Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 1 of 14 PageID #: 2816
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`Plaintiffs,
`
`
`
`UNILOC USA, INC., et al,
`
`
`
`
`
`
`v.
`
`
`AVAYA INC.,
`CISCO SYSTEMS, INC.,
`SHORETEL, INC.,
`HUAWEI ENTERPRISE USA, INC.,
`NEC CORPORATION OF AMERICA,
`UNIFY INC.,
`FACEBOOK, INC.,
`VIBER MEDIA S.A.R.L.,
`WHATSAPP INC.,
`OOVOO, LLC,
`TANGOME, INC. d/b/a TANGO,
`
`
`
`
`
`Defendants.
`
`§
`§
`§ Case No. 6:15-cv-01168-JRG
`§ LEAD CASE
`§
`§
`§
`§ Case No. 6:15-cv-01175-JRG
`§ Case No. 6:15-cv-01169-JRG
`§ Case No. 6:16-cv-00099-JRG
`§ Case No. 6:16-cv-00100-JRG
`§ Case No. 6:16-cv-00101-JRG
`§ Case No. 6:16-cv-00223-JRG
`§ Case No. 6:16-cv-00224-JRG
`§ Case No. 6:16-cv-00225-JRG
`§ Case No. 6:16-cv-00324-JRG
`§ Case No. 6:16-cv-00380-JRG
`§
`§
`
`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF
`
`GOOGLE EXHIBIT 1021
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`Page 1 of 14
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`

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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 2 of 14 PageID #: 2817
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`I.
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`DISPUTED TERMS AND PHRASES ............................................................................... 1
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`TABLE OF CONTENTS
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
`
`H.
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`“voice over internet protocol” / “VOIP” ................................................................. 1
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`“publicly switched telephone network” / “PSTN”.................................................. 3
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`“conference call server” .......................................................................................... 3
`
`“application sharing capability” .............................................................................. 4
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`“cellular communications path” .............................................................................. 5
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`“without requiring registration with a conference call server for
`establishing the voice communication by the potential members including
`the first party and the at least one other party” ....................................................... 6
`
`“instant messaging (IM)” ........................................................................................ 7
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`“said display for the first party” .............................................................................. 9
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`II.
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`CONCLUSION ................................................................................................................. 10
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`
`
`
`
`
`
`i
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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 3 of 14 PageID #: 2818
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`TABLE OF AUTHORITIES
`
`Cases
`
`Atlas IP, LLC v. Medtronic, Inc.,
`809 F.3d 599 (Fed. Cir 2016) ..................................................................................................... 9
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) .................................................................................................... 2
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) .................................................................................................. 7
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014) ................................................................................................ 10
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120, 189 L. Ed. 2d 37 (2014) ................................................................................ 10
`
`NCube Corp. v. Seachange Int’l. Inc.,
`436 F.3d 1317 (Fed. Cir. 2006) .................................................................................................. 5
`
`Novo Indus., L.P. v. Micro Molds Corp.,
`350 F.3d 1348 (Fed. Cir. 2003) .................................................................................................. 9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................................... 2, 3, 6
`
`Sulzer Textil AG v. Picanol NV,
`358 F.3d 1356 (Fed. Cir. 2004) .................................................................................................. 4
`
`Telemac Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316 (Fed. Cir. 2001) .................................................................................................. 8
`
`Trebro Mfg., Inc. v. Firefly Equip., LLC,
`748 F.3d 1159 (Fed. Cir. 2014) .................................................................................................. 8
`
`Webzero, LLC v. ClicVU, Inc.,
`392 Fed. Appx. 863 (Fed. Cir. 2010) ......................................................................................... 9
`
`
`
`
`
`ii
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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 4 of 14 PageID #: 2819
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`Plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A. (together “Uniloc”),
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`respectfully submit this reply claim construction brief pursuant to P.R. 4-5(c). All citations to
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`Exhibits herein that are not associated with Docket Numbers are to the Exhibits attached to the
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`accompanying Declaration of Aaron S. Jacobs in Support of Plaintiff’s Reply Claim
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`Construction Brief (“Jacobs Reply Decl.”). The exhibit and paragraph numbering of the Jacobs
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`Reply Declaration resume from their respective numbers in Dkt. No. 144-1 (Jacobs Decl.).
`
`I.
`
`DISPUTED TERMS AND PHRASES
`
`A.
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`“voice over internet protocol” / “VOIP”
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`As an initial matter, Defendants allege they “originally proposed that this term not be
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`construed, [but] Defendants provided an explicit construction after receiving Plaintiff’s overly
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`broad proposal.” Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 11. This is, at best, a stretch.
