Case 1:15-cv-00849-RP Document 62 Filed 10/07/16 Page 1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`
`
`
`
`AFFINITY LABS OF TEXAS, LLC,
`
`
`Plaintiff,
`
`v.
`NETFLIX, INC.,
`
`
`Defendant.
`
`
`Case No. 1:15-cv-00849-RP
`
`DEFENDANT NETFLIX, INC.’S OPENING
`CLAIM CONSTRUCTION BRIEF RE U.S. PATENT NOS. 9,094,802 AND 9,444,868
`
`IPR2017-00122
`Netflix, Inc. v. Affinity Labs of Texas, LLC
`
`Affinity Labs Ex. 2002-001
`
`

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`I. 
`II. 
`
`III. 
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`Case 1:15-cv-00849-RP Document 62 Filed 10/07/16 Page 2 of 30
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`TABLE OF CONTENTS
`
`B. 
`
`INTRODUCTION .............................................................................................................. 1 
`BACKGROUND ................................................................................................................ 2 
`A. 
`The Specification of the ’802 and ’868 Patents ...................................................... 2 
`B. 
`The Asserted Patent Claims .................................................................................... 5 
`ARGUMENT ...................................................................................................................... 6 
`The Terms of the Asserted Claims Must Be Construed in Light of the
`A. 
`Specification ....................................................................................................................... 6 
`1. 
`“a media playlist” or “playlist” (’802 patent, cl. 14; ’868 patent, cl. 1) ..... 7 
`2. 
`“to facilitate outputting of the [given/different] segment at a
`[given/different rate]” (’802 patent, cl. 1)/ “to be delivered from the media
`delivery resource at a [given/different] rate” (’802 patent, cl. 9) ........................... 9 
`The Asserted Patent Claims Are Indefinite .......................................................... 10 
`The Words of the Asserted Patent Claims Fail to Inform One of Ordinary
`1. 
`Skill of the Scope of the Invention ....................................................................... 10 
`“a plurality of independent segment files” (’802 patent, cl. 1; ’868
`a. 
`patent, cls. 1 and 7) ................................................................................... 12 
`b. 
`“at or near” (’802 patent, cl. 3) ..................................................... 14 
`c. 
`“in a manner that facilitates a continuous outputting of the
`available media by the requesting device” (’802 patent, cls. 14 and 18) .. 15 
`The Asserted Patents Fail to Disclosure the Corresponding Structures for
`2. 
`Its Means-Plus-Function Claim Elements ............................................................ 16 
`“a delivery resource configured to respond to a plurality of file
`a. 
`requests by transmitting information to the requesting device in a manner
`that facilitates continuous outputting of the available media by the
`requesting device” (’802 patent, cl. 14) .................................................... 18 
`“a collection of instructions operable to” (’802 patent, cls. 9 and
`b. 
`18; ’868 patent, cl. 1) ................................................................................ 20 
`“a communications engine . . . that is configured to facilitate a
`c. 
`receipt of requests and communication of information” (’868 patent,
`cl. 11) ....................................................................................................... 22 
`“engine that divides the available media into the plurality of
`d. 
`independent segment files and encodes the plurality of independent
`segment files into an appropriate format for delivery” (’868 patent, cl. 8) ..
`
`....................................................................................................... 23 
`e. 
`“digital engine . . . that is configured to maintain the list” (’868
`patent, cl. 11)............................................................................................. 24
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`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`TABLE OF AUTHORITIES
`
`Cases 
`
`Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200 (Fed. Cir. 1991) ........................................... 15
`
`Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) ............................... 11
`
`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1366 (Fed. Cir. 2014) ......................................... 11
`
`Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) ..................... 17
`
`Media Rights Techs. V. Capital One Financial, 800 F.3d 1366 (Fed. Cir. 2015) ........................ 18
`
`Multiform Dessicants, Inc. v. Medzam Ltd., 133 F.3d 1473 (Fed. Cir. 1998) ................................ 6
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014) ................................................ 11
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................................ 6, 7
`
`QCue, Inc. v. Digonex Techs., Inc., Case No. A-12-CA-484, 2013 WL 4784120 (W.D. Tex.
