Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 1 of 68 PageID #: 3959
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`Plaintiffs,
`
`
`UNILOC USA, INC. and UNILOC
`LUXEMBOURG, S.A.
`
`
`
`v.
`
`AVG TECHNOLOGIES USA, INC.
`
`
`
`v.
`
`ADP, LLC
`
`
`
`Defendant,
`
`Defendant.
`
`
`
`
`
`
`
`
` Case No. 2:16-CV-00393
` LEAD CASE
`
`
`
`
` Case No. 2:16-CV-00741
` LEAD CASE
`
`§
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`
`MEMORANDUM OPINION AND ORDER
`
`On August 10, 2017, the Court held a hearing to determine the proper construction of the
`
`disputed claim terms in United States Patent Nos. 6,324,578 (“the ’578 Patent”), 6,728,766 (“the
`
`’766 Patent”), 6,510,466 (“the ’466 Patent”), and 7,069,293 (“the ’293 Patent”) (collectively “the
`
`Asserted Patents”).1 The Court has considered the arguments made by the parties at the hearing
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`and in their claim construction briefs. Docket Nos. 140, 150, 155, 174, 185 & 190.2 The Court
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`has also considered the intrinsic evidence and made subsidiary factual findings about the extrinsic
`
`                                                            
`1  The ’466 and ’293 Patents share a common specification. Unless otherwise noted, citations
`related to either of these patents are made collectively to the ’466 Patent. Similarly, the ’578 and
`’766 Patents share a common specification. Unless otherwise noted, citations related to either of
`these patents are made collectively to the ’578 Patent.
`
` Citations to the parties’ filings are to the filing’s number in the docket (Docket No.) and pin
`cites are to the page numbers assigned through ECF in Case No. 2:16-CV-393.
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` 2
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`

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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 2 of 68 PageID #: 3960
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`evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); Teva Pharm. USA,
`
`Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The Court issues this Claim Construction
`
`Memorandum and Order in light of these considerations.
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`
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` 
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 3 of 68 PageID #: 3961
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`BACKGROUND ................................................................................................................ 4
`
`APPLICABLE LAW .......................................................................................................... 7
`
`CONSTRUCTION OF AGREED TERMS ...................................................................... 10
`
`RELEVANCE OF THE PROSECUTION FILE HISTORY IN RELATED PATENTS . 11
`
`CONSTRUCTION OF DISPUTED TERMS ................................................................... 14
`
`1. “application program(s) / application(s)” ..................................................... 14
`
`2. “application launcher program” .................................................................... 23
`
`3. “make the application program available for use” ....................................... 31
`
`4. “registration operations” ............................................................................... 38
`
`5. “the initiating execution step” ...................................................................... 44
`
`6. “the computer readable program code means for executing the application
`program” / “the computer readable program code means for initiating execution”
`/ “the means for executing the application program” / “the means for initiating
`execution”............................................................................................................ 51
`
`7. “license availability” ..................................................................................... 55
`
`8. “an instance” / “an instance of the application program” / “an instance of the
`selected one of the plurality of application programs” and “provid[e]/[ing]” .... 59
`
`VI.
`
`CONCLUSION ................................................................................................................. 68
`
`
`
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` 
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 4 of 68 PageID #: 3962
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`I.
`
`BACKGROUND
`
`A. The ’578 Patent
`
`The ’578 Patent was filed on December 14, 1998, issued on November 27, 2001, and is
`
`titled “Methods, Systems, and Computer Program Products for Management of Configurable
`
`Application Programs on a Network.” The ’578 Patent relates to obtaining user and administrator
`
`preferences for the application programs installed at a server and providing these preferences along
`
`with an instance of the application program to a client for execution. See, e.g., ’578 Patent, col.
`
`3:50–4:5.
