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`Early Warning Services 1026
`IPR of U.S. Pat. No. 8,887,308
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`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 2 of 28
`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 2 of 28
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`I. PROCEDURAL HISTORY”
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`On November 18, 2015, Grecia filed a complaintalleging that MasterCard infringes Claim
`
`1 of the *360 Patent and various claims ofthe ‘555 and ‘860 Patents. (Doc. No. 1.) About a year
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`later, on December 15, 2016, Grecia filed a complaint alleging that Samsung infringes various
`
`claims of the “860 Patent.
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`(16-cv-9691, Doc. No. 1.) The Court accepted the action against
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`Samsung asrelated to the earlier filed action against MasterCard.
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`In August 2017,
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`the United States Patent and Trademark Office (“PTO”) granted
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`MasterCard’s petition for inter partes review (“IPR”) of the *860 Patent, and instituted an IPR
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`proceeding as to Claims 1—8 and 11-20 ofthat patent.
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`(See Doc. No. 51.) In light of the pending
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`IPR proceeding, MasterCard movedtostay this litigation.
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`(/d.) Shortly thereafter, however, at
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`Grecia’s request, the PTO entered an adverse judgment against Grecia on Claims 1-8 and 11—20
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`of the ‘800 Patent and terminated the IPR.
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`(See Doc. No. 63.) Accordingly, the Court denied
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`MasterCard’s motion to stay as moot.
`
`(Doc. No. 64.)
`
`On September 25, 2017, the parties filed their Joint Claim Construction Chart. (Doc. No.
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`62.) Grecia filed his opening claim construction brief on October 23, 2017 (Doc. No. 65),
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`Defendants filed their opposing brief on November 21, 2017 (Doc. No. 68), and Grecia filed his
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`reply on November28, 2017 (Doc. No. 69). Because Grecia’s reply exceeded the standard page
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`limit by five pages, the Court granted Defendants leave to submit a five-page surreply (Doc. No.
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`72), which they filed on December 20, 2017 (Doc. No. 73). The Court held a claim construction
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`hearing on May 24, 2018.
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`* In determining the proper construction of the patent claims, the Court has considered the parties’ Joint Claim
`Construction Chart, dated September 25, 2017 (Doc. No. 55), Grecia’s Opening Claim Construction brief (Doc. No.
`635 (“Grecia Br.”), Defendants’ Claim Construction Response brief (Doc. No. 68 (“Def. Br.*)), Grecia’s Claim
`Construction Reply brief (Doc. No. 69 (“Grecia Reply”)), Defendants’ Claim Construction Surreplybrief (Doc. No.
`73 (“Def. Surreply”)),
`the materials attached to those submissions, and the parties’ presentations at the claim
`construction hearing held on May 24, 2018. For the sake of clarity, unless otherwise noted, the docket entries cited
`herein refer to the docket sheet in Grecia v. MasterCard International, Inc., Case No. 15-cv-9059 (RIJS) (S.D.N.Y,).
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`II. LEGAL STANDARD
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`A. Principles of Claim Construction
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`“[T]he claims ofa patent define the invention to which the patenteeis entitled the right to
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`exclude.” Aventis Pharm. Inc. y. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013)
`
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)). Patent claim
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`construction is a matter of law “exclusively within the provinceofthe court.” Markman, 517 U.S.
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`at 372. The termsofa claim generally take “their ordinary and customary meaning”— the meaning,
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`that is, that the terms would have “to a person of ordinary skill in the art in question at the time of
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`the invention.” Phillips, 415 F.3d at 1312-13.
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`“A patentee, however, can act as his own
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`lexicographerto specifically define terms ofa claim contraryto their ordinary meaning.” Abraxis
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`Bioscience, Inc. v. Mayne Pharma (USA) Inc., 467 F.3d 1370, 1376 (Fed. Cir. 2006) (citation and
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`internal quotation marks omitted). To act as his own lexicographer and use a term in a manner
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`other than its ordinary meaning,
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`the patentee must expressly define the term in the patent
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`specification or the “prosecution history,” which consists of the record of the proceedings before
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`the PTO. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
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`Courts consider the termsofa claim “in the contextofthe entire patent,” Phillips, 415 F.3d
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`at 1313, and not “in a vacuum,” Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed.
