Uniloc 2017 LLC v. Google LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

UNILOC 2017 LLC, §

§

Plaintiff,

§ Case No. 2:18-CV-00503-JRG-RSP

v. §

GOOGLE LLC, §

§

Defendant. §

CLAIM CONSTRUCTION

MEMORANDUM AND ORDER

On January 8, 2020, the Court held a hearing to determine the proper construction of the

disputed claim terms within United States Patent No. 9,141,489 (“the ’489 Patent”). Having

reviewed the arguments made by the parties at the hearing and in their claim construction briefing

(Dkt. Nos. 134, 143, & 146), having considered the intrinsic evidence, and having made subsidiary

factual findings about the extrinsic evidence, the Court hereby issues this Claim Construction

Memorandum and Order. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en

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

TABLE OF CONTENTS

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

II. APPLICABLE LAW ........................................................................................................ 3

III. THE PARTIES’ STIPULATED TERMS ....................................................................... 5

IV. CONSTRUCTION OF DISPUTED TERMS IN THE ’489 PATENT ........................ 7

A. “server” .......................................................................................................... 8

B. “first server” and “second server” ................................................................ 12

C. “a second routing device” ............................................................................ 16

D. “server fingerprint,” “fingerprint of the first server,” and “fingerprint of the

second server” ..................................................................................................... 18

E. “data representing a fingerprint of the first server” ..................................... 25

F. “status message” and “status signal” ............................................................ 27

G. “detecting at the routing device an invalid status message from the

[first/second] server by absence of the [first/second] server fingerprint in a status

message from the [first/second] server” / “invalid status message” ................... 29

V. CONCLUSION ............................................................................................................... 33

I. BACKGROUND

Plaintiff Uniloc 2017 LLC (“Plaintiff” or “Uniloc”) alleges that Defendant Google LLC

(“Defendant” or “Google”) infringes United States Patent No. 9,141,489 (“the ’489 Patent”).

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

preliminary constructions with the aim of focusing the parties’ arguments and facilitating

discussion. Those preliminary constructions are noted below within the discussion for each term.

II. APPLICABLE LAW

This Court’s claim construction analysis is guided by the Federal Circuit’s decision in

Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the Federal

Circuit reiterated that “the claims of a patent define the invention to which the patentee is entitled

the right to exclude.” Id. at 1312. The starting point in construing such claims is their ordinary and

customary meaning, which “is the meaning that the term would have to a person of ordinary skill

in the art in question at the time of the invention, i.e., as of the effective filing date of the patent

application.” Id. at 1312–13.

However, Phillips made clear that “the person of ordinary skill in the art is deemed to read

the claim term not only in the context of the particular claim in which the disputed term appears,

but in the context of the entire patent, including the specification.” Id. at 1313. For this reason, the

specification is often ‘the single best guide to the meaning of a disputed term.’” Id. at 1315 (quoting

Markman v. Westview Instruments, Inc., 52 F.3d 967, 979–81 (Fed.Cir.1995) (en banc), aff’d, 517

U.S. 370 (1996)) (internal quotation marks omitted). However, it is the claims, not the

specification, which set forth the limits of the patentee’s invention. Id. at 1312. Thus, “it is

improper to read limitations from a preferred embodiment described in the specification—even if

it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the

patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d

898, 913 (Fed. Cir. 2004). Other asserted or unasserted claims can also aid in determining a claim’s

meaning. See, e.g., Phillips, 415 F.3d at 1314 (explaining that use of “steel baffles” and “baffles”

implied that “baffles” did not inherently refer to objects made of steel).

The prosecution history also plays an important role in claim interpretation as intrinsic

evidence of how the U.S. Patent and Trademark Office (“PTO”) and the inventor understood the

patent. Id. at 1317, see also Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir.

2017) (applying this principle in the context of inter partes review proceedings); Microsoft Corp.

v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements

during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).

However, “because the prosecution history represents an ongoing negotiation between the PTO

and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the

specification and thus is less useful for claim construction purposes.” Id. at 1318, see also Athletic

Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (noting that ambiguous

prosecution history may be “unhelpful as an interpretive resource”).

Additionally, courts may rely on extrinsic evidence such as “expert and inventor testimony,

dictionaries, and learned treatises.” Id. at 1317. As the Supreme Court recently explained:

In some cases . . . the district court will need to look beyond the patent’s intrinsic

evidence . . . to consult extrinsic evidence in order to understand, for example, the

background science or the meaning of a term in the relevant art during the relevant

time period.

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

has emphasized that such extrinsic evidence is subordinate to intrinsic evidence. Phillips, 415 F.3d

at 1317 (“[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained

that it is less significant than the intrinsic record in determining the legally operative meaning of

claim language.” (internal quotation marks omitted)).

III. THE PARTIES’ STIPULATED TERMS

The parties agreed to the constructions of the following terms/phrases in their December

26, 2019 P.R. 4-5(d) Joint Claim Construction Chart.

Claim Term/Phrase Agreed Construction

“current system configuration of the first “machine parameters of the first server”

server”

(Claim 6)

(Dkt. No. 148-1 at 1).1 In view of the parties’ agreement on the proper construction of the identified

terms, the Court hereby ADOPTS the parties’ agreed constructions.

During the claim construction hearing, the parties agreed to the construction of the

following terms/phrases:

Claim Term/Phrase Agreed Construction

“routing device” “hardware component that directs traffic”

(Claims 1–5, 8, 9, 12, 15)

“first application for serving data to Plain and ordinary meaning

multiple clients”

(Claim 9)

“second application for generating Plain and ordinary meaning

periodic status messages”

(Claim 9)

Regarding the term “routing device,” the Court finds that the intrinsic evidence indicates

1 Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites

are to the page numbers assigned through ECF rather than the page numbers assigned in the

original document unless otherwise noted.

that the patentee limited the term “routing device” to a “hardware component.” During

prosecution, the patentee unequivocally required the “routing device” to include a “hardware

component.” Dkt. No. 143-7 at 12 (“Claim 1 recites various hardware components such as

‘computer system’, ‘routing device’ and ‘server’. Having passed the machine or transformation

test, it is irrelevant to the §101 inquiry whether the invention recites steps that may be implemented

in software, because those steps are tied to a particular machine.”) (emphasis added). This clear

disclaimer requires the routing device to include at least a hardware component.

