Interval insists all is clarity and all is well. The Defendants, not so much. At issue are 15 terms used in U.S. Patent Nos. 6,034,652 and 6,788,314. Interval insists the Defendants "over and over again, [they] attempt to add language to the definition in an attempt to create ambiguity and unnecessarily change the scope of the claims in ways unsupported by the specification and claim language." However, both parties agree the patents are about providing "information to a user in non-distracting ways that do not interfere with the user’s primary activity on a device such as a computer."

First up is the issue of the claim recitation that the "images must be displayed in an “unobtrusive manner." Second is the issue of the claim recitation that the "display of images must not “distract a user” from the user’s “primary interaction” with the apparatus." Defendants insist these are nebulous concepts, subjective in nature, and impossible to quantify to the measurable extent required for patent protection, i.e., the claims are indefinite. Interval, in its original claim construction brief (300 [PDF; Text]) essentially ignores this fundamental issue before moving directly to the 15 disputed terms. For their part, the Defendants in their original claim construction brief (301 [PDF; Text]) observe that these issues are fundamental and must be addressed before moving to the 15 specific disputed terms.

Defendants argue that the ambiguity/indefiniteness of these two terms "render[s] the claims of the ’314 Patent and claims 4-8, 11, 34, and 35 of the ’652 Patent invalid." Relying on the Halliburton and Datamize cases, Defendants find two criteria establishing indefiniteness:

First, a term is indefinite if one skilled in the art would not know from one use to the next whether the accused product was within the scope of the claims because outside factors affect whether the limitation is met.

...

Second, claim language that “depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention” is indefinite. ... When a subjective claim term is used, “[s]ome objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”

While Interval did not address the nonobtrusive/nondistraction factors separately from the disputed claim language in its original brief, it rejects the arguments in its response brief (311 [PDF]). Citing to Exxon Research and Haemonetics Corp. Interval responds that just becuase discerning the meaning of the claim is difficult doesn't mean the claim is indefinite. More importantly, Interval argues the specification provides the needed parameters when it provides "'in an unobtrusive manner that does not distract the user' refers to an embodiment that uses the 'unused spatial capacity' of the display screen." In other words, the standard is one of not overlapping the primary display.

Let's take a look at a handful of the 15 disputed terms.

"selective display" terms

Defendants argue that image content to be displayed must come from a predetermined scheduling information, i.e., you can't choose from that which does not exist. Interval argues that the "predetermined scheduling information" limitation only exists in dependent claims as a further embodiment and is not an implied limitation on the independent claims ('652 patent, claims 4, 5, 6, 7, 8, and 11, and '314 patent, claims 1, 3, 7, 10 and 13).

"image generated from a set of content data"

The disagreement here is with the Defendants' assertion that the output must be "defined by a content provider." The Defendants point to the specification of the '652 patent which states: "Each set of content data is formulated by a content provider and made available by a corresponding content providing system for use with the attention manager.” The Defendants also argue that this limitation goes to the very purpose of the patents, i.e., "afford[ing] an opportunity to content providers to disseminate their information.” Defendants' position is that to ignore this limitation would provide an interpretation for the claims that exceeds the specification.

Interval again argues that Defendants' added language overlays an embodiment on the claims thus improperly limiting the claims. While Interval concedes that the content does come from content providers, that does not mean that the invention cannot manipulate and display that information in a manner other than that of the content provider.

"primary interaction"

This disagreement arises over what is not part of the primary interaction. Interval points to the introductory claim language: "A system for engaging the peripheral attention of [the user]." Defendants ignore this definition from the claim language and refer instead to language from the specification: "other than operation that is part of the attention manager according to the invention." Defendants' argue that these two definitions are not consistent and that the definition extracted from the claim exceeds the scope of the definition taken from the specification.

“each content provider provides its content data to [a/the] content display system independently of each other content provider”

Here the dispute is over what it means to "provide ... independently. Interval argues that that to provide independently means selecting the content to be provided without influence from other parties. Defendants argue it goes to the means for transmitting the information; in other words the content must come directly from the content provider and not through some other party. Interval points out that the limitation suggested by Defendants was specifically removed during the original prosecution of the patent.

These are not minor disagreements. They could dramatically alter the scope of the claims and, as a consequence, whether the claims have been infringed.

In two separate matters the Court has sided with Interval with respect to its motion to incorporate Apple's OS X into the complaint. (see, Interval Moves to Incorporate Mountain Lion) Second, the Court granted the Defendants' motion to compel (281 [PDF]) with respect to again producing Interval's expert witness for deposition.

***************

Docket

272 - Filed: 08/15/2012 - APPLICATION OF ATTORNEY Matthew Behncke FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Interval Licensing LLC (Fee Paid) Receipt No. 0981-2914063. (Berry, Matthew) (Entered: 08/15/2012)

273 - Filed: 08/16/2012 - ORDER re (272 in 2:10-cv-01385-MJP) Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney Matthew Behncke for Interval Licensing LLC, by William M. McCool. (No document associated with this docket entry, text only.)(DS) (Entered: 08/16/2012)

274 - Filed: 08/22/2012 - FILED IN ERROR, ATTY WILL REFILE MOTION. MOTION for Leave to Amend its Supplemental Infringement Contentions by Plaintiff Interval Licensing LLC. (Attachments: # 1 Declaration of Nick P. Patel, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Proposed Order)(Patel, Niraj) Modified text on 8/23/2012 (CL). (Entered: 08/22/2012) 08/23/2012

   Filed: 8/23/2012 - Noting Date Set/Reset re (274 in 2:10-cv-01385-MJP) MOTION for Leave to Amend its Supplemental Infringement Contentions : Noting Date 9/7/2012, (IM) (Entered: 08/23/2012)

Filed: 08/23/2012 -   ***Motion terminated: 274 MOTION for Leave to Amend its Supplemental Infringement Contentions filed by Interval Licensing LLC. (Per filing atty, motion filed in error, will refile motion) (CL) (Entered: 08/23/2012)

275 - Filed: 08/23/2012 - MOTION for Leave to Amend its Supplemental Infringement Contentions by Plaintiff Interval Licensing LLC. (Attachments: # 1 Declaration of Nick P. Patel, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Proposed Order) Noting Date 9/7/2012, (Patel, Niraj) (Entered: 08/23/2012)

276 - Filed: 09/04/2012 - STATEMENT re 275 MOTION for Leave to Amend its Supplemental Infringement Contentions by Defendant Apple Inc. (Roller, Jeremy) (Entered: 09/04/2012)

277 - Filed: 09/14/2012 - STATEMENT re Joint Claim Construction and Prehearing Statement by Plaintiff Interval Licensing LLC. (Attachments: # 1 Exhibit A - '652 Patent, # 2 Exhibit B - '314 Patent, # 3 Exhibit C1 - '652 Intrinsic Evidence, # 4 Exhibit D1 - '314 Intrinsic Evidence, # 5 Exhibit 1 - Joint Claim Chart, # 6 Exhibit 2 - Interval's Infringement Contentions, # 7 Exhibit 3 - Defendants' Invalidity Contentions)(Wilson, Douglas) (Entered: 09/14/2012)

278 - Filed: 09/17/2012 - APPLICATION OF ATTORNEY James E. Eakin FOR LEAVE TO APPEAR PRO HAC VICE for Interested Parties Golan Levin, Paul Freiberger, Philippe Piernot (Fee Paid) Receipt No. 0981-2948604. (Thomas, Jeffrey) (Entered: 09/17/2012)

279 - Filed: 09/17/2012 - NOTICE of Appearance by attorney Jeffrey I Tilden on behalf of Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot. (Tilden, Jeffrey) (Entered: 09/17/2012)

280 - Filed: 09/18/2012 - ORDER re (278 in 2:10-cv-01385-MJP) Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney James E. Eakin for Paul Freiberger, Golan Levin, and for Philippe Piernot, by William M. McCool. (No document associated with this docket entry, text only.)(DS) (Entered: 09/18/2012)

281 - Filed: 09/20/2012 - Joint MOTION to Compel LR 37 Submission Re Expert Deposition by Defendant Google Inc. Noting Date 9/20/2012, (Jost, Shannon) (Entered: 09/20/2012)

282 - Filed: 09/20/2012 - DECLARATION of Shannon M. Jost filed by Defendants Google Inc, Google Inc re (281 in 2:10-cv-01385-MJP, 34 in 2:11-cv-00711-MJP, 32 in 2:11-cv-00716-MJP, 33 in 2:11-cv-00708-MJP) Joint MOTION to Compel LR 37 Submission Re Expert Deposition (Attachments: # 1 Exhibit, # 2 Proposed Order)(Jost, Shannon) (Entered: 09/20/2012)

283 - Filed: 09/20/2012 - DECLARATION of Douglas Wilson filed by Defendants Google Inc, Google Inc re (281 in 2:10-cv-01385-MJP, 34 in 2:11-cv-00711-MJP, 32 in 2:11-cv-00716-MJP, 33 in 2:11-cv-00708-MJP) Joint MOTION to Compel LR 37 Submission Re Expert Deposition (Jost, Shannon) (Entered: 09/20/2012)

284 - Filed: 09/24/2012 - MOTION for Leave to Amend Their Invalidity Contentions by Defendant Apple Inc. (Attachments: # 1 Proposed Order) Noting Date 10/12/2012, (Roller, Jeremy) (Entered: 09/24/2012)

285 - Filed: 09/24/2012 - DECLARATION of Mark Liang filed by Defendant Apple Inc re 284 MOTION for Leave to Amend Their Invalidity Contentions (Attachments: # 1 Exhibit Exhs A - C, # 2 Exhibit Exhs D - G1, # 3Exhibit Exhs G2 - I1, # 4 Exhibit Exhs I2 - J)(Roller, Jeremy) (Entered: 09/24/2012)

286 - Filed: 09/24/2012 - CERTIFICATE OF SERVICE by Defendant Apple Inc re 284 MOTION for Leave to Amend Their Invalidity Contentions . (Roller, Jeremy) (Entered: 09/24/2012)

287 - Filed: 09/27/2012 - APPLICATION OF ATTORNEY Robert A. Bullwinkel FOR LEAVE TO APPEAR PRO HAC VICE for Plaintiff Interval Licensing LLC (Fee Paid) Receipt No. 0981-2961374. (Berry, Matthew) (Entered: 09/27/2012)

288 - Filed: 09/27/2012 - ORDER re (287 in 2:10-cv-01385-MJP) Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney Robert A. Bullwinkel for Interval Licensing LLC, by William M. McCool. (No document associated with this docket entry, text only.)(DS) (Entered: 09/27/2012)

289 - Filed: 09/27/2012 - ORDER granting (275)Plaintiff's Motion for Leave to amend it's Supplemental Infringement Contentions in case 2:10-cv-01385-MJP; granting (29) Motion for Leave in case 2:11-cv-00708-MJP, by Judge Marsha J. Pechman. (Order filed in both C10-1385MJP and related case C11-708MJP)(MD) (Entered: 09/27/2012)

290 - Filed: 09/27/2012 - ORDER on LR 37 submission - granting (281) Joint Motion to Compel in case 2:10-cv-01385-MJP; granting (33) Motion to Compel in case 2:11-cv-00708-MJP; granting (34) Motion to Compel in case 2:11-cv-00711-MJP; granting (32) Motion to Compel in case 2:11-cv-00716-MJP, by Judge Marsha J. Pechman. (Order Posted in Lead and related cases C10-1385MJP, C11-708MJP, C11-711MJP, C11-716MJP)(MD) (Entered: 09/28/2012)

291 - Filed: 10/01/2012 - MOTION Joint Request to Adjust Claim Construction Briefing Schedule by Defendant Google Inc. (Attachments: # 1 Proposed Order) Noting Date 10/1/2012, (Jost, Shannon) (Entered: 10/01/2012)

292 - Filed: 10/03/2012 - ORDER granting (291) Joint Motion to adjust Claim Construction Briefing Schedule (Track 314-652) in case 2:10-cv-01385-MJP. Opening claim construction briefs due 10/9/2012, by Judge Marsha J. Pechman. (Order posted in Case Numbers C10-1385MJP, C11-708MJP, C11-711MJP and C11-716MJP)(MD) (Entered: 10/04/2012)

293 - Filed: 10/08/2012 - RESPONSE, by Plaintiff Interval Licensing LLC, to 284 MOTION for Leave to Amend Their Invalidity Contentions. Oral Argument Requested. (Attachments: # 1 Declaration of Nick Patel, # 2Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Proposed Order)(Patel, Niraj) (Entered: 10/08/2012)

294 - Filed: 10/09/2012 - MOTION for Protective Order Tri-Party Rule 37 Submission by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC. (Attachments: # 1 Proposed Order) Noting Date 10/9/2012, (Thomas, Jeffrey) (Entered: 10/09/2012)

295 - Filed: 10/09/2012 - DECLARATION of James E. Eakin filed by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC re 294 MOTION for Protective Order Tri-Party Rule 37 Submission (Attachments: # 1 Exhibit Exs A-G and K)(Thomas, Jeffrey) (Entered: 10/09/2012)

296 - Filed: 10/09/2012 - DECLARATION of Mark P. Walters filed by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC re 294 MOTION for Protective Order Tri-Party Rule 37 Submission (Thomas, Jeffrey) (Entered: 10/09/2012)

297 - Filed: 10/09/2012 - DECLARATION of Matthew Berry filed by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC re 294 MOTION for Protective Order Tri-Party Rule 37 Submission (Thomas, Jeffrey) (Entered: 10/09/2012)

298 - Filed: 10/09/2012 - DECLARATION of Cortney S. Alexander filed by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC re 294 MOTION for Protective Order Tri-Party Rule 37 Submission (Thomas, Jeffrey) (Entered: 10/09/2012)

299 - Filed: 10/09/2012 - CERTIFICATE OF SERVICE by Defendant AOL Inc, Interested Parties Paul Freiberger, Golan Levin, Philippe Piernot, Plaintiff Interval Licensing LLC re 295 Declaration, 296 Declaration, 298Declaration, 294 MOTION for Protective Order Tri-Party Rule 37 Submission, 297 Declaration, . (Thomas, Jeffrey) (Entered: 10/09/2012)

300 - Filed: 10/09/2012 - OPENING BRIEF Local Patent Rule 134(a) Opening Claim Construction Brief ('652 and '314 Patents Track) by Plaintiff Interval Licensing LLC. (Attachments: # 1 Exhibit AExhibit B, # 3 Exhibit C)(Davis, Nathan) (Entered: 10/09/2012)

301 - Filed: 10/09/2012 - OPENING BRIEF Defendants' Opening Brief in Support of Proposed Claim Constructions ('652/'314 Track) by Defendant Google Inc. (Jost, Shannon) (Entered: 10/09/2012)

302 - Filed: 10/09/2012 - DECLARATION of Shannon M. Jost of Shannon M. Jost re (301 in 2:10-cv-01385-MJP) Brief - Opening by Defendant Google Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H)(Jost, Shannon) (Entered: 10/09/2012)

303 - Filed: 10/09/2012 - DECLARATION of Bruce Maggs re (301 in 2:10-cv-01385-MJP) Brief - Opening by Defendant Google Inc. (Jost, Shannon) (Entered: 10/09/2012)

304 - Filed: 10/12/2012 - MINUTE ENTRY for proceedings held before Judge Marsha J. Pechman- Dep Clerk: Rhonda Miller; Pla Counsel: Matthew Berry, Justin Nelson, Davina Inslee; Def Counsel: Cortney Alexander, Molly Terwilliger, Mark Walters; and James Eakin CR: Danae Hovland; Motion Hearing held on 10/12/2012 regarding 294 MOTION for Protective Order Tri-Party Rule 37 Submission filed by Paul Freiberger, Philippe Piernot, Interval Licensing LLC, Golan Levin, AOL Inc. Oral argument. Court denies motion for the reasons stated on the record. (RM) (Entered: 10/12/2012)

305 - Filed: 10/12/2012 - REPLY, filed by Defendant Apple Inc, TO RESPONSE to 284 MOTION for Leave to Amend Their Invalidity Contentions (Roller, Jeremy) (Entered: 10/12/2012)

306 - Filed: 10/12/2012 - DECLARATION of Mark Liang filed by Defendant Apple Inc re 284 MOTION for Leave to Amend Their Invalidity Contentions (Roller, Jeremy) (Entered: 10/12/2012)

307 - Filed: 10/12/2012 - CERTIFICATE OF SERVICE by Defendant Apple Inc re Defs' Reply in Support of Their Motion for Leave to Amend Their Invalidity Contentions. (Roller, Jeremy) (Entered: 10/12/2012)

308 - Filed: 10/22/2012 - APPLICATION OF ATTORNEY Mark Liang FOR LEAVE TO APPEAR PRO HAC VICE for Defendant Apple Inc (Fee Paid) Receipt No. 0981-2989545. (Attachments: # 1 ECF Registration Form)(Roller, Jeremy) (Entered: 10/22/2012)

309 - Filed: 10/22/2012 - NOTICE OF WITHDRAWAL OF COUNSEL: Attorney Neil L. Yang for Defendant Apple Inc. (Roller, Jeremy) (Entered: 10/22/2012)

310 - Filed: 10/23/2012 - ORDER re (308 in 2:10-cv-01385-MJP) Application for Leave to Appear Pro Hac Vice. The Court ADMITS Attorney Mark Liang for Apple Inc, by William M. McCool. (No document associated with this docket entry, text only.)(DS) (Entered: 10/23/2012)

311 - Filed: 10/26/2012 - RESPONSIVE BRIEF Interval's Responsive Claim Construction Brief ('652 and '314 Patents Track) by Plaintiff Interval Licensing LLC.. (Attachments: # 1 Declaration, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F)(Davis, Nathan) (Entered: 10/26/2012)

312 - Filed: 10/26/2012 - NOTICE of Association of Attorney by Jeremy E Roller on behalf of Defendant Apple Inc. (Roller, Jeremy) (Entered: 10/26/2012)

313 - Filed: 10/26/2012 - APPLICATION OF ATTORNEY David Alberti FOR LEAVE TO APPEAR PRO HAC VICE for Defendant Apple Inc (Fee Paid) Receipt No. 0981-2995830. (Attachments: # 1 ECF Registration)(Roller, Jeremy) (Entered: 10/26/2012)

314 - Filed: 10/26/2012 - APPLICATION OF ATTORNEY Yakov Zolotorev FOR LEAVE TO APPEAR PRO HAC VICE for Defendant Apple Inc (Fee Paid) Receipt No. 0981-2995836. (Attachments: # 1 ECF Registration)(Roller, Jeremy) (Entered: 10/26/2012)

315 - Filed: 10/26/2012 - RESPONSE by Defendant Yahoo! Inc re 300 Brief - Opening Apple's, Google's, AOL's, and Yahoo!'s Responsive Claim Construction Brief ('652 and '314 Patents Track). (Attachments: # 1 Appendix)(Walters, Mark) (Entered: 10/26/2012)

316 - Filed: 10/26/2012 - DECLARATION of Mark Walters in Support of Apple's, Google's, AOL's, and Yahoo!'s Responsive Claim Construction Brief ('652 and '314 Patents Track) re 315 Response (non motion), by Defendant Yahoo! Inc. (Attachments: # 1 Exhibit A)(Walters, Mark) (Entered: 10/26/2012)

Documents

300

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

INTERVAL LICENSING LLC,
Plaintiff,
vs.
AOL, INC.; APPLE, INC.; GOOGLE, INC.;
AND YAHOO! INC.,
Defendants.

