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Luminati Networks Ltd. v. UAB Tesonet

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

August 20, 2019

LUMINATI NETWORKS LTD., Plaintiff,
v.
UAB TESONET and UAB METACLUSTER LT. Defendants. Term Agreed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction ('044 Patent, Claims 85, 86) Plaintiff's Proposed Construction Defendant's Proposed Construction ('044 Patent, Claims 88, 90, 91, 107) Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction Plaintiff's Proposed Construction Defendant's Proposed Construction

          CLAIM CONSTRUCTION MEMORANDUM AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         On July 31, 2019, the Court held a hearing to determine the proper construction of disputed claim terms in United States Patents No. 9, 241, 044 and 9, 742, 866. Having reviewed the arguments made by the parties in their claim construction briefing (Dkt. Nos. 61, 70, & 82), [1] having considered the intrinsic evidence, and having made subsidiary factual findings about the extrinsic evidence, the Court hereby issues this Claim Construction Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). Further, Plaintiff's Motion to Strike Expert Declaration and References to the Same in Defendant's Claim Construction Brief (Dkt. No. 80) is DENIED as set forth herein.[2]

         Table of Contents

         I. BACKGROUND ....................................................................................................................... 3

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

         III. AGREED TERMS ................................................................................................................. 8

         IV. PLAINTIFF'S MOTION TO STRIKE ................................................................................ 8

         V. DISPUTED TERMS ............................................................................................................... 9

         A. Preamble of Claim 81 of the '044 Patent .............................................................................. 9

         B. “device” ............................................................................................................................... 15

         C. “identifier” ........................................................................................................................... 15

         D. “content” ............................................................................................................................. 20

         E. “content identifier” .............................................................................................................. 24

         F. “simultaneous” and “concurrently” ..................................................................................... 25

         G. “past activities” ................................................................................................................... 31

         H. “the timing of an event” ...................................................................................................... 34

         I. “group device identifier” ...................................................................................................... 37

         J. “content slice” ...................................................................................................................... 38

         K. “content slice identifier” ..................................................................................................... 43

         L. “partitioning the content” .................................................................................................... 43

         M. “constructing the content” .................................................................................................. 46

         N. “client device” ..................................................................................................................... 48

         O. “part of the content is included in two or more content slices” .......................................... 51

         P. “by a first device, ” “from a second server, ” “via a second device, ” and “using a first server” in Claim 81 of the '044 Patent ............................................................................... 52

         Q. Preamble of Claim 108 of the '044 Patent .......................................................................... 56

         R. “by a first device, ” “from a second server, ” “via a second device, ” and “using a first server” in Claim 108 of the '044 Patent ............................................................................. 58

         S. “sending a first request” ...................................................................................................... 60

         VI. CONCLUSION .................................................................................................................... 62

         I. BACKGROUND

         Plaintiff has alleged infringement of United States Patents No. 9, 241, 044 (“the '044 Patent”) and 9, 742, 866 (“the '866 Patent”) (collectively, “the patents-in-suit”).

         The '044 Patent, titled “System and Method for Improving Internet Communication by Using Intermediate Nodes, ” issued on January 19, 2016 and bears an earliest priority date of August 28, 2013. The Abstract of the '044 Patent states:

A method for fetching a content from a web server to a client device is disclosed, using tunnel devices serving as intermediate devices. The client device access [sic] an acceleration server to receive a list of available tunnel devices. The requested content is partitioned into slices, and the client device sends a request for the slices to the available tunnel devices. The tunnel devices in turn fetch the slices from the data server, and send the slices to the client device, where the content is reconstructed from the received slices. A client device may also serve as a tunnel device, serving as an intermediate device to other client devices. Similarly, a tunnel device may also serve as a client device for fetching content from a data server. The selection of tunnel devices to be used by a client device may be in the acceleration server, in the client device, or in both. The partition into slices may be overlapping or non-overlapping, and the same slice (or the whole content) may be fetched via multiple tunnel devices.

         The '866 Patent is a divisional of the '044 Patent, and Plaintiff submits that the patents-in-suit therefore share a common specification. (Dkt. No. 61, at 1.)

         Shortly before the start of the July 31, 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, 135 S.Ct. at 841 (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.