Similarly, the specification indicates that the “routing device” includes a hardware

component because it is configured to store “the IP addresses of the active and primary servers.”

’489 Patent at 8:23–24. Before agreeing to the Court’s construction, Plaintiff originally argued that

dictionary definitions “make it clear that those of skill in the art understand the term ‘router’ to

include hardware or software.” Dkt. No. 157 at 8. However, for the reason discussed above, the

extrinsic evidence cited by Plaintiff contradicts the prosecution history.

That said, contrary to Defendant’s original argument, the disclaimer does not exclude the

“routing device” from also including a software component. Indeed, the specification indicates

that a “component” can be “both an application running on a computing device and the computing

device can be a component.” ’489 Patent at 9:11–13. Here, the prosecution history only indicates

that the routing device must include at least a hardware component and cannot be purely a software

component.

Regarding the phrase “first application for serving data to multiple clients” and the

phrase “second application for generating periodic status messages,” Defendant’s original

constructions required the application to be “self-contained.” This requirement was not only

unnecessary, it was also confusing and ambiguous. As Plaintiff correctly argued, applications

interact with other software and hardware components of a computer. Dkt. No. 134 at 28. Nothing

in the intrinsic evidence contradicts this understanding. Defendant originally argued that its

construction was necessary “because it makes clear that the recited first and second applications

are each computer programs and are different from each other.” Dkt. No. 143 at 34. Again, the

claim language indicates that there is a first application and a second application.

Moreover, the claim language recites that the first application is for “serving data to

multiple clients” and that the second application is for “generating periodic status messages.” Thus,

the claim language is unambiguous, is easily understandable by a jury, and should be given its

plain and ordinary meaning. Accordingly, no further construction is necessary. See U.S. Surgical

Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of

resolution of disputed meanings and technical scope, to clarify and when necessary to explain what

the patentee covered by the claims, for use in the determination of infringement. It is not an

obligatory exercise in redundancy.”); see also O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co.,

521 F.3d 1351, 1362 (Fed. Cir. 2008) (“[D]istrict courts are not (and should not be) required to

construe every limitation present in a patent’s asserted claims.”).

IV. CONSTRUCTION OF DISPUTED TERMS IN THE ’489 PATENT

The ’489 Patent, titled “Failover Procedure for Server System,” issued on September 22,

2015, and bears an earliest priority date of July 9, 2009. The Abstract of the ’489 Patent states:

A failover procedure for a computer system includes steps for routing traffic from

a routing device to a first server, storing in the routing device data representing a

fingerprint of the first server, receiving periodically at the routing device a status

message from the first server, detecting at the routing device an invalid status

message from the first server by absence of the fingerprint in a status message from

the first server within a predetermined time period after last receiving a valid status

message, and routing the traffic from the routing device to a second server in

response to detecting the invalid status message from the first server. A redundant

server system implementing the failover procedure may include servers each

capable of generating its fingerprint by reading current system configuration data.

A. “server”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“server” “computer-related entity, either “machine or device in a network

hardware, firmware, a that is used to provide services to

(Claims 1–6, 8, 9, 12,

combination of hardware and other components in the network”

15)

software, software, or software

in execution, that provides

services to other components”

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for this term: “machine or device that includes a hardware

component, software component, or data component that provides services to other components.”

1. The Parties’ Positions

The parties dispute whether the term “server” must include a “machine or device” as

Defendant proposes or if it can be only software as Plaintiff proposes. Plaintiff argues that the term

“server” can refer to a hardware device, a software or firmware device, or a combination thereof.

Dkt. No. 134 at 19 (citing ’489 Patent at 9:4–7, 9:11–13, 3:40–44). Plaintiff contends that there is

nothing in the intrinsic evidence that limits the term “server” to a hardware “machine” or “device.”

Id. at 19–20. Plaintiff further argues that common dictionary definitions confirm that a “server”

can be comprised of hardware, software/firmware, or a combination of the two. Id. at 20 (citing

Dkt. Nos. 134-4, 134-5, 134-6).

Defendant responds that construing “server” as a machine or device is consistent with the

specification’s use of the term. Dkt. No. 143 at 26 (citing ’489 Patent 4:32–44, 5:25–6:16).

Defendant also argues that the prosecution history confirms that the claimed server is limited to a

machine or device. Id. at 27 (citing Dkt. No. 143-7 at 11; Dkt. No. 143-10 at 10–11). Defendant

further argues that its construction is also consistent with the understanding of an ordinary skilled

artisan at the time of invention. Id. (citing Dkt. No. 143-12; Dkt. No. 143-13). Finally, Defendant

contends that Plaintiff improperly seeks to adopt a construction that expands the scope of the

claimed server and is inconsistent with the specification and file history. Id. at 28.

Plaintiff replies that Defendant’s construction of “server” is incorrect because it improperly

limits the term to a “machine or device.” Dkt. No. 146 at 7. Plaintiff argues that the dictionary

definitions it cites confirms that a “server” can be hardware, software, or a combination thereof.

Id. Plaintiff reasserts that the intrinsic evidence does not limit the term “server” to a hardware

“machine” or “device.” Id. (citing ’489 Patent at 3:40–44). Finally, Plaintiff contends that the

prosecution history merely acknowledges that the claims encompass hardware servers and does

not require the claimed “server” to be limited to hardware servers. Id.

2. Analysis

The term “server” appears in asserted claims 1–6, 8, 9, 12, and 15 of the ’489 Patent. The

Court finds that the term is used consistently in the claims and is intended to have the same general

meaning in each claim. The Court further finds that the intrinsic evidence indicates that the

patentee limited to the term “server” to a machine or device. First, every asserted claim requires a

fingerprint of a “server,” where the failover process is either triggered by (1) the absence of a

server fingerprint in a status message (see claim 1); or (2) a mismatch resulting from a comparison

between the expected server fingerprint stored in a routing device and the server fingerprint

received in the status message (see claim 9).

The specification discloses that whenever a server fingerprint is used in the failover

procedure, that server fingerprint is derived or generated from hardware parameters of the machine

or device. Indeed, the specification states that when “keep-alive signals from the primary or second

servers” include a “hardware fingerprint,” that fingerprint “is a complex and unique data pattern

generated from a stable system configuration of a particular client machine” used to “confirm[]

[the] operational status of the originating server.” ’489 Patent at 4:32–44 (emphasis added).