`
`Sept. 5, 2013) ............................................................................................................................ 14
`
`Watts v. XL Sys., Inc., 232 F.3d 877 (Fed. Cir. 2000) .................................................................. 18
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) ........................... 16, 17, 18, 19
`
`Statutes 
`
`35 U.S.C. § 112(b), pre-AIA § 112 ¶ 2 ......................................................................................... 11
`
`35 U.S.C. § 112(f), pre-AIA § 112 ¶ 6 .................................................................................. passim
`
`Other Authorities 
`
`Manual of Patent Examining Procedure § 2173 .......................................................................... 11
`
`Manual of Patent Examining Procedure § 2181 .............................................................. 17, 19, 20
`
`
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`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`IPR2017-00122
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`Affinity Labs Ex. 2002-003
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`I.
`
`INTRODUCTION
`
`In this lawsuit, Affinity asserts that U.S. Patent Nos. 9,094,802 (“the ’802 patent”) and
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`9,444,868 (“the ’868 patent”), covers Hypertext Transfer Protocol adaptive bitrate (HTTP ABR)
`
`streaming – technology that dynamically adjusts the quality (or bitrate) of a video stream based
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`on real-time detection of a user’s bandwidth and processing capacity. First Amended Complaint
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`¶¶ 17-22; see also Amended Declaration of Nader Mir (“Amd Mir Decl.”) ¶ 33. The ’802 and
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`’868 patents, however, rely exclusively upon the specification of an earlier patent application
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`with no mention of “HTTP ABR” anywhere that dates back to 2000, when HTTP ABR was
`
`nascent technology and not in wide use. ’802 patent at 1:4-21; Amd Mir Decl. ¶ 33.
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`It is therefore not surprising that the ’802 and ’868 patent disclosures do not support a
`
`construction of the asserted claims that would cover HTTP ABR streaming. The ’802 patent
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`Abstract describes the invention as a “method for targeted advertising.” ’802 patent at Abstract.
`
`Indeed, much of the patents’ shared specification discusses use in an Internet radio context, with
`
`the specification disclosing only a high-level generalized concept of selecting digitally stored
`
`media (e.g., audio or video) files for transmission to and playback on an electronic device. E.g.
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`’802 patent at 2:56-67. It does not include any mention of the terms “bitrate,” “adaptive bitrate,”
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`“ABR,” “Hypertext Transfer Protocol,” or “HTTP.” It does not explain how to format media or
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`adjust the quality of a video stream in real-time. Amd Mir Decl. ¶¶ 32, 47. It does not explain
`
`how to configure a computer to transmit a video stream in a manner to ensure uninterrupted
`
`playback. Id. ¶ 68. Nor does it disclose any specific programming, system logic, or algorithms
`
`used to accomplish these feats. Id. ¶¶ 72.
`
`But these are all elements specifically required by the asserted claims of the ’802 and
`
`’868 patents. More than a decade after filing its specification, and after HTTP ABR was widely
`
`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`adopted, Affinity drafted the asserted claims to try to cover a technology it did not invent,
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`leaving the asserted claims divorced from the teachings in the specification. As a result, the
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`disputed terms of the ’802 and ’868 patent claims fall into one of three claim construction
`
`categories. The first category covers three terms that must be construed consistent with how they
`
`are used in the ’802 and ’868 patent disclosures, not based on what Affinity now seeks to cover
`
`in this litigation. The second includes the three terms that fail to give clear notice of what is
`
`being claimed, using ambiguous language that the specification fails to shed light on. The third
`
`category encompasses five terms that recite requirements based on the function they perform.
`
`Yet, the specification fails to disclose any structures or algorithms for performing such functions.
