Case 2:18-cv-00053-JRG Document 111 Filed 04/15/19 Page 1 of 36 PageID #: 2395
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`IMPLICIT, LLC,
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`v.
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`NETSCOUT SYSTEMS, INC., et al.
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`§
`§
`§
`§
`§
`§
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` CASE NO. 2:18-CV-53-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. 89) filed by Plaintiff
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`Implicit, LLC (“Plaintiff” or “Implicit”). Also before the Court are Defendants NetScout Systems,
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`Inc. and Sandvine Corp.’s (“Defendants’”) Responsive Claim Construction Brief (Dkt. No. 93)
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`and Plaintiff’s reply (Dkt. No. 96).
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`The Court held a claim construction hearing on April 11, 2019.
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`Table of Contents
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`I. BACKGROUND ....................................................................................................................... 2
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`II. LEGAL PRINCIPLES ........................................................................................................... 3
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`III. AGREED TERMS................................................................................................................. 7
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`IV. DISPUTED TERMS .............................................................................................................. 8
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`A. “sequence of [two or more] routines” ................................................................................... 8
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`B. “list of conversion routines” ................................................................................................ 14
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`C. “state information” .............................................................................................................. 15
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`D. “process subsequent packets in the message using the sequence of routines indicated in
`the stored path” and Related Terms .................................................................................... 19
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`E. “the packet of the message” ................................................................................................ 20
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`F. “convert one or more packets having a TCP format into a different format” and Related
`Terms .................................................................................................................................. 23
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`G. “execute a Transmission Control Protocol (TCP)” and Related Terms ............................. 29
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`V. CONCLUSION...................................................................................................................... 36
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`I. BACKGROUND
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`
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`Plaintiff has alleged infringement of United States Patents No. 8,694,683 (“the ’683
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`Patent”), 9,270,790 (“the ’790 Patent”), and 9,591,104 (“the ’104 Patent”) (collectively referred
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`to as “the patents-in-suit,” “the Balassanian Patents,” or “the Demulitplexing Patents”). (See Dkt.
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`No. 89, Exs. 1‒3.) Plaintiff submits that the patents-in-suit relate to computer networking. (See
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`Dkt. No. 89, at 1–2.)
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`
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`The ’683 Patent, for example, titled “Method and System for Data Demultiplexing,” issued
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`on April 8, 2014, and bears an earliest priority date of December 29, 1999. The ’790 Patent is a
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`continuation of the ’683 Patent. The ’104 Patent, in turn, is a continuation of the ’790 Patent.
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`These patents therefore share a common specification. The Abstract of the ’683 Patent states:
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`A method and system for demultiplexing packets of a message is provided. The
`demultiplexing system receives packets of a message, identifies a sequence of
`message handlers for processing the message, identifies state information
`associated with the message for each message handler, and invokes the message
`handlers passing the message and the associated state information. The system
`identifies the message handlers based on the initial data type of the message and a
`target data type. The identified message handlers effect the conversion of the data
`to the target data type through various intermediate data types.
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`The Court previously construed terms in the ’683 Patent, the ’790 Patent, and the ’740
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`
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`Patent in Implicit, LLC v. Trend Micro, Inc., No. 6:16-CV-80, Dkt. No. 115, 2017 WL 1190373
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`(E.D. Tex. Mar. 29, 2017) (Gilstrap, J.) (“Trend Micro”) and in Implicit, LLC v. Huawei
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`Technologies USA, Inc., et al., 6:17-CV-182, 2018 WL 1169137 (E.D. Tex. Mar. 6, 2018)
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`(Gilstrap, J.) (“Huawei,” sometimes referred to as “PAN,” which is an acronym for Palo Alto
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`Networks, Inc., the only remaining defendant in the Huawei case at the time of the claim
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`construction hearing).
