Case 2:19-cv-00115-JRG Document 116 Filed 03/31/20 Page 1 of 102 PageID #: 4232
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`SEVEN NETWORKS, LLC,
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`v.
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`APPLE INC.
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`§
`§
`§
`§
`§
`§
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` CASE NO. 2:19-CV-115-JRG
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`CLAIM CONSTRUCTION
`MEMORANDUM AND ORDER
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`Before the Court is the Opening Claim Construction Brief (Dkt. No. 97) filed by Plaintiff
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`SEVEN Networks, LLC (“Plaintiff” or “SEVEN”). Also before the Court are the Responsive
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`Claim Construction Brief (Dkt. No. 100) filed by Defendant Apple Inc. (“Defendant” or “Apple”)
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`as well as Plaintiff’s reply (Dkt. No. 102).
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`The Court held a hearing on March 13, 2020.
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 4
`II. LEGAL PRINCIPLES ........................................................................................................... 4
`III. AGREED TERMS................................................................................................................. 9
`IV. DISPUTED TERMS IN U.S. PATENT NO. 10,110,534 .................................................... 9
`A. “message” ........................................................................................................................... 10
`B. “stored” ............................................................................................................................... 11
`C. “receiving/receive a second connection associated with the second device” ..................... 15
`V. DISPUTED TERMS IN U.S. PATENT NO. 9,516,127 ..................................................... 18
`D. “optimize” Terms ................................................................................................................ 18
`E. “the power save mode is based on a battery level of the mobile device” ........................... 22
`VI. DISPUTED TERMS IN U.S. PATENT NO. 9,603,056 .................................................... 26
`F. “backlight” ........................................................................................................................... 26
`VII. DISPUTED TERMS IN U.S. PATENT NO. 10,091,734 ................................................ 27
`G. “block,” “blocking,” and “blocked” .................................................................................... 27
`VIII. DISPUTED TERMS IN U.S. PATENT NO. 9,438,550 ................................................. 28
`H. “a predetermined amount” .................................................................................................. 28
`I. “application data request” ..................................................................................................... 32
`IX. DISPUTED TERMS IN U.S. PATENT NO. 10,027,619 .................................................. 36
`J. “service activation code” ...................................................................................................... 36
`X. DISPUTED TERMS IN U.S. PATENT NO. 9,473,914 ..................................................... 39
`K. “automatically transmitting” and “automatically transmitted” ........................................... 40
`XI. DISPUTED TERMS IN U.S. PATENTS NO. 10,135,771 AND 9,712,476 ..................... 43
`L. “security association” .......................................................................................................... 43
`M. “token” ............................................................................................................................... 47
`N. “receiving a token issued by an intermediary server” ........................................................ 52
`O. The Preamble of Claims 13 and 23 of the ’476 Patent ....................................................... 55
`XII. DISPUTED TERMS IN U.S. PATENT NO. 9,369,539 .................................................. 60
`P. “delayed for download” ....................................................................................................... 60
`XIII. DISPUTED TERMS IN U.S. PATENTS NO. 9,769,176 AND 10,243,962 .................. 61
`Q. “registration information” ................................................................................................... 62
`XIV. DISPUTED TERMS IN U.S. PATENT NO. 10,039,029 ............................................... 66
`R.
`“a mobile device having an established multiplexed connection for optimizing
`communications” ................................................................................................................ 66
`S. “established multiplexed connection” ................................................................................. 69
`T. “activity session” ................................................................................................................. 74
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`U. “wherein the data is fetched if the fetching is enabled by the user selection for the
`application” ......................................................................................................................... 78
`XV. PROCESSOR TERMS ...................................................................................................... 81
`V. “processor configured” and Similar Terms ......................................................................... 82
`XVI. CONCLUSION ............................................................................................................... 102
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`I. BACKGROUND
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`
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`Plaintiff alleges infringement of United States Patents No. 7,426,730, 9,369,539,
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`9,438,550, 9,473,914, 9,516,127, 9,603,056, 9,608,968, 9,648,557, 9,712,476, 9,712,986,
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`9,769,176, 10,027,619, 10,039,029, 10,091,734, 10,110,534, 10,135,771, and 10,243,962
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`(collectively, “the patents-in-suit”; individually, each patent-in-suit is referred to by its last three
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`digits, such as “the ’730 Patent”). (Dkt. No. 97, Exs. A–P).
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`
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`Herein, the Court addresses the patents-in-suit as to which the parties submit claim
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`construction disputes. The parties note that they submit no disputed terms as to the ’968 Patent
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`and the ’557 Patent. (Dkt. No. 82, Ex. B, at 27.)
