Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 1 of 19 PageID #: 4975
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 13-919-LPS
`
`C.A. No. 13-920-LPS
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`))))))))
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`
`
`ARENDI S.A.R.L.,
`Plaintiff,
`
`
`v.
`
`GOOGLE LLC,
`Defendant.
`
`ARENDI S.A.R.L.,
`Plaintiff,
`
`
`v.
`
`OATH HOLDINGS INC., and
`OATH INC.,
`
`Defendants.
`
`
`PLAINTIFF’S ANSWERING CLAIM CONSTRUCTION BRIEF
`ADDRESSING U.S. PATENT NUMBER 7,496,854
`
`
`SMITH, KATZENSTEIN & JENKINS LLP
`
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`Beth A. Swadley (No. 6331)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`Tel: (302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
`bswadley@skjlaw.com
`
`Attorneys for Plaintiff Arendi S.A.R.L.
`
`Of Counsel:
`
`Stephen Susman
`Seth Ard
`Max Straus
`SUSMAN GODFREY, LLP
`1301 Avenue of the Americas, 32nd Floor
`New York, New York 10019
`Tel: (212) 336-8330
`ssusman@susmangodfrey.com
`sard@susmangodfrey.com
`mstraus@susmangodfrey.com
`
`John Lahad
`SUSMAN GODFREY, LLP
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002-5096
`Tel: (713) 651-9366
`jlahad@susmangodfrey.com
`
`Dated: July 17, 2019
`
`
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`

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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 2 of 19 PageID #: 4976
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`TABLE OF AUTHORITIES
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`Cases
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` Page(s)
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`Akamai Technologies, Inc. v. Limelight Networks, Inc.,
`805 F.3d 1368 (Fed. Cir. 2015)..........................................................................................12, 13
`
`AllVoice Computing PLC v. Nuance Comm’cns, Inc.,
`504 F.3d 1236 (Fed. Cir. 2007)..............................................................................................7, 9
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)............................................................................................7, 10
`
`GE Lighting Solutions, LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014)................................................................................................13
`
`Hill-Rom Services, Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)................................................................................................12
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`Howmedica Osteonics Corp. v. Wright Medical Tech. Inc.,
`540 F.3d 1337 (Fed. Cir. 2008)................................................................................................13
`
`In re Dossel,
`115 F.3d 942 (Fed. Cir. 1997)..............................................................................................7, 10
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`Microwave Vision, S.A. v. ETS-Lindgren Inc.,
`209 F. Supp. 3d 1322 (N.D. Ga. 2016) ......................................................................................2
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ...............................................................................................................9
`
`Penda Corp. v. U.S.,
`44 F.3d 967 (Fed. Cir. 1994)......................................................................................................2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................................2, 15
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`SkyHawke Techs. LLC v. Deca Int’l Corp.,
`828 F.3d 1373 (Fed. Cir. 2016)..................................................................................................2
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`St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp.,
`749 F.3d 1373 (Fed. Cir. 2014)..................................................................................................2
`
`TecSec, Inc. v. IBM Corp.,
`731 F.3d 1336 (Fed. Cir. 2013)................................................................................................11
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.,
`659 F.3d 1376 (Fed. Cir. 2011)..............................................................................................7, 9
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 3 of 19 PageID #: 4977
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`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)..........................................................................................12, 13
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`Statutes
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`35 U.S.C. § 314(d) ...........................................................................................................................2
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`35 U.S.C. § 316(e) ...........................................................................................................................2
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`Regulations
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`37 C.F.R. § 42.100(b) ......................................................................................................................1
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`37 C.F.R. § 42.104(b)(3) & (4) ........................................................................................................1
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`83 Fed. Reg. 51340 (Oct. 11, 2018) .................................................................................................2
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`

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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 4 of 19 PageID #: 4978
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`In accordance with the Amended Scheduling Order and the Joint Stipulation Regarding
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`Claim Construction Briefing, Plaintiff Arendi S.A.R.L. (“Arendi”) submits this Responsive Claim
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`Construction Brief regarding disputed claim terms in U.S. Patent No. 7,496,854 (“the ’854
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`patent”). Arendi’s Opening Brief on these terms also included argument on terms from U.S. Patent
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`No. 7,921,356 (“the ’356 patent”). Google, Oath, and the other Defendants addressed the ’356
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`patent terms in their Opening Claim Construction Brief Regarding Claim Terms Appearing in U.S.