         The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910, 134 S.Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 S.Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).

         III. AGREED TERMS

         In the May 1, 2019 Patent Rule 4-3 Joint Claim Construction and Pre-Hearing Statement (Dkt. No. 46, at 1), in briefing (Dkt. No. 61, at 7-8), and in the July 10, 2019 Patent Rule 4-5(d) Joint Claim Construction Chart (Dkt. No. 84, Ex. A, at 5-8 & 11), the parties submitted the following agreed-upon constructions:

Term
Agreed Construction

“using multitasking or multiprocessing” ('044 Patent, Claims 86, 88, 91, 107)

“performing multiple tasks in overlapping time periods using common processing resources”

“the physical geographical location” ('044 Patent, Claim 96)

“location on earth”

“the physical geographical proximity to the second server”

('044 Patent, Claim 97)

“distance from second server based on physical geographical location”

         IV. PLAINTIFF'S MOTION TO STRIKE

         Plaintiff's Motion to Strike Expert Declaration and References to the Same in Defendant Defendant's Claim Construction Brief (Dkt. No. 80) requests that the Court strike the Declaration of Dr. Michael J. Freedman (Dkt. No. 70-1). Plaintiff argues that Defendant did not timely disclose this extrinsic evidence as required by Local Patent Rules 4-2 and 4-3. (Dkt. No. 80.) Plaintiff also argues that “Plaintiff has been prejudiced by having to serve its own expert declaration with minimal information regarding Defendant's claim construction and indefiniteness positions, having no declaration on which to depose Dr. Freedman, and having to file its own opening claim construction brief without having Dr. Freedman's declaration or his deposition.” (Id., at 1.) Also before the Court are Defendant's response (Dkt. No. 86), Plaintiff's reply (Dkt. No. 93), and Defendant's sur-reply (Dkt. No. 96).

         The evidence at issue has not affected the Court's claim construction analysis, as set forth herein. Plaintiff's Motion to Strike Expert Declaration and References to the Same in Defendant's Claim Construction Brief (Dkt. No. 80) is therefore DENIED.

         V. DISPUTED TERMS

         A. Preamble of Claim 81 of the '044 Patent

Plaintiff's Proposed Construction

Defendant's Proposed Construction

Not limiting

Limiting

(Dkt. No. 46, Ex. A, at 1; Dkt. No. 61, at 8; Dkt. No. 84, Ex. A, at 1.)

         Shortly before the start of the July 31, 2019 hearing, the Court provided the parties with the following preliminary construction: “Limiting.”

         (1) The Parties' Positions

         Plaintiff argues that “[t]he preamble of claim 81 of the ‘044 patent just introduces the claim, and the body of that claim defines a structurally complete invention.” (Dkt. No. 61, at 9.) Plaintiff further argues that “[t]here is no indication that . . . necessary steps or independent meaning is present in the preamble of the claim here.” (Id., at 8.) Plaintiff also submits that “[a]n antecedent basis term . . . does not cause the entire preamble to limit the claim.” (Id., at 9.)

         Defendant responds that this preamble “limits the claims by (i) providing antecedent basis for seven terms that follow the preamble and (ii) providing express definition of the claimed subject matter that-even according to Luminati's own expert-provides important guidance to a person of ordinary skill.” (Dkt. No. 70, at 1.)

         Plaintiff replies that “the antecedent bases of terms are not applicable because they don't add structure or definition.” (Dkt. No. 82, at 1.) Plaintiff also argues that “[a]s to ‘first device,' the lack of its appearance in the body is a result of the device not being required to practice the method.” (Id., at 11.) Further, Plaintiff argues that “[t]he term ‘second server' is not necessary to complete the invention of claim 81, so it is not limiting.” (Id.)

         At the July 31, 2019 hearing, the parties presented oral arguments as to this dispute.

         (2) Analysis

In general, a preamble limits the invention if it recites essential structure or steps, or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes[, Inc. v. Hewlett-Packard Co.], 182 F.3d [1298, ] 1305 [(Fed. Cir. 1999)]. Conversely, a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478, 42 U.S.P.Q.2d 1550, 1553 (Fed. Cir. 1997).

Catalina Mktg. Int'l, Inc. v. Coolsavings. com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see, e.g., Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).

