NO.

16-___
In the

Supreme Court of the United States

________________

GOOGLE INC.,
PETITIONER,

v.

ALFONSO CIOFFI AND

THE ESTATE OF ALLEN FRANK ROZMAN,
RESPONDENTS.
________________
On Petition for a Writ of Certiorari to
the United States Court of Appeals
for the Federal Circuit
________________
PETITION FOR WRIT OF CERTIORARI
________________
ADAM M. CONRAD
KING & SPALDING LLP
100 N Tryon St., Suite 3900
Charlotte, NC 28202
(704) 503-2600

DARYL L. JOSEFFER
Counsel of Record
JOSHUA N. MITCHELL
KING & SPALDING LLP
1700 Pennsylvania Ave., NW
Washington, DC 20006
(202) 737-0500
djoseffer@kslaw.com

Counsel for Petitioner

August 10, 2016

i
QUESTIONS PRESENTED
1. When construing an ambiguous patent claim,
should courts generally consider the record of the
patents prosecution as relevant context, or is
prosecution history relevant only if it clearly and
unmistakably disavows claim scope?
2. When a patent applicant has amended a claim
to overcome the Patent and Trademark Offices
earlier disallowance of the claim, should a court
strictly construe the amended claim language against
the applicant, as this Court has held, or consider the
amendment history to be relevant only to the extent
that it clearly and unambiguously disavows claim
scope, as the Federal Circuit has held?

ii
PARTIES TO THE PROCEEDING
AND RULE 29.6 STATEMENT
Petitioner in this Court, defendant-cross
appellant below, is Google Inc. Respondents in this
Court, plaintiffs-appellants below, are Alfonso Cioffi
and the Estate of Allen Frank Rozman.
Alphabet Inc., a publicly traded company
(NASDAQ: GOOG and GOOGL), has more than 10%
ownership of Google Inc. No publicly held company
owns 10 percent or more of Alphabet Inc.s stock.

iii
TABLE OF CONTENTS
QUESTIONS PRESENTED.........................................i
PARTIES TO THE PROCEEDING AND RULE
29.6 STATEMENT .............................................. ii
TABLE OF AUTHORITIES ........................................ v
PETITION FOR WRIT OF CERTIORARI ................. 1
OPINIONS BELOW .................................................... 4
JURISDICTION .......................................................... 4
STATEMENT OF THE CASE .................................... 4
A. The Patent-Examination Process ................. 4
B. The Asserted Patents .................................... 6
C. The District Court Proceedings .................... 9
D. The Court Of Appeals Decision .................. 10
REASONS FOR GRANTING THE PETITION........ 12
I.

A Patents Prosecution History Provides

Vital Context For Construing Otherwise
Ambiguous Claim Language. ............................. 12
A. The Federal Circuit Is Deeply Divided
Regarding The Use Of Prosecution
History To Construe Patent Claims. .......... 12
B. The Federal Circuits Disclaimer-Only
Standard Is Contrary to This Courts
Decisions. ..................................................... 18
C. The
Disclaimer-Only
Standard
Undermines The Public Notice Function
Of Claims And Produces Overbroad
Constructions. .............................................. 20

iv
II. Amendments Made To Overcome Rejection
Should Be Strictly Construed Against
Applicants. .......................................................... 22
III. This Case Provides A Good Vehicle For
Considering These Important Issues. ................ 29
CONCLUSION .......................................................... 33
APPENDIX
Appendix A
Opinion of the United States Court of
Appeals for the Federal Circuit
(Nov. 17, 2015) ....................................... App-1
Appendix B
Memorandum and Order of the United
States District Court for the Eastern
District of Texas
(Aug. 28, 2014) ..................................... App-25
Appendix C
Judgment of the United States District
Court for the Eastern District of Texas
(Dec. 2, 2014) ..................................... App-100
Appendix D
Order Denying Rehearing En Banc of
the United States Court of Appeals for
the Federal Circuit
(April 11, 2016) .................................. App-104

v
TABLE OF AUTHORITIES
Cases
3M Innovative Props. Co. v. Tredegar Corp.,
725 F.3d 1315 (Fed. Cir. 2013) ........................ 23, 25
Amgen Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313 (Fed. Cir. 2003) ........................ 13, 24
Atlas IP, LLC v. Medtronic, Inc.,
809 F.3d 599 (Fed. Cir. 2015) ................................ 11
Atofina v. Great Lakes Chem. Corp.,
441 F.3d 991 (Fed. Cir. 2006) ................................ 28
Avid Tech, Inc. v. Harmonic, Inc.,
812 F.3d 1040 (Fed. Cir. 2016) .............................. 13
Bd. of Regents of the Univ. of Tex. Sys. v. BENQ
Am. Corp.,
533 F.3d 1362 (Fed. Cir. 2008) .................. 14, 15, 24
Broad River Power Co. v. S. Carolina ex rel. Daniel,
281 U.S. 537 (1930) ................................................ 23
Cuozzo Speed Techs. v. Lee,
136 S. Ct. 2131 (2016) .............................................. 1
Enzo Biochem., Inc. v. Applera Corp.,
605 F.3d 1347 (Fed. Cir. 2010) .............................. 31
Exhibit Supply Co. v. Ace Patents Corp.,
315 U.S. 126 (1942) ............................................ 2, 22
Fenner Invs., Ltd. v. Cellco Pship,
778 F.3d 1320 (Fed. Cir. 2015) ........................ 14, 15
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
Co., Ltd.,
535 U.S. 722 (2002) .......................................... 19, 23

vi
Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327 (Fed. Cir. 2004) .............................. 24
Google Inc. v. Vederi, LLC,
135 S. Ct. 1021 (2015) ............................................ 28
GPNE Corp. v. Apple, Inc.,
No. 2015-1825, 2016 WL 4073323
(Fed. Cir. Aug. 1, 2016) .......................................... 16
Graham v. John Deere Co.,
383 U.S. 1 (1966) ................................................ 2, 19
Halo Elecs., Inc. v. Pulse Elecs., Inc.,
136 S. Ct. 1923 (2016) ............................................ 31
Hill-Rom Servs., Inc,. v. Stryker,
755 F.3d 1367 (Fed. Cir. 2014) .............................. 13
Hubbell v. United States,
179 U.S. 77 (1900) .................................................. 22
Invitrogen Corp. v. Clontech Labs., Inc.,
429 F.3d 1052 (Fed. Cir. 2005) .............................. 13
Jansen v. Rexall Sundown, Inc.,
342 F.3d 1329 (Fed. Cir. 2003) ........................ 14, 24
KSR Intl Co v. Teleflex Inc.,
550 U.S. 398 (2007) ................................................ 22
Kumar v. Ovonic Battery Co.,
351 F.3d 1364 (Fed. Cir. 2003) .............................. 24
M & G Polymers USA, LLC v. Tackett,
135 S. Ct. 926 (2015) .............................................. 19
MarcTec, LLC v. Johnson & Johnson,
394 F. Appx 685 (Fed. Cir. 2010) .......................... 28
Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) .................................................. 4

vii
Mohamad v. Palestinian Auth.,
132 S. Ct. 1702 (2012) ............................................ 11
Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014) ........................................ 1, 17
Norian Corp. v. Stryker Corp.,
432 F.3d 1356 (Fed. Cir. 2005) .............................. 28
Nystrom v. TREX Co.,
424 F.3d 1136 (Fed. Cir. 2005) .............................. 14
Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
134 S. Ct. 1749 (2014) .................................. 1, 17, 22
Omega Engineering v. Raytek Corp.,
334 F.3d 1314 (Fed. Cir. 2003) .............................. 27
Paragon Solutions, LLC v. Timex Corp.,
566 F.3d 1075 (Fed. Cir. 2009) .............................. 23
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005) .............. 6, 12, 15, 16
Rhodia Chimie v. PPG Indus. Inc.,
402 F.3d 1371 (Fed. Cir. 2005) .............................. 13
SanDisk Corp. v. Memorex Prods.,
415 F.3d 1278 (Fed. Cir. 2005) ........................ 11, 13
Schindler Elevator Corp. v. Otis Elevator Co.,
593 F.3d 1275 (Fed. Cir. 2010) ............ 13, 14, 16, 23
Schriber-Schroth Co. v. Cleveland Trust Co.,
311 U.S. 211 (1940) ................................................ 19
Smith v. Magic City Kennel Club, Inc.,
282 U.S. 784 (1931) .......................................... 22, 23
Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc.,
731 F.3d 1271 (Fed. Cir. 2013) ........................ 14, 21

viii
SunRace Roots Enter. Co. v. SRAM Corp.,
336 F.3d 1298 (Fed. Cir. 2003) .............................. 13
Teva Pharms. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831 (2015) .......................................... 1, 19
Trustees of Columbia Univ. v. Symantec Corp.,
811 F.3d 1359 (Fed. Cir. 2016) .............................. 17
United States v. Adams,
383 U.S. 39 (1966) .................................................... 2
Universal Oil Prods. Co. v. Globe Oil & Refining Co.,
322 U.S. 471 (1944) ................................................ 20
Vederi, LLC v. Google, Inc.,
744 F.3d 1376 (Fed. Cir. 2014) .............................. 24
Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295 (Fed. Cir. 2007) .............................. 16
W.E. Hall Co. v. Atlanta Corrugating, LLC,
370 F.3d 1343 (Fed. Cir. 2004) .............................. 24
Wi-LAN USA, Inc. v. Apple. Inc.,
F.3d , No. 2015-1256,
2016 WL 4073324 (Fed. Cir. Aug. 1, 2016) ........... 16
World Class Tech. Corp. v. Ormco Corp.,
769 F.3d 1120 (Fed Cir. 2014) ............................... 11
York Prods., Inc. v. Cent. Tractor Farm & Family
Ctr.,
99 F.3d 1568 (Fed. Cir. 1996) ................................ 13
Statutes and Regulations
28 U.S.C. 1254 .......................................................... 4
35 U.S.C. 101 ............................................................ 5
35 U.S.C. 102 ............................................................ 5

ix
35 U.S.C. 103 ............................................................ 5
35 U.S.C. 112 ............................................................ 4
35 U.S.C. 131 ............................................................ 5
35 U.S.C. 132 ............................................................ 6
35 U.S.C. 134 ............................................................ 5
37 C.F.R. 1.104.......................................................... 5
37 C.F.R. 1.111.......................................................... 5
Other Authorities
John R. Allison, Mark A. Lemley, & Joshua Walker,
Patent Quality and Settlement Among Repeat
Patent Litigants,
99 Georgetown L.J. 677 (2011) .............................. 19
J. Jonas Anderson, Peter S. Menell,
Informal Deference: A Historical, Empirical, and
Normative Analysis of Patent Claim Construction,
108 Nw. U. L. Rev. 1 (2013) ................................... 32
James Besson & Michael J. Meurer,
The Direct Costs from NPE Disputes, 99 Cornell L.
Rev. 387 (2014)....................................................... 33
Dan L. Burk & Mark A. Lemley,
Quantum Patent Mechanics, 9 Lewis & Clark L.
Rev. 29 (2005)......................................................... 26
Julie E. Cohen & Mark A. Lemley,
Patent Scope and Innovation in the Software
Industry, 89 Cal. L. Rev. 1 (2001) ......................... 23

x
Lauren Cohen, Umit G. Gurun, & Scott
Duke Kominers,
Patent Trolls: Evidence from Targeted Firms,
National Bureau of Economic Research Working
Paper No. 20322, at 33 (Apr. 24, 2016) ................. 33
Christopher A. Cotropia,
Patent Claim Interpretation Methodologies and
Their Claim Scope Paradigms, 47 Wm. & Mary L.
Rev. 49 (2005)........................................................... 1
Dennis Crouch, Google Looks to Narrow both
Copyrights and Patents through Supreme Court
Action, Patently-O (Jan. 13, 2015) ........................ 26
Dennis Crouch,
Strictly Construing Amended Claims Against the
Patentee, Patently-O (Feb. 4, 2016) ....................... 18
Michael Dergosits & John Imperato,
Patent Drafting in View of Recent Case Law on
Claim Construction, 5 Intell. Prop. L. Bull. 1
(2000) ...................................................................... 16
Robert C. Faber,
Faber on Mechanics of Patent Claim Drafting (6th
ed. 2013) ................................................................... 5
Federal Circuit Bar Association,
Guidelines for Patent Claim Construction: The
Basics of a Markman Hearing, 14 Fed. Cir. B.J.
771, 782 (2005) ....................................................... 16
Fed. Trade Commn,
The Evolving IP Marketplace (Mar. 2011) ............ 33
Thomas C. Fiola & Jon E. Wright,
Preparing and Prosecuting a Patent That Holds Up
in Litigation 28 (2006) ........................................... 27

xi
George W. Jordan, III, Prosecution Disclaimers
(2004) ...................................................................... 27
Mark A. Lemley & Kimberly A. Moore,
Ending Abuse of Patent Continuations, 84 B.U. L.
Rev. 63 (2004)......................................................... 27
Mark Lemley & Bhaven Sampat,
Examining Patent Examination, 2010 Stan. Tech.
L. Rev. 2 (2010) .................................................. 5, 28
Christopher R. Leslie,
The Anticompetitive Effects of Unenforced Invalid
Patents, 91 Minn. L. Rev. 101 (2006) .................... 33
Peter S. Menell et al.,
Patent Claim Construction: A Modern Synthesis
and Structured Framework, 25 Berkeley Tech. L.J.
711 (2010) ............................................................... 22
Todd R. Miller,
The Doctrine of Prosecution Disclaimer in
Construing Patent Claims, 86 J. Pat. & Trademark
Off. Socy 931 (2004) ........................................ 27, 29
Price Waterhouse Cooper,
2015 Patent Litigation Study: A Change in Patentee
Fortunes 19 (2015) ................................................. 19
Greg Reilly,
Judicial Capacities and Patent Claim
Construction: An Ordinary Reader Standard, 20
Mich. Telecomms. & Tech. L. Rev. 243
(2014) .............................................................. passim
W. Robinson,
The Law of Patents for Useful Inventions (1890) .. 20

xii
Joshua D. Sarnoff,
The Doctrine of Equivalents and Claiming the
Future after Festo,
14 Fed. Cir. B.J. 403 (2004) ................................... 25
Jeffrey G. Sheldon,
How to Write A Patent Application (2d ed. 2012) ... 5
U.S. Dept of Commerce,
Patent Reform: Unleashing Innovation, Promoting
Economic Growth & Producing High-Paying Jobs
(2010) ...................................................................... 32
U.S. Pat. & Trademark Office,
Manual of Patent Examining Procedure (9th ed.
Mar. 2014) ................................................................ 4
John D. Vandenberg,
We Need Another Phillips To Explain Plain
Meaning, Law360 .................................................. 26
Albert H. Walker,
Text-book of the Patent Laws of the United States of
America (1887) ....................................................... 22
Stephanie Ann Yonker,
Post-Phillips Claim Construction: Questions
Unresolved, 47 IDEA 301 (2007) ..................... 17, 18

1
PETITION FOR WRIT OF CERTIORARI
[C]laim construction is overwhelmingly the
most critical patent issue in litigation. Greg Reilly,
Judicial Capacities and Patent Claim Construction:
An Ordinary Reader Standard, 20 Mich. Telecomms.
& Tech. L. Rev. 243, 246 (2014). Whether a patent
claim is valid, and whether a defendant infringed the
patent, often depend in large part on the claims
boundaries (i.e., the scope of the exclusive right). As
a result, claim construction is often dispositive.
Christopher A. Cotropia, Patent Claim Interpretation
Methodologies and Their Claim Scope Paradigms, 47
Wm. & Mary L. Rev. 49, 67 (2005).
In recent years, this Court has recognized the
importance of claim construction by deciding a
number of issues related to it, such as the appellate
standard of review, Teva Pharms. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 836 (2015), the authority
of the Patent and Trademark Office (PTO) to apply
different standards than those used in courts, Cuozzo
Speed Techs. v. Lee, 136 S. Ct. 2131, 2146 (2016), and
the requirement that a patent claims meaning be
reasonably certain, Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).
The time has now come for this Court to resolve
more fundamental questions concerning claim
construction itself, i.e., the legal standards, such as
the canons of construction, that courts should follow
in construing patent claims. To be sure, this Court
opined on claim-construction principles in an earlier
era. But the Federal Circuit has since divided
internally and departed from this Courts precedents.
As a result, different panels now apply different

2
canons of construction, making it impossible for
members of the public and litigants to know how a
claim would eventually be construed by the Federal
Circuit. Such uncertainty is inimical to the publicnotice function of claims and the proper functioning
of our patent system. It has also led to serious abuse.
This petition concerns the important role of
prosecution historyi.e., the public record of a
patents examinationin construing otherwise
ambiguous patent claims. In many cases, that record
is extensive, and it sheds considerable light on the
claims meaning.
It includes, for example, the
application for the patent, the applicants statements
to the patent examiner concerning the patents
intended scope, any rejections of originally proposed
claims for lack of patentability, and the applicants
response to such rejections, including arguments or
amendments make to overcome disallowance.
This Court has long held that courts should
construe claims in light of the entire intrinsic record,
including the prosecution history, with a view toward
ascertaining the invention.
United States v.
Adams, 383 U.S. 39, 49 (1966). Thus, for example,
[c]laims as allowed must be read and interpreted
with reference to rejected ones. Graham v. John
Deere Co., 383 U.S. 1, 33 (1966). Moreover, when an
applicant amends a claim to overcome an examiners
rejection, that amendment operates as a disclaimer
and must be strictly construed against [the
applicant] and in favor of the public. Exhibit Supply
Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942).
These clear rules preserve the integrity of the
PTOs examination process by preventing an

3
applicant from securing patent claims based on one
understanding of their scope but later arguing for a
broader scope in licensing discussions or litigation.
These rules also ensure that the public may rely in
good faith on arguments, amendments, and
admissions made by an applicant to obtain a patent.
The Federal Circuit, however, is deeply divided
over the relevance of a patents prosecution history.
Some panels correctly hold that the prosecution
history always provides important context for
construing ambiguous claim language. But many
other panels, including the one below, hold that the
prosecution history is irrelevant unless it clearly and
unmistakably surrenders claim scope. Instead of
considering all of the contextual evidence as a whole,
those panels determine a presumed meaning without
regard to the prosecution history, and then ask only
whether the prosecution history clearly and
unmistakably requires a different result.
This Courts review is urgently needed for at
least two reasons. First, the uncertainty over which
claim-construction rules will apply in any given case
deprives the public of reasonable certainty regarding
patents scope. Second, the Federal Circuits clearand-unmistakable standard artificially restricts the
courts consideration of important contextual
evidence by rendering prosecution history all but
irrelevant in the mine run of cases, and thereby
skews the analysis toward overbroad and acontextual
constructions.
The resulting uncertainty and
overbreadth harm the very innovation the Patent Act
is supposed to encourage and protect.

