Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 1 of 8 PageID #: 3882
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`PIRIFORM, INC.,
`UBISOFT, INC.,
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`Defendants.
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
`BLACKBOARD, INC.,
`BOX, INC.,
`ZENDESK, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
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`Defendants.
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`
`§
`§
`§ Case No. 2:16-cv-00393-RWS
`§
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`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00394-RWS
`§ Case No. 2:16-cv-00396-RWS
`§ Case No. 2:16-cv-00397-RWS
`
`§
`§
`§ Case No. 2:16-cv-00741-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-RWS
`§ Case No. 2:16-cv-00859-RWS
`§ Case No. 2:16-cv-00860-RWS
`§ Case No. 2:16-cv-00863-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
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`REPLY SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
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`2760909.v1
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 2 of 8 PageID #: 3883
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`Defendants have split into three groups. Kaspersky Lab now agrees with Uniloc, as it
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`“proposes that the Court adopt Uniloc’s constructions of the two terms.” (Dkt.185, p.1, n.1).1
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`Three defendants, Ubisoft, Square Enix, and Big Fish (the “Minority”), now propose an entirely
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`new construction for “make the program available for use.” (Dkt. 185, pp. 9-10). Their new
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`construction contradicts the position of the other six (the “Majority”), because it does not require
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`an application program (hereinafter, “application”) be available “for download.”
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`The Central Issue Is Whether the Inventors Disavowed the Full Scope of Their Claims
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`The central issue as to the two new terms, as well as several previously briefed, is whether
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`a limitation, clearly expressed in specific language in the claims of the ‘466 patent (“providing an
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`instance of the …application…to the client for execution”), should be read into claims of other
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`patents that omit that language.2 Previous briefing, (Dkt. 155, pp. 2-10), treats that issue, in depth.
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`To review, the parties agree that the claims of the ‘578 and ‘293 patents, given their
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`ordinary and customary meaning, would cover portions of networks that execute applications on
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`a server (as well as networks that execute applications on the client). (Dkt. 155, pp. 2-3). The
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`language of a claim will usually be given its ordinary and customary meaning, with the only
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`exception argued here being disavowal. (Dkt. 155, p. 3). Evidence of disavowal must be clear and
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`unmistakable. (Dkt. 155, pp. 3-4).
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`I.
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`“Application launcher program”
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`All asserted claims of the ‘578 patent require an “application launcher program”
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`(hereinafter, “launcher”). Language from the Summary of the Invention, and other language from
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`the specification, describes the launcher as a program that “request[s] execution of the application
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`program.” (Dkt.174, pp.1-4).3 Defendants seek to limit the launcher to programs that download
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`1 All docket cites are to 2:16-cv-00393-RWS.
`2 The applications on which the four patents are based were filed the same day, by IBM, using the same lawyers.
`Had the inventors intended to limit the scope of the ‘578 or ‘293 patents, they would have included in the claims of
`those patents language similar to the language in the ‘466 patent claims.
`3 In response to Uniloc’s reliance upon the key statement in the Summary of the Invention that the launcher provides
`the “request to initiate execution of the application” (‘578 patent 4:6-9), defendants argue Uniloc took the phrase
`“out-of-context” because “the full passage further specifies” the server responds by downloading the application to
`the client for execution. (Dkt. 185, p.4).Uniloc did not take that phrase out-of-context. The reference to downloading
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 3 of 8 PageID #: 3884
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`the application. Defendants, however, have not presented clear and unmistakable evidence that
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`the inventors disavowed the full scope of the claimed invention.
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`Defendants point out the only mention, in the ‘578 patent, of where execution might occur
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`refers to downloading an application for execution at the client -- albeit in a description of an
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`“alternative preferred embodiment,” deep into the patent. (‘578 patent 11:27-12:36). Because the
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`specification does not otherwise mention location of execution, defendants argue the inventors
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`disavowed a reading of the claims that would embrace more than that one embodiment.
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`But the Federal Circuit has “repeatedly held it is ‘not enough that the only embodiments,
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`or all of the embodiments, contain a particular limitation’ to limit claims beyond their plain
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`meaning.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016).4
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`That would especially apply here. All claims of the ‘578 patent pertain to methods of, and
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`systems for, executing applications through the use of administrator and user sets of configurable
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`preferences. Whether applications are executed at the server or at the client would be irrelevant to
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`the claimed invention. Thus, the inventors did not mention location of execution in the claims; or
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`in the SUMMARY OF THE INVENTION portion of the specification; or in the first five columns
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`of the DETAILED DESCRIPTION OF PREFERRED EMBODIMENTS; nor do defendants offer
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`any reason why they should have.
