highlighting, no italicizing, no underlining, etc.”
`
`D.I. 119 at 18.4 Not only does Arendi fail to offer any support for its suggestion that disclosure-
`
`4 As a preliminary matter, Arendi’s argument does not even make sense: if the required “marking”
`or “identifying” of text is executed “through highlighting, italicizing, underlining, etc.”, as Arendi
`suggests, then having “no highlighting, no italicizing, no underlining, etc.” would mean that there
`
`6
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 10 of 19 PageID #: 4203
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`by-negative-implication is permissible and sufficient, but Arendi does not even attempt to point to
`
`any algorithm in the ‘854 specification for accomplishing the claimed “marking” or “identifying”
`
`of “first information” in a document without the user highlighting, italicizing or underlining
`
`specific text. In fact, the ‘854 Patent does not provide any instruction as to how a fully automated
`
`text identification and marking process can or should be executed, let alone a process that must,
`
`according to the means-plus-function claim elements, operate wholly “without user intervention”
`
`and “without direction from the operator.”
`
`Arendi improperly likens its situation to that of the patentee in TecSec, Inc. v. IBM Corp.,
`
`731 F.3d 1336 (Fed. Cir. 2013). D.I. 119 at 8. But, in that case, the Federal Circuit found that the
`
`specification disclosed “the specific software products and how to use those products to implement
`
`the claimed functions, which include ‘selecting an object to encrypt,’ ‘selecting an encryption
`
`algorithm,’ and ‘encrypting the object,’ among others.” Id. at 1349. Here, the ‘854 specification
`
`includes no language (and Arendi points to none) identifying specific software products that carry
`
`out the marking or identifying of specific document text without user identification, let alone
`
`language describing “how to use those products to implement the claimed functions.” Id.
`
`B.
`
`“means for initializing the second application program” (‘854 Patent,
`Claim 15)
`
`Defendants’
`Proposal
`Indefinite
`
`Arendi’s Present Proposal
`
`Function: initializing the second application program
`Structure: programming and logic configured to perform the algorithms
`disclosed at Col. 3 ll. 42-54, Col. 5 ll. 65-67, Col. 6 ll. 13-16, Col. 6 ll. 48-51,
`or its equivalent
`
`is none of the necessary, claimed marking or identifying. In other words, Arendi has a Catch-22,
`if the “without user intervention” element is supported by reference to the cited passage of the ‘854
`specification, then the “marking” and “identifying” elements are not supported, and vice versa.
`
`7
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 11 of 19 PageID #: 4204
`
`Again in its Opening Brief (D.I. 119 at 9), Arendi omitted many of the references to the
`
`specification that it included in the Joint Claim Construction Chart (D.I. 107 at 19) as alleged
`
`algorithm support for this means-plus-function element; and none of the more limited passages
`
`cited in Arendi’s Brief actually disclose an algorithm for initializing a second application.
`
`Arendi alleges that the specification is “rife with descriptions of what constitutes
`
`initializing, i.e., starting the second application.” D.I. 119 at 3. However, in support, Arendi
`
`discusses only a specification paragraph purporting to describe a user interface for starting the
`
`undescribed initializing process, not an algorithm for actually performing the “initializing” once a
`
`user “clicks” the “button” to start the undescribed process:
`
`Accordingly, in a word processor, the button is added and a user types information, such
`as an addressee’s name, or a part of the name, etc. in a document created with the word
`processor, such as a letter, fax, etc., and then clicks, selects, commands, etc. the button via
`the appropriate input device, such as a touch screen button, keyboard button, icon, menu
`choice, voice command device, etc. A program then executes and retrieves the typed
`information from the document, and searches an information management source, such as
`a database, file, database program, contact management program, etc. (hereinafter called
`“database”) to determine if the information, such as the name or part of the name typed and
`searched by the program exists in the database.