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`Patent Nos. 7,917,843 and 8,306,993 (“the ’843 and ’993 patents”). Accordingly, Arendi’s
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`responses as to the ’356 patent terms are incorporated into its Responsive Brief regarding the ’843
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`and ’993 patent terms.
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`I.
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`INTRODUCTION
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`Defendants cannot meet their burden to prove indefiniteness by clear and convincing
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`evidence. Defendants fully disregard express descriptions of functionality in the specification and
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`tap an expert to manufacture ambiguity where none exists. Defendants’ expert shrugs his shoulders
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`and disclaims the ability to program even the most straight-forward functions and attempts to sow
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`confusion by raising concerns unrelated to the claims or the invention. His opinions deserve no
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`weight.
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`II.
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`THE CLAIMS ARE NOT INDEFINITE
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`The PTAB’s Findings Are Not Dispositive
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`A.
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`Defendants argue that the Court should find the disputed terms from the ’854 patent
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`indefinite because the PTAB found a lack of sufficient disclosure. Defs’ Opening Br. at 3. The
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`PTAB’s conclusion is neither preclusive nor dispositive, and this Court should give zero weight to
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`the PTAB’s findings.
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`As a threshold issue, the PTAB and this Court are not faced with the same question. The
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`PTAB must determine whether the petitioner presented evidence establishing unpatentability over
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 5 of 19 PageID #: 4979
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`the prior art, including the necessary claim constructions. See 37 C.F.R. §42.104(b)(3) & (4). By
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`contrast, the issue before this Court is whether Defendants have proven the claims to be indefinite.
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`Even if overlap in the questions existed, the relevant standards and burdens of proof differ.
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`At the time, the PTAB applied the broadest reasonable interpretation standard under 37 C.F.R.
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`§42.100(b) for claim construction.1 A district court applies the claim construction standards set
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`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). And while a petitioner before the
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`PTAB has the burden to prove unpatentability by a preponderance of the evidence under 35 U.S.C.
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`§316(e), Defendants must prove indefiniteness by clear and convincing evidence. See SkyHawke
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`Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016) (“Because the Board applies
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`the broadest reasonable construction of the claims while the district courts apply a different
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`standard of claim construction as explored in [Phillips], the issue of claim construction under
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`Phillips to be determined by the district court has not been actually litigated.”).
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`Further, the PTAB’s decision has no preclusive effect because it is not appealable. See 35
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`U.S.C. §314(d) (“The determination by the Director whether to institute an inter partes review
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`under this section shall be final and nonappealable.”). “It is axiomatic that a judgment is without
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`preclusive effect against a party which lacks a right to appeal that judgment.” Penda Corp. v.
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`United States, 44 F.3d 967, 973 (Fed. Cir. 1994); see also St. Jude Med., Cardiology Div., Inc. v.
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`Volcano Corp., 749 F.3d 1373, 1374 (Fed. Cir. 2014) (noting that “the statutory provisions
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`addressing inter partes review contain no authorization to appeal a non-institution decision to this
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`court”).
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`1 The PTAB changed its post-grant review claim construction standard in November 2018, several
`years after the ’854 patent’s IPR concluded, replacing the “broadest reasonable interpretation”
`with the Federal Circuit’s Phillips approach. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the PTAB, 83 Fed. Reg. 51340 (Oct. 11, 2018).
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 6 of 19 PageID #: 4980
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`Accordingly, this Court must (and should) conduct an independent analysis without
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`deferring to the PTAB, and it should find that Defendants have not proven the claims indefinite.
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`See Microwave Vision, S.A. v. ETS-Lindgren Inc., 209 F. Supp. 3d 1322, 1332 (N.D. Ga. 2016)
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`(“At bottom, and regardless of whether the analysis is framed in patentability or indefiniteness
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`terms, the PTAB and this Court simply disagree that the 170 Patent fails to ‘clearly associate’ the
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`structures in Figures 1 and 2 with the ‘both’ pivot function”).
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`B.
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`Disputed Terms
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`
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`1. “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”
`(cl. 13, 31)
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`2. “means for identifying without user intervention or designation the first
`information” (cl. 50, 79)
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`3. “[means for/computer readable medium … including program instructions for
`performing the steps of] 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” (cl. 98, 101)
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`Defendants argue that these terms are indefinite because the specification passages cited
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`by Arendi “simply do not explicitly disclose the steps, processes or actions … to perform the
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`claimed marking, identifying, or analyzing functions, particularly without user involvement.”