4
OPINIONS BELOW
The opinion of the court of appeals is reported at
632 F. Appx 1013 and reproduced at App. 1. The
district courts unpublished disposition is available at
2014 WL 4293978 and is reproduced at App. 25.
JURISDICTION
The court of appeals rendered its decision on
November 17, 2015. It denied rehearing on April 11,
2016. On June 28, 2016, the Chief Justice extended
the time for filing a petition to and including August
10, 2014. This Court has jurisdiction under 28
U.S.C. 1254(1).
STATEMENT OF THE CASE
A. The Patent-Examination Process
A patent application consists of a specification
that describes, among other things, the claimed
invention, how it works, and related inventions and
learning that preceded the patent applications filing.
See U.S. Pat. & Trademark Office, Manual of Patent
Examining Procedure 601, 608.01 (9th ed. Mar.
2014); see also 35 U.S.C. 112. The specification
must conclude with one or more claims particularly
pointing out and distinctly claiming the subject
matter which the inventor . . . regards as the
invention. 35 U.S.C. 112(b). Those claims mark
the boundaries of the inventors asserted property
right. See Markman v. Westview Instruments, Inc.,
517 U.S. 370, 37274 (1996).
A PTO examiner reviews the application to
determine whether it meets the criteria for

5
patentability, including the requirements that the
claimed invention be novel and non-obvious (i.e., new
and inventive). See 35 U.S.C. 131; see also, e.g., id.
101, 102, 103 & 112. If the examiner determines
that claims fail to satisfy one or more patentability
requirements, the examiner rejects the claims in an
Office action. See 37 C.F.R. 1.104. In response,
the applicant has three options: present arguments
[to the examiner] pointing out the specific
distinctions believed to render the claims . . .
patentable over the prior art, 37 C.F.R. 1.111(b);
appeal the rejection, see 35 U.S.C. 134; or acquiesce
in the examiners determination by amending the
proposed claims, 37 C.F.R. 1.111(b).
Applicants frequently draft initial claims as
broadly as possible and then amend them as
necessary to overcome the examiners rejections.
Indeed, patent drafting manuals encourage that
approach. See, e.g., Robert C. Faber, Faber on
Mechanics of Patent Claim Drafting 10:1.1, at 10-2
(6th ed. 2013); Jeffrey G. Sheldon, How to Write A
Patent Application 7:5.3, at 7-68 (2d ed. 2012) (At
worst, the examiner will not allow the broadest
claims.
Thus, it is recommended that the
practitioner be greedy when initially writing the
application.).
Thus, the vast majority of . . . applicants who
obtain patents . . . do so in part by amending their
claims in response to examiner concerns. Mark
Lemley & Bhaven Sampat, Examining Patent
Examination, 2010 Stan. Tech. L. Rev. 2, 12 (2010);
accord Reilly, 20 Mich. Telecomms. & Tech. L. Rev.
at 256. Applicants typically do not amend the

6
specifications description of the claimed invention,
however, in part because the Patent Act prohibits
changes to the specification that would introduce
new matter.
35 U.S.C. 132(a).
Thus, the
specification generally describes the claims before,
not after, any amendments.
The record of the examination, also known as the
prosecution history, becomes part of the public
record. See Phillips v. AWH Corp., 415 F.3d 1303,
1317 (Fed. Cir. 2005) (en banc). The PTO makes the
prosecution history available on its public Patent
Application Information Retrieval website, at
http://portal.uspto.gov/pair/PublicPair.
B. The Asserted Patents
This case concerns three patents that seek to
protect computers from malicious software, or
malware. C.A. App. 421. According to the patents
common specification, malware programs often
succeeded in infecting computers because the
computers resources were shared by programs
simultaneously, giving a malware program a conduit
to access and corrupt other programs. C.A. App. 423
(5:4044). The proposed solution was to eliminate
that conduit by separating the computers memory
into distinct areas, such that a malicious program
could not access or infect other programs. See C.A.
App. 424 (7:14).
Because that simple concept had long been
known, respondents secured allowance of their
claims only by limiting their scope. Among other
things, the patent claims were limited to segregating
components of a computers hardware (as opposed to

7
software). The computers key system files would
operate on a processor with access to one memory
region, while any network-interface software would
operate on a second processor with access only to a
second memory region. C.A. App. 408; id. at 42526.
Those claims issued as U.S. Patent No. 7,484,247.
See C.A. App. 408.
After failing to license or sell that patented
invention, see C.A. App. 383, respondents
surrendered the original patent in 2010 and filed
reissue applications with different claims.
The
Patent Act authorizes such applications if, among
other things, the patentee claim[ed] more or less
than he had a right to claim in the original patent.
35 U.S.C. 251(a). The examination of a reissue
application is similar to the initial examination, and
such applications must meet all of the requirements
for patentability. See id.
Armed with publicly available information about
Googles Chrome web browser (the product accused of
infringement in this case), the applicants drafted
claims geared toward browsers.
Instead of
separating hardware components, the proposed
claims used discrete software processes. See C.A.
App. 424 (7:14). The computer would execute
trusted processes in the main memory area, while
isolating potentially dangerous processes from the
main computer system in a second area. Id. The
proposed claims referred to the trusted process and
the potentially dangerous process as the first and
second browser process[es]. See C.A. App. 588.
The examiner rejected the claims because they
were not new. In a prior patent application, known

8
as Narin, other inventors had described a virtually
identical method of using software to divide computer
memory.
See C.A. App. 557.
Narin described
allowing a secure application to access untrusted
Internet content by means of a second, non-secure
application, while preventing the non-secure
application from accessing secure memory space. See
C.A. App. 58889.
Respondents
argued
that
Narin
was
distinguishable because their claims were limited to
web browser processes, whereas Narins secure
process was not a web browser process. See C.A.
App. 58792. Narin specified that a browsing
program, and not the secure rendering application,
. . . performs the retrieval of web pages. C.A. App.
591.
The examiner again rejected the claims because
the features upon which applicant relies [to
distinguish Narin] . . . are not recited in the rejected
claims. C.A. App. 70304. In other words, the
claims, as then drafted, encompassed all browser
processes, not only a narrower subset that could
distinguish Narin. Id.
Respondents then amended the claims to require
a first and second web browser process. E.g., C.A.
App. 798. That phrase appeared for the first time in
the amended claimsit is not found in the
specification, and it has no independently known
meaning in the art. The examiner allowed the claims
as amended, granting the three reissue patents at

9
issue
hereNos.
RE43,500,
RE43,529. C.A. App. 70, 96, 123. 1

RE43,528,

and

C. The District Court Proceedings

Respondents sued Google in the U.S. District
Court for the Eastern District of Texas, alleging that
the Chrome web browser infringed.
Drawing on the patents prosecution history, the
district court construed web browser process to
mean a process that can access data on websites.
App. 4344, 10102. The court explained that the
patentees relied on claiming a web browser process
to secure the patents and clarified that, to be
meaningful and consistent with the prosecution
history, the capability of accessing websites must
not require using another web browser process.
App. 4142. That is, each web browser process
must itself be capable of accessing websites directly,
without dependence upon a second process. See id.
If a web browser process could not access the web
itself, but instead could do so only through a separate
web browser, it would be indistinguishable from what
Narin disclosed and the applicants amended the
claims to exclude: a process, not itself a web
browser, that could access the web only through a
separate browsing program. C.A. App. 591.
The parties stipulated that, under the district
courts construction, Chrome did not infringe. App.
10203. Based on that concession, the district court
1 The opinion below discusses a fourth reissue patent,
RE43,103, and an additional term used in that patent; however,
respondents elected to proceed only on claims from the three
patents discussed above. See App. 25; see also id. at 89.

10
entered a final judgment of noninfringement against
respondents. Id. 2
D. The Court Of Appeals Decision
The Federal Circuit reversed. It agreed with the
district court that a web browser process is a
process that can access data on websites. App. 10
11. But it held that a web browser process does not
have to be capable of independently accessing
website data. Instead, in the court of appeals view, a
process could be considered a web browser process
even if it always required the use of a second process
to access website data. App. 1819.
Although the district court derived its
construction largely from the prosecution history, the
Federal Circuit determined the claim terms meaning
without reference to the prosecution history. The
court noted that some claims required the second
browser process to be capable of directly
exchanging data with the network interface and with
the first web browser process. App. 1213. That
language, it reasoned, would be superfluous if a
web browser process must be capable of accessing a
website without using another web browser process.
App. 1213.
Chrome contains a browser kernel that can access the
network and a rendering engine that executes webpage code to
display web pages. Respondents alleged that Chromes browser
kernel is the first web browser process and its rendering
engine is the second web browser process. App. 10203.
These two processes access separate areas of the systems
memory, and the rendering engine has no network access
without the browser kernel. Id. Thus, it is not a web browser
process under the district courts construction of that term.
2

11
The court of appeals noted that this claim
differentiation point would not overcome any
limitations imposed by the prosecution history.
App. 14. That court has repeatedly cautioned that
claim-differentiation is a weak doctrine because
patentees often use different language to capture
the same invention. Atlas IP, LLC v. Medtronic,
Inc., 809 F.3d 599, 607 (Fed. Cir. 2015). Indeed,
claim drafting often involves finding different
expressions to define the same invention. World
Class Tech. Corp. v. Ormco Corp., 769 F.3d 1120,
1126 (Fed Cir. 2014). Thus, differences in word
choice by patent applicants lack the significance
sometimes attributed to similar differences in
legislation. Cf., e.g., Mohamad v. Palestinian Auth.,
132 S. Ct. 1702, 1708 (2012).
Here, however, the Federal Circuit relied solely
on claim differentiation because it determined that
the other interpretive evidencethe prosecution
historydid not unequivocally disavow[] claim
scope.
App. 14 (citation and quotation marks
omitted). According to the Federal Circuit, nothing
from the prosecution history constitutes a clear and
unmistakable disavowal of indirect access of
websites. App. 18. The court ruled that there can be
no clear and unmistakable disclaimer if a
prosecution argument is subject to more than one
reasonable interpretation and that respondents had
offered a reasonable alternative interpretation of
their admission during prosecution. Id. at 1819
(quoting SanDisk Corp. v. Memorex Prods., 415 F.3d
1278, 1287 (Fed. Cir. 2005)).

12
Google petitioned for rehearing en banc, which
the Federal Circuit denied. App. 105.
REASONS FOR GRANTING THE PETITION
I.

A Patents Prosecution History Provides

Vital Context For Construing Otherwise
Ambiguous Claim Language.

A patents prosecution history consists of the

complete record of the proceedings before the PTO.
Phillips, 415 F.3d at 1317. It provides essential
context for ascertaining the scope of a patented
invention, including: claims originally proposed by
the applicant; rejections by the examiner,
amendments made to those claims to secure
allowance; arguments and admissions made by the
applicant; statements by the examiner; and evidence
of the state of the art at the time of the invention.
Although this Court has always deemed that context
to be important to claim construction, panels of the
Federal Circuit have divided over its relevance. As a
result, this Courts guidance is urgently needed to
settle this important, indeed foundational, issue in
patent law.
A. The Federal Circuit Is Deeply Divided
Regarding The Use Of Prosecution
History To Construe Patent Claims.
1. Many Federal Circuit decisions, including the
decision in this case, have restricted the use of
prosecution history to the doctrine of disclaimer
that is, to situations in which there is a clear and
unmistakable disavowal of claim scope. E.g., App.
1819; Invitrogen Corp. v. Clontech Labs., Inc., 429

13
F.3d 1052, 1078 (Fed. Cir. 2005); SanDisk Corp., 415
F.3d at 1286; Rhodia Chimie v. PPG Indus. Inc., 402
F.3d 1371, 1384 (Fed. Cir. 2005); Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1327
(Fed. Cir. 2003); SunRace Roots Enter. Co. v. SRAM
Corp., 336 F.3d 1298, 1306 (Fed. Cir. 2003); York
Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99
F.3d 1568, 1575 (Fed. Cir. 1996).
In this line of cases, the court first identifies a
terms meaning without reference to the prosecution
history. E.g., App. 1314. It then examines the
prosecution history only to determine whether it
contains a clear and unmistakable disclaimer of
that meaning. App. 1819 (quotation mark omitted).
Under this line of cases, [t]he purpose of consulting
the prosecution history in construing a claim is to
exclude any interpretation that was disclaimed
during prosecution. Rhodia Chimie, 402 F.3d at
1384 (citation and quotation marks omitted). When
the prosecution history is subject to more than one
reasonable interpretation, the court disregards it
entirely. E.g., App. 1819; SanDisk, 415 F.3d at
1287. Because the clear-and-unmistakable standard
is high and exacting, Avid Tech, Inc. v. Harmonic,
Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016); Hill-Rom
Servs., Inc,. v. Stryker, 755 F.3d 1367, 1371 (Fed. Cir.
2014), it generally deprives prosecution history of
any weight at all.
Consider, for example, Schindler Elevator Corp.
v. Otis Elevator Co., 593 F.3d 1275 (Fed. Cir. 2010),
which involved the use of an information
transmitter to call an elevator automatically. To
overcome rejection based on prior art references, the

14
applicant had amended the claims and assured the
examiner that it was not necessary that the
information transmitter be in the elevator users
hands to select the desired floor and that the call
commands [we]re pre-programmed to occur
automatically, contactlessly, and independently of
the orientation of the information transmitter. Id.
at 1285.
Accordingly, the district court construed
information transmitter to be a device that
communicates . . . without requiring any sort of
personal action by the passenger.
Id. at 1280
(emphasis added). The Federal Circuit, however,
determined that the prosecution history was not
unequivocal, refused to give it any weight, and held
that the claimed information transmitter could
require action by the passenger. Id. at 128386.
A separate line of cases takes a more contextual
approach to prosecution history, recognizing that
prosecution history provides relevant and important
context for resolving ambiguity in claim language
even when there is no clear disavowal of claim
scope. Nystrom v. TREX Co., 424 F.3d 1136, 1145
(Fed. Cir. 2005); see also Fenner Invs., Ltd. v. Cellco
Pship, 778 F.3d 1320, 1323 (Fed. Cir. 2015);
Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc.,
731 F.3d 1271, 1276 (Fed. Cir. 2013); Bd. of Regents
of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d
1362, 1369 (Fed. Cir. 2008); Jansen v. Rexall
Sundown, Inc., 342 F.3d 1329, 133334 (Fed. Cir.
2003); Amhil Ents. Ltd. v. Wawa, Inc., 81 F.3d 1554,
155960 (Fed. Cir. 1996).

15
These cases recognize that, when a claim term is
unclear, prosecution history is the best and often the
only reliable evidence of how the inventor
understood the invention. BENQ, 533 F.3d at 1369
(quoting Phillips, 415 F.3d at 1317). That is so
because it was created by the patentee in
attempting to explain and obtain the patent.
Fenner, 778 F.3d at 1325 (quoting Phillips, 415 F.3d
at 1317). Under this line of cases, [a]ny explanation,
elaboration, or qualification presented by the
inventor during patent examination is relevant to
claim construction.
Fenner, 778 F.3d at 1323
(citation and quotation marks omitted).
2. The Federal Circuits internal conflict on this
issue has been well known for more than a decade.
As one commentator explained, [s]ome Federal
Circuit decisions provide that claim terms shall be
given their ordinary meaning and that the
prosecution history can only change that meaning
through a clear and unmistakable disavowal of the
plain meaning. Other cases do not apply such a
stark rule, instead using the prosecution history as a
source of evidence to find the right meaning in the
context of the invention.
Federal Circuit Bar
Association,
Guidelines
for
Patent
Claim
Construction: The Basics of a Markman Hearing, 14
Fed. Cir. B.J. 771, 782 (2005); see also Michael
Dergosits & John Imperato, Patent Drafting in View
of Recent Case Law on Claim Construction, 5 Intell.
Prop. L. Bull. 1, 23 (2000).
More than ten years ago, the Federal Circuit had
an opportunity to resolve this disagreement when it
convened en banc to opine on proper claim

16
construction principles. See Phillips, 415 F.3d 1303.
Although the en banc court recognized the
importance of prosecution history, see id. at 1317, it
was evidently unable to agree on the question
presented here, and its division has persisted. See
Stephanie Ann Yonker, Post-Phillips Claim
Construction: Questions Unresolved, 47 IDEA 301,
324, 330 (2007); Reilly, 20 Mich. Telecomm & Tech.
L. Rev. at 25960.
Many decisions, like the one in this case,
continue to hold that the purpose of consulting the
prosecution history in construing a claim is to
exclude any interpretation that was disclaimed
during prosecution.
E.g., AIA Engg Ltd. v.
Magotteaux Intl S/A, 657 F.3d 1264, 1277 (Fed. Cir.
2011) (citation and quotation marks omitted);
Schindler Elevator Corp., 593 F.3d at 1285; Verizon
Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1306 n.6 (Fed. Cir. 2007); Research Plastics,
Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1296
(Fed. Cir. 2005).
In contrast, other decisions have recognized the
importance of prosecution history, as relevant
context, even when it does not rise to the level of a
clear and unmistakable disclaimer. See, e.g., GPNE
Corp. v. Apple, Inc., No. 2015-1825, 2016 WL
4073323, at *34 (Fed. Cir. Aug. 1, 2016) (treating
prosecution history as relevant and not requiring
clear disclaimer of claim scope); Wi-LAN USA, Inc. v.
Apple. Inc., F.3d , No. 2015-1256, 2016 WL
4073324, at *9 (Fed. Cir. Aug. 1, 2016) (We turn
next to viewing the patent as a whole as well as the

17
prosecution history to glean clues as to the claim
terms meaning.).
For example, another panel held, shortly after
the decision in this case, that proper interpretive
principles do not require explicit redefinition or
disavowal. Trustees of Columbia Univ. v. Symantec
Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016). The
contrast between the two decisions led the leading
intellectual-property blog to highlight the conflict:
Symantec appears roughly [to] follow the
suggestions outlined by Google in its rehearing
petition in this case, and the two panels reached a
different result. Dennis Crouch, Strictly Construing
Amended Claims Against the Patentee, Patently-O,
available at http://patentlyo.com/patent/2016/02/
strictly-construing-patentee.html (Feb. 4, 2016).
The Federal Circuits longstanding divide on
claim construction methodology is, by itself, sufficient
reason to grant the petition. As this Court has held,
the public needs to know the scope of exclusive
patent rights with reasonable certainty. Nautilus,
134 S. Ct. at 2124. Yet parties are left to guess as to
the weight the Federal Circuit might give the
prosecution history in any given case. Yonker, 47
IDEA at 324, 330; see also Reilly, 20 Mich. Telecomm
& Tech. L. Rev. at 25960. Without even knowing
what interpretive principles the Federal Circuit will
apply, there can be nothing resembling reasonable
certainty.
That is an enormous problem not just for
litigants, but for the public at large. Inventors and
manufacturers need to be able to determine the scope
of a patent right when they design new products or

18
decide whether to pay for a license to a patent, and
most disputes over patent rights never reach
litigation. Of those that do, the vast majority settle
in the district courts, in part because of the high cost
of patent litigation. See, e.g., John R. Allison, Mark
A. Lemley, & Joshua Walker, Patent Quality and
Settlement Among Repeat Patent Litigants, 99
Georgetown L.J. 677, 689 (2011). Only a minority of
the cases litigated to final judgment in district court
ultimately result in an appellate opinion. Price
Waterhouse Cooper, 2015 Patent Litigation Study: A
Change in Patentee Fortunes 19 (2015), available at
https://www.pwc.com/us/en/forensic-services/
publications/assets/2015-pwc-patent-litigationstudy.pdf.
As a result, cases that actually go to litigation,
reach the appellate stage, and result in published
opinions are the tip of the iceberg. It is a large tip, as
shown by the many conflicting Federal Circuit
opinions on point. And the size of that tip should
leave no doubt that the overall scope of uncertainty
engendered by the Federal Circuits internal
divisioni.e., its inability to articulate and apply
consistent claim construction principles across
caseswarrants this Courts review.
B. The Federal Circuits Disclaimer-Only
Standard Is Contrary to This Courts
Decisions.
Another reason to grant review is that the
Federal Circuits prevailing view, exemplified in the
decision below, is contrary to this Courts claimconstruction jurisprudence.
This Court has

19
recognized that claim terms must be construed in
light of all the intrinsic evidence, specifically
including the prosecution history. See, e.g., Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,
535 U.S. 722, 733 (2002) (requiring that the claims
of a patent be interpreted in light of the proceedings
in the PTO during the application process). Indeed,
this Court has long stressed that [c]laims as allowed
must be read and interpreted with reference to
rejected ones. Graham, 383 U.S. at 33 (emphasis
added); accord Schriber-Schroth Co. v. Cleveland
Trust Co., 311 U.S. 211, 22021 (1940). In keeping
with those precedents, commentators have long
understood that when a claim is ambiguous, the
entire field of inquiry is open. W. Robinson, The
Law of Patents for Useful Inventions, 845 at 501
(1890).
The same interpretive approach applies in all
other areas of law. When construing ambiguous
terms in statutes and contracts, for example, courts
routinely consult all of the intrinsic evidence, without
imposing a heightened barrier to consideration of
some such evidence. See e.g., M & G Polymers USA,
LLC v. Tackett, 135 S. Ct. 926, 936 (2015). Of course,
there are limits on the consideration of extrinsic
evidence in contract cases. See, e.g., id. at 938
(Ginsburg, J., concurring); Teva Pharmaceuticals
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015).
But treating some of the intrinsic record as
disfavored, even when construing ambiguous
language, appears to be reserved to a subset of
Federal Circuit judges in patent cases.

