Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 1 of 35
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`CIVIL ACTION NO. 19-11272-RGS
`
`UNILOC 2017, LLC
`
`v.
`
`PAYCHEX, INC.
`___
`
`CIVIL ACTION NO. 19-11278-RGS
`
`UNILOC 2017, LLC
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ATHENAHEALTH, INC.
`___
`
`MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
`
`May 11, 2020
`
`
`
`STEARNS, D.J.
`
`
`
`In these two parallel intellectual property cases, plaintiff Uniloc 2017,
`
`LLC (Uniloc), accuses defendants Paychex, Inc., and athenahealth, Inc., of
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 2 of 35
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`infringing U.S. Patents Nos. 6,324,578 (the ’578 patent) and 7,069,293 (the
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`’293 patent).1 Before the court are the parties’ claim construction briefs.2
`
`BACKGROUND
`
`
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`The asserted ’578 patent issued on November 27, 2001, from an
`
`application filed on December 14, 1998. The ’578 patent is titled “Method,
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`Systems and Computer Program Products
`
`for Management of
`
`Configurable Application Programs on a Network,” and lists as inventors
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`David Cox, Kent Hayes, Jr., David Kaminsky, and David Lindquist.
`
`Related U.S. Patent No. 6,728,766 (the ’766 patent) is a divisional of the ’578
`
`patent. The ’766 patent was filed on April 10, 2001, and issued on April 27,
`
`2004. The divisional patent is titled “Methods, Systems and Computer
`
`Program Product for License Use Management on a Network,” and identifies
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`Cox, Kaminsky, and Lindquist as inventors.
`
`
`
`Also on December 14, 1998, inventors Cox, Hayes, and Lindquist,
`
`together with John McGarvey and Abdi Salahshour, filed a second
`
`application that issued on January 21, 2003 as related U.S. Patent No.
`
`
`1 The asserted patents were originally assigned to IBM, and eventually
`reassigned to Uniloc with a reservation of rights for IBM and its business
`partners. A third concurrently filed lawsuit, against Akamai, was dismissed
`pursuant to the terms of the assignment agreement. See Uniloc 2017, LLC v.
`Akamai Tech., Inc., No. 19-11276, Dkt # 44 (D. Mass. Dec. 12, 2019).
`
` Defendants submitted joint claim construction briefing.
`2
`
` 2
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 3 of 35
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`6,510,466 (the ’466 patent). The ’466 patent is titled “Methods, Systems
`
`and Computer Program Products for Centralized Management of
`
`Application Programs on a Network.” A divisional application to the ’466
`
`patent was filed on May 31, 2001, and issued as the asserted ’293 patent
`
`on June 27, 2006. The ’293 patent is titled “Methods, Systems and
`
`Computer Program Products for Distribution of Application Programs to
`
`a Target Station on a Network,” and lists the same five inventors.3
`
`The ’578 and ’466 patents self-identify as related and incorporate each
`
`other by reference. See ’578 patent, col. 1, ll. 10-14 & col. 7, ll. 17-21; ’466
`
`patent, col. 1, ll. 9-13 & col. 7, ll. 43-48. The relationships between the four
`
`patents, as relevant to the discussion, infra, may be visualized as follows.
`
`
`
`
`
`
`3 In a prior-instituted litigation in the Eastern District of Texas (Case
`No. 2:16-CV-00741, “Texas Litigation”), the court (Judge Schroeder) held
`that all four patents were directed to patent ineligible subject matter under
`35 U.S.C. § 101. See Uniloc USA, Inc. v. ADP, LLC, 279 F. Supp. 3d 736 (E.D.
`Tex. 2017). On appeal, the Federal Circuit affirmed the ruling as to the
`related ’766 and ’466 patents, see Uniloc USA, Inc. v. ADP, LLC, 772 Fed.
`App’x. 890, 899-902 (Fed. Cir. 2019) (“ADP”), and reversed with respect to
`the asserted ’578 and ’293 patents, see id. at 896-899.
