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Luminati Networks Ltd. v. BIScience Inc.

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

December 6, 2019

LUMINATI NETWORKS LTD. Plaintiff,
v.
BISCIENCE INC., Defendant.

          CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER

          ROY S. PAYNE UNITED STATES MAGISTRATE JUDGE

         Before the Court is the opening claim construction brief of Luminati Networks Ltd. (“Plaintiff”) (Dkt. No. 109, filed on October 15, 2019), [1] the response of BIScience (2009) Ltd. (“Defendant”) (Dkt. No. 115, filed under seal on November 4, 2019; a redacted version was submitted as Dkt. No. 115), and Plaintiff's reply (Dkt. No. 119, filed on November 14, 2019). The Court held a hearing on the issues of claim construction and claim definiteness on November 26, 2019. Having considered the arguments and evidence presented by the parties at the hearing and in their briefing, the Court issues this Order.

         Table of Contents

         I. BACKGROUND ............................................................................................................... 4

         II. LEGAL PRINCIPLES ..................................................................................................... 6

         A. Claim Construction ................................................................................................. 6

         B. Departing from the Ordinary Meaning of a Claim Term ........................................ 8

         C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 10

         III. CONSTRUCTION OF DISPUTED TERMS ............................................................... 11

         A. Preambles of Claims 81 and 108 of the '044 Patent ............................................. 11

         B. Definiteness of Claims 81 and 108 of the '044 Patent .......................................... 17

         C. “first device, ” “first server, ” “second device, ” “second server” ........................... 20

         D. “first content identifier” ........................................................................................ 23

         E. “identified in the Internet by a first identifier, ” “identified in the Internet by a second identifier, ” and “identified in the Internet by a third identifier” ....... 25

         F. “receiving the second identifier from the first server, ” “sending the second identifier to the first server, ” “sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier, ” “receiving a second request from the first device, the second request includes the first content identifier and the third identifier, ” and “in response to receiving the first content, sending the first content to the first device using the first identifier” .............................................................................................................. 28

         G. “multitasking or multiprocessing” and “proximity to the second server” ............ 32

         H. “past activities” ..................................................................................................... 33

         I. Preamble of Claim 15 of the '866 Patent .............................................................. 34

         J. Definiteness of Claim 15 of the '866 Patent ......................................................... 37

         K. “first server” and “a group of multiple devices” ................................................... 38

         L. “identified in the Internet by a second identifier” ................................................. 40

         M. “partitioning the content into a plurality of content slices” .................................. 41

         N. “each content slice containing at least part of the content” and “each content slice … identified using a content slice identifier” .................................. 44

         O. “a plurality of content slices … and for each of the content slices” ..................... 47

         P. “selecting a device from the group” and “sending over the Internet a first request to the selected device using the group device identifier of the selected device” .................................................................................................... 49

         Q. “the first request including the content slice identifier and the second identifier” ............... 51

         R. “the partitioning is based webpages level” ........................................................... 52

         S. “all of the parts of the content are included in all of the content slices” .............. 53

         T. “part of the content is included in two or more content slices” ............................ 55

         IV. CONCLUSION ............................................................................................................... 56

         I. BACKGROUND

         Plaintiff alleges infringement of two U.S. Patents: No. 9, 241, 044 (the “'044 Patent”) and No. 9, 742, 866 (the “'866 Patent”) (collectively, the “Asserted Patents”). Each of the Asserted Patents is entitled System and Method for Improving Internet Communication by Using Intermediate Nodes. The patents are related: the '866 Patent issued from a divisional application of the '044 Patent's application and both claim priority to a provisional application filed on August 28, 2013.

         In general, the Asserted Patents are directed to technology for fetching content over the Internet.

         The abstracts of the Asserted Patents are identical and provide:

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 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.

         Plaintiff asserts three independent claims: Claims 81 and 108 of the '044 Patent and Claim 15 of the '866 Patent. These claims recite as follows:

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.
108. 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 second identifier to the first server;
(b) receiving a second request from the first device, the second request includes the first content identifier and the third identifier;
(c) in response to receiving the second request, sending the first content identifier to the second server using the third identifier;
(d) receiving the first content from the second server; and (e) in response to receiving the first content, sending the first content to the first device using the first identifier.
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 slices, and wherein each of the devices in the group is a client device.