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`The ’683 Patent has also been the subject of claim construction in the Northern District of
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`California in Implicit Networks, Inc. v. F5 Networks, Inc., No. 3:14-CV-2856, Dkt. No. 57, 2015
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`WL 2194627 (N.D. Cal. May 6, 2015) (Illston, J.) (“F5 Networks II”). Further, the Northern
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`District of California construed terms in an ancestor patent, United States Patent No. 6,629,163
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`(“the ’163 Patent”),1 in Implicit Networks, Inc. v. F5 Networks, Inc., No. 3:10-CV-3365, Dkt. No.
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`93, 2012 WL 669861 (N.D. Cal. Feb. 29, 2012) (Illston, J.) (“F5 Networks I”). Defendants also
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`submit that the ’163 Patent was the subject of ex parte Reexamination No. 90/010,356 (“’163
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`ex parte Reexam”) and inter partes Reexamination No. 95/000,659 (“’163 inter partes Reexam”).
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`
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`Shortly before the start of the April 11, 2019 hearing, the Court provided the parties with
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`preliminary constructions with the aim of focusing the parties’ arguments and facilitating
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`discussion. Those preliminary constructions are noted below within the discussion for each term.
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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 Pharms.
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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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`1 The patents-in-suit all resulted from continuations of the ’163 Patent.
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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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`
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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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`
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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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`
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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 Teva
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`Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839–40 (2015) (“prior cases will sometimes be
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`binding because of issue preclusion and sometimes will serve as persuasive authority”) (citation
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`omitted); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the
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`importance of uniformity in the treatment of a given patent”) (quoting Markman v. Westview
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`Instruments, Inc., 517 U.S. 370, 390 (1996)).
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`III. AGREED TERMS
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`The parties have submitted the following agreed-upon construction (Dkt. No. 85, at p. 2 of
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`5; Dkt. No. 89, at 4), which the Court adopts:
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`Term
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`“message”
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`
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`IV. DISPUTED TERMS
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`Construction
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`“a collection of data that is related in some way, such as a
`stream of video or audio data or an email message”
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`A. “sequence of [two or more] routines”
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`Plaintiff’s Proposed Construction
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`Defendants’ Proposed Construction
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`“an ordered arrangement of [two or more]
`software routines that was not identified (i.e.,
`configured) prior to receiving a first packet of
`a message”2
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`“an ordered arrangement of two or more
`software routines that was not selected (or
`found or picked) from a finite set of possible
`arrangements which were created before
`receiving a first packet of the message”
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`(Dkt. No. 85, Ex. B, at p. 2 of 35; Dkt. No. 89, at 5; Dkt. No. 93, at 1; Dkt. No. 103, Ex. A, at 1.)
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`The parties submit that this term appears in Claims 1, 4, 5, 8, 9, and 24 of the ’683 Patent, Claims
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`1, 3, 4, 5, 8, 10, 12, 15, 17, and 18 of the ’790 Patent, and Claims 1, 3, 5, 10, 12, 13, and 16 of the
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`’104 Patent. (Dkt. No. 103, Ex. A, at 1–10.)
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`
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`Shortly before the start of the April 11, 2019 hearing, the Court provided the parties with
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`the following preliminary construction: “an ordered arrangement of [two or more] software
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`routines that was not configured before receiving a first packet of a message.”
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`(1) The Parties’ Positions
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`Plaintiff submits that the proper construction for this term has been thoroughly addressed
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`in prior litigation and, moreover, “NetScout and Sandvine seek to limit the claims to an
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`impossibility.” (Dkt. No. 89, at 5.)
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`2 Plaintiff previously proposed: “an ordered arrangement of [two or more] software routines that was not identified
`(i.e., configured) prior to receiving a first packet of the message.” (Dkt. No. 85, Ex. A, at 1.)