`
`D.I. 119 at 3 (citing Ex. 3 at 3:42-54 (emphasis by Arendi)). Arendi admits that this passage
`
`concerns only the interface for initializing, not the actual algorithm for implementing initialization;
`
`but asserts that “a person of ordinary skill in the art would understand how to employ rudimentary
`
`programming techniques to initialize the second application based on these inputs.” D.I. 119 at 3.
`
`Yet, the knowledge and understanding of a POSITA cannot compensate for a specification’s
`
`failure to disclose a necessary algorithm. Blackboard, 574 F.3d at 1385. By Arendi’s own
`
`admission, the passage cited includes no algorithm for initializing a second application.
`
`Once again, Arendi cites to TecSec for the proposition that it could not have provided a
`
`more detailed disclosure of an algorithm for initializing a second application because the ‘854
`
`Patent specification allegedly “contemplates the use of ‘device drivers,’ ‘scripts, interpreters,
`
`8
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 12 of 19 PageID #: 4205
`
`dynamic link libraries, Java classes’ and other ‘development tools’” rendering a disclosure of an
`
`algorithm unnecessary. D.I. 119 at 3. But, once again, TecSec does not help Arendi. There, the
`
`Federal Circuit found that the specification: (1) disclosed “how a user interacts with the software
`
`applications to cause them to select an object to encrypt, select a label for the object, select an
`
`encryption algorithm, encrypt the object, and label the encrypted object;” (2) provided three
`
`detailed examples of how a user interacts with the claimed software application to cause it to
`
`perform the recited functions of selecting and encrypting the object; and (3) explained how the
`
`software manages and tracks encrypted objects. TecSec, 731 F.3d at 1349. In contrast, the ‘854
`
`Patent’s discussion of the user interface for purportedly triggering the initialization of the second
`
`application program provides no explicit (or even implicit) description or examples of how the
`
`second application program is caused to actually perform its intended functions (i.e., “initialized”)
`
`once a user “clicks” a displayed “button.” Indeed, the ‘854 Patent provides no direction/algorithm
`
`of any kind as to how the user interface “button” in the first application program is, itself, created
`
`and programmed, and the ‘854 specification provides no guidance at all as to what approach should
`
`be taken to allow the “button,” once created, to initialize the second application program when it
`
`is virtually pressed. D.I. 117 at 9-10.
`
`C.
`
`“means/computer-readable medium. . . for inserting/adding” (‘854 Patent,
`Claims 13, 50, 53, 98, 101)
`
`Defendants’
`Proposal
`Indefinite
`
`Arendi’s Present Proposal
`
`Function: responding to a user selection by inserting a second information
`into the document, the second information associated with the first
`information from a second application5
`
`5 Claim 53 refers to “adding,” which the specification treats as a synonym for “inserting.” See,
`e.g., ‘854 Patent, 7:63-65 (emphasis added) (“[t]he user might then command the Add this address
`to the selected contact above button 92 and the result in the word processor is illustrated in FIG.
`
`9
`
`

`

`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 13 of 19 PageID #: 4206
`
`Structure: programming and logic configured to perform the algorithms
`disclosed at Col. 3 ll. 63-66, Col. 4 ll. 46-49, Col. 4 ll. 46-51, Col. 5:67 – Col.
`6 l. 4, Col. 7 ll. 5-6 and 11, Col. 7 ll. 48-49 or its equivalent
`
`Arendi now argues that claim 98 should not be construed as a means-plus-function claim.
`
`D.I. 119 at 9. But, Arendi agreed that claim 98 is based on means-plus-function elements when
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`Arendi filed the Joint Claim Construction Chart that unambiguously includes the elements of
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`claim 98 under the section called “Means-Plus Function Claim Elements in U.S. Patent No.
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`7,496,854.” D.I. 107 at 16, 20, 21. And Arendi, itself, identified functions and corresponding
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`structures for the recited elements of claim 98 in the Joint Claim Construction Chart. Id.