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`
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`The Court previously construed disputed terms in the ’127 Patent in SEVEN Networks,
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`LLC v. Google LLC, et al., No. 2:17-CV-442, Dkt. No. 342, 2018 WL 5263271 (E.D. Tex. Oct. 23,
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`2018) (“Google,” also sometimes referred to as “Google/Samsung”).
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`II. LEGAL PRINCIPLES
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`
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`It is understood that “[a] claim in a patent provides the metes and bounds of the right which
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`the patent confers on the patentee to exclude others from making, using or selling the protected
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`invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
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`Claim construction is clearly an issue of law for the court to decide. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
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`
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`“In some cases, however, the district court will need to look beyond the patent’s intrinsic
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`evidence and to consult extrinsic evidence in order to understand, for example, the background
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`science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharm.
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`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
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`subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
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`extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
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`discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”
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`Id. (citing 517 U.S. 370).
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`To ascertain the meaning of claims, courts look to three primary sources: the claims, the
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`specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
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`contain a written description of the invention that enables one of ordinary skill in the art to make
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`and use the invention. Id. A patent’s claims must be read in view of the specification, of which
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`they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
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`which explains the invention and may define terms used in the claims. Id. “One purpose for
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`examining the specification is to determine if the patentee has limited the scope of the claims.”
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`Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
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`
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`Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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`the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
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`Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
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`lexicographer, but any special definition given to a word must be clearly set forth in the
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`specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
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`Although the specification may indicate that certain embodiments are preferred, particular
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`embodiments appearing in the specification will not be read into the claims when the claim
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`language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
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`34 F.3d 1048, 1054 (Fed. Cir. 1994).
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`This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
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`decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
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`the court set forth several guideposts that courts should follow when construing claims. In
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`particular, the court reiterated that “the claims of a patent define the invention to which the patentee
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`is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
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`Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
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`are generally given their ordinary and customary meaning. Id. The ordinary and customary
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`meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
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`inventors are usually persons who are skilled in the field of the invention and that patents are
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`addressed to, and intended to be read by, others skilled in the particular art. Id.
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`Despite the importance of claim terms, Phillips made clear that “the person of ordinary
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`skill in the art is deemed to read the claim term not only in the context of the particular claim in
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`which the disputed term appears, but in the context of the entire patent, including the
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`specification.” Id. Although the claims themselves may provide guidance as to the meaning of
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`particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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`(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
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`the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long
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`ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions
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`of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
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`language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
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`the specification, the Phillips court quoted with approval its earlier observations from Renishaw
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`PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
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`Ultimately, the interpretation to be given a term can only be determined and
`confirmed with a full understanding of what the inventors actually invented and
`intended to envelop with the claim. The construction that stays true to the claim
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`language and most naturally aligns with the patent’s description of the invention
`will be, in the end, the correct construction.
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`Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
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`plays in the claim construction process.
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`
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`The prosecution history also continues to play an important role in claim interpretation.
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`Like the specification, the prosecution history helps to demonstrate how the inventor and the
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`United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
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`the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”
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`it may lack the clarity of the specification and thus be less useful in claim construction proceedings.
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`Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
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`of how the inventor understood the invention and whether the inventor limited the invention during
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`prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
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`Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
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`prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
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`
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`Phillips rejected any claim construction approach that sacrificed the intrinsic record in
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`favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
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`condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
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`(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
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`dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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`Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
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`expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
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`words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
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`Phillips emphasized that the patent system is based on the proposition that the claims cover only
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`the invented subject matter. Id.
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`Phillips does not preclude all uses of dictionaries in claim construction proceedings.
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`Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
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`court emphasized that claim construction issues are not resolved by any magic formula. The court
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`did not impose any particular sequence of steps for a court to follow when it considers disputed
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`claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
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`weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
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`the general rule that the claims measure the scope of the patent grant.
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`The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
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`patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
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`in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 572 U.S. 898, 910, 134 S. Ct. 2120, 2129 (2014). “A determination of claim
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`indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
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`construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.
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`Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by
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`Nautilus, 134 S. Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.”
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`Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
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`In general, prior claim construction proceedings involving the same patents-in-suit are
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`“entitled to reasoned deference under the broad principals of stare decisis and the goals articulated
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`by the Supreme Court in Markman, even though stare decisis may not be applicable per se.”
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`Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D.
