Trials@uspto. gov
`571-272-7822
`
`Paper 49
`Date: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2021-00096
`Patent 10,782,951 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Contingent Motion to Amend
`Granting-1n-Part Petitioner’s Motion to Exclude
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. $§ 326(d), 328(a); 37 CFR. § 42.64(c)
`
`
`571-272-7822
`
`Paper 49
`Date: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2021-00096
`Patent 10,782,951 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED,Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Contingent Motion to Amend
`Granting-1n-Part Petitioner’s Motion to Exclude
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. $§ 326(d), 328(a); 37 CFR. § 42.64(c)
`
`
`
`PGR2021-00096
`Patent 10,782,951 B2
`
`I.
`
`INTRODUCTION
`
`IronSource Ltd. (“Petitioner”) requested a post-grant review of claims
`
`1—18 (the “challenged claims”) ofU.S. Patent 10,782,951 B2 (Ex. 1001, “the
`
`951 patent”). Paper 2 (“‘Petition” or “Pet.”). Digital Turbine Inc. (“Patent
`
`Owner’) filed a Preliminary Response. Paper 7. Applying the standard set
`
`forth in 35 U.S.C. § 324(a), we instituted a post-grant review of the
`
`challenged claims. Paper 14 (“Inst. Dec.”’).
`
`After institution, Patent Ownerfiled a Patent Owner Response
`
`(Paper 18, “PO Resp.”), Petitionerfiled a Reply to Patent Owner’s Response
`
`(Paper 23, “Pet. Reply”), and Patent Ownerfiled a Sur-reply (Paper 26, “PO
`
`Sur-reply”). Additionally, Patent Ownerfiled a Contingent Motion to
`
`Amendunder 37 C.F.R. § 42.221. Paper 19(“MTA’). Petitioner filed an
`
`Opposition to the MTA (Paper 24, “MTA Opp.”), Patent Ownerfiled a
`
`Reply in Support of the MTA (Paper 28, “MTA Reply”), and Petitionerfiled
`
`a Sur-reply in Opposition (Paper 38, “MTA Sur-reply”).
`
`Both parties filed Motions to Exclude. Specifically, Petitioner filed a
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`Motion to Exclude (Paper39, “Pet. MTE”), which Patent Owner opposed
`
`(Paper 44, “PO MTE Opp.”). Patent Ownerfiled a Motion to Exclude
`
`(Paper 41, “PO MTE’”); Petitionerfiled an Opposition (Paper43, “Pet. MTE
`
`Opp.’’); and Patent Ownerfiled a Reply to Petitioner’s Opposition (Paper 46,
`
`“PO MTEReply”).
`
`An oral argument washeld in this proceeding on October 4, 2022, and
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`a transcript was entered into the record. Paper 48 (“Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6. This Decision 1s a final
`
`written decision under 35 U.S.C. §328(a) as to the patentability of claims
`
`1—18 of the °951 patent. For the reasonsdiscussed below, we determinethat
`
`Petitioner has shownby a preponderance ofthe evidencethat clams 1—18 of
`
`
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`PGR2021-00096
`Patent 10,782,951 B2
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`the °951 patent are unpatentable. We deny Patent Owner’s Contingent
`
`Motion to Amend as to proposed substitute claims 19-36. We deny Patent
`
`Owner’s motion to exclude, and grant-in-part Petitioner’s motion to exclude.
`
`I. BACKGROUND
`
`A, Real Parties in Interest
`
`Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
`
`Owneridentifies itself as the real party-in-interest. Paper6, 1.
`
`B. RelatedMatters
`
`The parties identify U.S. Patent Application Serial No. 16/992,194
`
`(now issued as U.S. Patent 11,157,256 B2, “the ’256 patent’’) that claims the
`
`benefit of the °951 patent. Pet. 1; Paper6, 1. Petitionerfiled a post-grant
`
`review petition challenging claims 1—22 of the ’256 patent in PGR2022-
`
`00053 on July 25, 2022.
`
`C. The 951 Patent (Ex. 1001)
`
`The ’951 patent, titled “Instant Installation of Apps,” wasfiled on
`
`February 23, 2018, as Application No. 15/903,054 (“the ’054 application’).