`
`Claim 1 of the ’578 Patent is an exemplary claim and recites the following elements
`
`(disputed term in italics):
`
`1. A method for management of configurable application
`programs on a network comprising the steps of:
`receiving an application launcher program associated with an
`application program having a plurality of configurable
`preferences from a server;
`providing a user set of the plurality of configurable preferences
`from one of the plurality of authorized users executing the
`application launcher program to the server; and
`requesting that the server provide an instance of the application
`program and a stored user set and an administrator set of
`the plurality of configurable preferences for use in
`executing the application program responsive to a request
`from the one of the plurality of authorized users.
`
`B. The ’466 Patent
`
`The ’466 Patent was filed on December 14, 1998, issued on January 21, 2003, and is titled
`
`“Methods, Systems, and Computer Program Products for Centralized Management of Application
`
`Programs on a Network.” The ’466 Patent relates to installing application software on a server,
`
`and providing instances of that software to clients for execution via a user desktop interface with
`
`display regions associated with the installed software. See, e.g., ’466 Patent, col. 3:48–50, 4:39–
`
`44.
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 5 of 68 PageID #: 3963
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`Claim 15 of the ’466 Patent is an exemplary claim and recites the following elements
`
`(disputed term in italics):
`
`15. An application program management system for managing
`application programs on a network including a server and
`a client comprising:
`means for installing a plurality of application programs at the
`server;
`means for receiving at the server a login request from a user at
`the client;
`means for establishing a user desktop interface at the client
`associated with the user responsive to the login request
`from the user, the desktop interface including a plurality of
`display regions associated with a set of the plurality of
`application programs installed at the server for which the
`user is authorized;
`means for receiving at the server a selection of one of the plurality
`of application programs from the user desktop interface;
`and
`means for providing an instance of the selected one of the
`plurality of application programs to the client for execution
`responsive to the selection.
`
`C. The ’766 Patent
`
`The ’766 Patent was filed on April 10, 2001, issued on April 27, 2004, and is titled
`
`“Methods, Systems, and Computer Program Products for License Use Management on a Network.”
`
`The ’766 Patent relates to maintaining license related policies and information in the client-server
`
`environment for the installed software such that license availability can be communicated to clients
`
`on a user-specific basis. See, e.g., ’578 Patent, col. 3:24–28, 3:40–45, 5:38–60.
`
`Claim 7 of the ’766 Patent is an exemplary claim and recites the following elements
`
`(disputed term in italics):
`
`
`7. A license use management system for a network comprising:
`means for maintaining license management policy information
`for a plurality of application programs at a license
`management server,
`the
`license management policy
`information including at least one of a user identity based
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 6 of 68 PageID #: 3964
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`policy, an administrator policy override definition or a user
`policy override definition;
`means for receiving at the license management server a request
`for a license availability of a selected one of the plurality of
`application programs from a user at a client;
`means for determining the license availability for the selected one
`of the plurality of application programs for the user based
`on the maintained license management policy information;
`and
`means for providing an unavailability indication to the client
`responsive to the selection if the license availability
`indicates that a license is not available for the user or an
`availability indication if the licensed availability indicates
`that a license is available for the user.
`
`D. The ’293 Patent
`
`The ’293 Patent was filed on May 31, 2001, issued on June 27, 2006, and is titled “Methods,
`
`Systems, and Computer Program Products for Distribution of Application Programs to a Target
`
`Station on a Network.” The ’293 Patent relates to the distribution of application programs to a
`
`target station (e.g., an on-demand server) from a centralized network management server. See, e.g.,
`
`’466 Patent at 5:29–54.
`
`Claim 1 of the ’293 Patent is an exemplary claim and recites the following elements
`
`(disputed term in italics):
`
`1. A method for distribution of application programs to a target
`on-demand server on a network comprising the following
`executed on a centralized network management server
`coupled to the network:
`providing an application program to be distributed to the network
`management server;
`specifying a source directory and a target directory for
`distribution of the application program;
`preparing a file packet associated with the application program
`and including a segment configured to initiate registration
`operations for the application program at the target on-
`demand server; and
`distributing the file packet to the target on-demand server to make
`the application program available for use by a user at a
`client.