Case Nos. 2:10-cv-01385-MJP, 2:11-cv-
00708-MJP, 2:11-cv-00711-MJP, 2:11-cv-
00716-MJP

JURY TRIAL DEMANDED

PLAINTIFF INTERVAL LICENSING LLC’S LOCAL PATENT RULE 134(a)
OPENING CLAIM CONSTRUCTION BRIEF (’652 AND ’314 PATENTS TRACK)

Responsive Brief Due Date: October 26, 2012

---

TABLE OF CONTENTS

I. Introduction and Overview of the Patented Technology .............................................. 1

II. Relevant Law ..................................................................................................................... 1

III. Terms for Construction .................................................................................................... 4

1. “selective display” terms ......................................................................................... 4

2. “images generated from a set of content data” ..................................................... 7

3. “in an unobtrusive manner that does not distract a user of the apparatus from
a primary interaction with the apparatus” ........................................................... 8

4. “primary interaction” ............................................................................................ 15

5. “means for selectively displaying on the display device, in an unobtrusive
manner that does not distract a user of the apparatus from a primary
interaction with the apparatus, an image or images generated from the set of
content data” .......................................................................................................... 16

6. “each content provider provides its content data to [a/the] content display
system independently of each other content provider” ...................................... 19

7. “user interface installation instructions for enabling provision of a user
interface that allows a person to request the set of content data from the
specified information source” ............................................................................... 20

8. “during operation of an attention manager”....................................................... 22

9. “means for acquiring a set of content data from a content providing system” 23

10. “content provider” ................................................................................................. 26

11. “content data scheduling instructions for providing temporal constraints on
the display of the image or images generated from the set of content data” .... 28

12. “content data update instructions for enabling acquisition of an updated set of
content data from an information source that corresponds to a previously
acquired set of content data” ................................................................................ 30

13. “content display system scheduling instructions for scheduling the display of
the image or images on the display device” ......................................................... 30

14. “instructions” ......................................................................................................... 32

15. “means for displaying one or more control options with the display device
while the means for selectively displaying is operating” .................................... 35

IV. CONCLUSION ............................................................................................................... 38

i

---

TABLE OF AUTHORITIES

Cases

Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
616 F.3d 1283 (Fed. Cir. 2010)..................................................................................................... 31

Arlington Indus., Inc. v. Bridgeport Fittings, Inc.,
632 F.3d 1246 (Fed. Cir. 2011)....................................................................................................... 3

Asyst Techs., Inc. v. Empak, Inc.,
268 F.3d 1364 (Fed. Cir. 2001)....................................................................................................... 4

Aventis Pharma S.A. v. Hospira, Inc.,
675 F.3d 1324 (Fed. Cir. 2012)..................................................................................................... 10

Baden Sports, Inc. v. Molten, No. C06-0210,
2007 WL 1847246, (W.D. Wash. Jun. 26, 2007) ........................................................................... 3

Boss Control, Inc. v. Bombardier Inc.,
410 F.3d 1372 (Fed. Cir. 2005)..................................................................................................... 10

Brown v. 3M,
265 F.3d 1349 (Fed. Cir. 2001)) ..................................................................................................... 2

Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251 (Fed. Cir. 1989)....................................................................................................... 1

Dealertrack, Inc. v. Huber,
674 F.3d 1315 (Fed. Cir. 2012)..................................................................................................... 37

Dentx Prods., LLC v. Advantage Dental Prods., Inc.,
309 F.3d 774 (Fed. Cir. 2002)....................................................................................................... 14

Energizer Holdings, Inc. v. Int’l Trade Comm’n,
435 F.3d 1366 (Fed. Cir. 2006)..................................................................................................... 13

Exxon Res. & Eng’g Co. v. United States,
265 F.3d 1371 (Fed. Cir. 2001)..................................................................................................... 13

Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323 (Fed. Cir. 2008)..................................................................................................... 38

Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp.,
493 F.3d 1358 (Fed. Cir. 2007)....................................................................................................... 2

Immunocept, LLC v. Fulbright & Jaworski, LLP,

ii

---

504 F.3d 1281 (Fed. Cir. 2007)..................................................................................................... 15

In re Suitco Surface, Inc.,
603 F.3d 1255 (Fed. Cir. 2010)..................................................................................................... 11

In re Yamamoto,
740 F.2d 1569 (Fed. Cir. 1984)..................................................................................................... 11

Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
688 F.3d 1342 (Fed. Cir. 2012)..................................................................................................... 12

Krippelz v. Ford Motor Co.,
667 F.3d 1261 (Fed. Cir. 2012)..................................................................................................... 12

Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898 (Fed. Cir. 2004)......................................................................................................... 3

Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) ........................................................................................................................ 2

Martek Biosciences Corp. v. Nutrinova, Inc.,
579 F.3d 1363 (Fed. Cir. 2009)....................................................................................................... 3

Micro Chem., Inc. v. Great Plains Chem. Co., Inc.,
194 F.3d 1250 (Fed. Cir. 1999)....................................................................................................... 4

Noah Systems, Inc. v. Intuit Inc.,
675 F.3d 1302 (Fed. Cir. 2012)..................................................................................................... 36

Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005).............................................................................................. passim

Power-One, Inc. v. Artesyn Techs., Inc.,
599 F.3d 1343 (Fed. Cir. 2010)..................................................................................................... 14

Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306 (Fed. Cir. 2008)..................................................................................................... 13

Silicon Graphics, Inc. v. ATI Techs., Inc.,
607 F.3d 784 (Fed. Cir. 2010)......................................................................................................... 8

Spectrum Int’l, Inc. v. Sterilite Corp.,
164 F.3d 1372 (Fed. Cir. 1998)..................................................................................................... 10

SuperGuide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870 (Fed. Cir. 2004)......................................................................................................... 3

iii

---

Thorner v. Sony Comp. Entm’t. Am. LLC,
669 F.3d 1362 (Fed. Cir. 2012)..................................................................................................... 15

Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576 (Fed. Cir. 1996)......................................................................................................... 6

Statutes

35 U.S.C. §112, ¶ 6 ................................................................................................................... 4, 36

Other Authorities

The IEEE Standard Dictionary of Electrical and Electronics Terms (6th Ed.) ............................. 32

Webster’s New World College Dictionary, 4th ed. (2010) ........................................................... 19

iv

---

Pursuant to Local Patent Rule 134 and the Court’s Scheduling Order (Docket No. 271), Interval Licensing LLC (“Interval”) submits this Opening Brief on Claim Construction. In accordance with the Court’s Scheduling Order, the parties have identified for construction 15 terms for U.S. Patent Nos. 6,034,652 (“the ’652 patent”) and 6,788,314 (“the ’314 patent”).

I. Introduction and Overview of the Patented Technology

The two patents asserted in the present litigation are directed to inventions developed at Interval Research Corporation, a private research company founded by Paul Allen and David Liddle in the early 1990s. The rapid development of the Internet in the 1990s made an enormous quantity of information available to the public. The inventions described in the ’652 and ’314 patents were aimed at helping users navigate and use this massive universe of information more quickly and easily. They accomplish this by providing information to a user in non-distracting ways that do not interfere with the user’s primary activity on a device such as a computer. In this manner, the inventions improve users’ ability to take advantage of available information by allowing for the flow of other sources of information that they otherwise would not see.

The primary flaw with most of the Defendants’ proposed constructions is that over and over again, they attempt to add language to the definition in an attempt to create ambiguity and unnecessarily change the scope of the claims in ways unsupported by the specification and claim language.

II. Relevant Law

“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.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The

1

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construction of terms used in a patent claim is a question of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996).

Claims are to be construed from the perspective of a person of ordinary skill in the art of the field of the patented invention at the time of the effective filing date of the patent application. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In cases of nontechnical words with ordinary meanings that are readily apparent, “elaborate interpretation” is not required. Id. at 1314 (citing Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)).¹ When such an ordinary meaning is not apparent, the courts look to the language of the claims, the specification, prosecution history, and extrinsic evidence such as dictionaries and treatises. Id. at 1314-18. The specification, including the claim language, “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. at 1315. The patentee may in some cases act as his or her own lexicographer. “When a patentee defines a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term.” Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d 1358, 1361 (Fed. Cir. 2007). The prosecution history may also be helpful. Phillips, 415 F.3d at 1317. However, “it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Id. Extrinsic evidence may provide guidance in some circumstances, but should not be used to “change the meaning of the claims in

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¹ See also Peter S. Menell, Matthew D. Powers & Steven C. Carlson, Patent Claim Construction: A Modern Synthesis and Structured Framework, 25 Berkeley Tech. Law J. 711, 732 (2010) (“For many claim terms, attempting to ‘construe’ the claim language adds little in the way of clarity. Where the perspective of a person having ordinary skill in the art would add nothing to the analysis, there may be no need to construe the terms. . . . Where ‘construing’ a claim term would involve simply substituting a synonym for the claim term, it may be appropriate to allow the claim language to speak for itself.”).

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derogation of the indisputable public records consisting of the claims, the specification and the prosecution history . . .” Id. at 1319 (quotation marks omitted).

Features of a preferred embodiment must not be read into the claims as new limitations unless the patentee expressed a clear intent to do so. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-08 (Fed. Cir. 2004); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 880 (Fed. Cir. 2004). In fact, the Federal Circuit cautioned in its oft-cited Phillips opinion that “although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323. Even today, the Federal Circuit continues to correct district courts that confine claim scope to embodiments disclosed in the specification despite the lack of the patentee’s intent to do so. Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1254 (Fed. Cir. 2011) (“[E]ven where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words of expressions of manifest exclusion or restriction.”) (quoting Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1381 (Fed. Cir. 2009) (reversing a district court that made a similar error of limiting claim scope to a particular embodiment in the absence of limiting claim language)). This Court’s previous rulings have been consistent with Federal Circuit precedent. E.g., Baden Sports, Inc. v. Molten, No. C06-0210, 2007 WL 1847246, at *2 (W.D. Wash. Jun. 26, 2007) (Pechman, J.) (“Although a court should limit the meaning of a claim where the ‘specification makes clear that the invention does not include a particular feature,’ the court must not read ‘particular embodiments and examples appearing in the specification’ into the claims unless the specification requires it.”).

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Section 112, ¶ 6 of the Patent Act permits claim limitations that “express[] a means or step for performing a specified function without . . . recit[ing] structure, material, or acts in support thereof.” These types of limitations, often referred to as “means-plus-function” limitations, “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. §112, ¶ 6.

Construing a means-plus-function limitation is a two-step process. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d 1364, 1369 (Fed. Cir. 2001). First, the court must “identify the function explicitly recited in the claim.” Id. The second step is to “identify the corresponding structure set forth in the written description that performs the particular function set forth in the claim.” Id. at 1369-70. The identified structure must not include “structure from the written description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).

III. Terms for Construction²

As set forth in Exhibit A, the parties have agreed to constructions for eight terms. The parties continue to dispute the constructions of the 15 terms identified and discussed below. For the reasons set forth herein, Interval respectfully requests that the Court adopt Interval’s proposed constructions and reject those proposed by Defendants.

1. “selective display” terms

Claim Language	Interval's Proposed	Defendants' Proposed Construction
“selectively displaying on the display device . . . an image or	[choose/choosing] and display[ing] one or more	[choose/choosing] and display[ing] one or more

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² The ’652 and ’314 patents are related and share a common specification. For convenience and brevity, citations will be provided to the ’652 patent specification. The cited passages also appear in the ’314 patent, although the column and line numbers may not correspond exactly.

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images generated from the set of content data” (’652 claim 4, 5, 6, 7, 8, 11 and ’314 claims 10 and 13) “selectively display. . . an image or images generated from a set of content data” (’314 claim 1 and 3) “selective display on the display device. . . of an image or images generated from the set of content data” (’314 claim 7)

“images generated from the set of content data”

“images generated from the set of content data” according to predetermined scheduling information

The parties agree that selectively displaying an image or images on the display device entails “[choose/choosing] and display[ing] one or more ‘images generated from the set of content data.’” Defendants, however, seek to further limit selectively displaying to only occur “according to predetermined scheduling information.” Defendants’ proposal cannot be reconciled with dependent claims that expressly add scheduling limitations and introduces unnecessary ambiguity about the meaning of “predetermined” that Defendants presumably intend to rely upon in front of the jury in a manner that would exclude preferred embodiments and conflict with the prosecution history.

Claim 4 of the ’652 patent is representative and comprises a “means for selectively displaying on the display device . . . an image or images generated from the set of content data . . . .” ’652 patent at 30:29-33. The plain language of the claim does not require selection in accordance with scheduling information (either “predetermined” or otherwise). Although certain embodiments include scheduling, such functionality should not be imported into claims in the absence of a specific limitation. See Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348

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(Fed. Cir. 2009) (“The claims, not specification embodiments, define the scope of patent protection. The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”). Moreover, claims 6-10, which depend from claim 4, do contain limitations directed to scheduling: “the means for selectively displaying further comprises means for scheduling the display of an image or images generated from a set of content data . . . .” Id. at 30:46-48 (emphasis added). Thus, this limitation should not be imported into the construction of “selectively displaying” found in the independent claims. See Phillips, 415 F.3d at 1315 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”).

Defendants’ proposed “predetermination” requirement also introduces unwarranted ambiguity and invites interpretations that would be clearly incorrect under principles of claim construction. Defendants’ proposed addition leaves undetermined the event with respect to which the scheduling information must be “predetermined.” If interpreted to mean before the system begins operating or before content data is acquired, that interpretation would exclude one of the preferred embodiments, which determines the schedule after “one or more sets of content data ha[ve] been acquired.” See ’652 patent at 2:28-34, 10:4-8; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (an interpretation that excludes a preferred embodiment is “rarely, if ever, correct”). And if the triggering event is the display of the first image generated from the first set of content data, such an interpretation would exclude another preferred embodiment that permits the display schedule to be re-determined at any time. See ’652 patent at 12:38-42. Indeed, this embodiment that permits the display schedule to be changed at any time is directly contrary to Defendants’ proposed “predetermined schedule”

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requirement. As the applicant emphasized during the original prosecution, the claimed invention can provide a “flexible and varied display.” ’652 patent file history, 7/3/1998 Response to Office Action, at 9 (IL_DEFTS0007923). A vague requirement that the display schedule must be “predetermined” invites improper arguments that are wholly inconsistent with the claimed invention, the specification, and the claims.

2. “images generated from a set of content data”

Claim Language	Interval's Proposed Construction	Defendants' Proposed Construction
“images generated from a set of content data” (All Claims)	audio and/or visual output that is generated from data within a set of related data	audio and/or visual output defined by a content provider that is generated from data within a set of related data

The only dispute between the parties with respect to this term is whether the audio and/or visual output must be “defined by a content provider,” as Defendants propose. This additional limitation is improper for two reasons. First, the specification provides definitions for both “image” and “content data,” and neither definition requires that the output be “defined by a content provider”:

• “The term ‘image’ is used broadly here to mean any sensory stimulus that is produced from the set of content data, including, for example, visual imagery (e.g., moving or still pictures, text, or numerical information) and audio imagery (i.e., sounds).” ’652 patent at 6:60-64 (emphasis added).
• “Herein, ‘content data’ refers to data that is used by the attention manager to generate displays (e.g., video images or sounds, or related sequences of video images or sounds).” ’652 patent at 9:51-54.

These definitions expressly encompass “any” output produced from data within the set of content data and therefore leave no room for an additional limitation restricting the claimed output to only such output that was “defined by the content provider.” See Silicon Graphics, Inc. v. ATI

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Techs., Inc., 607 F.3d 784, 789 (Fed. Cir. 2010) (“If the specification reveals a special definition for a claim term, ‘the inventor’s lexicography governs.’” (quoting Phillips, 415 F.3d at 1316)).

Second, Defendants’ proposed construction also introduces unnecessary ambiguity about what it means for the output to be “defined by a content provider”—a concept that finds no support in the specification. The purpose of the claim construction exercise is for the Court to identify the bounds of the claims. Introducing an amorphous new limiting concept that lacks any basis in the specification hardly serves this function. To the extent Defendants intend to argue that this limitation imposes a requirement that the content provider must take an active role in the original creation of the content, that interpretation is incorrect for the reasons discussed below with respect to the term “content provider.” See infra § III.10.

3. “in an unobtrusive manner that does not distract a user of the apparatus
from a primary interaction with the apparatus”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus” (’652 claim 4, 5, 6, 7, 8, 11) “in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus” (’314 all asserted claims (via claims 1, 3, 7, 10 and 13))	during a user’s primary interaction with the apparatus and unobtrusively such that the images generated from the set of content data are displayed in addition to the display of images resulting from the user’s primary interaction	As written, this term is inherently subjective and therefore indefinite. Alternatively, this must be limited such that the images are displayed either when the attention manager [or system] detects that the user is not engaged in a primary interaction or as a background of the computer screen

Interval’s proposed construction of this term flows from the teaching of the specification, including an express definition of what the patent means by the “unobtrusive manner” language

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There are three primary disputes concerning this term: (1) whether the proper construction of this term should encompass screensaver-type displays of information during idle times (i.e., after the system detects that the user is not engaged in a primary interaction); (2) whether it is subjective and indefinite; and (3) whether it is limited to displaying information “as a background of the computer screen.” The answer to each question is “no.”

First, the proper construction does not encompass idle-time display of information such as screensavers. The ’652 and ’314 patents teach ways to distribute information by engaging “at least the peripheral attention” of a user of a device such as a computer. ’652 patent at Abstract. The patents use “peripheral attention” as an umbrella term to refer to the part of the user’s attention that is not occupied by the user’s primary interaction with the device.³ The specification teaches that this “unused capacity” can be either “temporal” (i.e., at a time when the user is not actively using the device) or “spatial” (i.e., while the user is actively using the device but in an area of the display that is not used by the primary interaction). ’652 patent at 6:23-51. Similarly, “attention manager” is a blanket term used to refer to a system that occupies the user’s peripheral attention in either the temporal or spatial dimension.⁴ Id. at Abstract, 6:23-51. The patents describe two preferred embodiments of the attention manager, one of which is directed to the user’s peripheral attention in the temporal dimension and the other of which is directed to the spatial dimension:

Generally, the attention manager makes use of “unused capacity” of the display device. For example, the information can be presented to the person while the

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³ The parties’ agreed construction of “engaging the peripheral attention of a person in the vicinity of a display device” reflects this. See Ex. A at 1 (“engaging a part of the user’s attention that is not occupied by the user’s primary interaction with the apparatus”).

⁴ The construction of “attention manager” is disputed. See infra § III.8.

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apparatus (e.g., computer) is operating, but during inactive periods (i.e., when a user is not engaged in an intensive interaction with the apparatus). Or, the information can be presented to the person during active periods (i.e., when a user is engaged in an intensive interaction with the apparatus, but in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus).

’652 patent at 2:7-19 (emphasis added); see also id. at 3:19-31, 6:34-51, 13:14-17. As this passage makes clear, the “unobtrusive manner” language describes the second embodiment of the attention manager (i.e., the preferred spatial dimension embodiment), but not the first (i.e., the preferred temporal dimension embodiment).⁵ Defendants’ “alternative construction,” which expressly includes the temporal/idle-time display embodiment, is inconsistent with the clear teaching of the specification.⁶ See Phillips, 415 F.3d at 1315 (noting that the specification “is the single best guide to the meaning of a disputed term”).

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⁵ The differences between the various embodiments are also reflected in the claims. Some claims are directed to all types of “attention managers” (e.g., claims 13-18 of the ’652 patent), other claims are directed only to attention managers that present information in an “unobtrusive manner” (e.g., claims 4-12 of the ’652 patent and all asserted claims of the ’314 patent).

⁶ During prosecution, there was some confusion about the relationship between the screensaver embodiment and the “unobtrusive manner” embodiment. See ’652 patent file history, 7/3/1998 Response to Office Action, at 13-14 (IL_DEFTS0007927); ’652 patent file history, 6/10/1999 Response to Office Action, at 16 (IL_DEFTS0008051). However, these statements should not be given controlling weight because the prosecution history is subordinate to the clear teaching of the specification. See Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1378 (Fed. Cir. 2005) (“Neither the dictionary definition nor the prosecution history, however, overcomes the particular meaning . . . clearly set forth in the specification.”); see also Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1331 (Fed. Cir. 2012) (“The prosecution history can offer insight into the meaning of a particular claim term, but the ‘[c]laim language and the specification generally carry greater weight.’”). Additionally, statements made during prosecution are most often relied upon during the claim construction process to prevent patentees from narrowly interpreting their claims before the examiner in order to gain allowance, only to broaden those interpretations once in litigation. See, e.g., Spectrum Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998) (“[E]xplicit statements made by a patent applicant during prosecution to distinguish a claimed invention over prior art may serve to narrow the scope of a claim.”). This concern is not present here, where the applicant took an overly broad interpretation of the “unobtrusive manner” language in an Office Action response. Moreover, as discussed in further detail below, any ambiguity in the prosecution history was conclusively resolved in the reexaminations, where the Examiner expressly addressed the scope of the “unobtrusive manner” limitation and found that it did not encompass screensaver embodiments. The reexamination is part of the prosecution history, and thus, the prosecution history as a whole supports Interval’s position here.