         The Court previously construed the Asserted Patents in Luminati Networks Ltd. v. UAB Tesonet et al., No. 2:18-cv-00299-JRG, Claim Construction Memorandum and Order, 2019 U.S. Dist. LEXIS 141513 (E.D. Tex. Aug. 20, 2019), Dkt. No. 121 (“Tesonet”). Many of the disputes before the Court here are identical or substantially similar to the disputes addressed in Tesonet.

         II. LEGAL PRINCIPLES

         A. Claim Construction

         “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) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. The general rule-subject to certain specific exceptions discussed infra-is that each claim term is construed according to its ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted) (“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant community at the relevant time.”) cert. granted, judgment vacated, 135 S.Ct. 1846 (2015).

         “The claim construction inquiry . . . begins and ends in all cases with the actual words of the claim.” Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n all aspects of claim construction, ‘the name of the game is the claim.'” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)) overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). First, a term's context in the asserted claim can be instructive. Phillips, 415 F.3d at 1314. Other asserted or unasserted claims can also aid in determining the claim's meaning, because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term's meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314-15.

         “[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) (en banc)). “[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). But, “‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims.'” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred embodiment described in the specification-even if it is the only embodiment-into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

         The prosecution history is another tool to supply the proper context for claim construction because, like the specification, the prosecution history provides evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317. However, “because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).

         Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record in determining the legally operative meaning of claim language.'” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert's conclusory, unsupported assertions as to a term's definition are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id. The Supreme Court has explained the role of extrinsic evidence in claim construction:

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. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871) (a patent may be “so interspersed with technical terms and terms of art that the testimony of scientific witnesses is indispensable to a correct understanding of its meaning”). 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.

Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).

         B. Departing from the Ordinary Meaning of a Claim Term

         There are “only two exceptions to [the] general rule” that claim terms are construed according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.”[2] Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the plain meaning in two instances: lexicography and disavowal.”). The standards for finding lexicography or disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.

         To act as his own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term, ” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669 F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee's lexicography must appear “with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.

         To disavow or disclaim the full scope of a claim term, the patentee's statements in the specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”). “Where an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

         C. Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)

         Patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112(b). A claim, when viewed in light of the intrinsic evidence, must “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 (2014). If it does not, the claim fails § 112(b) and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art as of the time the application for the patent was filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit to comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012).

         When a term of degree is used in a claim, “the court must determine whether the patent provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is used in a claim, “a court must determine whether the patent's specification supplies some standard for measuring the scope of the [term].” Ernie Ball, Inc. v. Earvana, LLC, 502 Fed.Appx. 971, 980 (Fed. Cir. 2013) (citations omitted). The standard “must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).

         III. CONSTRUCTION OF DISPUTED TERMS

         A. Preambles of Claims 81 and 108 of the '044 Patent

Disputed Term [3]

Plaintiff's Proposed Construction

Defendant's Proposed Construction

“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:”

  • • '044 Patent Claim 81

The preamble is limiting to the extent the terms set out network structure used by the claimed methods.

The preamble is limiting.

“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:”

  • • '044 Patent Claim 108

The preamble is limiting to the extent the terms set out network structure used by the claimed methods.

The preamble is limiting.

         Because the parties' arguments and proposed constructions with respect to these terms are related, the Court addresses the terms together.

         The Parties' Positions

         Plaintiff submits: It does not dispute applying the Tesonet holding that the preambles of Claims 81 and 108 are limiting, but only “to the extent the terms set out the network structure used by the claimed methods.” Dkt. No. 109 at 13.

         Defendant responds: The preambles of Claims 81 and 108 each set forth important aspects of the invention that are not separately recited in the body of the claims; namely, that the devices and servers of the claims that fetch content across the Internet are separated across the Internet. The preambles are limiting, as set forth in Tesonet, and include the limitations “that the content must be fetched across the Internet, and that the components identified within the preambles be separated across the Internet.” Dkt. No. 115 at 5-7.

         Plaintiff replies: There is no dispute with respect to the preambles being limiting “to the extent that terms in the claimed methods are part of a network structure set forth in the preambles.” The preamble of Claim 108 does not, however, require the “first device” to perform the steps of the claimed method. Dkt. No. 119 at 4.