`
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 7 of 68 PageID #: 3965
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`II.
`
`APPLICABLE LAW
`
`A.
`
`Claim Construction
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
`
`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
`
`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
`
`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
`
`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
`
`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
`
`term is construed according to its ordinary and accustomed meaning as understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
`
`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
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`that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
`
`(vacated on other grounds).
`
` “The claim construction inquiry . . . begins and ends in all cases with the actual words of
`
`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
`
`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’ ” Apple Inc. v.
`
`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362,
`
`1369 (Fed. Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips,
`
`415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim’s
`
`meaning, because claim terms are typically used consistently throughout the patent. Id.
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 8 of 68 PageID #: 3966
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
`
`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’ ” Id.
`
`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
`
`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
`
`dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
`
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “ ‘[a]lthough the specification may aid the court
`
`in interpreting the meaning of disputed claim language, particular embodiments and examples
`
`appearing in the specification will not generally be read into the claims.’ ” Comark Commc’ns,
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`Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
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`improper to read limitations from a preferred embodiment described in the specification—even if
`
`it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
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`patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
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`898, 913 (Fed. Cir. 2004).
`
`The prosecution history is another tool to supply the proper context for claim construction
`
`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
`
`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
`
`However, “because the prosecution history represents an ongoing negotiation between the PTO
`
`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
`
`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 9 of 68 PageID #: 3967
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`Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
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`history may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
`
`record in determining the legally operative meaning of claim language.’ ” Phillips, 415 F.3d at
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`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
`
`court understand the underlying technology and the manner in which one skilled in the art might
`
`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
`
`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
`
`evidence is “less reliable than the patent and its prosecution history in determining how to read
`
`claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
`
`construction:
`
`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
`
`B.
`
`Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)
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`Patent claims must particularly point out and distinctly claim the subject matter regarded
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`as the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence,
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`must “inform those skilled in the art about the scope of the invention with reasonable certainty.”
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`Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). If it does not, the claim
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`fails § 112, ¶ 2 and is therefore invalid as indefinite. Id. at 2124. Whether a claim is indefinite is
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`determined from the perspective of one of ordinary skill in the art as of the time the application for
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`the patent was filed. Id. at 2130. As it is a challenge to the validity of a patent, the failure of any
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`claim in suit to comply with § 112 must be shown by clear and convincing evidence. Id. at 2130
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`n.10. “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
`
`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).
`
`III. CONSTRUCTION OF AGREED TERMS
`
`The parties agreed to the construction of the following phrase:
`
`Claim Term/Phrase
`“a segment configured to initiate
`registration operations”
`
`(’293 Patent, claims 1, 12, 17)
`
`“license management policy information”
`
`(’766 Patent, claims 1, 7, 13)
`
`“license management server”
`
`(’766 Patent, claims 1, 7, 13)
`
`“centralized network management server”
`
`(’293 Patent, claims 1, 12, 17)
`
`“on demand server”
`
`(’766 Patent, claims 3, 9, 15)
`
`“target on-demand server”
`
`(’293 Patent, claims 1, 12, 17)
`
`
`Agreed Construction
`“portion of the file packet that includes software
`to initiate registration operations”
`
`“a set of rules that determine whether users can
`obtain a license to use a particular application”
`
`“a server that determines license availability
`based on license management policy information”
`
`“centralized server for managing the network”
`
`“a server delivering applications as needed
`responsive to user requests as requests are
`received”
`
`“a server delivering applications as needed
`responsive to user requests as requests are
`received at the server, where those applications
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 11 of 68 PageID #: 3969
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`are distributed from a centralized network
`management server”
`
`plain and ordinary meaning
`
`plain and ordinary meaning
`
`plain and ordinary meaning
`
`plain and ordinary meaning
`
`
`“installing a plurality of application
`programs at the server”
`
`(’466 Patent, claims 1, 15, 16)
`
`“installing [an / a second] application
`program having a plurality of configurable
`preferences and a plurality of authorized
`users on a server coupled to the network”
`
`(’578 Patent, claims 1, 14, 15,17, 30, 32,
`45)
`
`“authorized user” / “[for which the] user
`[is (not)] authorized”
`
`(’466 Patent, claims 1, 2, 8, 15, 17, 23;
`’578 Patent, claims 1, 7, 10, 12–17, 23,
`26, 32, 38, 41-46)
`
`“user set”
`
`(’578 Patent, claims 1, 2, 4, 6, 8, 10, 11,
`14-18, 20, 22, 24, 26, 30–33, 35, 37, 39,
`41, 42, 45, 46)
`
`Docket Nos. 159-1 at 8–10; 159-2 at 10–12. In view of the parties’ agreement on the proper
`
`construction of the identified terms, the Court hereby ADOPTS the parties’ agreed construction.