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When Defendants moved to stay the case, one of their arguments was that “the intrinsic record remains in flux” regarding whether the “unobtrusive manner” language covers the screensaver embodiment. Dkt. No. 256, at 3. This issue thus became central to the reexamination, where Defendants made exactly the same claim construction argument in an attempt to expand the “unobtrusive manner” language to capture idle-time displays such as screensavers.

The USPTO considered Defendants’ interpretation of “unobtrusive manner” and rejected it even under the more lenient rule that the USPTO must apply the “broadest reasonable construction” (which should be broader than the actual construction that would be applied during litigation). See In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984) (explaining that the USPTO “broadly interprets claims during examination” to “reduc[e] the possibility that claims, finally allowed, will be given broader scope than is justified.”). As explained by the USPTO Examiner during the reexamination of the ’652 patent:

The ’652 patent specification discloses two embodiments wherein the attention manager makes use of “unused capacity” of the display device. The first is the “screensaver embodiment” wherein the information can be presented to a person while the apparatus (e.g. computer) is operating, but during inactive periods (i.e., when a user is not engaged in an intensive interaction with the apparatus). (col. 2:8-12)

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The second is the “wallpaper embodiment” wherein information can be presented to the person during active periods (i.e. when a user is engaged in an intensive interaction with the apparatus) but in an unobtrusive manner that does not distract the user from the primary interaction with the device (e.g. the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus). (col. 2:12-18)

Independent claim 4 claims means for selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data in combination with the other limitations of the claim. As such, the broadest reasonable interpretation of independent claim 4, in light of the specification, excludes the screensaver embodiment because the claim language “in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus” is consistently and repeatedly linked to the ‘wallpaper embodiment’ and excludes the ‘screensaver embodiment’. (see also col. 3:20-40, col. 6:34-52, and col. 13:10-15).”

’652 Reexamination, 10/14/2011 Office Action, at 8-9 (INT00020742-43). The Examiner reached the same conclusion in the ’314 patent reexamination. See ’314 Reexamination, 10/14/2011 Action Closing Prosecution, at 9-10 (INT00021469-70) (“[I]t is agreed that the totality of the specification evidence supports an argument that the broadest reasonable interpretation of the claims, in light of the specification, excludes the ‘screensaver embodiment.’”).

In other words, the USPTO concluded not just that Defendants’ proposed interpretation is incorrect, but that it is not even a reasonable interpretation. Moreover, Interval’s explanation that the “unobtrusive manner” language does not encompass idle-time displays such as screensavers and the examiner’s agreement with that argument is now part of the intrinsic record that informs the claim construction analysis. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1363 (Fed. Cir. 2012); Krippelz v. Ford Motor Co., 667 F.3d 1261, 1267 (Fed. Cir. 2012). Accordingly, the intrinsic record is no longer “in flux,” as Defendants argued in support of the stay. Dkt. No. 256, at 3. Instead, it strongly supports Interval’s proposed

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construction. This Court should accept Interval’s definition and affirm the USPTO’s conclusion that the claims that use the “unobtrusive manner,” “in light of the specification, exclude[] the screensaver embodiment because the claim language ‘in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus’ is consistently and repeatedly linked to the ‘wallpaper embodiment’ and excludes the ‘screensaver embodiment.’” See ’652 Reexamination, 10/14/2011 Office Action, at 8-9 (INT00020742-43).

Second, this term is not indefinite. “A claim will be found indefinite only if it is insolubly ambiguous, and no narrowing construction can properly be adopted.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (quotation marks omitted). “If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, [the Federal Circuit has] held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Exxon Res. & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). “Claim definiteness is analyzed not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (quotation marks omitted). “The definiteness inquiry focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification.” Id. (quotation marks omitted).

The “unobtrusive manner” language is not subjective and/or indefinite because the specification provides a clear, objective definition of what it means:

According to another further aspect of the invention, the selective display of an image or images occurs while the user is engaged in a primary interaction with the apparatus, which primary interaction can result in the display of an image or

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images in addition to the image or images generated from the set of content data (“the wallpaper embodiment”).

’652 patent at 3:25-31 (emphasis added); see also id. at 2:17-19 (“e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus”). This definition is reflected in Interval’s proposed construction. Because the patentee acted as its own lexicographer by providing an objective definition of the “unobtrusive manner”-type of display, one of ordinary skill in the art would understand the meaning of this term. See Phillips, 415 F.3d at 1321 (“[T]he specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” (quotation marks omitted)). Accordingly, there is no ambiguity at all with respect to this term—let alone sufficient ambiguity to meet the high standard necessary for indefiniteness. See All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 780 (Fed. Cir. 2002) (“Only after a thorough attempt to understand the meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is invalid for indefiniteness.”); see also Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1348 (Fed. Cir. 2010) (“Claims using relative terms . . . are insolubly ambiguous only if they provide no guidance to those skilled in the art as to the scope of that requirement.” (emphasis added)).

Third, this express definition is broad enough to cover embodiments beyond those that display information as part of the background of a computer screen. Defendants’ attempt to limit the claims to a preferred embodiment—namely, display as part of the background wallpaper on a computer screen—should be rejected. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). The patent specification has

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defined this term. That definition is what Interval uses. This Court should reject Defendants’ attempts to add language to the definition beyond the definition in the specification.

4. “primary interaction”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“primary interaction” (’652 claims 4, 34 and 35; ’314 claims 1, 3, 7, 10, 13)	any operation of the computer (or other apparatus with which the user is engaging in an interaction) other than operation that is part of the system for engaging the peripheral attention of the user	any operation of the computer (or other apparatus with which the user is engaging in an interaction) other than operation that is part of the attention manager according to the invention

Both parties’ proposed constructions originate from the definition of “primary interaction” that is set forth in the specification. See ’652 patent at 8:14-18. The only point of dispute is whether the part of the system that implements the claimed invention should be referred to in the construction as “the system for engaging the peripheral attention of the user” (Interval’s position, which is derived from the preamble of the claims in which this limitation appears) or “the attention manager according to the invention” (Defendants’ position, which is taken verbatim from the specification). The blind adherence to the specification text proposed by Defendants would improperly ask the jury to determine the meaning of “according to the invention” and introduce other unnecessary confusion.

First, the claims define the scope of the invention. Thorner v. Sony Comp. Entm’t. Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). Accordingly, it makes no sense to define one limitation—which is part of the definition of the claimed invention—with the term “according to the invention.” Additionally, the determination of claim scope is a legal question of claim construction reserved for the Court. Immunocept, LLC v. Fulbright & Jaworski, LLP, 504 F.3d 1281, 1285 (Fed. Cir. 2007). If Defendants’ construction were adopted, the jury would be instructed at trial that the claims define the scope of the invention and they must apply the

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Court’s constructions, only to be given a construction that requires them to determine the meaning of “the invention.”

Second, none of the claims that contain the term “primary interaction” include the term “attention manager.” The result is that under Defendants’ approach, the jury will be given a confusing construction that refers to “the attention manager” for claims that do not recite an attention manager. The likelihood for confusion is increased by the fact that other asserted claims do recite an “attention manager,” and the construction of that term is separately disputed. See ’652 Patent, Claims 15-18; infra § III.8.

Interval’s proposed construction avoids all of the problems with Defendants’ proposal by simply replacing the reference to “the attention manager according to the invention” with synonymous language that is used in the preamble of each claim (i.e., “the system for engaging the peripheral attention of the user”). This substitution is entirely consistent with the specification, as it replaces the out-of-context language of the specification with the language from the claims. And as discussed in further detail below, Interval’s phraseology flows directly from the definition of “attention manager” in the specification. See § III.8; ’652 patent at Abstract.

5. “means for selectively displaying on the display device, in an unobtrusive
manner that does not distract a user of the apparatus from a primary
interaction with the apparatus, an image or images generated from the set of
content data”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
means for selectively displaying on the display device, in an unobtrusive manner that does not distract a user	FUNCTION: Selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from	As set forth above, this term includes a phrase that is indefinite within the recited function; thus this term is indefinite. Function: “selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the

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of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data (’652 claims 4, 5, 6, 7, 8, 11)

the set of content data STRUCTURE: One or more digital computers programmed to identify the next set of content data in the schedule and display the next set of content data in the schedule in an “unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus”

apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data” [as construed herein] To the extent there is any structure disclosed that could fulfill the recited function, it is: Structure: A conventional digital computer programmed with a screen saver application program, activated by the detection of an idle period, or a wallpaper application program, that “selectively displays … image or images generated from the set of content data” [as construed herein]

The parties agree on the function associated with this means-plus-function limitation. Additionally, the parties have separately proposed constructions for almost all of the terms within this phrase. See § III.1 (“selectively displaying on the display device”); § III.3 (“in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus”); § III.2 (“images generated from a set of content data”). The only additional issue raised by this term is the identification of the structure associated with the function.

The specification teaches that the selective display of sets of content data is accomplished in the following manner:

A set or sets of instructions for enabling a display device to selectively display an image or images generated from a set of content data are also made available for use by the content display systems. Typically, the instructions enable images generated from content data to be displayed automatically, without user intervention, in a predetermined manner, thereby enhancing the capability of the invention to occupy the user’s peripheral attention.

’652 patent at 2:35-42. Fig. 5A of the patents and the accompanying description in the specification set forth an algorithm that includes steps for accomplishing this function. Specifically, in step 521, the system determines which set of content data is to be displayed next.

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In step 105, the next set of content data is displayed. Interval’s proposed construction properly identifies the structure that performs this function as a digital computer programmed to perform these steps to display the content data in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, where the “unobtrusive manner” language is construed according to Interval’s construction set forth above in § III.3.

Defendants’ proposed structure is incorrect for three reasons. First, it confusingly and unnecessarily limits the construction to “conventional” digital computers. A portion of the specification that expressly discusses Fig. 5A, however, refers to all “digital computers” that include a display device, without using the “conventional” language:

Like the method 100 (FIG. 1), the method 500 is performed by a content display system 203 according to the invention which can be implemented, for example, using a digital computer that includes a display device and that is programmed to perform the functions of the method 500, as described below.

’652 patent at 24:61-66 (emphasis added). Nothing in the intrinsic record evidences an intent to limit the claims to “conventional” digital computers and to exclude other types of digital computers.

Second, Defendants’ proposed construction erroneously includes idle-time display embodiments such as screensavers which, as discussed above in § III.3, does not display information “in an unobtrusive manner” as required by this claim limitation.

Third, Defendants’ construction is incorrectly limited to display by a “wallpaper application program.” Again, Defendants improperly attempt to limit the claims to a particular embodiment. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). As discussed above, this limitation is satisfied when the display is “during a user’s primary interaction with the apparatus and unobtrusively such that the images

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generated from the set of content data are displayed in addition to the display of images resulting from the user’s primary interaction.” See § III.3.

Finally, for the reasons discussed above, neither this limitation nor the separately construed term containing the “unobtrusive manner” language is indefinite because the specification provides an objective definition of what that language means. See supra § III.3.

6. “each content provider provides its content data to [a/the] content display
system independently of each other content provider”

Claim Language	Interval’s Proposed Construction
“each content provider provides its content data to [a/the] content display system independently of each other content provider and . . . ” (’314 All Claims)	No construction needed; in the alternative: each content provider provides its content data to the content display system without being influenced or controlled by any other content provider	Each content provider transmits its content data to [a/the] content display system without being transmitted through, by or under the influence or control of any other content provider

The parties’ difference in this construction is that Defendants want to add a requirement that the data not be “transmitted through [or] by” another content provider. This proposed additional limitation is not required by the claim language and is contrary to the prosecution history.

First, all that is required is that each content provider provides the content data “independently,” which has a plain and ordinary meaning of “free from the influence, control, or determination of another or others.” Webster’s New World College Dictionary, 4th ed. (2010), at 725 (Ex. B). So long as this requirement is met, it is immaterial whether the data transmission happens to be routed through another content provider.

Second, during the original prosecution the patentee expressly removed the requirement of “direct” transmission from the content provider to the content display system as part of the

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amendment in which the language of this disputed term was added. The claims were rejected based on U.S. Patent No. 5,819,284 (“Farber”), which taught aggregating content from multiple content providers at a single server prior to providing the content to the content display system. ’314 patent file history, 10/23/2003 Response to Office Action, at 9 (IL_DEFTS0006293). The claims were narrowed in certain respects to distinguish this prior art patent, but that amendment also broadened the claims in other respects. Specifically, before this amendment, the claims included a limitation requiring that the content providers provide the content data “directly to the display device.” Id. at 2-8 (IL_DEFTS0006286-92). As part of this amendment, the “directly to the display device” language was removed from the claims, while the language disputed here was added. Defendants’ proposed construction, which precludes the possibility of content data being transmitted “through” or “by” another content provider, is wrong because it reintroduces a requirement of “direct” transmission that was expressly removed during prosecution.

7. “user interface installation instructions for enabling provision of a user
interface that allows a person to request the set of content data from the
specified information source”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“user interface installation instructions for enabling provision of a user interface that allows a person to request the set of content data from the specified information source” (’652 claims 15-18)	“instructions” for enabling provision of an interface that enables a person to request the set of content data from a specific source of information	“instructions” that enable content providers to install a user interface in the content provider’s information environment so that users can request a particular set of content data representing the image(s) to be displayed from the specified content provider

In contrast to Interval’s straightforward interpretation of the language used in the claims, Defendants seek to load this construction up with jargon apparently aimed at limiting it to a

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particular specification embodiment and placing a new spin on the meaning of “content data”—a term that is separately construed (see supra § III.2). Defendants’ proposal is improper on both counts.

Defendants’ additional requirement that the user interface must be “in the content provider’s information environment” is imported straight from a preferred embodiment in direct contravention of Federal Circuit precedent. See ’652 patent at 16:9-16; Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). It is especially inappropriate to import the preferred embodiment in this definition because the specification also broadly teaches that “[a]ny appropriate user interface can be used for enabling a user to directly request a particular set of content data.” ’652 patent at 18:60-61; see also id. at 2:63-3:3 (“The content data acquisition instructions can include . . . user interface installation instructions for enabling provision of a user interface that allows a person to request a set of content data from a content providing system.”). It is apparent that Interval did not intend to limit all of the claims to require that the user interface must be in the information environment of the content provider.

With regard to the content data issue, neither party suggests that a “set of content data” must “represent[] the image(s) to be displayed” in their proposed constructions for “images generated from a set of content data.” See supra § III.2. Instead, both parties recognize that the “set of content data” is simply the source of the data from which the images are generated. Id. (both proposed constructions use the phrase “that is generated from data within a set of related data”); see also ’652 patent at 9:51-54 (“Herein, ‘content data’ refers to data that is used by the attention manager to generate displays (e.g., video images or sounds, or related sequences of video images or sounds).”). Defendants again seek to introduce an ambiguous concept—what it

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means for a set of content data to “represent” the image(s) to be displayed—into the construction of a straightforward term. As discussed previously, Defendants’ attempt to insert a requirement that every content provider take an active role in “defining” or “formulating” the content data or the images generated therefrom is improper. See supra § III.2; infra § III.10. Because this additional language is inconsistent with the specification and would only serve to add uncertainty regarding what the claims require, the Court should reject Defendants’ proposal.

8. “during operation of an attention manager”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“during operation of an attention manager” (’652 claim 15-18)	during the operation of a system for engaging at least a part of the user’s attention that is not occupied by the user’s primary interaction with the apparatus	During operation of a system that displays images to a user either when the program detects that the user is not engaged in a primary interaction or as a background of the computer screen

The patents define what is meant by an “attention manager”: “An attention manager presents information to a person in the vicinity of a display device in a manner that engages at least the peripheral attention of the person.” ’652 patent at Abstract; see Phillips, 415 F.3d at 1321 (“[T]he specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.” (quotation marks omitted)). The parties have agreed that “engaging the peripheral attention of a person in the vicinity of a display device” means “engaging a part of the user’s attention that is not occupied by the user’s primary interaction with the apparatus.” Ex. A, at 1. Accordingly, Interval’s proposed construction of this term is correct and follows exactly the meaning of “attention manager” in the specification and the agreed definition of “engaging the peripheral attention . . . .” Defendants’ proposed construction is improper because it attempts to limit the construction of “attention manager” to two preferred embodiments and ignores the specification’s definition of attention manager. See Phillips, 415

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F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).

9. “means for acquiring a set of content data from a content providing system”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“means for acquiring a set of content data from a content providing system” (’652 claim 4)	FUNCTION: acquiring a set of content data from a content providing system STRUCTURE: A digital computer capable of communicating with a content providing system via a network and programmed to perform at least the following steps: (1) providing a user with an interface to directly request a particular set of content data, (2) indicating to the content provider the particular set of content data requested by the user, and (3) obtaining the particular set(s) of content data requested by the user at the content display system.	Function: acquiring a set of content data from a content providing system Structure: A digital computer connected to a content providing system via a network and programmed to perform the steps: (1) providing a user with an interface to directly request a particular set of content data, (2) indicating to the content provider the particular set of content data requested by the user, (3) receiving a set of instructions at the content display system that identify the site from which the set of content data is to be acquired, (4) downloading the particular set(s) of content data requested by the user at the content display system.

The parties agree on the function of this term. Interval’s proposed structure includes the only three steps performed by the digital computer that are necessary to perform the agreed function of “acquiring a set of content data from a content providing system”: (1) providing an interface for the user to request the content data; (2) indicating that request to the content provider; and (3) obtaining the content data from the content providing system. See ’652 patent at Fig. 4, 18:56-19:2. Defendants’ proposed construction improperly includes structure that is unnecessary to perform the claimed function, in addition to introducing unnecessary ambiguity.

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The parties’ proposed constructions raise three disputes concerning the corresponding structure: (1) whether the digital computer must be “connected to a content providing system via a network” as an independent limitation, as Defendants contend; (2) whether the corresponding structure must be programmed for “receiving a set of instructions at the content display system that identify the site from which the set of content data is to be acquired,” as Defendants maintain in the third part of their proposed construction; and (3) whether the content data must be “downloaded,” as Defendants argue, rather than simply “obtained.” The answer to each question is “no.”

First, Defendants’ proposed requirement that the digital computer be “connected to a content providing system via a network” improperly requires a network connection independent of the recited steps, which include—under either party’s construction—“indicating to the content provider the particular set of content data requested by the user” and “[obtaining/downloading] the particular set(s) of content data requested by the user at the content display system.” These two steps require communication between the content provider and the content display system, and Interval’s proposed construction correctly includes this capability of communication. Defendants’ proposed construction, however, suggests that a connection must be maintained even at times when these two steps are not being performed. This proposed new limitation is not required in order to perform the function of “acquiring a set of content data from a content providing system.” For example, the user interface could be presented to the user (part (1) of either party’s construction) before a connection with the content provider is established. See ’652 patent at 18:60-61 (“Any appropriate user interface can be used for enabling a user to directly request a particular set of content data.”). Because a permanent connection to the content provider is not necessary to perform the recited function, Defendants’ attempt to

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incorporate this limitation is improper. See Micro Chem., 194 F.3d at 1258 (“Nor does the statute permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”).

Second, Defendants’ proposed construction improperly includes the step of “receiving a set of instructions at the content display system that identify the site from which the set of content data is to be acquired,” which is not necessary to perform the claimed function. See id. The fact that this step is not necessary to perform the function of “acquiring a set of content data from a content providing system” is demonstrated by its omission from Figure 4, which the patent describes as showing “a method . . . for acquiring and updating sets of content data.” ’652 patent at 5:62-64; see also Fig. 4. As Figure 4 indicates, it is possible for the content display system to acquire a set of content data without an intervening step of receiving a set of instructions that identify the site from which the content data is to be obtained. For example, as described in the specification, the system could function by presenting the user with a button on a web site which, when selected, indicates to the web site that a set of content data was requested and initiates the transfer of the content data. See id. at 18:61-19:2. Because it is not necessary to perform the recited function, Defendants’ step (3) should not be incorporated in the structure for this term. See Micro Chem., 194 F.3d at 1258 (“Nor does the statute permit incorporation of structure from the written description beyond that necessary to perform the claimed function.”).

