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Blue Spike, LLC v. Toshiba America, Inc.

United States District Court, E.D. Texas, Tyler Division

June 28, 2017

BLUE SPIKE, LLC, Plaintiff,



         On May 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).)

         This 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.


         The 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 Patent.

         However, substantially all of the specification of the '569 Patent appears in the specification of the '719 Patent.[1] 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 steps of:
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 software application.

'569 Patent, at 10:9-19.

         Claims 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, comprising:
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 said memory.

'719 Patent, at 16:60-17:2.

         Claim 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.

         The 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 Order”).


         “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) (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.

         “[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)). “[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).

         The 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.

         The 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).

         Although “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 terms.” Id.

         In 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.

         A 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, [2] 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).

         But 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 omitted)).



         In its 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 construction.


         a. program

Claim Term

Plaintiffs' Proposal

Defendants' Proposal


('719 patent, Claim 22)

Plain and ordinary

“a set of instructions run by an operating system”

Alternate construction:

“A software program run by an operating system”

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