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`Defs’ Opening Br. at 6. Defendants are simply wrong. As discussed in Arendi’s Opening Brief at
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`7-8, the specification describes the analysis that the computer can perform to identify first
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`information:
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`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, is [sic] 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.
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 7 of 19 PageID #: 4981
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`Ex. 3 at Col. 4 ll. 32-39. Defendants argue that this passage amounts to nothing more than “an
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`unspecified analyzing process.” Defs’ Opening Br. at 8. Defendants do not explain what additional
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`specificity is required. The specification teaches a person of ordinary skill in the art what to look
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`for and how to find the claimed first information, i.e., by searching for and identifying/marking
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`text based on the designators, formatting, abbreviations, and common names. Contrary to
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`Defendants’ argument, this passage provides more than sufficient specificity. See Ex. 5F, Levy
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`Decl., at ¶¶27-29.
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`
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`Defendants argue that these instructions are not enough because “the passages provide no
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`guidance or instruction whatsoever as to how the general purpose computer of Figure 16 actually
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`analyzes, identifies, and/or distinguishes between the information types described.” Defs’ Opening
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`Br. at 8 (emphasis in original). This is a strawman; “distinguish[ing] between the information types
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`described” is not part of the asserted claims. Claim 79, for example, states:
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`79. A computer system related to information handling within a document operated
`on by a first application program, the document containing first information that
`can be utilized in a second application program, comprising:
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`means for identifying without user intervention or designation the first information;
`and
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`means for responding to a user selection by performing an operation related to a
`second information, the second information associated with the first information
`from the second application program.
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`Ex. 3 at Col. 16 ll. 10-19. Claim 101 similarly states:
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`101. A system for assisting a computer operator to retrieve information from a
`database that is related to text in a document, the system comprising:
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`(1) means 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,
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`(2) means for using a second computer program and the text identified in (1) to
`search the database and to locate related information, and
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 8 of 19 PageID #: 4982
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`(3) means for inserting the information located in (2) into the document.
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`The “means for identifying” element in each claim does not require that the system differentiate
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`between types of information, and neither do the remaining claims. The asserted claims of the ’854
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`patent do not even mention the word “type,” let alone require that the means for distinguishing
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`between categories of information such as names, addresses, and phone numbers. The asserted
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`claims, like claim 79, only require a means for identifying or marking text as possible “first
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`information,” and the specification provides an algorithm for doing so, i.e., analyzing the text for
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`(i) paragraph/line separations/formatting, (ii) words like “street,” “avenue,” “drive,” “lane,”
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`“boulevard,” (iii) names and abbreviations of cities, states, and countries, and (iv) common
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`prefixes, suffixes, and names. Defendants cannot claim indefiniteness based on a made-up
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`requirement that is not in the claims. 2 Ex. 5F, Levy Decl. at ¶30.
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`
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`Defendants’ expert, Dr. Fox, offers nothing more than conclusory testimony, and even that
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`testimony makes no sense. Directly after quoting the passage that sets forth the algorithm for
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`identifying the first information, Dr. Fox baldly states that it “does not explain how that
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`information is analyzed.” Fox. Decl. at ¶41. Of course, it does. It tells a person of ordinary skill in
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`the art precisely what to look for to find first information: telltale designators, formatting,
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`abbreviations, names, etc. Ex. 5F, Levy Decl. at ¶31. And Defendants and their expert do not
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`complain that the specification fails to teach how to search for such first information identifiers. If
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`Defendants and their expert understand searching, then they certainly must understand the analysis
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`disclosed in the specification. Dr. Fox adds that the passage “provides no explanation of how the
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`process of analyzing distinguishes one kind of data from another, e.g., how a name is distinguished
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`2 Even if the claims required differentiating between types of first information—which they do
`not—the specification’s disclosures provide guidance to a person of ordinary skill. A name can be
`distinguished from an address based on formatting or the presence/absence of a zip code. Likewise,
`a phone number differs from a name or email address in content and structure. Ex. 5F at ¶29.
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 9 of 19 PageID #: 4983
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`from an address.” Id. Dr. Fox also complains that the passage does not explain the number of steps
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`necessary or the order. Again, the claims do not require distinguishing name from address, and the
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`claims do not require a specific number or order of steps. Id. Incredibly, Dr. Fox also complains
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`that the passage does not provide insight on “whether table lookup, pattern matching, or some
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`other form of word or token or string recognition” is utilized. Id. The passage does exactly that.