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`The parties exchanged their P.R. 4-2(a) disclosures on October 4, 2016. Uniloc’s construction
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`was as it is now: “The use of the Internet Protocol (IP) for transmitting voice communications.”
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`Ex. 7 (Pls.’ P.R. 4-2 Statement) at 2. Defendants’ construction was: “No construction
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`necessary.” Ex. 8 (Defs.’ P.R. 4-2 Statement) at 3. Defendants’ counsel e-mailed Uniloc’s
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`counsel on October 12, 2016, to propose a call to discuss the constructions. Ex. 9 (Oct. 12, 2016
`
`e-mail from Defendants’ counsel). This e-mail did not suggest another definition. The parties’
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`counsel then met and conferred by telephone on October 14, 2016. And, in fact, the parties’
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`counsel managed to agree on several definitions. Jacobs Reply Decl. ¶ 14. However,
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`Defendants did not suggest that they intended to change their interpretation of the VOIP term;
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`rather, they reiterated that they simply did not believe it needed to be construed. Id. ¶ 15. It was
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`not until Defendants sent their P.R. 4-3 Claim Construction Chart for filing at 9:10 p.m. on
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`October 21, 2016—the day it was due—that they slipped in their new construction. Id. ¶ 17; Ex.
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`
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`1
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`10 (Oct. 21, 2016 e-mail from Defendants’ counsel). This was untimely and, as a result, their
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`construction should be rejected.
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`Turning to the substance, Uniloc relies upon the specification, while Defendants rely
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`exclusively on extrinsic evidence. See Dkt. No. 144 (Uniloc’s Opening Claim Constr. Br.) at
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`Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 11-12; see also Ex. 10 (Oct. 21 e-mail from
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`Defendants’ counsel) (“[We] added dictionary meanings for PSTN and VOIP, rather than
`
`leaving them as plain meaning.”). As the inventor defined the term within the four corners of the
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`patent, it would be improper to rely upon extrinsic evidence to change the intended meaning.
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`See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1317 (Fed. Cir. 2005); C.R. Bard, Inc. v.
`
`U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004).
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`Worse still, Defendants suggest that the phrase “conference call connection utilizes a
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`voice over internet protocol communications path” of claim 6—in which the disputed term is
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`found—requires that the only path that may be used is VOIP. See Dkt. No. 147 (Defs.’ Resp.
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`Claim Const. Br.) at 12 (“Under Plaintiffs’ proposal, VOIP would encompass voice
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`communications over any type of network, so long as the internet protocol is in some way used
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`in the transmission.”) (emphasis in original); see also id. at 13 (discussing “PSTN”); 13-14
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`(discussing “cellular communications path”). Contrary to Defendants’ argument, the
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`specification makes readily evident that communications may pass from one sort of carrier to
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`another. In fact, a passage quoted by Defendants explains that the invention “create[s] the ability
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`for instant messaging users to immediately create any combination of PSTN, Cellular and VOIP
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`conference calls between users of some who may be in instant messaging sessions . . . .” See Dkt.
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`
`
`2
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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 6 of 14 PageID #: 2821
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`No. 147 at 13 (quoting Ex. 1 (‘948 patent) at 4:13-16).1 As a result, the Court should adopt
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`Uniloc’s construction.
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`B.
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`“publicly switched telephone network” / “PSTN”
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`The procedural and substantive errors Defendants made with respect to “VOIP” are
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`repeated with “PSTN.” Once again, Defendants proposed “No construction necessary.”
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`Defendants did not suggest any alternative construction by e-mail or during the meet-and-confer
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`telephone conference. Rather, Defendants only slipped in their construction at the last minute.
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`Jacobs Reply Decl. ¶¶ 14-17. Once again, Uniloc relies exclusively upon the intrinsic evidence,
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`Dkt. No. 144 (Uniloc’s Opening Claim Constr. Br.) at 7; while Defendants improperly attempt to
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`bring in extrinsic evidence, Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 12-13. As a result,
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`Defendants’ proposed construction should be rejected. Phillips, 415 F.3d at 1316 (“The
`
`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.”).
`
`C.
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`“conference call server”
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`Uniloc’s proposed construction is consistent with the intrinsic and extrinsic evidence. It
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`is also nearly identical to this Court’s preliminary claim construction from the Genband
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`litigation: “computer or software that initiates or requests initiation of a conference call.” Dkt.