`
`Ex. 1001, codes (21), (22), (54). The patent describesan installation client
`
`for installing new software applications (“apps”) on a device, without
`
`redirecting the device to an app store.
`
`/d. at 1:45-47. The installation client
`
`enables users to download new appsin the background while maintaining
`
`interaction with their currently-used application.
`
`/d. at 1:66—2:5.
`
`
`
`PGR2021-00096
`Patent 10,782,951 B2
`
`Figure 1 of the °951 patent is reproduced below.
`
`
`
`Figure 1, above, showsa block diagram of device 100 for running software
`
`applications, which includes processor 110 connected to non-transitory
`
`memory 120 which stores apps 130 andinstallation client 140.
`
`/d. at 9:15—
`
`17, 9:29-47. Device 100 may be a mobile device.
`
`/d. at 9:34—35.
`
`The ’951 patent describes the following example of a user using an
`
`app running on device 100:
`
`The current app displays an “instant install” link (e.g. an ad
`containing a clickable link) for a different app (denoted herein
`the new app). Whenthe userselects the “instant install” link in
`order to download the new app,installation client 140 is invoked
`torunin the background. The current app 1s not exited. The user
`may continue to use the current app without being aware that
`installation client 140 is now active in the background.
`Installation client 140 automatically downloadsan installation
`file for the newapp.... The installation file is used to install
`the new app onthe device.
`
`Id. at 9:36-47. Figure 6 of the ’951 patent is reproduced below.
`
`
`
`PGR2021-00096
`
`Patent 10,782,951 B2 inst
`
`ton cheut
`' downloads installation |
`i
`
`i
`
`Figure 6, above, showsa flowchart illustrating a methodforinstalling
`
`software applications ona device, beginning with selecting an install link for
`
`an app (step 610), followed by determining whetheraninstallation client1s
`
`available (step 620).
`
`/d. at 13:48-56. If “YES,” the installation client1s
`
`invokedin the background(step 630), and proceeds to downloadthe
`
`installation file for the app (step 640) and install the app using the
`
`installation file (step 650).
`
`/d. at 13:57—62. If“NO,”the deviceis
`
`redirected to an app store (step 660).
`
`/d. at 13:63—64.
`
`
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`PGR2021-00096
`Patent 10,782,951 B2
`
`Figure 7 of the °951 patent is reproduced below.
`
`installation Clent Gownload & installer
`
`Passware eee
`
`:
`
`;
`
`Figure 7, above, shows a schematic diagram ofinstallation client 700,
`
`including several modules.
`
`/d. at 14:4—8. User Experience (UX) module
`
`UX 710 handles interaction with the user, and supports functionality such as
`
`providing app details, handling animationsfor display, and handling
`
`operations whenaninstall link is selected.
`
`/d. at 14:12—25. Download and
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`Installer 720 downloads andinstalls the new app whenthe install link is
`
`selected.
`
`/d. at 14:32—36. Reporter 750 monitors events occurring in the
`
`installation client, such asclicks on links, user confirmationto install app,
`
`successful download, successful install and otherstatus/failure related
`
`events.
`
`/d. at 14:36—45.
`
`
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`PGR2021-00096
`Patent 10,782,951 B2
`
`D. Challenged Claims
`
`Petitioner challenges claims 1—18, ofwhich claims 1, 12, and 17 are
`
`independent claims. Claim 1 is reproduced below.
`
`[pre] A mobile device configured for running software
`1.
`applications, comprising:
`
`[a] a network interface configured for communicating over a
`network;
`
`[b] at least one non-transitory computer readable storage medium
`storing instructions; and
`
`[c] at least one processor associated with said network interface
`and said storage medium, configured for executing said
`instructionsto:
`
`[d]
`
`identify that a link for mstallation of a first software
`application is selected by user interaction with a second
`software application running on said device, the link being
`embeddedin content displayed on said device by the second
`software application;
`
`[e]
`
`in response to said identifying, determine whether an
`installation client for downloading and installing applications
`on said device is available on said device, said installation
`chent comprising a third software application;
`
`[f] whensaid installation client is available on said device:
`
`[f1] invoke, without exiting said second software application,
`said installation client
`for downloading and installing
`applications on said device to run in the background on
`said device;
`
`[f2] mstruct said installation client to automatically download
`an installation file of said first software application to said
`device over said network using said network interface in
`the backgroundonsaid device, without directing said user
`interaction to an app store; and
`
`[f3] using said downloadedinstallation file, install said first
`software application on said device in the background on
`said device while maintamimg a user experience of
`
`
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`PGR2021-00096
`Patent 10,782,951 B2
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`interaction with said second software application in the
`foreground; and
`
`[g] when said installation client is unavailable on said device,
`redirect said device to an app store for downloading and
`installing said first software application on said device.
