Uniloc 2017, LLC v. Paychex, Inc.

MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION

STEARNS, D.J.

In these two parallel intellectual property cases, plaintiff Uniloc 2017, LLC (Uniloc), accuses defendants Paychex, Inc., and athenahealth, Inc., of

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infringing U.S. Patents Nos. 6,324,578 (the '578 patent) and 7,069,293 (the '293 patent).¹ Before the court are the parties' claim construction briefs.²

The asserted '578 patent issued on November 27, 2001, from an application filed on December 14, 1998. The '578 patent is titled "Method, Systems and Computer Program Products for Management of Configurable Application Programs on a Network," and lists as inventors David Cox, Kent Hayes, Jr., David Kaminsky, and David Lindquist. Related U.S. Patent No. 6,728,766 (the '766 patent) is a divisional of the '578 patent. The '766 patent was filed on April 10, 2001, and issued on April 27, 2004. The divisional patent is titled "Methods, Systems and Computer Program Product for License Use Management on a Network," and identifies Cox, Kaminsky, and Lindquist as inventors.

Also on December 14, 1998, inventors Cox, Hayes, and Lindquist, together with John McGarvey and Abdi Salahshour, filed a second application that issued on January 21, 2003 as related U.S. Patent No.

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6,510,466 (the '466 patent). The '466 patent is titled "Methods, Systems and Computer Program Products for Centralized Management of Application Programs on a Network." A divisional application to the '466 patent was filed on May 31, 2001, and issued as the asserted '293 patent on June 27, 2006. The '293 patent is titled "Methods, Systems and Computer Program Products for Distribution of Application Programs to a Target Station on a Network," and lists the same five inventors.³

The '578 and '466 patents self-identify as related and incorporate each other by reference. See '578 patent, col. 1, ll. 10-14 & col. 7, ll. 17-21; '466 patent, col. 1, ll. 9-13 & col. 7, ll. 43-48. The relationships between the four patents, as relevant to the discussion, infra, may be visualized as follows.

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The asserted '578 and '293 patents are directed to improvements in providing applications in computer networks principally for large enterprises. A computer network as envisioned by the patents connects a network management server (NMS) to "on-demand"⁴ servers, which in turn are connected to client stations. Figure 1 of the '578 patent (also figure 1 of the '293 patent) is demonstrative.

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The '578 patent addresses, inter alia, the "preference mobility" problem in a network. Id. col. 2, l. 36. "[I]ndividual users may move from location to location and need to access the network from different client stations at different times." Id. col. 1, ll. 51-52. In prior art systems, application preferences were generally associated with a client station rather than a user, see id. col. 2, l. 2 - col. 3, l. 4; and "fail[ed] to provide a seamless integration of application access and session characteristics across heterogeneous networks," id. col. 3, ll. 17-19.

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An object of the '578 patent is the "management of configurable application programs on a computer network which allow a mix of user and system administrator defined configurable preferences to be associated with specific application programs," id. col. 3, ll. 42-45; and further, to "accommodate various types of hardware operating under different operating systems across client stations," id. col. 3, ll. 48-49. The '578 patent discloses "providing two program files for each configurable application program which are provided to a network server station which operates as an on-demand server for software deployment and may also act as the application server." Id. col. 3, ll. 51-55. The first program file - a "configuration manager" - is available to administrators to "establish preferences for the configurable preferences of the application program which have been designated as administrator only settable." Id. col. 3, ll. 59-61. The second program file - an "application launcher" - "not only provides for a user interface to execute the application program itself but also allows a user to specify one or more of the configurable parameters of the application program." Id. col. 3, ll. 64-67.

The '578 patent lists 46 apparatus and method claims, of which claim 1 is representative.

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1. A method for management of configurable application programs on a network comprising the steps of:

installing an application program having a plurality of configurable preferences and a plurality of authorized users on a server coupled to the network;

distributing an application launcher program associated with the application program to a client coupled to the network;

obtaining a user set of the plurality of configurable preferences associated with one of the plurality of authorized users executing the application launcher program;

obtaining an administrator set of the plurality of configurable preferences from an administrator; and

executing the application program using the obtained user set and the obtained administrator set of the plurality of configurable preferences responsive to a request from the one of the plurality of authorized users.

The '293 patent, in turn, is concerned with the centralized distribution of application programs in a network.

Centralized control of software distribution is also provided for a network management server managed computer network such as a Tivoli™ environment. Application programs are distributed as file packages (packets) to on-demand servers. A profile manager import call is included in the distributed file packet along with an import text file containing the data required to properly install and register the application program on the on-demand server and make it available to authorized users. Settable on-demand server identifier fields are included to allow a plurality of on-demand servers to receive a common file packet and properly install and register the program for use locally.

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'293 patent, col. 4, ll. 14-25. The '293 patent lists 21 apparatus and method claims, of which claim 1 is also representative.

1. A method for distribution of application programs to a target on-demand server on a network comprising the following executed on a centralized network management server coupled to the network:

providing an application program to be distributed to the network management server;

specifying a source directory and a target directory for distribution of the application program;

preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server; and

distributing the file packet to the target on-demand server to make the application program available for use by a user at a client.

The parties dispute the construction of the following six claim terms, listed in their order of importance (as agreed by the parties in their Joint Claim Construction Statement).

• "application program(s)" (all asserted claims in both patents)

• "application launcher program" (all asserted claims of the '578 patent)

• "registration operations" (all asserted claims of the '293 patent)

• "file packet" (all asserted claims of the ''293 patent)

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• "executing the application program using the obtained user set and the obtained administrator set . . . responsive to a request from the one of the plurality of authorized users" ('578 patent claim 1)

• "configuration manager program" (claims 2-3, 18-19, and 33-34 of the '578 patent)

Defendants additionally assert that two groups of claims of the '578 patent - claims 20, 22, 24, 35, 37, and 39 (group 1), and claims 9, 23, 25, and 40 (group 2) are indefinite.⁵

Claim construction is an issue of law for the court. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-389 (1996). Claim terms are generally given the ordinary and customary meaning that would be ascribed by a person of ordinary skill in the art (POSITA) in question at the time of the invention.⁶ See Phillips v. AWH Corp, 415 F.3d 1303, 1312-1313 (Fed.

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Cir. 2005) (en banc). In ascertaining how a person of ordinary skill in the art would have understood the terms, the court looks to the claims, the specification of the patent, and its prosecution history - collectively the intrinsic record of the patent. Id. at 1314-1317. Where appropriate, the court may also consider evidence extrinsic to the patent and its prosecution history, such as dictionaries, treatises, or expert testimony. Id.⁷ Ultimately, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Id. at 1316 (citation omitted).

• application program(s) (both patents)

Uniloc contends that the claim term "application program(s)" should be given its ordinary meaning, and relies on its expert declaration for the

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definition, namely, "software that performs tasks for an end-user." Corrected Shamos Decl. at ¶¶ 64-74.⁸

Defendants, on the other hand, note that the '578 patent's specification defines an "application program" - "as used herein, it is to be understood that the term 'application program' generally refers to the code associated with the underlying program functions, for example, Lotus Notes or a terminal emulator program." '578 patent, col. 12, ll. 13-16. Defendants also note that during the prosecution of the related '466 patent, the patentee further defined "application program" as follows.

In