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`No. 147-13 (Genband preliminary claim constructions) at 2; compare id. with Dkt. No. 144
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`(Pls.’s Opening Claim Constr. Br.) at 8 (“computer or program that facilitates the establishment
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`of a the conference call.”). Indeed, Uniloc is willing to adopt the Court’s preliminary
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`construction, insofar as there do not appear to be any meaningful differences as compared with
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`Uniloc’s proposed construction.
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`
`1 All emphasis herein is added unless otherwise noted.
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`
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`3
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`In contrast, Defendants’ proposed construction is internally inconsistent and belied by
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`their own evidence. To start, Defendants admit that “the Field of Invention . . . make[s] clear
`
`that the conference call server initiates the call directly or indirectly.” Dkt. No. 147 (Defs.’
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`Resp. Claim Const. Br.) at 7 (emphasis in original) (citing and quoting several instances where
`
`the specification states “directly or indirectly”). Nonetheless, Defendants’ proposed construction
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`would require that the “conference call server” be the “central server that communicates
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`parameters for the conference call and directly or indirectly initiates the conference call itself.”
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`Id. at 6. The word “itself” renders the construction unintelligible. With all due respect,
`
`suggesting that a thing can do something “directly or indirectly” by “itself” is nonsense—how
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`does a server indirectly initiate a conference call itself? Neither would this proposed ambiguous
`
`construction assist the jury. Cf. Sulzer Textil AG v. Picanol NV, 358 F.3d 1356, 1366 (Fed. Cir.
`
`2004) (noting that a construction should be such that it “can be understood and given effect by
`
`the jury”). As a result, Defendants’ proposed construction should be rejected.
`
`Finally, as the Court’s preliminary construction recognized, a conference call server may
`
`be either hardware or a program/software that initiates (or requests initiation of) a conference
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`call. See Dkt. No. 147-13 (Genband preliminary claim constructions) at 2; see also Dkt. No.
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`144-6 (Microsoft Dictionary) (defining server as “a computer or program that responds to
`
`commands”). As such, the Court should adopt Uniloc’s construction or, alternatively, the
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`Court’s prior preliminary construction.
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`D.
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`“application sharing capability”
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`To the extent Defendants agree that Uniloc’s construction and examples are encompassed
`
`within Defendants’ construction, Uniloc is willing to adopt Defendants’ Construction.2
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`2 During the meet and confer process, Defendants inferred that their construction would not
`encompass, e.g., a cloud-based device. Their Responsive Brief, however, states otherwise.
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`4
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`E.
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`“cellular communications path”
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`As with Defendants’ efforts to limit “VOIP” and “PSTN” to paths that only use those
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`methods of communications, Defendants argue that a connection over a “cellular
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`communications path” must take place entirely by way of cellular communications. This
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`argument is as illogical as before. As this Court recognized in its preliminary construction in
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`Genband, when the claims refer to a connection that “utilizes a cellular communications path,”
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`the patentee intended this phrase to mean “utilizes at least a cellular communications path.” Dkt.
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`No. 147-13 (Genband preliminary claim constructions) at 2.
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`Defendants erroneously argue as follows:
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`The term is included in dependent claims in the ʼ948 and ʼ000 patents, clearly
`intended to limit the scope of the independent claims on which they depend. . . .
`To the extent that multiple types of communications paths are covered by the
`claims—as Plaintiffs’ seek to add in their construction of these dependent
`claims—they are covered by the independent claims on which the “cellular
`communications path” claims depend. Claim differentiation prohibits Plaintiffs
`from broadening these dependent claims in this manner.
`
`Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 13-14. Thus, according to Defendants, if an
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`independent claim allows “multiple types of communications paths,” then “utilizes a cellular
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`communications path” in a dependent claim must mean that the communications path must be
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`only cellular. But that is not true as a matter of simple logic: The independent claim would be
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`infringed, for example, by a system that uses PSTN and VOIP, while the dependent claim would
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`not—it requires at least the addition of a cellular communications path somewhere in the system.
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`Defendants’ argument is also legally erroneous because they are attempting to have the Court
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`impermissibly read limitations from one claim into another. See, e.g., NCube Corp. v.
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`Seachange Int’l. Inc., 436 F.3d 1317, 1322 (Fed. Cir. 2006) (rejecting defendants’ attempt to
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`“impermissibly read the ‘virtual connection’ limitation of claim 2 into claim 1”); Phillips, 415
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`
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`5
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`F.3d at 1314-15 (“[T]he presence of a dependent claim that adds a particular limitation gives rise
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`to a presumption that the limitation in question is not present in the independent claim.”). As a
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`result, the Court should adopt Uniloc’s construction.
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`F.