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`Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Intuit Inc., No. 2:12-CV-180, 2014
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`WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim constructions in
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`cases involving the same patent are entitled to substantial weight, and the Court has determined
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`that it will not depart from those constructions absent a strong reason for doing so.”); see also
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`Teva, 135 S. Ct. at 839–40 (“prior cases will sometimes be binding because of issue preclusion
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`and sometimes will serve as persuasive authority”) (citation omitted); Finisar Corp. v. DirecTV
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`Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the importance of uniformity in the
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`treatment of a given patent”) (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 390
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`(1996)).
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`III. AGREED TERMS
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`
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`In their December 20, 2019 P.R. 4-3 Joint Claim Construction and Prehearing Statement
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`(Dkt. No. 82, Ex. A) and in their March 2, 2020 Joint Claim Construction Chart Pursuant to P.R. 4-
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`5(d) (Dkt. No. 104-1, at 40, 66 & 85), the parties submitted the following agreements:
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`Term
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`“is send”
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`(’176 Patent, Claims 1, 14)
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`“connectivity rule”
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`(’557 Patent, Claims 1, 14)
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`“remote device”
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`(’619 Patent, Claims 22, 37, 51)
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`Agreed Construction
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`“is sent”
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`“rule regarding connecting to a network”
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`“a computing device that is physically distinct
`from the claimed device”
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`IV. DISPUTED TERMS IN U.S. PATENT NO. 10,110,534
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`The ’534 Patent, titled “Connection Architecture for a Mobile Network,” issued on October
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`23, 2018, and bears an earliest priority date of January 8, 2002. The Abstract of the ’534 Patent
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`states:
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`A mobile device for accessing content stored on a remote server over a mobile
`network includes a processor configured to direct the mobile device to send a
`request directing a management server to initiate a transaction.
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`A. “message”
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`Plaintiff’s Proposed Construction
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`Defendant’s Proposed Construction
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`“communication”
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`“communication containing content from a
`user, such as email data, calendar data, contact
`information data,
`task data, notes data,
`electronic document data, user file data or any
`other type of data from a user”
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`(Dkt. No. 82, Ex. B, at 52; Dkt. No. 97, at 1.) The parties submit that this term appears in Claims
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`1, 2, 6, 10, 11, 12, 16, and 20 of the ’534 Patent. (Dkt. No. 82, Ex. B, at 52.)
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`
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`Plaintiff argues that Defendant’s proposal contradicts the specification and the claims.
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`(Dkt. No. 97, at 1–2.) For example, Plaintiff cites Claim 1 and argues that “[a] simple message
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`comprising a data query is not user content, such as email data or calendar data, as improperly
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`required by Apple’s construction.” (Id., at 2.) Plaintiff also argues claim differentiation as to
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`Claim 2. (Id.)
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`Defendant responds that “[i]n an effort to narrow disputes, Apple is no longer seeking
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`construction of ‘message.’” (Dkt. No. 100, at 37.) Plaintiff’s reply brief does not address this
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`term. (See Dkt. No. 102.) At the March 13, 2020 hearing, the parties presented no oral arguments
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`as to this term.
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`Because Defendant no longer requests construction of this term, and because the parties’
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`proposed constructions reflect agreement that a “message” is a “communication,” the Court hereby
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`construes “message” to mean “communication.”
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`B. “stored”
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`Plaintiff’s Proposed Construction
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`Defendant’s Proposed Construction
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`Plain and ordinary meaning; to the extent
`construction is necessary “placed or retained in
`a device”
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`Plain and ordinary meaning, which is “placed
`or retained in a device for potential future
`use”1
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`(Dkt. No. 82, Ex. B, at 51; Dkt. No. 97, at 3; Dkt. No. 100, at 36; Dkt. No. 104-1, at 2.) The parties
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`submit that this term appears in Claims 1 and 11. (Id.)
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`(1) The Parties’ Positions
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`Plaintiff argues that “stored” “is a well-understood term that needs no construction,” and
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`“[t]o the extent the Court construes this term, only SEVEN’s construction is consistent with the
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`plain and ordinary meaning of ‘stored’ as shown by multiple technical dictionaries, including those
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`cited by Apple.” (Dkt. No. 97, at 3.) Plaintiff argues that the general-purpose dictionaries cited
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`by Defendant do not define “stored” in the relevant technical context. (Id., at 5.) Plaintiff submits
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`that “SEVEN’s construction is also consistent with the intrinsic evidence.” (Id., at 4.)