Third, Defendants’ proposed use of the term “downloading” rather than “obtaining” would only serve to confuse the jury. The specification repeatedly refers to “acquiring” and “obtaining” sets of content data. These words do not require “elaborate interpretation” because they have plain and ordinary meanings that are easily understood by a lay jury. See Brown, 265 F.3d at 1352. The specification provides no reason to replace these easily understandable words

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with “downloading,” a term that does not appear in the specification, is less likely to be familiar to the jurors, could be considered to have a narrower meaning than “obtaining,” and could introduce confusion regarding a word that does not appear in the patent.

10. “content provider”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“content provider” (’314 All Claims)	No construction necessary; in the alternative: a system that provides one or more “sets of content data”	An entity that formulates one or more “sets of content data”

Defendants again seek to use the Markman process to add confusion and ambiguity to the claims. The plain language of the term “content provider” dictates that only the provision of content is required. Even Defendants agreed with this during the reexamination, where they told the USPTO that “external network servers” were “content providers” simply because they “provide content data.” Request for Inter Partes Reexamination, at 29-30 (INT00023068-69). By now requiring that each and every content provider must also be an “entity” that “formulates” sets of content data (a concept that will hardly be intuitive to the jury), Defendants seek to add a limitation that is inconsistent with both the specification and the prosecution history.

The specification provides several examples of types of content data that can be used with the attention manager:

As indicated above, the sets of content data represent sensory data, i.e., data that can be used to generate images as defined above. Typically, the sensory data is either video or audio data. The kinds of content data that can be used with the attention manager are virtually limitless. For example, video data that might be used as content data includes data that can be used to generate advertisements of interest to the user, moving and still video images which can be real-time or prerecorded (e.g., nature scenes, pictures of family members, MTV music segments, or video from a camera monitoring a specified location, such as ski slopes or a traffic intersection, for conditions at that location), financial data (e.g., stock ticker information) or news summaries. Audio data that might be used as content data includes data that can be used to generate, for example, music or news programs (e.g., radio talk shows).

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’652 patent at 7:23-38. One example provided in the specification that highlights the error in Defendants’ proposed construction is “MTV music segments.” It makes no sense to suggest that a server operated by MTV would be a “content provider” when it provides a particular video “formulated” by MTV, while a licensed affiliate or distributor (e.g., the website of a band to which the video pertains) providing the same video (i.e., the exact same content data) would not be a “content provider” within the meaning of the claims merely because that video was originally “formulated” by MTV. The specification similarly provides no support for the proposition that an MTV server providing “MTV music segments” is not a “content provider” within the meaning of the claims if those music segments were “formulated” by a third party production company.

Defendants apparently derive their proposed “formulation” requirement from portions of the specification that state, for example, that “[e]ach set of content data is formulated by a content provider.” See ’652 patent at Abstract. The fact that sets of content data are formulated by content providers does not, however, mean that each and every content provider must formulate content data.⁷ As discussed above, a content provider can provide content data that was originally “formulated” by another content provider. Nothing in the specification forecloses this reasonable possibility. Indeed, Defendants recognized this in their Request for Inter Partes Reexamination for the ’314 patent, where they explained to the USPTO (with reference to the Kjorsvik patent) that any network PC “may act[] as a content provider” simply by virtue of the

_________________________

⁷Defendants’ logic is clearly flawed. For example, the fact that each attorney working on this case has been admitted to practice law does not mean that each and every person who has been admitted to practice law is involved in this case.

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fact that it can “import presentations created by other administration modules or sources” and then provide them to other PCs. Request for Inter Partes Reexamination, at 33 (INT00023072).

11. “content data scheduling instructions for providing temporal constraints on
the display of the image or images generated from the set of content data”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data” (’652, claims 15, 17, 18)	“instructions” that affect the duration, order, timing, and/or frequency of the display of the “image or images generated from the set of content data”	instructions that can be tailored by a content provider that specify the time(s) at which image(s) generated from a set of content data may be displayed.

Interval’s proposed construction closely tracks the claim language while clarifying the meaning of “temporal constraints” according to the teaching of the specification:

The instructions of the computer program can include . . . content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data . . . . The content data scheduling instructions can specify, for example, the duration of timean order in which the images generated from a plurality of sets of content data are displayed, a time or times at which the image or images generated from a set of content data can or cannot be displayed, and/or constraint on the number of times that the image or images generated from a set of content data can be displayed.

’652 patent at 4:31-55 (emphasis added); see also id. at 16:65-17:28 (further describing various types of content data scheduling instructions).

Defendants limit their proposed construction to instructions that “specify the time(s) at which image(s) generated from a set of content data may be displayed.” Defendants’ construction is limited to what the specification refers to as “timing instructions”—the third example of the specification’s explanation of “content data scheduling instructions” at column 4, lines 47-55, quoted above. See also ’652 patent at 17:12-15 (explaining “timing instructions”).

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This construction is clearly too narrow because it excludes other types of content data scheduling instructions expressly taught by the specification, including duration instructions, sequencing instructions, and saturation instructions. See ’652 patent at 4:47-55; 16:65-17:28.

To the extent Defendants attempt to argue that the language of claims 14, 15, 16, and 17 supports their position (perhaps with reference to claim differentiation), they are mistaken. These claims recite “content data scheduling instructions” (i.e., a genus term) and then further limit the respective claims to a specific type of such instructions (i.e., a particular species), namely, duration instructions (claims 14 and 16), sequencing instructions (claim 15), and saturation instructions (claim 17). Indeed, these claims confirm that sequencing, duration, and saturation instructions are types of “content data scheduling instructions,” such that a construction of “content data scheduling instructions” that excludes any of these would expressly contradict the claim language. See claim 14 (“the content data scheduling instructions further comprising duration instructions”) (emphasis added); claim 15 (“the content data scheduling instructions further comprise sequencing instructions”) (emphasis added); claim 17 (“the content data scheduling instructions further comprise saturation instructions”) (emphasis added).

Finally, Defendants’ propose to limit this term to only instructions that “can be tailored by a content provider.” The possibility of such tailoring is a characteristic of certain embodiments and should not be imported into claims that make no reference to tailoring. See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Moreover, the tailoring discussed in preferred embodiment occurs before the instructions are sent to the content display system. See, e.g., ’652 patent at 17:49-57. The claims at issue, however, recite “[a] computer readable medium encoded with one or more computer

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programs.” See id. at claims 15, 17, 18. In other words, the claims are directed to a computer readable medium that has already been encoded with the claimed instructions. Nothing in the specification supports the proposition that the instructions must be tailorable after that time.

12. “content data update instructions for enabling acquisition of an updated set
of content data from an information source that corresponds to a previously
acquired set of content data”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“content data update instructions for enabling acquisition of an updated set of content data from an information source that corresponds to a previously acquired set of content data” (’652 claim 18)	“instructions” that specify when to obtain an updated version of a set of content data and the location from which to obtain such updated version	“instructions” that can be tailored by the content provider that specify when to obtain an updated version of a set of content data and the location from which to obtain such updated version

The parties’ only dispute with respect to this term is whether the claimed instructions are limited to those that “can be tailored by the content provider.” For the reasons discussed above with respect to the content data scheduling instructions, this additional limitation is improper.

13. “content display system scheduling instructions for scheduling the display of
the image or images on the display device”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“content display system scheduling instructions for scheduling the display of the image or images on the display device” (’652 claim 18)	“instructions” that implement a display schedule by determining which image or images generated from the “sets of content data” will be displayed and mediating conflicts between the display requirements of multiple “sets of content data”	“instructions” that implement a display schedule for a particular content display system by determining the display order and display duration for image(s) generated from each available set of content data

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The parties’ constructions are similar in that they both recognize that the content display system scheduling instructions are used to schedule the display of sets of content data. Interval’s proposed construction is correct because it encompasses all types of content display system scheduling instructions discussed in the specification without requiring any particular type of content display system scheduling instructions. See ’652 patent at 10:43-11:10, 20:37-42; 26:52- 57. Defendants’ construction, however, is overly narrow because it requires one type of content display system scheduling instructions (i.e., instructions that “determin[e] the display order and display duration for image(s) generated from each available set of content data”) while excluding other types of content display system scheduling instructions (i.e., instructions that determine whether images generated from certain sets of content data will be displayed at all). This error is compounded by the fact that Defendants’ construction contains an express assumption that “image(s) generated from each available set of content data” will be displayed, whereas the specification expressly teaches that certain sets of content data will not be displayed.

For example, certain “content display system scheduling instructions” can be used to remove incompatible sets of content data from the display schedule. See ’652 patent at 20:33-42. Another type of “content display scheduling instructions” can “include instructions that evaluate a probability function each time that a set of content data in the schedule is presented for display, and either display or not display the set of content data dependent upon the evaluation of the probability function.” Id. at 26:52-57. Defendants’ proposed construction is incorrect because it excludes these types of content display system scheduling instructions. See Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (“A claim construction that excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support.” (quotation marks omitted)).

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Defendants’ proposed limitation that these instructions implement a display schedule only “for a particular content display system” would unnecessarily exclude a preferred embodiment. Fig. 3A depicts “generic” “[content]⁸ display system scheduling instructions 312” that are stored at the application manager. See ’652 patent at 14:66-15:14, Fig. 3A. These “generic” instructions can be provided directly to more than one content display system. See id. at 3:3-8, 14:66-15:5, Fig. 2. Because the same “content display system scheduling instructions” can be provided to multiple content display systems, limiting these instructions to those that implement a display schedule only for “a particular content display system” would exclude this embodiment.

14. “instructions”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“instructions” (’652 patent: 15, 16, 17, 18; ’314 patent: 1, 2, 3, 4, 7, 8, 9, 10, 11, 12, 13, 14, 15)	Either (a) data related to the accomplishment of a function and/or (b) a statement or expression that can be interpreted by a computer that specifies a function to be performed by a system	A statement in a programming language that specifies a function to be performed by a system

Interval’s proposed construction reflects the fact that the specification and prosecution history of the ’652 and ’314 patents expand the scope of the term “instructions” beyond the plain and ordinary meaning of the term, which is reflected in part (b) of Interval’s proposed construction. Part (b) is a standard definition derived from technical dictionaries that is intended to capture the plain and ordinary meaning of “instructions.” See The IEEE Standard Dictionary of Electrical and Electronics Terms (6th Ed.) at 528 (Ex. C). Part (a) of Interval’s construction

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⁸ The reference to “current display system scheduling instructions 312” in Fig. 3A is a typographical error. As the corresponding discussion in the specification indicates, item 312 in Fig. 3A refers to “content display system scheduling instructions.” See ’652 patent at 15:8-13, 20:38-42, 26:32-27:15.

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reflects that the intrinsic record of the ’652 and ’314 patents expanded the term to also include data related to the accomplishment of a function.

The specification expressly states that data can be “instructions” within the meaning of the patents. See Phillips, 415 F.3d at 1315 (“Usually, [the specification] is dispositive; it is the single best guide to the meaning of a disputed term.”). Several figures in the patents, including Fig. 3A below, identify types of “instructions”:

In discussing these figures, the specification teaches that either data or instructions (as conventionally understood) can be “instructions” within the meaning of Figs. 3A-3C:

FIGS. 3A, 3B and 3C are schematic diagrams illustrating the functional components of the application manager 201, a content providing system 202 and a content display system 203, respectively, according to an embodiment of the invention. Each of the functional components are represented by a set of instructions and/or data. (In particular, each of the sets of instructions may include, if appropriate, data related to accomplishment of the functions associated with the set of instructions; similarly, a set of content data may include, if appropriate, instructions that enable generation of an image from the set of content data.) Each of these sets of instructions and/or data can be embodied in an appropriate computer program or set of computer instructions (the latter capable of including computer instructions and data), or an appropriate set of data configured for use by a set or sets of instructions (e.g., computer program) that must interact with the set of data in order to implement the attention manager.

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’652 patent at 14:49-65 (emphasis added).

The prosecution history of the ’314 patent confirms the correctness of Interval’s proposed construction. During prosecution, the examiner relied on U.S. Patent No. 5,819,284 (“Farber”) to reject claims that included a limitation that content providers “may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image . . .” ’314 patent file history, 6/25/2003 Office Action, at 2-3 (IL_DEFTS0006276-77). According to the examiner, Farber taught “having content providers continuously connected to the content display system” such that the content provider could “control when new content is displayed” by sending new content data. Id. The examiner reasoned that newly provided data thus constituted “scheduling instructions” within the meaning of the limitation. Id.; see also id., 2/14/2003 Office Action, at 6 (“new information is an instruction to display new information”) (IL_DEFTS0006109).

During the reexamination, both Interval and Defendants acknowledged that data used by the content display system could satisfy the claim limitations that recited “instructions.” For example, Defendants explained to the USPTO that the “files” and “information” used with the Rakavy invention were “instructions” within the meaning of the claims. See Request for Inter Partes Reexamination, at 42-43 (INT00023081-82) (“Files that are ‘animated’ or contain ‘executable code’ and thus necessarily include duration, sequencing or timing information provided by a content provider to a display system. . . . This information provided with the advertisement of Rakavy is an instruction.” (emphasis added)); see also id. at 50 (INT00023089). And Interval reiterated its position that the specification expressly teaches that data related to the accomplishment of a function is an “instruction” within the meaning of the claims. See ’652

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Reexamination, 3/19/2012 Response to Office Action, at p. 15 n.3 (INT00019348 at INT00019362).

Defendants’ proposed construction is incorrect because it does not reflect that the intrinsic record demonstrates that data related to the accomplishment of a function can be an “instruction” within the meaning of the patents. Additionally, Defendants’ proposed reference to “a programming language” is unnecessary, narrows the plain and ordinary meaning of “instructions,” and could potentially confuse the jury because the instructions on the end-user devices will generally be stored in compiled object code (i.e., long strings of 1’s and 0’s). Although the object code is written in a “language” that can be interpreted by the computer, Defendants may attempt to take advantage of the jurors’ potential lack of programming experience by arguing that object code is not a “programming language” merely because it is not readable by humans—a non-infringement position that finds no support in the specification.

15. “means for displaying one or more control options with the display device
while the means for selectively displaying is operating”

Claim Language	Interval’s Proposed Construction	Defendants’ Proposed Construction
“means for displaying one or more control options with the display device while the means for selectively displaying is operating” (’652 claim 4)	FUNCTION: displaying one or more control options with the display device while the means for selectively displaying is operating STRUCTURE: One or more digital computers programmed to provide a dialog box that includes a list of one or more of the following control options: (1) terminate the operation of the attention manager, (2) begin display of the next scheduled set of content data, (3) begin display of the previous scheduled set of content data, (4) remove a set of content data from the display schedule, (5) prevent a set of content data from	FUNCTION: displaying one or more control options with the display device while the means for selectively displaying is operating STRUCTURE: One or more digital computers programmed to provide a dialog box that includes a list of one or more of the following control options: perform at least one of steps 501 (Want to display the next set of content data in the schedule?), 502 (Want to display the previous set of content data in the schedule?), 503 (Want to remove the current set of content data from the schedule?), 504

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being displayed until it has been updated, (6) modify the display schedule in response to a user’s identified satisfaction with a set of content data, (7) establish a link with an information source, (8) provide an overview of all of the content data available for display by the attention manager, (9) maintain display of the current set of content data, or (10) remove the control option interface and structural equivalents.

(Want to prevent display of the current set of content data until that set of content data has been updated?), and 505 (Want to specify a satisfaction level for the current set of content data?), and structural equivalents.

As previously noted, construing a means-plus-function limitation under 35 U.S.C. § 112, ¶ 6 requires determining the limitation’s function and then identifying the corresponding structure in the patent’s written description that performs that function. Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). The parties agree that this claim limitation is written in means-plus-function format and thus invokes 35 U.S.C. §112, ¶ 6. The parties also agree that the function of this limitation is “displaying one or more control options with the display device while the means for selectively displaying is operating.” The parties even agree that the structure that performs this function is “one or more digital computers programmed to provide a dialog box that includes a list of [ ] control options.” The parties’ proposed constructions diverge, however, in defining that list of control options.

Defendants derive their list of control options solely from steps 501-505 of Figure 5B. Their proposed list of control options omits all other possible control options that are expressly described in the specification. But this approach is contrary to well-established Federal Circuit law. The Federal Circuit has repeatedly held that when a patent specification discloses multiple structures that may correspond to the function of a means-plus limitation, the limitation is properly construed as covering all such structures and their equivalents. E.g., Micro Chem., 194

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F.3d at 1258-59 (“When multiple embodiments in the specification correspond to the claimed function, proper application of § 112, ¶ 6 generally reads the claim element to embrace each of those embodiments.”; “Because alternative structures corresponding to the claimed function were described, the district court incorrectly limited ‘weighing means’ to the specific structures of the preferred embodiment.”). The Federal Circuit applies the same principle when construing means-plus-function limitations that involve software and algorithmic structures. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1329-30 (Fed. Cir. 2012). Thus, Defendants’ proposed list of control options—and, by extension, their proposed construction—is too narrow because it improperly excludes other structures described in the specification.

Interval’s proposed construction, on the other hand, properly includes those alternative structures. Specifically, control options 2-6 identified in Interval’s proposed construction correspond to the steps 501-505 found in Figure 5B, the accompanying disclosure in the specification, and Defendants’ proposed list of control options. See also ’652 Patent at 25:46- 26:51, Figs. 5-6. But Interval’s proposed list of control options also correctly includes options 1 and 7-10, all of which are expressly disclosed in the specification. See ’652 Patent at 25:38-45, 27:16-48, 27:64-28:28; Fig. 6. Defendants have agreed that these are properly disclosed control options in the context of the limitation “means for controlling aspects of the operation of the system in accordance with a selected control option.” See Ex. A at 1 (agreed construction includes the same 10 control options identified in Interval’s proposed construction of the present term, emphasis added). It makes no sense to include these control options in the set of controls that can be selected and used to control the system, but then carve them out of the structure for the limitation directed to displaying those control options for selection by the user.

The specification describes each of these options 1 and 7-10 in detail. For instance, the

37

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’652 patent specification describes option 1—terminating operation of the attention manager— at, e.g., 25:38-45 and in the dialog box of Figure 6 (602a). It describes option 7—establishing a link with an information source—at, e.g., 27:16-48 and in the dialog box of Figure 6 (602d). It describes option 8—providing an overview of all content data available for display by the attention manager—at, e.g., 27:64-28:9. It describes option 9—maintaining display of the current set of content data—at, e.g., 28:10-20. And it describes option 10—removing the control option interface—at, e.g., 28:21-28 and in the dialog box of Figure 6 (602e). Although these options are not found in Figure 5B, it is a well-known principle that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). There is no requirement that all control options be described together in one flowchart, in any particular part of the specification, or in any particular manner. Thus, the fact that these additional control options may be found outside of Figure 5B and in non-flowchart format is irrelevant to construing this means-plus-function limitation.

IV. CONCLUSION

For all of the foregoing reasons, Interval respectfully requests that its proposed constructions for the terms in dispute be adopted and Defendants’ proposed constructions be rejected.

DATED: October 9, 2012

Respectfully submitted,

/s/ Justin Nelson (by permission NJD)
Justin A. Nelson
WA Bar No. 31864
[email]
Matthew R. Berry

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WA Bar No. 37364
[email]
Edgar Sargent
WA Bar No. 28283
[email]
SUSMAN GODFREY L.L.P.
[address telephone fax]

Max L. Tribble, Jr.
[email]
SUSMAN GODFREY L.L.P.
[address telephone fax]

Michael F. Heim
[email]
Eric J. Enger
[email]
Nathan J. Davis
[email]
Nick P. Patel
[email]
HEIM, PAYNE & CHORUSH, L.L.P.
[address telephone fax]

Douglas R. Wilson
[email]
HEIM, PAYNE & CHORUSH, L.L.P.
[address telephone]

Attorneys for INTERVAL LICENSING LLC

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CERTIFICATE OF SERVICE

I hereby certify that on October 9, 2012, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the counsel of record.

By: /s/ Nathan J. Davis

1

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301

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

INTERVAL LICENSING LLC,
Plaintiff,
v.
AOL, INC., et al.,
Defendants.

CASE NO. 2:10-cv-01385-MJP

INTERVAL LICENSING LLC,
Plaintiff,
v.
APPLE, INC.,
Defendant.

CASE NO. C11-708-MJP

LEAD CASE NO. C10-1385-MJP

INTERVAL LICENSING LLC,
Plaintiff,
v.
GOOGLE INC.,
Defendant.