`3
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 4 of 35
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`Asserted ’578
`patent
`
`relates to
`incorporates
`
`’466 patent
`(invalidated)
`
`divisional
`
`’766 patent
`(invalidated)
`
`
`
`
`
`
`
`divisional
`
`Asserted ’293
`patent
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`The asserted ’578 and ’293 patents are directed to improvements in
`
`providing applications in computer networks principally for large
`
`enterprises. A computer network as envisioned by the patents connects a
`
`network management server (NMS) to “on-demand”4 servers, which in
`
`turn are connected to client stations. Figure 1 of the ’578 patent (also
`
`figure 1 of the ’293 patent) is demonstrative.
`
`
`‘on-demand’ refers to a server delivering
`4 “As used herein,
`applications as needed responsive to user requests as requests are received.”
`’578 patent, col. 6, ll. 51-53; ’293 patent, col. 6, ll. 65-67.
`4
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 5 of 35
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`
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`The ’578 patent addresses, inter alia, the “preference mobility”
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`problem in a network. Id. col. 2, l. 36. “[I]ndividual users may move from
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`location to location and need to access the network from different client
`
`stations at different times.” Id. col. 1, ll. 51-52. In prior art systems,
`
`application preferences were generally associated with a client station rather
`
`than a user, see id. col. 2, l. 2 - col. 3, l. 4; and “fail[ed] to provide a seamless
`
`integration of application access and session characteristics across
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`heterogeneous networks,” id. col. 3, ll. 17-19.
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`
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`5
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 6 of 35
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`An object of the ’578 patent is the “management of configurable
`
`application programs on a computer network which allow a mix of user and
`
`system administrator defined configurable preferences to be associated with
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`specific application programs,” id. col. 3, ll. 42-45; and further, to
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`“accommodate various types of hardware operating under different
`
`operating systems across client stations,” id. col. 3, ll. 48-49. The ’578 patent
`
`discloses “providing two program files for each configurable application
`
`program which are provided to a network server station which operates as
`
`an on-demand server for software deployment and may also act as the
`
`application server.” Id. col. 3, ll. 51-55. The first program file – a
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`“configuration manager” – is available to administrators to “establish
`
`preferences for the configurable preferences of the application program
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`which have been designated as administrator only settable.” Id. col. 3, ll. 59-
`
`61. The second program file – an “application launcher” – “not only provides
`
`for a user interface to execute the application program itself but also allows
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`a user to specify one or more of the configurable parameters of the
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`application program.” Id. col. 3, ll. 64-67.
`
`The ’578 patent lists 46 apparatus and method claims, of which claim
`
`1 is representative.
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`6
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 7 of 35
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`
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`1. A method for management of configurable application
`programs on a network comprising the steps of:
`
`
`installing an application program having a plurality of
`configurable preferences and a plurality of authorized
`users on a server coupled to the network;
`
`
`distributing an application launcher program associated with
`the application program to a client coupled to the network;
`
`
`obtaining a user set of the plurality of configurable
`preferences associated with one of the plurality of
`authorized users executing the application
`launcher
`program;
`
`
`obtaining an administrator set of the plurality of configurable
`preferences from an administrator; and
`
`
`executing the application program using the obtained user set
`and the obtained administrator set of the plurality of
`configurable preferences responsive to a request from the
`one of the plurality of authorized users.
`
`The
`
`’293 patent, in turn, is concerned with the centralized
`
`
`
`
`distribution of application programs in a network.
`
`Centralized control of software distribution is also provided for a
`network management server managed computer network such
`as a Tivoli™ environment. Application programs are distributed
`as file packages (packets) to on-demand servers. A profile
`manager import call is included in the distributed file packet
`along with an import text file containing the data required to
`properly install and register the application program on the on-
`demand server and make it available to authorized users.
`Settable on-demand server identifier fields are included to allow
`a plurality of on-demand servers to receive a common file packet
`and properly install and register the program for use locally.
`
`
`
`7
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 8 of 35
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`
`’293 patent, col. 4, ll. 14-25. The ’293 patent lists 21 apparatus and method
`
`claims, of which claim 1 is also representative.
`
`1. A method for distribution of application programs to a
`target on-demand server on a network comprising the following
`executed on a centralized network management server coupled
`to the network:
`
`
`providing an application program to be distributed to the
`network management server;
`
`
`specifying a source directory and a target directory for
`distribution of the application program;
`
`
`preparing a file packet associated with the application
`program and including a segment configured to initiate
`registration operations for the application program at the
`target on-demand server; and
`
`
`distributing the file packet to the target on-demand server to
`make the application program available for use by a user at
`a client.