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`Therefore, in light of the teachings in the specification (or lack thereof), the disputed
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`terms of the ’802 and ’868 patents are limited to basic transmission of audio and video files that
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`either have nothing to do with HTTP ABR streaming or are indefinite. Accordingly, Netflix
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`respectfully requests the Court to adopt its proposed constructions as set forth below in this brief.
`
`II.
`
`BACKGROUND
`
`A.
`
`The Specification of the ’802 and ’868 Patents
`
`The ’802 patent, entitled “System and Method to Communicate Targeted Information,”
`
`was filed in January 2014 and claims priority to an application filed in March 2000. See ’802
`
`patent. The Abstract states that the ’802 patent is directed to a method for sending targeted
`
`advertising to a portable device. Id. at Abstract. The ’868 patent is entitled “System to
`
`Communicate Media.” It was filed June 23, 2015 and claims priority to the same application
`
`from March 2000. See ’868 patent.
`
`Other than the Abstract, the ’802 and ’868 patents share the same specification, which
`
`starts with a description of an Internet radio system that can be associated with an automobile
`
`audio system. ’802 patent at 2:56-3:17. At a high level, the specification describes a system and
`Netflix’s Opening Claim Construction Brief
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`method for delivering digitally stored media (i.e., audio, video, or textual information) to an
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`electronic device. E.g. id. at 1:25-27 (“The present disclosure relates to digitally stored content
`
`and, more specifically, to a content delivery system and method”), 2:56-58 (“The conceptual
`
`groundwork for the present invention includes wirelessly communicating selective information
`
`to an electronic device”).
`
`Figure 1 illustrates the four main components of the system described in the
`
`specification:
`
`
`
`Id. at 3:32-44, Fig. 1; see also Amd Mir Decl. ¶¶ 23-27. The first component is storage device
`
`105, which stores the media content (i.e. audio or video information) that a user may select for
`
`transmission. Id. at 3:41-44; Amd Mir Decl. ¶ 24. The second component is what the patent
`
`refers to as “digital engine 101.” The digital engine is coupled to the storage device and
`
`“maintains information associated with the selected audio information.” Id. at 3:50-52. For
`
`example, the digital engine may be “used in association with an Internet website” that allows a
`
`user to select information or content of interest. Id. at 4:1-6. The specification explains that the
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`information maintained by the digital engine could be “several songs or titles configured as an
`
`audio file and formatted in a digital format,” “a reference to a network location where an audio
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`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`file may be stored,” or other types of information associated with the content selected by the
`
`user. Id. at 3:50-62; Amd Mir Decl. ¶ 25. The third component is a “communications engine”
`
`that is coupled to the digital engine and communicates selected content from an information
`
`network, such as the Internet, to an electronic device. Id. at 4:17-20. The communications
`
`engine may “configure the information located within the information network into a format
`
`operable to be transmitted via wireless communication.” Id. at 4:55-57; Amd Mir Decl. ¶ 26.
`
`And the fourth component is an “electronic device 103,” which is configured for receiving
`
`wireless communication of the selected content, and may include network radios, audio systems,
`
`PDAs, or cellular phones. Id. at 4:27-40; Amd Mir Decl. ¶ 27.
`
`The specification explains that in certain circumstances, the system may use
`
`communication networks having slower transfer rates. ’802 patent at 5:52-53. For example, a
`
`user may select a set of songs to be played during the drive home at the end of a workday. Id. at
`
`53-59. Because the system has plenty of time to transmit the content to the receiving device, it
`
`can use a slower communication link. Id. at 5:63-65; Amd Mir Decl. ¶ 28. In other
`
`circumstances, the system may require use of high-speed wireless communications to stream an
`
`Internet broadcast from an Internet radio station, for example. ’802 patent at 5:66-6:5; Amd Mir
`
`Decl. ¶ 29. And in other cases, the system may use a hybrid approach, transmitting content via a
`
`high-speed communication network until enough information has been communicated to and
`
`buffered in the receiving electronic device. Id. at 6:5-8. Upon communication of a certain
`
`percentage of the selected information, slower communication networks may then be used to
`
`communicate additional selected information. Id. at 6:8-16; Amd Mir Decl. ¶ 30.
