Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 1 of 12 PageID #: 5110
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`UNILOC USA, INC., et al.,
`
`Plaintiffs,
`
`
`v.
`
`
`
`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`UBISOFT, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
`
`Defendants.
`
`
`UNILOC USA, INC., et al.,
`
`Plaintiffs,
`
`
`v.
`
`
`
`ADP, LLC,
`BIG FISH GAMES, INC.,
`
`Defendants.
`
`
`
`§
`§
`§ Case No. 2:16-cv-00393-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00394-RWS
`§ Case No. 2:16-cv-00397-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
`
`§
`§
`§ Case No. 2:16-cv-00741-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-RWS
`
`MOTION TO RECONSIDER A PORTION OF THIS COURT’S MEMORANDUM
`OPINION AND ORDER CONSTRUING CERTAIN TERMS (DKT. 210)
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`On September 22, Plaintiffs (“Uniloc”) filed its Opening Claim Construction Brief in
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`Uniloc USA, Inc. v. NetSuite, Inc. (“NetSuite”), Case No. 2:16-cv-00863-RWS, Docket No. 117,
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`in preparation for a claim construction hearing before this Court in that consolidated action on
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`November 1, 2017. In that Brief (attached as Ex. A), Uniloc asks this Court to modify a portion
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`of its construction from the Opinion and Order (“Opinion”), entered August 16, 2017, in the
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`above-captioned AVG, Docket No. 210, and ADP, Docket No. 233, cases.
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`The reasons for the requested modification are set forth in that Brief, and are repeated,
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`pretty much verbatim, in this Motion to Reconsider. Uniloc is filing this Motion, in the above-
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`2796347.v1
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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 2 of 12 PageID #: 5111
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`captioned cases, to give the Defendants in these cases the opportunity to weigh in on the issue,
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`and to assure that whatever decision the Court reaches applies to all cases.
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`Uniloc requests the Court to schedule this motion for oral hearing at the same date and
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`time as the November 1 claim construction hearing in NetSuite.
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`In this Motion, Uniloc requests the Court to modify, in part, and only as to certain
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`patents, the Court’s claim construction of “application launcher program” and “application
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`program.”
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`In support of the request, Uniloc submits the accompanying declaration of Dr. Michael
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`Shamos.1
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`The Court should modify its construction of “application launcher program,” but
`only as to the ’578 patent.2
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`I.
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`
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`This Court construed “application launcher program” across all three patents in which it
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`appeared – including the ’578 patent – as “a program distributed to a client to initially populate a
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`user desktop and to request an instance of the application for execution at the client” (emphasis
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`added). Opinion at 27-31. Uniloc now asks the Court, with respect to claim 1 (and other claims)
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`of the ’578 patent,3 to modify the second half of that construction to read “to request execution of
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`the application program.”
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`To support that request, Uniloc highlights several factual statements and legal
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`conclusions in the Opinion that need to be reconsidered, and sets forth the reasons for
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`reconsideration.
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`1 The accompanying declaration is identical to the Shamos declaration submitted in NetSuite.
`NetSuite, Docket No. 117-7.
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`2 U.S. Patent 6,324,578.
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`3 Uniloc is not asking the Court to modify the construction with respect to the claims of the ’466
`patent or the ’766 patent in which “application launcher” appears.
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`2
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`
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`A.
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`The Opinion erred in using the prosecution history of the ’466 patent to
`construe claims of the ’578 patent.
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`
`
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`1. Under Abbott Laboratories, the prosecution history of the ’466 patent
`cannot be used to interpret the claims of the ’578 patent.