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`Defendant responds that its proposed construction is supported by contemporaneous
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`dictionary definitions as well as by surrounding claim language, which recites storing the data so
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`that a device can later send a query for that stored data. (Dkt. No. 100, at 36–37.) Defendant also
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`submits that “Apple’s construction does not require that the stored data is actually used, only that
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`it is stored for use in the future.” (Id., at 37.)
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`Plaintiff replies that “[i]f construction is necessary, adding ‘for potential future use’ is
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`vague and unnecessary.” (Dkt. No. 102, at 1.) Plaintiff also argues: “In IPRs [(Inter Partes
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`Reviews)], Apple argues data can be ‘temporarily’ stored, but here Apple argues that data that
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`1 Defendant previously proposed: “Plain and ordinary meaning, which is ‘to leave or keep for
`future use.’” (Dkt. No. 82, Ex. B, at 51.)
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`‘momentarily passes through the phone’s camera’ is not stored. Apple’s arbitrary temporary
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`versus momentary distinction has no support.” (Id. (citations omitted).)
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`At the March 13, 2020 hearing, the parties presented no oral arguments as to this term.
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`(2) Analysis
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`As a threshold matter, Plaintiff cites constructions of the term “stored” in other patents,2
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`but “claims of unrelated patents must be construed separately.” e.Digital Corp. v. Futurewei
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`Techs., Inc., 772 F.3d 723, 727 (Fed. Cir. 2014). The other constructions cited by Plaintiff are
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`therefore of limited, if any, persuasive value in the present case.
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`
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`Claim 1 of the ’534 Patent, for example, recites (emphasis added):
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`1. A server that manages transactions between first and second devices, the server
`comprising:
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`a communication interface;
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`a processor communicatively coupled to the communication interface; and
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`a memory communicatively coupled to the processor, the memory
`containing instructions executable by the processor, whereby the server is operable
`to:
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`receive a first connection associated with a first device;
`receive a first message from the first device over the first
`connection;
`generate a second message for a second device based on the
`first message from the first device;
`send the second message to the second device;
`receive a second connection associated with the second
`device, wherein
`the first connection
`includes a
`connection that is initiated by the first device, wherein
`the second connection includes a connection that is
`initiated by the second device;
`receive a third message from the second device, wherein the
`third message is generated by the second device in
`response to receipt of the second message, wherein the
`third message contains a latest version of data stored at
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`2 See Positive Techs. Inc. v. Toshiba Am. Consumer Prods., LLC, No. 2:07-CV-67, 2008 WL
`2627687, at *5 (E.D. Tex. July 1, 2008) (“‘storing’ recites a well-understood function to one of
`skill in the art”); see also Fisher-Rosemount Sys., Inc. v. Invensys Sys., Inc., No. A–13–CA–587–
`SS, 2015 WL 1275910, at *9 (W.D. Tex. Mar. 19, 2015) (“Invensys concedes ‘storing an
`indication’ has a well-understood meaning to a person of ordinary skill in the art.”).
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`the second device and wherein the first message
`comprises a data query that is transmitted from the first
`device for the latest version of the data stored at the
`second device;
`generate a fourth message, wherein the fourth message
`includes data from the third message; and
`send the fourth message to the first device over the first
`connection.
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`The recital of a “data query” for the “latest version of the data stored” suggests that “stored”
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`
`
`data can be subsequently retrieved. The other independent claim here at issue, Claim 11 of the
`
`’534 Patent, is similar in this regard. The specification discloses that “Fig. 5 is a block diagram
`
`showing how data is stored in a mobile device,” and “[t]he mobile client 98 can store the last
`
`received contact list portion 112 in memory 100,” and “when the mobile device 21 goes off-line,
`
`a user is still able to view the latest information received from personal client 40.” ’534 Patent at
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`2:19–20 & 7:36–44 (emphasis added).
`
`
`
`The parties cite various dictionary definitions, such as technical dictionaries that define
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`“store” as follows:
`
`store (A) A device into which data can be placed, in which they can be retained,
`and from which they can be retrieved. Note: This term is the equivalent of the term
`storage in British (U.K.) usage. (B) To place data into a device as in definition (A).
`(C) To retain data in a device as in definition (A).
`
`(Dkt. No. 97, Ex. S, The Authoritative Dictionary of IEEE Standards Terms 1113 (7th ed. 2000)
`
`(emphasis modified).)
`
`store — 1. To retain information in a device from which the information can later
`be withdrawn. 2. To introduce information into the device in (1) above.
`3. A British synonym for storage.