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`Ex. 5F, Levy Decl., at ¶¶28-31. Like his clients, Dr. Fox creates and then attacks a straw man.
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`Finally, Defendants do not articulate a basis for their argument regarding lack of user
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`intervention or designation. As explained in Arendi’s Opening Brief at 8, the specification
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`describes what constitutes user designation, e.g., highlighting, italicizing, or underlining. Without
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`user designation, as the patent makes clear, means the absence of such selection by the user.
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`Defendants mount no substantive argument on this point.
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`4. “means for initializing the second application program” (cl. 15)
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`Defendants complain that this term is indefinite because “the ’854 specification does not
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`explicitly describe the act of initiating the second application program, but simply assumes that
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`the second application is already running.” Defs’ Opening Br. at 9. As a threshold point, the
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`specification does not assume that the second program is already running. See Ex. 3 at Col. 2 ll.
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`23-25 (“The click on the function item initiates a program connected to the button to search a
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`database or file available on or through the computer …”). Even so, Defendants’ argument reveals
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`that they clearly understand that this claim contemplates starting (or running) the second
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`application program. And the specification provides various ways a user can start the second
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`application, such as using touch or keyboard buttons, menus, voice commands, etc. See Arendi’s
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`Opening Br. at 13 (citing specification).
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`Faced with this straightforward disclosure, Defendants try to use their expert to
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`manufacture a shortcoming. Defendants have Dr. Fox say that starting an application “is not
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 10 of 19 PageID #: 4984
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`technically straightforward and can be done in a variety of ways, for example, by using special
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`programmable, add-on functionality for the first application program to call the API (application
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`programming interface) of the second application program.” Defs’ Opening Br. at 9-10. Dr. Fox’s
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`understanding undermines Defendants’ argument as well. “Claim indefiniteness … depends on the
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`skill level of a person of ordinary skill in the art. In software cases, therefore, algorithms in the
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`specification need only disclose adequate defining structure to render the bounds of the claim
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`understandable to one of ordinary skill in the art.” AllVoice Computing PLC v. Nuance Comm’cns,
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`Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007); see also Typhoon Touch Techs., Inc. v. Dell, Inc., 659
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`F.3d 1376, 1386 (Fed. Cir. 2011) (reversing indefiniteness finding because claimed steps “are
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`carried out by known computer-implemented operations, and are readily implemented by persons
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`of ordinary skill in computer programming”); In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997) (no
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`indefiniteness when “‘known algorithms’ can be used to solve standard equations which are known
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`in the art”). Arendi need not hold Dr. Fox’s hand as he implements a well-known technique. See
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`Ex. 5F, Levy Decl., at ¶32.
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`In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1340 (Fed. Cir. 2016), the district court
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`construed a “means for configuring” limitation to require a four-step algorithm, the first step of
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`which stated:
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`Create, in a computer memory, a logical table that need not be stored contiguously
`in the computer memory, the logical table being comprised of rows and columns,
`the rows corresponding to records, the columns corresponding to fields or
`attributes, the logical table being capable of storing different kinds of records.
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`Id. at 1336. On appeal, Microsoft argued that the algorithm was not a sufficient structure. Id. at
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`1339. The Federal Circuit rejected this argument. As to Step One, the Court held that the algorithm
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`“relies on well-known techniques in the database arts for setting up a table in a computer memory.”
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`Id. at 1340. “That fact that this algorithm relies, in part, on techniques known to a person of
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 11 of 19 PageID #: 4985
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`ordinary skill in the art does not render the composite algorithm insufficient under §112 ¶6. Indeed,
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`this is entirely consistent with the fact that the sufficiency of the structure is viewed through the
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`lens of a person of skill in the art and without the need to disclosure structures well known in the
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`art.” Id. (internal citations and quotations omitted). If well-known techniques can supply the
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`information necessary for “creat[ing], in a computer memory, a logical table that need not be stored
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`contiguously in the computer memory,” then well-known techniques certainly can provide the
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`information necessary to “initialize a second application.” Indeed, Dr. Fox concedes that several
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`options exist.