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`The Opinion (at 29-30) erroneously relies on statements in the prosecution history of the
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`’466 patent to construe how this term is used in claim 14 of the ’578 patent. The Opinion
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`overlooks that the separate applications for the ’578 patent and the ’466 patent were not
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`continuations, divisionals, or continuations-in-part of each other. They were filed as
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`independent, patentably distinct applications, on the same date. Further, the inventive entities
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`differed: the ’578 application included an inventor (Kaminsky) not an inventor on the ’466
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`application; the ’466 application, in turn, included inventors (McGarvey and Salahshour) not on
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`the ’578 application. Even though the applications were co-pending, shared some common
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`inventors, and were commonly assigned, the prosecution history of one cannot limit the claims of
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`the other.
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`Abbott Laboratories v. Dey, L.P., 287 F.3d 1097 (Fed. Cir. 2002) is squarely on point:
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`It is true that the ’839 and ’301 patents are commonly owned by Abbott, and
`the inventor of the ’839 patent is one of the three inventors of the ’301 patent.
`However, the ’839 application was not filed as a continuation, continuation-in-
`part, or divisional application of the ’301 application. These applications have
`no formal relationship and were presented to the patent office as patentably
`distinct inventions. … Under these circumstances, we do not see a basis for
`concluding that statements made about the characteristics of the surfactant
`claimed by the ’301 patent should be attributed to the improved surfactant
`claimed by the ’839 patent, simply because the applications had a common
`assignee, one common inventor, and similar subject matter. We therefore
`conclude that the above-quoted statements from the prosecution history of the
`’301 patent do not create an estoppel with respect to the ’839 patent.
`
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`4 In discussing the use of terms in the ’578 patent, this brief will focus on claim 1, as
`representative, but Uniloc’s arguments would be identical for the use of those terms in other
`claims of the ’578 patent.
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`
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`3
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`

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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 4 of 12 PageID #: 5113
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`Id. at 1104-05 (emphasis added); see also In re Berg, 140 F.3d 1428, 1435 n. 7 (Fed. Cir. 1998)
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`(noting, in the context of considering a double patenting rejection, that two applications filed by
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`the same inventor were “not related as by continuation, continuation-in-part, or divisional” and
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`that filing such two separate applications implied “that each application is independent and
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`patentably distinct”).
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`
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`The Opinion (at 11-14) justified reliance on the ’466 prosecution history by citing
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`Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1306-07 (Fed. Cir. 2007) and
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`Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004). The Opinion,
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`however, overlooked that the applications in those cases were formally related, as continuations,
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`continuations-in-part, or divisionals, unlike the relationship between the ’578 application and the
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`’466 application. That is the critical distinction Abbott Laboratories highlights.
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`
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`Additionally, in Verizon and Microsoft, the inventive entities were the same. Here, the
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`inventive entities differ. The inventive entity of the ’466 application did not include Kaminsky
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`and thus that entity would not have authority to surrender, on Kaminsky’s behalf, the scope of
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`claims that Kaminsky, et al., had obtained.
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`
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`B.
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`The Opinion erred in using the prosecution history of the ’766 patent to
`construe the claims of the ’578 patent.
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`
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`1. Under Microsoft and Georgia-Pacific, statements in the prosecution
`history of the ’766 patent do not affect construction of claims in the ’578
`patent.
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`The Opinion (at 29) erroneously relied on statements in the prosecution history of the
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`’766 patent to construe how this term is used in the ’578 patent. The error, however, is different
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`from the one recited above. Because the application for the ’766 patent was a divisional of the
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`application for the ’578 patent, Abbott Laboratories would not apply. Under the authority of
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`4
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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 5 of 12 PageID #: 5114
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`both Microsoft and Verizon, the prosecution history of the ’766 patent could have relevance to
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`construction of the ’578 patent.
