Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Implicit, LLC v. Netscout Systems, Inc.

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

April 15, 2019

IMPLICIT, LLC,
v.
NETSCOUT SYSTEMS, INC., et al.

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER

          ROY S. PAVNE, UNITED STATES MAGISTRATE JUDGE

         Before the Court is the Opening Claim Construction Brief (Dkt. No. 89) filed by Plaintiff Implicit, LLC (“Plaintiff” or “Implicit”). Also before the Court are Defendants NetScout Systems, Inc. and Sandvine Corp.'s (“Defendants'”) Responsive Claim Construction Brief (Dkt. No. 93) and Plaintiff's reply (Dkt. No. 96).

         The Court held a claim construction hearing on April 11, 2019.

         Table of Contents

         I. BACKGROUND ....................................................................................................................... 2

         II. LEGAL PRINCIPLES ........................................................................................................... 3

         III. AGREED TERMS ................................................................................................................. 7

         IV. DISPUTED TERMS .............................................................................................................. 8

         A. “sequence of [two or more] routines” ................................................................................... 8

         B. “list of conversion routines” ................................................................................................ 14

         C. “state information” .............................................................................................................. 15

         D. “process subsequent packets in the message using the sequence of routines indicated in the stored path” and Related Terms .................................................................................... 19

         E. “the packet of the message” ................................................................................................ 20

         F. “convert one or more packets having a TCP format into a different format” and Related Terms .................................................................................................................................. 23

         G. “execute a Transmission Control Protocol (TCP)” and Related Terms ............................. 29

         V. CONCLUSION ...................................................................................................................... 36

         I. BACKGROUND

         Plaintiff has alleged infringement of United States Patents No. 8, 694, 683 (“the '683 Patent”), 9, 270, 790 (“the '790 Patent”), and 9, 591, 104 (“the '104 Patent”) (collectively referred to as “the patents-in-suit, ” “the Balassanian Patents, ” or “the Demulitplexing Patents”). (See Dkt. No. 89, Exs. 1‒3.) Plaintiff submits that the patents-in-suit relate to computer networking. (See Dkt. No. 89, at 1-2.)

         The '683 Patent, for example, titled “Method and System for Data Demultiplexing, ” issued on April 8, 2014, and bears an earliest priority date of December 29, 1999. The '790 Patent is a continuation of the '683 Patent. The '104 Patent, in turn, is a continuation of the '790 Patent.

         These patents therefore share a common specification. The Abstract of the '683 Patent states:

A method and system for demultiplexing packets of a message is provided. The demultiplexing system receives packets of a message, identifies a sequence of message handlers for processing the message, identifies state information associated with the message for each message handler, and invokes the message handlers passing the message and the associated state information. The system identifies the message handlers based on the initial data type of the message and a target data type. The identified message handlers effect the conversion of the data to the target data type through various intermediate data types.

         The Court previously construed terms in the '683 Patent, the '790 Patent, and the '740 Patent in Implicit, LLC v. Trend Micro, Inc., No. 6:16-CV-80, Dkt. No. 115, 2017 WL 1190373 (E.D. Tex. Mar. 29, 2017) (Gilstrap, J.) (“Trend Micro”) and in Implicit, LLC v. Huawei Technologies USA, Inc., et al., 6:17-CV-182, 2018 WL 1169137 (E.D. Tex. Mar. 6, 2018) (Gilstrap, J.) (“Huawei, ” sometimes referred to as “PAN, ” which is an acronym for Palo Alto Networks, Inc., the only remaining defendant in the Huawei case at the time of the claim construction hearing).

         The '683 Patent has also been the subject of claim construction in the Northern District of California in Implicit Networks, Inc. v. F5 Networks, Inc., No. 3:14-CV-2856, Dkt. No. 57, 2015 WL 2194627 (N.D. Cal. May 6, 2015) (Illston, J.) (“F5 Networks II”). Further, the Northern District of California construed terms in an ancestor patent, United States Patent No. 6, 629, 163 (“the '163 Patent”), [1] in Implicit Networks, Inc. v. F5 Networks, Inc., No. 3:10-CV-3365, Dkt. No. 93, 2012 WL 669861 (N.D. Cal. Feb. 29, 2012) (Illston, J.) (“F5 Networks I”). Defendants also submit that the '163 Patent was the subject of ex parte Reexamination No. 90/010, 356 (“'163 ex parte Reexam”) and inter partes Reexamination No. 95/000, 659 (“'163 inter partes Reexam”).