The specification further states that “[e]ach machine parameter indicates a state or

identifier for a hardware component, software component, or data component of the server,” (id.

at 4:65–67 (emphasis added)), and that these machine parameters may include things such as the

“machine model; machine serial number; machine copyright; machine ROM size, machine UUID,

and machine service tag . . . , CPU ID, CPU model, CPU details, CPU actual speed, CPU family,

CPU manufacturer; CPU voltage; and CPU external clock . . . ,” (id. at 5:25–6:16). Likewise, the

specification states that “[t]he application may generate the fingerprint data using a process that

operates on data indicative of the server’s configuration and hardware.” Id. at 4:58–60. Similarly,

the specification states that “a server may comprise a motherboard on which reside a CPU and one

or more auxiliary processors.” Id. at 5:11–12. Thus, the specification indicates that the recited

“server” is a machine or device that may include a hardware component, software component, or

data component that provides services to other components.

The prosecution history further confirms that the claimed server must include a machine

or device. In response to a rejection under 35 U.S.C. § 101, the patentee argued that the claimed

invention, and in particular the “server,” is constrained to hardware:

To determine § 101 eligibility for claims 1-8, we need only apply the “machine”

part of the machine-or-transformation test to claim 1, and ask: Is the claim tied to a

particular machine?

The answer is clearly Yes. Claim 1 recites various hardware components such as

“computer system”, “routing device” and “server”. Having passed the machine or

transformation test, it is irrelevant to the § 101 inquiry whether the invention recites

steps that may be implemented in software, because those steps are tied to a

particular machine.

Dkt. No. 143-7 at 12 (emphasis in original); see also Dkt. No. 143-9 at 10–11 (Patentee’s appeal

brief to the PTO distinguishing Yoshimura from the claimed invention because Yoshimura’s were

“virtual servers” that were not “realized in hardware,” and were not applicable to “physical

hardware devices as complex as servers.”) (emphasis added). As the Federal Circuit has instructed,

“[t]he public notice function of a patent and its prosecution history requires that a patentee be held

to what he declares during the prosecution of his patent.” Springs Window Fashions LP v. Novo

Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003); see also UShip Intellectual Properties v. U.S.,

714 F.3d 1311, 1315 (Fed. Cir. 2013) (“We hold that a patent applicant’s response to a restriction

requirement may be used to interpret claim terms or as a source of disclaimer.”); North Am.

Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345–46 (Fed. Cir. 2005) (excluding

from claim scope certain embodiments based on prosecution history disclaimer).

Plaintiff argues that the term “server” can refer to a hardware device, a software or

firmware device, or a combination thereof. Dkt. No. 134 at 19 (citing ’489 Patent at 3:40–44).

Regarding the prosecution history, Plaintiff contends that it does “merely acknowledge that the

claims encompass hardware servers” and that “[n]othing about the cited prosecution history

excerpts requires that the claimed ‘server’ be limited to hardware servers.” Dkt. No. 157 at 7.

Contrary to Plaintiff’s contentions, the intrinsic evidence indicates that the recited “server” is a

machine or device that may additionally include a hardware component, software component, or

data component that provides services to other components. In summary, the intrinsic evidence

indicates that the patentee intended the recited “server” to include at least a physical machine or

device. Finally, in reaching its conclusion, the Court has considered the extrinsic evidence

submitted by the parties and given it its proper weight in light of the intrinsic evidence.

3. Court’s Construction

For the reasons set forth above, the Court construes the term “server” to mean “machine

or device that includes a hardware component, software component, or data component that

provides services to other components.”

B. “first server” and “second server”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“first server” No separate construction “active server”

needed from “server”; plain

(Claims 1–6, 9, 15)

and ordinary meaning

“second server” No separate construction “standby server”

needed from “server”; plain

(Claims 1, 3, 5, 9, 12,

and ordinary meaning

15)

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for these terms: Plain and ordinary meaning.

1. The Parties’ Positions

The parties dispute whether the terms “first server” and “second server” require

construction. Plaintiff argues that the word “first” and “second” are used to distinguish the “first

server” from the “second server.” Dkt. No. 134 at 20. According to Plaintiff, this is a common

claiming technique, and nothing more should be read into the use of the word “first.” Id. Plaintiff

argues that Defendant’s construction improperly attempts to import limitations from the

specification into the claims by construing the term “first server” to mean “active server” and by

construing the term “second server” to mean “standby server.” Id. Plaintiff contends that

Defendant’s constructions are less clear than the claim language as written. Id.

Defendant responds that the specification ascribes a particular purpose for the distinction

that is not captured in the plain and ordinary meaning. Dkt. No. 143 at 29. Defendant argues that

the specification explains that the first server is the active server that receives traffic from the

routing device, while the second server remains idle in a standby role without receiving any traffic

until and unless the first or active server fails. Id. (citing ’489 Patent at 1:56–2:8, 2:19–28, 3:36–

40, 3:51–52, 4:9–11, Figures. 1, 2, & 4). Defendant also argues that designating the first and

second servers as active and stand-by servers is precisely how the patentee summarized his

invention during prosecution. Id. (citing Dkt. No. 143-9).

Plaintiff replies that the plain meaning of “first” and “second” will be readily understood

by the jurors. Dkt. No. 146 at 7. Plaintiff further argues that there is no legitimate reason for

substituting “active” and “standby” for those terms. Id. According to Plaintiff, the plain and

ordinary meaning of the word “first” and “second” should be adopted here. Id.

2. Analysis

The term “first server” appears in asserted claims 1–6, 9, 15 of the ’489 Patent. The Court

finds that the term is used consistently in the claims and is intended to have the same general

meaning in each claim. The term “second server” appears in asserted claims 1, 3, 5, 9, 12, and 15

of the ’489 Patent. The Court finds that the term is used consistently in the claims and is intended

to have the same general meaning in each claim. The Court further finds that both terms should be

given their plain and ordinary meaning.