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`Defendants respond that “[t]his term is limited in scope by a disclaimer in the prosecution
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`history.” (Dkt. No. 93, at 1.) Defendants argue that “Implicit’s interpretation of the F5 [Networks]
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`II construction seeks to recapture the same claim scope it clearly and unambiguously disclaimed
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`– i.e., selecting from pre-configured paths – and should not be adopted.” (Id., at 5.) Defendants
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`also submit that “Defendants are amenable to removing the word ‘possible’ from [their] proposal
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`to remove any redundancy.” (Id., at 10.)3
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`Plaintiff replies that “[f]our prior courts have limited the . . . disclaimer to only the single
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`embodiment that stored pre-configured sequences of routines.” (Dkt. No. 96, at 1.) Plaintiff also
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`submits that “Implicit perceives no meaningful distinction between Defendants’ use of the word
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`‘selected’ and the Court’s use of the phrase ‘identified (i.e., configured).’” (Id., at 2.) Plaintiff
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`argues that “Defendants have cobbled together a construction that lacks clarity, results in
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`impossible scenarios, and is internally inconsistent.” (Id., at 3.)
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`At the April 11, 2019 hearing, Defendants expressed concern that the word “configured”
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`in the Court’s preliminary construction might be misinterpreted as allowing for identifying pre-
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`existing paths. Plaintiff responded that the word “configured” is sufficiently clear, and Plaintiff
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`argued that Defendants’ concerns relate to questions of fact regarding infringement rather than any
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`legal question for claim construction.
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`(2) Analysis
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`The Background section of the specification provides context by stating: “A computer
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`system in certain situations . . . can be expected to receive data and to provide data in many
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`3 Defendants have also cited Rule 30(b)(6) testimony by one of the named inventors (see Dkt. No. 93, Ex. 11, June 5,
`2018 Balassanian dep. at 71:13–23, 72:12–73:10 & 74:6–77:5; see also id. at 47:13–48:18, 72:8–25 & 94:15–18), but
`this testimony does not significantly affect the Court’s analysis in these claim construction proceedings. Cf.
`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1346–47 (Fed. Cir. 2008) (noting that inventor
`testimony is “limited by the fact that an inventor understands the invention but may not understand the claims, which
`are typically drafted by the attorney prosecuting the patent application”).
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`different formats that may not be known until the data is received. The overhead of statically
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`providing each possible series of conversion routines is very high.” ’683 Patent at 1:54–59. Claim
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`1 of the ’683 Patent, for example, recites (emphasis added):
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`1. A first apparatus for receiving data from a second apparatus, the first apparatus
`comprising:
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`a processing unit; and
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`a memory storing instructions executable by the processing unit to:
`create, based on an identification of information in a
`received packet of a message, a path that includes
`one or more data structures that indicate a sequence
`of routines for processing packets in the message;
`store the created path; and
`process subsequent packets in the message using the
`sequence of routines indicated in the stored path,
`wherein the sequence includes a routine that is used
`to execute a Transmission Control Protocol (TCP) to
`convert one or more packets having a TCP format
`into a different format.
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`In F5 Networks II, the Northern District of California construed “sequence of routines” to
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`
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`mean a “sequence of software routines that was not identified (i.e., configured) prior to receiving
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`a first packet of the message.” F5 Networks II at 17–24.
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`
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`In Trend Micro, the Court construed “sequence of routines” to mean “an ordered
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`arrangement of software routines that was not identified (i.e., configured) prior to receiving a first
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`packet of the message” and similarly construed “sequence of two or more routines” to mean “an
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`ordered arrangement of two or more software routines that was not identified (i.e., configured)
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`prior to receiving a first packet of the message.” Trend Micro at 13–20.
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`
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`In Huawei, the parties there agreed that “sequence of [two or more] routines” means “an
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`ordered arrangement of [two or more] software routines that was not identified (i.e., configured)
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`prior to receiving a first packet of the message.” Huawei at 8.
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`Those prior constructions focused on the patentee’s statements regarding the “Mosberger”
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`reference during reexamination of the ’163 Patent.4 The parties here agree that the patentee’s
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`statements amount to a disclaimer, but the parties dispute how that disclaimer should be given
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`effect in the Court’s construction.
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`In particular, the parties dispute the meaning of the phrase “identified (i.e., configured)” in
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`the prior constructions. When distinguishing Mosberger, the patentee argued:
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`The following discussion of Mosberger will assist the Examiner in understanding
`the patentable distinctions, including those distinctions that arise because the
`Mosberger system configures paths (formed from a sequence of components)
`before receiving the “first packet of the message.” As shown below, the quoted
`claim language is directed to a much different system that configures paths at run-
`time (i.e., after the first packet is received).