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`Cir. 2005) (citation and internal quotation marks omitted). Accordingly, courts construing patent
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`claims examinethe full “intrinsic evidence of record”: “the claims, the specification and, ifin
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`evidence, the prosecution history.” PC Connector Solutions LLC vy. SmartDisk Corp., 406 F.3d
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`1359, 1362 (Fed. Cir. 2005)(citation and internal quotation marks omitted). The specification in
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`particular is “always highly relevant to the claim construction analysis” and is, in fact, “the single
`
`best guide to the meaning ofa disputed term.” Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1582 (Fed. Cir. 1996). When “using the specification to interpret the meaning of a claim,”
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`however, courts should avoid “importing limitations from the specification into the claim.”
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`Phillips, 415 F.3d at 1323; see also Comark Comme ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186
`(Fed. Cir. 1998) (“[T]here is sometimes a fine line between reading a claim in light of the
`specification, and reading a limitation into the claim fromthe specification.”). Likewise, while
`
`. there were any express
`.
`courts may consult the prosecution history to “determine whether .
`representations made in obtaining the patent regarding the scope and meaning ofthe claims,”
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`DeMarini Sports, Inc. v. Worth, Ine., 239 F.3d 1314, 1323 (Fed. Cir. 2001), the Federal Circuit
`has cautioned against relying too heavily on the prosecution history “because [it] represents an
`ongoing negotiation between the PTO and the applicant .
`.
`. [and] often lacks the clarity of the
`specification and thusis less useful for claim construction purposes,” Phillips, 415 F.3d at 1317,
`
`In additionto considering suchintrinsic evidence, courts construing patent claims mayalso
`consult extrinsic evidence, which includes “all evidence external to the patent and prosecution
`history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman vy.
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`Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370
`(1996). Extrinsic evidence, however, is “less significant than the intrinsic record in determining
`the ‘legally operative meaningof claim language.”” C.R. Bard, Inc. v. U.S. Surgical Corp., 388
`F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v. Int'l Trade Comm'n,
`366 F.3d 1311, 1318 (Fed. Cir. 2004)); see also Phillips, 415 F.3d at 1322-23 (“[JJudgesare free
`to consult dictionaries and technicaltreatises .
`.
`.
`in order to better understand the underlying
`technology and mayalso rely ondictionary definitions when construing claim terms, so long as
`the dictionary definition does not contradict any definition found in or ascertained by a reading of
`the patent documents.”) (citation and internal quotation marks omitted); Phillips, 415 F.3d at 1318
`(“[E]xpert testimony can be useful to a court .
`.
`. to provide background onthe technologyat issue
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`... or to establish that a particular term in the patent or the prior art has a particular meaning in
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`the pertinent field.”).
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`In general, if the meaningofthe claim is clear from the intrinsic evidence
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`alone, resort to extrinsic evidenceis improper. Vitrionics, 90 F.3d at 1583 (“In most situations, an
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`analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term.
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`In
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`such circumstances,it is improperto rely on extrinsic evidence.”)
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`B. Definiteness Under 35 U.S.C. § 112, 4 23
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`Claims and claim terms must meet the patent law’s definiteness requirement. See 35
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`U.S.C. § 112, { 2 (requiring that claims “particularly point[] out and distinctly claim[] the subject
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`matter” of the invention).
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`“Because claims delineate the patentee’s right
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`to exclude,” the
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`definiteness requirementensures that the claimsare “sufficiently definite to inform the public of
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`the bounds ofthe protected invention.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
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`1244, 1249 (Fed. Cir. 2008). “[A] patentis invalid forindefinitenessifits claims, read in light of
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`the specification delineating the patent, and the prosecutionhistory,fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 134 8. Ct. 2120, 2124 (2014).
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`In evaluating a claim for indefiniteness, courts
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`must be mindful of the “inherent limitations of language.” and understand that “[s]ome modicum
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`of uncertainty .
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`.
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`. is the price of ensuring the appropriate incentives for innovation.” Jd. at 2128
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`(internal quotation marks omitted). Furthermore, since issued patents are presumptively valid, see
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`
`
`> The parties do not appearto dispute that, becausethefirst patent in the series wasfiled February 15, 2012 — prior
`to the enactment of the America Invents Act — the pre-AIA versionof Section 112 is the one that applies here.