CASE NO. C11-711-MJP

LEAD CASE NO. C10-1385-MJP

DEFENDANTS’ OPENING BRIEF IN
SUPPORT OF THEIR PROPOSED
CLAIM CONSTRUCTIONS:
’652 AND ’314 PATENTS

NOTE ON MOTION CALENDAR:
November 9, 2012 at 10:00 a.m.

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INTERVAL LICENSING LLC,
Plaintiff,
v.
YAHOO! INC.,
Defendant.

CASE NO. C11-716-MJP

LEAD CASE NO. C10-1385-MJP

---

TABLE OF CONTENTS

Page

I. PATENTS-IN-SUIT ..................................................................................................... 1

II. INDEFINITENESS....................................................................................................... 3

A. The Claim Term “In an Unobtrusive Manner” is Indefinite Because It is
Subjective and Depends on the Environment in Which an Image is Displayed ........... 6

B. The Claim Term “Does Not Distract a User” is Indefinite Because It is a
Subjective Inquiry and Depends on the Individual User and the Environment of
Use ................................................................................................................................ 8

III. LEGAL PRINCIPLES APPLICABLE TO CLAIM CONSTRUCTION ................... 11

A. General Principles ....................................................................................................... 11

B. Special Rules For “Means-Plus-Function” Terms ...................................................... 11

IV. CLAIM CONSTRUCTION ARGUMENT ................................................................ 12

1. “selectively displaying on the display device . . . an image or images generated
from the set of content data” [’652 Claims 4-8, 11; ’314 Claims 10, 13] ............ 12

2. “images generated from a set of content data” [All Claims] ................................ 14

3. “in an unobtrusive manner that does not distract a user of the apparatus from a
primary interaction with the apparatus” [’652 Claims 4-8, 11] “in an unobtrusive
manner that does not distract a user of the display device or an apparatus
associated with the display device from a primary interaction with the display
device or apparatus” [’314 Claims 1, 3, 7, 10, 13] ............................................... 16

4. “primary interaction” [’652 Claims 4, 34, 35; ’314 Claims 1, 3, 7, 10, 13] ......... 20

5. “means for selectively displaying on the display device, in an unobtrusive manner
that does not distract a user of the apparatus from a primary interaction with the
apparatus, an image or images generated from the set of content data” [’652
Claims 4-8, 11]...................................................................................................... 21

6. “each content provider provides its content data to [a/the] content display system
independently of each other content provider” [’314 All Claims] ....................... 23

7. “user interface installation instructions for enabling provision of a user interface
that allows a person to request the set of content data from the specified
information source” [’652 Claims 15-18] ............................................................. 24

8. “during operation of an attention manager” [’652 Claims 15-18] ........................ 26

9. “means for acquiring a set of content data from a content providing system” [’652
Claim 4] ................................................................................................................ 29

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10. “content provider” [’314 All Claims] ................................................................... 31

11. “content data scheduling instructions for providing temporal constraints on the
display of the image or images generated from the set of content data” [’652
Claims 15, 17, 18] ................................................................................................. 32

12. “content data update instructions for enabling acquisition of an updated set of
content data from an information source that corresponds to a previously acquired
set of content data” [’652 Claim 18] ..................................................................... 35

13. “content display system scheduling instructions for scheduling the display of the
image or images on the display device” [’652 Claim 18] ..................................... 36

14. “instructions” [’652 Claim 15, 16, 17, 18; ’314 All Claims] ................................ 37

15. “means for displaying one or more control options with the display device while
the means for selectively displaying is operating” [’652 Claim 4] ....................... 38

ii

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TABLE OF AUTHORITIES

CASES

Applied Med. Res. Corp. v. U.S. Surgical Corp.,
448 F.3d 1324 (Fed. Cir. 2006)................................................................................................31

Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1328 (Fed. Cir. 2008)..............................................................................12, 22, 23, 29

Atmel Corp. v. Info. Storage Devices, Inc.,
997 F. Supp. 1210 (N.D. Cal. 1998) ........................................................................................39

Becton, Dickinson & Co. v. C.R. Bard, Inc.,
922 F.2d 792 (Fed. Cir. 1990)..................................................................................................16

Becton, Dickinson & Co. v. Tyco Healthcare Grp. LP,
616 F.3d 1249 (Fed. Cir. 2010)............................................................................................2, 16

Bicon, Inc. v. Straumann Co.,
441 F.3d 945 (Fed. Cir. 2006)..............................................................................................2, 34

C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858 (Fed. Cir. 2004)............................................................................................32, 35

Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
296 F.3d 1106 (Fed. Cir. 2002).......................................................................................... 11-12

Crane Co. v. Sandenvendo Am., Inc.,
No. 2:07-cv-42-CE, 2009 WL 1586704 (E.D. Tex. June 5, 2009) ............................................5

CVI/Beta Ventures, Inc. v. Tura LP,
112 F.3d 1146 (Fed. Cir. 1997)..........................................................................................19, 27

Datamize LLC v. Plumtree Software, Inc.,
417 F.3d 1342 (Fed. Cir. 2005)........................................................................................ passim

Decisioning.com, Inc. v. Federated Dep’t Stores, Inc.,
527 F.3d 1300 (Fed. Cir. 2008)................................................................................................15

Digital Control Inc. v. Charles Mach. Works,
No. C03-103P, 2003 WL 25782745 (W.D. Wash. Dec. 11, 2003) .........................................22

Energizer Holdings, Inc. v. Int’l Trade Comm’n,
435 F.3d 1366 (Fed. Cir. 2006)..................................................................................................4

Geneva Pharm., Inc. v. GlaxoSmithKline PLC,
349 F.3d 1373 (Fed. Cir. 2003)..................................................................................................5

iii

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Halliburton Energy Servs., Inc. v. M-I LLC,
514 F.3d 1244 (Fed. Cir. 2008)........................................................................................ passim

Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc.,
687 F.3d 1300 (Fed. Cir. 2012)................................................................................................26

Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc.,
222 F.3d 951 (Fed. Cir. 2000)..................................................................................................19

JVW Enter., Inc. v. Interact Accessories, Inc.,
424 F.3d 1324 (Fed. Cir. 2005).......................................................................................... 38-39

Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) .......................................................................................................5, 10, 16

Medtronic, Inc. v. Advanced Cardiovascular Sys. Inc.,
248 F.3d 1303 (Fed. Cir. 2001)................................................................................................39

Merrill v. Yeomans,
94 U.S. 568 (1877) ...................................................................................................................16

Micro Chem., Inc. v. Great Plains Chem. Co.,
194 F.3d 1250 (Fed. Cir. 1999)................................................................................................30

Microsoft Corp. v. Multi-Tech Sys., Inc.,
357 F.3d 1340 (Fed. Cir. 2004)................................................................................................11

N. Telecom, Inc. v. Datapoint Corp.,
908 F.2d 931 (Fed. Cir. 1990), cert denied, 498 U.S. 920 (1990) ...........................................18

Netcraft Corp. v. eBay, Inc.,
549 F.3d 1394 (Fed. Cir. 2008)................................................................................................33

Nystrom v. Trex Co.,
424 F.3d 1136 (Fed. Cir. 2005)................................................................................................15

Osram GMBH v. Int’l Trade Comm’n,
505 F.3d 1351 (Fed. Cir. 2007)................................................................................................15

Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................................ passim

Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306 (Fed. Cir. 2008)..................................................................................................4

Primos, Inc. v. Hunter’s Specialties, Inc.,
451 F.3d 841 (Fed. Cir. 2006)..................................................................................................34

iv

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Renishaw PLC v. Marposs Societa’ per Azioni,
158 F.3d 1243, 1250 (Fed. Cir. 1998)................................................................................11, 14

Rheox, Inc. v. Entact, Inc.,
276 F.3d 1319 (Fed. Cir. 2002)................................................................................................11

Rhine v. Casio, Inc.,
183 F.3d 1342 (Fed. Cir. 1999)................................................................................................16

Romala Stone, Inc. v. Home Depot U.S.A., Inc.,
No. 1:04-CV-2307-RWS, 2007 WL 2904110 (N.D. Ga. Oct. 1, 2007) ....................................5

Schwing GmbH v. Putzmeister Aktiengesellschaft,
305 F.3d 1318 (Fed. Cir. 2002)................................................................................................28

Semmler v. Am. Honda Motor Co.,
990 F. Supp. 967 (S.D. Ohio 1997) ...........................................................................................5

Southwall Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570 (Fed. Cir. 1995)..................................................................................................24

STX, Inc. v. Brine, Inc.,
37 F. Supp. 2d 740 (D. Md. 1999) .....................................................................................5, 6, 7

United Carbon Co. v. Binney & Smith Co.,
317 U.S. 228 (1942) ...................................................................................................................6

Vitronics Corp. v. Conceptronic Inc.,
90 F.3d 1576 (Fed. Cir. 1996)......................................................................................17, 18, 21

WMS Gaming Inc. v. Int’l Game Tech.,
184 F.3d 1339 (Fed. Cir. 1999)....................................................................................12, 22, 39

STATUTES AND RULES

35 U.S.C. § 112 ................................................................................................................3, 4, 11, 21

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In accordance with the Court’s Scheduling Order Docket No. 271, and pursuant to Patent Local Rule 134, AOL Inc. (“AOL”), Apple, Inc. (“Apple”), Google Inc. (“Google”), and Yahoo! Inc. (“Yahoo!”) (collectively, the “Defendants”) hereby respectfully submit this Opening Brief on Claim Construction regarding the disputed claim terms in U.S. Patent No. 6,034,652 (“the ’652 Patent”) and U.S. Patent No. 6,788,314 (“the ’314 Patent”) (collectively “the Patents”). The Patents relate to a system that displays images on a computer screen that are not part of a user’s “primary interaction” with the computer.

This brief is divided into two sections. The first section addresses the indefiniteness of two claim limitations in the Patents about how the images are to be displayed on a computer display screen. The claims recite: (1) the images must be displayed in an “unobtrusive manner” and (2) the display of images must not “distract a user” from the user’s “primary interaction” with the apparatus. As Interval’s own expert confirmed in his deposition, whether an image on a computer screen is displayed in an “unobtrusive manner” and whether it “distracts” the user from a primary interaction are nebulous concepts that depend on “an infinite number of” factors, including the environmental condition of use and the individual user. Because these are nebulous concepts that depend on external factors and there are no objective criteria for determining if they are met, it is impossible for a potential competitor to determine the metes and bounds of the claims. Thus, these claim limitations are indefinite under controlling precedent. The second section of the claim construction brief presents the Defendants’ constructions for the 15 disputed terms identified in the Joint Claim Construction and Prehearing Statement (hereinafter “JPHS”) submitted by the parties. (Dkt. No. 277)¹

I. PATENTS-IN-SUIT

The Patents refer to a computer user sitting in front of a computer screen engaged in a “primary interaction” with the computer. (See, e.g., ’652, 2:3-5) The Patents define “primary

________________________

¹ Parties will file a Praecipe to the JPHS that will include an amended Exhibit 1 and Exhibit C1. Hereinafter, all cites to Exhibit 1 and Exhibit C1 of the JPHS will refer to the Praecipe to be filed.

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interaction” broadly. (See ’652, 8:14-36) A primary interaction could essentially be anything, such as working on a word processing document, responding to an email, searching the Internet, or the normal operation of the operating system. An example is illustrated below.

According to the Patents, if a user is working on a word processing document as his primary interaction, images displayed according to the invention must be displayed in an “unobtrusive manner” that “does not distract [the] user” from working on the document. (See, e.g., ’652, 2:11-18, 6:23-51) Nearly all of the asserted claims require two separate limitations: (1) that the images be displayed in an “unobtrusive manner” and (2) that the display of images must not “distract a user” from the user’s “primary interaction” with the apparatus. These limitations appear in Disputed Term #3 (and Disputed Term #5) as:

“in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus” (’652, Claims 4-8, 11, 34, 35 (emphasis added))

“in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus” (’314, All Claims (emphasis added))

Each limitation is a separate requirement of the claimed invention with a separate meaning and must be treated as such. See, e.g., Becton, Dickinson & Co. v. Tyco Healthcare Grp. LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (“Claims must be ‘interpreted with an eye toward giving effect to all terms in the claim.’” (quoting Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006))). Whether treated separately or together, these claim limitations fail to define a definite invention at least because whether an image is displayed in an “unobtrusive manner” or “does

2

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not distract a user” depends on the subjective opinion of each individual user and on the surrounding environment in which the image is displayed.

To illustrate this problem, the figure below shows a user working on a word processing document with a background (i.e. wallpaper) on the screen containing a message about the weather in white letters, at least partially obscured by the word processing document.

According to the patent claims, one skilled in the art must determine: (1) if the weather message (an “image” that is part of the wallpaper) is displayed in “an unobtrusive manner” and (2) if that image “distract[s] a user” from working on the word processing document. The specification provides no guidance or any objective criteria that would allow one of ordinary skill in the art to determine whether a particular image is displayed in an “unobtrusive manner” or whether it “does not distract a user.” Moreover, these determinations will vary greatly depending on the individual user as well as the environment in which the user is viewing the images. Different users and different environmental conditions will result in different outcomes. Thus, the Patents do not answer two basic questions facing one of ordinary skill in the art in trying to determine the metes and bounds of the claims—what constitutes displaying an image in an “unobtrusive manner” and what “does not distract a user”? The terms are insolubly ambiguous, and the claims are therefore invalid as indefinite under 35 U.S.C. § 112 ¶ 2.

II. INDEFINITENESS

Here, this Court should hold that Disputed Terms #3 and #5 are insolubly ambiguous and

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therefore indefinite, which renders the claims of the ’314 Patent and claims 4-8, 11, 34, and 35 of the ’652 Patent invalid. Under 35 U.S.C. § 112 ¶ 2, the patent claims must be “sufficiently definite to inform the public of the bounds of the protected invention.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). “Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (citing Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005)); see also Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1368 (Fed. Cir. 2006) (“An analysis of claim indefiniteness under § 112 ¶ 2 is inextricably intertwined with claim construction.” (citation omitted)). Claim language is indefinite, and the claim is therefore invalid, if one skilled in the art cannot “determine the bounds of the claims, i.e., the claims [are] insolubly ambiguous.” Halliburton, 514 F.3d at 1249. Moreover, “[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Id. at 1251. “Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.” Id. at 1249.

The Federal Circuit, in its Halliburton and Datamize lines of cases, established two related, but independent, grounds under which claim limitations may be held indefinite. First, a term is indefinite if one skilled in the art would not know from one use to the next whether the accused product was within the scope of the claims because outside factors affect whether the limitation is met. See Halliburton, 514 F.3d at 1254-55. In Halliburton, the Federal Circuit held that the claim limitation “fragile gel” was indefinite because it was a term of degree and a skilled artisan would have no way to determine what fell within the claim limitation in light of the many factors that could affect that determination. Id. at 1253-56. The court explained that the patentee failed to “identify the degree of the fragility of its invention,” and thus did not properly identify the boundaries of the claim language. Id. at 1253. The court also held that the term was indefinite because a skilled artisan “would not know from one well to the next whether a certain

4

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drilling fluid was within the scope of the claims because a wide variety of factors could affect adequacy.” Id. at 1254-55. To construe a claim term such that a product “might infringe or not depending on its usage in changing circumstances” is the “epitome of indefiniteness.” Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003); see also Halliburton, 514 F.3d at 1254 (relying on Geneva Pharm. to find claim term “fragile gel” indefinite).

Second, claim language that “depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention” is indefinite. Datamize, 417 F.3d at 1350. When a subjective claim term is used, “[s]ome objective standard must be provided in order to allow the public to determine the scope of the claimed invention.” Id. (emphasis added). In Datamize, the Federal Circuit ruled that a claim directed to an electronic kiosk system with an “aesthetically pleasing” user interface was invalid as indefinite. Id. at 1356. The court held that neither the claim language nor the specification provided an “objective standard … in order to allow the public to determine the scope” of the term “aesthetically pleasing.” Id. at 1350 (emphasis added). Thus, a claim term cannot be based on a subjective construction that “would depend on the unpredictable vagaries of any one person’s opinion.” Id.

Courts have found similar terms indefinite where the terms were based on the subjective view of an individual. See, e.g., STX, Inc. v. Brine, Inc., 37 F. Supp. 2d 740, 746 (D. Md. 1999) (“improved handling and playing characteristics”); Romala Stone, Inc. v. Home Depot U.S.A., Inc., No. 1:04-cv-2307-RWS, 2007 WL 2904110, at *5-6 (N.D. Ga. Oct. 1, 2007) (“price affordable to the average consumer”); Semmler v. Am. Honda Motor Co., 990 F. Supp. 967, 974- 75 (S.D. Ohio 1997) (“considerable fuel savings”); Crane Co. v. Sandenvendo Am., Inc., No. 2:07-cv-42-CE, 2009 WL 1586704, at *13 (E.D. Tex. June 5, 2009) (“rapidly”). For example in STX, the patent-in-suit claimed a lacrosse stick with “improved handling and playing characteristics.” The district court ruled that the term was subjective because if one skilled in the art attempted to determine the scope of the invention, he would “find himself imprisoned in a ‘zone of uncertainty.’” Id. at 755; see also Markman v. Westview Instruments, Inc., 517 U.S.

5

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370, 390 (1996) (“zone of uncertainty . . . would discourage invention only a little less than unequivocal foreclosure of the field”) (citing United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942)). The STX court commented that the notion that a third party user (a lacrosse player) would have to use a product to determine whether it embodied the subjective claim limitation was not acceptable and was “repugnant to long-standing principles of patent jurisprudence.” STX, 37 F. Supp. 2d at 755.

A. The Claim Term “In an Unobtrusive Manner” is Indefinite Because It is
Subjective and Depends on the Environment in Which an Image is Displayed

Here, the Patents’ claim language requiring that images be displayed “in an unobtrusive manner” suffers from both of the flaws of the disputed terms in Halliburton and Datamize. The same image may or may not be considered unobtrusive depending on a variety of factors (like the “fragile gel” in Halliburton), and the term is entirely subjective (like “aesthetically pleasing” in Datamize). Thus, the term is insolubly ambiguous and therefore indefinite.

First, similar to “fragile gel” in Halliburton, the Patents’ claim language “in an unobtrusive manner” is indefinite because the intrinsic record provides no basis for a skilled artisan to weigh the “infinite number of contexts” and factors to determine whether a displayed image is displayed in an “unobtrusive manner.” (See Decl. of Shannon Jost (“Jost Decl.”) Ex. A, (Tr. of the Test. of William H. Mangione-Smith, Ph.D. (“Mangione-Smith Dep.”)) at 115:20- 116:5) Interval’s expert testified that an unobtrusive display is one that does not “intrude upon [a user] to a significant degree” or that “is not obtrusive to the person to which it is being displayed.” (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 112:8-14, 111:6-12) Interval’s expert further testified that his use of “does not intrude to a significant degree” meant to “a degree that the user would find it to be obtrusive.” (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 124:6-11) Such circular explanations confirm the term is meaningless.

Further, the Patents provide no objective guidance to delineate between “unobtrusive” and obtrusive. As Interval’s own expert conceded, such a determination would be based on an “infinite number of contexts,” many of which are outside the control of an accused infringer, that

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will affect whether the display of an image is “unobtrusive.” (See Jost Decl. Ex. A (Mangione- Smith Dep.) at 115:20-116:5)

Q: Can you explain the context that would help you determine whether an image displayed on a display screen would be obtrusively displayed?

A: No. I mean, there's an infinite number of contexts. It depends on the context where -- you know, the context of the -- in the context of the ’652 specifically, the context of the rest of the claim specification and the intrinsic evidence. In the more general case we're talking about of images and sort of a general term of "unobtrusive," it would depend on what the application was the user was using, what the image actually was.

Q: Any other factors?

A: I’m sure there are. Likely, you know, what the quality of the display is, its brightness, glare, possible animations. There's a wide range of factors that – all of which could play into whether something is obtrusive or unobtrusive.