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`“without requiring registration with a conference call server for establishing
`the voice communication by the potential members including the first party
`and the at least one other party”
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`Defendants’ back-door effort to construe “registration” fails in light of the very evidence
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`they cite. In particular, defendants cite to and quote from the May 22, 2012 Amendment from
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`the prosecution history of the ’194 patent. See Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at
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`16 (citing and quoting Defendants’ Exhibit 4 (Dkt. No. 147-5) at 8-9). In that Amendment,
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`however, the applicant explained:
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`Applicant’s amended independent claim 103 [now claim 1 of the ’194 patent]
`displays an option for the first party to automatically initiate voice communication
`between the current participants of the IM session without requiring prior
`registration by potential members. That is, current participants of the IM session
`(or other potential members) need not have registered, e.g., with the IM session
`or with any group associated therewith, in order to be potential members for the
`voice communication.
`
`Dkt. No. 147-5 (’194 Patent Prosecution History, Amendment (May 12, 2012)) (underlined
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`emphasis by the applicant; italicized emphasis added). As is clear from the above passage, the
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`“registration” at issue is “for the voice communication.” Indeed, as the claim plainly states, the
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`registration which may not be required is “for establishing the voice communication.” Dkt. No.
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`144-4 (’194 Patent) claim 1. The claim is thus silent with respect to registration for the IM
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`session. And, indeed, if someone is a “current participant” of an IM session, then that individual
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`must have provided at least some information to the IM system, including at least a user name
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`and presumably a password or other credentials. This basic information is distinguished by the
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`applicant from the concept of “registration,” as the applicant explained that “current participants
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`6
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`of the IM session (or other potential members) need not have registered, e.g., with the IM session
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`or with any group associated therewith, in order to be potential members for the voice
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`communication.” As such, registration must mean the information used to contact the group
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`members, i.e., their addresses.
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`Defendants’ effort to apply temporal limitation “before, during or after” into the claims is
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`equally impermissible and ignores the claim language. After all, claim states “without requiring
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`registration with a conference call server for establishing the voice communication.” The phrase
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`“for establishing the voice communication” clearly indicates that the registration which may not
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`be required is “done prior to the claimed initiating of the voice communication.” Dkt. No. 147-
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`10 (’194 Patent Prosecution History, Amendment (Apr. 3, 2013)) at 8.
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`G.
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`“instant messaging (IM)”
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`Defendants’ arguments regarding the phrase “instant messaging” miss the point and are
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`internally inconsistent. Defendants inaccurately assert that “Plaintiffs effectively admit that only
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`Defendants’ constructions give meaning to both the words ‘instant’ and ‘messaging.’” Dkt. No.
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`147 (Defs.’ Resp. Claim Const. Br.) at 21. That a distinct phrase is made up of individual words
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`does not mean that each word must be defined in isolation. For example, if one had to construe
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`the term “cotton candy” and were to break it down as Defendants apparently insist, the result
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`would be the rather untasty and entirely incorrect “candy made out of cotton.” So too with
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`“instant messaging,” it is not simply “messaging that is instant.”
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`Defendants also miss their own point when they allege that the surrounding language
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`supports their position that the “word ‘instant’ in ‘instant messaging’ requires it to be in ‘real-
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`time.’” Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 21 (citing Innova/Pure Water, Inc. v.
`
`Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“While not an absolute
`
`rule, all claim terms are presumed to have meaning in a claim.”)). If “instant messaging”
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`7
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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 11 of 14 PageID #: 2826
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`requires a current, “real-time” connection between users as argued by Defendants, then other
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`terms such as “current participants’ and “communicability connected” in the same limitations
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`would be rendered redundant. Such a construction would be legally erroneous. See, e.g., Trebro
`
`Mfg., Inc. v. Firefly Equip., LLC, 748 F.3d 1159, 1167 (Fed. Cir. 2014); Telemac Cellular Corp.
`
`v. Topp Telecom, Inc., 247 F.3d 1316, 1325 (Fed. Cir. 2001) (“Telemac’s reading of ‘selectively
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`establishing,’ as encompassing a confidential communication protocol, ignores the remainder of
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`the claim identifying the host processor as the device that initiates the communication. Thus, we
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`conclude that Telemac’s proposed construction, encompassing manually initiated
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`communications, would render the phrase ‘for selectively establishing a communication link
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`with each mobile phone unit’ mere surplusage. Accordingly, we reject Telemac’s proposed
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`interpretation of that language.”). Nonetheless, Defendants argue:
`
`Surrounding claim language reciting an “IM session” involving “current
`participants”
`that are “communicably connected” also confirms “instant
`messaging” must be a “dialogue”/”connection” between the users in “realtime.”