20
C. The
Disclaimer-Only
Standard
Undermines
The
Public
Notice
Function Of Claims And Produces
Overbroad Constructions.
Nothing about prosecution history warrants
disfavored status. To the contrary, the context
provided by the prosecution history bolsters the
public-notice function of claims by clarifying the
meaning of otherwise ambiguous claim language.
See, e.g., Universal Oil Prods. Co. v. Globe Oil &
Refining Co., 322 U.S. 471, 48485 (1944). That is
true whether or not the prosecution history rises to
the level of a clear and unmistakable disclaimer or
like other interpretive evidenceprovides important
context short of that high and exacting (p. 14,
supra) barrier.
After all, the patent applicant and the PTO
create the prosecution history in the course of, and
for the very purpose of, explaining the claimed
invention and its scope. (In that regard, prosecution
history differs from legislative history. A court using
legislative history seeks to divine the thoughts of an
entire body of people based on statements made by
individual members of that body or their staffers. In
contrast, the prosecution history directly reflects the
contemporaneous understanding and intent of the
applicant who drafted and sought the patent claim as
well as the PTO examiner who approved the claim.)
Admissions are treated as especially reliable
evidence in other areas of the law. E.g., Fed. R. Evid.
801(d)(2) (party admissions excluded from hearsay
rules). Similarly, contemporaneous impressions are
favored over those arrived at in hindsight. See, e.g.,

21
Fed. R. Evid. 803(1)(3). Admissions in prosecution
history represent contemporaneous intention of the
inventor, Albert H. Walker, Text-book of the Patent
Laws of the United States of America, 187 at 146
(1887), not a later position taken in full hindsight
and with a view toward covering an accused product.
Prosecution history is especially critical in
interpreting disputed claim terms where, as here,
the term in question has no well-known meaning or
definition in the specification. Sunovion Pharms.,
731 F.3d at 1276; see also Peter S. Menell et al.,
Patent Claim Construction: A Modern Synthesis and
Structured Framework, 25 Berkeley Tech. L.J. 711,
723 (2010).
As discussed above, a patents
specification generally reflects the scope of the claims
beforenot afteramendment. See p. 6, supra.
Especially when claim terms are added by
amendment to overcome rejection, the prosecution
history provides the most relevant context for
interpreting newly added terms.
By discounting this important context, the
Federal Circuits clear-and-unmistakable-disclaimer
approach undermines the public-notice function of
claims, casts doubt on the reasons the applicant gave
the examiner for issuing the patent in the first place,
and thereby skews the interpretive analysis in favor
of overbroad constructions. The resulting harm to
public notice is particularly acute in software-patent
cases. Software inventions are often more malleable
than many other types of inventions. Julie E. Cohen
& Mark A. Lemley, Patent Scope and Innovation in
the Software Industry, 89 Cal. L. Rev. 1, 48 (2001).
As a result patentees are prone to use terms without

22
a well-known meaning in the artor even, as here, a
basis in the specification. The disclaimer approach
thus robs courts of the evidence most likely to explain
the meaning of the terms in context.
This Court has reversed Federal Circuit rules
that impose similarly artificial limitations on the
consideration of relevant evidence. E.g., Octane
Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.
Ct. 1749 (2014); KSR Intl Co v. Teleflex Inc., 550 U.S.
398, 406 (2007). It should do so again here.
II. Amendments Made To Overcome Rejection
Should Be Strictly Construed Against
Applicants.
For the reasons discussed above, courts should
always consider the prosecution history when
construing otherwise ambiguous claims. That is true
whether the prosecution history takes the form of
either an argument to the examiner or an
amendment of the claim language. Where, as here,
the relevant prosecution history involves an
amendment made to overcome disallowance, the
Federal Circuits disclaimer standard conflicts with
this Courts decisions for an additional reason: it
does not construe the claims ambiguity against the
applicant.
1. This Court has long held that amendments
made to overcome disallowance must be strictly
construed against the inventor and in favor of the
public. Hubbell v. United States, 179 U.S. 77, 84
(1900); accord Exhibit Supply Co., 315 U.S. at 137;
Smith v. Magic City Kennel Club, Inc., 282 U.S. 784,
790 (1931). This is a species of the broader rule that

23
any ambiguity or doubts are generally construed
against the drafter, especially in the case of a public
grant of property rights, as acts of this character are
commonly prepared by those interested in the
benefits to be derived from them. Broad River
Power Co. v. S. Carolina ex rel. Daniel, 281 U.S. 537,
548 (1930).
Any other rule, the Court has explained, would
allow the inventor to avoid the PTOs gatekeeping
role and seek to recapture in an infringement action
the very subject matter surrendered as a condition of
receiving the patent. Festo, 535 U.S. at 734; see also
Smith, 282 U.S. at 789. Specifically, after a patent
examiner allows a claim based on one understanding
of a narrowing amendment, a patentee mightas
respondents
did
hereespouse
a
broader
interpretation in litigation.
In stark contrast to this Courts strictconstruction standard, the Federal Circuit has
adopted the opposite rule by presuming there was no
disclaimer unless (and only to the extent that) the
applicant clearly and unmistakably manifested an
intent to limit claim scope. E.g., App. 18; see also 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d
1315, 1325 (Fed. Cir. 2013); Schindler, 593 F.3d at
1285; Paragon Solutions, LLC v. Timex Corp., 566
F.3d 1075, 108586 (Fed. Cir. 2009).
Thus, for example, if an amendment made to
overcome disallowance could be construed in one of
two ways, each equally consistent with the
interpretive evidence, the Federal Circuit presumes
no disclaimer and chooses the broader interpretation.
Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1371

24
(Fed. Cir. 2003); see also App. 19 (electing broader
interpretation of web browser process because
respondents offered a reasonable alternative
interpretation); Vederi, LLC v. Google, Inc., 744 F.3d
1376, 1384 (Fed. Cir. 2014), cert. denied, 135 S. Ct.
2856 (2015); Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327, 1332 (Fed. Cir. 2004) (choosing
broader of two reasonable interpretations of
amended claim language). In Kumar, for example,
the court of appeals described the record before the
PTO as confusing and held that the surrender is
not clear and convincing as required by our cases.
351 F.3d at 1371. A strict construction would hold
such an ambiguity against the applicant responsible
for the confusing claim amendment, not against the
public.
The Federal Circuit has occasionally suggested
that an amendment made to overcome rejection is
entitled to weight and might suffice to demonstrate
a clear disavowal. BENQ, 533 F.3d at 1369; see also
Amgen, 314 F.3d at 1327; Jansen, 342 F.3d at 1333.
As explained above, however, it has given weight to
such amendments only to the extent that they clearly
and unmistakably narrow a claims meaning.
Indeed, the Federal Circuit has gone so far as to
reject a narrower construction simply because the
prosecution history was not necessarily inconsistent
with a broader construction. W.E. Hall Co. v.
Atlanta Corrugating, LLC, 370 F.3d 1343, 1352 (Fed.
Cir. 2004) (emphasis added).
As the leading patent-law blog has recognized,
the Federal Circuit has strayed significantly from
this Courts precedent on this point. Dennis Crouch,

25
Google Looks to Narrow both Copyrights and Patents
through Supreme Court Action, Patently-O (Jan. 13,
2015), at http:// patentlyo.com /patent/2015 /01/
copyrights-through-supreme.html; see also John D.
Vandenberg, We Need Another Phillips To Explain
Plain
Meaning,
Law360,
available
at
http://www.law360.com/appellate/articles/824008
(noting that this Court and the Federal Circuit are in
clear disagreement on whether claim amendments
[are] strictly construed against the patent owner).
By resolving ambiguities in favor of the patentee and
against the public, the Federal Circuits clear-andunambiguous
standard
for
disclaimer
is
unmistakably in conflict with the Supreme Courts
earlier guidance. Joshua D. Sarnoff, The Doctrine of
Equivalents and Claiming the Future after Festo, 14
Fed. Cir. B.J. 403, 445 (2004).
Some judges and scholars have mused that the
Federal Circuit should impose a rule of strict
construction for claim language generally. See, e.g.,
3M Innovative Props., 725 F.3d at 1336 (Plager, J.,
concurring) (ambiguity should be construed against
the draftsman); Dan L. Burk & Mark A. Lemley,
Quantum Patent Mechanics, 9 Lewis & Clark L. Rev.
29, 54 (2005) (proposing narrowly construing claims
against the drafter). That discussion of whether to
start applying a strict-construction rule shows how
far the Federal Circuit has drifted from this Courts
precedents. A good place to start would be the strictconstruction rule this Court already adopted.
2. This issue is exceptionally important because
the clear-and-unmistakable standard leads to
gamesmanship during the patent examination

26
process. As discussed above, patent examination
manuals encourage applicants to file claims that are
as broad as possible and then amend them as
necessary to secure allowance. See p. 5, supra. As a
matter of standard practice, applicants also avoid
making a written record on the intended effect of,
and reasons for, claim amendments. See, e.g., Todd
R. Miller, The Doctrine of Prosecution Disclaimer in
Construing Patent Claims, 86 J. Pat. & Trademark
Off. Socy 931, 953 (2004) (the less said, the better);
Thomas C. Fiola & Jon E. Wright, Preparing and
Prosecuting a Patent That Holds Up in Litigation 28
(2006) (One of the hallmarks of a bullet-proof
patent is a silent prosecution history.).
That is a viable strategy because claim
amendments are negotiated between applicants and
examiners
during
telephonic
or
in-person
interviews. Mark A. Lemley & Kimberly A. Moore,
Ending Abuse of Patent Continuations, 84 B.U. L.
Rev. 63, 67-68 (2004); George W. Jordan, III,
Prosecution Disclaimers 7-8 (2004). Because such
interviews are not recorded, and because examiner
records of interviews almost never include any useful
information, interviews are often thought by
practitioners as a way to explain the invention (and
perhaps make concessions) without creating
prosecution history that binds the applicant in later
litigation. Lemley & Sampat, 2010 Stan. Tech. L.
Rev. 2 15.
In other words, the less said in the prosecution
history, the easier it is to secure a claim based on a
narrower understanding of the claim scope, but later
advocate a broader construction in court. This Court

27
adopted strict construction for the very purpose of
preventing such gamesmanship by construing
ambiguities against the applicant. See p. 23, supra.
But the Federal Circuits clear-and-unmistakable
standard has the opposite effect, as patent applicants
have every reason to seek broad claims, amend them
as necessary to secure allowance, and avoid putting
anything clear in the record concerning an
amendments meaning. The patentee can then seek a
broader construction in court, making a mockery of
the PTOs examination process.
The Federal Circuits decision in Omega
Engineering v. Raytek Corp., 334 F.3d 1314 (Fed. Cir.
2003), exemplifies this common practice. There, the
patent applicant had several telephone interviews
with the examiner over the course of a week,
resulting in an amendment adding the word only to
certain claims. Id. at 1331. In the record, the
applicant made only a cryptic statement that the
amendment was [r]esponsive to numerous telephone
conversations with the Examiner. Id. The applicant
offered no other reason for the amendment. See id.
Because the record was at best ambiguous on the
amendments effects and reasons, the Federal
Circuit held that the amendment did not clearly
disavow claim scope. Id.
That case is by no means an outlier. Scholars
have noted the relative ease in which one may find
an ambiguity in the prosecution history so as to avoid
prosecution disclaimer. Todd R. Miller, 86 J. Pat. &
Trademark Off. Socy at 945. Allowing patentees to
exploit such ambiguities in court undermines the
integrity of the PTOs examination process by

28
making examiners efforts to confine patent claims to
actual innovation much more difficult, if not futile.
3. This Court invited the Governments views on
this question in Google Inc. v. Vederi, LLC, 135 S. Ct.
1021 (2015).
Without disputing the exceptional
importance of the question, the Government
recommended denial based on an unusual position on
the merits. Faced with this Courts and the Federal
Circuits diametrically opposed standards, the
government opined that both courts actually follow a
third standard, under which a court applies ordinary
construction principles (construing claims as if they
had not been amended), determines what it thinks an
applicant had to surrender in order to distinguish a
prior art reference, and then carves out that subject
matterbut no morefrom the claim. See Br. for
United States as Amicus Curiae, Google, Inc. v.
Vederi, LLC, No. 14-448, 2015 WL 2395404, at *6, 9
(May 19, 2015). Because neither this Court nor the
Federal Circuit has ever articulated that third test,
the governments advocacy of it only underscores the
need for this Court to consider and resolve the
question.
What is more, the Federal Circuit has squarely
rejected the Governments test:
under its law,
patentees may not assert that claims should be
interpreted as if they had surrendered only what
they had to. Norian Corp. v. Stryker Corp., 432 F.3d
1356, 136162 (Fed. Cir. 2005); see also MarcTec,
LLC v. Johnson & Johnson, 394 F. Appx 685, 687
(Fed. Cir. 2010); Atofina v. Great Lakes Chem. Corp.,
441 F.3d 991, 998 (Fed. Cir. 2006). Instead, as
discussed above, the Federal Circuit has adopted a

29
strong presumption against disclaimer: faced with
two reasonable constructions of an ambiguous
amendment, the court chooses the broader one. 3M
Innovative Props., 7254 F.3d at 1325. There is no
sense in which such liberal construction is the strict
construction called for by this Court.
Merits positions aside, the question is
exceptionally important, the conflict is manifest, and
this Courts review is warranted.
III. This Case Provides A Good Vehicle For
Considering These Important Issues.
This case illustrates the importance of both
questions presented.
Respondents overcame the
examiners rejection by amending the claims to
require a first and second web browser process.
The applicants coined that termit has no ordinary
meaning in the computer field. And the patents
specification does not use the term. Thus, as the
source of the disputed term, the prosecution history
provides by far the best evidence of the terms
meaning.
As discussed above, the applicants limited the
claims to the use of a web browser process for the
express purpose of distinguishing Narins secure
process, which could access the web only through
another process. See p. 8, supra. Indeed, the
applicants emphasized that their claimed invention
differed from Narins precisely because Narins
secure process may call upon a general-purpose
browsing program to perform the web browsing,
instead of independently accessing the web itself.
C.A. App. 590.

30
Thus, the district court correctly held that, to be
consistent with the prosecution history, a web
browser process must be capable of independently
accessing website data. App. 42. Otherwise, it would
be indistinguishable from the browsers that Narin
disclosed and the applicants distinguished in order to
secure the claims.
The Federal Circuits opposite conclusion rests
on its rejection of the prosecution history under the
clear-and-unmistakable standard. Without looking
to the prosecution history, the court adopted a
presumed construction based on the slenderest of
reedsits claim-differentiation doctrine, which, as
that court has repeatedly acknowledged, is weak
because patent applicants typically include numerous
claims that use different words to say the same
thing. See p. 11, supra. The court then declined to
give any weight to the prosecution history based on
its determination that the record was not clear and
unambiguous. App. 1819. In doing so, the court
construed the term web browser process to include
Narins browsersexactly what the applicants
distinguished to secure allowance in the first place.
That result illustrates a key problem with
limiting prosecution history to a rigid, clear-andunmistakable-disclaimer analysis.
Under that
approach, courts give no weight at all to an
important source of contextual evidence in most
cases. Commentators have noted a decrease in the
use of prosecution history over time. J. Jonas
Anderson, Peter S. Menell, Informal Deference: A
Historical, Empirical, and Normative Analysis of
Patent Claim Construction, 108 Nw. U. L. Rev. 1, 44

31
45 (2013); accord Reilly, 20 Mich. Telecomm. & Tech.
L. Rev. at 25960. No need to wonder why: for
courts following the Federal Circuits disclaimer
analysis, there is often no reason to cite prosecution
history, because the prosecution history typically
contains some ambiguity. There is no reason to allow
patent applicants to benefit from their own
ambiguity, especially considering that they are the
ones who failed to make a clear record of the
intended meaning and effect of their own
amendments.
Overbroad patent claims are a plague, especially
in the vital and growing high-tech sector. See, e.g.,
Enzo Biochem., Inc. v. Applera Corp., 605 F.3d 1347,
1349 (Fed. Cir. 2010) (Plager, J., dissenting from
denial of rehg). Such claims block others from
innovating. See U.S. Dept of Commerce, Patent
Reform: Unleashing Innovation, Promoting Economic
Growth & Producing High-Paying Jobs 1, 5 (2010);
Christopher R. Leslie, The Anticompetitive Effects of
Unenforced Invalid Patents, 91 Minn. L. Rev. 101,
11329 (2006). And the increased threat of damages
or an injunction can drive up prices and decrease the
availability of innovative products and services to the
public.
All of this plays into the hands of entities that
buy patents and then use litigation or the threat of
litigation to extract settlements from alleged
infringers. See Halo Elecs., Inc. v. Pulse Elecs., Inc.,
136 S. Ct. 1923, 1935 (2016). As the Federal Trade
Commission has observed, patent assertion entities
obtain overbroad, vague claims they may assert
against a broad range of products or activities. They

32
wait for others to do the hard work of developing
applications, and then sue the real innovators. See
Fed. Trade Commn, The Evolving IP Marketplace 8
9, 5051, 6061 (Mar. 2011), available at
http://www.ftc.gov/os/2011/03/110307patent
report.pdf. One study estimated that the direct cost
of such suits totaled $29 billion in a single year.
James Besson & Michael J. Meurer, The Direct Costs
from NPE Disputes, 99 Cornell L. Rev. 387, 387
(2014). Another study demonstrated that entities
sued by patent-assertion entities substantively
reduce their innovative activity. Lauren Cohen,
Umit G. Gurun, & Scott Duke Kominers, Patent
Trolls: Evidence from Targeted Firms, National
Bureau of Economic Research Working Paper No.
20322, at 33 (Apr. 24, 2016), available at
http://www.hbs.edu/faculty/Publication%20Files/15
-002_1d86bb91-630b-43b9-949d-16cfa36a5f58.pdf.
The result is that patent-assertion entities nuisance
suits stand to crowd out socially valuable innovation
. . . without any measurable social gains. Id. at 34.
The Federal Circuits jurisprudence exacerbates
these problems through the uncertainty caused by its
internal divisions and by placing the risk of
ambiguity on the public instead of the patent
applicant. For these reasons, and because of the
overriding importance of claim scope, this Courts
review is warranted.

33
CONCLUSION
Googles petition for a writ of certiorari should be
granted.
Respectfully submitted,
DARYL L. JOSEFFER
Counsel of Record
JOSHUA N. MITCHELL
KING & SPALDING LLP
1700 Pennsylvania Ave., NW
Washington, DC 20006
(202) 737-0500
djoseffer@kslaw.com
ADAM M. CONRAD
KING & SPALDING LLP
100 N Tryon St., Suite 3900
Charlotte, NC 28202
(704) 503-2600
Counsel for Petitioner

APPENDIX

App-i
TABLE OF APPENDICES
Appendix A
Opinion of the United States Court
of Appeals for the Federal Circuit
(Nov. 17, 2015) ............................................ App-1
Appendix B
Memorandum and Order of the
United States District Court for the
Eastern
District
of
Texas
(Aug. 28, 2014) .......................................... App-25
Appendix C
Judgment of the United States
District Court for the Eastern
District of Texas (Dec. 2, 2014) .............. App-100
Appendix D
Order Denying Rehearing En Banc
of the United States Court of
Appeals for the Federal Circuit
(April 11, 2016) ....................................... App-104

App-1
Appendix A
(Nov. 17, 2015)

United States Court of Appeals

Federal Circuit
________________
ALFONSO CIOFFI, THE ESTATE OF ALLEN
FRANK ROZMAN,
Plaintiffs-Appellants,
v.
GOOGLE, INC.,
Defendant-Appellee.
________________
2015-1194
________________
Appeal from the United States District Court for the
Eastern District of Texas in
No. 2:13-cv-00103-JRG-RSP,
Judge J. Rodney Gilstrap.
________________
Decided: November 17, 2015
________________
ERIC W. BENISEK, Vasquez, Benisek & Lindgren,
LLP, Lafayette, CA, argued for plaintiffs-appellants.
Also represented by ROBERT MCARTHUR.
STEPHANIE SKAFF, Farella Braun & Martel LLP,
San Francisco, CA, argued for defendant-appellee.
Also represented by EUGENE Y. MAR,
ANDREW P. NGUYEN.

App-2
Before OMALLEY, PLAGER, and BRYSON,
Circuit Judges.
OMALLEY, Circuit Judge.
Alfonso Cioffi and The Estate of Allen Rozman
(collectively Appellants or Cioffi) filed suit against
Google, Inc. (Appellee or Google) on February 5,
2013 in the Eastern District of Texas alleging that
the Google Chrome web browser (the Accused
Products) infringed four reissue patents: U.S. Patent
Nos. RE43,103 (the 103 patent); RE43,500 (the
500 patent); RE43,528 (the 528 patent); and
RE43,529 (the 529 patent). The district court
construed several disputed terms of the four patentsat-issue. Based on these constructions, the district
court held claim 21 of the 103 patent to be invalid as
indefinite, and the parties stipulated to noninfringement of all of the other asserted claims.
On appeal, Cioffi challenges the construction of
two terms: (1) web browser process and (2) critical
file. Cioffi disputes the district courts construction
of the first term as erroneously requiring a direct
access capability and the second term as erroneously
including critical user files, which renders the term
indefinite. Because we agree that the district court
erred in construing both of these terms, we reverse
the district courts claim construction and remand for
further proceedings.
I.

BACKGROUND

A. The Reissue Patents

The four patents-at-issue are reissue patents
originating from a patent issued as U.S. Patent No.

App-3
7,484,247 (the 247 patent) on January 27, 2009.
That patent, entitled System and Method For
Protecting A Computer System From Malicious
Software, was directed to a way of protecting a
computer from malware by segregating the suspected
malware and directing it to execute and reveal itself
in a safe, isolated part of the computer. In March
2010, thirteen months after the 247 patent issued,
Cioffi surrendered the patent pursuant to 35 U.S.C.
251 and sought reissue claims. The resulting four
reissue patents-at-issue have the same abstract and,
along with the 247 patent, share substantially
identical specifications.
The
patents-at-issue
describe
computer
processes, separated either logically or physically
(using separate processors), into first and second
browser processes. Potential malware downloaded
from the Internet is directed to execute within the
second browser process, but is not allowed to
execute outside of the second browser process.
Thus, the potential malware is insulated from and
cannot damage any other aspect of the computers
systems, including memory space accessible by the
first browser process.
Figure 1 of the 528 patent (shown below)
illustrates one preferred embodiment, involving two
physically separate processors: (1) a first web
browser process executed within first processor 120
with access to important files stored in first
memory space 110, and (2) a second web browser
process executed within second processor 140 with
access to its own expendable memory space 130.
Untrusted content downloaded from the Internet is

App-4
executed in the second web browser process running
in 140, where it cannot damage important files
stored in first memory space 110.

528 patent fig. 1.

During prosecution, the examiner initially
rejected all of the claims of the applications that
ultimately issued as the 500, 528, and 529 patents
(the 500, 528, and 529 patent applications)
under 35 U.S.C. 102(b) in view of U.S. Patent
Application No. 2002/0002673 (Narin). J.A. 212-14.
The examiner determined that Narin taught a
method of operating a computer system with a first
logical process capable of accessing data in a first
memory space and a second logical process capable
of accessing data in a second memory space. Id. The
examiner found that the second logical process of
Narin hosts non-secure software objects, and the
data residing in the first memory space is protected
from corruption by malware downloaded from the
network and operating as part of the second
logical process. Id.
Cioffi responded with the argument that
Narin teaches away from the closed process

App-5
[corresponding to the first browser process] being a
browser process. J.A. 256. In other words, Cioffi
argued that Narin is distinguishable from the
claimed invention because Narin does not allow a
browser program to be a part of the secure
application, which Cioffi describes as a first
browser process.
On November 14, 2011, the examiner issued a
Final Rejection Office Action maintaining its
rejection of all the claims of the 500, 528, and 529
patent applications. The, the examiner stated that:
Despite the Applicants arguments that the
claimed browser is a web browser, the
specification . . . describe[s] the first logical
process as being a video game and
including but not [being] limited to a word
processor, respectively. According to the
Applicants specification, the claimed first
logical process or first browser process could
include a web browser, such as Internet
Explorer or Netscape; a video game; or a
word processor. At the very least, the prior
arts disclosure reads on the Applicants
video
game
and
word
processor
interpretations of browser. . . . It is noted
that features upon which applicant relies,
such as the first browser process accessing
Internet sites and/or data, are not recited in
the rejected claims.
Id. at 285-6 (6-8).
In response, Cioffi amended all of the pending
claims of the 500, 528, and 529 patent

App-6
applications to narrow the first and second
browser process to the first and second web
browser process. J.A. 798-810. Cioffi also added a
limitation, capable of accessing data of a website
via the network, to the first web browser process.
J.A. 314. Cioffi then explained, Narin fails to
disclose . . . a first web browser process capable of
accessing data of a website via a network of one or
more computers (e.g., the internet). J.A. 332. The
examiner allowed the claims.
B. Procedural History
On February 5, 2013, Cioffi filed suit against
Google asserting infringement of the 500, 528, 529,
and 103 reissue patents by the Google Chrome web
browser available for the Windows, Mac, Android,
and Linux operating systems. The claims originally
asserted were:
500 patent: claims 21, 23, 25, 29, 30, 31,
32, 37, 38, 39, 41, 42, 43, 52, 66, 67 and 70.
528 patent: claims 1, 2, 5, 21, 23, 25, 30,
44, 46, 52, 53, 55, 57, 58, 64, 65, 66, 67
and 70.
529 patent: claims 21, 23, 28, 30, 36, 38, 45,
and 49.
103 patent: claim 21.
Cioffi v. Google Inc., 2:13-cv-103, 2014 U.S. Dist.
LEXIS 123760, *8 (E.D. Tex. Aug. 28, 2014).
Following a Markman hearing, the district court
issued its Claim Construction Order on August 28,
2014. Id.