`
`The parties dispute the construction of the following six claim terms,
`
`
`
`
`listed in their order of importance (as agreed by the parties in their Joint
`
`Claim Construction Statement).
`
`• “application program(s)” (all asserted claims in both patents)
`
`• “application launcher program” (all asserted claims of the ’578 patent)
`
`• “registration operations” (all asserted claims of the ’293 patent)
`
`• “file packet” (all asserted claims of the ‘’293 patent)
`
`8
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 9 of 35
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`• “executing the application program using the obtained user set and the
`obtained administrator set . . . responsive to a request from the one of
`the plurality of authorized users” (’578 patent claim 1)
`
`• “configuration manager program” (claims 2-3, 18-19, and 33-34 of the
`’578 patent)
`
`
`Defendants additionally assert that two groups of claims of the ’578 patent –
`
`claims 20, 22, 24, 35, 37, and 39 (group 1), and claims 9, 23, 25, and 40
`
`(group 2) are indefinite.5
`
`CLAIM CONSTRUCTION
`
`Claim construction is an issue of law for the court. See Markman v.
`
`Westview Instruments, Inc., 517 U.S. 370, 388-389 (1996). Claim terms are
`
`generally given the ordinary and customary meaning that would be ascribed
`
`by a person of ordinary skill in the art (POSITA) in question at the time of
`
`the invention.6 See Phillips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed.
`
`
`5 Defendants also seek the dismissal of all claims containing means-
`plus-function terms on the grounds that Uniloc did not identify the
`corresponding function and structure. Prior to the filing of the opening
`briefs, Uniloc directed defendants to its submissions in the Texas Litigation
`setting out its positions on the means-plus-function terms. See Dkt # 45-5.
`Defendants, despite having identified 5 representative means-plus-function
`terms, see id., elected not to submit them for construction. In the absence of
`meaningful briefing, the court takes no position on means-plus-function or
`the claims containing such terms.
`
`6 According to Uniloc’s expert witness, Dr. Michael Shamos, “a POSITA
`would have had at least a bachelor’s degree in computer science or electrical
`engineering, or an equivalent field, or equivalent work experience, and, in
`
`
`
`
`9
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 10 of 35
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`Cir. 2005) (en banc). In ascertaining how a person of ordinary skill in the
`
`art would have understood the terms, the court looks to the claims, the
`
`specification of the patent, and its prosecution history – collectively the
`
`intrinsic record of the patent. Id. at 1314-1317. Where appropriate, the court
`
`may also consider evidence extrinsic to the patent and its prosecution
`
`history, such as dictionaries, treatises, or expert testimony. Id.7 Ultimately,
`
`“[t]he construction that stays true to the claim language and most naturally
`
`aligns with the patent’s description of the invention will be, in the end, the
`
`correct construction.” Id. at 1316 (citation omitted).
`
`• application program(s) (both patents)
`
`Uniloc contends that the claim term “application program(s)” should
`
`be given its ordinary meaning, and relies on its expert declaration for the
`
`
`addition, at [sic] one year of work experience with management and
`distribution of application programs
`in a networked client/server
`environment.” Corrected Shamos Decl. (Dkt # 42-2) ¶ 37.
`
` “[W]hile extrinsic evidence can shed useful light on the relevant art,
`we have explained that it is less significant than the intrinsic record in
`determining the legally operative meaning of claim language.” Id. at 1317
`(internal quotation marks and citation omitted). “We have [also] viewed
`extrinsic evidence in general as less reliable than the patent and its
`prosecution history in determining how to read claim terms.” Id. at 1318.
`
` 7
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`
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`10
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 11 of 35
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`definition, namely, “software that performs tasks for an end-user.”
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`Corrected Shamos Decl. at ¶¶ 64-74.8
`
`Defendants, on the other hand, note that the ’578 patent’s specification
`
`defines an “application program” – “as used herein, it is to be understood
`
`that the term ‘application program’ generally refers to the code associated
`
`with the underlying program functions, for example, Lotus Notes or a
`
`terminal emulator program.” ’578 patent, col. 12, ll. 13-16. Defendants also
`
`note that during the prosecution of the related ’466 patent, the patentee
`
`further defined “application program” as follows.