         Also, “the purpose or intended use of the invention . . . is of no significance to claim construction . . . .” See Pitney Bowes, 182 F.3d at 1305. This principle has sometimes been characterized as “the presumption against reading a statement of purpose in the preamble as a claim limitation.” Marrin v. Griffin, 599 F.3d 1290, 1294-95 (Fed. Cir. 2010); see Allen Eng'g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 769- 71 (Fed. Cir. 2018) (in preamble reciting “[a] computer network for providing an information delivery service for a plurality of participants, ” finding “information delivery service” to be non- limiting because it “merely describe[s] intended uses for what is otherwise a structurally complete invention”).

         In some cases, language in the preamble may be merely “descriptive” of the limitations set forth in the body of the claim. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus' in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.”); see also Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“if the body of the claim describes a structurally complete invention, a preamble is not limiting where it ‘merely gives a name' to the invention, extols its features or benefits, or describes a use for the invention”) (quoting Catalina, 289 F.3d at 809).

         Here, Claim 81 of the '044 Patent recites (emphasis added):

81. A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of:
(a) sending the first identifier to the first server;
(b) sending a first request to the first server;
(c) receiving the second identifier from the first server;
(d) sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier; and
(e) receiving the first content from the second device.

         The preamble thus provides antecedent basis for “the first identifier, ” “the first server, ” “the second identifier, ” “the second device, ” “the first content identifier, ” “the third identifier, ” and “the first content” recited in the body of the claim.

         Plaintiff has emphasized: “That [a] phrase in the preamble . . . provides a necessary structure for [the] claim . . . does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.” TomTom Inc. v. Adolph, 790 F.3d 1315, 1323 (Fed. Cir. 2015); see also Id. (“It was therefore error for the district court to use an antecedent basis rationale to justify converting this independent part of the preamble into a new claim limitation.”); Marrin, 599 F.3d at 1294-95 (“[T]he mere fact that a structural term in the preamble is part of the claim does not mean that the preamble's statement of purpose or other description is also part of the claim.”).

         Yet, these phrases that derive antecedent basis from the preamble are “defined in greater detail in the preamble, ” particularly in terms of their relationships with each other. Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the image data' clearly derives antecedent basis from the ‘image data' that is defined in greater detail in the preamble as being ‘representative of at least one sequential set of images of a spray plume.'”) For example, the antecedent basis for “the first identifier” is recited in relation to “a first device, identified in the Internet by a first identifier.”

         Also, the “first device” and “second server” appear only in the preamble but are recited in relation to preamble terms that provide antecedent basis for terms that appear in the body of the claim. See Id. The opinions of Plaintiff's expert are consistent with this understanding that the preamble sets forth such relationships. (See Dkt. No. 61-1, May 1, 2019 Rhyne Decl., at ¶ 8 (“the claim language informs a POSA [(person of ordinary skill in the art)] how the first device relates to the other elements of the claim as the claimed method is performed”).)[3]

         Further, the phrase “fetching over the Internet” refers to preamble terms-particularly “a first content”-that provide antecedent basis for terms in the body of the claim. Because the patentee “cho[]se[] to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (citation and internal quotation marks omitted).[4]

         Additionally, the preamble is limiting because it provides features that are underscored as important in the specification. “[W]hen reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Catalina, 289 F.3d at 808; see also id. (citing Pitney Bowes, 182 F.3d at 1309) (“[W]hen the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope.”) “[T]he preamble may be construed as limiting when it recites particular structure or steps that are highlighted as important by the specification.” Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1372 (Fed. Cir. 2014) (citing Catalina, 289 F.3d at 808). The body of Claim 81 of the '044 Patent does not set forth the relationships between the various devices, and those relationships are only evident from the preamble. The specification and the technology tutorial provided by the Plaintiff both suggest that the relationships between the devices are important features of the invention. The specification's Summary of the Invention describes an embodiment that tracks the language of Claim 81, but it also clarifies the device that is performing the recited steps within the body:

A method is disclosed for fetching over the Internet a first content, identified by a first content identification, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, by using a first server. The method may be comprising the steps of the second device sending the second identifier to the first server; in response to receiving the second identifier, the first server storing the second identifier; the first device sending a first request to the first server; in response to receiving the first request, the first server sending the second identifier to the first device; the first device sending a second request to the second device using the second identifier, the second request includes the first content identification and the third identifier; in response to receiving the second request, the second device sending the first content identification to the second server using the third identifier; in response to receiving the first content identification, the second server sending the first content to the second device; and in response to receiving the first content, the second device sending the first content to the first device.