The claim language uses the words “first” and “second” to distinguish the “first server”

from the “second server.” The claim language further recites the role of each server in the claimed

method or system. For example, claim 1 generally recites that traffic is routed to the first server

until an invalid status message is detected and that, in response to that detection, further traffic is

routed to the second server. Likewise, claim 9 generally recites that traffic is routed to the primary

server, which is either the first or second server, until a mismatch in the fingerprint causes the

system to change the primary server to the other of the first or second server. Accordingly, given

that the Court has construed the term “server,” there is no reason to further construe the clear and

unambiguous terms “first” and “second.”

Indeed, Defendant’s construction would appear to contradict the claim language of claim

9 by requiring the “second server” to always be the “standby server.” Claim 9 recites that the traffic

is routed to “a primary server of the first and second servers.” Thus, claim 9 allows either the first

server or the second server to be the “primary server” and does not require the “second server” to

be the “standby server” as Defendant proposes. Likewise, dependent claim 3 recites “routing the

traffic from the routing device to the first server in response to detecting the invalid status message

from the second server.” Similar to claim 9, claim 3 does not require the “second server” to be the

“standby server.”

Defendant argues that “[t]here is no dispute that the words ‘first’ and ‘second’ are intended

to distinguish among different servers.” Dkt. No. 143 at 28. Defendant contends that a construction

is required because “the patent ascribes a particular purpose for that distinction that is not captured

in the plain and ordinary meaning that Plaintiff is endorsing.” Id. at 29. The Court agrees that the

intrinsic evidence establishes a distinction between the first and second server. See, e.g., ’489

Patent at 3: 36–40 (“FIG. 1 shows a single-server deployment system 100, comprising a first server

102 and a second server 104, in an operational state where server 102 is the designated active or

primary server and server 104 is the standby or secondary server.”); see also id. at 1:56–2:8 (“The

present technology provides for automatic failover in systems having at least one primary (active)

and at least one secondary (stand-by) server . . . .”); 2:19–28 (“In response to detecting failure of

the primary server, each routing appliance switches all traffic to the secondary server which

assumes the role of the primary server.”); Figure 1 (items 102 and 104); Figure 2 (items 202, 206);

Figure 4 (items 402 (“configure active and standby servers”), 410 (“monitor status of active

server”)); 3:36–40 (“. . . a first server 102 and a second server 104, in an operational state where

server 102 is designated active or primary server and server 104 is the standby or secondary

server.”); 3:51–52 (referring to first server 102 as the “active server 102”); 4:9–11 (referring to

second server 104 as the “standby server 104”).

However, the distinction between the first server and the second server is captured in the

claim language. Indeed, in support of its argument, Defendant quotes the claim language itself.

Dkt. No. 143 at 29 (quoting claim 1). Accordingly, the Court rejects Defendant’s construction

because it has failed to provide a persuasive reason to redraft the claims as it proposes.

At the January 8, 2020 hearing, Defendant agreed that the dispute centered on its

construction for the term “second server” and its understanding of the term “standby.” Specifically,

Defendant argued that “standby” meant that the “second server” cannot do anything but mirror the

first server and only the first server. The Court agrees that the intrinsic evidence indicates that the

standby server mirrors the active server. Dkt. No.143-9 at 5. However, there is no requirement that

the standby server is limited to mirroring only the active server. Indeed, the claims use the open-

ended transitional phrase “comprising.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.

Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named

elements are essential, but other elements may be added and still form a construct within the scope

of the claim.”).

Moreover, the claim language explicitly recites the respective roles of the “first server”

and the “second server” and how the roles may change when an event occurs. As discussed above,

Defendant’s construction would contradict the plain claim language when a change in roles is

required. Accordingly, having resolved the parties’ dispute, the Court finds that no further

construction is necessary. See Ethicon, 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, 521 F.3d at 1362 (“[D]istrict courts are

not (and should not be) required to construe every limitation present in a patent’s asserted

claims.”). Finally, in reaching its conclusion, the Court has considered the extrinsic evidence

submitted by the parties and given it its proper weight in light of the intrinsic evidence.

3. Court’s Construction

For the reasons set forth above, the terms “first server” and “second server” are given

their plain and ordinary meaning.

C. “a second routing device”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“a second routing Plain and ordinary meaning a “routing device” that is separate

device” and distinct from a first “routing

device”

(Claim 15)

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for this term: Plain and ordinary meaning.

1. The Parties’ Positions

The parties dispute whether the second routing device must be “separate and distinct” from

the first routing device, as Defendant proposes. Plaintiff argues that the word “second” is used to

distinguish the “routing device” from the “second routing device.” Dkt. No. 134 at 22. According

to Plaintiff, this is a common claiming technique and nothing more should be read into the use of

the word “second.” Id. Plaintiff argues that Defendant’s construction improperly attempts to

import limitations into the claims by requiring that the two routing devices be “separate and

distinct.” Id. at 22–23. Plaintiff contends that Defendant’s constructions are less clear than the

claim language as written. Id. at 23.

Defendant responds that claim 15 adds a “second” routing device to the system of claim 9,

which already recites a first routing device. Dkt. No. 143 at 32. Defendant argues that it is a basic

tenet of claim construction that “[w]here a claim lists elements separately, ‘the clear implication

of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”

Id. (citing Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir.

2010)). According to Defendant, the specification consistently describes two or more routing

appliances or devices as separate and distinct from each other. Id. (citing ’489 Patent at 3:55–4:2;

Figure 1 (items 114 (“Appliance 01”), 116 (“Appliance 02”)); Figure 2 (items 210, 212), Figure 3

(items 310, 312)).

Plaintiff replies that Defendant’s construction improperly attempts to import limitations

into the claims by requiring that the two routing devices be “separate and distinct.” Dkt. No. 146

at 8. Plaintiff contends that Defendant’s constructions are less clear than the claim language as

written. Id.

2. Analysis

The term “a second routing device” appears in asserted claim 15 of the ’489 Patent. The

Court finds that the term is unambiguous, is easily understandable by a jury, and should be given

its plain and ordinary meaning. The Court has construed the term “routing device,” which only

leaves the term “second” to be construed. The construction for “routing device” is “hardware

component that directs traffic.” In this context, the term “second” will distinguish the first

“hardware component that directs traffic” from the “second hardware component that directs

traffic.” Accordingly, the term “second” will be given its plain and ordinary meaning.