`
`Nothing in the specification discloses a technological advance to implement the system
`
`described in the ’802 and ’868 patents. See Amd Mir Decl. ¶ 31. There is no disclosure
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`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`regarding the functionality that would switch between different communication networks. Id.
`
`¶ 32. There is no explanation or limitation as to how the media is to be formatted and sent to the
`
`electronic device. Id. There is no description of what equipment or programming can be used
`
`for the “digital engine” or the “communications engine.” See id. There is no disclosure
`
`regarding the necessary configuration of the sending or receiving device. See id. ¶ 68. And there
`
`is no disclosure of programming for or implementation of any computer, server, website, or
`
`software. See id. ¶ 72. The patent specification describes nothing more than the general concept
`
`of transmitting media to an electronic device. Id. ¶¶ 31-32.
`
`B.
`The Asserted Patent Claims
` The asserted patent claims, however, recite limitations requiring a lot of these specific
`features, using terminology not disclosed in the specification. The ’802 patent has three
`
`independent claims; claims 1 and 9 are method claims and claim 14 is a system claim, all of
`
`which were allowed without any substantive prosecution. Affinity also asserts infringement of
`
`claims 1-13 of the ’868 patent, two of which (claims 1 and 7) are independent claims.
`
`Claim 1 of the ’802 patent is exemplary and recites:
`
`1. A method to deliver media, comprising:
`organizing an available media into a plurality of independent segment files to
`facilitate delivery;
`formatting a given segment to facilitate an outputting of the given segment at a
`given rate;
`formatting a different segment to facilitate an outputting of the different segment
`at a different rate, wherein the different rate is slower than the given rate;
`generating a list that includes an address for each of the plurality of independent
`segment files;
`receiving an HTTP communication that indicates a desire to access the available
`media;
`sending the list in response to receiving the HTTP communication;
`sending the given segment; and
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`sending the different segment.
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`’802 patent at claim 1, see also claims 9 and 14; ’868 patent, claims 1 and 7.
`
`The asserted claims all require “a plurality of independent segment files” and different
`
`formatting of the segment files for transmission at different rates. Id. at 18:31-37 (claim 1),
`
`19:17-25 (claim 9), 20:4-11 (claim 14); ’868 patent at 18:57-61 (claim 1), 19:49-50 (claim 7);
`
`see also Amd Mir Decl. ¶ 37. But in the patent there is no disclosure or explanation of how this
`
`is done. See Amd Mir Decl. ¶ 52. The claims also require “a list that includes an address for
`
`each” segment file. Id. at 30:38-39 (claim 1), 19:26-27 (claim 9), 20:11-14 (claim 14); ’868
`
`patent at 18:65-67 (claim 1), 19:59-60 (claim 7). But the patent specification makes no reference
`
`to any list of addresses, only playlists for requested media content. See, e.g., id. at 14:56-61; see
`
`also Amd Mir Decl. ¶¶ 45, 55. Nor, indeed, does the specification mention addresses for
`
`segments of files at all. Id.
`
`Accordingly, the terms of the ’802 and ’868 patent claims should be narrowly construed
`
`consistent with what is described in the patent or held indefinite.
`
`III. ARGUMENT
`
`A.
`
`The Terms of the Asserted Claims Must Be Construed in Light of the
`Specification
`
`The Federal Circuit has long emphasized the specification’s important role in claim
`
`construction, noting that the specification usually “is dispositive[,]” as it is “the single best guide
`
`to the meaning of the disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
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`2005). “The best source for understanding a technical term is the specification from which it
`
`arises, informed as needed, by the prosecution history.” Multiform Dessicants, Inc. v. Medzam
`
`Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998). Here, the proper construction of claim terms in the
`
`’802 and ’868 patents turns primarily on the ordinary meaning of the terms as understood by one
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`Netflix’s Opening Claim Construction Brief
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`of ordinary skill in the art in light of the disclosures in the specification. Phillips, 415 F.3d
`
`at 1312-13.