App-7
The district court adopted its preliminary
construction of web browser process as a process
that can access data on websites. Id. at *21. The
court found that Cioffi had distinguished Narin
during patent prosecution by arguing that Narin
discloses a secure or closed application that
controls a separate process that runs an open or
untrusted application, and that the secure
application cannot be a web browser. Id. at *14-15.
The court noted that, in response to the examiners
rejection stating that the features relied upon to
overcome Narin were not recited in the claims, Cioffi
amended the claims to add web before browser
and capable of accessing data of a website via the
network before first web browser process. Id. at
*17. The court found that the patentees relied on the
added web limitation to overcome the examiners
rejection, and that reliance should be given effect by
requiring that the web browser process is capable of
accessing data on websites. Id. at *18-19.
The district court then addressed a statement
that Google made at the Markman hearing that it
would agree to the courts preliminary construction
with an understanding that the claim term requires
direct access to website data. While the court did
not seek further briefing or argument on this issue, it
did address it. The court stated that introducing the
word direct would confuse rather than clarify the
scope of the claims, but continued:
To be clear, can in the Courts construction
does not mean must and instead refers to a
capability. For this capability to be
meaningful and consistent with the

App-8
prosecution history, however, a web browser
process must be capable of accessing a
website without using another web browser
process. In other words, although the Courts
construction does not preclude a web
browser process from accessing websites by
using another web browser process, a web
browser processs capability of accessing
websites must not require using another web
browser process.
Id. at *20-21 (emphasis in original)
The district court also adopted its preliminary
finding that the term critical file from the 103
patent is indefinite, and held, therefore, that claim
21 of the 103 patent is invalid. The court found that
references to critical user files found in the
specification and prosecution history suggest that the
term critical file includes critical user files. Id. at
*60. It held that what is critical to a user is entirely
subjective, and that critical file, therefore, fails to
inform a person of skill in the art about the scope of
the invention with reasonable certainty under
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120, 2122 (2014). Id. at *61.
The parties filed objections to aspects of the
Claim Construction Order. Cioffi then served its
Final Election of Asserted Claims, in which it
narrowed the asserted claims to:
500 patent: claims 21, 30, 32, 39, 43, 66,
and 70
528 patent: claims 5, 21, 23, 30, 44, 64,
and 67

App-9
529 patent: claims 23, 30, 36, 38, 45, and 49
See Final Judgment at 2-3, Cioffi, 2014 U.S. Dist.
LEXIS 123760 (2:13-cv-103), ECF No. 104. The
district court overruled the parties objections. Order,
Cioffi, 2014 U.S. Dist. LEXIS 123760 (2:13-cv-103),
ECF No. 97.
The parties then agreed that, based on the
courts claim constructions, Cioffi could not prevail on
the issue of infringement. Cioffis First Amended
Infringement Contentions had identified the browser
kernel of the Accused Products as reading on the
first web browser process of the asserted claims
and the rendering engine of the Accused Products
as reading on the second web browser process of
the asserted claims. The district court found that
the rendering engine of the Accused Products is not
capable of and cannot access data of websites
without using the browser kernel in the Accused
Products, and, therefore, the rendering engine
cannot meet the web browser process limitation
under the Claim Construction Order. Final
Judgment at 2-3, Cioffi, 2014 U.S. Dist. LEXIS
123760 (2:13-cv-103), ECF No. 104. The district
court entered a final judgment of non-infringement
on December 2, 2014. Id.
Cioffi timely appealed the district courts
judgment, and we have jurisdiction under 28 U.S.C.
1295(a)(1).
II.

DISCUSSION

Cioffi challenges the district courts construction

of two claim terms: (1) web browser process and (2)
critical file. Claim construction is a matter of law,

App-10
which we review de novo, but we review underlying
factual findings by the district court for clear error.
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct.
831, 837-38 (2015). Generally, claim terms should be
given their ordinary and customary meaning from
the perspective of a person having ordinary skill in
the art at the time of the effective date of the patent
application. Phillips v. AWH Corp., 415 F.3d 1303,
1312-13 (Fed. Cir. 2005) (en banc). To ascertain the
scope and meaning of the asserted claims, we look to
the words of the claims themselves, the specification,
the prosecution history, and any relevant extrinsic
evidence. Id. at 1315-17. This inquiry, at times,
begins and ends with the intrinsic evidence. In fact,
the specification is the single best guide to the
meaning of the claim terms; it is often dispositive. Id.
at 1318 ([T]he specification is always highly
relevant to the claim construction analysis. Usually,
it is dispositive . . . .) (citation omitted).
A. Web Browser Process
Cioffi argued in its opening brief on appeal that
the district court erred by construing web browser
process at all, rather than maintaining the terms
plain and ordinary meaning. Appellant Br. 27. Cioffi
has since conceded, however, that the district courts
construction of web browser process as a process
that can access data on websites is not reversible
error. 1
1 See Appellant Reply Br. 2 (Had the district court
stopped with its preliminary construction of web browser
process to mean a process that can access data on web-sites
its error in deciding to construe the term would have been
harmless . . . .); Oral Argument at 1:20-2:03, available at

App-11
Given this concession, the sole remaining dispute
with respect to web browser process is whether the
district court erred by reading into that limitation a
direct access requirement. Under the district
courts construction, a web browser process does not
have to access data on websites without using
another web browser process, but must be capable
of accessing a website without using another web
browser process. Cioffi, 2014 U.S. Dist. LEXIS
123760 at *20-21 (emphasis added). Simply put, the
district court held that the first web browser
process must be capable of accessing the Internet
directly without the assistance of the second web
browser process, and the second web browser
process must be capable of accessing the Internet
directly without the assistance of the first web
browser process.
Claim construction starts with the claim
language. Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
2004). Differences among claims can [ ] be a useful
guide in understanding the meaning of particular
claim terms. Phillips, 415 F.3d at 1314. [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. Phillips, 415 F.3d at 1314-15

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20151194.mp3 (whats shown [at *21 of the Claim Construction

Order] is the courts definition that a web browser process is
a process that access data on websites. That definition, as
a practical matter, is acceptable to us.).

App-12
(citing Liebel-Flarsheim Co. v. Medrad, Inc., 358
F.3d 898, 910 (Fed. Cir. 2004)).
Cioffi asserts that, under these claim
differentiation principles, the term web browser
process alone cannot be read to require a direct
access capability. Cioffi first points to independent
claim 21 of the 528 patent, claiming it demonstrates
that the second web browser process does not need
to be capable of directly accessing data on websites
without using another web browser. Claim 21 states
that the first web browser process needs to be
capable of passing data to the second web browser
process. 528 patent col. 21 ll. 12-14. Thus, this
claim implies that the second web browser can
access data on websites indirectly with assistance
from the first web browser process. Nothing in the
language of claim 21 requires that either the first or
the second web browser process have direct access
capability; instead, the claim requires only that the
second process: (1) execute website data and (2)
retrieve data that it executes. Id. In contrast,
dependent claim 24 of the 528 patent requires the
second web browser process to be capable of
directly exchanging data with the network interface
and with the first web browser process. 528 patent
col. 21 ll. 26-30. 2 Cioffi asserts that the directly
exchanging data with the network interface
2 Claims 21 and 24 of the 528 patent are representative. In
its Reply Brief and at oral argument, Cioffi clarifies that the
same argument applies to claims 36 and 39 of the 529 patent.
See Appellant Reply Br. 5-7; Oral Argument at 3:23-3:59,
available at http://oralarguments.cafc.uscourts.gov/default.aspx
?fl=2015-1194.mp3. The same argument also applies to
claims 21 and 24 of the 500 patent.

App-13
limitation of claim 24 would be superfluous if claim
21 already required direct web access capability.
According to Google, Cioffis claim differentiation
argument fails because the courts construction
requiring that the web browser process have the
capability to access data on a website directly does
not render claims 21 and 24 of the 528 patent
identical in scope. Claim differentiation principles do
not apply here, according to Google, because claim 24
has two additional limitations as compared to claim
21. Dependent claim 24 not only adds a directly
exchanges data with the network interface
limitation, but also a directly exchanges data with
the first web browser process limitation. Id. Thus,
according to Google, only the first of
these
limitations would be subsumed by the courts
construction.
We are not persuaded by Googles arguments. If
claim 21 already required a capability for direct
access to the network, then the language of claim
24, which recites that the second web browser
process is capable of directly exchanging data with
the network interface, would be entirely duplicative.
Thus, the language of the claims indicates that only
in claim 24 does the second web browser have to have
a direct access capability. While Google is correct
that claim 24 adds another limitation compared to
claim 21, that argument does not change the fact
that the directly exchanges data with a network
limitation would be rendered superfluous. See
Mformation Techs., Inc. v. Research in Motion Ltd.,
764 F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a
construction that does not render another limitation

App-14
superfluous). Thus, we find Cioffis claim
differentiation argument compelling and find that
the addition of the direct access capability limitation
in claim 24 gives rise to a presumption that claim 21
lacks such a limitation.
We do not find, moreover, that anything in the
prosecution history overcomes the presumption
created by these claim differentiation principles.
Google argues that, during prosecution, Cioffi
disclaimed a construction of web browser process
that is broad enough to cover indirect access to
website data in order to overcome anticipation by
Narin. And Google is correct that, [a]lthough claim
differentiation is a useful analytic tool, it cannot
enlarge the meaning of a claim beyond that which is
supported by the patent documents, or relieve any
claim of limitations imposed by the prosecution
history. See, e.g., Retractable Techs., 653 F.3d at 1305
([A]ny presumption created by the doctrine of claim
differentiation will be overcome by a contrary
construction dictated by the written description or
prosecution history.). Fenner Invs., Ltd. v. Cellco
Pship, 778 F.3d 1320, 1327 (Fed. Cir. 2015). The
doctrine of prosecution disclaimer attaches where an
applicant, whether by amendment or by argument,
unequivocally disavowed a certain meaning to obtain
his patent. Schindler Elevator Corp. v. Otis Elevator
Co., 593 F.3d 1275, 1285 (Fed. Cir. 2010) (quoting
Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314,
1324 (Fed. Cir. 2003)).
According to Google, Cioffi would not have been
able to distinguish its claims from Narin if its web
browser process was permitted to indirectly access

App-15
data on websites through another browser process.
Google contends that the examiner rejected Cioffis
initial, unamended claim for a browser process
because it would encompass prior art video games in
which a renderer (i.e., the first process) relies on a
second process to receive interactive network data.
247 patent col. 14 ll. 28-45. Google argues that Cioffi
thus surrendered indirect access to website data
when it amended browser process to web browser
process to exclude video game and word processing
applications from the prior art. Appellee Br. 32.
Cioffi responds that it never suggested in the
course of amending browser process to web
browser process that the web browser process
must be capable of directly accessing website data
without the assistance of another web browser
process. Appellant Reply Br. 14. Instead, Cioffi says
the key to overcoming Narin was not that the first
web browser process could directly access website
data, but, rather, was that the first web browser
process could access website data at all.
In Fenner, on which Google relies, we held that
the patents specification and prosecution history
narrowed the meaning of the term personal
identification number beyond the construction
proffered by the patentee notwithstanding the
patentees claim differentiation argument. 778 F.3d
at 1327. The patentee argued that personal
identification number should be construed broadly
and could be associated with a particular user or a
particular device. But the court held that the
patentee could not walk away from what it had
clearly stated during prosecutionthat unlike the

App-16
prior art, [t]he present invention, on the other hand,
is centered around the mobile user, not the mobile
telephone. The user is identified by a personal code.
Id. at 1325. The patentees main argument on appeal
was that the examiner did not rely on these
statements, a point which we found to be irrelevant.
Id.
Unlike Fenner, the alleged disavowal of claim
scope is far from unequivocal in Cioffis case. The
prosecution history reveals that Cioffi distinguished
Narin by arguing that its first browser process was
not functionally equivalent to Narins secure or
trusted application because the first browser
process of the reissue claims was capable of accessing
untrusted data from websites, which would
constitute executable code from other sources that
may not be trusted. J.A. 256-57. The examiner
recognized that Cioffi drew this distinction with
Narins secure application, but nevertheless
rejected Cioffis claims because the features upon
which applicant relies, such as the first browser
process accessing Internet sites and/or data, are not
recited in the rejected claims. J.A. 286 (8). Rather,
the examiner felt that the first logical process
described in the specification was broad enough to
encompass non-web browsers such as a video game
and a word processor. Id. at 6. In response to this
rejection, Cioffi amended its claims to explicitly state
that the first web browser needed to be capable of
accessing data on websites. J.A. 314, 332.
Google refers to the following passage from the
prosecution history, claiming that it shows that Cioffi

App-17
disclaimed indirect access to website data by the
first browser process in order to overcome Narin:
As an example application 312 [the secure
application in Narin] may provide some type
of web browsing capability to its user, but
rather than performing the actual web
browsing functions itself, application 312
may call upon a general-purpose browsing
program to perform the web browsing.
J.A. 258, 590. See also Oral Argument at 18:01-19:18,
available at http://oralarguments.cafc.uscourts.gov
/default.aspx?fl=2015-1194.mp3. This passage simply
confirms that the secure process of Narin cannot
perform web browsing functions itself, but can call
upon the open process to perform such functions.
Nothing here suggests that the secure process
thereby gains access to website data. Google further
cites this passage:
Narin provides a technique for allowing an
open or untrusted application to provide
untrusted or open features for a secure
application that are not directly implemented
within the secure application (or closed
application). In accordance therewith, an
open or untrusted application is run in a
separate auxiliary process from the closed or
protected application. . . . The auxiliary
process is started by the closed process; the
closed process controls the lifetime of the
auxiliary process and terminates it when the
open features that it provides are no longer
necessary.

App-18
J.A. 588 (emphasis added). Google focuses on the
phrase not directly implemented, but nothing
contained in this passage clarifies that the
untrusted or open features that the untrusted
application provides the secure application include
anything more than general web browsing capability,
as opposed to website data. And even if such
features included data from websites, nothing
suggests that are not directly implemented equates
to are indirectly accessed. In addition, the third
sentencestating that the untrusted process is
started, controlled, and stopped by the closed
processalso falls short of suggesting that the
closed process thereby gains access to website data.
Finally, the paragraph immediately following that
passage affirmatively suggests that whatever the
untrusted features provided to the secure
application might include they cannot include
executable code from unknown sources:
Narin teaches away from the closed
process [the first browser process] being a
browser process. If the application is
trusted, running a browser in-proc may
subvert the security scheme of the trusted
application. If trust is to be maintained,
executable code from unknown sources
cannot be given access to the address space
of the trusted application and therefore
cannot be run in process.
J.A. 256-57 (emphasis added). Thus, nothing from
the prosecution history constitutes a clear and
unmistakable disavowal of indirect access. There
is no clear and unmistakable disclaimer if a

App-19
prosecution argument is subject to more than one
reasonable interpretation, one of which is consistent
with a proffered meaning of the disputed term.
Sandisk Corp. v. Memorex Prods., 415 F.3d 1278,
1287 (Fed. Cir. 2005). Here, Cioffi has offered a
reasonable
alternative
interpretationthat
it
differentiated Narin by explaining that its first web
browser process, unlike Narins secure process, had
access to website data. We find nothing in the
prosecution history sufficient to overcome the
presumption that web browser process alone does
not have a direct access capability requirement.
B. Critical File
We now turn to the dispute over the district
courts construction of critical file as including
critical user files, which both parties agree
would render the term indefinite under Nautilus,
134 S. Ct. at 2129. Under Nautilus, 35 U.S.C.
112 2 requires that a patents claims, viewed
in light of the specification and prosecution history,
inform those skilled in the art about the scope of
the invention with reasonable certainty. Id. A
claim must be sufficiently definite to inform the
public of the bounds of the protected invention,
i.e., what subject matter is covered by the
exclusive rights of the patent. Ancora Techs., Inc.
v. Apple, Inc., 744 F.3d 732, 737 (Fed. Cir. 2014)
(quoting Halliburton Energy Servs., Inc. v. M-I LLC,
514 F.3d 1244, 1249 (Fed. Cir. 2008)).
Google points out three references to user files
in the specification of the 247 patent:

App-20
With the network interface program
constrained in this way, malware programs
are rendered unable to automatically corrupt
critical system and user files located on the
main memory storage area.
...
It is an object of the present invention to
provide a computer system capable of
preventing
malware
programs
from
automatically corrupting critical user and
system files.
...
It is another object of the present invention
to provide a user with an easy and
comprehensive method of restoring critical
system and user files that may have been
corrupted by a malware infection.
247 patent col. 7 ll. 8-11, 40-44, 53-56 (emphasis
added). Google also points to the following references
to critical . . . user files or data in the prosecution
history:
Critical user data residing on the first
electronic memory space is thereby protected
from corruption by a malicious (malware)
process downloaded from the network and
executing on the second logical process.
...
[M]alware programs are rendered unable to
automatically corrupt critical system and
user files located on the main memory
storage area.

App-21
J.A. 458-59 (emphasis added).
The question is whether these five references to
user files or data in the specification and
prosecution history are sufficient to require that we
read a user files limitation into the claim term
critical file. On this point, our recent decision in
Ancora, 744 F.3d at 732, is instructive. Ancora states
that [a] claim term should be given its ordinary
meaning in the pertinent context, unless the
patentee has made clear its adoption of a different
definition or otherwise disclaimed that meaning. Id.
at 734. There, we upheld the district courts ruling
that the terms volatile memory and non-volatile
memory were not indefinite because the parties did
not dispute that there were clear, settled, and
objective meanings for those terms in the art, and
three passing references in the specification
inconsistent with the established meanings were
insufficient to overcome the clear ordinary meaning.
Id. at 738.
In this case, the experts from both sides agreed
that critical file had a well-understood and
objective definition to one of skill in the art.
Cioffis expert, Mr. H.E. (Buster) Dunsmore,
stated that a person of skill would understand that
a critical file refers to files required for the proper
operation of the computers systems. Dunsmore
Decl. 35, Exhibit 24 of Googles Responsive Claim
Construction Br., Cioffi, 2014 U.S. Dist. LEXIS
123760 (2:13-cv-103), ECF No. 66 (Dunsmore
Decl.). Similarly, Googles expert, Dr. William A.
Arbaugh, testified that, [a] person of ordinary skill
in the art knows that system files are synonymous

App-22
with critical file and critical system file.
Arbaugh Decl. at 32, Exhibit 23 of Googles
Responsive Claim Construction Br., Cioffi, 2014 U.S.
Dist. LEXIS 123760 (2:13-cv-103), ECF No. 66
(emphasis added) (Arbaugh Decl.). 3
The surrounding text of the experts declarations
does not alter this finding. The experts agreed that
critical user file is entirely subjective. See
Dunsmore Decl. 35 (users may disagree [sic] what
is and is not critical to them); Arbaugh Decl. at 32 (it
is my opinion that a critical user file is entirely
subjective because what is critical to one person may
not be critical to another). And the experts disagreed
about whether critical file must be construed to
include critical user files based on references to
such files in the specification. See Dunsmore Decl.
35 (One of skill would understand that a critical file
would not be a user file); Arbaugh Decl. at 33
(stating that, in light of the specification and
prosecution history, a proposed construction of
critical file that does not include the concept of
critical user files . . . is under-inclusive). But
neither partys expert suggested that critical file
alone is subjective or indefinite.
Our analysis thus shows that, without taking
into consideration the few references to user files or
user data in the intrinsic evidence, both sides
experts agreed on an objective and well-understood
3

Based on this language, we disagree with Googles

characterization of Dr. Arbaughs testimony as explaining that
system file can be a critical file or a critical system file, not
that critical file means system file or only includes system
file. Appellee Br. 37.

App-23
meaning for critical file. Ancora teaches that, if
there is a well-understood meaning for a term in the
art, we do not allow a few inconsistent references in
the specification to change this meaning. This is
because, if the terms at issue have so clear an
ordinary meaning[,] a skilled artisan would not be
looking for clarification in the specification. Ancora,
744 F.3d at 738. As in Ancora, [t]here is no facial
ambiguity or obscurity in the claim term, and any
ambiguity only arises from the specification. Id.
Google argues that, unlike Ancora, where the
passing references inconsistent with the ordinary
meaning were perplexing, here, Cioffi deliberately
intended to protect critical user data and critical user
files from malware as part of its invention. See id.
While the specification references upon which Google
relies do reference the advantage of protecting files
with which a particular user might be concerned, we
see nothing that indicates that Cioffi intended its
invention to do anything other than protect critical
files as that concept is widely understood by those of
skill in the art. We, thus, reject Googles argument,
and find that the few passing references to user
files or data are insufficient to alter the wellunderstood, objective meaning of critical file agreed
upon by the experts. We, therefore, reverse the
district courts holding that critical file in claim 21
of the 103 patent is indefinite.
III.