         Analysis

         The issue in dispute is whether the preambles of Claims 81 and 108 of the '044 Patent are limiting in their entirety. They are.

         The Court reiterates and adopts the ruling and reasoning on this issue that it set forth in Tesonet. 2019 U.S. Dist. LEXIS 141513, at *12-21, *83-86.

         The disputed preambles are limiting in their entirety. Under Federal Circuit precedent “[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.” Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018) (quotation marks and citations omitted). A preamble is limiting, however, when it “necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotation marks and citations omitted). For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. “Likewise, when the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope.” Id. “Further, when reciting additional structure or steps underscored as important by the specification, the preamble may operate as a claim limitation.” Id. Here, the preambles provide more than simply a statement of intended use, they reflect important aspects of the described invention and they are essential to properly understanding limitations in the claim bodies.

         A preamble is limiting when it tethers the claim body to the described invention. For example, in Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., the Federal Circuit noted that the “specification makes clear that the inventors were working on the particular problem of an effective optical communication system not on general improvements in conventional optical fibers” and held the “optical waveguide” language in the preamble was limiting when the claim body was ostensibly directed to optical fibers irrespective of any waveguide properties. 868 F.2d 1251, 1257 (Fed. Cir. 1989). In other words, the claim body was properly understood only with reference to the preamble and the preamble was thus limiting. Id. Similarly, in Gen. Elec. Co. v. Nintendo Co., the Federal Circuit noted that “the '125 specification makes clear that the inventors were working on the particular problem of displaying binary data on a raster scan display device and not general improvements to all display systems” and held “system for displaying a pattern on a raster scanned display device” in the preamble as limiting when the claim body was ostensibly directed to all types of display systems. 179 F.3d 1350, 1361-62 (Fed. Cir. 1999). The Federal Circuit addressed a similar issue in Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563 (Fed. Cir. 1996). There, it noted that the “specification also states that the purpose of the invention” was to address a problem in a “cold purge process” and held “[i]n a cold purge process” in the preamble as limiting. Id. at 1571-73. See also, Poly-Am., L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309-10 (Fed. Cir. 2004) (reading the preamble as limiting because the patent document “shows that the inventor considered that the . . . preamble language represented an important characteristic of the claimed invention”); On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343-44 (Fed. Cir. 2006) (reading the preamble as limiting because “it states the framework of the invention . . . [that] is fundamental to the [] invention” as described in the patent and therefore “embraces the totality of [the recited] limitations, and limits the claim to the subject matter of the preamble”); MEMS Tech. Berhad v. Int'l Trade Comm'n, 447 Fed.Appx. 142, 153-54 (Fed. Cir. 2011) (reading the preamble as limiting because it states “the essence of the invention” and “standing alone, the bodies of [the claims] do not require” the important characteristic of the invention recited in the preamble). Common to these cases is that the preamble is limiting when the preamble tethers the claim to the focus of the described invention-when it provides an important aspect of the invention when that aspect is not understood solely from body of the claim.

         As explained in Tesonet, the preambles of Claims 81 and 108 provide antecedent basis for numerous terms in bodies of the claims and define important attributes of those terms and their relationships in the invention that are not expressed in the bodies of the claims. Tesonet, 2019 U.S. Dist. LEXIS 141513, at *15-21, *84-86. For example, each of the preambles (which are identical) sets forth important attributes of the “first identifier, ” “second identifier, ” and “third identifier” that are not expressed in the bodies of the claims; namely, that they “identif[y] in the Internet” a “first device, ” “second device, ” and “second server, ” respectively. Similarly, the preamble sets forth an important attribute of the “content” that is not expressed in the bodies; namely, that it is “fetch[ed] over the Internet.” And the preambles set forth an important attribute of the relationship among the components that is not expressed in the bodies; namely, the “fetching” is “by a first device . . . from a second server . . . via a second device . . . using a first server.”