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`5. “means for responding to a user selection by inserting a second information into
`the document, the second information associated with the first information from
`a second application program” (cl. 13, 50)
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`6. “[means for/computer readable medium … including program instructions for
`performing the steps of] inserting the information located in (2) into the
`document” (cl. 98, 101)
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`Defendants argue that these claim terms3 are indefinite because the specification merely
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`shows the result of the inserting/adding function but does not teach a POSITA how to program
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`software “to actually accomplish the insertion or addition of information.” Defs’ Opening Br. at
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`11. Defendants cannot meet their burden to show that a person of ordinary skill in the art would
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`not understand what is meant by the claimed inserting or adding functions. The specification
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`provides several descriptions and examples that describe the source of the second information, its
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`relationship to the first information, and when and how the user may be presented with the option
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`to insert the second information into the document. Ex. 5F, Levy Decl., at ¶34-35.
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`Defendants complain that the patentee’s failure to spell out the step of how the data is
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`transferred from one application to another remains a mystery that invalidates the claims as a
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`3 As explained in Arendi’s Opening Brief, claim 98 is a garden-variety method claim and should
`not be treated as a means-plus-function claim. See Arendi’s Opening Br. at 9-10.
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`

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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 12 of 19 PageID #: 4986
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`whole. Yet, Google’s own expert does not claim to misunderstand the meaning of “inserting” or
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`“adding” information. Indeed, neither he nor his client argue that “adding” or “inserting” alone is
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`indefinite. Rather, Dr. Fox again formulates a series of complaints unrelated to the invention or
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`the claim: He worries about “where the insertion or addition would occur, how the document that
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`is changed would be formatted, if and how hyphenation might be done, how lines would be split,
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`how pagination would be decided, if and how text wrapping around figures or tables would be
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`done, how justification (e.g., left, right, centered, full) would be carried out.” Fox. Decl. at ¶51.
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`The specification answers some of these wholly irrelevant questions. See, e.g., Figs. 3, 4, 5, 14,
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`and 15 and accompanying text. But regardless, Dr. Fox’s contrived concerns do not implicate the
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`“zone of uncertainty” that §112 ¶6 seeks to avoid. Nautilus, Inc. v. Biosig Instruments, Inc., 134
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`S. Ct. 2120 (2014) (“Otherwise, there would be a zone of uncertainty which enterprise and
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`experimentation may enter only at the risk of infringement claims.”) (internal quotations omitted).
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`Whether the second information is full or left justified after insertion is irrelevant. Pagination and
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`hyphenation are not part of the claims. Infringement does not depend on whether a product elects
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`to wrap or split the inserted text. See also Ex. 5F, Levy Decl., at ¶36.
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`As with the “means for initializing” term above, Dr. Fox says that inserting/adding is “not
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`trivial” and could require writing additional code. Fox Decl. at ¶51.The Federal Circuit has
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`repeatedly held that invoking well-known techniques, recognized relationships, or common
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`algorithms passes muster under §112 ¶6. In AllVoice, the Federal Circuit reversed the district
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`court’s finding that a claim drawn to “means … for determining positions of the recognized words
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`in the computer-related application” was indefinite. 504 F.3d at 1244-45. The Court reiterated that
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`indefiniteness “depends on the skill level of a person of ordinary skill in the art” and cited two
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`figures from the specification as well as expert testimony that “set forth several straightforward
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 13 of 19 PageID #: 4987
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`ways that the algorithm presented in Figure 8A could be implemented by one skilled in the art
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`using well-known features of the Windows operating system (messages, operating system function
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`calls, and hooking).” Id.; see also Typhoon Touch, 659 F.3d at 1386 (reversing indefiniteness
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`finding because claimed steps “are carried out by known computer-implemented operations, and
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`are readily implemented by persons of ordinary skill in computer programming”); In re Dossel,
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`115 F.3d at 946 (no indefiniteness when “known algorithms” can be used to solve standard
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`equations which are known in the art”); Enfish, 822 F.3d at 1340.
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`As Dr. Fox concedes, there are several known ways to perform the inserting and adding
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`functions. What’s more, during the ’854 IPR proceedings, Defendants Google, Motorola, and
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`Apple retained Dr. Daniel A. Menascé, who likewise testified that method of communication
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`between two programs were known to persons of ordinary skill in the art.
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`So there are many inter-process communication mechanisms. One of them could
`be a remote procedure call, another could be a service code. This process would
`be providing some services to another program. And there are message passing.
`This is another exactly of a service provider mechanism, I should say provided by
`the operating system, to allow programs to communicate with one another. So the
`actual way by which the communications implemented can vary. It was known to
`a person of ordinary skill in the art way, way before 1998. I mean, any operating
`system textbook would talk about that.
