United States District Court, E.D. Texas, Tyler Division
MEMORANDUM OPINION AND ORDER
LOVE, UNITED STATES MAGISTRATE JUDGE
13, 2016, Plaintiff filed this action for patent
infringement. Plaintiff alleges that Defendants Toshiba
America, Inc., Toshiba Corporation, and Toshiba America
Information Systems, Inc. (collectively,
“Toshiba”) infringe claims of U.S. Patent No. 5,
745, 569 (“the '569 Patent”) and U.S. Patent
No. 8, 930, 719 (“the '719 Patent”)
(collectively, “Asserted Patents”). (See
Doc. No. 6 (Amended Complaint).)
claim construction opinion construes disputed claim terms in
the Asserted Patents. Blue Spike has filed an Opening Claim
Construction Brief (Doc. No. 29), Defendants have filed a
Response (Doc. No. 32), and Blue Spike has filed a Reply
(Doc. No. 33). The parties additionally submitted a Joint
Claim Construction Chart pursuant to P.R. 4-5(d). (Doc. No.
34.) On April 21, 2017, the Court held a claim construction
hearing. Upon consideration of the parties' arguments and
for the reasons stated herein, the Court adopts the
constructions set forth below.
OF THE PATENTS
Asserted Patents generally relate to improving computer
security through digital watermarking and relocating all or
portions of software in memory. See '569 Patent,
at Abstract, 2:21-22; '719 Patent, at 1:21-23. The
'569 Patent, entitled “METHOD FOR STEGA-CIPHER
PROTECTION OF COMPUTER CODE, ” issued on April 28, 1998
from an application filed Jan. 17, 1996. The '719 Patent,
entitled “DATA PROTECTION METHOD AND DEVICE, ”
issued on Jan. 6, 2015 and claims priority to series of
parent applications, the earliest filed March 24, 1998. The
'719 Patent does not claim priority to the '569
substantially all of the specification of the '569 Patent
appears in the specification of the '719
Patent. Blue Spike asserts Claims 16-20 of the
'569 Patent and Claims 10-12 and 22 of the '719
Patent. (See Doc. No. 36.) Claim 16 of the '569
Patent is an independent claim and Claims 17-20 depend from
Claim 16. Claim 16 of the '569 Patent recites:
16. A method for copy protecting a software application
executed by a computer system, the software application
including a plurality of executable code resources loaded in
a memory of the computer system, said method comprising the
determining an address within the memory of the computer
system associated with each of the plurality of executable
code resources; and intermittently relocating each of the
plurality of executable code resources to a different address
within the memory of the computer during execution of the
'569 Patent, at 10:9-19.
10 and 22 of the '719 Patent are independent claims and
Claims 11 and 12 depend from Claim 10. Claim 10 recites:
10. A system for executing application software code,
a memory designed to store data in non transitory form, and
storing executable code resources;
wherein said executable code resources comprise a memory
scheduler and other executable code resources;
wherein said memory scheduler is designed to shuffle said
other executable code resources in said memory; and wherein
said memory scheduler is designed to modify a stack frame in
'719 Patent, at 16:60-17:2.
22 of the '719 Patent recites:
22. A system comprising:
a processor designed to process instructions;
a memory designed to store data in non transitory form;
wherein said processor is coupled to said memory;
wherein said system is configured to load an executable
program comprising at least two code resources into said
memory and to randomize the location of at least one of the
at least two code resources in the said memory, using said
processor; and wherein one of the at least two code resources
is designed to modify a stack frame in said memory.
'719 Patent, at 17:52-62.
Court has previously construed terms of the '569 Patent
claims in Blue Spike v. Huawei, No. 6:13-cv-679-RWS,
Doc. No. 194 (E.D. Tex. May 16, 2016) (“Huawei
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) (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004)). The Court examines a patent's intrinsic
evidence to define the patented invention's scope.
Id. at 1313-14; Bell Atl. Network Servs., Inc.
v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267
(Fed. Cir. 2001). Intrinsic evidence includes the claims, the
rest of the specification, and the prosecution history.
Phillips, 415 F.3d at 1312-13; Bell Atl. Network
Servs., 262 F.3d at 1267. The Court gives claim terms
their ordinary and customary meaning as understood by one of
ordinary skill in the art at the time of the invention.
Phillips, 415 F.3d at 1312-13; Alloc, Inc. v.
Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed.
Cir. 2003). Claim language guides the Court's
construction of claim terms. Phillips, 415 F.3d at
1314. “[T]he context in which a term is used in the
asserted claim can be highly instructive.” Id.
Other claims, asserted and unasserted, can provide additional
instruction because “terms are normally used
consistently throughout the patent.” Id.
Differences among claims, such as additional limitations in
dependent claims, can provide further guidance. Id.
‘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)). “[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). In the specification, a patentee may define his own
terms, give a claim term a different meaning than it would
otherwise possess, or disclaim or disavow some claim scope.
Phillips, 415 F.3d at 1316. Although the Court
generally presumes terms possess their ordinary meaning, this
presumption can be overcome by statements of clear
disclaimer. See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44
(Fed. Cir. 2001). This presumption does not arise when the
patentee acts as his own lexicographer. See Irdeto
Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295,
1301 (Fed. Cir. 2004).
specification may also resolve ambiguous claim terms
“where the ordinary and accustomed meaning of the words
used in the claims lack sufficient clarity to permit the
scope of the claim to be ascertained from the words
alone.” Teleflex, Inc., 299 F.3d at 1325. For
example, “[a] claim interpretation that excludes a
preferred embodiment from the scope of the claim ‘is
rarely, if ever, correct.” Globetrotter Software,
Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381
(Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d
at 1583). But, “[a]lthough the specification may aid
the court in interpreting the meaning of disputed language in
the claims, particular embodiments and examples appearing in
the specification will not generally be read into the
claims.” Constant v. Advanced Micro-Devices,
Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); see also
Phillips, 415 F.3d at 1323.
prosecution history is another tool to supply the proper
context for claim construction because a patentee may define
a term during prosecution of the patent. Home Diagnostics
Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir.