`
`1.
`
`“a media playlist” or “playlist” (’802 patent, cl. 14; ’868 patent, cl. 1)
`
`Netflix’s Proposed Construction
`
`Affinity’s Proposed Construction
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`List of different media files, such as songs or
`videos, to be played sequentially
`
`data that comprises a list of segments of a
`specific media item, such as a song or video
`
`
`Claim 14 of the ’802 patent is directed to a system that facilitates delivery of media and
`
`includes “a media playlist for the available media that includes a network location for a file
`
`representing the given one of the segments and a different network location for a different file
`
`representing the other segment.” ’802 patent at 20:11-15. Claim 1 of the ’868 patent also
`
`requires a “playlist that comprises a list, and the list includes a first URL for a given segment file
`
`and a different URL for the different segment file.” ’868 patent at 18:65-67.
`
`The fundamental dispute highlighted by the parties’ competing constructions is whether a
`
`“playlist” refers to a list of different songs, movies, programs, broadcasts, etc. that a user selects
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`to be played in order (as Netflix proposes), or whether it refers to data that comprises list of
`
`segments that make up a single song, movie, program, or other media item (as Affinity
`
`proposes). A review of the specification resolves this dispute. Netflix’s proposal is the only one
`
`that is consistent with the ordinary meaning of “playlist” and how that term is used throughout
`
`the patents.
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`The term “playlist” is well-understood and commonly used by radio stations (e.g. top 40
`
`playlists) and individuals on their music players (e.g., iTunes, any mp3 players, etc.) as the list of
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`different content selected by a user to be played in a particular or preferred order. Amd Mir
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`Decl. ¶ 43. And that is exactly how “playlist” is used throughout the specification. Id. ¶ 44.
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`Every occurrence of the term refers to a user selecting a list of songs that he or she wants played.
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`’802 patent at 11:18-24 (“stations may include . . . user customized preset information such as
`
`user selected playlists . . . top lists, group playlists, artist-selected lists”), 11:45-56 (“a user may
`
`select a different playlist for every day of the week thereby allowing a user to listen to different
`
`songs on different days of the week”); 14:56-59 (“the method may proceed to step 802 where a
`
`playlist may be created that represents the user’s selected audio information”), 15:4-6 (“[u]pon
`
`obtaining data associated with the customized playlist, the method may proceed to step 804
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`where the user is prompted for a designation for the playlist”); Amd Mir Decl. ¶ 44.
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`Nowhere in the specification is “playlist” used to refer to segment files that make up a
`
`single media item, as Affinity’s proposed construction requires. Id. The ’802 patent does not
`
`even discuss segments that make up a media item, other than to a general reference to the fact
`
`that an audio file “may be formatted, segmented, compressed, modified, etc.” ’802 patent at
`
`3:26-29; Amd Mir Decl. ¶¶ 51-52. There is, however, no mention of how to segment the file,
`
`why one would segment a file, and what is done once the file is segmented. Amd Mir Decl. ¶ 52.
`
`Thus, there is no basis to deviate from the ordinary meaning of playlist. Accordingly, this Court
`
`should reject Affinity’s proposal and adopt Netflix’s construction of “playlist” as “a list of
`
`different media files, such as songs or videos, to be played sequentially.”
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`2.
