1 spencer hosie (ca bar no. 101777) diane s. rice (ca bar

PLAINTIFF’S COMBINED REPLY CLAIM CONSTRUCTION BRIEF AND OPPOSITION TO GOOGLE’S MOTION FOR SUMMARY JUDGMENT Case No. 4:15-cv-01775-PJH

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SPENCER HOSIE (CA Bar No. 101777)

[email protected]

DIANE S. RICE (CA Bar No. 118303)

[email protected]

ANTHONY K. LEE (CA Bar No. 156018)

[email protected]

DARRELL RAE ATKINSON (CA Bar No. 280564)

[email protected]

HOSIE RICE LLP

Transamerica Pyramid

600 Montgomery Street, 34th

Floor

San Francisco, CA 94111

(415) 247-6000 Tel.

(415) 247-6001 Fax

LESLIE V. PAYNE (Pro Hac Vice)

[email protected]

CHRISTOPHER M. FIRST (Pro Hac Vice)

[email protected]

HEIM, PAYNE & CHORUSH, LLP

600 Travis Street, Suite 6710

Houston, Texas 77002

(713) 221-2000 Tel.

Attorneys for MasterObjects, Inc.

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

OAKLAND DIVISION

MASTEROBJECTS, INC., Plaintiff, v. GOOGLE INC.,

Defendant.

Case No. 4:15-cv-01775-PJH PLAINTIFF MASTEROBJECTS, INC.’S COMBINED REPLY CLAIM CONSTRUCTION BRIEF AND OPPOSITION TO GOOGLE INC.’S MOTION FOR SUMMARY JUDGMENT ON COLLATERAL ESTOPPEL AND WRITTEN DESCRIPTION Date: February 24, 2016, 9:00 a.m. Place: Courtroom 3 – Fifth Floor Judge: Hon. Phyllis J. Hamilton JURY TRIAL DEMANDED

Case 4:15-cv-01775-PJH Document 46 Filed 12/03/15 of 29

trk

Text Box

EBAY INC. EXHIBIT 1017

PLAINTIFF’S COMBINED REPLY CLAIM CONSTRUCTION i BRIEF AND OPPOSITION TO GOOGLE’S MOTION FOR Case No. 4:15-cv-01775-PJH

SUMMARY JUDGMENT

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TABLE OF CONTENTS

Page

I. THE NEW CLAIMS ARE NOT LIMITED TO SENDING “JUST THE

CHANGES” ................................................................................................................1

A. The New Claim Language Does Not Require Sending “Just the Changes” ...1

B. Neither the Specification Nor the Prosecution History Requires Sending

“Only the Changes” ........................................................................................5

1. There is No Specification Disavowal .................................................5

2. There is No Prosecution History Disavowal .....................................11

II. THE ‘024 PATENT FULLY DISCLOSES SNEIDNG THE FULL STRING,

INCLUDING PREVIOUSLY SENT CHARACTERS, NOT “JUST THE

CHANGES” ..............................................................................................................14

A. The Law ........................................................................................................14

B. A Person of Ordinary Skill in the Art Would Not Conclude That the

Inventor Lacked Possession of Sending a Character More Than Once ........15

C. The Specification Discloses a “Query Message” Used in the Same Manner

as Used in the Claims ....................................................................................16

D. A Person of Ordinary Skill in the Art Would Recognize That the Portion of

the Disclosure Relied Upon by Google Addresses the Simple and Predictable

Technology of Network Transmissions ........................................................18

E. Describing a System That May Be Optimized in One Particular Manner

Necessarily Discloses Both the Optimization and the Underlying

Embodiment ..................................................................................................19

F. Summary Judgment in Google’s Favor on This Fact-Intensive Issue is

Improper ........................................................................................................19

G. Google’s Written Description Argument Fails .............................................20

III. COLLATERAL ESTOPPEL DOES NOT APPLY TO THE NEW CLAIMS ........21

A. The Law ........................................................................................................21

B. The Issue At Stake Here is Not Identical to That in the Prior Action ..........21


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C. Even Assuming the “Present Invention” Issue Advanced by Google is the