CONCLUSION

For the foregoing reasons, we find that that

the district court incorrectly construed web browser
process as requiring a direct access capability
and incorrectly
construed critical file as

App-24
encompassing critical user files. We, therefore,
reverse the district courts claim constructions to
the extent they are inconsistent with our findings
and reverse the district courts finding that the
103 patent is invalid as indefinite under 35 U.S.C.
112 2. Because the parties stipulated to noninfringement based on the district courts erroneous
constructions, we also remand for further findings
pursuant to this opinion.
REVERSED AND REMANDED

App-25
Appendix B
(Aug. 28, 2014)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ALFONSO CIOFFI,
et al.,
Plaintiffs,
v.
GOOGLE, INC.,

No. 2:13-CV-103-JRG-RSP

Defendant.
CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On August 14, 2014, the Court held a hearing to
determine the proper construction of the disputed
claim terms in United States Patents No. RE43,103,
RE43,500, RE43,528, and RE43,529.
After
considering the arguments made by the parties at the
hearing and in the parties claim construction
briefing (Dkt. Nos. 56, 66, and 67), 1 the Court issues
this Claim Construction Memorandum and Order.
* Table of Contents omitted for the purposes of this
appendix
1 Citations to documents (such as the parties briefs and
exhibits) in this Claim Construction Memorandum and Order
refer to the page numbers of the original documents rather than
the page numbers assigned by the Courts electronic docket
unless otherwise indicated

App-26
BACKGROUND
Plaintiffs bring suit alleging infringement of
United States Patents No. RE43,103 (the 103
Patent), RE43,500 (the 500 Patent), RE43,528
(the 528 Patent), and RE43,529 (the 529 Patent)
(collectively, the patents-in-suit).
All four patents-in-suit are reissues of United
States Patent No. 7,484,247 (the 247 Patent),
which issued on January 27, 2009, from an
application filed August 7, 2004. All five patents are
titled System and Method for Protecting a Computer
System from Malicious Software.
The 103 Patent issued on January 10, 2012,
from an application filed August 10, 2010. The 500
Patent issued on July 3, 2012, from an application
filed March 9, 2010. The 528 Patent and the 529
Patent both issued on July 17, 2012, the first from an
application filed March 9, 2010, and the second from
an application filed November 7, 2010.
The Abstracts of the four patents-in-suit and the
247 Patent are the same and state:
In a computer system, a first electronic data
processor is communicatively coupled to a
first memory space and a second memory
space. A second electronic data processor is
communicatively coupled [to] the second
memory space and to a network interface
device. The second electronic data processor
is capable of exchanging data across a
network of one or more computers via the
network interface device. A video processor
is adapted to combine video data from the

App-27
first and second electronic data processors
and transmit the combined video data to a
display terminal for displaying the combined
video data in a windowed format. The
computer system is configured such that a
malware program downloaded from the
network and executing on the second
electronic data processor is incapable of
initiating access to the first memory space.
The four patents-in-suit, as well as the 247
Patent, share a substantially identical specification. 2
The parties briefing cites the specification of the 247
Patent. This Claim Construction Memorandum and
Order therefore cites the specification of only the 247
Patent unless otherwise indicated.
LEGAL PRINCIPLES
It is a bedrock principle of patent law that the
claims of a patent define the invention to which the
patentee is entitled the right to exclude. Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (quoting Innova/Pure Water Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
Cir. 2004)). To determine the meaning of the claims,
courts start by considering the intrinsic evidence.
See id. at 1313; see also C.R. Bard, Inc. v. U.S.
Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004);
Bell Atl. Network Servs., Inc. v. Covad Commcns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
The intrinsic evidence includes the claims
themselves, the specification, and the prosecution
2 The 529 Patent includes a Term Description section
that does not appear in the other patents.

App-28
history. See Phillips, 415 F.3d at 1314; C.R. Bard,
388 F.3d at 861. Courts give claim terms their
ordinary and accustomed meaning as understood by
one of ordinary skill in the art at the time of the
invention in the context of the entire patent.
Phillips, 415 F.3d at 1312-13; accord Alloc, Inc. v.
Intl Trade Commn, 342 F.3d 1361, 1368 (Fed. Cir.
2003).
The claims themselves provide substantial
guidance in determining the meaning of particular
claim terms. Phillips, 415 F.3d at 1314. First, a
terms context in the asserted claim can be very
instructive. Id. Other asserted or unasserted claims
can aid in determining the claims meaning because
claim terms are typically used consistently
throughout the patent. Id. Differences among the
claim terms can also assist in understanding a terms
meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is
presumed that the independent claim does not
include the limitation. Id. at 1314-15.
[C]laims must be read in view of the
specification, of which they are a part. Id. at 1315
(quoting Markman v. Westview Instruments, Inc., 52
F.3d 967, 979 (Fed. Cir. 1995) (en banc)). [T]he
specification is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed
term. Phillips, 415 F.3d at 1315 (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)); accord Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is
true because a patentee may define his own terms,

App-29
give a claim term a different meaning than the term
would otherwise possess, or disclaim or disavow
claim scope. Phillips, 415 F.3d at 1316. In these
situations, the inventors lexicography governs. Id.
The specification may also resolve the meaning of
ambiguous claim terms where the ordinary and
accustomed meaning of the words used in the claims
lack sufficient clarity to permit the scope of the claim
to be ascertained from the words alone. Teleflex, 299
F.3d at 1325. But, [a]lthough the specification may
aid the court in interpreting the meaning of disputed
claim language, particular embodiments and
examples appearing in the specification will not
generally be read into the claims.
Comark
Commcns, Inc. v. Harris Corp., 156 F.3d 1182, 1187
(Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply
the proper context for claim construction because a
patent applicant may also define a term in
prosecuting the patent. Home Diagnostics, Inc., v.
Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004)
(As in the case of the specification, a patent
applicant may define a term in prosecuting a
patent.). [T]he prosecution history (or file wrapper)
limits the interpretation of claims so as to exclude
any interpretation that may have been disclaimed or
disavowed during prosecution in order to obtain
claim allowance. Standard Oil Co. v. Am. Cyanamid
Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is
less significant than the intrinsic record in

App-30
determining the legally operative meaning of claim
language. Phillips, 415 F.3d at 1317 (citations and
internal quotation marks omitted). Technical
dictionaries and treatises may help a court
understand the underlying technology and the
manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises
may provide definitions that are too broad or may not
be indicative of how the term is used in the patent.
Id. at 1318. Similarly, expert testimony may aid a
court in understanding the underlying technology
and determining the particular meaning of a term in
the pertinent field, but an experts conclusory,
unsupported assertions as to a terms definition are
entirely unhelpful to a court. Id. Generally, extrinsic
evidence is less reliable than the patent and its
prosecution history in determining how to read claim
terms. Id.
THE PARTIES STIPULATED TERMS
The parties have reached agreements as to
several terms, as stated in their June 2, 2014 Patent
Local Rule 4-3 Joint Claim Construction and
Prehearing Statement (Dkt. No. 52 at 1-2) and their
August 11, 2014 Joint Claim Construction Chart
(Dkt. No. 68, Ex. A at 5). The parties agreements are
set forth in Appendix A to this Claim Construction
Memorandum and Order.
CONSTRUCTION OF DISPUTED TERMS
As submitted by the parties, most of the disputed
terms appear in all of the asserted claims of one or
more of the patents-in-suit, as set forth as to each
disputed term, below. In the parties Joint Claim

App-31
Construction and Prehearing Statement, Defendant
identified the asserted claims as follows:
The asserted claims of the 500 Patent are
Claims 21, 23, 25, 29, 30, 31, 32, 37, 38, 39,
41, 42, 43, 52, 66, 67 and 70.
The asserted claims of the 528 Patent are
Claims 1, 2, 5, 21, 23, 25, 30, 44, 46, 52, 53,
55, 57, 58, 64, 65, 66, 67 and 70.
The asserted claims of the 529 Patent are
Claims 21, 23, 28, 30, 36, 38, 45, [and] 49.
The asserted claim of the 103 Patent is
Claim 21.
(Dkt. No. 52, Ex. B at 1 nn.2-5.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with
preliminary constructions of the disputed terms with
the aim of focusing the parties arguments and
facilitating
discussion.
Those
preliminary
constructions are set forth within the discussion of
each term, below.
A. web browser process
Plaintiffs Proposed
Construction

Defendants Proposed
Construction

App-32
No Construction: Plain
and ordinary meaning

process that performs the

retrieval of web pages 3

(Dkt. No. 56 at 7; Dkt. No. 66 at 18.) Plaintiffs

submit that this disputed term appears in all
asserted claims of the 500, 528, and 529 Patents.
(Dkt. No. 56 at 7 n.13.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: process that can
access data on websites.
(1) The Parties Positions
Plaintiffs argue that Defendants proposed
construction seeks to import a discussion of retrieval
of web pages from the prosecution history into the
claim meaning, and in doing so, completely ignores
the fact that the claims themselves describe the web
browser process. (Dkt. No. 56 at 8.) Plaintiffs further
submit:
The plain meaning of web browser process
would certainly include, among other
attributes, the capabilities of (1) accessing
data of at least one website via the network,
and (2) generating video data from the at
least one website accessed via the network.
3 Defendant submits in its briefing: To address Plaintiffs
stated concern about unduly limiting the functions of the web
browser process, [Defendant] is amenable to an alternate
construction that requires the web browser process to be
capable of at least performing the retrieval of web pages or a
construction that merely acknowledges that the web browser
process claimed cannot be a secure renderer. (Dkt. No. 66 at
20 n.14.)

App-33
While the inventors have expressly identified
these characteristics of the claimed web
browser process depending on whether it is
the first web browser process or the second
web browser process, they in no way altered
the plain and ordinary meaning of this
commonly understood term.
(Id.)
As to the prosecution history regarding the
Narin reference (United States Patent Application
Publication No. 2002/0002673), cited by Defendant,
Plaintiffs argue that the patentees argued that
Narin consistently teaches away from the first logical
process ever being a web browser process, and
[n]owhere did they say their invention is different
because the first logical process must retrieve web
pages. (Id. at 9.) Plaintiffs further submit that they
were distinguishing Narin on the basis that their
first browser process could access Internet sites
and/or data (not specifically retrieval of web pages).
(Id. at 10.) Plaintiffs conclude: To be sure, a web
browser process may retrieve web pages but the
requirement that it must does not flow from the
intrinsic evidence. (Id.)
Defendant responds that [d]uring reissue
prosecution, the Applicants distinguished prior art
reference Narin by explaining that the Applicants
browser process was different than Narins
rendering process because it performed the retrieval
of web pages. (Dkt. No. 66 at 18.) 4 More specifically,
4 The secure rendering process in Narin is, for example,
an application for playing audio or video content that is

App-34
Defendant argues, the prosecution history makes
clear that the term web browser process was
intended to be narrower than the browser process
language previously used in the claims. (Id. at 19.)
Defendant concludes that a construction that gives
effect to the addition of the word web must be
adopted to make clear that both the first and second
web browser processes exclude a renderer, like the
one in Narin, that does not perform the retrieval of
web pages. (Id. at 20.) Finally, Defendant submits
that its proposed construction does not limit the web
browser process to only performing the retrieval of
web pages but rather permits the process to
perform any of the other web browsing functions that
Plaintiffs recite. (Id.)
Plaintiffs reply that the prosecution history
relied upon by Defendant is nowhere close to the
inventors stating their browser processes are distinct
from Narin because they retr[ie]ve web pages as
Defendant would have the Court believe. (Dkt. No.
67 at 1-2.) Plaintiffs also argue: The inventors
responded [to the examiners rejection] by adding
web in[]front of browser process and making the
first web browser process capable of accessing data
of a website via the network. Defendants focus on
protected by Digital Rights Management (DRM). See Narin at
46. Such a system must protect itself and the content from
attacksi.e., the application must resist attempts by a hacker
to steal decrypted content or a decryption key. Since the
decrypted content and/or the key may be stored in memory (e.g.,
in the address space of the process that runs the application),
unknown or non-secure executable objects cannot be granted
access to that address space, and thus cannot run in the same
process as the secure rendering application. Id.

App-35
the addition of the term web does not tell even half
the story as to why the rejections were made and
what the inventors did in response. (Id. at 2.)
Further, Plaintiffs note, Defendants proposed
construction renders the language capable of
accessing data of the at least one website via the
network irrelevant because that capability is already
implied by being able to carry out the narrower
function of retrieving web pages. (Id. at 2 n.3.)
(2) Analysis
The specification uses the terms web browser
and website but does not define those terms:
[T]here may be a variety of files that a user
may wish to have automatically cleaned or
deleted upon closing a protected process
session. For example, temporary internet
files, cookies, browser plug-ins, etc., may be
deleted
or
scanned
for
malware
automatically. A user may also wish to have
websites that contributed to a malware
infection noted, and may wish to place the
offending websites in a block list, such that
the offending websites cannot be accessed in
the future without the user specifically
authorizing access. As part of the malware
scan,
the
malware
scanner
may
automatically log the offending website(s),
and block future access.
***
Referring again to FIG. 9, the functions
carried out by processors 920 and 940 may
comprise separate, secure logical processes

App-36
executing on the same physical processor.
For example, a first logical process may
comprise executing instructions necessary to
carry out the functions of an operating
system, or the first logical process may
comprise executing instructions necessary to
carry out the functions of a first computer
program, including but not limited to a word
processor. A second logical process may
comprise executing instructions necessary to
carry out the functions of a web browser
program, or may comprise executing
instructions necessary to carry out the
functions of an instant messenger program,
for example.
247 Patent at 13:53-64 & 16:22-34 (emphasis added).
During prosecution of the reissue application
that led to the 528 Patent, the examiner cited the
Narin reference (United States Patent Application
Publication No. 2002/0002673) as a basis for rejecting
various claims. (See Dkt. No. 57-3, Ex. C, 4/29/2011
Office Action at 10-59.) As explained by the
patentees, Narin discloses running a closed or
protected application that controls a separate
auxiliary process that runs an open or untrusted
application.
(Dkt. No. 58-1, Ex. D, 8/29/2011
Amendment Under 37 CFR 1.111 at 21.) In
particular, Narin discloses:
FIG. 3 shows a secure application which
uses a non-secure software object to perform
an action or provide a service. Secure
application 312 runs inside process 310.
Application 312 is secure in the sense that

App-37
it includes some type of defense against
observation or modification. For example,
secure application 312 may be an application
that renders encrypted content, and which
prevents or deters a user from learning the
decryption key used to decrypt the content,
or from copying the decrypted content itself.
Typically, secure application 312 is relied
upon by some system (e.g., a digital rights
management system, or the participants
therein) to behave in a predictable way (e.g.,
the distributors of content in a digital rights
management system may rely on secure
application 312 to render content only when
permitted by the terms of a license). Secure
application 312 may, optionally, host a
software object 314.
Narin at 35.
The patentees argued:
. . . Narin teaches away from the closed
process being a browser process.
***
Narin describes a web browser as being an
example of . . . a non-secure software object,
meaning that a web browsing program
cannot be part of the secure application.
***
Narin . . . draw[s] the clear distinction
between a web browser and a secure
application, again, clearly teaching away

App-38
from the secure application ever being a web
browser process.
***
Narin makes the clearest distinction below
between the browser and the secure
application, referring to the web browsing
function as being a separate program
running in a separate process. Narin here is
clearly teaching away from the secure
application and the non-secure application
both comprising browser processes.
(Dkt. No. 58-1, Ex. D, 8/29/2011 Amendment Under
37 CFR 1.111 at 21, 22, 23 & 24.) The patentees
also quoted various passages from Narin, including
the following:
If the user clicks on any of the links, the
browsing program will retrieve the web page
associated with that link and display it to
the user. It should be observed that it is the
browsing program, and not the secure
rendering application, that performs the
retrieval of web pages.
(Id. at 24 (quoting Narin at 49); see also Dkt. No.
66, Ex. 14, 500 Patent File History, 10/13/2011
Amendment Under 37 CFR 1.111 at 17 (same).)
After the patentees made these amendments and
arguments, the examiner again rejected claims based
on Narin, noting that the features upon which
applicant relies, such as the first browser process
accessing Internet sites and/or data, are not recited
in the rejected claims. (See Dkt. No. 59-1, Ex. E,

App-39
11/14/2011 Office Action at 8; see also Dkt. No. 66,
Ex. 17, 500 Patent File History, 11/17/2011 Office
Action at 5 (Throughout his arguments, the
Applicant makes reference that the first browser
process is a web process. It is noted that the features
upon which applicant relies, that the claimed
browsers are actually web browsers, are not recited
in the rejected claims.); id. at 7 ([T]he secure
rendering application of the prior art does teach the
first browser process in a first logical process when
that limitation is interpreted in light of the
specification to include web browsers, video games,
and word processing applications.).)
The patentees responded by amending the claims
so as to recite a web browser rather than simply a
browser, and the patentees further added that the
first web browser process is capable of accessing
data of a website via the network. For example, the
patentees amended Claim 1 of the 528 Patent as
follows (additions underlined, as in original):
1. (Currently Amended) A method of
operating a computer system capable of
exchanging data across a network of one or
more computers and having at least a first
and second electronic data processor capable
of executing instructions using a common
operating system, comprising:
executing a first web browser process,
capable of accessing data of a website via the
network, in a first logical process within the
common operating system using the first
electronic data processor, wherein the first

App-40
logical process is capable of accessing data
contained in a first memory space;
executing a second web browser process in
a second logical process within the common
operating system using the second electronic
data processor, wherein the second logical
process is capable of accessing data
contained in the second memory space; and
displaying data from the first logical
process and the second logical process,
wherein a video processor is adapted to
combine data from the first and second
logical processes and transmit the combined
data to a display;
wherein
the
computer
system
is
configured such that the second electronic
data processor is operating in a protected
mode and data residing on the first memory
space is protected from corruption by a
malware process downloaded from the
network and executing as part of the
second web browser process.
(See, e.g., Dkt. No. 60-1, Ex. F, 1/24/2012 Amendment
Accompanying RCE at 28.)
Thus, the patentees relied on claiming a web
browser process, and that reliance should be given
effect by requiring that a web browser process is
capable of accessing data on websites. See Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381
(Fed. Cir. 2011) (The patentee is bound by
representations made and actions that were taken in
order to obtain the patent.); see also Southwall

App-41
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.); Jansen v.
Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir.
2003) (finding that where phrase[s] were added to
gain allowance of the claims after . . . repeatedly
unsuccessful attempts to gain allowance of claims
without those phrases[,] [w]e must . . . give them
weight, for the patentability of the claims hinged
upon their presence in the claim language);
Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
1361, 1374 (Fed. Cir. 2007) (An applicants
invocation of multiple grounds for distinguishing a
prior art reference does not immunize each of them
from being used to construe the claim language.
Rather, as we have made clear, an applicants
argument that a prior art reference is distinguishable
on a particular ground can serve as a disclaimer of
claim scope even if the applicant distinguishes the
reference on other grounds as well.).
Defendant has failed, however, to establish that
the constituent term web necessarily refers to web
pages. The Court rejects Defendants proposal in
that regard.
At the August 14, 2014 hearing, Defendant
stated that it could agree to the Courts preliminary
construction with an understanding that the
construction refers to direct access. Plaintiffs
responded that they could agree to the Courts
preliminary construction with an understanding that
the construction does not require direct access. The
parties reactions to the Courts preliminary

App-42
construction thus revealed a dispute as to whether a
web browser process must be able to access
websites directly.
On balance, introducing the word direct would
tend to confuse rather than clarify the scope of the
claims. See U.S. Surgical Corp. v. Ethicon, Inc., 103
F.3d 1554, 1568 (Fed. Cir. 1997) (Claim construction
is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to
explain what the patentee covered by the claims, for
use in the determination of infringement.). Also,
Plaintiffs have noted that Claim 21 of the 528
Patent, for example, recites, in relevant part
(emphasis added): wherein the first web browser
process is capable of opening the second web browser
process and is further capable of passing data to the
second web browser process.
To be clear, can in the Courts construction
does not mean must and instead refers to a
capability. For this capability to be meaningful and
consistent with the prosecution history, however, a
web browser process must be capable of accessing a
website without using another web browser process.
In other words, although the Courts construction
does not preclude a web browser process from
accessing websites by using another web browser
process, a web browser processs capability of
accessing websites must not require using another
web browser process.
The Court thus hereby construes web browser
process to mean process that can access data
on websites.

App-43
B. wherein the second web browser process
is capable of accessing data contained in
the second memory space 5
Plaintiffs Proposed
Construction
No Construction: Plain
and ordinary meaning

Defendants Proposed
Construction
wherein the second web
browser process is only
capable of accessing data
in the second memory
space

(Dkt. No. 56 at 10; Dkt. No. 66 at 23.) Plaintiffs

submit that this disputed term appears in all
asserted claims of the patents-in-suit. (Dkt. No. 56 at
10 n.20.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: Plain meaning
[Expressly reject Defendants proposal that the
In their Joint Claim Construction and Prehearing
Statement, as well as in their Joint Claim Construction Chart,
the parties submit this disputed term together with the
following disputed terms: wherein the second web browser
process is configured to access data contained in the second
memory space; wherein the second logical process is capable of
accessing data contained in the second memory space; the
second logical process being configured to access data contained
in the second memory space; at least one second protected web
browser process is configured to access data contained in the
second protected memory space; and at least one secure
browser process configured to: . . . access data contained in the
second memory space. (Dkt. No. 52, Ex. A at 3-4; Dkt. No. 68,
Ex. A at 4.)
5

App-44
second web browser can access only the second
memory space].
(1) The Parties Positions
Plaintiffs submit that [a]ll the asserted
independent claims clearly state that the second web
browser process is capable of accessing data
contained in the second memory space but say
nothing about the second web browser process being
limited to only accessing data contained in the
second memory space. (Dkt. No. 56 at 10-11.)
Plaintiffs further argue that the specification flatly
contradicts Defendants proposal and teaches that
the second web browser process could access the first
memory space, for example, provided the user gives
permission. (Id. at 11-12.)
Defendant responds that [t]o accept Plaintiffs
proposed construction would be to contradict the
security principles taught by the invention and allow
the second process to corrupt trusted content on the
first memory space. (Dkt. No. 66 at 24.) Instead,
Defendant argues, [t]o protect the files on the first
memory space, the second web browser process can
only have access to the second memory space. (Id.)
If the claims are construed otherwise, Defendant
urges, the reissued claims are indefinite because
they contradict the core security teachings of the
invention. (Id. at 26.) Defendant further submits
that the intrinsic evidence states that the computer
system is only configured in an unprotected mode
when there are no network processes active,
whereas all of the claims at issue require active
network processes. (Id. at 25.)