Defendant argues that the “second routing device” must be “separate and distinct” from

the first “routing device.” However, the parties’ claim construction dispute is resolved by the

Court’s construction for the term “routing device.” The Court construed “routing device” to mean

“hardware component that directs traffic,” so dependent claim 15 requires a “second hardware

component that directs traffic.” In other words, claim 15 requires two hardware components,

which “logically cannot be one and the same.” Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398,

1404–05 (Fed. Cir. 1996).

3. Court’s Construction

For the reasons set forth above, the term “a second routing device” is given its plain and

ordinary meaning.

D. “server fingerprint,” “fingerprint of the first server,” and “fingerprint of

the second server”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“server fingerprint” “data that can be used to “machine fingerprint that

determine validity of a status comprises binary data generated

(Claim 3, 9, 15)

message from the first server” from a plurality of user-

configurable and non- user-

configurable machine parameters

that is reliably reproducible by an

application operating on the

server, while being virtually

irreproducible by any other

means, and virtually impossible

to guess using any systematic or

brute force algorithm, that

uniquely identifies the server”

“fingerprint of the first “data that can be used to “server fingerprint” of the first

server” determine validity of a status server

message from the first server”

(Claim 1, 3)

“fingerprint of the “data that can be used to “server fingerprint” of the second

second server” determine validity of a status server

message from the second

(Claim 1, 3)

server”

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties

with the following preliminary constructions for these phrases:

Disputed Term Court’s Preliminary Construction

“server fingerprint” “data that is reliably reproducible by an application

operating on a particular client machine, while being

virtually irreproducible by any other means, and virtually

impossible to guess using any systematic or brute force

algorithm. In short, each fingerprint is a complex and

unique data pattern generated from a stable system

configuration of a particular client machine”

“fingerprint of the first server” “‘server fingerprint’ of the first server”

“fingerprint of the second server” “‘server fingerprint’ of the second server”

1. The Parties’ Positions

The parties dispute whether the patentee limited the scope of the term “server fingerprint”

during prosecution. Plaintiff argues that neither party appears to dispute that the fingerprint

corresponds to “the [first server/second server].” Dkt. No. 134 at 23. Plaintiff further argues that

the purpose of the fingerprint is to provide data that is highly likely to only be associated with one

server in a system so that when that fingerprint is received, the recipient can determine that the

status message including the fingerprint is valid and that the server is operational. Id. at 23.

According to Plaintiff, the specification is clear that user-configurable parameters or non-user-

configurable parameters can be used alternatively or that both can be used together. Id. at 24 (citing

’489 Patent at 4:14–16, 4:32–34, 4:60–64, 5:9–11, 8:47–62, 10:3–16, 10:46–51).

Regarding Defendant’s construction, Plaintiff argues that it is inconsistent with the

specification because it requires the use of both user-configurable and non-user-configurable

parameters. Id. at 24. Plaintiff contends that the specification leaves open the possibility of the

fingerprint being generated as something other than “binary data.” Id. Plaintiff further argues that

the specification does not require that the fingerprint be 100% unique. Id.

Defendant responds that a “server fingerprint” comprises binary data generated from a

plurality of user-configurable and non-user-configurable machine parameters server. Dkt. No. 143

at 20 (citing ’489 Patent at 4:58–64, 5:25–32, 5:33–6:5). Defendant also argues that a “server

fingerprint” is reliably reproducible by the server, virtually irreproducible by any other means, and

virtually impossible to guess. Id. (citing ’489 Patent at 4:34–39). Defendant further argues that a

“‘server fingerprint’ uniquely identifies the server.” Id. (citing ’489 Patent at 4:39–41, 4:67–5:11).

Defendant also contends that the prosecution history confirms its construction. Id. at 21. According

to Defendant, the patentee defined “server fingerprint” consistent with Defendant’s construction.

Id. (citing Dkt. No. 143-6; Dkt. No. 143-7; Dkt. No. 143-8; Dkt. No. 143-9). Finally, Defendant

argues that the Patent Office also defined “server fingerprint” consistent with Defendant’s

construction. Id. (citing Dkt. No. 143-10; ’489 Patent at 4:32–51; Dkt. No. 143-11).

Plaintiff replies that if there are alternative definitions in the specification and prosecution

history, then this means that the patentee did not explicitly define the term “server fingerprint.”

Dkt. No. 146 at 8. Plaintiff argues that Defendant incorrectly contends that “server fingerprint”

has to include the substance of all of those “definitions.” Id. at 9. Plaintiff further contends that

Defendant is trying to improperly narrow the construction by importing as many limitations as

possible into the construction of the term “server fingerprint.” Id.

2. Analysis

The term “server fingerprint” appears in asserted claims 3, 9, and 15 of the ’489 Patent.

The Court finds that the term is used consistently in the claims and is intended to have the same

general meaning in each claim. The term “fingerprint of the first server” appears in asserted claims

1 and 3 of the ’489 Patent. The Court finds that the term is used consistently in the claims and is

intended to have the same general meaning in each claim. The term “fingerprint of the second

server” appears in asserted claims 1 and 3 of the ’489 Patent. The Court finds that the term is used

consistently in the claims and is intended to have the same general meaning in each claim.

The Court further finds that the intrinsic evidence provides an explicit definition for the

term “server fingerprint.” Specifically, the specification states the following:

As used herein, a hardware fingerprint is data characterized by being reliably

reproducible by an application operating on a particular client machine, while being

virtually irreproducible by any other means, and virtually impossible to guess using

any systematic or brute force algorithm. In short, each fingerprint is a complex and

unique data pattern generated from a stable system configuration of a particular

client machine.

’489 Patent at 4:34–41 (emphasis added). The prosecution history further confirms this definition.

In a decision dated June 22, 2015, the PTAB determined that it could not sustain the Examiner’s

rejections based on Yoshimura. The PTAB explained that “Appellants define ‘fingerprint’ (Spec.

¶ 21 (‘a hardware fingerprint is data characterized by being reliably reproducible by an application

operating on a particular client machine, while being virtually irreproducible by any other means,

and virtually impossible to guess using any systematic or brute force algorithm.’)” and held that

there was no basis for the Examiner’s rejection “in view of this definition of a fingerprint.” Dkt.

No. 143-10 at 6 (emphasis added).