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`But there are two significant limitations, which prevent using those prosecution histories
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`here to construe the ’578 patent. In Microsoft, 357 F.3d at 1349 n. 7, the majority opinion
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`distinguished statements in a prosecution history that “refer more specifically to the references
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`cited against the claims of the [patent being prosecuted] only.” The majority limited the
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`relevance of those statements to construction of the claims of the patent then being prosecuted,
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`holding statements of that type could not be used to construe claims of other patents in the
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`family. Thus, under Microsoft, statements in the prosecution history of the ’766 patent that refer
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`to references cited only against claims of the ’766 patent cannot be cited to construe other
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`patents, however related. The statements from the ’766 prosecution history that the Opinion (at
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`29) refers to clearly fall in that category, as they are statements distinguishing prior art references
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`(Duvvoori, Franklin, Christiano ) cited against only the claims of the ’766 patent.
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`The other significant limitation arises from Georgia-Pacific Corp. v. United States
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`Gypsum Co., 195 F.3d 1322, 1333 (Fed. Cir. 1999). As the majority opinion in Microsoft, 357
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`F.3d at 1350, itself acknowledges, the Georgia-Pacific case:
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`rejected the argument that the patentee was “bound by” statements made by the
`applicant in connection with a later application after the patent in suit had
`already issued. … We rejected the argument that the patentee was bound, or
`estopped, by a statement made in connection with a later application on which
`the examiner of the first application could not have relied.
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`Here, the ’578 patent issued on November 27, 2001. The examiner of the ’578 patent
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`thus could not have relied on any statements made after that date in the prosecution of the ’766
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`patent, and there were no statements before that date. Although the application for the ’766
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`patent was filed on April 10, 2001, as it turns out, there were no statements at all in that
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`5
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`prosecution until well after November 27, 2001 because the Patent Office did not issue its first
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`office action in that prosecution until May 7, 2002, and the applicant first responded on August
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`1, 2002. Georgia-Pacific would hold that those, and any later, statements in the ’766
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`prosecution cannot bind, or estop, the patentee of an earlier patent.
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`Here, if the intrinsic record of the ’578 patent, namely, its specification and prosecution
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`history,5 does not itself limit the construction of “application launcher,” Georgia-Pacific holds
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`that post-issuance statements in a continuation or divisional of the ’578 patent do not bind or
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`create an estoppel as to the ’578 patent itself.
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`As to use of the prosecution history of the ’466 patent to construe claims of the ’578
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`patent, Abbott Laboratories creates an absolute bar, as argued earlier. But it is worth noting that
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`if Abbott Laboratories did not apply, Microsoft and Georgia-Pacific still would. The use of
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`statements from the ’466 patent history would have to be shown to satisfy the requirements of
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`both cases, before they could be used to construe claims of the ’578 patent.
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`C.
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`The construction does not reflect the ordinary meaning of “application
`launcher.”
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`The Opinion (at 28) found that “application launcher program” is not a term of art, but
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`was a term coined by the patentees for the Asserted Patents. But there had been no evidence
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`before the Court that the patentees coined the term, nor had they claimed to have done so. The
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`Court was apparently misled by a bald assertion, in a brief of the Defendants, that the patentees
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`had coined the term. AVG, Docket No. 185, at 3 (Ex. B). They had not.
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`Uniloc submits the accompanying declaration of Dr. Michael Shamos, as to the ordinary
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`meaning of “application launcher program.” As Dr. Shamos testifies, “application launcher” was
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`5 The ’578 patent issued on a first office action (Shamos Decl., ¶ 7) and thus would have no
`prosecution history that could narrow the scope of its claims.
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`6
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`in common use before 1998, when the application for the ’578 patent was filed (¶ 26-32). A
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`person of skill in the art (POSITA) at that time would have understood an “application launcher”
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`as “a computer program that launches, i.e., starts, another computer program” (¶ 28). Dr.
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`Shamos provides copious examples, including the use of the term in seven prior art patents6
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`(Shamos Decl., Ex. 2-8) and a 1997 article describing a contemporaneous product, which Novell
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`marketed as the Novell Application Launcher (Shamos Decl., Ex. 9).
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`As documented in several of Dr. Shamos’s examples, the ordinary meaning of
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`“application launcher” reads on programs that launch executions of applications on the server,
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`including the Novell Application Launcher (¶ 29-32).