App-45
Plaintiffs reply that every claim requires that
the second web browser process running the malware
not be automatically capable of accessing the first
memory space. (Dkt. No. 67 at 4.)
At the August 14, 2014 hearing, Plaintiffs
argued that if the Court adopts its preliminary
constructions as to the first memory space and
second memory space terms (discussed below), then
Defendants proposal is unnecessary. Defendant
nonetheless expressed concern that if the Court
rejects Defendants proposed construction as to the
present disputed term, Plaintiffs might identify a
memory space that is accessible by both the first and
second web browser processes.
(2) Analysis
Claim 21 of the 500 Patent recites (emphasis
added):
21.
A
portable
computing
and
communication device capable of executing
instructions using a common operating
system, comprising:
a network interface device configured to
exchange data across a network of one or
more computers using a wireless connection;
an intelligent cellular telephone capability
with a secure web browser including a first
web browser process and a second web
browser process;
at least a first memory space and a second
memory space, the first memory space
containing at least one system file; and

App-46
at least one electronic data processor
communicatively coupled to the network
interface device and to the first and second
memory space;
the at least one electronic data processor
configured to execute the first web browser
process within the common operating
system, wherein the first web browser
process is capable of accessing data of a
website via the network, accessing data
contained in the first memory space and is
further capable of initializing the second web
browser process;
the at least one electronic data processor
further configured to execute the second web
browser process within the common
operating system, wherein the second web
browser process is capable of accessing data
contained in the second memory space and is
further capable of generating data;
the at least one electronic data processor
further configured to pass data from the first
web browser process to the second web
browser process;
wherein the portable computing and
communication device is configured such
that the at least one system file residing on
the first memory space is protected from
corruption by a malware process downloaded
from the network and executing within the
second web browser process.

App-47
The specification discloses that a second
processor may be unable to initiate access to a first
memory:
In a preferred embodiment, P2 140 is
communicatively coupled to memory storage
area M2 130, and may be configured such
that P2 140 is incapable of initiating access
to memory storage area M1 110.
***
In accordance with a preferred embodiment
of the present invention, if any malware is
downloaded from network 195, it is stored in
memory 130, and/or run as a process on
second processor 140. In the configuration of
computer system 100, any downloaded
malware is rendered incapable of self
initiating access to memory 110 or first
processor 120, because second processor 140
is rendered incapable of initiating access to
110 and 120 without a direct or stored
command from user 160. Any malware
infection is thus confined.
***
A computer system 100 constructed in
accordance with the principles of the present
invention would be capable of disallowing a
secure logical process, such as the second
logical process described above, access to
certain memory spaces, and/or disallowing a
secure logical process from initiating access
to another logical process. For example, the

App-48
functions carried out by P2 140 (FIG. 1) may
comprise a secure logical process, which may
be configured to be unable to automatically
initiate access to either M1 110 or another
logical process performing the functions of
P1 120.
247 Patent at 10:43-46,
(emphasis added).

11:38-46 & 16:34-43

During prosecution of the 247 Patent, the

patentees distinguished the Corthell reference
(United States Patent No. 6,192,477) as lacking a
separate processor: While Corthell does teach
partitioning of the memory space into a primary
partition (Figure 2, [block 204]) and a protected
partition (Figure 2, [block 206]), he does not teach or
suggest the partitioning of secure and unsecure
instruction execution onto separate electronic data
processors. (Dkt. No. 66, Ex. 3, 4/29/2008
Amendment Under 37 CFR 1.111 at 9 (square
brackets in original); see id. at 10-12 (Applicants
invention . . . does not rely on the user to have
sufficient technical knowledge to determine the
difference between malicious and non-malicious
instructions.).)
On balance, Defendant has failed to identify any
definitive statement by the patentees that the second
web browser process can access data in only the
second memory space. See Omega Engg v. Raytek
Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (As a
basic principle of claim interpretation, prosecution
disclaimer promotes the public notice function of the
intrinsic evidence and protects the publics reliance
on definitive statements made during prosecution.)

App-49
(emphasis added); id. at 1325-26 ([F]or prosecution
disclaimer to attach, our precedent requires that the
alleged disavowing actions or statements made
during prosecution be both clear and unmistakable.)
(emphasis added).
Although Defendant repeatedly emphasizes that
its proposed architecture is necessary to be consistent
with the security teachings of the specification, [t]he
fact that a patent asserts that an invention achieves
several objectives does not require that each of the
claims be construed as limited to structures that are
capable of achieving all of the objectives. LiebelFlarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908
(Fed. Cir. 2004). Also of note, above-quoted Claim 21
of the 500 Patent, for example, recites in part
(emphasis added): the portable computing and
communication device is configured such that the at
least one system file residing on the first memory
space is protected from corruption by a malware
process downloaded from the network and executing
within the second web browser process.
Defendants proposed construction is therefore
hereby expressly rejected. No further construction is
necessary. See U.S. Surgical, 103 F.3d at 1568
(Claim construction is a matter of resolution of
disputed meanings and technical scope, to clarify and
when necessary to explain what the patentee covered
by the claims, for use in the determination of
infringement. It is not an obligatory exercise in
redundancy.); see also O2 Micro Intl Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008) ([D]istrict courts are not (and should not be)
required to construe every limitation present in a

App-50
patents asserted claims.); Finjan, Inc. v. Secure
Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir.
2010) (Unlike O2 Micro, where the court failed to
resolve the parties quarrel, the district court rejected
Defendants construction.).
The Court accordingly hereby construes
wherein the second web browser process is
capable of accessing data contained in the
second memory space to have its plain
meaning.
C. first memory space
Plaintiffs Proposed
Construction

Defendants Proposed
Construction

memory space accessible

memory space that is
by the first web browser
separate from and shares
process, but not
no common memory
automatically accessible
storage area with the
by the second web browser
second
memory space
process 6
(Dkt. No. 56 at 12; Dkt. No. 66 at 21.) Plaintiffs
submit that this disputed term appears in all claims
of the patents-in-suit. (Dkt. No. 56 at 12 n.24.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: memory space
distinct from a second memory space.
6 Plaintiffs previously proposed: memory space accessible
by the first web browser process, but not the second web
browser process. (Dkt. No. 52, Ex. A at 9.)

App-51
Plaintiffs agreed with the Courts preliminary
construction. Defendant expressed no direct
opposition to the Courts preliminary proposal, but
Defendant nonetheless maintained its proposal.
(1) The Parties Positions
Plaintiffs argue that Defendants proposed
construction excludes disclosed embodiments and
should therefore be rejected. (Dkt. No. 56 at 12.)
Instead, Plaintiffs submit, [t]he intrinsic evidence
shows that the first memory space is any memory
space accessible by the first web browser process,
that is also not automatically accessible by the
second web browser process. Id. Plaintiffs emphasize
that the specification defines the memory spaces by
the level of access provided to each web browser
process. (Id. at 14.) Finally, Plaintiffs argue that the
specification does not go so far as to state that the
two memory spaces share no common memory
storage area, and Plaintiffs cite Figure 9 as
disclosing an embodiment where the first and
second memory spaces share common memory space
but are separated logically. (Id.) Plaintiffs reiterate
that the separation between the first memory space
and the second memory space can be either physical
or logical. (Id. at 15.)
Defendant responds that Plaintiffs proposal of
allowing overlap between the first and second
memory spaces is contrary to the teaching in the
specification of the major problem of trusted and
untrusted programs shar[ing] space on a common
memory storage medium. (Dkt. No. 66 at 21
(quoting 247 Patent at 6:56-60).) Defendant explains
that [i]f the memory spaces were not separate,

App-52
malware could access the first memory space with
the critical system and user files. (Id. at 22.)
Defendant submits that [t]he specification discloses
no embodiments where the first and second memory
space overlap, and Plaintiffs offer no such intrinsic
evidence. (Id.) Defendant further submits that there
is no disclosure of how one would protect critical
files in the first memory space if those files could also
be part of the second memory space to which
malware has access. (Id.) Likewise, Defendant
argues, [i]f the memory spaces were overlapping,
one could not erase the second memory space and
restore it from critical files in the first memory space
as described in the specification. (Id. (citing 247
Patent at 12:46-14:2).) Finally, Defendant urges that
Plaintiffs proposed constructions are redundant in
view of the accessing language already in the claims.
The first and second memory space terms are not
the appropriate places to address the term access.
(Id. at 23.)
Plaintiffs reply that Defendant never explains
how sharing or overlap between the 1st and 2nd
memory spaces is even possible under Plaintiffs
construction. . . . If the second web browser process
cannot [automatically] access the first memory space,
then the memory spaces are separate by definition.
(Dkt. No. 67 at 3.) Plaintiffs argue that Defendants
proposed construction is contrary to Figure 9,
wherein 1st and 2nd memory spaces are separate,
but may still share common memory storage area
(such as the same drive). (Id.)

App-53
(2) Analysis
Claim 44 of the 528 Patent recites, in relevant
part (emphasis added):
44. A method of operating a portable
computer capable of executing instructions
using a common operating system and
comprising a network interface device, at
least a first memory space and a second
memory space, and at least one electronic
data processor communicatively coupled to
the network interface device, the first and
second memory space, and to a user
interface, comprising:
exchanging data across a network of one
or more computers with the network
interface device and accessing at least one
website;
storing at least one system file in the first
memory space;
opening a first web browser process
capable of accessing data of the at least one
website via the network, wherein the first
web browser process is capable of accessing
data contained in the first memory space;
opening a second web browser process,
wherein the second web browser process is
capable of accessing data contained in the
second memory space, and is further capable
of generating data for video display; and
passing data from the first web browser
process to the second web browser process;

App-54
wherein the portable computer is
configured such that the at least one system
file residing on the first memory space is
protected from corruption by a malware
process downloaded from the network and
executing as part of the second web browser
process.
The Background section of the patents-in-suit states:
A major problem faced by computer users
connected to a network is that the network
interface program (a browser, for example) is
resident on the same processor as the O/S
and other trusted programs, and shares
space on a common memory storage
medium. Even with security designed into
the O/S, malware practitioners have
demonstrated great skill in circumventing
software security measures to create
malware capable of corrupting critical files
on the shared memory storage medium.
When this happens, users are often faced
with a lengthy process of restoring their
computer
systems
to
the
correct
configuration, and often important files are
simply lost because no backup exists.
Therefore, what is needed in the art is a
means of isolating the network interface
program from the main computer system
such that the network interface program does
not share a common memory storage area
with other trusted programs. The network
interface program may be advantageously
given access to a separate, protected memory

App-55
area, while being unable to initiate access to
the main computers memory storage area.
With the network interface program
constrained in this way, malware programs
are rendered unable to automatically corrupt
critical system and user files located on the
main memory storage area. If a malware
infection occurs, a user would be able to
completely clean the malware infection from
the computer using a variety of methods. A
user could simply delete all files contained in
the protected memory area, and restore
them from an image residing on the main
memory area, for example.
247 Patent at 6:56-7:16 (emphasis added). The
specification discloses:
The first memory and data storage area 110
may comprise both volatile and nonvolatile
memory devices, such as DRAMs and hard
drives, respectively. Any memory structure
and/or
device
capable
of
being
communicatively coupled to P1 may be
advantageously used in the present
invention.
Id. at 9:48-57.
The specification further discloses that although
a second process may not have automatic access to a
first memory space, the second processor may access
the first memory space if permission is granted:
The architecture of computer system 100 is
designed to be capable of protecting memory
110 from malware initiated intrusions, and

App-56
preventing
malware
from
initiating
unwanted processes on first processor 120.
This is accomplished by using second
processor 140 to isolate 110 and 120 from
network 195. In a preferred embodiment, P2
140 is communicatively coupled to memory
storage area M2 130, and may be configured
such that P2 140 is incapable of initiating
access to memory storage area M1 110. For
example, P2 140 may be capable of accessing
memory storage area M1 110 with the strict
permission of user 160, either through a real
time interaction or via stored configuration
or commands. Such a configuration may be
desirable in a multi-core or multi processor
system, where user 160 may wish to use P2
140 in either a protected mode or an
unprotected mode, depending on the
application. However, user 160 is capable of
denying P2 140 the capability of initiating
access to memory storage area M1 110
without the users permission.
Id. at 10:38-55 (emphasis added); see id. at 11:38-46
& 16:34-43.
As to separation between memory storage
areas, the specification discloses:
Additionally, memory areas 910 and 930
may comprise separate, isolated memory
zones within a common physical memory
space, such as separate partitions within the
same hard drive, for example.

App-57
Id. at 16:44-47.
Figure 9, cited by Plaintiffs,
illustrates a 2nd memory data storage area 930
that appears to be located within a 1st memory data
storage area 910. See 247 Patent at 16:17-19. The
relevant portion of Figure 9 is reproduced here:

The use of the terms first and second is a

common patent-law convention to distinguish
between repeated instances of an element or
limitation. See 3M Innovative Props. Co. v. Avery
Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003);
accord Free Motion Fitness, Inc. v. Cybex Intl, Inc.,
423 F.3d 1343, 1347 (Fed. Cir. 2005) (quoting 3M).
Further, [w]here a claim lists elements
separately, the clear implication of the claim
language is that those elements are distinct
components of the patented invention. See Becton,
Dickinson & Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (citations and
internal quotation marks omitted).
On balance, however, although the memory
spaces are distinct from one another (see id.),
Defendant has failed to demonstrate that the first
memory space must have no common memory

App-58
storage area with the second memory space. In
particular, Defendant has failed to establish that the
first memory space must be physically separate
from the second memory space. Defendants
proposed construction is accordingly hereby expressly
rejected.
The Court therefore hereby construes first
memory space to mean memory space distinct
from a second memory space.
D. second memory space
protected memory space

and

second

second memory space

Plaintiffs Proposed
Construction
memory space
accessible by at
least the second
web browser
process

Defendants Proposed
Construction
memory space that is
separate from and
shares no common
memory storage area
with the first memory
space

second protected memory space

Plaintiffs Proposed
Construction
protected memory
space accessible by at
least the second web
browser process

Defendants Proposed
Construction
protected memory
space that is separate
from and shares no
common memory
storage area with the
first memory space

App-59
(Dkt. No. 56 at 15-16; Dkt. No. 66 at 21.) Plaintiffs
submit that the first of these disputed terms appears
in all asserted claims of the 103, 500, and 528
Patents. Dkt. No. 56 at 15 n.30. Plaintiffs submit
that the second of these disputed terms appears in all
asserted claims of the 529 Patent. (Id. at 16 n.31.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary constructions: second memory
space means memory space distinct from a first
memory space; and second protected memory
space means protected memory space distinct from
a first memory space.
Plaintiffs agreed with the Courts preliminary
constructions. Defendant expressed no direct
opposition to the Courts preliminary proposal, but
Defendant nonetheless maintained its proposals.
(1) The Parties Positions
Plaintiffs present substantially the same
arguments here as for the term first memory space,
addressed above, as to which Plaintiffs argue the
second memory space may also be accessed by the
first web browser process. (Dkt. No. 56 at 16-17; see
Dkt. No. 67 at 3.)
Likewise, Defendants briefing addresses these
disputed terms together with Defendants arguments
as to the term first memory space, addressed above.
(See Dkt. No. 66 at 21-23.)
(2) Analysis
Claim 44 of the 528 Patent recites, in relevant
part (emphasis added):

App-60
44.
A method of operating a portable
computer capable of executing instructions
using a common operating system and
comprising a network interface device, at
least a first memory space and a second
memory space, and at least one electronic
data processor communicatively coupled to
the network interface device, the first and
second memory space, and to a user
interface, comprising:
...
opening a second web browser process,
wherein the second web browser process is
capable of accessing data contained in the
second memory space, and is further capable
of generating data for video display; . . . .
The Summary of the Invention states:
It is another object of the present invention
to provide a computer system capable of
executing instructions in a second logical
process, wherein the second logical process is
capable of accessing data contained in the
second memory space, the second logical
process being further capable of exchanging
data across a network of one or more
computers.
***
These objects and other advantages are
provided by a preferred embodiment of the
present invention wherein a computer
system comprising a first electronic data

App-61
processor is communicatively coupled to a
first memory space and to a second memory
space [and] a second electronic data
processor is communicatively coupled to the
second memory space and to a network
interface device . . . .
247 Patent at 8:1-6 & 8:32-38.
discloses:

The specification

Communicatively coupled to P2 140 is

second memory and data storage area 130
(M2), which may comprise any memory
device or devices, such as the devices
previously described as applicable to first
memory 110.
Id. at 10:34-37.
On balance, as found above regarding the term
first memory space, Defendant has failed to
demonstrate that the second memory space must
have no common memory storage area with the
first memory space.
The Court accordingly hereby construes the
disputed terms as set forth in the following chart:
Term

Construction

second memory
space

memory space
distinct from a first
memory space

second protected
memory space

protected
memory space
distinct from a
first memory
space

App-62
E. the second electronic data processor is
operating in a protected mode
Plaintiffs Proposed
Construction
No construction
necessary; plain and
ordinary meaning; the
term is defined in the
claim

Defendants Proposed
Construction
the second electronic
data processor is
configured such that it
is incapable of initiating
access to the first
memory space

(Dkt. No. 56 at 17; Dkt. No. 66 at 27.) Plaintiffs

submit that this disputed term appears in Claims 1,
2, and 5 of the 528 Patent. (Dkt. No. 56 at 17 n.34.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: the second
electronic data processor is configured such that it is
incapable of automatically accessing the first memory
space.
Plaintiffs and Defendant agreed with the Courts
preliminary construction.
The Court therefore hereby construes the
second electronic data processor is operating
in a protected mode to mean the second
electronic data processor is configured such
that it is incapable of automatically accessing
the first memory space.
F. the at least one electronic data
processor configured to execute the first
web browser process within the common
operating system, wherein the first web

App-63
browser process is capable of accessing
data of a website via the network,
accessing data contained in the first
memory space
Plaintiffs Proposed
Construction
Not indefinite; plain and
ordinary meaning

Defendants Proposed
Construction
Indefinite

(Dkt. No. 56 at 19.) Plaintiffs submit that this

disputed term appears in all asserted claims of the
patents-in-suit. (Dkt. No. 56 at 19 n.36.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with its
preliminary construction that this disputed term is
subsumed within Defendants below-discussed
overall invalidity challenge. Neither side expressed
any opposition to proceeding in such a fashion.
Plaintiffs briefing as to this term is therefore
addressed as part of addressing Defendants overall
invalidity arguments, below.
G. intelligent cellular telephone capability
Plaintiffs Proposed
Construction
Not indefinite
No construction
necessary; the term is
defined in the claim
limitation that it
appears in

Defendants Proposed
Construction

Indefinite

App-64
(Dkt. No. 56 at 24; Dkt. No. 66 at 14-16.) Plaintiffs
submit that this disputed term appears in all
asserted claims of the 500 Patent. (Dkt. No. 56 at 24
n.46.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: Plain meaning
[Expressly reject Def[endant]s indef[initeness]
arg[ument]].
(1) The Parties Positions
Plaintiffs argue that Defendant ignores the
obvious which is that the term intelligent cellular
telephone capability is defined in the claim itself.
(Dkt. No. 56 at 25.) Plaintiffs explain that the
disputed term refers to the capability a device
receives with a secure web browser, including a first
and second web browser process. (Id. at 26.)
Defendant responds that the disputed term,
which was added during reissue prosecution and does
not appear in the specification, has no commonly
understood meaning and is not explained by the
patents-in-suit. (Dkt. No. 66 at 14.) Defendant also
submits that the disputed term must be different
from a smart phone, cellular data carrier network,
or an intelligent cellular phone because each of
these devices was claimed separately. . . . [T]he
Applicants did not explain to one of ordinary skill
what an intelligent cellular telephone was or how it
was different from PDAs or smart phones. (Id.)
Defendant cites deposition testimony of inventor
Alfonso Cioffi, as well as testimony of Plaintiffs
expert Dr. Dunsmore, that is purportedly

App-65
inconsistent with Plaintiffs current position that the
disputed term is defined by the remainder of the
limitation in which it appears. (Id. at 14-15
(quoting Dkt. No. 56 at 25); see Dkt. No. 66, Ex. 26,
6/26/2014 Cioffi dep. at 228:20- 229:10 (in response to
question[w]ould you agree that persons skilled in
the art that read these patents would understand
that intelligent celepho -- excuse me, that intelligent
cellular telephone capability to refer generally to the
class of features that are found on higher end mobile
phones stating that it is possible that a person of
skill in the art would come to that conclusion); Dkt.
No. 63, 6/9/2014 Dunsmore Decl. at 25 (One of
skill in the art at the time of the invention would
understand intelligent cellular telephone capability
to refer generally to the class of features that were
found on higher-end mobile phones of that time such
as web-browsing, reading and sending email, texting,
GPS, cameras, and mobile applications.).)
Defendant concludes that although the claim
language specifies one feature that must be included
with an intelligent cellular telephone capability
(namely a secure web browser including a first web
browser and a second web browser process),
because there is no guidance in the intrinsic
evidence as to what an ICTC [(intelligent cellular
telephone capability)] is, the claim term is
indefinite. (Id. at 16.)
Plaintiffs reply by reiterating that the disputed
term refers to the capability provided to a portable
computer and communication device . . . using a
wireless connection when you add a secure web

App-66
browser including a first web browser process and a
second web browser process. (Dkt. No. 67 at 9.)
At the August 14, 2014 hearing, Defendant
urged that the patents-in-suit and their prosecution
histories perhaps demonstrate what an intelligent
cellular telephone capability is not but do not set
forth what it is.
(2) Analysis
The Supreme Court of the United States has
recently read [35 U.S.C.] 112, 2 to require that a
patents claims, viewed in light of the specification
and prosecution history, inform those skilled in the
art about the scope of the invention with reasonable
certainty. Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120, 2129 (2014). A determination of
claim indefiniteness is a legal conclusion that is
drawn from the courts performance of its duty as the
construer of patent claims.
Datamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.
Cir. 2005) (citations and internal quotation marks
omitted), abrogated on other grounds by Nautilus,
134 S.Ct. 2120.
The specification contains no disclosures
regarding any intelligent device, let alone any
intelligent cellular telephone capability. Plaintiffs
have cited deposition testimony in which inventor
Alfonso Cioffi referred to surrounding claim
language:
Q . . . Can you tell me what you mean by
intelligent cellular phone capability?