`(See
`Def. Br, at 4 & n.3.) When“the applications resulting in the patents at issue... were filed before September 16,
`2012, courts refer to the pre-AIA version of[Section] 112.” AbbVie Deutschland GmbH & Co., KG v. Janssen
`Biotech, Ine., 759 F.3d 1285, 1290 (Fed. Cir. 2014). Here, althoughthe applications for the ‘555 and ‘860 patents
`were filed afier September 16, 2012, theyare continuationsof the ‘555 patent, which wasfiled several months
`before that date.
`In any event, the AIA does not appear to have materially modified the relevant languagein the
`second paragraph ofSection 112.
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`35 U.S.C. § 282, a party seeking to invalidate a claim as indefinite must do so by clear and
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`convincing evidence. See Microsofi Corp. v. i4i Lid. P Ship, 564 U.S. 91, 102 (2011).
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`Because “[a] determination ofclaim indefiniteness is a legal conclusion that is drawn from
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`the court’s performance of its duty as the construer of patent claims,” Personalized Medic,
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`Comme'ns, LLCy. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998), district courts may
`address indefiniteness at the claim construction stage rather than the summary judgmentstage,
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`ePlus, Ine. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012) (“[I]ndefiniteness is a
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`question of law andineffect part of claim construction.”): see also Indus. Tech. Research Inst. v.
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`LG Electronics Inc., No. 13-cv-02016 (GPC), 2014 WL 6907449,at *3 (S.D. Cal. Dec. 8, 2014)
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`(reviewing Federal Circuit case law onthe timing ofindefiniteness claims and concluding that
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`district courts have “discretion as to when to determine indefiniteness during patent case
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`proceedings”),
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`C. Means-Plus-Function Limitations Under 35 U.S.C. § 112,96
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`Under paragraph six of Section 112, “fa]n element ina claim... may be expressed as a
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`meansor step for performing a specified function without the recital of structure, material, or acts
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`in support thereof, and such claim shall be construedto coverthe correspondingstructure, material,
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`or acts described in the specification and equivalents thereof.” When a claimterm is drafted in a
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`manner that falls within that provision, courts refer to the claim term a “means-plus-function
`
`In enacting
`limitation.” Williamsonvy. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015).
`this provision, “Congress struck a balance in allowing patentees to express a claimlimitation by
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`reciting a function to be performed rather than by reciting structure for performing that function,
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`while placing specific constraints on how such a limitation is to be construed, namely, by
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`restricting the scope of coverage to only the structure, materials, or acts described in the
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`specification as corresponding to the claimed function and equivalents thereof.” /d. at 1348.
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`The threshold question is whethera particular claimtermis drafted in means-plus-function
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`format. The presenceofthe word “means”creates a presumptionin favor of construing a term as
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`a means-plus-function limitation, and the absence of the word “means” raises the opposite
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`presumption.
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`/d. However, the Federal Circuit has emphasized that “the essential inquiry is not
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`merely the presence or absence of the word ‘means’ but whether the words of the claim are
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`understood by persons ofordinary skill in the art to have a sufficiently definite meaning as the
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`namefor structure.” /d. For example, “[g]eneric terms such as ‘mechanism,’ ‘element,’ ‘device.””
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`and other placeholder words that “reflect nothing more than verbal constructs” may be used in a
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`claim “in a mannerthat is tantamountto using the word ‘means’ because ‘they typically do not
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`connote sufficiently definite structure’ and therefore may invoke § 112, 9 6.” Id. (quoting Mass.
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`Inst. ofTech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)).
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`Oncea claim term has beenidentified as a means-plus-functionlimitation, construingitis
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`a two-step process. First, the court identifies the claimed function. Noah Sys., Ine, v. Intuit Inc.,
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`675 F.3d 1302, 1311 (Fed. Cir. 2012). Then, the court determines what structure disclosed in the
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`specification, if any, corresponds to the claimed function.
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`/d. “Under this second step, structure
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`disclosed in the specification is ‘corresponding’ structure only ifthe specification or prosecution
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`history clearly links or associates that structure to the function recited in the claim.’” Med.
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`/nstrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (citation
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`and internal quotation marks omitted).
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`If a patent fails to disclose adequate structure for
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`performing the claimed function, the claimis invalid for indefiniteness under 35 U.S.C. § 112, 7 2.