`
`Ex. 5E, Menascé Dep. Tr., at 25:7-20; see also Ex. 5F, Levy Decl., at ¶34. In short, Defendants
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`cannot meet their burden to show that the adding/inserting limitations are indefinite.
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`7. “means for responding to a user selection by performing an operation related to
`a second information, the second information associated with the first information
`from the second application program” (cl. 31, 79)
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`The specification contains numerous examples of operations that can be performed related
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`to the second information. See Arendi’s Opening Brief at 14-15. Defendants argue that these
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`references all show the “results of possible operations” rather than the operations themselves.
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`Defs’ Opening Br. at 12.
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 14 of 19 PageID #: 4988
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`Defendants cite the specification’s description of “facilitating a related operation such as
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`dialing the phone number, sending the fax, or sending the email” and “creating letters from a mail
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`merge list,” complaining that the specification does not describe “how to actually perform these
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`operations.” Defs’ Opening Br. at 12-13. As discussed above, a person of ordinary skill in the art
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`would understand how to program the software to yield the results shown. A person of ordinary
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`skill in the art would understand the operating system calls and routines that transfer data from one
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`program to a second program. For example, that person would be able to write code to display the
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`results of the search based on the first information, as reflected in several of the patent’s figures.
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`See Ex. 5F, Levy Decl., at ¶37. Defendants would have the Court invalidate the claims because
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`the specification does not explain to a person of ordinary skill in the art how to dial a phone, send
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`an email, or do a mail merge.
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`A similar argument was rejected in TecSec, Inc. v. IBM Corp., 731 F.3d 1336, 1349 (Fed.
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`Cir. 2013), in which the Federal Circuit relied on the specification’s invocation of known software
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`applications Word and WordPerfect and “examples of using the software to perform” certain
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`functions. In this case, the specification refers to exemplary programs Word and Outlook, and a
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`person of ordinary skill in the art would understand how to take second information and, using
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`Word or Outlook, send an email, create a mail merge, or perform another operation.
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`Defendants also argue that the figures and text that show and describe the various user
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`interface screens in the specification are worthless because the specification does not provide an
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`“express algorithm describing for a POSITA how to accomplish the operations or create the
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`display screens from which the user can select.” Defendants do not cite any authority for the
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`proposition that a patent must provide a schematic for a user interface as a condition of validity.
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`Such effort falls squarely within the common knowledge of a person of ordinary skill in the art.
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 15 of 19 PageID #: 4989
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`III. DISPUTED CONSTRUCTIONS
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`A.
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`“first application program” and “second application program”
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`Defendants argue that “first application program” and “second application program” must
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`be narrower than “the more general term” “computer program” used in the other patents’ claims.
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`Defs’ Opening Br. at 13-14. There is no support for this. Defendants cite exemplary embodiments
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`in the specification but overlook that the specification does not even use the phrase “application
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`program,” let alone distinguish it as narrower than “computer program.” Defendants do not explain
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`how a claim term absent from the specification can be narrower than another claim term repeatedly
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`used in the specification.
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`In addition to this glaring issue, Defendants urge this Court to import limitations from the
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`specification into the claims. As discussed at length in Arendi’s other briefs, the intrinsic record
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`does not mandate restricting the claims. The claim language does not support Defendants’
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`limitations. For example, claims 13 and 31 recite “means for entering a first information in the
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`first application program.” Claims 50 and 79 recite in their preamble, “[a] computer system related
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`to information handling within a document operated on by a first application program, the
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`document containing first information that can be utilized in a second application program.” Claim
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`terms are given their plain and ordinary meaning unless the patentee acted as her own
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`lexicographer or disavowed the full scope of the claim term. Unwired Planet, LLC v. Apple Inc.,
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`829 F.3d 1353, 1358 (Fed. Cir. 2016). The Federal Circuit has repeatedly held that “even when
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`the specification describes only a single embodiment, the claims of the patent will not be read
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`restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using
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`words of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367,
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`1372 (Fed. Cir. 2014) (quotations omitted); see also Akamai Techs., Inc. v. Limelight Networks,
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`Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015) (“The patent’s reference to preferred embodiments
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`Case 1:13-cv-00919-LPS Document 130 Filed 07/17/19 Page 16 of 19 PageID #: 4990
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`where the virtual server