App-67
A It is a capability that is -- that is realized
when coupled with a secure web browser
process including a first web browser process
and a second web browser process. That -that -- that statement -- that -- I mean, I
guess, in the termin[a]l -- that limitation,
that is all one statement.
Q

Well, again --

That -- that -- thats all together.

Q Im just asking for you, if you will,

describe what you mean in the patent by
intelligent cellular telephone capability.
A We mean the capability along with the
rest of the words in that phrase. I mean,
thats -- thats -- thats -- thats -- thats a
standalone phrase. Those words always
appear together in the way we use it. We
choose -- we chose to define it that way.
(Dkt. No. 57-1, 6/26/2014 Cioffi dep. at 225:16-226:9.)
Inventor testimony, however, is of limited weight.
Howmedica Osteonics Corp. v. Wright Med. Tech.,
Inc., 540 F.3d 1337, 1346-47 (Fed. Cir. 2008) (noting
that inventor testimony is of limited weight because
an inventor understands the invention but may not
understand the claims, which are typically drafted by
the attorney prosecuting the patent application).
During prosecution of the 500 Patent, for
example, the examiner rejected claims based on the
Narin reference (United States Patent Application
Publication No. 2002/0002673):

App-68
. . . Narin teaches a portable computing and
communication device capable of executing
instructions using a common operating
system, comprising:
...
a cell phone communication capability
(paragraph 0022, cellular networks use RF,
or radio frequency) . . . .
(Dkt. No. 66, Ex. 13, 6/13/2011 Office Action at 11;
see id. at 19, 29, 37 & 42 (similar)); see also Narin
at 22 (By way of example, and not limitation,
communication media includes wired media such as a
wired network or direct-wired connection, and
wireless media such as acoustic, RF, infrared and
other wireless media.).
In response, the patentees introduced the term
intelligent cellular telephone capability (additions
underlined and deletions in strikethrough or double
square brackets, as in original):
21. (Currently Amended) A portable
computing and communication device
capable of executing instructions using a
common operating system, comprising:
a network interface device configured to
exchange data across a network of one or
more computers using a wireless connection;
a cell phone communication capabilityan
intelligent cellular telephone capability with
a secure web browser including a first
browser process and a second browser
process;

App-69
at least a first memory space and a second
memory space, the first memory space
containing at least one system file; and
at least one electronic data processor
communicatively coupled to a network
interface device and to the first and second
memory space;
the at least one electronic data processor
configured to execute [[a]]the first browser
process within the common operating
system, wherein the first browser process is
capable of accessing data contained in the
first memory space and is further capable of
initializing [[a]]the second browser process;
the at least one electronic data processor
further configured to execute the second
browser process within the common
operating system, wherein the second
browser process is capable of accessing data
contained in the second memory space and is
further capable of generating data;
the at least one electronic data processor
further configured to pass data from the first
browser process to the second browser
process;
wherein the portable computing and
communication device is configured such
that the at least one system file residing on
the first memory space is protected from
corruption by a malware process downloaded
from the network and executing within the
second browser process.

App-70
(Dkt. No. 66, Ex. 14, 10/13/2011 Amendment Under
37 CFR 1.111 at 24; see also id. at 27 & 30.)
Further, the patentees stated:
As the Examiner correctly points out, Narin
does mention that computer 110 includes
computer
readable
media
having
communication media with wireless media
such as radio frequency (RF). (Paragraph
[0022].) This is a simple listing of well
known wireless media and does not teach an
intelligent cellular telephone capability with
a built-in secure web browser. Moreover,
there is no affirmative statement in Narin
that
the
portable
computing
and
communication
device
includes
the
intelligent cellular telephone capability with
the secure web browser. Narin is merely
silent on the concept.
Id. at 18 (emphasis added).
In response, the examiner cited the Toedtli
reference (U.S. Patent Application Publication No.
2002/0052809) as disclosing an intelligent cellular
phone:
17. Narin does not teach an intelligent
cellular telephone capability with a
secure web browser.
18. Toedtli teaches wherein the portable
computer comprises an intelligent
cellular phone with a secure web
browser (paragraphs 0030-0031, a
cellular phone with a WAP [(Wireless
Application Protocol)] browser that

App-71
establishes a secure connection to the
web
server
and
can
provide
cryptographically encoded data).
19. It would have been obvious to one of
ordinary skill in the art at the time
the invention was made for the secure
application of Narin to be a secure
web browser operating on an
intelligent cellular phone network,
since Toedtli states at paragraph 0030
that the WAP browser provides a
secure
connection
and
can
cryptographically
encode
data,
thereby making any transactions
occurring from the cell phone more
secure.
(Id., Ex. 17, 11/17/2011 Office Action at 17-19; 7 see
Dkt. No. 63, 6/9/2014 Dunsmore Decl. at 14 n.4
(Wireless Application Protocol (WAP) is a technical
standard for accessing information over a mobile
7

Paragraph 30 of Toedtli discloses:

In a further embodiment, the buyer can use the internet 9
for contacting the database holder, either by using a
cellular phone with browsing capabilities (such as WAP),
or by using a computer 10c. In both cases, the buyer
contacts a secure web server 8 of the database holder,
which queries him for the article number and the phone
number. Secure web server 8 is able to establish a secure
connection to computer 10c or cellular phone 10a, which
connection positively identifies at least the server (and
preferably the client) and provides cryptographically
encoded data exchange between them, e.g. by using known
methods involving asymmetric public and private key
pairs.

App-72
wireless network. A WAP browser is a web browser
for mobile devices such as mobile phones that use the
protocol.).)
The examiners use of the disputed term without
objection suggests that the surrounding claim
language provides sufficient context. See Am. Hoist &
Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350,
1359 (Fed. Cir. 1984) (patent examiners are
assumed . . . to be familiar from their work with the
level of skill in the art), abrogated on other grounds,
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d
1276 (Fed. Cir. 2011); see also PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir.
2008) (citing American Hoist); Salazar v. Procter &
Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005)
(Statements about a claim term made by an
Examiner during prosecution of an application may
be evidence of how one of skill in the art understood
the term at the time the application was filed.).
On one hand, claims are interpreted with an eye
toward giving effect to all terms in the claim.
Digital-Vending Servs. Intl, LLC v. Univ. of Phoenix,
Inc., 672 F.3d 1270, 1275 (Fed. Cir. 2012) (quoting
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006)). This proposition, as a general matter,
disfavors Plaintiffs proposal that the disputed term
is defined by other claim language.
On the other hand, surplusage may exist in
some claims. Decisioning.com, Inc. v. Federated
Dept Stores, Inc., 527 F.3d 1300, 1312 n.6 (Fed. Cir.
2008); accord ERBE Elektromedizin GmbH v.
Canady Tech. LLC, 629 F.3d 1278, 1286 (Fed. Cir.
2010).

App-73
On balance, the best reading of the claim
language and the prosecution history is that the
intelligent cellular telephone capability is provided
by the use of a secure web browser including a first
web browser process and a second web browser
process, as recited in the claims. The surrounding
claim language thus renders the scope of the
disputed term reasonabl[y] certain[]. Nautilus, 134
S. Ct. at 2129; see Trover Group, Inc. v. Tyco Intl,
Ltd., No. 2:13-CV-52, 2014 WL 3736340 (E.D. Tex.
July 28, 2014) (Bryson, J.) (Although the term
amplitude is used only in the claims and is not
defined or discussed in the specification, the Court
does not find it to be indefinite. To the contrary, the
context makes the meaning of the term sufficiently
clear to ensure that the term is not so indefinite as to
invalidate the claims in which it appears.).
Defendants indefiniteness argument is therefore
hereby expressly rejected. No further construction is
necessary. See U.S. Surgical, 103 F.3d at 1568; see
also O2 Micro, 521 F.3d at 1362.
The Court accordingly hereby construes
intelligent cellular telephone capability to
have its plain meaning.

App-74
H. critical file
Plaintiffs Proposed
Construction
Not indefinite
files that are
required to start
or run the
computers
systems properly 8

Defendants Proposed
Construction

Indefinite

(Dkt. No. 56 at 28; Dkt. No. 66 at 16-18.) Plaintiffs

submit that this disputed term appears in Claim 21
of the 103 Patent. (Dkt. No. 56 at 28 n.28.)
Shortly before the start of the August 14, 2014
hearing, the Court provided the parties with the
following preliminary construction: Indefinite
[Claim 21 of the 103 Patent is invalid].
(1) The Parties Positions
Plaintiffs rely upon the opinion of their expert
that a critical file is well understood by persons of
ordinary skill in that art and that the specification is
consistent with that understanding. (See Dkt. No. 56
at 28-29.) Plaintiffs submit that the claim is clear
because [o]ne of skill can easily determine if a file is
critical: if the file can be removed or modified without
interfering with the proper operation of the
computers software systems then it is not critical.
(Id. at 29.)
Further, Plaintiffs argue that the
8 Plaintiffs previously proposed: Files that are required to
start or run the operating system properly. Dkt. No. 52, Ex. A
at 16.

App-75
disclosure, in the specification, of critical user files
does not render the term critical file indefinite
because a user file in some rare instances could be a
critical file provided the particular user file was
required to start or run the computers systems
properly. (Id.)
Defendant responds that the specification and
the file history teach that critical files include critical
user, system and application files. (Dkt. No. 66 at
17.) Defendant submits that [b]ecause critical file
includes user files, it is an entirely subjective term
that depends on the viewpoint of the particular user.
(Id.) Defendant concludes that because the
specification does not set forth an objective standard
to determine the scope of critical file, this claim
term is indefinite. (Id. at 17-18.)
Plaintiffs reply:
Defendants entire argument that critical
file is indefinite rests on the sole basis that
a critical file must also include a user file
because in three instances (out of more than
20), the specification makes reference to
critical user files. As explained in
Plaintiffs Opening Brief, one of skill would
not view three stray references to critical
user files as changing the otherwise well
understood definition of critical file by one
of ordinary skill. Indeed, both [sides] experts
agree that critical files are synonymous
with system files. [Dkt. No. 56] at 28.
(Dkt. No. 67 at 10.) Plaintiffs emphasize that a clear
and ordinary meaning is not properly overcome (and

App-76
a relevant reader would not reasonably think it
overcome) by a few passing references that do not
amount to a redefinition or disclaimer. (Id. (quoting
Ancora Techs. v. Apple, Inc., 744 F.3d 732, 737 (Fed.
Cir. 2014)).)
At the August 14, 2014 hearing, Plaintiffs
reiterated that the numerous references in the
specification to critical system files vastly outweigh
the three stray references to critical user files.
(2) Analysis
As a threshold matter, although the Court can
consider expert opinions submitted by the parties,
such evidence is extrinsic and carries less weight
than the intrinsic evidence. See Phillips, 415 F.3d at
1318.
Claim 21 of the 103 Patent recites:
21.
A portable computer based system
capable of executing instructions using a
common operating system and protect[ing]
critical files from malicious attacks via a
network of one or more computers,
comprising:
a first logical process capable of executing
instructions within the common operating
system using at least one electronic data
processor and further capable of accessing a
first memory space, wherein the first
memory space contains at least one critical
file; and
at least one secure browser process
capable of executing instructions within the

App-77
common operating system using the at least
one electronic data processor and further
capable of accessing a second memory space;
the first logical process configured to:
accept data entry from a computer user;
initialize the at least one secure browser
process; and pass data to the at least one
secure browser process;
the at least one secure browser process
configured to:
execute instructions from a process
potentially
containing
malware
downloaded from the network of one or
more computers;
access data contained in the second
memory space, wherein the process
potentially containing malware is capable
of accessing the second memory space but
is denied access to the first memory space;
store at least one temporary internet file
on the first or second memory space;
block the process potentially containing
malware from modifying search requests
when accessing a search engine; and
generate website video data for display;
wherein the portable computer based
system is configured such that the at least
one critical file residing on the first memory
space is protected from corruption by the
process potentially containing malware

App-78
downloaded from the network and executing
as part of the at least one secure browser
process;
wherein the portable computer based
system is configured such that the at least
one temporary internet file is automatically
deleted upon closing the at least one secure
browser process.
The claim thus does not define or illuminate any
objective distinction between a critical file and a
mere file.
[W]hen faced with a purely subjective phrase
. . ., a court must determine whether the patents
specification supplies some standard for measuring
the scope of the phrase. Datamize, 417 F.3d at 1351,
abrogated on other grounds by Nautilus, 134 S.Ct.
2120. The specification discloses:
An aspect of some current computer
architectures that has contributed to the
security problem is that by default programs
are typically allowed to interact with and/or
alter other programs and data files,
including critical operating system files, such
as the [W]indows [R]egistry, for example.
***
Security holes in critical applications are
discovered quite often, and just keeping up with all
the patches is cumbersome.
***

App-79
Therefore, what is needed in the art is a
means of isolating the network interface
program from the main computer system
such that the network interface program
does not share a common memory storage
area with other trusted programs. The
network interface
program
may
be
advantageously given access to a separate,
protected memory area, while being unable
to initiate access to the main computers
memory storage area. With the network
interface program constrained in this way,
malware programs are rendered unable to
automatically corrupt critical system and
user files located on the main memory
storage area.
***
It is an object of the present invention to
provide a computer system capable of
preventing
malware
programs
from
automatically corrupting critical user and
system files.
***
It is another object of the present invention
to provide a user with an easy and
comprehensive method of restoring critical
system and user files that may have been
corrupted by a malware infection.
***
Second processor 140 and memory 130 act as
a separate computer system, interacting

App-80
with network 195 while isolating network
195 from the first processor 120 and memory
110.
Memory 130 may store critical
application and system files required by
second processor 140 to execute the desired
tasks.
247 Patent at 3:39-44, 6:45-47, 7:1-11, 7:42-44, 7:5356 & 11:11-16. These are not merely passing
references, as Plaintiffs argue. Dkt. No. 67 at 10
(quoting Ancora, 744 F.3d at 738). Instead, the
above-quoted passages disclose that in addition to
system files being critical, user files can be critical
as well. Similarly, during prosecution of the 247
Patent, the patentees stated:
If malicious instructions are executed within
the second logical process, any data
corruption is confined to the second
electronic memory space. Critical user data
residing on the first electronic memory space
is thereby protected from corruption by a
malicious (malware) process downloaded
from the network and executing on the
second logical process.
Id., Ex. 3, 4/29/2008 Amendment Under 37 CFR
1.111 at 11 (emphasis added).
The specification and the prosecution history
thus tend to confuse rather than clarify the meaning
of critical file because whereas what is critical to
operation of the computer system may be objectively
determinable, what is critical to a user may be
entirely subjective.

App-81
As to the experts opinions, on one hand
Defendants expert acknowledges: A person of
ordinary skill in the art knows that system files are
synonymous with critical file and critical system
file. (See Dkt. No. 66, Ex. 23, 7/10/2014 Arbaugh
Decl. at 32.)
On the other hand, although Plaintiffs expert
maintains that a user file cannot be a critical file,
Plaintiffs expert acknowledges that what is critical
to a user is subjective. See (Dkt. No. 63, 6/9/2014
Dunsmore Decl. at 35 (One of skill would
understand that a critical file would not be a user
file, as users may disagree what is and is not critical
to them.
A user may have files containing
information such as accounts and passwords, bank
account numbers, credit card numbers, etc. that a
user may consider as critical user files.).)
Defendants expert agrees that a critical user file is
entirely subjective because what is critical to one
person may not be critical to another. (See Dkt. No.
66, Ex. 23, 7/10/2014 Arbaugh Decl. at 32.)
Plaintiffs propose to give clear meaning to the
disputed term by construing it to mean files that are
required to start or run the computers systems
properly. To whatever extent Plaintiffs are
proposing
a
narrowing
construction,
as
contemplated by the Exxon case, Nautilus abrogated
Exxon in this regard and thereby eliminated any
such avenue of avoiding an indefiniteness finding.
See Exxon Research & Engg Co., 265 F.3d 1371, 1375
(Fed. Cir. 2001) (If a claim is insolubly ambiguous,
and no narrowing construction can properly be

App-82
adopted, we have held the claim indefinite.),
abrogated by Nautilus, 134 S.Ct. at 2124, 2130 n.9.
In sum, because critical file is a subjective
term, and because neither the specification nor the
prosecution history sets forth any standard for
measuring the scope of that term, the Court
concludes that the term critical file fails to inform
those skilled in the art about the scope of the
invention with reasonable certainty. Nautilus, 134
S. Ct. at 2129; see Datamize, 417 F.3d at 1351.
The Court accordingly hereby finds that the term
critical file is indefinite and that Claim 21 of
the 103 Patent is therefore invalid.
I.

Defendants 35 U.S.C. 112, 2 Invalidity

Arguments as to All Asserted Claims

Defendant argues that the asserted claims are

invalid pursuant to 35 U.S.C. 112, 2 for two
reasons. First, Defendant argues that all of the
asserted claims are contrary to the specification
because the core security teaching set forth in the
specification requires isolating the network interface
program so that it does not have access to files stored
in the first memory space. (See Dkt. No. 66 at 6-12
(discussing Allen Engg Corp. v. Bartell Indus., 299
F.3d 1336, 1348-49 (Fed. Cir. 2002)).) Second,
Defendant argues that by eliminating the
requirement of two physically separate processors, 40
of the 45 asserted claims fail to include the physical
hardware separation the applicants told the Patent
Office their original invention required. (Id. at 12
(capitalization modified); see id. at 12-13 (citing Allen
Engg, 299 F.3d at 1348-49).)

App-83
As background, 35 U.S.C. 112, 2 states: 9
The specification shall conclude with one or more
claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his invention.
This statute contains two distinct requirements.
One is known as the definiteness requirement,
which has been asserted by Defendant as to the
terms intelligent cellular telephone capability and
critical file, discussed above. The other is the
regards as his invention requirement, which is
distinct from definiteness. See Ancora, 744 F.3d at
739. Defendant argues that all of the asserted claims
fail to satisfy this second requirement.
The
determination whether a claim recites the subject
matter which the applicant regards as his invention,
like a determination whether a claim is sufficiently
definite, is a legal conclusion that is drawn from the
courts performance of its duty as the construer of
patent claims. Solomon v. Kimberly-Clark Corp., 216
F.3d 1372, 1377 (Fed. Cir. 2000) (citation and
internal quotation marks omitted).
(1) Contradicting the Core Security Teaching of
the Specification
(a) The Parties Positions
9 The Leahy-Smith America Invents Act (AIA) amended
this statute so as to read: The specification shall conclude with
one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint
inventor regards as the invention. It appears that the pre-AIA
version applies to the patents-in-suit. Regardless, the
amendment would have no effect on the Courts analysis in the
present case.

App-84
Plaintiffs argue: [T]he asserted claims can be
logically reconciled with the specification because it
discloses examples of the very embodiments claimed.
In Figure 1 of the common specification for the
patents-in-suit, the first web browser process
(represented by P1) is directly connected to the
network interface device through the two-way
communication link 191. (Dkt. No. 56 at 20.)
Plaintiffs submit that Defendants expert fails to
address this disclosure. (Id.at 23.) Plaintiffs explain
that one of skill in the art knows there are low
threat tasks involving communication with the
network such as passing encryption and decryption
keys (see, e.g., [247 Patent at] 17:42-44), accessing
secure websites with digital certificates, and
streaming bits from a network to a media player
that can be carried out with a high level of
confidence. (Id.) Plaintiffs also submit a declaration
by their own expert. (See Dkt. No. 63, 6/9/2014
Dunsmore Decl. at 14-21.)
Further, Plaintiffs urge that one of skill in the
art would recognize that the fundamental nature of
the invention allows, but does not require, the first
logical process to be isolated from the network. (Dkt.
No. 56 at 22.) Plaintiffs submit that as explained by
Professor Dunsmore [(Plaintiffs expert)], the first
logical process could simply act as a pass-through
and allow all the data received from the network
interface to flow to the second logical process for
execution and eliminate the entire basis of
Defendants criticism that the first logical process
may be exposed to malware by having a network
connection. (Id. at 23.)