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`Noah Sys., 675 F.3d at 1311-12; Cardiac Pacemakers, Inc. v. St. Jude Med. Ine., 296 F.3d 1106,
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`1114 (Fed. Cir. 2002). Under paragraphs two and six of Section 112, therefore, “a means-plus-
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`function clauseis indefinite if a person of ordinary skill in the art would be unable to recognize
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`the structure in the specification and associate it with the corresponding function in the claim.”
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`Noah Sys., 675 F.3d at 1311 (citation and internal quotation marks omitted).
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`III. DISCUSSION
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`The patents-in-suit relate to the field ofdigital rights management (“DRM”). DRM is a
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`generic term for technologies used to prevent unauthorized copying or distribution of digital
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`media, such as movies, music, or games, by restricting access to the media across devices, such as
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`computers, phones,or tablets.
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`(See ‘860 Patent at 1:19-22.) Grecia’s claimed invention “teaches
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`a more personal system ofdigital rights management” that employs “electronic ID .
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`.
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`. to manage
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`access rights acrossa plurality of devices.” (/d. at 1:23-26.)
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`According to the patents-in-suit,
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`traditional DRM systems suffer from two notable
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`shortcomings. First, traditional systemsrely on digital content providers to maintain computer
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`servers to receive and send authorization keys.
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`(/d. at 2:54-62.) Sometimes content providers
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`discontinue servers or go out of business after the DRM-encrypted content has beensold to
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`consumers, who then lose the ability to access content they had purchased.
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`(/d.) Second,
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`traditional systems often function by linking rights to access content to the machine on which the
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`content was acquired, which meansthat users canlose access to the contentif the machine breaks
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`or is stolen.
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`(/d. at 2:1-8, 63-67). Grecia’s DRM system allegedly solves these problems by
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`branding the information necessaryto associate a user with the digital content into the metadata of
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`the digital content, thereby enabling “unlimited interoperability between devices.” (/d. at 3:1-7,
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`4:2-9.)
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`Theparties dispute the construction of14 termsorsets of terms in the patents. The Court
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`will address eachtermorset of terms in turn. Because the parties’ briefing postdates their joint
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`claim construction chart and generally discusses the disputed termsin the sequence and grouping
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`adopted by Defendantsin their claim construction brief, the Court will address the termsin that
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`order.
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`A. “metadata ofthe digital content’
`
`
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`
`Construction(s)
`Construction
`
`
`
`Metadata ofthe digital content
`data that describes
`a data store
`the digital content
`
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`and is stored with
`(“860 Patent, Claims 9 and 21)
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`the digital content
`(555 Patent, Claims 1, 12, and 15)
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`As Defendants point out, the term “metadata” is expressly defined in the specification.
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`(*860 Patent at 13:21-23 (“[MJetadata is defined simply as to ‘describe other data.’ It provides
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`information about [a] certain item’s content.”).) For example, the metadata of a text document
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`mightinclude information such as the length of the document, whenit was written, and who the
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`author was.
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`(/d. at 13:26-32.)
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`Inpriorlitigation involving the ‘860 Patent, Grecia himself took
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`the position that “metadata of the digital content” means “data about the digital content.” (Doc.
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`No. 68-5 at P006711.)
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`Nevertheless, Grecia now argues that “metadata ofthe digital content” should be construed
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`as “a data store” because Claim 21 ofthe ‘860 Patentrefers to “metadata ofthe digital content” as
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`“being one or more ofa database orstorage in connectionto the computer product.” (‘860 Patent
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`at 17:64-67.) At the claim construction hearing, Grecia conceded that the term “metadata” does
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`not ordinarily mean “a data store,” and suggested that he departed from that ordinary meaning by
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`acting as his own lexicographerin the patents-in-suit.
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`(Doc, No. 87 at 22.) However, there is a
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`“heavy presumption that claim terms are to be giventheir ordinary and customary meaning.”
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`* As discussed below, seeinfraILI.B, the parties appear to agree that the terms “digital content,” “cloud digital
`content,” and “encrypted digital media” are synonymousfor relevant purposes.
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`Aventis Pharm., 715 F.3d at 1373. Although patentees can define terms in unconventional ways,
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`“[t]he standardsfor finding lexicography .
`
`.