         The aspects of the invention set forth in the preambles are essential to properly understanding the claims. For example, the '044 Patent is clear that the focus of the invention is “improving communication over the Internet by using intermediate nodes.” '044 Patent col.1 ll.13-17; see also, col.51 ll.19-22 (“A system may comprise multiple data servers and multiple client and tunnel devices, each data server may be storing a respective content that may be fetched by the client devices via the Internet.”); col.52 ll.31-36 (“A method is disclosed for fetching over the Internet a first content . . . by a first device . . . from a second server . . . via a second device . . . by using a first server.”). Both the Internet and the intermediate-node aspects of the invention are not apparent from the body of the claims alone. For example, the role of the second device as an intermediary in Claim 81 is apparent only when read in light of the preamble's definition of the content being fetched “by a first device . . . from a second server . . . via a second device.” For example, divorced from the preamble, the claim body ostensibly covers a situation in which the second device is the original source of the content rather than an intermediary. Similarly, without reference to the preamble, the body ostensibly covers local fetching rather than fetching over the Internet. Claim 108 suffers similar issues. Without each preamble in its entirety limiting the claims, the claims fail to capture important aspects of the invention. The preambles are essential to a proper understanding of the claims and are therefore limiting.

         The Court rejects Plaintiff's position that the preambles are limiting only “to the extent the terms set out network structure used by the claimed methods.” First, it is not entirely clear what Plaintiff means by its caveat. Second, Plaintiff's argument appears to be based on an improper application of Uniloc USA Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011). Dkt. No. 109 at 15 n.2; Tesonet, 2019 U.S. Dist. LEXIS 141513, at *17 n.3. Uniloc addressed an issue of divided-infringement of a system claim rather than the effect of a preamble on the scope of a method claim. Uniloc, 632 F.3d at 1309 (“That other parties are necessary to complete the environment in which the claimed element functions does not necessarily divide the infringement between the necessary parties.”). Uniloc was further explained in Advanced Software Design Corp. v. Fiserv, Inc. 641 F.3d 1368, 1374 (Fed. Cir. 2011) (“Like the claim in Uniloc, the claims at issue in this case contain preambles that define the environment in which an accused infringer must act or describe capabilities that an accused device must have.”). The issue addressed in Uniloc and Advanced Software was not whether particular claim language was limiting but rather was to “distinguish between those limitations that describe the environment in which a claim operates from the limitations that must be performed by an accused infringer.” Advanced Software, 641 F.3d at 1375. Indeed, the environmental language in Uniloc and Advanced Software was limiting. This distinction is explained succinctly in Advanced Software. There, the Federal Circuit held that claims directed to validating a financial instrument having encrypted information in which the method of encryption is defined in the preamble may be infringed without performing the encryption method. But the claims will not be infringed if the instrument that is validated has not been “encrypted . . . in accordance with steps described in the preamble.” Id. at 1373-75. Thus, the environment in Advanced Software, namely, the encrypted information specified in the preamble, was a limitation of the claim. Here, the issue is whether the preambles are limiting, not whether the claims invoke a divided-infringement issue.

         Accordingly, the Court holds that the preambles of Claims 81 and 108 of the '044 Patent are limiting in their entirety.

         B. Definiteness of Claims 81 and 108 of the '044 Patent

Disputed Term

Plaintiff's Proposed Construction

Defendant's Proposed Construction

  • • '044 Patent Claim 81

not indefinite

indefinite

  • • '044 Patent Claim 108

not indefinite

indefinite

         Because the parties' arguments and proposed constructions with respect to these issues are related, the Court addresses the terms together.

         The Parties' Positions

         Plaintiff submits: Defendant has not provided information under the Local Patent Rules that is sufficient to “overcome the presumption of definiteness and validity to which Luminati is entitled.” The scope of each of Claims 81 and 104 of the '044 Patent is reasonably certain: Claim 81 sets forth how the “first device” relates to other elements of the claim as the method is performed. Claim 108 sets forth how the “second device” relates to other elements of the claim as the method is performed. The method of Claim 81 “can be performed by the ‘first device.'” The method of Claim 108 “can be performed by the ‘second device.'” “[T]he claimed methods do not require steps to be performed [by] each of [these] components.” The preamble of Claim 108, which refers to fetching by the first device, does not require the steps in the body to be performed by the first device. Rather, while this preamble sets forth the network in which the steps recited in the body of the claim are to be performed, the actions recited in the preamble are not claim limitations. Dkt. No. 109 at 13-17 & n.2.