`
`(Id., Ex. T, Modern Dictionary of Electronics 739 (7th ed. 1999).)
`
`
`
`The parties also discuss a general-purpose dictionary that defines “store” as a verb as
`
`meaning “to place or leave in a location (as a warehouse, or library, or computer memory) for
`
`
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`preservation or later use or disposal” and as a noun as meaning “something that is stored or kept
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`for future use.” (Id., Ex. W, Merriam-Webster’s Collegiate Dictionary 1156 (10th ed. 2002); see
`
`id., Ex. X, The New Oxford American Dictionary 1679 (2001) (“a place where things are kept for
`
`future use or sale: [e.g.,] a grain store”) (emphasis omitted).)
`
`
`
`Thus, Defendant’s proposed interpretation is largely consistent with the above-discussed
`
`claim language, specification disclosures, and the technical and general-purpose dictionary
`
`definitions cited by the parties. The Amgen case cited by Plaintiff does not compel otherwise. See
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`Amgen Inc. v. Sandoz, No. 14-CV-04741-RS, 2016 WL 4137563, at *9–*10 (N.D. Cal. Aug. 4,
`
`2016) (rejecting proposal of “for purposes of stem cell mobilization” because “there is no textual
`
`basis to import a purpose limitation into the claim”). Likewise, Plaintiff fails to show why the
`
`absence of any proposed construction from Defendant in an IPR proceeding precludes Defendant
`
`from arguing for a construction in the present litigation. (See Dkt. No. 97, Ex. R, Petition for Inter
`
`Partes Review of United States Patent No. 10,110,534, at 5–7.)
`
`
`
`Nonetheless, Defendant’s proposal of “potential future use” is potentially confusing, as
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`demonstrated for example by Plaintiff’s concern that Defendant’s proposal might exclude data that
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`is “temporarily stored.” (See Dkt. No. 97, at 4–5.) Defendant submits that its proposed
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`construction “does not impose a time limit; temporarily storing information is still storing the
`
`information.” (Dkt. No. 100, at 37.) To minimize confusion, however, instead of referring to
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`potential use, the construction should instead focus on the manner of storing, explaining that the
`
`manner of storing facilitates future retrieval.
`
`
`
`The Court therefore hereby construes “stored” to mean “placed or retained in a device
`
`in a manner that facilitates future retrieval.”
`
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`C. “receiving/receive a second connection associated with the second device”
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`Plaintiff’s Proposed Construction
`
`Defendant’s Proposed Construction
`
`that
`The claims require an order such
`“receive/receiving
`a
`second
`connection
`associated with the second device” is after
`“generating a second message for a second
`device…” and “send/sending
`the second
`message to the second device”
`
`Plain and ordinary meaning, which is “receive
`a second connection, where that second
`connection is associated with the second
`device”
`
`
`(Dkt. No. 82, Ex. B, at 52–53; see Dkt. No. 97, at 5; Dkt. No. 100, at 38; see Dkt. No. 104-1, at 2
`
`& 4.) The parties submit that this term appears in Claims 1 and 11 of the ’534 Patent. (Id.)
`
`
`
`
`
`(1) The Parties’ Positions
`
`Plaintiff argues that antecedent basis relationships in these claims require an ordering and,
`
`moreover, “the ’534 specification is also consistent with the ordering of these elements.” (Dkt.
`
`No. 97, at 6.)
`
`
`
`Defendant responds that “[o]n their face, the claims here do not require the specific
`
`ordering SEVEN contends.” (Dkt. No. 100, at 38.) “Apple agrees that the fourth step must occur
`
`after the third step, because the claimed server device cannot ‘send’ the second message until it
`
`has ‘generate[d]’ the second message. In contrast, while the fifth step could occur after [the] fourth
`
`step, nothing in the claims or patent require or even suggest that sequence.” (Id., at 39.)
`
`
`
`Plaintiff replies that antecedent basis as well as the plain language of the claims require an
`
`order. (See Dkt. No. 102, at 1–2.)
`
`
`
`
`
`
`
`At the March 13, 2020 hearing, the parties presented no oral arguments as to this term.
`
`(2) Analysis
`
`“As a general rule, ‘[u]nless the steps of a method [claim] actually recite an order, the steps
`
`are not ordinarily construed to require one.’” Mformation Techs., Inc. v. Research in Motion Ltd.,
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`764 F.3d 1392, 1398 (Fed. Cir. 2014) (quoting Interactive Gift Express, Inc. v. Compuserve, Inc.,
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`256 F.3d 1323, 134