(Id. at 115:20-116:11 (emphasis added)) The nature of the image, including its color, size and information displayed, could also affect whether an image is displayed in an “unobtrusive manner.” (See id. at 113:15-23,115:3-10, 121:18-24) In addition, the surrounding environment of the room in which the image is viewed would be another factor. For example, Interval’s expert testified, “the orientation of the screen caus[ing] glare problems with ambient light from a natural source or incident light from man-made source” would affect whether the image is displayed in an “unobtrusive manner.” (Id. at 136:13-137:1) Interval’s expert further acknowledged that “what [] application the user was using” and generally “what the person was doing” would be yet more factors. (Id. at 115:20-116:5,156:17-19)

Second, like “aesthetically pleasing” in Datamize and the term “improved handling and playing characteristics” in STX, both Interval and Defendants’ experts agree that whether an image is displayed in an “unobtrusive manner” is entirely dependent on the subjective opinion of an individual user. (See Decl. of Dr. Bruce M. Maggs (“Maggs Decl.”) ¶ 26; see, e.g., Jost Decl. Ex. A (Mangione-Smith Dep.) at 121:18-24, 157:5-15) Interval’s expert confirmed that the term “unobtrusive manner” depends on the subjective and “personal factors related to [a] person.” (Jost Decl. Ex. A (Mangione-Smith Dep.) at 157:5-15) For example, one user may find a displayed image “unobtrusive” depending on whether “the colors [of the image and background

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are] harmonious” or whether the “combination of the colors [are] pleasing and nonjarring.” (Jost Decl. Ex A (Mangione-Smith Dep.) at 114:5-19) Yet, another user may find the same color combination “jarring” and obtrusive. (Id.) Interval’s expert’s admission that two users presented with the identical displayed image may reach different conclusions about whether the image was displayed in an “unobtrusive manner” confirms the inherent subjectivity of this term. (Id. at 121:9-17) Moreover, the specification contains no “objective anchor” to allow a skilled artisan to determine whether an image is displayed in an “unobtrusive manner.” (See Maggs Decl. ¶ 26); see Datamize, 417 F.3d at 1350.

A skilled artisan would have no way to know whether a displayed image would be “unobtrusive” to a user without asking each individual user for her subjective opinion because whether an image is displayed in an “unobtrusive manner” depends on the circumstances in which an image is displayed. (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 115:20-116:5) “[T]he purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, 417 F.3d at 1347. In this case, a skilled artisan is left in a “zone of uncertainty” when attempting to determine the metes and bounds of an image displayed in an “unobtrusive manner.” The public cannot determine the scope of the claims, thus, all claims of the ’314 Patent and claims 4-8, 11, 34, and 35 of the ’652 Patent, which contain Disputed Terms #3 and #5, are invalid as indefinite.

B. The Claim Term “Does Not Distract a User” is Indefinite Because It is a
Subjective Inquiry and Depends on the Individual User and the Environment
of Use

The claim requirement that a displayed image “does not distract” a user is also indefinite because whether something distracts a user (from her primary interaction) depends not only on the characteristics and preferences of the particular user, but also on the circumstances under which any single user interacts with the display. The Patents provide no objective standard to determine whether a displayed image will distract a user because distraction depends on the “subjective opinion of that user, what the user is doing at the time, and how easily the user may

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be distracted.” (See Maggs Decl. ¶ 26)

Similar to Halliburton, in which the question of whether a gel was “fragile” depended on factors that would vary from oil well to oil well, one skilled in the art would not be able to determine whether a displayed image “distract[s] a user” because of the myriad environmental factors that will affect the determination. See Halliburton, 514 F.3d at 1255-56. One would have to evaluate every circumstance in which an image can be displayed and make a separate determination for each individual user about whether the image would distract the user. Even if the Patents provided guidance for making such a determination, which they do not, such determinations would necessarily result in different outcomes for each set of circumstances. Moreover, it is impossible to formulate an objective test for determining distraction because, as Interval’s own expert testified, “two different users may have different propensity to distraction.” (Jost Decl. Ex. A (Mangione-Smith Dep.) at 137:24-138:7) Interval’s expert confirmed that many factors, outside the control of an accused infringer, affect whether a particular displayed image would distract a user from a primary interaction.

Q: (By Mr. Heit) What additional information do you need?

A: I think as I tried to suggest -- I'm sorry if it wasn't clear -- at a minimum I would want to consider the other factors that we discussed: What it is exactly that’s presented, the exact context in which information is displayed, the environmental factors, the key technological capabilities for composing an image and ultimately presenting it on the screen, and there may be other factors which I either mentioned earlier and neglect to recall at the moment, or neglected to mention at all.

(Jost Decl. Ex. A (Mangione-Smith Dep.) at 138:23-139:8 (emphasis added)) For example, Interval’s expert explained that numerous factors may affect whether a displayed image will distract a user, including a display’s ability to present different colors, the resolution (“pixel density”) of the screen, and the “various graphics elements.” (Id. at 135:18-136:9)

Additionally, a user’s own characteristics, such as whether an “individual user might be color-blind” or has “some degree of tunnel vision” may affect whether a displayed image will distract or not distract that user. (Id. at 137:5-12) The problem is compounded because as Interval’s expert conceded, “two different users may have different propensity to distraction.”

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(Id. at 137:24-138:7) Thus, one user with a higher ability to focus on a word processing document may not be distracted by, or even notice, an image that is displayed in an area of a display screen unused by the word processing program. Under the same conditions, a second user with a lesser ability to concentrate may be easily pulled away from the same word processing document by the same image. Therefore, even if “does not distract” were measurable and not subjective, it would still be subject to wide variation based on a host of factors dependent on the particular user and environment, among others factors.

Similar to “aesthetically pleasing” in Datamize, whether a user considers a displayed image distracting is also an inherently subjective determination because distraction is in the eye of the “individual user.” (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 135:12-17, 137:24- 138:7) In Datamize, the Federal Circuit acknowledged that certain aspects of design such as “button styles, sizes, and placements, window borders, color combinations, and type fonts” could generally affect whether a screen may be considered “aesthetically pleasing.” Datamize, 417 F.3d at 1352. Here, there are numerous factors (such as the “images in general, and size and color and location”) that affect whether a user would find something to be distracting. (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 135:4-11) A user’s subjective and personal feelings about a particular image, whether it is displayed in a pleasing color, and the information it presents can all affect whether that particular image will “distract” a user from a primary interaction. (See id. and 137:18-23) Therefore, when one skilled in the art attempts to determine whether a displayed image “does not distract a user from the user’s primary interaction,” the skilled artisan is left in a “zone of uncertainty.” See Markman, 517 U.S. at 390.

In sum, this Court should hold that all claims of the ’314 Patent and claims 4-8, 11, 34, and 35 of the ’652 Patent are invalid as indefinite under Halliburton and Datamize. Both the limitations “unobtrusive manner” and “does not distract a user” are based on the unrestrained, subjective opinion of the individual user, and the Patents fail to provide an objective standard by which to define the scope of the terms. See Datamize, 417 F.3d at 1350. Additionally, the two limitations are highly dependent on the infinite number of environmental factors, so that the

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determination of whether an accused product would meet the claim limitations depends on its usage in changing circumstances. See Halliburton, 514 F.3d at 1254-55. Thus, this Court should hold that the claims containing these terms are invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2.

III. LEGAL PRINCIPLES APPLICABLE TO CLAIM CONSTRUCTION

A. General Principles

A patent’s claims define the “invention” to be protected. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim language is generally given the meaning it would have to one of ordinary skill in the relevant art, at the time the application was filed, in view of the patent specification. Id. at 1313. “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.” Id. at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).

“Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.” Id. (citations omitted). A court “cannot construe the claims to cover subject matter broader than that which the patentee itself regarded as comprising its inventions and represented to the PTO.” Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004). Moreover, “[e]xplicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations because ‘the public has a right to rely on such definitive statements made during prosecution.’” Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (citations omitted).

B. Special Rules For “Means-Plus-Function” Terms

Under 35 U.S.C. § 112, ¶ 6, a claim limitation “may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support

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thereof.” Construction of a means-plus-function claim term is a two-step process. First, the court must identify the claimed function. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). Second, the court must look to the specification and identify the corresponding structure disclosed in the specification for performing the identified function. Id. “Corresponding structure” must not only perform the claimed function, but the specification must clearly link that structure to the function recited in the claim. Id.

For means-plus-function claims involving computer-implemented inventions, the Federal Circuit has consistently required the specification to disclose structure that is more than a general purpose computer or microprocessor. See, e.g., WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348-49 (Fed. Cir. 1999); Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). To meet this standard, a patentee must provide a sufficiently detailed description of structure corresponding to the claimed function, such as an algorithm necessary to accomplish the claimed function, which “in effect ‘create[s] a special purpose machine for carrying out the particular algorithm.’” Aristocrat Techs., 521 F.3d at 1333 (quoting WMS Gaming, Inc., 184 F.3d at 1348). The mere disclosure of “software” that performs a function, without a description of how the software performs the function (e.g., an algorithm or recitation of steps) is insufficient and renders a claim invalid. Id. at 1334.

IV. CLAIM CONSTRUCTION ARGUMENT

1. “selectively displaying on the display device . . . an image or images generated
from the set of content data” [’652 Claims 4-8, 11; ’314 Claims 10, 13]²

Interval’s Construction	Defendants’ Construction
[choose/choosing] and display[ing] one or more “images generated from the set of content data”	[choose/choosing] and display[ing] one or more “images generated from the set of content data” according to predetermined scheduling information

The parties’ agree that “selectively displaying” requires choosing and displaying one or more “images generated from the set of content data.” Unlike Interval’s proposal, Defendants’

________________________

² The arguments in this section also apply to the claim limitations “selectively display . . . an image or images generated from a set of content data” in claims 1 and 3 of the ’314 Patent, and “selective display on the display device . . . of an image or images generated from a set of content data” in claim 7 of the ’314 Patent.

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construction recognizes that “choosing” necessarily requires that there is something from which the images to be displayed are chosen (i.e., according to a predetermined schedule), and reflects the appropriate context provided by the language of the claims. See Phillips, 415 F.3d at 1314 (“the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms” (citation omitted)).

In each of the above claims, the “selectively display” step is preceded by a step of acquiring or providing one or more sets of content data. (See e.g., ’652, 30:26-27; ’314, 29:56- 59, 30:24-27, 31:31-32, 32:7-8, 32:51-52) This requires that the system control how multiple images will be displayed, and the specification discloses that this control is achieved by way of a schedule: “Once one or more sets of content data has been acquired, a content display system integrates scheduling information for all sets of content data to produce a schedule according to which an image or images corresponding to the sets of content data are displayed on a display device associated with the content display system.” (’652, 2:27-34) The specification also states that “each content display system displays images corresponding to the sets of content data in accordance with predetermined scheduling information.” (’652, Abstract) Therefore, “selectively displaying” an image means more than arbitrarily choosing an image for display; the image must be chosen according to the predetermined scheduling information.

Figure 1 of the Patents further illustrates the use of “predetermined scheduling information” to choose and display an image. Referring to the steps shown in Figure 1, the specification explains that if “at least one set of content data is available for display, then, . . . the available sets of content data are scheduled for display by the content providing system.” (’652, 10:4-8) “Once the sets of content data have been scheduled for display,” a “set of content data is displayed” in the following step. (’652, 11:34-37) If “there are additional sets of content data to be displayed,” the system “display[s] a set of content data in accordance with the previously determined display schedule.” (’652, 12:24-27 (emphasis added)) This explanation is also consistent with the context provided by the claims themselves as addressed above. The sets of content data are first acquired (or provided) and then selectively displayed, but such selection is

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made from a predetermined schedule.

Interval’s arguments during prosecution also tie the “selectively displaying” limitation to previously-acquired data and scheduling information. In attempting to distinguish prior art, the applicants argued that “variation in the display of images generated from content data that has been acquired by the system . . . is provided by the ‘means for selectively displaying,’” and pointed to portions of the specification describing scheduling sets of content data for display. (JPHS Ex. C1, at IL_DEFTS0007922-33) The applicants’ reliance on the scheduling disclosure to distinguish the “selective displaying” limitation from prior art reinforces the requirement that a proper construction of this term must include “according to a predetermined schedule.”

In contrast, Interval’s proposed construction ignores the context provided by the claim language and specification. Interval acknowledges that “selectively” involves choosing, but ignores how and from where the images are being chosen for display. The specification lacks any disclosure of how to choose an image for display apart from choosing a set of content data specified in a predetermined schedule. Interval’s construction fails to “naturally align[] with the patent’s description of the invention” and thus cannot be the “correct construction.” See Phillips, 415 F.3d at 1316 (quoting Renishaw PLC, 158 F.3d at 1250).

2. “images generated from a set of content data” [All Claims]

Interval’s Construction	Defendants’ Construction
audio and/or visual output that is generated from data within a set of related data	audio and/or visual output defined by a content provider that is generated from data within a set of related data

The parties agree that the “images generated from a set of content data” are audio and/or visual output that is generated from data within a set of related data. Defendants’ construction differs from Plaintiff’s because it specifies, consistent with the intrinsic record and the very purpose of the invention, that the audio and/or visual output is defined by the content provider.

The Patents disclose that it is the content provider who defines these images within the sets of content data: “Each set of content data is formulated by a content provider and made

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available by a corresponding content providing system for use with the attention manager.” (’652, 6:53-55 (emphasis added)) Moreover, Defendants’ construction takes into account the very purpose of the alleged invention—“afford[ing] an opportunity to content providers to disseminate their information.” (’652, Abstract; see also id. at 5:33-39); see Osram GMBH v. Int’l Trade Comm’n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (finding that the International Trade Commission erred in construing claims contrary with the purposes of the invention). Interval’s claim construction expert agrees with Defendants that “the content data comes to the content display system from a content provider.” (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 231:16-19) Further, the Patents repeatedly explain that the images generated from the set of content data are defined in the content data:

• “A ‘set of content data’ refers to a related set of such data that is used to generate a particular display. A ‘clip’ refers to a definable portion of a set of content data that is used to generate a particular image. . . .” (’652, 9:54-58 (emphasis added))
• “[E]ach set of content data 350 defines a related group of data that is used to generate a particular display and includes one or more clips that each represent a definable portion of the set of content data that is used to generate a particular image.” (’652, 16:23-27 (emphasis added))

Thus, “images generated from a set of content data” cannot simply be any “audio and/or visual output” that might be created by a “system” using any data from any “set of content data.” Rather, the “images generated from a set of content data” are “audio and/or visual output defined by the content provider within a collection of related data.” See also Term #8 (“content provider” construction), Section IV.8, infra.

Interval’s construction ignores the stated purpose of the alleged invention. Interval’s proposed construction would cover the formulation of images by some entity or thing other than the content provider, even though such an entity was never disclosed in the specification. Such a construction, “divorced from the context of the written description,” should not stand. See Nystrom v. Trex Co., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005); see also Decisioning.com, Inc. v. Federated Dep’t Stores, Inc., 527 F.3d 1300, 1308-11 (Fed. Cir. 2008).

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3. “in an unobtrusive manner that does not distract a user of the apparatus from a
primary interaction with the apparatus” [’652 Claims 4-8, 11]

“in an unobtrusive manner that does not distract a user of the display device or
an apparatus associated with the display device from a primary interaction with
the display device or apparatus” [’314 Claims 1, 3, 7, 10, 13]

Interval’s Construction	Defendants’ Construction
during a user’s primary interaction with the apparatus and unobtrusively such that the images generated from the set of content data are displayed in addition to the display of images resulting from the user’s primary interaction	As written, this term is inherently subjective and therefore indefinite. Alternatively, this must be limited such that the images are displayed either when the attention manager [or system] detects that the user is not engaged in a primary interaction or as a background of the computer screen

These terms are indefinite. See Section II, supra. Courts cannot rewrite claims to preserve their validity. Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999); see also Becton, Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990) (“Nothing in any precedent permits judicial redrafting of claims.”). Defendants explain below that Interval’s construction must be rejected because it suffers from such fundamental flaws that “[t]he public [would] be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights.’” Markman, 517 U.S. at 390 (quoting Merrill v. Yeomans, 94 U.S. 568, 573 (1877)). To the extent the Court seeks to adopt some construction of these indefinite terms, Defendants propose a construction based on the intrinsic record.

Interval’s proposed construction has several fundamental flaws. First, Interval’s construction sidesteps the indefinite language in the claim term. Interval simply replaces “in an unobtrusive manner” with “unobtrusively” without providing a definition that would help the jury understand the scope of this term. Interval further compounds the problem by ignoring the claims’ requirement that a user not be distracted. By stating that an image is displayed “in addition to” the display of images from the primary interaction, the construction reads out the express requirement that a user not be distracted. This requirement is stated separately from the “unobtrusive manner” limitation and cannot be disregarded. See, e.g., Tyco Healthcare, 616 F.3d at 1257. Merely displaying images in addition to the primary interaction without any

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further limitation (as Interval proposes) does not account for the requirement not to distract a user.

Second, to the extent Interval’s construction suggests that the “unobtrusive manner” and “does not distract a user” limitations are met so long as the image is displayed along with images associated with a primary interaction, the construction fails because nowhere does the intrinsic record support this broad and counterintuitive interpretation. Indeed, Interval’s proposed construction would mean that a display is “unobtrusive” and “does not distract a user” even if it was as prominent as, or even on top of and more prominent than, the user’s primary interaction, so long as the image was displayed “in addition to” the primary interaction. (See Jost Decl. Ex. G (Mangione-Smith Dep. Ex. 6A)) For example, in Mangione-Smith Deposition Exhibit 6A (below), because the yellow box is displayed in addition to the word processing document, Interval’s construction would capture a display as shown. This is at least contrary to the requirement that the display “not distract” the user from the primary interaction, or that it is “unobtrusive” as the yellow box almost completely blocks the underlying document.

Third, Interval’s construction must be rejected because it excludes the screen saver embodiment described in the Patents. See Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (observing that a construction that would exclude a preferred embodiment is “rarely, if ever, correct”). The screen saver displays images when the user is not intensely engaged in a primary interaction (i.e., during inactive periods) in place of, rather than in addition

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to, the display of the primary interaction. (See, e.g., ’652, 2:9-12, 3:19-22) The specification repeatedly, and without exception, discloses two embodiments—the screen saver and wallpaper embodiments—by which images might be displayed in a so-called “unobtrusive manner.” Other than the “screen saver” and the “wallpaper” embodiments, the specification offers no objective examples of what constitutes displaying an image in an “unobtrusive manner” and provides no indication of how to determine whether a user is distracted. (See, e.g., ’652, 2:9-12, 3:11-31, 1:50-55, 3:25-31, 13:11-17)

Interval’s litigation-induced interpretation seeking to exclude screen savers from the construction of these terms (see, e.g., JPHS Ex. C1, at INT00020742-43) to avoid the wealth of prior art directed thereto is inconsistent with both the specification and the original prosecution history. The Patents’ specification refers to the screen saver embodiment as its first example of displaying “in an unobtrusive manner”:

selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data. According to a further aspect of the invention, the selective display of the image or images begins automatically after detection of an idle period of predetermined duration (the ‘screen saver embodiment’).

(’652, 3:15-22 (emphasis added)) Further, the original application included a claim 20 (depending from claim 19), which contained this same limitation specifically encompassing the screen saver embodiment by reciting that the images were displayed “after detection of the idle period.” (See JPHS Ex. C1, at IL_DEFTS0007658; see also Jost Decl. Ex. A (Mangione-Smith Dep.) at 98:14-99:3); N. Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 938 (Fed. Cir. 1990), cert denied, 498 U.S. 920 (1990) (“The original claims as filed are part of the patent specification.”). Interval’s construction of this term to exclude screen savers must therefore be rejected as inconsistent with the specification. Phillips, 415 F.3d at 1315 (stating that the specification is usually dispositive for claim construction and “is the single best guide to the meaning of a disputed term” (quoting Vitronics, 90 F.3d at 1582)).

The prosecution history confirms that the screen saver is an embodiment of the

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“unobtrusive” display. During the original prosecution of the ’652 Patent, Interval argued that this limitation included the screen saver embodiment:

The display of images in an unobtrusive manner in a system as recited in Claim 1 can be implemented by, for example, displaying images during an inactive period (e.g., when the user has not interacted with the apparatus for a predetermined period of time) of a primary interaction with the apparatus (the ‘screensaver embodiment’), as described, for example, at page 3, lines 16-20, page 5, lines 30- 33, and page 12, lines 16-20 of Applicants’ specification.