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` *
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` * *
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`Because Mosberger teaches to configure paths that define the sequence of software
`modules used to process particular types of data prior to “build-time,” the only
`decision made at runtime is the determination of which pre-configured path should
`begin processing the incoming data. Once the path is chosen, it is instantiated (what
`Mosberger refers to as “path creation”). The process of recognizing which
`preconfigured paths to use is illustrated in Figure 3.6 of Mosberger, reproduced
`below.
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`
`
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`As seen in Figure 3.6 above (cited by the Examiner), there are a number of
`pathways (p1-p5) for the data to travel, but the selection of modules for each path
`is configured before receipt of the message packets. The beginning point for the
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`
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`4 F5 Networks I and F5 Networks II identified the “Mosberger” reference as: “David Mosberger, ‘Scout: A Path-Based
`Operating System,’ Doctoral Dissertation Submitted to the University of Arizona.” F5 Networks I at 3; F5 Networks
`II at 3.
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`paths in this example is with the Ethernet module (“ETH”). The ETH module
`“employs a classifier to decide whether a packet should be processed using path p1,
`p2, or p3.” (Mosberger, page 87). The only variation in Mosberger is which path
`through the predefined sequence will be taken. In this example, the ETH module
`selects the initial pathway (i.e., pathway p1, p2, or p3) based on the protocol header
`in the first packet of the message. (Mosberger, pages 88-89). If the protocol header
`is completely intact and suggests that the packet is UDP, then the packet
`classification process will result in the selection of pre-configured path 1. If,
`however, the packet has been fragmented by IP and does not include higher level
`headers, then the classification process will result in selection of pre-configured
`path 2. (Mosberger, page 87). At that point, after the packet has been reassembled,
`the IP module’s packet classifier will determine whether the packet is a UDP or
`TCP packet and route the packet accordingly (i.e., down preconfigured path 4 or
`pre-configured path 5). (Mosberger, page 87). Importantly, however, those
`sequences of IP-UDP via pathway p4 and IP-TCP via pathway p5 have also been
`identified prior to run-time. In other words, the p2/p4 path and the p2/p5 path are
`pre-configured at build time. Again, the only question resolved at run time is which
`preconfigured path – with predetermined sequences of modules – should be
`selected.
`
` *
`
` * *
`
`
`As one skilled in the art will appreciate, the [Mosberger] pseudo-code shows that
`the possible list of software modules is already predetermined for the example
`module [i.e., software routine] and that the only choice for the example module is
`to select from amongst several possible pre-defined paths. Thus, dynamic routing,
`as described in the context of the ‘paths’ in Mosberger, is essentially a series of
`‘If...Then...’ computer instructions coded into the modules at build time that control
`the selection of the predefined paths through a series of predefined software
`modules that a developer has arranged in a module graph in such a way as to ensure
`their interface compatibility.
`
`(Dkt. No. 93, Ex. 12, Sept. 1, 2009 Amendment and Response to Office Action Mailed July 7,
`
`2009, at 11 & 14–15; see id. at 20 (“During operation (i.e., at ‘run time’), Mosberger simply
`
`recognizes which of the predefined pathways will be used to process the data packets”) & 28 (“a
`
`routing decision in Mosberger is merely a selection between multiple predefined pathways”).)
`
`In a subsequent Interview Summary, the patentee stated:
`
`By selecting the sequence of components that form the path at build-time (i.e.,
`before receiving a packet), Mosberger does exactly the opposite of what is claimed,
`namely, affirmatively selecting the sequence of components after receiving a
`packet. This is the difference between a dynamic system (the ’163 invention) and
`
`
`- 12 -
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`
`
`
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`Juniper Ex. 1028-p. 12
`Juniper v Implicit
`
`

`

`Case 2:18-cv-00053-JRG Document 111 Filed 04/15/19 Page 13 of 36 PageID #: 2407
`
`a static, inflexible system (Mosberger) that merely selects – at run-time – previously
`created paths. In response to a question by Examiner Ferris, lmplict’s counsel
`pointed out that Mosberger’s selection of pre-configured paths after receiving a
`packet is not covered by the claims because, by definition, Mosberger has already
`identified the sequence of components at that point, and therefore, does not perform
`the claimed “identifying” after receiving the packet.