`
`. are “exacting.”” Rovi Guides, Inc. v. Comcast Corp.,
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`No, 16-cv-9278 (JPO), 2017 WL 3447989, at *2 (S.D.N.Y. Aug. 10, 2017) (quoting GE Lighting
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`Solutions LLC vy. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)). To act as his own
`
`lexicographer, the patentee must “clearly set forth a definition ofthe disputed claim term,” and
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`“clearly express an intent to define the term” in the specification or the prosecution history.
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`/d. at
`
`*3 (citations and internal quotation marks omitted). Here, Grecia expressly defined the term
`
`“metadata” as data that describes other data, not as a storage device or repository for data. That
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`distinction is reinforced by multiple diagrams in the specification that depict “database” and
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`“metadata” as distinct components.
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`(See ‘860 Patent, Figs. 3, 4.) Thus, “metadata ofthe digital
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`content”is, at minimum,data that describes the digital content.
`
`Defendants argue that ihe data describing the digital content must also be “stored with the
`
`digital content” becausethe specification describes the invention as involving a “branding action
`
`ofat least one writable metadataas part ofat least one digital media”(id. at 3:36-38). But logically,
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`parts ofa whole can bestored separately from otherparts that comprise the whole. And Defendants
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`do not appear to dispute that, as understood by a person of ordinary skill in the art, information
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`such as the length of a document would still be metadata regardless of whetherit is stored in the
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`same file as the document. Nor does the patents’ definition ofthe term “metadata” reveal any
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`locationalrestriction.
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`(See ‘860 Patent at 13:21-23.) Moreover, to the extent that the intrinsic
`
`record leaves any ambiguity as to whether metadatais necessarily stored with the data it describes,
`
`that interpretation finds no support in dictionary definitions of the term. See, e.g., “Metadata,”
`
`American Heritage Dictionary (5th ed. 2011) (“Data that describes other data[.]”) And in
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`proceedings before the PTO, MasterCard’s own expert opined that “it is well knownin the art that
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`metadata need not be in the [same] media file as the digital content.” (Doc. No. 68-6 at 22,)
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`Accordingly, the Court construes “metadata ofthe digital content” as simply “data that describes
`
`the digital content.”
`
`B. “encrypted digital media”; “digital content”; “cloud digital content”
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`Construction(s)
`Construction
`lis
`
`(1) encrypted digital media;
`one or more ofa videofile,} data capable of being
`audio file, container
`processed by a computer
`(2) digital content; (3) cloud digital
`ormat, document,
`eomiend
`fi
`I
`metadata as part of video
`game software and other
`(“860 Patent, Claims 9, 2] 5 22, 25)
`(555 Patent, Claims 1-3, 7, 8, 10—|computer based apparatus
`13, 15, 16, 17, 23-25)
`in which processed datais
`facilitated
`
`
`sae(308 Patent, Claim 1) _|
`The parties appear to agree that these three terms are synonymous for relevant purposes.
`
`
`
`
`
`
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`Defendants nevertheless argue that because a key purpose of Grecia’s inventionis to protect
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`copyrights, these terms should be limited to types of media susceptible to copyright violations.
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`But the specification expressly states that “[e]xamples ofthe encrypted digital files include, and
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`are not limited to, a videofile, an audio file, container formats, documents, metadata as part of
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`video game software and other computer based apparatus in which processed data is facilitated.”
`
`(*860 Patent at 7:20-24 (emphasis added).) The examples are clearly illustrative, not exhaustive.
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`Thus, the Court rejects Defendants’artificially narrowconstruction and adopts Grecia’s proposed
`
`construction.
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`C. “verified web service”
`
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`Construction(s)
`Construction
`
`
`verified web service a web service that is used|a machine-to-machine
`
`(‘860 Patent, Claims 9, 21) to authenticate the identity|connected web service with an
`,
`,
`of a useror device
`Applications Programmable
`
`(555 Patent, Claims 1, 12, 15) Interface (API) that requires an
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`apparatus authentic
`atent,
`Claim 1)
`identification
`i
`i
`‘308 Patent, Claim
`1
`
`(
`
`
`
`The term “verified web service”is mentioned only once in the specification:
`
`The web service equipped with the API is usually a well-known
`membership-themed application in which the users must use an
`authentic identification. Some example[s] include[] Facebook in
`which as a rule, members are required to use their legal name
`identities. A reference numberor namewith the Facebook Platform
`API represents this information. Other verified web services in
`which real member names are required such as the LinkedIn API
`and the PayPal API and even others could be used, but for this
`discussion, Facebook will be used only as an example of how the
`authentication element ofthe inventionis utilized.