(JPHS Ex. C1, at IL_DEFTS0007927 (emphasis added)) In addition, Interval relied on the inventors’ development of a screen saver program as evidence of an earlier reduction to practice of a claim (then claim 19) that included this very same limitation. Specifically, Interval submitted a declaration of inventor Phillipe Piernot declaring that he developed a program that “displayed an image generated from the content data as a ‘screen saver.’” (JPHS Ex. C1, at IL_DEFTS0008078) Interval then argued that the screen saver program described in Mr. Piernot’s declaration embodied a “‘means for selectively displaying on [a] display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data,’ as recited in Claim 19.” (JPHS Ex. C1, at IL_ DEFTS0008051)

Interval’s attempt to exclude the screen saver embodiment from the construction of this claim term must be rejected as inconsistent with the specification and the description of its own alleged invention during prosecution. See CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (through statements made during prosecution, an applicant may commit to a particular meaning for a patent term, which is then binding in litigation); Hockerson- Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000) (holding that statements made during prosecution were binding on the patentee so as to not “undercut the public’s reliance on a statement that was in the public record and upon which reasonable competitors formed their business strategies”). In view of Interval’s reliance on the screen saver embodiment during the original prosecution, any effort by Interval to rely on statements it made during reexamination regarding the claims not covering screen savers should be given no weight.

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Defendants maintain that these terms are indefinite and cannot be properly construed. To the extent the Court disagrees and attempts to construe these terms, Defendants submit that the construction must provide a skilled artisan an objective way to determine the metes and bounds of the entirety of these claim terms that is grounded in the intrinsic record. The specification explains that the screen saver embodiment displays information after detecting an idle condition (i.e., user inactivity), “suggesting that the user is not engaged in an interaction with the computer that the user would not want to have interrupted.” (’652, 8:67-9:2). The specification defines “wallpaper” as “a pattern generated in the background portions on a display screen” (’652, 1:50- 53), which would necessarily be behind a user’s primary interaction. Further, as explained above, the inventors represented during prosecution that both of these embodiments satisfied the claim limitations requiring the display of images “in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus.” Thus, if the Court attempts to construe these terms, the Defendants propose a construction that at least requires that the images are displayed either when the attention manager [or system] detects that the user is not engaged in a primary interaction or as a background (i.e., wallpaper) of the computer screen.

4. “primary interaction” [’652 Claims 4, 34, 35; ’314 Claims 1, 3, 7, 10, 13]

Interval’s Construction	Defendants’ Construction
any operation of the computer (or other apparatus with which the user is engaging in an interaction) other than operation that is part of the system for engaging the peripheral attention of the user	any operation of the computer (or other apparatus with which the user is engaging in an interaction) other than operation that is part of the attention manager according to the invention

The parties agree that the Patents define “primary interaction.” The Patents state that “‘[p]rimary user interaction’ is to be construed broadly and, generally, includes any operation of the computer (or other apparatus with which the user is engaging in an interaction) other than operation that is part of the attention manager according to the invention.” (’652, 8:14-18)

Defendants’ construction should be adopted because it follows the definition of the term in the specification as required by the patent law. If the specification provides a definition for a

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claim term, then the patentee’s lexicography governs. Phillips, 415 F.3d at 1316; see also Vitronics, 90 F.3d at 1582 (the specification “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.”).

Interval’s proposed construction, on the other hand, departs from the specification’s definition by changing “attention manager according to the invention” to “the system for engaging the peripheral attention of the user.” By adding “peripheral attention of the user” to its construction, Interval introduces unnecessary complexity and ambiguity to this term. Interval’s construction also does not align with its construction of “during operation of an attention manager.” Term #8, Section IV.8, infra. The Court should adopt Defendants’ construction because it reflects the definition of the term in the specification. See Phillips, 415 F.3d at 1316.

5. “means for selectively displaying on the display device, in an unobtrusive
manner that does not distract a user of the apparatus from a primary
interaction with the apparatus, an image or images generated from the set of
content data” [’652 Claims 4-8, 11]

Interval’s Construction

Defendants’ Construction

Function: Selectively displaying an image or images generated from the set of content data on the display device in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, Structure: One or more digital computers programmed to identify the next set of content data in the schedule and display the next set of content data in the schedule in an “unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus”

As set forth above, this term includes a phrase that is indefinite within the recited function; thus this term is indefinite. Function: “selectively displaying on the display device, in an unobtrusive manner that does not distract a user of the apparatus from a primary interaction with the apparatus, an image or images generated from the set of content data” [as construed herein] To the extent there is any structure disclosed that could fulfill the recited function, it is: Structure: A conventional digital computer programmed with a screen saver application program, activated by the detection of an idle period, or a wallpaper application program, that “selectively displays … image or images generated from the set of content data” [as construed herein]

³

As set forth above in Section II, the requirements of the recited function—displaying

__________________________

³ Defendants do not concede that this (or any other structure offered for any other means-plus-function term construed herein) constitutes sufficiently definite structure to avoid indefiniteness of the claims under 35 U.S.C. § 112, ¶ 2.

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images “in an unobtrusive manner” and that the image “does not distract a user”—are indefinite. The parties further dispute what, if any, structure is disclosed in the specification for performing the function recited in the claim. This Court has observed: the “Federal Circuit has held that ‘[i]n a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.’” Digital Control Inc. v. Charles Mach. Works, No. C03-103P, 2003 WL 25782745, at *6 (W.D. Wash. Dec. 11, 2003) (Pechman, J.) (quoting WMS Gaming Inc., 184 F.3d at 1349). The specification must do more than simply repeat or restate the function recited in the claim; it must describe the steps the software would perform—or the “algorithm”—to implement the recited function. Aristocrat Techs., 521 F.3d at 1333-34.

Defendants’ identification of structure points to the only disclosure in the specification that could possibly be considered an algorithm as required by the Federal Circuit. The specification of the ’652 Patent discloses only two possible “algorithms” to display information in a way that might be “in an unobtrusive manner”: (1) through use of a “screen saver” after an idle period when the user is not actively engaged in a primary interaction with the computer and (2) through the use of a “wallpaper” program that displays the images as the background of the screen. (E.g., ’652, 3:19-31, 3:25-30; JPHS Ex. C1, at IL_DEFTS0007927-28).⁴

Interval’s purported identification of structure, on the other hand, merely parrots the indefinite functional language in the claims and fails to identify any algorithm that is actually capable of accomplishing that function. Thus, Interval’s “structure” results in improper functional claiming that places no meaningful limitations on the manner in which that function is accomplished and would render the claim invalid as indefinite. Aristocrat Techs., 521 F.3d at 1334 (finding a purported algorithm insufficient where it “simply describes the function to be performed” rather than “how the function is performed”). Such a construction would capture

_______________________

⁴ This does not mean the term is not indefinite because an identification of structure cannot remove the functional requirements that images are displayed in “an unobtrusive manner” and “do[] not distract a user . . . from a primary interaction.”

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any general purpose computer programmed to perform the recited function regardless of whether it corresponds to any algorithm in the specification, a result that has been flatly rejected by the Federal Circuit. Id. at 1336. Therefore, Interval’s purported identification of structure must be rejected or, if accepted as the only supporting disclosure, claim 4 and its dependent claims are invalid as indefinite for lacking sufficient disclosure of supporting structure.

Any attempt by Interval to argue that the screen saver embodiment must be excluded as corresponding structure in view of the reexamination of the ’652 Patent must be rejected as inconsistent with the specification and the original intrinsic record. See, Disputed Term #3, supra.

6. “each content provider provides its content data to [a/the] content display
system independently of each other content provider” [’314 All Claims]

Interval’s Construction	Defendants’ Construction
no construction needed; in the alternative: each content provider provides its content data to the content display system without being influenced or controlled by any other content provider	Each content provider transmits its content data to [a/the] content display system without being transmitted through, by or under the influence or control of any other content provider

The main dispute between the parties is whether “independently” encompasses a content provider transmitting data through (or by) a second content provider. Defendants’ construction takes into account both the intrinsic evidence and the ordinary usage of the term “independently” in a way that will provide the jury with a more useful and objectively measurable construction. As reflected by Defendants’ construction, a content provider does NOT provide its content data “independently” if one content provider’s data is provided “through, by or under the influence or control of any other content provider.” (See JPHS Ex. 1, at 38 (Interval’s construction conflicts with both sides dictionary definitions of “independent”)).

Interval’s construction appears to encompass a situation where one content provider sends content to a user through another content provider, but the ’314 Patent does not disclose communications between content providers. (See ’314, Fig. 2, 14:11-14 (solid lines show communications that do occur and dashed lines show communications that may occur, none of

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which extend between content providers)) This evidences that in the context of the Patents, “independently” providing content data to a content display system must mean that one content provider’s data is not transmitted through any other intermediate content provider before reaching the content display system.

The prosecution history confirms Defendants’ construction. The term “independently” providing content data was added by amendment to overcome a prior art rejection. (JPHS Ex. D1, at IL_DEFTS0006293) Interval distinguished the prior art (Farber) as not disclosing “sending data directly from the content providers … to the user computer.” (Id. (emphasis added)) Therefore, “independently” providing content data cannot be construed, as Interval proposes, to permit the content data to pass between other content providers before reaching a user’s computer; to do so would contradict Interval’s basis for distinguishing the prior art. See Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995) (“Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers.”) (citation omitted).

7. “user interface installation instructions for enabling provision of a user interface
that allows a person to request the set of content data from the specified
information source” [’652 Claims 15-18]

Interval’s Construction	Defendants’ Construction
“instructions” for enabling provision of an interface that enables a person to request the set of content data from a specific source of information	“instructions” that enable content providers to install a user interface in the content provider’s information environment so that users can request a particular set of content data representing the image(s) to be displayed from the specified content provider

The key differences between the parties’ proposals is (1) Defendants’ inclusion of the word “install” based on the claim language and (2) Interval’s refusal to acknowledge that the patent only describes the interface as installed in the content provider’s information environment.

According to the plain language of the term, the “user interface installation instructions” must enable content providers to install a user interface. Interval’s proposal disregards the plain meaning of the claim term by reading out any “install” or “installation” requirement. Interval instead construes this term to vaguely require “provision of an interface,” which amounts to no

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more than displaying an interface. But installing a user interface and displaying an interface are very different things—and only the former is supported by the plain language of the claim term and intrinsic evidence. The specification describes “user interface installation instructions 333 that enable content providers to install a user interface in the information environment (e.g., Web page) of the content provider so that users can request sets of content data from the content provider.” (’652, 16:10-14 (emphasis added)) This express definition cannot be ignored. See Phillips, 415 F.3d at 1316.

The parties also dispute whether the user interface is installed “in the content provider’s information environment,” as Defendants propose. Interval’s proposal omits this requirement even though the specification defines user interface installation instructions as enabling “content providers to install a user interface in the information environment (e.g., Web page) of the content provider.” (’652, 16:10-14 (emphasis added)) This express definition in the patent cannot be ignored as Interval’s construction would do. See Phillips, 415 F.3d at 1316. The patent further describes, for example, the information environment of the content provider as the provider’s web page; the user interface is graphical buttons on the web page that permit the user to “visit the Web page to request particular sets of content data.” (’652, 18:61-19:5)

The parties also dispute whether the user interface must permit a user to request “a particular set of content data representing the image(s) to be displayed from the specified content provider” as Defendants propose. Defendants’ proposal follows from the specification, which repeatedly states that the “user interface” permits the user to choose a particular set of content data. (’652, 2:26-28 (“The content providing systems provide user interface tools that enable a particular set of content data to be requested” (emphasis added)); see also id. at 6:64-67, 18:60- 62) Defendants’ construction follows a co- inventor’s explanation made during prosecution that the alleged invention allowed a user visiting a web site to select an image displayed thereon “so as to cause the content data representing the image to be transferred from” the web site to the user. (JPHS Ex. C1, at IL_DEFTS0008077 (emphasis added)) In reexamination, Interval also stated: “language of claims 15, 17 and 18 thus plainly requires a user interface to be provided so

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that a user (person) can request particular content data.” (JPHS Ex. C1, at INT00020712 (emphasis added)) Interval’s construction improperly ignores these unambiguous statements in the intrinsic record. See Phillips, 415 F.3d at 1316.

8. “during operation of an attention manager”⁵ [’652 Claims 15-18]

Interval’s Construction	Defendants’ Construction
during the operation of a system for engaging at least a part of the user’s attention that is not occupied by the user’s primary interaction with the apparatus	during operation of a system that displays images to a user either when the program detects that the user is not engaged in a primary interaction or as a background of the computer screen

The parties’ dispute regarding the construction of the phrase “during operation of an attention manager” revolves around Interval’s attempt to adopt a construction that provides no meaningful boundaries for the term. In contrast, Defendants’ construction is consistent with the intrinsic record by construing the “operation of an attention manager” according to the only description in the specification that gives objective boundaries on the scope of this limitation, the “screen saver” and “wallpaper” embodiments.

The specification does not define the term “attention manager.” There is no statement in the specification that the “attention manager” is a computer program or an electronic device. It seems that “attention manager” is nothing more than a vague concept that applicants used to refer to their invention. To the extent the attention manager is described, it is intended to control the display device so that the images are displayed to the user in the manner consistent with the invention by making use of “unused capacity” of the display device. (’652, 2:7-9) The Patents fail to disclose objective criteria for determining whether a displayed image makes use of “unused capacity” of a display device, other than by displaying images as part of a screensaver or wallpaper. (’652, 3:11-31)

The prosecution history confirms that “attention manager” should be construed as Defendants propose. During prosecution, the Examiner rejected the application for the ’652

_____________________

⁵ This term in the preambles of claims 15-18 should be read as a limitation on these claims at least for the reason that the body of these claims rely on the preamble phrase “display of an image.” E.g., Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300, 1311 (Fed. Cir. 2012). Indeed, both Interval and Defendants propose construing this term.

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Patent over U.S. Patent No. 5,572,643 (the “Judson patent”), which teaches a method for displaying messages to a computer user in an internet browser while the user is waiting for the webpage to load. (See Jost Decl. Ex. B, 8:26-49 (Claim 1)) In distinguishing its alleged invention from the Judson patent, applicants acknowledged that their invention did not extend to all uses of an “unused capacity” when they argued that “the instant invention uses a different unused capacity than that used by the method taught by Judson.” (JPHS Ex. C1, at IL_DEFTS0007928) Applicants explained that their purported invention made use of the “unused capacity” of a display device and of the attention of a person in the vicinity of the display device through two implementations, the screen saver and the wallpaper embodiments:

The display of images in an unobtrusive manner in a system as recited in Claim 1 can be implemented by, for example, displaying images during an inactive period (e.g., when the user has not interacted with the apparatus for a predetermined period of time) of a primary interaction with the apparatus (the ‘screensaver embodiment’), as described, for example, at page 3, lines 16-20, page 5, lines 30- 33, and page 12, lines 16-20 of Applicants’ specification. The display of images in an unobtrusive manner in a system as recited in Claim 1 can also be implemented by displaying images during an active period of a primary interaction with the apparatus, but in a manner that does not distract the user from the primary interaction (the ‘wallpaper embodiment’), as described, for example, at page 3, lines 20-27, page 6, lines 2-8, and page 12, lines 20-28 of Applicants’ specification.

(JPHS Ex. C1, at IL_DEFTS0007927-7928 (emphasis added)) Having relied on the specification’s description of both the screensaver and wallpaper embodiments to distinguish the purported invention from prior art that made of other “unused capacity,” Interval cannot now expand the scope of the invention during litigation. See CVI/Beta Ventures, 112 F.3d at 1158.

In contrast to Defendants’ construction, Interval’s nebulous construction has no meaning whatsoever and covers subject matter broader than what is provided for in the specification. Further, despite the fact that this is a structural limitation (the parties agree that it is a “system”), Interval’s construction defines only an intended function or goal and not a structure of the attention manager. This is an improper construction of a structural term: “Where a claim uses clear structural language, it is generally improper to interpret it as having functional

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requirements.” Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002).

In any event, it is impossible to determine whether the goal recited in Interval’s construction has been satisfied because there is no way to determine whether a user’s attention can be or has been divided into two distinct and separately identifiable portions – one portion engaged with the primary interaction, and another portion that is not. Even Interval’s expert conceded that he, a skilled artisan, would be unable to state where a user’s peripheral attention begins and primary attention ends. (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 180:16-24; Jost Decl. Ex. H (Mangione-Smith Dep. Ex. 7A)) Further, assuming that attention could be divided this way, Interval’s expert confirms that many factors affect a user’s attention. (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 180:16-24, 181:22-182:20) Yet, the Patents provide no description of how to assess such factors to make an objective determination of where a user’s attention is focused. For example, if a user’s attention is on a word processing document, it is unclear whether the user’s attention to the primary interaction ends at the edge of the word processing document, inside the text of the document, or just outside the borders of the document.

By defining the attention manager as engaging “at least a part of the user’s attention that is not occupied by the user’s primary interaction,” Interval’s broad construction may be misunderstood as allowing for an attention manager that engages a portion (or all) of the user’s attention that is directed to a primary interaction. This is contrary to the very purpose of the alleged invention, which is purportedly directed to engaging attention NOT used by the user’s primary interaction. This construction also is in conflict with the only two potential embodiments described in the specification for the “attention manager.”

Defendants proposed construction should be adopted because only it gives objective meaning to the term “attention manager” and is consistent with the patent disclosure and Interval’s arguments during prosecution that its alleged invention makes use of “unused capacity” of the display device and attention of the user by displaying images using a screen

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saver or a wallpaper. (See ’652, 3:20-22, 8:9-46 (for idle period detection); see also id. at 1:51- 52, 3:25-31 (for wallpaper as background))

9. “means for acquiring a set of content data from a content providing system”
[’652 Claim 4]

Interval’s Construction

Defendants’ Construction

FUNCTION: acquiring a set of content data from a content providing system STRUCTURE: A digital computer capable of communicating with a content providing system via a network and programmed to perform at least the following steps: (1) providing a user with an interface to directly request a particular set of content data, (2) indicating to the content provider the particular set of content data requested by the user, and (3) obtaining the particular set(s) of content data requested by the user at the content display system

Function: acquiring a set of content data from a content providing system Structure: A digital computer connected to a content providing system via a network and programmed to perform the steps: (1) providing a user with an interface to directly request a particular set of content data, (2) indicating to the content provider the particular set of content data requested by the user, (3) receiving a set of instructions at the content display system that identify the site from which the set of content data is to be acquired, (4) downloading the particular set(s) of content data requested by the user at the content display system.

The parties’ agree that the function of the “means for acquiring” is “acquiring a set of content data from a content providing system.” The parties also agree that the identified structure must perform steps (1) and (2) in their respective identifications of the structure. The main difference between the parties’ proposals are whether the structure must include step (3) in Defendants’ proposal, which specifies that a digital computer be programmed to receive “a set of instructions at the content display system that identify the site from which the set of content data is to be acquired” and a dispute over “downloading” as compared to “obtaining.”

To properly constitute corresponding structure of a means-plus-function term directed to software, the specification must disclose an algorithm and associate it with the function. Aristocrat Techs., 521 F.3d at 1333-34. The Patents’ specification discloses acquisition instructions as necessary in the only possible “algorithm” for performing the recited function and “the acquisition instructions 331 include information identifying the site from which the set of content data can be obtained.” (’652, 19:8-14 (emphasis added)) As explained by Defendants’

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expert Dr. Bruce Maggs, the acquisition instructions are “necessary for the algorithm disclosed in the specification to successfully practice the function of acquiring a set of content data from a content providing system.” (See Maggs Decl., at ¶ 46.) Thus, these instructions must be included in the structure because the specification identifies no way to acquire data from the content providing systems without instructions identifying the sites from which to obtain the content data. See Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999) (“112, ¶ 6 requires . . . identification of the structure in the written description necessary to perform that function.”). Interval’s claim construction expert, Dr. Mangione-Smith, agreed that to acquire content data, the user’s content providing system needed an “address” or “some information, even if it’s relatively indirect and high level,” to identify the location of the source of the content data, or the “content providing system.” (See Jost Decl. Ex. A (Mangione-Smith Dep.) at 218:7-220:6) Thus, Defendants step (3) must be included as it is a necessary part of the “structure” for performing the claimed function.