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`Defendants next attempt to rely upon references, in the specification of the ‘466 patent,
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`(Dkt. 185, pp. 3-4), which “repeatedly” mention distributing applications to clients. But all claims
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`of the ’466 patent recite “providing an instance of the … application … to the client for execution,”
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`because that patent is directed to a different invention, which, unlike the invention of the ‘578
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`patent, incorporates that feature. Thus, references to that feature in the ‘466 patent would in no
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`way disavow the full scope of claims of the ‘578 patent, none of which include that language.
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`an application does not appear in the Summary of the Invention, but rather it appears six columns later in the patent
`(‘578 patent 10:9-12), in a different section, and as an “alternative preferred embodiment.”
`4 Other Federal Circuit cases have reached the same holding. Akamai Technologies Inc. v. Limelight Networks, Inc.,
`805 F.3d 1368, 1375 (Fed. Cir. 2015); Info-Hold, Inc. v. Applied Media Technologies Corp., 783 F.3d 1262, 1266-
`68 (Fed. Cir. 2015); GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1308-10 (Fed.Cir. 2014);
`Howmedica Osteonics Corp. v. Wright Medical Technology, Inc., 540 F.3d 1337, 1345 (Fed.Cir. 2008).
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`2
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 4 of 8 PageID #: 3885
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`Further, as the ‘578 patent issued on a first office action, nothing in the ’578 patent’s
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`prosecution history could disavow anything. Defendants thus attempt to rely upon the prosecution
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`history of sibling applications, such as those for the ‘466 and ‘766 patents. Those prosecution
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`histories can be considered, but only as extrinsic evidence,5 as they were not part of the negotiation
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`with the PTO to obtain the claims of the ‘578 patent. C&C Jewelry MFG, Inc. v. West, 2010 WL
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`2681921, *1 (N.D.Cal. 2010). As previously discussed, (Dkt. 155, pp. 7-9), no statements of the
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`inventors in those prosecutions would clearly and unmistakably disavow the scope of any claims
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`of the ‘578 patent.6
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`Uniloc’s argument, in the Opening Supplemental Brief, that the defendants’ construction
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`would not cover a described embodiment that executes applications at the client (Dkt. 174, p.3),
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`mistakenly cited from the wrong patent. The correct cite is the ‘578 patent at 11:39-41, 48-54.
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`II.
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`“Make the application program available for use”
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`Uniloc would give this term, from the ‘293 patent, its unrestricted meaning, which would
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`encompass making the program available for execution at the server, as well making it available
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`for download to the client. (Dkt. 174, p. 4).
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`The Majority’s Construction
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`Defendants have conceded the ordinary and customary meaning of “application program”
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`would include programs executed at the client. Similarly, the ordinary and customary meaning of
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`“available for use” would include being available for execution at the server. The legal issue – as
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`earlier briefed, (Dkt. 165, pp. 2-7) – thus reduces to whether the inventors clearly and unmistakably
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`disavowed that scope.
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`5 The claims of the ‘766 patent are drawn to requesting from a license management server a “license availability,”
`and receiving from that server an indication of license availability. The claims do not mention, or relate to, where
`applications are executed, or to the invention of the ‘578 patent, which relates to executing applications through the
`use of administrator and user configurable preferences. Thus, even if during the prosecution of the ‘766 patent the
`inventors chose to limit the claims of that patent to avoid prior art relating to determining license availability, that
`would not clearly and unmistakably limit claims of different inventions in sibling patents.
`6 Aylus Networks, Inc. v. Apple Inc., 856 F. 3d 1353, 1361-63 (Fed. Cir. 2017) (“ to invoke the doctrine of
`prosecution disclaimer, any such statements must be both clear and unmistakable … [W]hen a prosecution argument
`is subject to more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable
`disclaimer.”)
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`3
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 5 of 8 PageID #: 3886
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`In its portion of the Supplemental Brief, the Majority argue, as they had earlier, that,
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`because the combined ‘466/’293 specification describes executing an application at the client, it
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`“defines” an “application program” as a program that only executes at a client, and thus disavows
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`other embodiments. (Dkt. 185, pp. 7-8).
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`The Majority, however, ignore Uniloc’s previous response: nowhere do the inventors state
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`or imply an application executing at the server is not an “application.” (Dkt. 155, p. 8). The
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`inventors’ statements – that the “invention” of the ‘466 patent requires execution at the client –
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`arise from the language in the ‘466 patent claims explicitly imposing that requirement (“providing
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`an instance of the … application … to the client for execution”), language that does not appear in
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`the ‘578 or ‘293 patent claims.