`
`Ex. 1001, 20:64—21:35 (annotations from Pet. 9-10).
`
`FE... Prior Artand Instituted Grounds ofUnpatentability
`
`Weinstituted trial based on the following grounds of unpatentability:
`
`iisti(<ié‘éC*LCO#é(*NNClEligibitty=U
`1, 3-12, 14-18
`102(a)
`
`103|Pasha, Molinet
`
`103
`
`[Pasha, Yamada
`
`Inst. Dec. 8, 53-54. Petitioner supports its arguments with declaration
`
`testimony of Kevin C. Almeroth, Ph.D. Exs. 1008, 1023. Patent Owner
`
`supports its arguments with declaration testimony of Zhuoquing Morely
`
`Mao, Ph.D. Ex. 2005.°
`
`‘U.S. Patent 10,353,686 B1, issued July 16, 2019 (Ex. 1003, “Pasha’’).
`? Although the Petition omits claims 11, 16, and 18 from its listing of
`challenged claims under Ground3 (Pet. 4), the Petition challenges these
`claims as obvious in view of Pasha.
`/d. at74, 81-82.
`3U.S. Patent Application No. 2010/0095294 A1, published April 15, 2010
`(Ex. 1004, “Yamada’’).
`+U.S. Patent Application No. 2016/0142859 A1, published May 19, 2016
`(Ex. 1005, “Molinet”).
`> Patent Ownerfiled a supplemental declaration of Dr. Mao (Ex. 2013) with
`its Patent OwnerSur-reply, and paragraphs 4—13 ofthat declaration relate to
`patentability of the original claims. As discussed below (infra § V.A), we
`exclude those portions of Dr. Mao’s supplemental declaration because they
`do not meet the requirements of 37 C.F.R. § 42.23(b). Tothe extent Patent
`
`8
`
`
`
`PGR2021-00096
`Patent 10,782,951 B2
`
`A. Eligibilityfor Post-Grant Review
`
`II. ANALYSIS
`
`Post-grant review is available only for patents that, at one point,
`
`containedat least one claim with an effective filing date, as defined by 35
`
`U.S.C. § 100), on or after March 16, 2013. Also, the request for post-grant
`
`review mustbefiled no /ater than nine monthsafter the patent is granted.
`
`35 U.S.C. §321(c). Petitioner asserts that the 951 patent is available for
`
`post-grant review. Pet.3. Weagree. The filing date for the ’951 patent is
`
`February 23, 2018, and the patent issued on September 22, 2020, exactly
`
`nine months before the filing date of the petition, June 22, 2021. Ex. 1001,
`
`codes (22), (45); Paper 4, 1.
`
`B. Level ofOrdinary Skill in the Art
`
`Theparties generally agree that a person of ordinary skill in the art
`
`would have formal education in computerscienceora related field, and two
`
`or more years of computer programming experience. Pet. 13 (citing
`
`Ex. 1008 7 39); PO Resp. 10 (citing Ex. 2005 { 45).
`
`On the complete record, we adoptthe parties’ definition ofthe level of
`
`skill in the art. We further note that the prior art itself demonstrates the level
`
`of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261
`
`F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding
`
`ordinary skill level are not required “wherethe priorart itself reflects an
`
`appropriate level and a needfor testimonyis not shown’’) (quoting Litton
`
`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`
`1985)).
`
`Owner’s arguments below rely on those paragraphs, we do not considerthat
`evidencein arriving at our determinations.