`
`(860 Patent
`
`at
`
`10:41-51)
`
`(emphasis
`
`added).
`
`This description supports Defendants’
`
`characterization of the verified web service as a “web service that is used to authenticate the
`
`identity of a user or device.” Although Grecia argues that a “machine-to-machine connect[ion]”
`
`requirement can be implied from the claim language, the Court disagrees; the claims refer to the
`
`role of the verified web service in facilitating the authentication process at a high level of
`
`generality, and shedlittle additional light on the structure of the web service.
`
`(See, e.g., ‘860
`
`Patent at 18:18-26.) Moreover, the Court sees no reason to embed the phrase “with an Application
`
`Programmable Interface (API)”into the definition of the term, giventhat this would duplicate the
`
`claim language. (See id. at 18:18-19) (“wherein the APIis obtained from a verified web service’’)).
`
`Accordingly, the Court adopts Defendants’ proposed construction.
`
`D.
`
`(1) “correspondingto the digital content”; (2) “corresponding to the digital media”
`
`
`
`Term
`
`(1) corresponding to the digital
`content;
`(2) corresponding to the encrypted
`digital media
`
`
`Defendants’ Proposed
`
`Construction(s)
`modifies the claim term
`“[membership] verification
`token.”
`
`Grecia’s Proposed
`Construction
`no construction necessary
`
`EWS-004617
`
`EWS-004617
`
`

`

`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 13 of 28
`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 13 of 28
`
`
`
`(860 Patent, Claims 9, 21)
`
`(°555 Patent, Claims 1, 12, 15)
`
`
`The parties appear to agree that these terms are synonymousfor relevant purposes. And
`
`Grecia acknowledges that these terms modify the term “verification token”in the relevantclaims.
`
`(See Grecia Br. at 7.) Thus, the Court deemsthe parties to have stipulated to Defendants’ proposed
`
`construction. See VDP Patent, LLC y. Welch Allyn Holdings, Inc., 623 F. Supp. 2d 414, 426
`
`(S.D.N.Y. 2008) (“These elements need not be construed by this Court, as the parties have
`
`stipulated to their meaning.”’)
`
`(i) “authorizing access to...” through (v) “user access rights associated to. . .”
`E.
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`Construction(s)
`Construction
`
`(i) authorizing accessto digital
`(i) and (ii):
`no construction necessary
`content (860 Patent, Claims 9, 21)
`providing infinite access
`(ii) monitoring access to an
`rights to digital content to a
`encrypted digital media (*555
`first user or content acquirer
`Patent, Claims 1, 12, 15)
`and recognized friends and
`family of the content
`-
`kant
`=
`:
`acquirerorfirst user
`iii)
`facilitating interoperabilit
`:
`between a plurality of data
`awesdtna devices (“555 Patent,
`(i1i), (iv), and (v):
`Claims 1, 12, 15)
`providing infinite access
`be facilitating access rights
`rights to a first user’s or
`etweena plurality of data
`content acquirer’s multiple
`rocessing devices (“860 Patent,
`compatible devices
`Claim 9)
`
`
`
`
`
`_|
`
`
`
`|
`
` (v) user access rights associated to
`
`the cloud digital content (*308
`Patent, Claim 1)
`
`_f
`
`Theparties appear to agree that term (i) is synonymous with term (ii) and that terms (iti)
`
`through (v) are synonymous with each other. Defendants argue that these terms necessarily
`
`contemplate “infinite access rights” becausethe specification describes the invention as “directed
`
`EWS-004618
`
`EWS-004618
`
`

`

`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 14 of 28
`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 14 of 28
`
`at providinginfinite access rights .
`
`.
`
`. to the content acquirer .
`
`.