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`Irrespective of Arendi’s backtracking, claim 98 should be treated as a means-plus-function
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`term requiring disclosure in the specification of an algorithm corresponding to the claimed function
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`(as defined by Arendi). A claim does not need to recite the words “means for” for 35 U.S.C. § 112
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`¶ 6 to apply. If the claim recites a generic nonce word and the remaining claim language,
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`specification, prosecution history, and relevant external evidence provides no further structural
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`description to a POSITA, then the presumption against means-plus-function claiming is rebutted.
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`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). Here, claim 98 only
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`generically recites “a computer readable medium” for implementing the recited text-insertion
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`functionality, and employs nonce words (e.g., “using a [first/second] computer program”) without
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`providing any specific structure for implementing the recited function.
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`Arendi’s reliance on O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1583 (Fed. Cir. 1997)
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`is misplaced, as the claims there explicitly recited a method step: “[a] method for removing water
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`vapor. . .” In contrast, claim 98 recites no such method step. Further, as courts in this District have
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`acknowledged, the case law (including O.I. Corp.) concerning the applicability of means-plus-
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`4.”); Arendi recognizes that “adding” means “inserting” when it argues that the same specification
`passages support all of the identified means-plus-function elements. D.I. 119 at 12
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`10
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`

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`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 14 of 19 PageID #: 4207
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`function analysis to method claims is unclear, with a number of courts “clearly appl[ying] means-
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`plus-function analysis to elements found in method claims.” Techno View IP, Inc. v. Facebook
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`Tech., LLC, C.A. No. 17-386, 2018 WL 6427874, at *2 (D. Del. Dec. 7, 2018). Given its specific
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`wording and its lack of reference to any described structure, claim 98 should be treated as a means-
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`plus-function claim, just as Arendi, itself, agreed in the Joint Claim Construction Chart.
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`As to all the identified “inserting/adding” means-plus function elements, confronted with
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`a specification that fails to disclose an algorithm for the admitted function of “responding to a user
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`selection by inserting a second information into the document, the second information associated
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`with the first information from a second application,” Arendi argues that a POSITA would
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`understand the relative meaning of the claim element. As already noted, however, a POSITA’s
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`knowledge cannot remedy the specification’s failure explicitly to disclose the necessary text-
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`inserting/adding algorithm. See supra at 2-3. Furthermore, Arendi’s reliance on One-E-Way, Inc.
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`v. Int’l Trade Comm’n, 859 F.3d 1059, 1066 (Fed. Cir. 2017) is misplaced. That case did not
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`concern the presence or absence of a necessary algorithm corresponding to recited functionality in
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`a means-plus-function term; rather, it questioned whether the terms “free from interference” and
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`“virtually free from interference” have a meaning relative to each other and, if not, whether that
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`would cause the terms to be indefinite. Id. In the present case, the Court is not being asked to
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`determine what the claim elements mean relative to other claim elements, but, instead, is being
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`asked to answer the simpler question of whether or not the ‘854 specification explicitly discloses
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`the algorithm to accomplish the claimed text-inserting/adding function.
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`None of Arendi’s citations to the ‘854 specification describe an algorithm for inserting
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`information into a document. Arendi asserts, “[t]he specification states that in response to finding
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`‘name(s) and address(es) corresponding to the part of the addressee’s name typed, this additional
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`11
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`Case 1:13-cv-00919-LPS Document 127 Filed 07/17/19 Page 15 of 19 PageID #: 4208
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`information is automatically entered into the user’s word processor ….’” D.I. 119 at 10 (citing Ex.
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`3 at 3:63-66). This statement provides only that information is entered into a document, but it does
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`not explain or direct how to accomplish the information entry. Arendi further asserts that the ‘854
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`specification provides several examples of user interface windows that allow a user to select a
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`command to insert information into a document. D.I. 119 at 10-11 (citing Ex. 3 at 4:46-51; 5:67;
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`6:4; 7:5-6, 11; 7:48-49). Once again, these examples do not instruct how text-insertion can and
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`should occur; rather, they indicate only how a user can start the undescribed text-insertion process.
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`As Dr. Fox explained, inserting information program