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`Dr. Shamos testifies nothing in the language of claim 1 of the ’578 patent would limit
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`“application launcher” to programs that launch only at a client (¶ 33-35).
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`Claim 1, in its entirety, reads:
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`A method for management of configurable application programs on a network
`comprising the steps of:
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`installing an application program having a plurality of configurable
`preferences and a plurality of authorized users on a server coupled to the
`network;
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`distributing an application launcher program associated with the application
`program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences associated
`with one of the plurality of authorized users executing the application
`launcher program;
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`obtaining an administrator set of the plurality of configurable preferences
`from an administrator; and
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`6 Among those patents are ones entitled “Launching Computer Applications,” “Distributed
`Application Launcher for Optimizing Desktops Based on Client characteristics Information,” and
`“Protected Application Launchers with Graphical Interface” (Shamos Decl., Ex. 2-4).
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`7
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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 8 of 12 PageID #: 5117
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`executing the application program using the obtained user set and the obtained
`administrator set of the plurality of configurable preferences responsive to a
`request from one of the plurality of authorized users.
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`(emphasis added). An inspection of the entirety of claim 1 confirms that nothing in that claim
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`refers to, or implies, “request[ing] an instance of the application program for execution at the
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`client,” the requirement the existing construction adds.
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`Dr. Shamos reviews the specification of the ’578 patent, and testifies that nothing in the
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`specification would cause a person of skill in the art to limit the ordinary meaning of the term
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`(¶ 36-49). Further, he cites specific portions of the specification that would confirm the
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`inventors intended the ordinary meaning to apply (¶ 42-49).
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`He points out the advantage of the invention of the ’578 patent is that a centralized
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`database containing stored user and administrator preferences can be queried and updated. As he
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`testifies, because that advantage does not depend on the whether the applications are executed at
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`the client or the server, a POSITA would thus not have expected the inventors to limit the
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`invention to an embodiment that executes applications only on the client, and they did not (¶ 37).
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`Although the specification of the ‘578 patent describes an “alternative embodiment” that
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`executes an instance of the application at the client, Dr. Shamos testifies that a POSITA reading
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`the specification and claim 1 would not read such a limitation into the ordinary meaning of the
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`broadest claim simply because that feature is described as part of an “alternative” embodiment (¶
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`40).
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`As reflected in his testimony and the documented examples, a construction requiring
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`execution occur only at the client does not reflect the ordinary meaning of that term.7
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`7 The Opinion (at 4) contains an error. It copies, and labels as claim 1, what is actually claim 15.
`The copied claim (15) is narrower than claim 1, because claim 15 requires the server “provide an
`instance of the application program” responsive to a request from a user, a limitation not in claim
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`8
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`II.
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`
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`The Court should modify its construction of “application program,” but only as to
`the ’578, ’293, and ’766 patents
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`The Court construed “application program” to mean “the code associated with the
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`underlying program functions that is a separate application from a browser interface and does not
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`execute within the browser window.” Uniloc requests the Court – with respect to only the ‘578,
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`‘293, and ‘766 patents –to modify the construction by deleting the italicized phrase.
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`An application is software written to perform a particular function for a user -- as
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`opposed to system software, which is designed to operate the network. Nothing in the ordinary
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`meaning of “application,” nor any other language in the asserted claims of the ’578, ’293, or
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`’766 patents, if given its ordinary meaning, would rule out a program executed within the
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`browser window.
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`The Opinion’s construction, which included “does not execute within the browser
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`window,” seemingly applies to all four patents. Opinion at 19-23. The sole stated basis for
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`adding that phrase to the construction was that the inventors of the ’466 patent, during the
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`prosecution history of the ’466 patent, argued “an instance of the application program …
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`executes locally at the client as a separate application from the browser interface [and] would not
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`execute within the browser window.” Opinion at 20.