`
`9
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`
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`PGR2021-00096
`Patent 10,782,951 B2
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`C. Claim Construction
`
`In this post-grant review, claims are construed using the same claim
`
`construction standard that would be used to construe the claimsin a civil
`
`action under 35 U.S.C. § 282(b). See 37C.F.R. § 42.200(b) (2020). The
`
`claim construction standard includes construing claims in accordancewith
`
`the ordinary and customary meaning of such claims as understood by one of
`
`ordinary skill in the art at the time of the invention. See Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312-14 (Fed. Cir. 2005) (en banc). In construing
`
`claims in accordance with their ordinary and customary meaning, we take
`
`into accountthe specification and prosecution history. Phillips,415 F.3d at
`
`1315-17. Additionally, only termsthat are in controversy need to be
`
`construed, and these need be construed only to the extent necessary to
`
`resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
`
`construedthat are in controversy, and only to the extent necessary to resolve
`
`the controversy”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context
`
`of an AIA proceeding).
`
`Patent Ownerproposesconstructionsfor the terms “invoke” and
`
`“redirect,” which are disputed by Petitioner. See PO Resp. 10—16; Pet.
`
`Reply 1-6. Accordingly, we addressthe parties’ arguments below.
`
`1.
`
`Invoke
`
`a) The Parties’ Arguments
`
`Patent Ownerarguesthat the term “invoke”or “invoking” “should be
`
`construed as ‘invoketo run’ or “invoking to run,’ from a state in which the
`
`installation client was not previously running.” PO Resp. 10-11. Patent
`
`Ownerarguesthat the 951 patent specification repeatedly uses the term
`
`10
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`
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`PGR2021-00096
`Patent 10,782,951 B2
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`“invoked to run” and “does not disclose an instance in whichtheinstallation
`
`client is invoked to run whenit is already running.” /d. at 11—12 (citing
`
`Ex. 1001, code (57), 1:51-52, 3:44-46, 3:60-62, 4:10-12, 6:43-46, 9:39-42,
`
`13:33—34, 13:57—-58, claims 1, 12, 17; Ex. 2005 §§] 76-79). Patent Owner
`
`arguesthat a program “is not ‘runnable’ (1.e., [the program is] stopped,
`
`blocked, or unavailable)” before it 1s invoked.
`
`/d. at 12 (citing Ex. 2007).
`
`According to Patent Owner, invoking “would have been understood by a
`
`person of ordinary skill in the art to be an ‘action of passing specific
`
`arguments/parametersto the program so it can run accordingto the desired
`
`inputs.’” /d. (citing Ex. 2005 ¥ 80)
`
`Petitioner argues that ““[i]nvoke’ is properly understood undertts
`
`plain and ordinary meaning, whichis to call or activate.” Pet. 39 (citing
`
`Ex. 1008 § 163). Petitioner argues that the “surrounding claim language
`
`gives context and specifies that the installation client runs in the background
`
`onceit is invoked, but does not place any requirements on the state of the
`
`installation client prior to bemg ‘invoked’ (e.g., running or not running).”
`
`Pet. Reply 1-2 (citing Ex. 1008 § 163). Petitioner contendsthat the
`
`specification never specifies the state of the installation client whentt is
`
`being invoked,and although the specification uses the phrase “invoked to
`
`run”several times, it also uses the term “invoke” without any reference to
`
`“run” eleventimes. Id. at 2 (citing Ex. 1001, 4:45—49, 10:22—23, 10:32—33,
`
`12:24—26, 12:50-51, 13:24, 14:47-S0, Figs. 4A, 4B, 5, 6). Petitioner
`
`argues that runningthe installation client in the backgroundis important to
`
`achieving the objectives of the claimed invention, but the state of the client
`
`whenit is invokedis irrelevant.
`
`/d.
`
`Petitioner argues that dependent claim 2 supports Petitioner’s
`
`proposed construction because that claim depends from claim 1 and further
`
`11
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`
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`PGR2021-00096
`Patent 10,782,951 B2
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`recites that the installation client 1s closed when installation of the first
`
`software application is completed.
`
`/d. at 2—3; Ex. 1001, 21:36-39.
`
`Petitioner contendsthat claim 1 does not require closing the installation
`
`client and “the installation client may remain runningafter the installation of
`
`the first software application is completed,” 1.e., when the installation client
`
`is subsequently invoked. Pet. Reply 3.
`
`Finally, Petitioner argues that Dr. Mao’s testimony does not support
`
`Petitioner’s proposed construction because Dr. Mao acknowledged that
`
`something already running in the background could also be invoked. See id.