'044 Patent at 52:31-51 (emphasis added).

         Other portions of the '044 Patent provide similar clarification.'044 Patent Fig 5b; 81:32- 41, 85:64-87:30, & Figs. 11a-11b. Plaintiff's technology tutorial highlighted certain problems discussed within the specification that the invention sought to resolve, including: (1) that the data server can block requests based upon the requestor, and (2) that a data server may block a request based on other criteria such as the geographic area that a device is located in. (Dkt. No. 60-1 at 9, 13). Plaintiff points out that, to solve these problems, the disclosed inventions send information to specific devices or servers. (Id. at 10-11, 14-17.) At the August 14, 2019 claim construction hearing, Plaintiff again recognized these problems and reiterated that the invention helped solve the problems. (Dkt. No. 112 at 6:19-8:20.) If the claimed inventions merely involved the steps themselves without specifying what structure performed those steps, then the invention would not solve these problems. Accordingly, the preamble's recitation that the method is for fetching over the Internet a first content by a first device is highlighted as important by the specification. The Court therefore concludes that the preamble is limiting for this additional reason.

         The Court therefore hereby finds that the preamble of Claim 81 of the '044 Patent is limiting.

         B. "device" virtual device”

Plaintiff's Proposed Construction
Defendant's Proposed Construction

Plain and ordinary meaning

“a physical device, but not a hypothetical or virtual device”[5]

(Dkt. No. 46, Ex. A, at 5; Dkt. No. 61, at 10; Dkt. No. 84, Ex. A, at 2-3.) The parties submit that this term appears in Claims 81, 87, 89, 92-101, and 108 of the '044 Patent and Claims 15 and 25-28 of the '866 Patent. (Dkt. No. 46, Ex. A, at 5; Dkt. No. 84, Ex. A, at 2-3.)

         Shortly before the start of the July 31, 2019 hearing, the Court provided the parties with the following preliminary construction: "a physical device."

         At the hearing, the parties agreed to the Court's preliminary construction. The Court therefore hereby construes "device" to mean "a physical device."

         C. "identifier"

Plaintiff's Proposed Construction
Defendant's Proposed Construction

Plain and ordinary meaning

“IP address that identifies the device or server”

(Dkt. No. 46, Ex. A, at 4; Dkt. No. 61, at 11; Dkt. No. 84, Ex. A, at 3.) The parties submit that this term appears in Claims 81, 82, 87, 89, 98, 101, and 108 of the '044 Patent and Claim 15 of the '866 Patent. (Dkt. No. 46, Ex. A, at 4; Dkt. No. 84, Ex. A, at 3.)

         Shortly before the start of the July 31, 2019 hearing, the Court provided the parties with the following preliminary construction: “Plain and ordinary meaning (Expressly reject Defendant's proposal of ‘IP address').”

         (1) The Parties' Positions

         Plaintiff argues that “Defendant's proposal falls into the trap of reading an embodiment into the claims, which runs afoul of a basic tenant [sic] of claim construction.” (Dkt. No. 61, at 11.) Plaintiff also argues claim differentiation as to dependent Claim 44 of the '044 Patent. (Id., at 11- 12.)

         Defendant responds that “Luminati's brief avoids the crux of the problem: the asserted claims expressly require that the device identifiers identify a device ‘in the Internet.'” (Dkt. No. 70, at 12.)

         Plaintiff replies that “[t]he patentee used the term ‘IP address' in the patent and if the patentee wanted to limit the claim to IP addresses it would have used that term, but it did not.” (Dkt. No. 82, at 3.) Plaintiff also argues: “Identifying something is not the same as identifying it by its Internet address. Existing in an environment does not mean you have to identify it in a particular way.” (Id.)

         At the July 31, 2019 hearing, the parties presented oral arguments as to this term.