The parties also dispute the corresponding structure disclosed in the specification for how content data is acquired. Both parties’ constructions require that the digital computer be “connected to” or “communicat[e] with” a “content providing system via a network.” Consistent with this “network requirement, Defendants’ construction that the digital computer “download[]” content data, rather than merely “obtain[]” content data. “Downloading” more accurately describes how content data is acquired given that it is acquired over a network. In contrast, obtaining,” as proposed by Interval, is overly broad as it encompasses acquiring content data from local, non-networked sources, which applicants disclaimed in distinguishing a prior art reference, “Pirani,” during prosecution:

Pirani et al. contemplate that advertisements are to be integrated into, and displayed during operation of, software that is installed on a computer via ‘conventional’ means (e.g., by installing software stored on a floppy disk or CDROM), not software that is obtained via a computer network. Consequently, Pirani et al. do not teach a system for use with an apparatus in which the system includes ‘means for acquiring a set of content data from a content data from a content providing system,’

(JPHS Ex. C1, at IL_DEFTS0007921 (emphasis added))

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Dr. Maggs similarly concluded that this limitation required “downloading” because the Patents describe a “set of content data” that is stored locally on the content display system after it is acquired from a network. (See Maggs Decl., at ¶ 49 (citing ’652, 21:20-23)) Dr. Maggs also observed that patent’s updating content data refers to “mak[ing] changes to the database as necessary.” (Id. (citing ’652, 18:32-37, 24:42-58)) Dr. Maggs opined that these disclosures— requiring local storage of data acquired from a network—would be understood by one skilled in the art to mean that the digital computer performs “downloading” of content data. (Id.)

Consistent with the specification and prosecution history, a proper construction of this term must be limited to a structure that includes steps (3) and (4) as proposed by Defendants.

10. “content provider” [’314 All Claims]

Interval’s Construction	Defendants’ Construction
No construction necessary; in the alternative: a system that provides one or more “sets of content data”	An entity that formulates one or more “sets of content data”

The parties’ dispute regarding the construction of “content provider” centers on Interval’s attempt to conflate “content provider” with “content providing system.” As the Patents explain, the “content provider” is an entity that formulates a “set of content data,” whereas the “content providing system” is a tool a “content provider” may use to make a “set of content data” available to the attention manager. (See, e.g., ’314, Abstract (“[e]ach set of content data is formulated by a content provider”), 6:62-64 (“[e]ach set of content data is formulated by a content provider and made available by a corresponding content providing system) (emphasis added), 2:31-35 (same)) Moreover, the very purpose of the invention is to allow content providers to disseminate their information. (See ’314, Abstract, 5:41-47; see also id. at 1:37-41 (referring to information providers as entities such as America Online, Prodigy and CompuServe)) Further, the use of both terms “content provider” and “content providing system” (in claims 10 and 13) highlights the necessary distinction between their constructions. See Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“In the absence of any evidence to the contrary, we must presume that the use of … different terms

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in the claims connotes different meanings.”) (citation omitted). Clearly, “content provider” does not refer to some disembodied system, but rather to the entities that formulate the content for dissemination.

11. “content data scheduling instructions for providing temporal constraints on
the display of the image or images generated from the set of content data”
[’652 Claims 15, 17, 18]

Interval’s Construction	Defendants’ Construction
“instructions” that affect the duration, order, timing, and/or frequency of the display of the “image or images generated from the set of content data”	instructions that can be tailored by a content provider that specify the time(s) at which image(s) generated from a set of content data may be displayed.

The parties’ first dispute about this term is whether “content data scheduling instructions” refers to instructions that can be “tailored” by the content provider as twice explained in the Patents’ Summary of the Invention.

The Summary of the Invention states that the control instructions, which include the content data scheduling instructions, “could be acquired from a content provider, or any one or all of the sets of instructions could be acquired from an application manager that provides generic sets of instructions that can be tailored as necessary or desirable by a content provider.” (’652, 2:57-63, 3:3-8) Thus, the content data scheduling instructions either originate from (and thus are tailored by) the content provider, or are provided by an application manager in a form that also can be tailored by the content provider. The Summary of the Invention later affirms that the content data scheduling instructions can be tailored by the content provider, stating that “the attention manager allows content providers to tailor particular aspects of the attention manager as desired by the content provider, such as . . . the display scheduling.” (’652, 5:41-47) These passages characterize the invention as a whole, rather than merely describing a preferred embodiment, showing that the inventors intended “content data scheduling instructions” to refer to instructions that can be tailored by the content provider. See C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole, rather than statements that describe only preferred embodiments, are more likely to support a

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limiting definition of a claim term.”); see also Netcraft Corp. v. eBay, Inc., 549 F.3d 1394, 1398- 99 (Fed. Cir. 2008) (recognizing it is proper to use the Abstract and Summary of the Invention to construe the claim terms because these describe the invention as a whole).

The remainder of the specification confirms that the “content data scheduling instructions” can be tailored by the content provider. The specification states that “the content data scheduling instructions 322 are usually the same for each set of control instructions 320 and provide a generic set of scheduling instructions that can be tailored by a content provider.” (’652, 15:61-67; see also id. at 15:41-45) The specification also describes various ways the content provider can tailor the instructions. (’652, 16:65-17:15) Accordingly, Defendants’ proposed construction of this claim phrase properly reflects the inventors’ use of the term “content data scheduling instructions” to refer to instructions that can be tailored by the content provider.

The parties’ second dispute regarding this term relates to the express requirement in the claims that the scheduling instructions provide “temporal constraints” on the display of images. Defendants’ construction accounts for the “temporal constraints” limitation by requiring that the scheduling instructions specify the time(s) at which image(s) generated from a set of content data may be displayed.

In contrast, Interval’s construction ignores the “temporal constraints” requirement and attempts to include the functions performed by any one of the four types of “content data scheduling instructions” disclosed in the specification (’652, 4:47-55, 16:65-17:28 (“duration instructions,” “sequencing instructions,” “timing instructions,” and “saturation instructions”)) The additional requirement that the scheduling instructions provide “temporal constraints” is directed to one of the four types of scheduling instructions disclosed in the specification— instructions for specifying “particular times or ranges of times at which a set of content data 350 can or cannot be displayed (‘timing instructions’).” (’652, 17:12-15) This is evident not only from the Patents’ disclosure, but also from the plain meaning of “temporal constraint”—a restriction on the time at which images can be displayed. (See, e.g., Jost Decl. Ex. C, at 425

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(defining “temporal” as “of, pertaining to, or limited by time” and “constraint” as “a restriction”)) Interval’s construction reads out the “temporal constraints” limitation by encompassing other types of instructions that affect ordering and maximum number of times that images can be displayed. These instructions do not place a temporal constraint on the display of images. Even Interval’s expert referred to “temporal information” as “relating to when to display the set of content data.” (Jost Decl. Ex. A (Mangione-Smith Dep.) at 169:17-20) Interval’s construction thus violates the principle that “claims are interpreted with an eye toward giving effect to all terms in the claim.” Bicon, Inc., 441 F.3d 950-52.

Other words used in the claims confirm Defendants’ constructions. Phillips, 415 F.3d at 1314 (“the context of the surrounding words of the claim also must be considered”). Claims 14, 15, and 17 of the ’652 Patent all recite “content data scheduling instructions for providing temporal constraints on the display of the image.” These claims additionally recite that the content data scheduling instructions “further compris[e]” (1) “duration instructions,” (2) “sequencing instructions,” and (3) “saturation instructions,” respectively. (’652, 32:26-34, 32:52-55, 33:9-13) Notably absent from this list is any further statement in the claims directed to “timing instructions” that specify “particular times or ranges of times at which a set of content data 350 can or cannot be displayed (‘timing instructions’)” because the language “temporal constraints” already addresses the timing instructions. (’652, 17:12-15) Accordingly, duration instructions, sequencing instructions, and saturation instructions must each impose a different requirement than the separately recited “content data scheduling instructions for providing temporal constraints.” See Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) (holding that when separate terms are expressly recited in a claim, the terms cannot mean the same thing). Therefore, “temporal constraints” must be construed to mean “particular times or ranges of times at which a set of content data can or cannot be displayed,” consistent with the specification’s disclosure and the plain meaning of “temporal constraints.”

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12. “content data update instructions for enabling acquisition of an updated set
of content data from an information source that corresponds to a previously
acquired set of content data” [’652 Claim 18]

Interval’s Construction	Defendants’ Construction
“instructions” that specify when to obtain an updated version of a set of content data and the location from which to obtain such updated version	“instructions” that can be tailored by the content provider that specify when to obtain an updated version of a previously acquired set of content data and the location from which to obtain such updated version

The parties have only a single dispute regarding this claim limitation—whether the “content data update instructions” can be tailored by the content provider as indicated in the Patents’ Summary of the Invention. For example, the summary states that “the attention manager allows content providers to tailor particular aspects of the attention manager as desired by the content provider, such as the acquisition of updated sets of the content provider’s content data (e.g., the frequency of such updates).” (’652, 5:39-45) Similarly, the Summary of the Invention also explains that the content data acquisition instructions, which include the claimed content data update instructions, “could be acquired from a content provider, or any one or all of the sets of instructions could be acquired from an application manager that provides generic sets of instructions that can be tailored as necessary or desirable by a content provider.” (’652, 2:63- 67, 3:3-8) Because these passages describe the invention as a whole, and not merely a preferred embodiment, they show that the applicants used “content data update instructions” to refer to instructions that can be tailored by the content provider. See C.R. Bard, Inc., 388 F.3d at 864. The remainder of the specification confirms that the “content data update instructions” can be tailored by the content provider as proposed by Defendants. For example, the specification states that “[t]he content data acquisition instructions 330—in particular, the content data update instructions 332—are also tailored by content providers as appropriate for particular sets of content data 350.” (’652, 17:58-61 (emphasis added), 16:1-9)

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13. “content display system scheduling instructions for scheduling the display of the
image or images on the display device” [’652 Claim 18]

Interval’s Construction	Defendants’ Construction
“instructions” that implement a display schedule by determining which image or images generated from the “set(s) of content data” will be displayed and mediating conflicts between the display requirements of multiple “sets of content data”	“instructions” that implement a display schedule for a particular content display system by determining the display order and display duration for image(s) generated from each available set of content data

While the parties agree that “content display system scheduling instructions” implement a display schedule, they dispute whether the instructions implement a display schedule for a particular content display system, as reflected in Defendants’ construction. This requirement comes from the plain language of the claim, which recites that the instructions schedule images for display on “the display device.” See Phillips, 415 F.3d at 1314 (“the context in which a term is used in the asserted claim can be highly instructive”). The Summary of the Invention likewise indicates that these instructions implement a schedule for a particular display system because the content display system itself implements the schedule: “a content display system integrates scheduling information for all sets of content data to produce a schedule according to which an image or images corresponding to the sets of content data are displayed on a display device associated with the content display system.” (’652, 2:28-34, 7:2-7) Since the particular content display system implements the display schedule, it necessarily follows that the schedule is for that particular content display system.

The parties also dispute what the “content display system scheduling instructions” must accomplish. Defendants’ proposed construction reflects the Patents’ description of the instructions’ required function: “Generally, determining a display schedule involves specifying the order in which the sets of content data are to be displayed and the duration of time for which each set of content data is to be displayed.” (’652, 10:19-23 (emphasis added)) Thus, Defendants’ construction should be adopted because it properly reflects the plain language of the claim, and the specification.

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14. “instructions” [’652 Claim 15, 16, 17, 18; ’314 All Claims]

Interval’s Construction	Defendants’ Construction
Either (a) data related to the accomplishment of a function and/or (b) a statement or expression that can be interpreted by a computer that specifies a function to be performed by a system	A statement in a programming language that specifies a function to be performed by a system

The primary dispute between the parties concerning the term “instructions” is whether “instructions” can be satisfied solely by “data related to the accomplishment of a function” as Interval proposes. Although Interval and Defendants cite the same intrinsic evidence (shown below), Interval’s construction misinterprets this evidence to mean that an “instruction” is “data.”

• “Each of the functional components are represented by a set of instructions and/or data” (’652, 14:53-54 (emphasis added))
• “[S]ets of instructions may include, if appropriate, data related to accomplishment of the functions associated with the set of instructions” (’652, 14:55-57 (emphasis added))

The first quote indicates that “instructions” and “data” are different things because functional components can be represented by one or the other. If “data” is a type of “instructions,” then the phrase “instructions and/or data” would not make sense. The second quote states that instructions” may include “data,” but “instructions” are not themselves “data.” These statements in the specification and the Defendants’ proposed construction are also entirely consistent with the common usage of the term “instruction” as used in the field of computer software. In the context of computer software, “computer instruction” means “[a] statement in a programming language, specifying an operation to be performed by a computer and the address or value of the associated operands.” (Jost Decl. Ex. D, at 193 (see definition of “computer instruction” at “(2) (A) (software)”)) In other words, instructions might include data (e.g., “value of the associated operands”), but instructions cannot be data alone. (See Jost Decl. Ex. E, at 720 (see definition of “operand” at “(1) (mathematics of computing) (software)”))

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15. “means for displaying one or more control options with the display device while
the means for selectively displaying is operating” [’652 Claim 4]

Interval’s Construction

Defendants’ Construction

Function: displaying one or more control options with the display device while the means for selectively displaying is operating Structure: One or more digital computers programmed to provide a dialog box that includes a list of one or more of the following control options: (1) terminate the operation of the attention manager, (2) begin display of the next schedule set of content data, (3) begin display of the previous scheduled set of content data, (4) remove a set of content data from the display schedule, (5) prevent a set of content data from being displayed until it has been updated, (6) modify the display schedule in response to a user’s identified satisfaction with a set of content data, (7) establish a link with an information source, (8) provide an overview of all of the content data available for display by the attention manager, (9) maintain display of the current set of content data, or (10) remove the control option interface and structural equivalents.

Function: displaying one or more control options with the display device while the means for selectively displaying is operating Structure: one or more digital computers programmed to provide a dialog box that includes a list of one or more of the following control options: perform at least one of steps 501 (Want to display the next set of content data in the schedule?), 502 (Want to display the previous set of content data in the schedule?), 503 (Want to remove the current set of content data from the schedule?), 504 (Want to prevent display of the current set of content data until that set of content data has been updated?), and 505 (Want to specify a satisfaction level for the current set of content data?), and structural equivalents

The parties agree that the function of this means-plus-function term is “displaying one or more control options with the display device while the means for selectively displaying is operating.” Prior to the stay, the parties agreed that the structure identified in Defendants’ proposed construction was correct. In fact, Interval served a declaration by Dr. William Mangione-Smith opining that the corresponding structure is that structure identified in Defendants’ construction. (Jost Decl. Ex. F, at ¶ 38) Now, after the stay, Interval broadened its proposed structure such that this claim limitation could be satisfied by displaying any one of ten control options, including five control options that were not identified by its own expert. Because the structure the parties originally agreed upon is correct, Defendants’ proposed construction should be adopted.

Interval’s new construction overreaches. “[I]n order to qualify as corresponding structure, the structure must not only perform the claimed function, but the specification must clearly associate the structure with performance of the function.” JVW Enter., Inc. v. Interact

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Accessories, Inc., 424 F.3d 1324, 1330 n.1 (Fed. Cir. 2005) (citation omitted). Further, the corresponding structure of a computer-implemented feature is limited to the “special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, 184 F.3d at 1349. Accordingly, the corresponding structure of this means-plus-function term cannot cover the display of anything that might be a control option, even if it is disclosed in the specification and can perform the recited function. Rather, the corresponding structure only extends to an algorithm clearly linked with the recited function. See Medtronic, Inc. v. Advanced Cardiovascular Sys. Inc., 248 F.3d 1303, 1315 (Fed. Cir. 2001) (finding that structure capable of performing the recited function is not sufficient to be corresponding structure in the absence of “a clear link or association with the recited function”).

The algorithm identified in the specification corresponds to Defendants’ construction. Specifically, the patents disclose “a content display system 203 according to the invention which can be implemented, for example, using a digital computer that includes a display device and that is programmed to perform the functions of the method 500.” (’652, 24:62-66) The method 500 “provides a number of control options that enable the user to effect particular types of control of the attention manager.” (’652, 25:5-7) The flow chart disclosed in Figure 5 describes the control options identified in the corresponding structure identified by Interval’s expert. (’652, Fig. 5)

While the specification suggests that additional control options could be used in addition to those disclosed in Figure 5 (’652, 25:10-13), such a generic statement does not expand the corresponding structure: “A specification that merely mentions the possibility of alternative structures without specifically identifying them is not sufficient to expand the scope of the claim beyond the example used.” Atmel Corp. v. Info. Storage Devices, Inc., 997 F. Supp. 1210, 1215 (N.D. Cal. 1998). Thus, even if the Patents disclose other control options that could potentially perform the recited function, if they are not disclosed as part of the algorithm, they are not clearly linked to the recited function. Accordingly, the Court should reject Interval’s effort to contradict its own expert’s testimony by expanding the allegedly “corresponding structure.”

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DATED this 9th day of October, 2012.

STOKES LAWRENCE, P.S.

By: s/ Shannon M. Jost
Shannon M. Jost (WSBA #32511)
Theresa Hsin-Yi Wang (WSBA #39784)

and

Admitted Pro Hac Vice
Kevin X. McGann
Dimitrios T. Drivas
Aaron Chase
WHITE & CASE LLP
[address]

Warren S. Heit
Wendi R. Schepler
WHITE & CASE LLP
[address]

Attorneys for Defendant Google Inc.

/s/ Cortney S. Alexander (with permission)
Gerald F. Ivey (pro hac vice)
[email]
Robert L. Burns (pro hac vice)
[email]
Elliot C. Cook (pro hac vice)
[email]
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
[address telephone]

Cortney S. Alexander (pro hac vice)
[email]
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
[address telephone]

Molly A. Terwilliger, WSBA No. 28449
[email]
SUMMIT LAW GROUP PLLC
[address telephone]

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Attorneys for Defendant AOL Inc.

s/David S. Almeling (with permission)
Brian M. Berliner (pro hac vice)
Neil L. Yang (pro hac vice)
Xin-Yi Zhou
O’MELVENY & MYERS LLP
[address telephone]

George A. Riley (pro hac vice)
David S. Almeling (pro hac vice)
O’MELVENY & MYERS LLP
[address telephone]

Scott T. Wilsdon, WSBA #20608
Jeremy E. Roller, WSBA #32021
YARMUTH WILSDON CALFO PLLC
[address telephone]

Attorneys for Defendant Apple Inc.

s/Matthew I. Kreeger (with permission)
Mark P. Walters (WSBA #30819)
Dario A. Machleidt (WSBA #41860)
Gregory F. Wesner (WSBA #30241)
FROMMER LAWRENCE & HAUG LLP
[address telephone]

Michael A. Jacobs (pro hac vice)
Matthew I. Kreeger (pro hac vice)
Richard S.J. Hung (pro hac vice)
Francis Ho (pro hac vice)
Eric W. Ow (pro hac vice)
MORRISON & FOERSTER LLP
[address telephone]

Attorneys for Defendant Yahoo! Inc.

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CERTIFICATE OF SERVICE

I hereby certify that on October 9, 2012, I caused the foregoing DEFENDANTS’ OPENING BRIEF IN SUPPORT OF THEIR PROPOSED CLAIM CONSTRUCTIONS: ‘652 AND ‘314 PATENTS to be:

electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing to the following:

Attorneys for Plaintiff Interval Licensing LLC Justin A. Nelson [email]
Eric J. Enger [email]
Matthew R. Berry [email]
Max L. Tribble [email]
Michael F. Heim [email]
Nathan J. Davis [email]
Edgar G. Sargent [email]
Oleg Elkhunovich [email]
Douglas R. Wilson [email]
Niraj P. Patel [email] Attorneys for Yahoo!
Mark P. Walters [email]
Dario A. Machleidt [email]
Francis Ho [email]
Richard S. J. Hung [email]
Michael Jacobs [email]
Matthew I. Kreeger [email]
Eric W. Ow [email]
Gregory F. Wesner [email]

Attorneys for Apple Inc.
Scott T. Wilsdon [email]
Jeremy E. Roller [email]
David S. Almeling [email]
George A. Riley [email]
Brian M. Berliner [email]
Neil L. Yang [email]
Xin-Yi Zhou [email]

Attorneys for AOL Inc.
Gerald F. Ivey [email]
Cortney S. Alexander [email]
Eliot C. Cook [email]
Robert L. Burns [email]
Molly A. Terwilliger [email]

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s/ Shannon M. Jost Shannon M. Jost (WSBA #32511)
Stokes Lawrence, P.S.
[address telephone fax email]

Attorneys for Defendant Google Inc.

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