`
`In other words, the “application program” is an application level
`software program, such as Lotus Notes, while the “application
`launcher program” is provided to “initially populate the user
`desktop” and need not include the application program code.
`The application launcher program interacts with the desktop,
`such as a user browser interface, while an instance of the
`application program is requested through the desktop but
`executes locally at the client as a separate application from the
`browser interface. For example, Lotus Notes would not execute
`within the browser window.
`
`
`Defs.’ Ex. B, ’466 patent prosecution history, May 16, 2002 Appeal Brief (Dkt
`
`# 33-2) at Paychex_PTO_0000161 (emphasis added). Defendants therefore
`
`propose to integrate the two definitions and construe an “application
`
`
`8 Dr. Shamos, in turn, finds support for his definition from, inter alia,
`technical dictionaries, id. ¶ 64, and claim construction opinions for unrelated
`litigations and patents, id. ¶ 69.
`
`
`
`11
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 12 of 35
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`program” as “the code associated with the underlying program functions that
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`is a separate application from a browser interface and does not execute
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`within the browser window.”9
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`
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`Uniloc agrees that the definitional statement from the ’578 patent
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`specification “confirms the ordinary meaning” of the term, Pl.’s Reply (Dkt #
`
`45) at 7, but objects to defendants’ reliance on the ’466 patent prosecution
`
`history. Citing to Abbott Labs. v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002),
`
`and Goldenberg v. Cytogen, Inc., 373 F.3d 1158 (Fed. Cir. 2004), Uniloc
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`contends that the prosecution history of the ’466 patent is not a part of the
`
`intrinsic record of the ’578 patent. In Abbott Labs., the Federal Circuit held
`
`that although a later-filed patent (the ’301 patent) shared the same inventor
`
`and assignee as the patent-in-suit (the ’839 patent), and addressed the same
`
`subject matter, absent a “formal relationship” between the patents, there was
`
`no “basis for concluding that statements made about the characteristics of
`
`the surfactant claimed by the ’301 patent should be attributed to the
`
`improved surfactant claimed by the ’839 patent.” 287 F.3d at 1105.
`
`
`
`9 Defendants point out that early in the claim construction process,
`Uniloc proposed a construction identical to theirs, see Defs.’ Reply Ex. A,
`Plaintiff’s Disclosure of Claim Terms & Proposed Construction (Dkt #44-1),
`which was adopted by Judge Schroeder in the Texas Litigation, see Texas
`Litigation, Dkt # 233 at 23 (E.D. Tex. Aug. 16, 2017) (“EDTX Markman
`Order”).
`
`
`
`12
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 13 of 35
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`In Goldenberg, two parent applications and two child patents were at
`
`issue. The same patentee filed the two applications – the ’261 and ’262
`
`applications – simultaneously. The claims of the ’261 application were
`
`rejected on double-patenting grounds over the claims of the ’262 application.
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`In overcoming the rejection, the patentee distinguished the ’262 application
`
`during the prosecution of the ’261 application. Subsequently, the ’261
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`application matured into U.S. Patent No. 4,361,544, and a continuation of
`
`the ’261 application matured into the asserted ’559 patent. The ’262
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`application was itself abandoned, but a continuation-in-part of the ’262
`
`application matured into the ’774 patent. In construing the claims of the
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`asserted ’559 patent, the Federal Circuit approved the district court’s
`
`referencing of the contents of the ’262 application. The Federal Circuit
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`rejected, however, the district court’s recitation to portions of the ’774 patent
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`that were added to the continuation-in-part. In so holding, the Court noted
`
`the ’262 application was incorporated into the ’261 application’s prosecution
`
`history in a manner analogous to a cited prior art reference being
`
`incorporated into a prosecution history. See Goldenberg, 373 F.3d at 1167,
`
`citing Kumar v. Ovonic Battery Co., Inc., 351 F.3d 1364, 1368 (Fed. Cir.
`
`2003). What was incorporated was “content of the ’262 application at the
`
`time it was distinguished from the ’261 application,” and “subsequently
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`13
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 14 of 35
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`added new matter is not similarly incorporated.” Id. “In the absence of an
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`incorporation into the intrinsic evidence, this court’s precedent takes a
`
`narrow view on when a related patent or its prosecution history is available
`
`to construe the claims of a patent at issue and draws a distinct line between
`
`patents that have a familial relationship and those that do not.” Id.