`
`. and optionally to their recognized
`
`friends and family.” (‘860 Patent at 5:7-12.) Just because the inventionis generally aimed at
`
`providing accessrights ofinfinite duration, however, does not meanthat the durationis necessarily
`
`infinite in every conceivable embodiment of the invention. The same goes for Defendants’
`
`proposed limitation regarding “friends and family” of the content acquirer. Althoughfriends and
`
`family may be amongthe mostlikely recipients ofthe accessrights, nothing in the patents limits
`
`the potential recipients to people whoshareintimate social relations or bloodlines withthe primary
`
`user. To adopt Defendants’ constructions would be to commit the error of “importing limitations
`
`from the specification into the claim.” Phillips, 415 F.3d at 1323. Accordingly, the Court agrees
`
`with Grecia that no construction is necessary.
`
`F. “verification token”
`
`
`
`——__|__
`
`
`
`
`
`
`
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`=]
`Ss Construction(s)
`Construction
`
`verification token
`MasterCard: no construction} data that represents
`necessary
`permission to access[digital
`(*860 Patent, Claims 9, 10, 21, 26)
`media / digital content / cloud
`Samsung: data that
`(°555 Patent, Claims 1, 2, 10-12,
`an
`digital content]
`represents a permission to
`peMia: 0}
`access [digital media /
`(308 Patent, Claim 1)
`digital content / cloud digital
`content] and that is different
`from the identification
`__| reference
`
`Although Grecia’s and Samsung’s proposed constructionsofthis term are largely identical,
`
`MasterCard disputes their characterization of the “verification token” as “permission” or “a
`
`permission”rather than “a request for permission,” and takes the position that no construction is
`
`necessary.
`
`(Def. Br. at 14.) However, according to the specification, the verification token
`
`“represents permission from the contentproviderto grant accessrights to the [user.]” (‘860 Patent
`
`at 9:21-23.) That description supports the constructions favored by Samsung and Grecia. Grecia’s
`
`14
`
`EWS-004619
`
`EWS-004619
`
`

`

`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 15 of 28
`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 15 of 28
`
`analogy to a “hall pass”is instructive (see Grecia Reply Br. at 7); although it is true that the
`
`verification token must eventually be authenticated (see “860 Patent at 3:61-64), the sameis often
`
`true of passes and permits — which are typically thought ofas representing permission, not merely
`
`a request for permission. Furthermore, as to the latter half of Samsung’s proposed construction,
`
`Grecia agrees that the “verification token”is different from the “identification reference,” but
`
`argues that this distinction is clear enough and requires no construction, The Court agrees; indeed,
`
`Samsung offers no explanation as to why anyone would think the two terms might refer to the
`
`same thing. Accordingly, the Court adopts Grecia’s proposed construction,
`
`G.
`
`“identification reference”
`
`
`Term
`Defendants’ Proposed
`Grecia’s Proposed
`Construction
`Construction(s)
`.
`
`identification reference
`an identifier of a web
`no construction necessary
`‘860 Patent, Claims
`9
`service, that can be used to
`)
`|
`identify a user ofthe web
`ATED, SEES
`( "555 Patent, Claims 1, 12 and 15)|service or a device that
`accesses the webservice,
`and is different from the
`verification token
`
`
`
`
`
`and 21
`
`Defendants assert that the term “identification reference,” as used in the patents-in-suit,
`
`means“an identifier of a web service, that can be used to identify a user of the web service or a
`
`device that accesses the webservice, and is different from the verification token.” (Def. Br. at 15.)
`
`But the specification and the claim language indicate a broader meaning. To be sure,
`
`the
`
`specificationillustrates the term “identification reference” with the example of a user or device
`
`identifier associated with a web service membership, such as a serial number corresponding to a
`
`Facebookuser’s name. (See ‘860 Patent at 11:18-24.) In at least one specified embodimentofthe
`
`invention, however, the “identification reference”is requested from a “communications console”
`
`that is only “wswally” connected to the Internet and only “usually .. . part of a web service.” (/d.
`
`15
`
`EWS-004620
`
`EWS-004620
`
`

`

`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 16 of 28
`Case 1:15-cv-09059-JGK Document 89 Filed 09/08/18 Page 16 of 28
`
`at 3:41-45 (emphasis added).) Moreover,
`
`in Claim 21 of the ‘860 Patent, the “identification
`
`reference” is described broadly as comprising “one or more ofa verified web account identifier,
`
`letter, number,
`
`rights token, e-mail, password, access time,
`
`serial number, manufacturer
`
`identification, checksum, operating system version, browser v