`
`“to facilitate outputting of the [given/different] segment at a
`[given/different rate]” (’802 patent, cl. 1)/ “to be delivered from the
`media delivery resource at a [given/different] rate” (’802 patent, cl. 9)
`
`Netflix’s Proposed Construction
`
`Affinity’s Proposed Construction
`
`(1) To facilitate transmitting from a server at
`a [given/different] communication rate (claim
`1 of the ’802 patent)
`
`(2) Transmitted from a media delivery
`resource at a [first/different] communication
`rate (claim 9 of the ’802 patent)
`
`[No proposal exchanged]
`
`Independent claims 1 and 9 of the ’802 patent both contain limitations that require
`
`delivering or outputting files that have been formatted for transmission at one communication
`
`rate, and formatted for transmission at a different communications rate. ’802 patent at 18:33-37,
`
`19:16-25. Netflix proposes a construction that clarifies for the trier of fact that “outputting of the
`
`segment” as recited in claim 1 and “to be delivered from the media delivery resource” as recited
`
`in claim 9 both refer to the transmission of media from a server to a receiving electronic device
`
`across different communication lines with different communication rates.
`
`Because Affinity has not proposed a competing construction, it is not clear that Affinity
`
`disputes Netflix’s proposed construction. But it cannot, in any event. The only disclosure in the
`
`patent specification describing transmission or outputting of a media files at different
`
`communication rates is where the specification explains that on occasion, the system may use a
`
`slow communication network to deliver content because a user does not intend to use the
`
`requested media until some later time. ’802 patent at 5:52-65. At other times, the patent explains
`
`that the system may employ “high-speed wireless communication networks” to stream live
`
`broadcasts or similar information. Id. at 5:65-6:5. The patent then explains that a hybrid
`
`approach can be used, where audio information may first be transmitted “via high speed
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`communication until enough information has been wirelessly communicated and buffered,” and
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`then a slower communication speed can be used to transmit any additional information. Id. at
`
`6:5-16. This hybrid approach of using a high speed communication network and then using a
`
`different network with a different, slower communication rate is the only disclosure in the ’802
`
`patent discussing transmission using a different communication rates. Amd Mir Decl. ¶¶ 30, 47.
`
`Thus the problem addressed by the ’802 patent, according to its specification, is solved
`
`by controlling the rate at which data is transmitted from a server. The different communication
`
`rates discussed in the patent do not refer to the rate data is received or played back at the
`
`receiving device. And the patent never explains changing rates in response to network
`
`conditions or processing capabilities. Id. The claims are necessarily limited accordingly.
`
`Therefore, Netflix’s proposal properly construes the limitations to refer to the
`
`transmission of data from a server and the communication links and communication rates used
`
`for that transmission. This Court should construe the claims to mean “transmitting from a server
`
`at a given/different communication rate (using a given/different communication network having
`
`a given/different rate).” Id. ¶ 48.
`
`B.
`
`The Asserted Patent Claims Are Indefinite
`1.
`
`The Words of the Asserted Patent Claims Fail to Inform One of
`Ordinary Skill of the Scope of the Invention1
`
`The Patent Act requires a patent claim to “particularly point[] out and distinctly claim[]
`
`the subject matter which the inventor [] regards as the invention.” 35 U.S.C. §112(b), pre-AIA
`
`
`1 To streamline the claim construction process, Netflix did not include all terms of the ’802 and
`’868 patent that may be disputed in the briefing, but reserves the right to raise them at an
`appropriate time. For example, in addition to the three terms discussed in this Section III.B.1,
`the term “represent” and “representing” as used in claims 1 and 7 of the ’868 patent (i.e.
`“information representing a [playlist/given segment file]” and “a plurality of independent
`segment files that represent an available media”) are also indefinite.
`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`10
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`IPR2017-00122
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`Affinity Labs Ex. 2002-013
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`Case 1:15-cv-00849-RP Document 62 Filed 10/07/16 Page 14 of 30
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`§ 112 ¶ 2. The primary purpose of this requirement is to ensure that the scope of the claims is
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`clear so the public is informed of the boundaries of the invention. Manual of Patent Examining
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`Procedure (“MPEP”) § 2173. Without this requirement, patent applicants would be incentivized
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`to inject ambiguity, resulting in patents that will discourage others to enterprise and experiment
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`for fear of possible infringement claims. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct.