`
`Uniloc reasons that, like the patents in Abbott Labs., although the
`
`asserted ’578 patent and the ’466 patent share some but not all of the
`
`inventors, the same assignee, and were directed to similar subject matter,
`
`they were not continuations, divisionals, or continuations-in-part of each
`
`other, and thus have no “formal relationship” that would justify cross-
`
`referencing their prosecution histories. Further, although the ’578 and ’466
`
`patents incorporate each other’s application, under Goldenberg, only the
`
`incorporated application of the ’466 patent forms a part of the ’578 patent’s
`
`intrinsic record. Statements made in the prosecution of the ’466 patent after
`
`that incorporation, in Uniloc’s view of Goldenberg, fall outside of the
`
`intrinsic record of the ’578 patent.10
`
`Uniloc’s argument overlooks the pivotal fact that the ’578 and ’466
`
`patents explicitly claim to be related. See ’578 patent, col. 1, ll. 10-14 (“This
`
`
`10 Uniloc does not attribute a different meaning to “application
`program” in the ’293 patent from the ’466 patent, nor does it advocate for
`separate constructions of the term across the ’578 and the ’293 patents.
`14
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`

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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 15 of 35
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`application is related to the following application filed concurrently
`
`herewith: METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR CENTRALIZED MANAGEMENT OF APPLICATION
`
`PROGRAMS ON A NETWORK.”); ’466 patent, col. 1, ll. 9-13 (“This
`
`application is related to the following application filed concurrently
`
`herewith: METHODS, SYSTEMS AND COMPUTER PROGRAM
`
`PRODUCTS FOR MANAGEMENT OF CONFIGURABLE APPLICATION
`
`PROGRAMS ON A NETWORK.”). These cross-declarations appear in the
`
`first section of each patent’s written description titled “CROSS REFERENCE
`
`TO RELATED APPLICATION,” a section typically reserved for listing
`
`priority patents. See Manual of Patent Examination Procedure (MPEP) § 601
`
`(citing to MPEP § 211 et seq.). Indeed, in addition to the related patents, the
`
`divisional patents also identify the parent patents in this section. See ’766
`
`patent, col. 1, ll. 8-14; ’293 patent, col. 1, ll. 9-15.11 Under these
`
`circumstances, the court concludes that the ’578 and ’466 patents share a
`
`kinship, as their drafters intended, such that their prosecution histories
`
`collectively constitute the intrinsic record for purposes of claim construction.
`
`
`11 In contrast, the asserted ’839 patent of Abbott Labs. only briefly
`described the ’301 patent in the section of the specification titled “FIELD
`AND BACKGROUND OF THE INVENTION.” See U.S. Patent Nos.
`4,397,839, col. 1, ll. 26-33. The ’261 application of Goldenberg does not cite
`to the ’262 application at all. See U.S. Patent No. 4,361,544.
`15
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 16 of 35
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`See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir.
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`2015) (“A statement made during prosecution of related patents may be
`
`properly considered in construing a term common to those patents,
`
`regardless of whether the statement pre- or post-dates the issuance of the
`
`particular patent at issue.”).
`
`Uniloc further objects that the excerpt from the
`
`’466 patent
`
`prosecution history is inapt because it was not directed to the meaning of
`
`“application program.” In its view, “applicants were simply explaining the
`
`claimed invention of the ’466 patent executed locally at the client.” Pl.’s
`
`Reply at 11. As reflected by the table below, the excerpt from the ’466 patent
`
`prosecution is offered to explain a paragraph from the ’466 patent
`
`specification that defines “application program.”
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` That specification
`
`paragraph appears nearly verbatim in the ’578 patent.
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`16
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`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 17 of 35
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`’578 patent, col. 12, ll. 13-36
`(parallel emphasis added for ease of
`comparison)
`
`
`
`“application program”
`term
`the
`generally refers to the code associated
`with
`the
`underlying
`program
`functions, for example, Lotus Notes or
`a
`terminal
`emulator
`program.