`
`IV. RELEVANCE OF THE PROSECUTION FILE HISTORY IN RELATED
`PATENTS
`
`The parties dispute whether the prosecution histories of the ’466 and ’766 Patents are
`
`relevant for construing the terms in the ’578 and ’293 Patents. As background, the ’578 and ’466
`
`Patents were filed on the same day. The specification of the ’578 Patent states that “[t]his
`
`application is related to the following application filed concurrently herewith: [the ’466 Patent].”
`
`’578 Patent at 1:6–13. Similarly, the specification of the ’466 Patent states that “[t]his application
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 12 of 68 PageID #: 3970
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`is related to the following application filed concurrently herewith: [the ’578 Patent].” ’466 Patent
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`at 1:6–12. Moreover, the specification of the ’578 Patent incorporates by reference the ’466 Patent.
`
`’578 Patent at 7:17–21, 11:27–30. Likewise, the specification of the ’466 Patent incorporates by
`
`reference the ’578 Patent. ’466 Patent at 7:41–48, 11:17–26. Furthermore, the ’293 Patent is a
`
`divisional of the ’466 Patent, and the patents share a common specification. Similarly, the ’766
`
`Patent is a divisional of the ’578 Patent, and the patents share a common specification.
`
`Plaintiffs argue that the prosecution histories of the ’466 and ’766 Patents are irrelevant
`
`and should be disregarded because they “form[] no part of the prosecution history of the ’578 or
`
`’293 [P]atents.” Docket No. 155 at 8. In the alternative, Plaintiffs argue that “[t]hose prosecution
`
`histories can be considered, but only as extrinsic evidence . . . .” Docket No. 190 at 4 (citing C&C
`
`Jewelry MFG, Inc. v. West, 2010 WL 2681921, *1 (N.D. Cal. 2010)). During the claim
`
`construction hearing, Plaintiffs suggested that the issue was not adequately briefed by the parties.3
`
`The Court disagrees and finds that Defendants provide persuasive authority and arguments
`
`to support their position that the prosecution histories of the ’466 and ’766 Patents are relevant to
`
`the construction of identical terms used in the related ’578 and ’293 Patents.
`
`Specifically, Defendants cite to Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
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`1295 (Fed. Cir. 2007), to support their contention that disclaimers of claim scope in one patent
`
`apply to related patents. Docket No. 185 at 8. The Verizon court summarized the facts in that case
`
`as follows:
`
`The claims of the ’880 patent originated in U.S. patent application No. 08/814,291
`(“’291 application”). During prosecution the examiner issued a restriction
`requirement on the ground that the ’291 application covered two independent and
`
`                                                            
`3 Notwithstanding Plaintiffs’ suggestion, the Court provided the parties with ample opportunity
`to brief the issue of whether the prosecution histories of the ’466 and ’766 Patents are relevant to
`the construction of identical terms in the related ’578 and ’293 Patents. Furthermore, the Court
`specifically inquired about the issue during the claim construction hearing.