         (2) Analysis

         As a threshold matter, Plaintiff cites a finding by this Court that the term “identifier” in a different, unrelated patent did not require construction. See Aloft Media, LLC v. Microsoft Corp., No. 6:08-CV-50, 2009 WL 803133, at *5 (E.D. Tex. Mar. 24, 2009). This is unpersuasive because “claims of unrelated patents must be construed separately.” e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 727 (Fed. Cir. 2014).

         Turning to the patents-in-suit, the specification discloses that an identifier “may be a URL or an IP address”:

Each of the identifiers herein may be a URL or an IP address in IPv4 or IPv6 form. Any one of the servers herein may be a web server using Hyper Text Transfer Protocol (HTTP) that responds to HTTP requests via the Internet, and any request herein may be an HTTP request. Any communication herein may be based on, or according to, TCP/IP protocol or connection, and may be preceded by the step of establishing a connection, such as an ‘Active OPEN' or a ‘Passive OPEN'. Alternatively or in addition, any communication herein may be based on, or use a VPN or a tunneling protocol. Any content herein may include, consist of, or comprise, part or whole of files, text, numbers, audio, voice, multimedia, video, images, music, or computer program, or may include, consists [sic] of, or comprise, a part of, or a whole of, a website page.

'044 Patent at 54:7-22 (emphasis added); see, e.g., Id. at 51:26-27 (“an identification (such as IP address)”); id. at 58:20-21 (“the second identifier that may be an IP address”) (emphasis added); id. at 63:18-19 (“Each of the identifiers may be an IP address (such as in IPv4 or IPv6 form) or a URL.”); id. at 82:44-45 (“the device 31a identification on the Internet 113, such as its IP address”); id. at 95:25-96:3 (“an identifier such as the IP address”) (emphasis added).

         Claim 81 of the '044 Patent recites devices “identified in the Internet” by identifiers

         (emphasis added):

81. A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of:
(a) sending the first identifier to the first server;
(b) sending a first request to the first server;
(c) receiving the second identifier from the first server;
(d) sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier; and
(e) receiving the first content from the second device.

         The parties submit that “identifier” appears in Claims 81, 82, 87, 89, 98, 101, and 108 of the '044 Patent and Claim 15 of the '866 Patent. (Dkt. No. 46, Ex. A, at 4.) Claims 82, 87, 89, 98, and 101 of the '044 Patent depend from Claim 81 and therefore include the “in the Internet” limitations recited in Claim 81. Claim 108 of the '044 Patent is an independent claim that similarly refers to the Internet with respect to the “first identifier, ” “second identifier, ” and “third identifier.” Claim 15 of the '866 Patent similarly refers to a “second identifier” and a “group device identifier” with respect to the Internet.

         Defendant proposes “constru[ing] ‘identifier' only as it modifies devices/servers in the claims (i.e., the ‘first identifier,' ‘second identifier,' ‘third identifier,' ‘fourth identifier,' and ‘fifth identifier'), not the ‘content identifier,' which is separately construed by the parties and separately addressed in Luminati's brief.” (Dkt. No. 70, at 13.) Plaintiff submits that the specification does not limit identifiers to being IP addresses and uses “identifier” differently with reference to, for example, content. See, e.g., '044 Patent at 40:21-26 (“[a]n identifier and/or sequence number in ping packets”); id. at 39:8-25 (similar as to “ICMP echo message”); id. at 102:45-59 (“chunk identifier”); id. at 111:4-5 (“the identifier of the content that was fetched during this transaction, such as IP address, URL, web-site or web-page”); id. at 124:27-31 (“Video data fetched via the Internet are typically identified by a set of characters, including three fields, relating to a URL domain name, a specific video identifier, and offset, relating to the viewing point in the video data itself.”)

         The claims here at issue already expressly recite the “in the Internet” limitation proposed by Defendant. Defendant submits that “[n]otwithstanding the patents' repeated references to IP addresses as device identifiers, [Defendant] is amenable to a construction that includes more than IP addresses so long as the identifier identifies the device or server ‘in the Internet' as required by the claims, and does not consist of an ‘internal' or other identifier that does not identify a device ‘in the Internet.'” (Id. (emphasis omitted).)