`However, it is to be understood that the
`application program will preferably be
`included as part of the application launcher
`which will
`further
`include
`the code
`associated with managing usage of
`configurable application programs on a
`network according to the teachings of the
`present invention. Further it is to be
`understood that, as used herein, the term
`“application launcher program” may refer to
`the entire program provided by a software
`vendor or to merely a portion thereof
`distributed to a client to perform particular
`For
`example,
`the
`operations.
`application
`launcher
`program
`distributed to initially populate the
`user desktop preferably does not
`include the code associated with the
`underlying application program and
`obtaining preferences which may only be
`distributed to the client later when execution
`of the application program is requested. The
`application launcher program distributed to
`populate the user desktop may only include
`a URL and an associated ICON and,
`possibly, code to allow obtaining of user
`identification and password information.
`Memory usage on the client stations may
`thereby be limited.
`
`
`
`
`
`
`’466 patent prosecution history,
`May 16, 2002 Appeal Brief at
`Paychex_PTO_0000160-161
`As defined in the specification of the present
`application:
`
`
`“application program”
`term
`the
`generally refers to the code associated
`with
`the
`underlying
`program
`functions, for example, Lotus Notes or
`a
`terminal
`emulator
`program.
`However, it is to be understood that the
`application program will preferably be
`included as part of the application launcher
`which will
`further
`include
`the code
`associated with managing usage of the
`application program on a network according
`to the teachings of the present invention.
`Further it is to be understood that, as used
`herein, the term “application
`launcher
`program” may refer to the entire program
`provided by a software vendor or to merely a
`portion thereof distributed to a client to
` For
`perform particular operations.
`example, the application launcher
`program distributed
`to
`initially
`populate the user desktop preferably
`does not include the code associated
`with
`the underlving application
`program and obtaining preferences which
`may only be distributed to the client later
`when execution of the application program
`is requested. The application
`launcher
`program distributed to populate the user
`desktop may only include a URL and an
`associated ICON and, possibly, code to allow
`obtaining of user
`identification and
`password information. Memory usage on
`the client stations may thereby be limited.
`
`
`(Specification, pp. 22-23) (emphasis added). In
`other words, the “application program” is an
`application level software program, such as Lotus
`Notes, while the “application launcher program” is
`provided to “initially populate the user desktop”
`and need not include the application program
`code. The application launcher program interacts
`with the desktop, such as a user browser interface,
`while an instance of the application program is
`requested through the desktop but executes locally
`at the client as a separate application from the
`browser interface. For example, Lotus Notes
`would not execute within the browser window.
`
`
`
`17
`
`

`

`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 18 of 35
`
`Accordingly, the patentee’s statement
`
`in the
`
`’466 patent defining
`
`“application program” is equally relevant to defining the same term in the
`
`’578 patent. The court therefore adopts defendants’ proposed construction
`
`– an “application program” is “the code associated with the underlying
`
`program functions that is a separate application from a browser interface
`
`and does not execute within the browser window.”
`
`• “application launcher program” (’578 patent)
`
`Uniloc advances an ordinary meaning construction of “application
`
`launcher program,” which, in its view, is “a computer program that launches,
`
`i.e., starts another program.” Defendants contend that the term is used more
`
`narrowly in the ’578 patent to signify “a program distributed to a client to
`
`initially populate a user desktop and to request an instance of the application
`
`for execution at the client.”12
`
`With respect to “populate a user desktop,” defendants point out that
`
`the specification requires that an “application launcher program [is]
`
`distributed to initially populate the user desktop.” ’578 patent, col. 12, ll. 26-
`
`7; see also id. col. 12, ll. 31-32. In response, Uniloc cites to what it contends
`
`
`12 Defendants note that Uniloc initially proposed to construe the term
`as “a program distributed to a client to initially populate a user desktop and
`to request execution of the application program,” Defs.’ Reply Ex. A, and that
`further, defendants’ construction is the same as that adopted by the court in
`the Texas Litigation. See EDTX Markman Order at 31.