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`distinct inventions. The applicants then filed divisional application No. 09/363,750
`(“’750 application”), pursuing some of the claims of the original ’291 application,
`which was allowed as the ’880 patent. The remainder of the claims of the original
`’291 application in turn matured into U.S. Patent No. 6,542,497 (“’497 patent”).
`The claims of both applications require a “localized wireless gateway system.”
`During prosecution of the ’291 application the applicants’ claims were rejected
`based on prior art wireless gateway systems.
`
`The applicants gained allowance of the claims of the ’291 application after stating
`that the prior art systems “all appear to be directed to non-localized systems,” and
`that the “present invention,” by contrast, was “restricted to operate within a few
`feet from a base station (i.e. wireless handsets).”
`
`Verizon, 503 F3d at 1306-1307. Given this background, the court in Verizon rejected the argument
`
`“that the disclaimer in the ’291 application process (leading to the ’497 patent) should not apply
`
`to the ’880 patent because it occurred after the ’880 patent issued.” Id. at 1307. The Court held
`
`that “ ‘it is not unsound to apply the same interpretation to th[e] patent[-in-suit],’ ‘even though
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`[that] patent had already issued.’ ” Id. (quoting Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d
`
`1340, 1350 (Fed. Cir. 2004)).
`
`The facts in Verizon are analogous to the facts in this case. As in Verizon, the ’293 Patent
`
`is a divisional of the ’466 Patent, and the patents share a common specification. Similarly, the
`
`’766 Patent is a divisional of the ’578 Patent, and the patents share a common specification.
`
`Likewise, all four patents require “application program(s);” and the ’466, ’766 and ’578 Patents
`
`each require an “application launcher program.” Moreover, the specification of the ’578 Patent
`
`incorporates by reference the ’466 Patent, and explicitly states the applications are related. ’578
`
`Patent at 1:6–13, 7:17–21, 11:27–30. Likewise, the specification of the ’466 Patent incorporates
`
`by reference the ’578 Patent, and explicitly states the applications are related. ’466 Patent at 1:6–
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`12, 7:41–48, 11:17–26.
`
`Contrary to Plaintiffs’ contention, a restriction requirement does not automatically isolate
`
`the prosecution history of a divisional application from its sibling or related application. Indeed,
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 14 of 68 PageID #: 3972
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`in Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340 (Fed. Cir. 2004), the Federal Circuit
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`concluded that “[a]ny statement of the patentee in the prosecution of a related application as to the
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`scope of the invention would be relevant to claim construction, and the relevance of the statement
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`made in this instance is enhanced by the fact that it was made in an official proceeding in which
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`the patentee had every incentive to exercise care in characterizing the scope of its invention.” Id.
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`at 1350. As discussed above, it cannot be reasonably disputed that the Asserted Patents are related.
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`Accordingly, the Court finds that the prosecution histories of the ’466 and ’766 Patents are relevant
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`to the construction of identical terms in the related ’578 and ’293 Patents.4
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`
`
`V.
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`CONSTRUCTION OF DISPUTED TERMS
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`The parties’ dispute focuses on the meaning and scope of nine terms/phrases in the
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`Asserted Patents.
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`
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`1. “application program(s) / application(s)”
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`Disputed Term
`“application program(s) /
`application(s)”
`
`Plaintiffs’ Proposal
`“code associated with
`performing function for a
`user”
`
`Defendants’ Proposal
`“application level software program
`code for underlying application level
`functions that executes locally at the
`client as a separate application from
`the browser”
`
`                                                            
`4 Plaintiffs did not provide relevant authority to support their position that the prosecution history
`of a sibling application that is incorporated by reference should automatically be considered
`extrinsic evidence. The Federal Circuit has stated that “[i]ncorporation by reference provides a
`method for integrating material from various documents into a host document . . . by citing such
`material in a manner that makes clear that the material is effectively part of the host document as
`if it were explicitly contained therein.” Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d
`1272, 1282 (Fed. Cir. 2000). The court further held that the determination of “[w]hether and to
`what extent material has been incorporated by reference into a host document is a question of law.”