`
`at 3 (citing Ex. 1024, 199:3—200:12, 200:14—23, 201:15—202:4; Ex. 2005
`
`4103). Petitioner further contends that Dr. Mao’s testified that passing
`
`specific arguments/parameters to the program so it can run according to the
`
`desired inputs is irrelevant to whetherthe installation client is already
`
`running or not.
`
`/d. at 3—4 (citing Ex. 1008 § 163; Ex. 1024, 201:5—202:4,
`
`202:9-203:20; Ex. 2005 4 80).
`
`In its Sur-reply, Patent Owner respondsthat “‘invoking to run’ has no
`
`meaning other than to begin running fromastate in which theinstallation
`
`client was not previously running.” PO Sur-reply 3-4 (citing Ex. 2005
`
`4] 80). Patent Ownerarguesthat Petitioner takes Dr. Mao’s testimony out of
`
`context, and “[bJeing invoked to run in the background in no way addresses
`
`whetherthe app is being invoked to run from a state in which the installation
`
`client was not previous running.” /d. at 4 (citing Ex. 2013 99 5—8; Ex. 1024,
`
`200:8—-12). Patent Ownerarguesthat claim 2 1s irrelevant to the
`
`understanding ofthe claim term “since the claim only recites a single invoke
`
`step.” Id. at 4—5 (citing Ex. 2013 § 9).
`
`12
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`Patent 10,782,951 B2
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`b) Analysis
`
`Underthe claim construction standard applied in this proceeding,
`
`“[t|he words of a claim are generally given their ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art when read in
`
`the context of the specification and prosecution history.” Thorner v. Sony
`
`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing
`
`Phillips, 415 F.3dat 1313). “Thereare only two exceptionsto this general
`
`rule: 1) when a patenteesets out a definition and acts as his own
`
`lexicographer, or 2) when the patentee disavowsthe full scope of a claim
`
`term either in the specification or during prosecution.” /d. (citing Vitronics
`
`Corp. v. Conceptronic, Inc. ,90 F.3d 1576, 1580 (Fed. Cir. 1996)). Neither
`
`of those exceptions apply here, and for the reasons below,wefind the plain
`
`and ordinary meaning of “invoke”or “invoking”to beto call or activate, as
`
`proposedbyPetitioner.
`
`Webegin with the claim language at issue. 7O Delta, LLC v. DISH
`
`Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). When considering the
`
`language ofthe claim overall, the usage of “invoke”in the claims does not in
`
`any way indicate whetherthe installation client is previously running or not.
`
`Claim 1 recites “invoke, without exiting said second software application,
`
`said installation chent for downloading andinstalling applications on said
`
`device to run in the background on said device.” Ex. 1001, 21:17—20
`
`(emphasis added). Patent Owner focuseson the phrase “to run,” arguing
`
`that the “claims themselvesrecite the phrase ‘invoke .
`
`.
`
`. to run,’” but that
`
`reading ignores the rest of the claim language. The claim uses the phrase “to
`
`run”in context of the installation client running in the backgroundon the
`
`device. That is, after all, a key goal of the invention described in the
`
`disclosure. See, e.g., Ex. 1001, 1:24—31 (discussing the problem with
`
`13
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`redirecting a user to an appstore); Pet. Reply 2. Thus, we are not persuaded
`
`that claim language necessarily ties “invoke”to the phrase “to run” instead
`
`of the complete phrase “to run in the background on said device.”
`
`For the same reason, Patent Owner’s argumentthat“the specification
`
`is clear that ‘invoke’ means “invoke to run’”is not persuasive. Pet. Reply 3;
`
`PO Resp. 11-12 (citing Ex. 1001, code (57), 1:51—-52, 3:4446, 3:60-62,
`
`4:10—-12, 6:43—46, 9:39-42, 13:33-34, 13:57-58). Ineach of Patent
`
`Owner’s cited instances, the specification uses the words“to run” with “in
`
`the background,”thus, indicating that the installation client runs in the
`
`background, and not, as Patent Owner suggests, to mandate that the client be
`
`invoked to runfrom a non-runningstate. See, e.g., Ex. 1001, 1:51-52
`
`(“Whenan instant install link is selected, the installation client is invoked to
`
`run in the background.”’). Moreover, as Petitioner points out, in many
`
`instances, the specification simply uses the term “invoke” without any
`
`referenceto “run,” contradicting Patent Owner’s position that “invoke” has
`
`to always mean “invoke to run.” Pet. Reply 2 (citing Ex. 1001, 4:45—49,
`
`10:22—23, 10:32—33, 12:24—26, 12:50—-51, 13:24; 14:47—50, Figs. 4A, 4B,
`
`5,6). Patent Ownerfurther arguesthat “the specification does not disclose
`
`an instance in whichtheinstallation client is invoked to run whenit is
`
`already running,” andthat “a construction of invokedthat requires the
`
`installation client to already be running would be improper becauseit is not
`
`supported by the written description of the specification.” PO Resp. 12
`
`(citing Merck Co. v. Teva Pharms. USA, Inc. , 347 F.3d 1367, 1371 (Fed. Cir.