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`Uniloc does not object to that construction, as applied to the ’466 patent. To begin with,
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`the statements on which the Court relied were made during the prosecution of that patent.
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`1. Perhaps this mistake – copying the wrong claim as claim 1 – caused the BACKGROUND
`section of the Opinion (at 4) to state, erroneously:
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`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.
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`(emphasis added). Inspection of the actual claim 1 readily shows nothing in it supports the
`underlined portion of that statement.
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`9
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`Further, the statements reasonably describe the invention of the claims of the ’466 patent. The
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`claims of that patent literally require “providing an instance of the … application… to the client
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`for execution,” seemingly ruling out - for those claims - executing an application remotely within
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`the browser window.
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`But, for the reasons described earlier, under Abbott Laboratories, statements in the ’466
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`prosecution history cannot be considered at all in construing the ’578 or ’766 patents.
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`Further, because the statements appear to be simply describing features mandated by the
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`specific limitations of the claims in the ’466 patent prosecution history, a person of skill in the art
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`would not understand the statements of the ’466 patent inventors as applying to inventions
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`claimed in the other three patents, which do not have the features the statements describe.
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`Because the claims of the other patents omit any requirement of providing an instance of the
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`application for execution locally at the client, the statements the Opinion relies upon would have
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`been untrue if they had appeared in the prosecution history of the other patents.
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`Dr. Shamos, in his declaration (¶ 50-53), testifies that no portion of the ’578 patent
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`contains, or otherwise supports, a construction of claim 1 of the’578 patent that would exclude
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`an application that executes within the browser window. In fact, he cited a passage from the
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`specification (8:7-20) of that patent that describes an exemplary situation in which the
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`application is literally executed within the browser window:
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`It is further to be understood that, in the JAVA™ environment, currently
`available web browser applications are known to those of skill in the art which
`provide a user interface and allow hardware independent communication such
`as that currently specified by Internet protocols. Thus, the application launcher
`programs may be applets which display the icon which are associated with a
`web browser Universal Resource Locator (URL) which points to the location
`of the applet to be executed. Upon selection of the icon displayed by the
`application launcher, the selected application is “launched” by requesting the
`URL of the application from the on-demand server. Such requests may be made
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`10
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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 11 of 12 PageID #: 5120
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`utilizing conventional Hyper-Text Transfer Protocol (HTTP) communications
`or other suitable protocols.
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`Dr. Shamos testifies:
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`The above passage describes an exemplary situation in which the application is
`literally executed within the browser window. A Java applet is a hardware- and
`operating system-independent piece of code, written in a language known as
`Java bytecode, which is downloaded to a client and executed using software
`known as a “Java Virtual Machine” (JVM). All major browsers implemented
`a JVM; otherwise, they would not have been able to support webpages
`containing Java applets. Thus, the construction of claim 1 would not read on
`this embodiment.
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`A construction that would result in no claim reading on a preferred embodiment is highly
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`suspect. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342-43 (Fed. Cir. 2001).
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`
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`As Dr. Shamos testifies, the claims of the ’578 patent do not exclude an application that
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`executes within the browser window, and the specification of that patent includes an embodiment
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`that literally executes within the browser window. Similarly, the claims of the ’293 patent8 do
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`not relate at all to where or how applications are executed, but only to transmitting applications
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`from a network management server to an intermediate server. There would have been no reason
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`for the inventors to impose a limitation - or even to mention - a feature not in the claims, and
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`thus irrelevant to the invention or to any art cited during the prosecution of those patents.
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`8 As to the ’293 patent, the statements, apart from being irrelevant to the invention of that patent,
`would not qualify under the Microsoft standard, dismissed earlier.
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`11
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`Case 2:16-cv-00741-RWS Document 266 Filed 09/27/17 Page 12 of 12 PageID #: 5121
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`Date: September 27, 2017
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`Respectfully submitted,
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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
`
`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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`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 September 27, 2017.
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`/s/ James J. Foster
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`12
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