Issue at Stake, That Issue Was Not Actually Litigated in the Prior Case .....23


PLAINTIFF’S COMBINED REPLY CLAIM CONSTRUCTION iii BRIEF AND OPPOSITION TO GOOGLE’S MOTION FOR Case No. 4:15-cv-01775-PJH

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TABLE OF AUTHORITIES

Cases Page

Abbott Labs v. Sandoz, Inc.,

566 F.3d 1282 (Fed. Cir. 2009)......................................................................................6

Absolute Software, Inc. v. Stealth Signal, Inc.,

659 F.3d 1121 (Fed. Cir. 2011)....................................................................................10

Ariad Pharms., Inc. v. Eli Lilly & Co.,

598 F.3d 1336 (Fed. Cir. 2010)..............................................................................14, 18

Baran v. Med. Device Techs., Inc., et al.,

616 F.3d 1309 (Fed. Cir. 2010)......................................................................................3

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,

635 F.3d 1373 (Fed. Cir. 2011)..............................................................................15, 20

Enzo Biochem, Inc. v. Gen-Probe, Inc.,

323 F.3d 956 (Fed. Cir. 2002)......................................................................................19

Fujifilm Corp. v. Motorola Mobility,

No. 12-cv-03587-WHO, 2015 WL 757575, at *20 (N.D. Cal. 2015) ...........................6

Genentech, Inc. v. Trs. of the Univ. of Pa.,

871 F. Supp. 2d 963 (N.D. Cal. 2012) .........................................................................15

Hayes Microcomputer Prods., Inc. v. Patent Litig.,

98 F.2d 1527 (Fed. Cir. 1992)......................................................................................18

Helmsderfer v. Bobrick Washroom Equip., Inc.,

527 F.3d 1379 (Fed. Cir. 2008)......................................................................................3

Hill-Rom Servs. Inc. v. Stryker Corp.,

755 F.3d 1367 (Fed. Cir. 2014)......................................................................................5

Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,

540 F.3d 1337 (Fed. Cir. 2008)....................................................................................13

I4i Ltd. P’ship v. Microsoft Corp.,

598 F.3d 831 (Fed. Cir. 2010)......................................................................................11

In re Skvorecz,

580 F.3d 1262 (Fed. Cir. 2009)....................................................................................18


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Liebel-Flarsheim v. Medrad, Inc.,

358 F.3d 898 (Fed. Cir. 2004)......................................................................................10

LizardTech, Inc. v. Earth Res. Mapping, Inc.,

424 F.3d 1336 (Fed. Cir. 2005)..............................................................................14, 21

Mallinckrodt, Inc. v. Masimo Corp.,

147 Fed. Appx. 158 (Fed. Cir. 2005) .....................................................................21, 23

Martek Biosciences Corp. v. Nutrinova, Inc.,

579 F.3d 1363 (Fed. Cir. 2009)....................................................................................14

Nazomi Communications, Inc. v. Nokia Corp.,

No. C-10-04686, 2013 WL 2951039 (N.D. Cal. Jun. 14, 2013)..................................22

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)..................................................................................1, 6

Provenz v. Miller,

102 F.3d 1478 (9th Cir. 1996) ...............................................................................15, 20

Renishaw PLC v. Mariposs Societa ‘per Azioni,

158 F.3d 1243 (Fed. Cir. 1998)......................................................................................1

ScriptPro, LLC v. Innovation Assocs.,

762 F.3d 1355 (Fed. Cir. 2014)....................................................................................14

Space Systems/Loral, Inc. v. Lockheed Martin Corp.,

405 F.3d 985 (Fed. Cir. 2005)......................................................................................14

Syngqor, Inc. v. Artesyn Techs., Inc.,

709 F.3d 1365 (Fed. Cir. 2013)..............................................................................15, 20

Telefex, Inc. v. Ficosa N. Am. Corp.,

299 F.3d 1313 (Fed. Cir. 2002)......................................................................................5

Thorner v. Sony Computer Entm’t Am. LLC,

669 F.3d 1362 (Fed. Cir. 2012)..................................................................................1, 5

Voda v. Cordis Corp.,

536 F.3d 1311 (Fed. Cir. 2008)....................................................................................10

Statutes

35 U.S.C. § 112 ........................................................................................................................19