On June 26, 2015, the Examiner issued a notice of allowance, echoing the PTAB’s

explanation regarding the Applicant’s definition of a fingerprint:

“fingerprint” is defined in the specification in ¶ 21 [i.e., ’489 Patent, col. 4:32–51]:

“As used herein, a hardware fingerprint is data characterized by being reliably

reproducible by an application operating on a particular client machine, while being

virtually irreproducible by any other means, and virtually impossible to guess using

any systematic or brute force algorithm. In short, each fingerprint is a complex and

unique data pattern generated from a stable system configuration of a particular

client machine.”

143-11 at 7 (emphasis in original). The examiner emphasized that his reason for allowance was

based on the patentee’s definition of “fingerprint.” Id. (“In summary, the Board determine[d] that

the data defined by the ‘fingerprint’ as defined by ‘hardware fingerprint’ (of Applicant’s ¶ 21) is

not analogous to the checksum of Yoshimura.”).

An examiner’s reason for allowance can carry significant weight in a claim construction

analysis because it is evidence of how one of skill in the art understood the term at the time the

application was filed. See Arendi S.A.R.L. v. Google LLC, 882 F.3d 1132, 1136 (Fed. Cir. 2018)

(“[T]he examiner’s Reasons for Allowance made ‘clear that the examiner and the applicant

understood’ . . . what the invention required.”). Accordingly, the Court adopts the explicit

definition provided in the intrinsic evidence.

Turning to Defendant’s construction, the Court rejects the proposed language of

“comprises binary data generated from a plurality of user-configurable and non- user-configurable

machine parameters.” Defendant argues that the specification explains that a fingerprint

application running on the server “may generate the fingerprint data using a process that operates

on data indicative of the server’s configuration and hardware. The fingerprint data may be

generated using user-configurable machine parameters, non-user-configurable machine

parameters, or both as input to a process that generates a fingerprint data file as binary data.” ’489

Patent at 4:58–64 (emphasis added). The specification further states that “[t]o generate the

fingerprint, a fingerprint application operating on the server may perform a system scan to

determine a present configuration of the computing device” and that “[t]he application may then

select the machine parameters to be used as input for generating the unique fingerprint data.” Id.

(emphasis added). As indicated, the specification uses permissive language in describing the

fingerprint, which indicates that these are embodiments that should not be read into the claims.

Defendant argues that the prosecution history confirms a clear intent to require that a

“server fingerprint” have the language that it proposes. Dkt. No. 143 at 21. Specifically, in the

Office Action dated October 14, 2011, the Examiner rejected then-pending claims based on US

2003/0163734 to Yoshimura et al. (“Yoshimura”), which the Examiner argued disclosed “[s]toring

in the routing device data representing a fingerprint of the first server” and “[d]etecting at the

routing device an invalid status message from the first server by absence of the fingerprint in a

status message from the first server.” Dkt. No. 143-6 at 5–6. The Examiner contended that

checksums disclosed by Yoshimura read on the “fingerprint” recited in the claims. Id.

In an Amendment dated January 17, 2012, the patentee responded to the rejection by

arguing that Yoshimura failed to disclose the “server fingerprint” recited in the claims and that the

other prior art references failed to cure that deficiency in Yoshimura. Dkt. No. 143-7 at 12–17. The

patentee further argued that “[t]he Office Action is confusing checksums with server fingerprints.

One skilled in the art would understand that a checksum of an OS environment doesn’t satisfy the

definition of a fingerprint, as those terms are defined in the specification and in dictionaries of

computer terms.” Id. at 13 (emphasis added). Defendant argues that, in making these argument,

the patentee did not state that a server fingerprint “may be” a machine fingerprint comprising

binary data generated from user configurable and non-user-configurable machine parameters.

According to Defendant, the patentee’s use of “is” clearly and unmistakably confirms that these

are requirements of a “server fingerprint.” Dkt. No. 143 at 23 (citing Dkt. No. 143-7 at 13).

The Court disagrees that this portion of the prosecution history is a clear disclaimer. First,

the patentee argued that the term “fingerprint” is “defined in the specification.” Dkt. No. 143-7 at

13. As discussed above, the Court’s construction is the explicit definition provided in the

specification and confirmed in the prosecution history. The Court is not persuaded that the

patentee’s discussion of other embodiments of the “fingerprint” eliminates the alternative language

in this instance.

Indeed, while all of the features discussed “may” be included, as indicated in the

specification, they were not necessary to distinguish the prior art. This was indicated by the

examiner in the Notice of Allowance, which relied exclusively on the explicit definition provided

in the specification. Dkt. No. 143-11 at 7. Accordingly, the Court rejects this portion of

Defendant’s construction.

Regarding Defendant’s “uniquely identifies the server” language, the Court’s construction

includes this aspect of the fingerprint data. The second sentence in the Court’s construction states

that data is “a complex and unique data pattern generated from a stable system configuration of a

particular client machine.” This is the explicit definition provided in the specification.

Turning to Plaintiff’s construction, the Court rejects it because it is not consistent with the

intrinsic evidence. First, it ignores the intrinsic evidence and attempts to replace the explicit

definition provided by the patentee with “data that can be used to determine validity of a status

message from the first server.” As discussed, the recited “fingerprint” is more than data that can

be used to determine validity status.

Plaintiff also argues that Defendant’s construction incorrectly requires the fingerprint to

“uniquely identif[y] the server.” Dkt. No. 134 at 24. According to Plaintiff, the specification is

clear that “the resulting fingerprint data has a very high probability (e.g., greater than 99.999%) of

being unique to the server,” but Plaintiff contends that this does not require that the fingerprint be

100% unique. Id. (citing ’489 Patent at 5:1–4). Contrary to Plaintiff’s argument, a person of

ordinary skill in the art would understand that having a greater than 99.999% probability would

be considered a unique identifier, even if there is “some possibility that the fingerprint may not be

100% unique to the server.” Id. More importantly, within the prosecution history, the patentee

contrasted “the server fingerprint uniquely identifies the server itself” against the prior art

checksum that did not identify the server. Dkt. No. 143-7 at 14.

Accordingly, the Court rejects Plaintiff’s construction—the Court’s construction will

instead adopt the definition provided in the specification, which provides that the fingerprint is “a

complex and unique data pattern generated from a stable system configuration of a particular client

machine.”