         Shortly before the start of the April 11, 2019 hearing, the Court provided the parties with preliminary constructions with the aim of focusing the parties' arguments and facilitating discussion. Those preliminary constructions are noted below within the discussion for each term.

         II. LEGAL PRINCIPLES

         It is understood that “[a] claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).

         “In some cases, however, the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015) (citation omitted). “In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence. These are the ‘evidentiary underpinnings' of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.” Id. (citing 517 U.S. 370).

         To ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. “One purpose for examining the specification is to determine if the patentee has limited the scope of the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).

         Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

         This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.

         Despite the importance of claim terms, Phillips made clear that “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):

Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim. The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction.

Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.

         The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file history, however, “represents an ongoing negotiation between the PTO and the applicant, ” it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).

         Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.

         Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.

         In general, prior claim construction proceedings involving the same patents-in-suit are “entitled to reasoned deference under the broad principals of stare decisis and the goals articulated by the Supreme Court in Markman, even though stare decisis may not be applicable per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Intuit Inc., No. 2:12-CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim constructions in cases involving the same patent are entitled to substantial weight, and the Court has determined that it will not depart from those constructions absent a strong reason for doing so.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 839-40 (2015) (“prior cases will sometimes be binding because of issue preclusion and sometimes will serve as persuasive authority”) (citation omitted); Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1329 (Fed. Cir. 2008) (noting “the importance of uniformity in the treatment of a given patent”) (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996)).

         III. AGREED TERMS

         The parties have submitted the following agreed-upon construction (Dkt. No. 85, at p. 2 of 5; Dkt. No. 89, at 4), which the Court adopts:

Term

Construction

“message”

“a collection of data that is related in some way, such as a stream of video or audio data or an email message”

         IV. DISPUTED TERMS

         A. “sequence of [two or more] routines”

Plaintiff's Proposed Construction

Defendants' Proposed Construction

“an ordered arrangement of [two or more] software routines that was not identified (i.e., configured) prior to receiving a first packet of a message”[2]

“an ordered arrangement of two or more software routines that was not selected (or found or picked) from a finite set of possible arrangements which were created before receiving a first packet of the message”

         (Dkt. No. 85, Ex. B, at p. 2 of 35; Dkt. No. 89, at 5; Dkt. No. 93, at 1; Dkt. No. 103, Ex. A, at 1.) The parties submit that this term appears in Claims 1, 4, 5, 8, 9, and 24 of the '683 Patent, Claims 1, 3, 4, 5, 8, 10, 12, 15, 17, and 18 of the '790 Patent, and Claims 1, 3, 5, 10, 12, 13, and 16 of the '104 Patent. (Dkt. No. 103, Ex. A, at 1-10.)

         Shortly before the start of the April 11, 2019 hearing, the Court provided the parties with the following preliminary construction: “an ordered arrangement of [two or more] software routines that was not configured before receiving a first packet of a message.”

         (1) The Parties' Positions

         Plaintiff submits that the proper construction for this term has been thoroughly addressed in prior litigation and, moreover, “NetScout and Sandvine seek to limit the claims to an impossibility.” (Dkt. No. 89, at 5.)

         Defendants respond that “[t]his term is limited in scope by a disclaimer in the prosecution history.” (Dkt. No. 93, at 1.) Defendants argue that “Implicit's interpretation of the F5 [Networks] II construction seeks to recapture the same claim scope it clearly and unambiguously disclaimed - i.e., selecting from pre-configured paths - and should not be adopted.” (Id., at 5.) Defendants also submit that “Defendants are amenable to removing the word ‘possible' from [their] proposal to remove any redundancy.” (Id., at 10.)[3]

         Plaintiff replies that “[f]our prior courts have limited the . . . disclaimer to only the single embodiment that stored pre-configured sequences of routines.” (Dkt. No. 96, at 1.) Plaintiff also submits that “Implicit perceives no meaningful distinction between Defendants' use of the word ‘selected' and the Court's use of the phrase ‘identified (i.e., configured).'” (Id., at 2.) Plaintiff argues that “Defendants have cobbled together a construction that lacks clarity, results in impossible scenarios, and is internally inconsistent.” (Id., at 3.)

         At the April 11, 2019 hearing, Defendants expressed concern that the word “configured” in the Court's preliminary construction might be misinterpreted as allowing for identifying pre-existing paths. Plaintiff responded that the word “configured” is sufficiently clear, and Plaintiff argued that Defendants' concerns relate to questions of fact regarding infringement rather than any legal question for claim construction.