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`2120, 2124 (2014). Thus, the definiteness requirement is meant to eliminate the temptation to
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`use ambiguity to capture activity not properly within the scope of an invention. Id. at 2129. It
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`exists to ensure that the public has clarity as to what conduct will or will not subject it to
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`legitimate claims of infringement. Id.
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`In determining whether claim language meets this requirement, the Federal Circuit
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`previously held that a claim is definite as long as it is “amenable to construction,” invalidating
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`claims only if they are “insolubly ambiguous.” See, e.g., Datamize, LLC v. Plumtree Software,
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`Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Supreme Court in Nautilus overruled
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`application of this “insolubly ambiguous” standard, finding it too amorphous, effectively
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`perpetuating the ambiguity the definiteness requirement is intended to eliminate. Nautilus, 134
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`S.Ct. at 2124, 2130. It instead held that a patent is indefinite “if its claims, read in light of the
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`specification, and the prosecution history, fail to inform, with reasonable certainty, those skilled
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`in the art about the scope of the invention.” Id. at 2124. The Supreme Court held that that the
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`claims, when read in light of the specification and the prosecution history, must provide
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`objective boundaries for those skilled in the art. Id. at 2130 & n.8 (indicating that there is an
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`indefiniteness problem if language “might mean several different things and ‘no informed and
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`confident choice is available among the contending definitions.’”) (citations omitted); see
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`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1366, 1370-71 (Fed. Cir. 2014) (interpreting
`
`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
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`11
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`IPR2017-00122
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`Affinity Labs Ex. 2002-014
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`

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`Case 1:15-cv-00849-RP Document 62 Filed 10/07/16 Page 15 of 30
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`Nautilus “reasonable certainty” definiteness standard to require more than some measurement of
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`scope or the ability to ascribe some meaning to a phrase).
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`Here, Affinity is trying to use ambiguous language to capture technology and innovations
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`outside the scope of the patents and never disclosed by its specification. One of ordinary skill
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`reading the claims would not be informed with reasonable certainty from the patent disclosures
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`what conduct would or would not constitute infringement. Accordingly, the claims should be
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`found indefinite.
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`a.
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`“a plurality of independent segment files” (’802 patent, cl. 1;
`’868 patent, cls. 1 and 7)
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`Netflix’s Proposed Construction
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`Affinity’s Proposed Construction
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`Indefinite
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`[No proposal exchanged]
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`Claim 1 of the ’802 patent requires “organizing an available media into a plurality of
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`independent segment files.” Claims 1 and 7 of the ’868 patent similarly require a “plurality of
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`independent segment files.” The problem is the patents’ specification does not explain what it
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`means to organize media into independent segment files. The only mention of “segment” in the
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`specification is a general one-sentence statement that “an audio file may be formatted,
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`segmented, compressed, modified, etc. for the purpose of providing or communicating the audio
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`file invention.” ’802 patent at 3:26-29; see also Amd Mir Decl. ¶ 51. There is no guidance as to
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`what is meant by “independent” segment files. Amd Mir Decl. ¶¶ 52-53. The patent offers no
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`insight as to what the term “independent” is meant to qualify – “segment” or “files.” Id. ¶ 53.
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`Those reading the patent and its claims are left to guess as to what “independent” segment files
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`mean; whether the segment files are unrelated to each other, whether the files relate to different
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`media content, whether there are several files that each have all the segments, or whether each
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`file has only one segment. Id. Additionally, there is no guidance as to how the claimed
`
`Netflix’s Opening Claim Construction Brief
`Re the ’802 and ’868 Patents
`
`12
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`IPR2017-00122
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`Affinity Labs Ex. 2002-015
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`

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`Case 1:15-cv-00849-RP Document 62 Filed 10/07/16 Page 16 of 30
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`“independent segment files” are created – that is, how they are “segmented” – or stored. Id.
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`¶ 52. Thus, while one of ordinary skill in the art may understand generally that digital media can
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`be segmented, he