`
`2003). But neither does the specification expressly disclose an instance in
`
`whichthe installation client is invoked whentt 1s nof running, and Patent
`
`Owner’s construction importing such a requirement would also be improper.
`
`A construction of the term “invoke”as “to call or activate”permits (not
`
`14
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`PGR2021-00096
`Patent 10,782,951 B2
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`requires) instances wheretheinstallation client is invoked from a running
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`state or from a non-running state—both ofwhich are supported by the
`
`specification.
`
`Weare further persuaded the language of dependentclaim 2, that the
`
`installation client is “closed”(.e., in a non-running state) wheninstallation
`
`is completed, supports a broader construction ofthe term “invoke,”as
`
`recited in the independent claim. See Ex. 1001, 21:36—39. Patent Owner
`
`arguesthat a scenario involving a subsequent invoking ofthe installation
`
`client is a hypothetical onethatis irrelevant since the claim only recites a
`
`single invoke step. PO Sur-reply 4-5. We agree with Patent Ownerthat
`
`claim differentiation doesnot fully resolve the claim construction issue here,
`
`but it does provide guidanceas to the scope of claim 1 because dependent
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`claim 2 specifically recites the installation client in non-runningstate,
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`whereas independent claim 1 is silent.
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`Nor are we persuaded by Patent Owner’s extrinsic evidence to
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`narrowly construe “invoke.” Patent Ownerrelies on Dr. Mao’s testimony
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`that the term invoke would have been construed by a personofordinary skill
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`in the art as invoke to run from a state in which the installation client was
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`not previously running. PO Resp. 12 (citing Ex. 2005 4] 80-81; Ex. 2007).
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`Relying on a developerguide titled “Running Android tasks in background
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`threads,” Dr. Maotestifies that “before the thread (or a program)is invoked,
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`it’s not runnable, meaningit’s stopped, blocked, unavailable, and waiting for
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`response. This meansthat before the thread or program is invoked,it is not
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`‘runnable.’” Ex. 2005 7§ 80—81 (citing Ex. 2007). The developer guide,
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`however, does not support Dr. Mao’s testmony. The cited portion refers to
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`an interface called “Runnable” with a methodthat is executedin a thread
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`wheninvoked;it does notstate that the thread is not “runnable” when
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`invoked. Ex. 2007, 3. Moreover, Dr. Mao contradicts her own testimony in
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`other portions of her declaration by testifying that closing an app “can also
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`meanto allow the app to run in the background without terminating the app
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`so that it can be invoked in the background again for the next use.” Ex. 2005
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`4| 103 (emphasis added); see also Ex. 1024, 199:22—200:12 (testifying that
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`installation client “could be stopped, paused, or running in the background”
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`when invoked (emphasis added)). Wetherefore do not find Dr. Mao’s
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`testimony persuasive to concludethat a person ofordinary skill in the art
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`would have understoodthe claim term “invoke” to mean invoking the
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`installation client from a state in which it wasnot previously running. The
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`record simply does not support Patent Owner’s position. Invoke, therefore,
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`meansto call or activate.