`
`(Id., Ex. 14, Oct. 23, 2009 Interview Summary, at 3.)
`
`
`
`The patentee later similarly stated:
`
`Importantly, this set of paths is finite; Mosberger does not teach to create new paths
`after initialization. Further, this set of paths is created before any message/packet
`is received.
`
` *
`
` * *
`
`
`Thus, paths in Mosberger are not dynamically created based on the receipt of a
`message. Rather, Mosberger teaches that when a message is received, a path is
`selected (or “found”) from a set of possible paths, which were created and
`predefined before the message was even received.
`
`(Id., Ex. 15, Feb. 8, 2019 Amendment, at 16 (citations omitted).)
`
`
`
`During prosecution of the ’683 Patent, the patentee likewise stated:
`
`[T]his set of paths is finite; Mosberger does not teach creation of new paths after
`initialization.
`
` *
`
` * *
`
`. . . Mosberger teaches that when a message is received, a path is selected (or
`“found” or “picked”) from a set of possible paths, which were created before the
`message was received.
`
`(Id., Ex. 13, June 6, 2013 Preliminary Amendment, at 11 & 12.)
`
`
`
`The parties essentially agree as to the substantive effect of the patentee’s statements
`
`regarding Mosberger. The patentee did not disclaim the existence of software routines prior to
`
`receiving a first packet of the message. The patentee explained that the claimed invention uses
`
`software routine arrangements that were not created prior to receiving a first packet of the
`
`message. The construction of “sequence of [two or more] routines” can be refined to avoid the
`
`
`
`
`- 13 -
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`Juniper Ex. 1028-p. 13
`Juniper v Implicit
`
`

`

`Case 2:18-cv-00053-JRG Document 111 Filed 04/15/19 Page 14 of 36 PageID #: 2408
`
`potential confusion that might arise from the phrase “identified (i.e., configured)” and to more
`
`clearly reflect the patentee’s statements regarding Mosberger. Although the specification
`
`frequently uses the words “identify,” “identifies,” and “identified,”5 using the word “created” will
`
`more clearly reflect the patentee’s statements regarding Mosberger and will be more readily
`
`understandable in the context of the claims.
`
`
`
`The Court therefore hereby construes “sequence of [two or more] routines” to mean “an
`
`ordered arrangement of [two or more] software routines that was not selected from a set of
`
`arrangements created before receiving a first packet of the message.”
`
`B. “list of conversion routines”
`
`Plaintiff’s Proposed Construction
`
`Defendants’ Proposed Construction
`
`“an ordered arrangement of software routines
`for changing the form of data and that was not
`identified (i.e., configured) prior to receiving a
`first packet of a message”6
`
`“an ordered arrangement of two or more
`software conversion routines that was not
`selected (or found or picked) from a finite set
`of possible arrangements which were created
`before receiving a first packet of the message”
`
`
`(Dkt. No. 85, Ex. B, at p. 2 of 35; Dkt. No. 89, at 8; Dkt. No. 103, Ex. A, at 10.) The parties submit
`
`that this term appears in Claim 10 of the ’683 Patent. (Id.)
`
`
`
`Shortly before the start of the April 11, 2019 hearing, the Court provided the parties with
`
`the following preliminary construction: “an ordered arrangement of software routines that is for
`
`changing the form of data and that was not configured before receiving a first packet of the
`
`message.”
`
`
`5 See, e.g., ’683 Patent at 4:15–17 (“The demux routine may in tu[rn] invoke the label map get routine 104 to identify
`a sequence of conversion routines for processing the packet.”) (emphasis added); id. at 8:38–44 (“The routine loops
`identifying the next binding (edge and protocol) that is to process the message and ‘nailing’ the binding to a session
`for the message, if not already nailed.