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`Uniloc pointed out the ‘293 patent resulted from the PTO’s issuing a restriction
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`requirement. (Dkt. 174, p.6). The Majority respond with a muddled argument, (Dkt. 185, pp. 8-9),
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`revealing it does not understand restriction requirements, 7 or why they are imposed. If the PTO
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`determines two inventions in a single application are patentably distinct – and thus subject to
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`restriction – the claims of one patent do not have to (and generally do not) embrace limitations
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`contained in claims of the other.
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`The Majority argue that because the claims distribute the file packets to “on-demand”
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`servers, those claims should be limited to systems where applications are executed at the client.
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`(Dkt. 185, p. 7). Those servers, however, are described as “on-demand” because they respond only
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`when a request (demand) is received from a user selecting an application for execution, not because
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`of where the application would be executed. Depending upon the design of the system, the server
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`would deliver the application to the user either by allowing the user to execute it at the server or
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`by downloading it to the client (for execution). “Deliver” in the agreed construction of “on-demand
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`7 The Majority mistakenly refers to the ’466 patent as the “parent” of the ’293, (Dkt. 185, p. 7), and the defendants
`mistakenly refer to the’766 patent as a “continuation” of the ’578 patent. (Dkt. 185, p. 5). When the PTO imposes a
`restriction requirement, the new application is a divisional, not a continuation. The applications are informally
`referred to as "siblings," not parent/child. The prosecution history of one sibling forms no part of the prosecution
`history of the other.
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`4
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 6 of 8 PageID #: 3887
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`server,” was intended to encompass both downloading and delivering for execution at the server.
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`If “deliver” is ambiguous, the Court should substitute “provide,” to reflect the agreement.
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`The Minority’s Construction
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`The Minority appear to now agree with Uniloc that the claims of the ‘293 patent do not
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`require an application be “available for… download.” They now argue the claims require the
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`system “identify the individual users to which the application program is available for execution,”
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`basing their argument on a passage from the specification describing that step. But the passage
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`describes that step as an “example,” where “server 22 may be configured …” (‘466 patent 18:10-
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`11) (emphasis added). A second passage the Minority cites (‘466 patent 17:62-67)8 has the same
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`deficiency (“the destination servers 22, 22’may be provided user identification… and may further
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`be notified”(emphasis added). Absent a disavowal, claims should not be limited to examples.
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`As described earlier (Dkt. 174, p. 5), the inventors added this language to clarify the
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`application should be not only delivered to the server, but also registered “in a manner which
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`makes it recognized and available to users” (emphasis added). Any method of making the
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`application recognized and available to users would meet this limitation.
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`8 To maintain consistency with earlier briefing, the citations in this section to the ‘293 patent
`specification are to column and line numbers of the ‘466 patent specification. Dkt. 140, Ex. C.
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`5
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 7 of 8 PageID #: 3888
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`Dated: August 4, 2017
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`ATTORNEYS FOR THE PLAINTIFFS
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`/s/ James J. Foster
`Paul J. Hayes
`Kevin Gannon
`James J. Foster
`Prince Lobel Tye LLP
`One International Place - Suite 3700
`Boston, MA 02110
`Tel: 617-456-8000
`Email: phayes@princelobel.com
`Email: kgannon@princelobel.com
`Email: jfoster@princelobel.com
`
`James L. Etheridge
`Texas State Bar No. 24059147
`Ryan S. Loveless
`Texas State Bar No. 24036997
`Brett A. Mangrum
`Texas State Bar No. 24065671
`Travis Lee Richins
`Texas State Bar No. 24061296
`ETHERIDGE LAW GROUP, PLLC
`2600 E. Southlake Blvd., Suite 120 / 324
`Southlake, Texas 76092
`Telephone: (817) 470-7249
`Facsimile: (817) 887-5950
`Jim@EtheridgeLaw.com
`Ryan@EtheridgeLaw.com
`Brett@EtheridgeLaw.com
`Travis@EtheridgeLaw.com
`
`Edward R. Nelson III
`ed@nelbum.com
`Texas State Bar No. 00797142
`Anthony M. Vecchione
`anthony@nelbum.com
`Texas State Bar No. 24061270
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, Texas 76107
`Phone: (817) 377-9111
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`ATTORNEYS FOR THE PLAINTIFFS
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`6
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`Case 2:16-cv-00741-RWS Document 220 Filed 08/04/17 Page 8 of 8 PageID #: 3889
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`CERTIFICATE OF SERVICE
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`I certify that all counsel of record who have consented to electronic service are being
`served with a copy of this document via the Court’s CM/ECF system per Local Rule CV-5(a)(3)
`on August 4, 2017.
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`James J. Foster
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`/s/
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`7
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