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`2. Redirect
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`a) The Parties’ Arguments
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`Patent Ownerarguesthat “redirect” should be construed as the device
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`causing the user device to be shifted to an app store without requiring a user
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`interaction. PO Resp. 13. Patent Ownerpoints out that the specification
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`expressly defines the term “redirected to an app store” to mean “that user
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`interaction using the device is shifted to a site and/or application for
`
`obtaining apps,” and arguesthat the “disclosed “shift[ing]’ of the device to
`
`an application for obtaining apps(1.e., app stores) reinforces that the
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`‘redirect’ causes the browserto go to an app store without requiring a user
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`interaction.” Id. (quoting Ex. 1001, 11:10—12; Ex. 2005 4 84) (emphasis
`
`added). Patent Ownerarguesthat the specification illustrates the lack of
`
`user interaction by describing redirecting is done “by a backend element”
`
`and that “the browserintercepts the instantinstall link and redirects to the
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`App Store.” /d. at 13-14 (citing Ex. 1001, 12:40-43, 16:34-35, 18:36—40;
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`16
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`Ex. 2005 § 85). Further, Patent Ownerrelies on Dr. Almeroth’s testimony
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`that “the processor of the mobile device executes the instructions to
`
`perform”the claimedsteps, including the redirect step.
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`/d. at 14 (citing
`
`Ex. 2004, 98:18—24, 94:20-95:8, 107:21—25; 109:10-17). As further
`
`support for its proposed construction, Patent Ownerasserts that “[t]he
`
`Dictionary of Computer and Internet Termsdefines ‘redirect’ as ‘a tag
`
`causing the browserto go to another web page without requiring the user to
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`click.’” /d. at 15 (citing Ex. 2003). Patent Owneralso contendsthat the
`
`HTTPprotocoluses the term redirect “to ensure that a different URL or web
`
`site is selected automatically, without any user interaction.” /d. (citing
`
`Ex. 2011 § 10.3).
`
`Petitioner responds that Patent Owner’s proposed construction
`
`contradicts the express definition in the specification, which “does not
`
`require any specific user action, but certainly permits it.” Pet. Reply 4-5
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`(citing Ex. 1001, 11:10—16). Petitioner asserts that the specification “clearly
`
`describes a redirection to the app store in response to a user clicking onan
`
`advertising link, 7.e., a “user interaction,’” and discloses examples “where
`
`user interaction is required to ‘redirect to an app store,’” such asin the flow
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`chart of Figure 10 (e.g., steps 1110 and 1120).
`
`/d. at 5 (citing Ex. 1001,
`
`1:15—31, Fig. 10).
`
`Patent Ownerrespondsthat Figure 10 showsan “ad click” that “refers
`
`to the original click in step 1040, not an additionalinteraction by the user.”
`
`PO Sur-reply 5—6 (citing Ex. 1001, 17:25, Fig. 10). Patent Ownerargues
`
`that “whenthe [’951 patent] applicant wished to specify conditionsrelated to
`
`user interaction in the claims, it knew how to do so,” but “intentionally did
`
`not specify that a subsequentuser interaction was involved with the redirect”
`
`in the claims.
`
`/d. at 6 (emphasis omitted). Rather, Patent Owner argues, the
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`17
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`applicant “made sure the claim wasdirected to the sameprior single user
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`interaction.” /d. at 7 (citing Ex. 2013 4 11).
`
`b) Analysis
`
`For the reasons below, we construe of “redirect” on the complete
`
`record to mean “to shift user interaction on the device,” and disagree with
`
`Patent Ownerthat the claim term requires the shifting to take place without
`
`requiring a user interaction. We begin with the language of the independent
`
`claims. Claim 1 recites “redirect said device to an appstore for
`
`downloading andinstalling said first software application on said device.”
`
`Ex. 1001, 21:32—35. The claim language, therefore, does not recite any
`
`requirementrelating to user interaction during the redirect.
`
`Becauseclaim | recites “user tnteraction” in context of other
`
`limitations, Patent Ownerarguesthat the claim drafting in the redirect
`
`limitation is deliberate and the patentees “intentionally did not specify that a
`
`subsequent user interaction was involved with the redirect — which. . . [the
`
`patentees] did specify when [they] wanted such a condition to apply.” PO
`
`Sur-reply 6—7. Patent Ownerarguesthat no additional interaction being
`
`recited in this limitation must mean that the redirection happens without an
`
`additional user interaction.