Regarding the terms “fingerprint of the first server” and “fingerprint of the second server,”

the parties agree that the Court’s construction for the term “fingerprint” will resolve the parties’

dispute and that no construction is required. Dkt. 143 at 20–21; Dkt. No. 157 at 8.

3. Court’s Construction

For the reasons set forth above, the Court construes the term “server fingerprint” to mean

“data that is reliably reproducible by an application operating on a particular client

machine, while being virtually irreproducible by any other means, and virtually impossible

to guess using any systematic or brute force algorithm. In short, each fingerprint is a complex

and unique data pattern generated from a stable system configuration of a particular client

machine.” The Court further construes the term “fingerprint of the first server” to mean

“‘server fingerprint’ of the first server” and the term “fingerprint of the second server” to

mean “‘server fingerprint of the second server.”

E. “data representing a fingerprint of the first server”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“data representing a “data that can be used to “data amounting to a fingerprint

fingerprint of the first determine validity of a status of the first server”

server” message from the first server”

(Claim 1)

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for this term: “fingerprint of the first server.”

1. The Parties’ Positions

The parties dispute whether the term “data representing” should be construed to mean “data

amounting,” as Defendant proposes. Plaintiff argues that its construction is the same construction

it proposed for “server fingerprint” because the server fingerprint is represented by a data file. Dkt.

No. 134 at 25 (’489 Patent 4:39–41, 4:60–64). Plaintiff argues that Defendant’s proposed

construction is vague as to what it means to be data “amounting to” a fingerprint. Id. at 25.

Defendant responds that the specification does not describe any data separate from the

fingerprint itself that can “represent” a fingerprint of the first server. Dkt. No. 143 at 25. According

to Defendant, the claim requirement that “data representing a fingerprint of the first server” be

stored in the routing device requires that the routing device store the fingerprint itself. Id.

2. Analysis

The term “data representing a fingerprint of the first server” appears in asserted claim 1 of

the ’489 Patent. The dispute for this term is the same as the previous term “fingerprint,” with the

addition of the words “data representing.” Plaintiff argues that Defendant’s construction is vague

as to what it means to be data “amounting to” a fingerprint. Dkt. No. 134 at 25. The Court agrees

that Defendant’s construction is confusing and unnecessary. Moreover, the parties essentially

agree that “data representing a fingerprint of the first server” is the “fingerprint of the first server.”

Indeed, Defendant argues that the claim requirement that “data representing a fingerprint of the

first server” be stored in the routing device requires that the routing device store the fingerprint

itself. Dkt. No. 143 at 25. Similarly, Plaintiff proposes the same construction for this phrase as it

does for the term “server fingerprint.” Accordingly, the Court construes “data representing a

fingerprint of the first server” to mean “fingerprint of the first server.”

3. Court’s Construction

For the reasons set forth above, the Court construes the phrase “data representing a

fingerprint of the first server” to mean “fingerprint of the first server.”

F. “status message” and “status signal”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“status message” “message that indicates the “heartbeat or keep-alive message

state of the sender” containing a data structure

(Claim 1–4, 8, 9, 12, 15)

reserved for a server fingerprint”

“status signal” “status message” “heartbeat or keep-alive signal

containing a data structure

(Claim 4) (typographical error)

reserved for a server fingerprint”

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for these terms: “message that indicates the operational

status of an originating server.”

1. The Parties’ Positions

The parties dispute whether the term “status message” must contain a “data structure

reserved for a server fingerprint” as Defendant proposes. The parties agree that “status signal”

means “status message.” Plaintiff argues that the “status message” indicates to the recipient that

state (e.g., failure or no failure) of the sender. Dkt. No. 134 at 25 (citing ’489 Patent at 4:20–27,

4:27–31). Regarding Defendant’s construction, Plaintiff argues that the specification never states

that the status message or keep-alive signal includes a “data structure.” Id. Plaintiff contends that

the only time the term “data structure” is used in the specification is to refer to data structures that

are stored on computer readable media from which components such as a processor or program

can execute. Id. (citing ’489 Patent at 9:16–18).

Defendant responds that claim 1 and claim 9 indicate that a status message (or status signal)

must be capable of containing a server fingerprint (i.e., must contain a data structure reserved for

a fingerprint). Dkt. No. 143 at 33. Defendant argues that this is consistent with the specification,

which confirms that a status message may also contain data structures reserved for other types of

data, such as a header or a time stamp. Id. (citing ’489 Patent at 4:41–51). Defendant contends that

Plaintiff’s construction ignores the composition of the message or signal and informs only its

utility. Id.

Plaintiff replies that the portion of the specification cited by Defendant confirms that the

fingerprint may (but is not required) to be included in the “status message.” Dkt. No. 146 at 9

(citing ’489 Patent at 4:47–49). Plaintiff contends that the specification is permissive and does not

require inclusion of the fingerprint. Id. According to Plaintiff, Defendant’s construction is

inconsistent with the specification. Id.

2. Analysis

The term “status message” appears in asserted claims 1–4, 8, 9, 12, and 15 of the ’489

Patent. The term “status signal” appears in asserted claim 4 of the ’489 Patent. The Court finds

that the terms are used consistently in the claims and are intended to have the same general

meaning in each claim. The Court further finds that the term “status message” should be construed

to mean “message that confirms operational status of an originating server.” In the same portion

of the specification that defines the term “fingerprint,” the specification states that the

“fingerprinted status message confirms operational status of the originating server.” ’489 Patent

at 4:43–44. The parties’ construction are similar on this point.

Plaintiff proposes construing the term to mean “message that indicates the state of the

sender.” Similarly, Defendant proposes construing the term to mean “heartbeat or keep-alive

message.” Both of these constructions indicate that the status message is a “message that confirms

operational status of an originating server.” Accordingly, the Court adopts the words chosen by

the patentee in the specification and construes the terms “status message” and “status signal” to

mean “message that confirms operational status of an originating server.”

Regarding Defendant’s proposed language of “containing a data structure reserved for a

server fingerprint,” the specification states that “[e]ach message may consist of or comprise a brief

header, time stamp, and machine fingerprint.” ’498 Patent at 4:47–49 (emphasis added). As

indicated, this is permissive language. Moreover, it is the claim language itself that requires a

“fingerprint in a status message” (claim 1) or that “each status message includ[es] a server

fingerprint” (claim 9). Accordingly, Defendant’s construction is redundant at best and would only

confuse the jury.