         (2) Analysis

         The Background section of the specification provides context by stating: “A computer system in certain situations . . . can be expected to receive data and to provide data in many different formats that may not be known until the data is received. The overhead of statically providing each possible series of conversion routines is very high.” '683 Patent at 1:54-59. Claim 1 of the '683 Patent, for example, recites (emphasis added):

         1. A first apparatus for receiving data from a second apparatus, the first apparatus comprising:

a processing unit; and
a memory storing instructions executable by the processing unit to:
create, based on an identification of information in a received packet of a message, a path that includes one or more data structures that indicate a sequence of routines for processing packets in the message;
store the created path; and
process subsequent packets in the message using the sequence of routines indicated in the stored path, wherein the sequence includes a routine that is used to execute a Transmission Control Protocol (TCP) to convert one or more packets having a TCP format into a different format.

         In F5 Networks II, the Northern District of California construed “sequence of routines” to mean a “sequence of software routines that was not identified (i.e., configured) prior to receiving a first packet of the message.” F5 Networks II at 17-24.

         In Trend Micro, the Court construed “sequence of routines” to mean “an ordered arrangement of software routines that was not identified (i.e., configured) prior to receiving a first packet of the message” and similarly construed “sequence of two or more routines” to mean “an ordered arrangement of two or more software routines that was not identified (i.e., configured) prior to receiving a first packet of the message.” Trend Micro at 13-20.

         In Huawei, the parties there agreed that “sequence of [two or more] routines” means “an ordered arrangement of [two or more] software routines that was not identified (i.e., configured) prior to receiving a first packet of the message.” Huawei at 8.

         Those prior constructions focused on the patentee's statements regarding the “Mosberger” reference during reexamination of the '163 Patent.[4] The parties here agree that the patentee's statements amount to a disclaimer, but the parties dispute how that disclaimer should be given effect in the Court's construction.

         In particular, the parties dispute the meaning of the phrase “identified (i.e., configured)” in the prior constructions. When distinguishing Mosberger, the patentee argued:

The following discussion of Mosberger will assist the Examiner in understanding the patentable distinctions, including those distinctions that arise because the Mosberger system configures paths (formed from a sequence of components) before receiving the “first packet of the message.” As shown below, the quoted claim language is directed to a much different system that configures paths at runtime (i.e., after the first packet is received).
* * *
Because Mosberger teaches to configure paths that define the sequence of software modules used to process particular types of data prior to “build-time, ” the only decision made at runtime is the determination of which pre-configured path should begin processing the incoming data. Once the path is chosen, it is instantiated (what Mosberger refers to as “path creation”). The process of recognizing which preconfigured paths to use is illustrated in Figure 3.6 of Mosberger, reproduced below.

         (Image Omitted)

As seen in Figure 3.6 above (cited by the Examiner), there are a number of pathways (p1-p5) for the data to travel, but the selection of modules for each path is configured before receipt of the message packets. The beginning point for the paths in this example is with the Ethernet module (“ETH”). The ETH module “employs a classifier to decide whether a packet should be processed using path p1, p2, or p3.” (Mosberger, page 87). The only variation in Mosberger is which path through the predefined sequence will be taken. In this example, the ETH module selects the initial pathway (i.e., pathway p1, p2, or p3) based on the protocol header in the first packet of the message. (Mosberger, pages 88-89). If the protocol header is completely intact and suggests that the packet is UDP, then the packet classification process will result in the selection of pre-configured path 1. If, however, the packet has been fragmented by IP and does not include higher level headers, then the classification process will result in selection of pre-configured path 2. (Mosberger, page 87). At that point, after the packet has been reassembled, the IP module's packet classifier will determine whether the packet is a UDP or TCP packet and route the packet accordingly (i.e., down preconfigured path 4 or pre-configured path 5). (Mosberger, page 87). Importantly, however, those sequences of IP-UDP via pathway p4 and IP-TCP via pathway p5 have also been identified prior to run-time. In other words, the p2/p4 path and the p2/p5 path are pre-configured at build time. Again, the only question resolved at run time is which preconfigured path - with predetermined sequences of modules - should be selected.
* * *
As one skilled in the art will appreciate, the [Mosberger] pseudo-code shows that the possible list of software modules is already predetermined for the example module [i.e., software routine] and that the only choice for the example module is to select from amongst several possible pre-defined paths. Thus, dynamic routing, as described in the context of the ‘paths' in Mosberger, is essentially a series of ‘If...Then...' computer instructions coded into the modules at build time that control the selection of the predefined paths through a ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.