`
`/d. at 7. Those otherrecitations of user
`
`interaction in claim 1, however, recite detailed aspects of the interaction, not
`
`merely whetheruser interaction is permitted or not. See, e.g., Ex. 1001,
`
`21:6—7 (“selected by user interaction with a second software application’),
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`21:25—26 (“without directing said user interaction to an app store”). We
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`18
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`therefore decline to read the silence in the claim language as a requirement
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`disallowing any further interaction by the user. °
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`Turning to the specification, both parties agree that it includes an
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`explicit definition of the term “redirected to an app store”as “user
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`interaction using the device is shifted to a site and/or application for
`
`obtaining apps.” Pet. 24; PO Resp. 13; Ex. 1001, 11:10—12. Ifthe
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`specification “reveal[s]a special definition given to a claim term by the
`
`patentee that differs from the meaning it would otherwise possess[,]... the
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`inventor’s lexicography governs.” Phillips,415 F.3d at 1316 (citing CCS
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`Fitness, Inc. v. Brunswick Corp. , 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
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`There is no support in this lexicographic definition to import a requirement
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`that the “shifting” take place “without requiring a user interaction.” Thus,
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`the patentees defined the term but did not include any mention of user
`
`interaction, further rejecting Patent Owner’s proposed requirementto
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`exclude any interaction.
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`Patent Ownerpointsto disclosure that “a backend element”or a
`
`“browser” performsthe redirection, arguing that “the specification describes
`
`that the ‘redirect’ causes the device to go the App Store without any user
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`interaction.” PO Resp. 13—14 (citing Ex. 1001, 12:40—43, 16:34—35, 18:36—
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`40). Noneofthe cited disclosures mention any requirementto include or
`
`° On the other hand, claim 1 recites negative limitations similar to those in
`Patent Owner’s proposed construction multiple times, which demonstrates
`that the patentees knew howto restrict the scope of the claim wheredesired.
`See, e.g., Ex. 1001, 21:17-18 (“without exiting said second software
`application”), 21:25—26 (“withoutdirecting said user interaction to an app
`store’) (emphasis added). Ifthe patentees had intendedto restrict the
`redirect limitation in the manner proposed by Patent Owner, they could have
`done so using a similar “without”clause, but did not.
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`preclude userinteraction during the redirect. And, even if we understand
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`these disclosures in the manner that Patent Ownerargues,the specification
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`makesclear that these are alternate or optional embodiments. See,e.g.,
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`Ex. 1001, 12:38—43 (“In alternate embodiments,. . .”), 16:32—35
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`(“Optionally, the device has an installed browser. . .”). Given the
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`specification’s express description of those embodimentsas non-limiting
`
`examples, nothing in the specification indicates “a clear intention to limit the
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`claim scope using “wordsor expressions of manifest exclusion or
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`restriction.”” Liebel-Flarsheim Co. v. Medrad, Inc. ,358 F.3d 898, 906-08
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`(Fed. Cir. 2004) (declining to limit claim scopeto disclosed embodiments
`
`wherethe specification did “not expressly or by clear implication reject the
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`scope of the invention” to those embodiments); i47 Lid. P’’shipv. Microsoft
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`Corp., 598 F.3d 831, 843-44 (Fed. Cir. 2010) (“[A] claim is not limited to
`
`the embodiments described in the specification unless the patentee has
`
`demonstrated a clear intention to limit the claim’s scope with words or
`
`expressions of manifest exclusion orrestriction.” (internal quotation marks
`
`omitted)).
`
`AsPetitioner points out, the specification provides other examples
`
`whereuserinteraction is required to “redirect to an app store.” Pet. Reply 5
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`(citing Ex. 1001, Fig. 10, 1:15-31). The flow chart of Figure 10, for
`
`example, showsthe step “click ad” 1110 preceding the “redirect to app
`
`store” in step 1120. /d.; see also Ex. 1001, 17:20—27 (describing Figure 10).
`
`Patent Ownercontendsthat “[t]his ‘ad click’ refers to the original click in
`
`step 1040, not an additional interaction by the user,” and that Figure 10
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`supports Patent Owner’s position. PO Sur-reply 5—6 (citing Ex. 1001,
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`17:25) (emphasis omitted). We disagree becausethe original click in step
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`1040 is labelled “Click “Single Tap Install’ Ad”andthelater click in step
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`1110 is labelled “Click Ad.” See Ex. 1001, Fig. 10. Moreover, the
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`specification describes this portion of the flow chart as “[a]n alternate flow
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