`18
`
`
`
`

`

`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 19 of 35
`
`are alternative embodiments. “For example, in one embodiment, [’578
`
`patent] at 11:32-37, the user desktop is populated before the application
`
`launcher is even distributed. And in id. at 11:60-12:1, the specification
`
`discloses another embodiment in which the application launcher program
`
`does not populate the user desktop.” Pl.’s Reply at 2. Contrary to Uniloc’s
`
`reading, the specification does not disclose populating the desktop before the
`
`application launcher is distributed. Rather, “the application launchers for
`
`individual application programs are distributed when a user desktop is
`
`initiated (populated).” Id. col. 11, ll. 32-34 (emphasis added). In other
`
`words, “[t]he application launcher program, as described above, is
`
`distributed for each authorized application program to the clients 24, 24’, 26,
`
`26’ at the time of establishment of the user desktop interface.” Id. col. 11, ll.
`
`55-58 (emphasis added).
`
`As for “request an instance of the application for execution at the
`
`client,” defendants identify the following intrinsic evidence. In the
`
`BACKGROUND OF THE INVENTION section, the ’578 patent disparages a
`
`prior art “mainframe model” where “the client device is treated as a dumb
`
`terminal with execution of the applications occurring at the server rather
`
`than the client.” See id. col. 2, ll. 50-55. The SUMMARY OF THE
`
`INVENTION discloses that
`
`
`
`19
`
`

`

`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 20 of 35
`
`the present invention provides for management of configurable
`application programs in a network environment from a central
`on-demand server location while allowing for user preferences to
`be tracked independent of hardware location of the user. This
`provides for reduced costs and increased uniformity in managing
`software in a network environment by delivering configured
`applications when demanded by a user.
`
`
`’578 patent, col. 5, l. 65 - col. 6, l. 5 (emphasis added). The DETAILED
`
`DESCRIPTION emphasizes that the servers envisioned in the patent are “on-
`
`demand” servers,
`
`i.e., “server[s] delivering applications as needed
`
`responsive to user requests as requests are received.” Id. col. 6, ll. 52-52
`
`(emphasis added).13
`
` The DETAILED DESCRIPTION reiterates that
`
`applications are delivered to and executed on the client.
`
`The application launcher applet then detects selection by the
`user of the application program’s associated icon from the user
`desktop interface at clients 24, 24’, 26, 26’ and requests an
`instance of the selected one of the plurality of application
`programs associated with the icon from server system 22. The
`application launcher program then populates clients 24, 24’, 26,
`26’ with the instance of the selected application program for
`execution.
`
`
`
`13 The court does not credit Uniloc’s assertion, made without any
`citation, even to its own expert’s declaration, that a POSITA would
`understand “deliver” “as simply making an instance of the application
`available for execution.” Pl.’s Reply at 3 n.3. Indeed, Dr. Shamos
`understands “deliver” to require more than simply to “make available.” See
`Corrected Shamos Decl. ¶ 45 (suggesting that the ’578 patent does not
`foreclose server-based “application launcher programs” which are not
`delivered to the client because, in his view, the patent does not require
`delivery).
`
`
`
`20
`
`

`

`Case 1:19-cv-11278-RGS Document 47 Filed 05/11/20 Page 21 of 35
`
`Id. col. 11, l. 60 - col. 12, l. 1 (emphasis added).14
`
`In addition, during the prosecution of the ’766 patent, in response to
`
`the examiner’s rejection on the basis that a prior art patent (Duvvoori)
`
`disclosed an application launcher program, the inventors distinguished
`
`Duvvoori on the basis of execution of the application at the client.
`
`Duvvoori describes either an agent process 66, 76, 96, 173 at the
`client, that controls execution of programs resident on the clients
`18, 20, 22, or a wrapper 44, 46, 25, 38, 40, that may be at a
`remote server 10 or at the clients. (Duvvoori, FIG. 1). The agent
`processes of Duvvoori are not application specific but, instead,
`provide a cross-application interface for a client to the file server
`computer 30. (Duvvoori, Col. 9, lines 19-62). The wrappers are
`application specific. (Duvvoori, Col. 7, line 54 to Col. 8, line 9).
`However, the wrapper for the server programs on the server 10
`are resident on the server with the programs. Thus, Duvvoori
`does not disclose or suggest the present invention’s application
`specific application launcher program, executing at a client to
`request an instance of an application, also requesting a license
`from the license server. In other words, while the wrappers of
`Duvvoori may request a license, they do not request a
`configu