2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent.”).
The well-established doctrine of prosecution disclaimer
“preclud[es] patentees from recapturing through claim
interpretation specific meanings disclaimed during
prosecution.” Omega Eng'g Inc. v. Raytek
Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The
prosecution history must show that the patentee clearly and
unambiguously disclaimed or disavowed the proposed
interpretation during prosecution to obtain claim allowance.
Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed.
Cir. 2002); see also Springs Window Fashions LP v. Novo
Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003)
(“The disclaimer . . . must be effected with
‘reasonable clarity and deliberateness.'”)
(citations omitted)). “Indeed, by distinguishing the
claimed invention over the prior art, an applicant is
indicating what the claims do not cover.” Spectrum
Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79
(Fed. Cir. 1988) (quotation omitted). “As a basic
principle of claim interpretation, prosecution disclaimer
promotes the public notice function of the intrinsic evidence
and protects the public's reliance on definitive
statements made during prosecution.” Omega
Eng'g, Inc., 334 F.3d at 1324. Statements in the
prosecution history that are subject to multiple reasonable
interpretations do not constitute a clear and unmistakable
departure from the ordinary meaning of a claim term.
Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d
1327, 1332 (Fed. Cir. 2004).
“less significant than the intrinsic record in
determining the legally operative meaning of claim language,
” the Court may rely on extrinsic evidence to
“shed useful light on the relevant art.”
Phillips, 415 F.3d at 1317 (quotation omitted).
Technical dictionaries and treatises may help the Court
understand the underlying technology and the manner in which
one skilled in the art might use claim terms, but such
sources may also provide overly broad definitions or may not
be indicative of how terms are used in the patent.
Id. at 1318. Similarly, expert testimony may aid the
Court in determining the particular meaning of a term in the
pertinent field, but “conclusory, unsupported
assertions by experts as to the definition of a claim term
are not useful.” Id. Generally, extrinsic
evidence is “less reliable than the patent and its
prosecution history in determining how to read claim
patent construction, “subsidiary fact finding is
sometimes necessary” and the court “may have to
make ‘credibility judgments' about
witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
(2015). In some cases, “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.”
Id. at 841. “If a district court resolves a
dispute between experts and makes a factual finding that, in
general, a certain term of art had a particular meaning to a
person of ordinary skill in the art at the time of the
invention, the district court must then conduct a legal
analysis: whether a skilled artisan would ascribe that same
meaning to that term in the context of the specific
patent claim under review.” Id.
(emphasis in original). When the court makes subsidiary
factual findings about the extrinsic evidence in
consideration of the “evidentiary underpinnings”
of claim construction, those findings are reviewed for clear
error on appeal. Id.
patent claim may be expressed using functional language.
See 35 U.S.C. § 112, ¶ 6; Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1347-49 & n.3
(Fed. Cir. 2015) (en banc in relevant portion). Section 112,
paragraph 6,  provides that a structure may be claimed
as a “means . . . for performing a specified
function” and that an act may be claimed as a
“step for performing a specified function.”
Masco Corp. v. United States, 303 F.3d 1316, 1326
(Fed. Cir. 2002).
section 112, paragraph 6 does not apply to all functional
claim language. There is a rebuttable presumption that
section 112, paragraph 6 applies when the claim language
includes “means” or “step for” terms,
and that it does not apply in the absence of those terms.
Masco Corp., 303 F.3d at 1326; Williamson,
792 F.3d at 1348. The presumption stands or falls according
to whether one of ordinary skill in the art would understand
the claim with the functional language, in the context of the
entire specification, to denote sufficiently definite
structure or acts for performing the function. See Media
Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d
1366, 1372 (Fed. Cir. 2015) (§ 112, ¶ 6 does not
apply when “the claim language, read in light of the
specification, recites sufficiently definite structure”
(quotation marks omitted) (citing Williamson, 792
F.3d at 1349; Robert Bosch, LLC v. Snap-On Inc., 769
F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792
F.3d at 1349 (§ 112, ¶ 6 does not apply when
“the words of the claim are understood by persons of
ordinary skill in the art to have sufficiently definite
meaning as the name for structure”); Masco
Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not
apply when the claim includes an “act”
corresponding to “how the function is
performed”); Personalized Media Commc'ns,
L.L.C. v. Int'l Trade Comm'n, 161 F.3d 696, 704
(Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when
the claim includes “sufficient structure, material, or
acts within the claim itself to perform entirely the recited
function . . . even if the claim uses the term
‘means.'” (quotation marks and citation
AGREED CLAIM TERM CONSTRUCTIONS
reply brief, Blue Spike agreed to Toshiba's proposed
construction of the terms “a software
application/application” as “a software program
run by an operating system.” (Doc. No. 33, at 2-3.) The
term “a software application” appears in Claims
16 and 17 of the '569 Patent and the term
“application” appears in Claim 10 of the '719
Patent. In light of the parties' agreement and a review
of the asserted claims, specifications, and prosecution
history, the Court adopts Defendant's proposed
DISPUTED CLAIM TERMS
('719 patent, Claim 22)
Plain and ordinary
“a set of instructions run by an operating
“A software program run by an operating