         On balance, the “in the Internet” limitation need not be repeated in a construction as to the terms for which Defendant advances this argument, and doing so would tend to confuse rather than clarify the scope of the claims. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”).

         The Court therefore hereby expressly rejects Defendant's proposed construction. No. further construction is necessary, particularly in light of surrounding claim language that provides context as to “in the Internet.”[6] See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy.”); see also Summit 6, LLC v. Samsung Elecs. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015); ActiveVideo Networks, Inc. v. Verizon Commcn's, Inc., 694 F.3d 1312, 1326 (Fed. Cir. 2012); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (“Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction.”); O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims.”).[7]

         The Court accordingly hereby construes “identifier” to have its plain and ordinary meaning.

         D. “content” bytes”

Plaintiff's Proposed Construction
Defendant's Proposed Construction

Plain and ordinary meaning

“files, text, numbers, audio, voice, multimedia, video, images, music, website page, or computer programs or any other sequence of instructions, as well as any other form of information represented as a string of bits or bytes” [8]

(Dkt. No. 46, Ex. A, at 2; Dkt. No. 61, at 13; Dkt. No. 70, at 11; Dkt. No. 84, Ex. A, at 2.) The parties submit that this term appears in Claims 81, 87, 89, 101, 104, 105, and 108 of the '044 Patent and Claims 15-19 and 22-24 of the '866 Patent. (Dkt. No. 46, Ex. A, at 2; Dkt. No. 84, Ex. A, at 2.)

         Shortly before the start of the July 31, 2019 hearing, the Court provided the parties with the following preliminary construction: “digital data such as files, text, numbers, audio, voice, multimedia, video, images, music, website pages, or computer programs or any other sequence of instructions, as well as any other form of information represented as a string of bits or bytes.”

         (1) The Parties' Positions

         Plaintiff argues that “Defendant seeks to take a term used in its ordinary meaning and limit it to a non-exhaustive list of types of content from the specification.” (Dkt. No. 61, at 13.) Plaintiff also argues claim differentiation as to dependent Claim 58 of the '044 Patent, arguing that the term “content” should not be limited to the listed types of data. (Id., at 13-14.)

         Defendant responds that “[t]he correct definition of ‘content' may be drawn directly from the specification without the need for extrinsic evidence.” (Dkt. No. 70, at 10.)

         Plaintiff replies that Defendant's proposal “improperly imports the specification into the claims, ” and “‘[c]ontent' is a readily understood term without need of further construction.” (Dkt. No. 83, at 3.)

         At the July 31, 2019 hearing, the parties presented oral arguments as to this term. Plaintiff was amenable to construing “content” as referring to “digital data, ” but Plaintiff opposed including any list of examples in the construction (alternatively, Plaintiff proposed including additional examples in the list of examples).

         (2) Analysis

         Plaintiff has suggested that the term “content” can refer to “the information conveyed by a document, for example.” (Dkt. No. 61, at 14.) Plaintiff has submitted an extrinsic definition of “content” as “[t]he information conveyed by the document, other than the structural information, and that is intended for human perception.” (See Dkt. No. 61, Ex. D.)

         Claim 81 of the '044 Patent, for example, recites (emphasis added):

81. A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of:
(a) sending the first identifier to the first server;
(b) sending a first request to the first server;
(c) receiving the second identifier from the first server;
(d) sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier; and
(e) receiving the first content from the second device.

         Claim 81 of the '044 Patent thus provides context for understanding that “content” can be fetched “over the Internet” and received by a device. Claim 15 of the '866 Patent recites (emphasis added):

15. A method for fetching a content over the Internet from a first server identified in the Internet by a second identifier via a group of multiple devices, each identified in the Internet by an associated group device identifier, the method comprising the step of partitioning the content into a plurality of content slices, each content slice containing at least part of the content, and identified using a content slice identifier, and for each of the content slices, comprising the steps of:
(a) selecting a device from the group;
(b) sending over the Internet a first request to the selected device using the group device identifier of the selected device, the first request including the content slice identifier and the second identifier;
(c) in response to receiving the sent first request by the selected device, receiving over the Internet the content slice from the selected device; and wherein the method further comprising the step of constructing the content from the received plurality of content ...

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