         In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support its position: Intrinsic evidence: '044 Patent figs.5-16, col.81 l.32 - col.83 l.18, col.83 ll.43-65, col.84 ll.12-18, col.86 ll.15-42, col.88 l.46 - col.89 l.49, col.106 ll.32-40. Extrinsic evidence: Rhyne Decl.[4] ¶¶ 6-19 (Plaintiff's Ex. D, Dkt. No. 109-5).

         Defendant responds: It is not reasonably certain whether Claims 81 and 108 encompass methods for fetching local content or are restricted to fetching content over the Internet, as recited in the preambles. It is not reasonably certain which of the recited devices must perform the steps of the methods. If the preamble of Claim 81 is limiting, it indicates that the “first device” performs the steps recited in the body of the claim. But the steps in Claim 108, which has the identical preamble, are not performed by the “first device.” Thus, the scopes of the claims are not reasonably certain. Further, the Court has already held Claim 108 indefinite in Tesonet and the reasons expressed there also apply here. Dkt. No. 115 at 7-9.

         In addition to the claims themselves, Defendant cites the following extrinsic evidence to support its position: Rhyne Decl. ¶¶ 9, 12, 14 (Plaintiff's Ex. D, Dkt. No. 109-5).

         Plaintiff replies: Defendant did not explain its indefiniteness position as required under Local Patent Rule 4-2 and did not provide expert testimony on the issue and thus cannot meet the clear-and-convincing standard of proving either Claim 81 or Claim 108 invalid as indefinite. The common preamble of the two claims “sets out all the major components and their roles, even though two different devices perform different steps set forth in the different claims.” Dkt. No. 119 at 4-6.

         Analysis

         The issues in dispute distill to: (1) whether it is reasonably certain that Claims 81 and 108 of the '044 Patent are restricted to fetching content over the Internet and (2) whether it is reasonably certain which of the devices listed in the claims performs the steps recited in the claims. As set forth above, the claims require “fetching over the Internet a first content.” Further, the role of the various recited components in performing the claimed steps, and thus claim scope, is reasonably certain in Claim 81 but not in Claim 108.

         The Court reiterates and adopts the reasoning and ruling expressed in Tesonet regarding the role of the various components in performing the steps of Claim 81. Tesonet, 2019 U.S. Dist. LEXIS 141513, at *76- 83. Specifically, “[a] fair reading of the claim as a whole is that the lettered method steps are performed ‘by a first device,' which is set forth in the preamble. The claim scope is ‘reasonabl[y] certain[]' in this respect.” Id. at *80 (citing Nautilus, 572 U.S. at 910).

         The Court also reiterates and adopts the reasoning and ruling expressed in Tesonet regarding the role of the various components in performing the steps of Claim 108. Id. at *86-88. Specifically, “the analysis set forth above as to Claim 81 does not apply to Claim 108 because the preamble recites that the method is performed ‘by a first device,' not by the second device. The recital of ‘via a second device' in Claim 108 fails to find any reasonably clear meaning in the context of the remainder of the claim, in particular as to the steps recited in the body of the claim. The scope of the claim therefore lacks ‘reasonable certainty.'” Id. at *88 (citing Nautilus, 572 U.S. at 910). The Court is not persuaded otherwise by Plaintiff's expert's testimony. While the Court does not take issue with Dr. Rhyne's explanation of the exemplary embodiments of Figures 5b and 11a of the '044 Patent or his explanation of how Claim 108 may encompass those embodiments, the Court finds his ultimate opinion-that “each claim step[] can be performed by the second device, ” Rhyne Decl. ¶ 14 (emphasis added)-unhelpful. Plaintiff's argument is similarly unhelpful, stating that “each of the claimed steps can be performed by the second device.” Dkt. No. 109 at 16-17 (emphasis added). It is not reasonably certain from the language of the claim whether any or all the steps must be performed by the second device to effect fetching of content “via a second device.” Plaintiff and its expert have provided little, if any, certainty regarding this issue. Ultimately, Claim 108 as written, and even in light of Plaintiff's argument and evidence, leaves a “zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.” Nautilus, 572 U.S. at 909-10. Therefore, Claim 108 is indefinite.

         Accordingly, the Court holds that Defendant has not met its burden to prove Claim 81 of the '044 Patent is indefinite. Conversely, the Court holds Claim 108 of the '044 Patent as indefinite.

         C.“first device, ” “first server, ” “second device, ...


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