3. Court’s Construction

For the reasons set forth above, the Court construes the terms “status message” and

“status signal” to mean “message that confirms operational status of an originating server.”

G. “detecting at the routing device an invalid status message from the

[first/second] server by absence of the [first/second] server fingerprint in

a status message from the [first/second] server” / “invalid status message”

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“detecting at the routing Plain and ordinary “determining, at the routing

device an invalid status meaning device, that a failure has occurred

message from the first server because the fingerprint that is

by absence of the fingerprint expected in the status message

in a status message from the from the first server is missing”

first server”

(Claim 1)

Disputed Term Plaintiff’s Proposal Defendant’s Proposal

“detecting at the routing Plain and ordinary “determining, at the routing

device an invalid status meaning device, that a failure has occurred

message from the second because the fingerprint that is

server by absence of the expected in the status message

second server fingerprint in a from the second server is missing”

status message from the

second server”

(Claim 3)

“invalid status message” Plain and ordinary “status message indicating a

meaning failure”

(Claim 1, 3, 4)

Shortly before the start of the January 8, 2020 hearing, the Court provided the parties with

the following preliminary construction for these phrase/terms: Plain and ordinary meaning.

1. The Parties’ Positions

The parties dispute whether the term “invalid status message” requires construction. The

parties also dispute whether the longer phrases that include this term require construction. Plaintiff

argues that Defendant’s construction replaces the word “detecting” with the word “determining.”

Dkt. No. 134 at 26. Plaintiff further argues that Defendant’s construction also replaces

“determining . . . an invalid status message” with “determining . . . that a failure has occurred.” Id.

According to Plaintiff, “determining . . .” implies computerized actions in which a failure

condition is affirmatively determined by processing the received data. Id. at 26–27. Plaintiff

contends that one of the ways a failure is detected is by the absence of the server fingerprint. Id.

at 27 (citing ’489 Patent at 8:53–56).

Defendant responds that the routing device must affirmatively detect a status message and

determine that it is invalid prior to performing a failover procedure. Dkt. No. 143 at 34. Defendant

contends that claim 1 is not directed to a process in which a routing device does not detect any

status message but nonetheless performs a failover procedure. Id. Defendant argues that its

construction is necessary to make clear that the claims require that the routing device detect an

invalid status message whereby an expected fingerprint is missing from that message before

performing a failover procedure. Id.

Plaintiff replies that Defendant’s construction requires that the status message have a data

value that is equated with a failure. Dkt. No. 146 at 10. Plaintiff contends that no affirmative

indication of a failure is required by the specification. Id. (citing ’489 Patent at 8:53–56). Plaintiff

further argues that Defendant’s construction replaces the word “detecting” with the word

“determining.” Id. According to Plaintiff, “determining . . .” implies computerized actions in

which a failure condition is affirmatively determined by processing the received data. Id. Plaintiff

contends that a failure can be detected by the absence of the server fingerprint. Id. (citing ’489

Patent at 8:53–56).

2. Analysis

The phrase “detecting at the routing device an invalid status message from the first server

by absence of the fingerprint in a status message from the first server” appears in asserted claim 1

of the ’489 Patent. The phrase “detecting at the routing device an invalid status message from the

second server by absence of the second server fingerprint in a status message from the second

server” appears in asserted claim 3 of the ’489 Patent. The term “invalid status message” appears

in asserted claims 1, 3, and 4 of the ’489 Patent. The Court finds that the term is used consistently

in the claims and is intended to have the same general meaning in each claim.

The Court further finds that the terms “invalid status message” and “detecting” should be

given their plain and ordinary meaning. Defendant argues that the claims recite “detecting at the

routing device an invalid status message” from a server and also recite routing traffic to another

server “in response to detecting the invalid status message.” Dkt. No. 143 at 33. According to

Defendant, this means that “the routing device must affirmatively detect a status message and

determine that it is invalid (i.e., the fingerprint that is expected in the status message from the

server is missing), prior to performing a failover procedure (i.e., routing traffic to another server).”

Id. at 34 (emphasis added). As Defendant’s argument plainly illustrates, Defendant seeks to redraft

the term “detecting” to mean “detecting and determining.” Defendant has not provided a

persuasive reason to do so.

Defendant argues that the construction is necessary “to make clear that the claims require

that the routing device detect an invalid status message whereby an expected fingerprint is missing

from that message before performing a failover procedure.” Id. The plain claim language clearly

recites this without the need for further ambiguity. For example, claims 1 and 3 recite that it is

after the “detecting” step that the traffic is routed to a second server. Likewise, claims 1 and 3

recite that a “status message” is an “invalid status message” when a fingerprint is absent from the

status message. Accordingly, no further construction is necessary. See Ethicon, 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,

521 F.3d at 1362 (“[D]istrict courts are not (and should not be) required to construe every

limitation present in a patent's asserted claims.”).

During the January 8, 2020 hearing, Defendant argued that an affirmative determination

must be included in the construction to exclude from the scope of the claim the situation where no

status message is sent. The Court notes that the claim 1 recites “receiving periodically at the

routing device a status message from the first server.” If a status message is not received, then this

element of the claim would not be met.

3. Court’s Construction

For the reasons set forth above, the phrase “detecting at the routing device an invalid

status message from the first server by absence of the fingerprint in a status message from

the first server;” the phrase “detecting at the routing device an invalid status message from

the second server by absence of the second server fingerprint in a status message from the

second server;” and the term “invalid status message” will each be given their plain and

ordinary meaning.

V. CONCLUSION

The Court adopts the constructions set forth in this opinion for the disputed terms of the

patents-in-suit. The parties are ordered to not refer to each other’s claim construction positions in

the presence of the jury. Likewise, in the presence of the jury, the parties are ordered to refrain

from mentioning any portion of this opinion, other than the actual definitions adopted by the Court.

The Court’s reasoning in this order binds the testimony of any witnesses, and any reference to the

claim construction proceedings is limited to informing the jury of the definitions adopted by the

Court.

SIGNED this 30th day of January, 2020.

ox S. v. .

ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE

Pace 22 nf 22