`Or else there could be no “session,” and the participants would not be “current”
`and “communicably connected.”
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`Id. at 21-22. If the phrase “instant messaging” includes (per Defendants’ construction) “a real-
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`time messaging connection between multiple users,” then much of the phrase “a plurality of
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`potential targets then being connected to said instant messaging service and participating in a
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`given instant messaging session” would be repetitive and redundant.3 On the other hand,
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`3 Defendants repeat their mistake when they allege:
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`[T]he whole point of the alleged invention [is to] enabl[e] multiple users currently
`engaged in an active, i.e. “real-time,” IM session to launch a conference call so
`the users can talk, rather than continuing to type back and forth. This is only
`possible if the users are on-line as “current participants” in “instant messaging”
`that is “real-time.”
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`
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`8
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`Uniloc’s construction gives full meaning to the phrase “instant messaging” while still allowing
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`other phrases such as “then being connected to” and “participating in” to have their own
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`meanings. Under this correct construction, an instant message may be sent to someone who is
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`temporarily off line to be retrieved when the user reconnects to the system.
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`H.
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`“said display for the first party”
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`Defendants’ argument with respect to claim 4 comes down to the assertion that the Court
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`must guess at what it means. See Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 28-29. For
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`example, they cite to and quote from Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348,
`
`1357-48 (Fed. Cir. 2003), for the proposition that it is “reversible error when ‘in order to make
`
`sense out of the patent, the district court was required to guess as to what was intended’ by a
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`claim amendment.” Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 28. But, as Uniloc laid out
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`in its Opening Brief, there is no need for guesswork here: The applicant always and obviously
`
`intended that the antecedent basis for “said display for the first party” was “display for the first
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`party an option to automatically initiate voice communication between the current participants of
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`the IM session . . . .” See Dkt. No. 144 (Uniloc’s Opening Claim Constr. Br.) 23-25; see, e.g.,
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`Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599, 605 (Fed. Cir 2016) (“[T]he specification
`
`particularly, but also the prosecution history, informs the determination of claim meaning in
`
`context, including by resolving ambiguities”); Webzero, LLC v. ClicVU, Inc., 392 Fed. Appx.
`
`863, 867 (Fed. Cir. 2010) (“[A]ny ambiguity in the text of that limitation is resolved by reference
`
`to the prosecution history . . . .”). A person having ordinary skill in the art would read the
`
`
`Dkt. No. 147 (Defs.’ Resp. Claim Const. Br.) at 24 (citation omitted). It is certainly true that a
`key component of the invention is to facilitate a conference call between, e.g., “the first party and
`the at least one other party being current participants to an IM session.” Ex. 3 (’194 patent) at
`claim 1. However, if the Court were to adopt Defendants’ construction, the phrases “current
`participants” and “IM session” would appear to be repetitive of “IM.”
`
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`prosecution history and know the antecedent basis for this term, and so it is not indefinite.
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`Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1369-70 (Fed. Cir. 2014) (“A claim fails to
`
`satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read
`
`in light of the specification and the prosecution history, ‘fail[s] to inform, with
`
`reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting
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`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124, 189 L. Ed. 2d 37 (2014)).
`
`II.
`
`CONCLUSION
`
`For the reasons set forth above and as discussed in Uniloc’s Opening Claim Construction
`
`Brief, Uniloc requests that the Court adopt Uniloc’s proposed claim constructions.
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`
`
`Date: December 23, 2016
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`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
`By: /s/ Aaron S. Jacobs
`Paul J. Hayes
`Kevin Gannon
`Aaron S. Jacobs
`CESARI AND MCKENNA, LLP
`88 Black Falcon Avenue
`Boston, MA 02210
`Tel: (617) 951-2500
`Fax: (617) 951-3927
`Email: pjh@c-m.com
`Email: kgannon@c-m.com
`Email: ajacobs@c-m.com
`
`Craig Tadlock
`State Bar No. 00791766
`John J. Harvey, Jr.
`State Bar No. 09179770
`TADLOCK LAW FIRM PLLC
`2701 Dallas Parkway, Suite 360
`Plano, TX 75093
`Tel: (903) 730-6789
`Email: craig@tadlocklawfirm.com
`Email: john@tadlocklawfirm.com
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`Attorneys for PLAINTIFFS
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`Case 6:15-cv-01168-JRG Document 149 Filed 12/23/16 Page 14 of 14 PageID #: 2829
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
`being served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-
`5(a)(3) on December 23, 2016
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`/s/ Aaron S. Jacobs
`Aaron S. Jacobs
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