App-85
Plaintiffs conclude that the requirement that all
the asserted claims of the patents-in-suit have a first
web browser process with a connection to the
Internet is entirely consistent with the common
specification, while it is also apparent to one [of] skill
in the art that having such a connection is well
within what the patentees regarded as their
invention. (Id. at 24; see id. at 5-6 (citing Ancora,
744 F.3d at 739 (distinguishing Allen Engg); citing
Imperium (IP) Holdings, Inc. v. Apple, Inc., 920 F.
Supp. 2d 747, 763-65 (E.D. Tex. 2013) (Clark, J.)
(adopting report and recommendation rejecting
argument that claims were inconsistent with the
specification)).)
Defendant responds that all of the asserted
claims are invalid because [the] reissued claims . . .
contradict the core security teaching of the original
patent specification, which required isolating the
network interface program so that it did not have
access to the critical files stored in the first memory
space. (Dkt. No. 66 at 6; see id. at 5-6 (citing Allen
Engg, 299 F.3d at 1348-49; citing Juxtacomm-Texas
Software, LLC v. Axway, Inc., No. 6:10-cv-11, 2012
WL 7637197, at *4-*5 (E.D. Tex. July 5, 2012) (Davis,
J.) (discussing Allen Engg), affd, No. 2013-1004, 1025, 532 F. Appx 911 (Fed. Cir. Sept. 30, 2013);
citing Tech. Innovations, LLC v. Amazon.com, Inc.,
Civ. No. 11-690, 2014 WL 1292093, at *4-*5 (D. Del.
Mar. 31, 2014) (Robinson, J.) (discussing Allen
Engg)).)
Defendant explains: The specification does not
disclose any embodiment with a network interface
program, much less a web browser program, having

App-86
access to the first memory space containing the
trusted content.
Moreover, nowhere in the
specification is it explained how trusted content on
the first memory space would be protected if the
network interface program, or web browser, has
access to the first memory space. (Dkt. No. 66 at 7.)
Defendant submits:
[The] [reissue] claims now require a first
process to access both the first memory
space where critical files are stored and
data of a website via the network. This
addition undermines the core isolation
principle of the invention (which
was
used to distinguish prior art in the 247
patent file history) because the first process
is now capable of accessing data from a
website via a network and also capable of
accessing the first memory space.
(Id. at 7-8.) Finally, Defendant argues that the use of
communication link 191, shown in Figure 1, does
not
support
the
reissue
claims
because
communication link 191 is disclosed only as being
used for sending decryption keys.
(Id. at 10.)
Defendant argues that [b]ecause the decryption keys
bypass the second processor, malware cannot steal
the decryption keys and access the sensitive data.
(Id.)
Plaintiffs reply that [i]n reissue, the inventors
narrowed the original claims to specify that the first
logical process must also be at least capable of
accessing the Internet. (Dkt. No. 67 at 4.) Plaintiffs
also reiterate their opening arguments, particularly
as to the disclosure of communication link 191. (Id.

App-87
at 5-7.) For example, Plaintiffs argue that one of
skill would know, and the patent teaches, in order to
carry out tasks such as encrypted online internet
banking, the first web browser process can be used to
carry out a trusted activity with the Internet, while
the second process is used to run programs and
render web pages potentially containing malware.
(Id. at 6 (citing Ex. L, 6/17/2014 Dunsmore dep. at
185:22-187:25).) Plaintiffs conclude that [u]nlike
Defendants cited cases, the claims are drafted as the
inventors intended, and they are drafted consistent
with one or more disclosed embodiments in the
patents specification. (Dkt. No. 67 at 7.)
At the August 14, 2014 hearing, Defendant
reiterated that Plaintiffs reliance on communication
link 191 must fail because there is no disclosure of
that link being used to transfer data to or from the
network, only decryption keys. Defendant also urged
that there is no support in the intrinsic evidence for
Plaintiffs experts discussion of allowing a first
processor to access the network so as to conduct low
risk activities or to pass through information to a
second processor. Plaintiffs replied that their expert
opined as to what a person of ordinary skill in the art
at the relevant time would have understood from the
specification.
(b) Analysis
Where it would be apparent to one of skill in the
art, based on the specification, that the invention set
forth in a claim is not what the patentee regarded as
his invention, we must hold that claim invalid under
112, paragraph 2. Allen Engg, 299 F.3d at 1349
(it is apparent from a simple comparison of the

App-88
claims with the specification that the inventor did
not regard a trowel in which the second gear box
pivoted only in a plane perpendicular to the biaxial
plane to be his invention; the specification describes
this structure in contrary terms, stating that
rotation about the axis established by bolt 272 is not
permitted; gearbox 85A cannot pivot in a plane
perpendicular to the biaxial plane; we conclude as
a matter of law that [the] claims . . . which include
the incorrect perpendicular limitation[] are invalid
under 112, paragraph 2). Also, the Juxtacomm
case cited by Defendant found that there must be a
showing of a logical inconsistency or contradiction
between the claims and the specification.
Juxtacomm, 2012 WL 7637197, at *4 (discussing
Allen Engg).
Claim 21 of the 500 Patent is representative and
recites (emphasis added):
21.
A
portable
computing
and
communication device capable of executing
instructions using a common operating
system, comprising:
a network interface device configured to
exchange data across a network of one or
more computers using a wireless connection;
an intelligent cellular telephone capability
with a secure web browser including a first
web browser process and a second web
browser process;
at least a first memory space and a second
memory space, the first memory space
containing at least one system file; and

App-89
at least one electronic data processor
communicatively coupled to the network
interface device and to the first and second
memory space;
the at least one electronic data processor
configured to execute the first web browser
process within the common operating
system, wherein the first web browser process
is capable of accessing data of a website via
the network, accessing data contained in the
first memory space and is further capable of
initializing the second web browser process;
the at least one electronic data processor
further configured to execute the second web
browser process within the common
operating system, wherein the second web
browser process is capable of accessing data
contained in the second memory space and is
further capable of generating data;
the at least one electronic data processor
further configured to pass data from the first
web browser process to the second web
browser process;
wherein the portable computing and
communication device is configured such
that the at least one system file residing on
the first memory space is protected from
corruption by a malware process downloaded
from the network and executing within the
second web browser process.
The claim thus recites that even though the first
web browser process has network access, data can be

App-90
passed to a second web browser process, and at least
one system file residing on the first memory space is
protected from corruption by a malware process
downloaded from the network and executing within
the second web browser process.
Moreover, as Plaintiffs have noted, the
specification discloses: Decryption keys may be
passed between P1 120 and the network interface
device 190 via the communication link 191. See 247
Patent at 17:42-44. The communication link 191 is
illustrated in Figure 1 as a connection between 1st
processor 120 and Network interface 190. Figure 1
is reproduced here:

App-91

Though perhaps not dispositive, this disclosure is

probative. See Vitronics, 90 F.3d at 1582-83 (noting
that a claim interpretation in which the only
embodiment or a preferred embodiment would not
fall within the scope of the patent claim . . . is rarely,
if ever, correct and would require highly persuasive
evidentiary support).
Plaintiffs expert, Dr.

App-92
Dunsmore, has provided further explanation through
deposition testimony:
Q. Does the specification[] teach a person
of ordinary skill that the decryption keys are
actually passed into the network?
A.
It doesnt say that explicitly, but
having a network interface, the very
terminology interface suggests that it is
going to be something thats going to
exchange information with the network.
From a pragmatic standpoint if I am one of
the skill and I realize, for example, if I am
doing internet banking and back in processor
120 I want to send my account and
password, I want to encrypt that, and so
certainly if I send an encryption key followed
by the encrypted text, it has got to go further
than just the network interface or I do not
accomplish my internet banking.
***
Q. And so your belief is looking at lines 42
to 44 of column 17 is that the encryption
keys will actually be sent over the network
in addition to the encrypted data?
A. That is certainly my expectation.
(Dkt. No. 57-2, 6/17/2014 Dunsmore dep. at
120:19-121:9 & 121:14-19.) Although such expert
testimony carries less weight than the intrinsic
evidence, expert opinions can be considered. See
Phillips, 415 F.3d at 1318; (but see Dkt. No. 66, Ex.
25, 6/17/2014 Dunsmore dep. at 250:7-20 (I am an

App-93
expert in software engineering and certainly with
web browsers and so on. I am not an expert in
computer security. . . . I do not view myself as an
expert in malware protection. I am aware of the
dangers of malware. I am aware of the fact that it
can be -- that it can be infected via web browsers, but
I am certainly not an expert in that.).)
On balance, Defendant has failed to demonstrate
any logical inconsistency or contradiction between
the claims and the specification. Of particular note,
in the Allen Engineering case relied upon by
Defendant the patentee agreed that the claims were
inconsistent with the specification because of a claim
drafting error. 299 F.3d at 1349; see Ancora, 744 F.3d
at 739 ([T]his case is unlike Allen, where the
patentee agreed that the claim language did not
match what he regarded as his invention, as the
intrinsic record unambiguously showed, and this
court denied the patentees request to reject the claim
languages clear, ordinary meaning. Here, Ancora
embraces the claim languages clear, ordinary
meaning, and for the reasons we have explained, we
do not think that the specification and prosecution
history establish that the applicants regarded their
invention as something contrary to that meaning.).
Finally, any remaining arguments concerning
lack of support in the specification pertain to the
requirements of enablement or written description
(or pertain to the prohibition against new matter or
the rule against recapture, which are discussed
below) and are thus not addressed by the present
claim construction proceedings. See Phillips, 415
F.3d at 1327 ([W]e have certainly not endorsed a

App-94
regime in which validity analysis is a regular
component of claim construction.).
The Court accordingly
invalidity argument.

rejects

Defendants

(2) Physically Separate Processors

(a) The Parties Positions
Defendant argues that 40 of the 45 asserted
reissue claims are invalid because the new claims
eviscerate[] the physical hardware separation that
the Applicants relied on to convince the Patent Office
to issue their original claims. (Dkt. No. 66 at 12.)
Plaintiffs reply that Figure 9 and column 16
indisputably teach embodiments using a single
processor. (Dkt. No. 67 at 8 (citing 528 Patent at
16:10-12 (247 Patent at 16:22-24)).)
(b) Analysis
The Background section of the specification
states:
Therefore, what is needed in the art is a
means of isolating the network interface
program from the main computer system
such that the network interface program
does not share a common memory storage
area with other trusted programs. The
network interface
program
may
be
advantageously given access to a separate,
protected memory area, while being unable
to initiate access to the main computers
memory storage area. With the network
interface program constrained in this way,
malware programs are rendered unable to

App-95
automatically corrupt critical system and
user files located on the main memory
storage area.
247 Patent at 7:1-11.
During prosecution of the 247 Patent, the
patentees stated:
Corthell [(United States Patent No.
6,192,477)] teaches the use of a computer
system using a single electronic data
processor (Figure 1, [block 102]), utilizing a
redirector (Figure 2, [block 214]) and filter
(Figure 2, [block 216]) mechanism to protect
against attacks by malware. Corthell,
therefore, teaches the use of a single
electronic data processor that is necessarily
executing all instructions, including those
related to: (1) the operating system, (2)
unsecure operations, such as a browser
program (column 5, lines 5-8), and (3) a
software based redirector and filter
mechanism (column 5, lines 65-68). While
Corthell does teach partitioning of the
memory space into a primary partition
(Figure 2, [block 204]) and a protected
partition (Figure 2, [block 206]), he does not
teach or suggest the partitioning of secure
and unsecure instruction execution onto
separate electronic data processors.
In stark contrast, Applicants teach the use of
a multi-processor computer having at least a
first and second electronic data processor
capable of executing instructions using a

App-96
common operating system.
The second
electronic data processor is capable of being
configured in a protected mode when a
network process is active. Such a
configuration allows for a physical hardware
separation or partitioning of instruction
execution on physically separate processors
(or processor cores), in contrast to Corthells
teaching of executing all instructions on a
single electronic data processor.
By
physically separating the execution of trusted
instructions (the operating system running
on the first electronic data processor, for
example) from untrusted network process
instructions (a Java script downloaded from
the internet, for example), a higher level of
security may be achieved.
(Dkt. No. 66, Ex. 3, 4/29/2008 Amendment Under 37
CFR 1.111 at 9-10 (citation omitted; emphasis
added; square brackets in original).)
Here, unlike Defendants regards as his
invention argument regarding the first web browser
process having network access (discussed above),
Defendant appears to be arguing that the reissue
claims violate the prohibition against new matter
or the rule against recapture (or both). See 35
U.S.C. 251; see generally Revolution Eyewear, Inc.
v. Aspex Eyewear, Inc., 563 F.3d 1358, 1366-68 (Fed.
Cir. 2009) (discussing new matter and recapture);
In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)
(The recapture rule . . . prevents a patentee from
regaining through reissue the subject matter that he
surrendered in an effort to obtain allowance of the

App-97
original claims. Under this rule, claims that are
broader than the original patent claims in a manner
directly pertinent to the subject matter surrendered
during prosecution are impermissible.) (citations
and internal quotation marks omitted).
General claim construction proceedings are not
the proper vehicle for resolving such disputes. See
MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d
1306, 1312, 1314 (Fed. Cir. 2010) (reviewing grant of
summary judgment of invalidity based on recapture,
noting that [w]e review a district courts legal
determination that a reissue patent violates the rule
against recapture without deference; noting that the
first step in applying the rule against recapture is to
construe the reissued claims); see also Hester Indus.,
Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir.
1998) (reviewing grant of summary judgment that
asserted reissue claims were invalid for failing to
meet requirements of 35 U.S.C. 251; noting that
[w]hether the statutory requirements of 35 U.S.C.
251 have been met is a question of law, but [t]his
legal conclusion can involve underlying factual
questions) (citation omitted); cf. Brooktree Corp. v.
Advanced Micro Devices, Inc., 977 F.2d 1555, 1574
(Fed. Cir. 1992) (upon review of jury finding that an
addition was not new matter prohibited by 35
U.S.C. 132, noting that [t]he question whether
new matter has been added to an application is a
question of fact); Commonwealth Scientific and
Indus. Research Org. v. Buffalo Tech., Inc., 542 F.3d
1363, 1370, 1378-80 (Fed. Cir. 2008) (reviewing for
clear error a denial of summary judgment of
invalidity, citing Brooktree and noting with reference
to 35 U.S.C. 132 that [t]he question whether new

App-98
matter has been added to an application is a question
of fact).
For example, a recapture analysis requires first
construing the claims. See MBO Labs., 602 F.3d at
1314 (noting that the first step in applying the rule
against recapture is to construe the reissued claims);
see also AIA Engg Ltd. v. Magotteaux Intl S/A, 657
F.3d 1264, 1272 (Fed. Cir. 2011) (The first step of
the recapture test requires the application of claim
construction principles to determine whether and in
what aspect the reissue claims are broader than the
original claims.); In re Youman, 679 F.3d 1335, 1347
(Fed. Cir. 2012) (If the modified limitation does not
materially narrow (or, in other cases, the limitation
is eliminated), the Board must still determine
whether the reissued claims were materially
narrowed in other respects so that the claims have
not been enlarged, and hence avoid the recapture
rule.).
Finally, to whatever extent Defendant is arguing
that the reissue claims are logically inconsistent with
the disclosure, in the specification, of physically
separate processors, any such argument is rejected
for substantially the same reasons set forth above as
to Defendants argument that the reissue claims are
inconsistent with the core security teaching of the
specification. See Dkt. No. 66 at 6; see also Ancora,
744 F.3d at 739; 247 Patent at 16:22-47 (Referring
again to FIG. 9, the functions carried out by
processors 920 and 940 may comprise separate,
secure logical processes executing on the same
physical processor) & Fig. 9.

App-99
Thus, the Court rejects Defendants invalidity
argument.
(3) Conclusion
For the reasons set forth in subsections (1) and
(2), above, the Court hereby rejects Defendants
general 35 U.S.C. 112, 2 invalidity arguments as
to all asserted claims.
CONCLUSION
The Court adopts the constructions set forth in
this opinion for the disputed terms of the patents-insuit.
As further set forth above regarding the term
critical file, the Court finds that Claim 21 of the
103 Patent is invalid as indefinite.
The parties are ordered that they may not refer,
directly or indirectly, to each others claim
construction positions in the presence of the jury.
Likewise, the parties are ordered to refrain from
mentioning any portion of this opinion, other than
the actual definitions adopted by the Court, in the
presence of the jury. Any reference to claim
construction proceedings is limited to informing the
jury of the definitions adopted by the Court.
SIGNED this 28th day of August, 2014.

ROY S. PAYNE
S A S
* Appendix A omitted for purposes of this appendix

App-100
Appendix C
(Dec. 2, 2014)
UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
ALFONSO CIOFFI,
an individual, and
THE ESTATE OF
ALLEN ROZMAN,
Plaintiffs,

No. 2:13-cv-103-JRG-RSP

v.
GOOGLE, INC.,
Defendant.
ORDER ON FINAL JUDGMENT
Pursuant to the Stipulation, the Court hereby orders
as follows:
1.
This is a patent infringement action brought
by Alfonso Cioffi and The Estate of Allen Rozman
(collectively Plaintiffs) against Defendant Google
Inc. In response, Google asserted affirmative
defenses.
2.
This Court has jurisdiction over the claims in
this action pursuant to 28 U.S.C. 1331 and 1338.
3.
The patents-in-suit are U.S. Patent Nos.
RE43,500, RE43,528, RE43,529, and RE43,103
(collectively Patents-in-Suit). Plaintiffs assert that
they are the owners of the patents-in-suit, with all
substantive rights in and to the patents.

App-101
4.
In
its
First
Amended
Infringement
Contentions, Plaintiffs accuse Google Chrome
Browser for Windows, Google Chrome Browser for
Apple Mac OS X, Google Chrome Browser for Linux,
and Google Chrome OS, Chrome for Android (4.0 and
later) (collectively the Accused Products) of
infringement.
5.
On August 28, 2014, the Court entered a
Claim Construction Memorandum and Order (Dkt.
71) in the above-captioned case construing certain
disputed terms of the Patents-in-Suit.
6.
The Claim Construction Order determined
that claim 21 of the 103 Patent (the only claim
asserted from the 103 Patent) is invalid for
indefiniteness because the claim term critical file is
indefinite. For this reason, Plaintiffs cannot prevail
on the issue of infringement of claim 21 of the 103
Patent.
7.
The Claim Construction Order also construed
web browser process to mean process that can
access data on websites. The Courts Order further
stated that:
To be clear, can in the Courts construction
does not mean must and instead refers to a
capability. For this capability to be
meaningful and consistent with the
prosecution history, however, a web browser
process must be capable of accessing a
website without using another web browser
process. In other words, although the Courts
construction does not preclude a web browser
process from accessing websites by using

App-102
another web browser process, a web browser
processs capability of accessing websites
must not require using another web browser
process.
8.
On September 25, 2014, Plaintiffs served their
Final Election of Asserted Claims, asserting claims
21, 30, 32, 39, 43, 66, and 70 of the 500 Patent;
claims 5, 21, 23, 30, 44, 64, 67 of the 528 Patent; and
claims 23, 30, 36, 38, 45, and 49 of the 529 Patent
(collectively Asserted Claims).
9.
The parties stipulate and agree that under the
Courts Claim Construction Order, Plaintiffs cannot
prevail on the issue of infringement of the Asserted
Claims, either literally or by equivalents. Plaintiffs
First Amended Infringement Contentions identify
the browser kernel found in the Accused Products as
the first web browser process under the Asserted
Claims, and the rendering engine found in the
Accused Products as the second web browser
process under the Asserted Claims. The rendering
engine found in the Accused Products (the second
web browser kernel under Plaintiffs infringement
contentions) is not capable of and cannot access data
of websites without using the browser kernel found
in the Accused Products (the first web browser
process under Plaintiffs infringement contentions).
Therefore, under the Courts Claim Construction
Order, the rendering engine found in the Accused
Products cannot meet the web browser process
limitation of the Asserted Claims. All of the Asserted
Claims contain a first web browser process and
second web browser process limitations.

App-103
10.
Googles unadjudicated affirmative defenses
asserted in Googles Answer to the First Amended
Complaint (Dkt. 15) are dismissed without prejudice.
This dismissal is made subject to Googles right to
reassert the foregoing affirmative defenses should
any of Plaintiffs infringement claims regarding the
Patents-in-Suit be revived for any reason (including,
but not limited to, modification of the Courts claim
constructions on appeal).
11.
This Final Judgment is entered without
prejudice to any rights parties have post-judgment
and/or the parties right to appeal any other aspect of
the Courts ruling preceding the Stipulated Order of
Dismissal and Final Judgment, as well as future
orders issued by the Court.
The Court hereby ORDERS entry of final
judgment of non-infringement of U.S. Patent Nos. RE
43,528; RE 43,529; and RE43,500 against Plaintiffs.
This action is therefore TERMINATED
So ORDERED and SIGNED this 2nd day of
December, 2014.

RODNEY GILSTRAP

App-104
Appendix D
(April 11, 2016)

United States Court of Appeals

Federal Circuit
________________
ALFONSO CIOFFI, THE ESTATE OF ALLEN
FRANK ROZMAN,
Plaintiffs-Appellants,
v.
GOOGLE, INC.,
Defendant-Appellee.
________________
2015-1194
________________
Appeal from the United States District Court for the
Eastern District of Texas in
No. 2:13-cv-00103-JRG-RSP,
Judge J. Rodney Gilstrap.
________________
ON PETITION FOR REHEARING EN BANC
________________
Before PROST, Chief Judge, NEWMAN, PLAGER*,
LOURIE, BRYSON*, DYK, MOORE, OMALLEY, REYNA,
WALLACH, TARANTO, CHEN, HUGHES, and STOLL,
Circuit Judges.
PER CURIAM.
ORDER

App-105
Appellee Google, Inc. filed a petition for
rehearing en banc. A response to the petition was
invited by the court and filed by appellants Alfonso
Cioffi and The Estate of Allen Frank Rozman. The
petition was first referred as a petition for rehearing
to the panel that heard the appeal, and thereafter the
petition for rehearing en banc was referred to the
circuit judges who are in regular active service.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate
April 18, 2016.

of

the

court

will

issue

on

FOR THE COURT

April 11, 2016
Date

/s/ Daniel E. OToole

Daniel E. OToole
Clerk of Court

________________
* Circuit Judge Plager and Circuit Judge
Bryson participated only in the decision on the
petition for panel rehearing.