`Id. at 1283. For the reasons stated above, the Court finds that the prosecution histories of the ’466
`and ’766 Patents are relevant to the construction of identical terms used in the related ’578 and
`’293 Patents. Accordingly, the Court disagrees that the prosecution histories of the Asserted
`Patents in this case should be considered in isolation. Instead, the Court will consider the
`prosecution histories in the context of the disputed terms to avoid reading unnecessary and
`redundant language into a disputed term.
`
`
` 
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 15 of 68 PageID #: 3973
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`a) The Parties’ Positions
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`The parties dispute whether the term “application program” should be limited to
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`“execute[ing] locally at the client as a separate application from the browser,” as Defendants
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`propose. Plaintiffs argue that there are two ways a user can execute an application in the network
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`described in the Asserted Patents. Docket No. 140 at 4. The first method includes downloading
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`and executing an application on the client terminal. Id. Plaintiffs agree that the asserted claims of
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`the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent, are drawn to this first method. Id. The
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`second method includes the application remaining on the server and being executed remotely by
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`a user. Id. Plaintiffs contend that the claims of the ’578 and ’293 Patents cover both methods. Id.
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`Plaintiffs argue that all claims of the ’466 Patent, and claims 3, 9 and 15 of the ’766 Patent,
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`recite language that unambiguously requires execution on the client. Id. at 5. Plaintiffs contend
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`that no similar language appears in the claims or prosecution history of the ’578 or ’293 Patents.
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`Id. According to Plaintiffs, the patentees drafted the claims of the ’578 Patent to cover either
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`method. Id. Plaintiffs further argue that the claims of the ’293 Patent are directed to an exchange
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`of applications from a central management server to the remote servers, not from the remote server
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`to the client. Id. Plaintiffs contend that those claims do not mention executing the application
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`program. Id.
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`Plaintiffs further argue that nothing in the ordinary and usual meaning of “application”
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`would limit the term to software executed only at the client. Id. Plaintiffs contend that applications
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`are frequently executed at remote servers. Id. at 6. Plaintiffs argue that the intrinsic record of the
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`’578 and ’293 Patents does not contain a definition or disclaimer that would limit the claims. Id.
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`at 7. Plaintiffs also argue that nothing in the in the intrinsic record of the ’466 or ’766 Patents
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`modifies the ordinary and usual meeting of “application.” Id. Plaintiffs contend that the claims
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`of the ’466 Patent are limited to execution on the client because the claims recite this limitation in
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` 
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`Page 15 of 68
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`Case 2:16-cv-00741-RWS Document 233 Filed 08/16/17 Page 16 of 68 PageID #: 3974
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`specific language. Id.
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`Defendants respond that the ’293 and ’578 Patents explicitly distinguish the claimed
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`invention from certain prior art centralized software management systems on the basis that
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`applications were executed “at the server rather than the client.” Docket No. 150 at 9–10 (citing
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`’578 Patent at 2:50–55, 3:5–8; ’466 Patent at 2:52–57). Defendants argue that the patentees could
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`not have intended to claim a system where “applications” were executed at the server. Docket No.
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`150 at 10. Defendants also argue that the “Summary of the Invention” section of the ’293 Patent
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`states that, according to the “present invention,” “[t]he application program is then provided from
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`the server and executed at the client.” Id. (citing ’466 Patent at 3:55–4:3). Defendants contend
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`that this provides additional support that the claimed invention was directed specifically to
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`execution of applications at the client. Docket No. 150 at 10.
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`Defendants further argue that the disclosed embodiments in the ’293 and ’578 Patents
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`reflect that applications are “distributed” or “delivered” to, and executed at, the client, and that
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`there are no embodiments in which applications are executed at th