35 U.S.C. § 120 ........................................................................................................................21


PLAINTIFF’S COMBINED REPLY CLAIM CONSTRUCTION 1

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I. THE NEW CLAIMS ARE NOT LIMITED TO SENDING “JUST THE CHANGES.”

A. The New Claim Language Does Not Require Sending “Just the Changes.”

“The claim construction inquiry… begins and ends in all cases with the actual words

of the claim.” Renishaw PLC v. Marposs Societa’per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.

1998). The claims define the “metes and bounds of the patentee’s invention.” Thorner v.

Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). A patentee is “free

to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning.”

Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).

Claim language matters. Patentees write new claims for a reason. MasterObjects did

so here. Google can snark that it is “déjà vu” all over again1 only by pretending that the new

language merely repeats the old. It does not.

Google’s Position Then

Google’s construction of claim 1 of U.S. Patent 8,112,529 (the ‘529 Patent) turned on

four words which Google then said required that the client send only the changes, with the

server constructing the lengthening query on the server side. Google argued that consecutive

queries “corresponding” to the client changes were sent to the server, which then

“modified” the string to “form” a new query on the server. The consecutive queries

“lengthen” the string on the server. See MasterObjects Opening Br., Dkt. No. 40 at 4:4-

5:10.

These claim terms, said Google, described a “process” turning on the client sending

just the changes, and the server gluing the changes together all “to form” a query on the

server. Google’s ‘529 construction absolutely pivoted on the words “form” (which it deemed

“the key claim language”), “modify,” “lengthens,” and “corresponding.” See generally

Google’s Responsive Claim Construction Brief, 01054, Dkt. No. 116 at 20:10-25; Google’s

1 With apologies to Mr. Berra.




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Opp. to MasterObjects’ Mot. for Leave to File Mot. for Reconsideration and Opp. to Mot. for

Reconsideration, 01054, Dkt. No. 166, § III, B, 1, a, (1).

Google’s Position Now

None of these words appear in the new claims, which introduce the new concept of a

“query message.” The new claim language does not speak of “corresponding consecutive

queries.” The new claims say nothing about consecutive queries “modifying” the string. The

new claims do not say that the consecutive queries “form” a lengthening string on the server.

Nor do the new claims say that the consecutive queries “lengthen” the string. In short, the

“key” words that Google said required its “only the changes” construction are entirely absent

in the new U.S. Patent 8,539,024 (the ‘024 Patent) claim language.

Google now dismisses this profound change in language as “merely differences in

form, not substance….” Google’s Combined Responsive and Opening Sum. J. Br., Dkt. No.

44 (“Google Br.”) at 11:17-18 & 18:1-2 (“MasterObjects elevates form over substance.”).

Despite lacking the very words central to Google then, Google says that the new claims

“contain no material differences from those this Court previously construed.” Id. at 1:6-7.

But these suddenly immaterial words provided the very foundation for Google’s “only the

changes” ‘529 construction. If the words were dispositive then, how can their absence

not matter now?

Google’s brief thus turns on a profound inconsistency. On the one hand, Google says

that the words (and process) it relied on previously do not matter, and that, in contending to

the contrary, “MasterObjects elevates form over substance.” On the other hand, Google asks

that this Court summarily affirm its prior ruling, a ruling that absolutely pivoted on words

that Google now disavows. Which is it?

What Do The New Claims Actually Say?2

2 Google asserts on page 21 of its combined brief that “MasterObjects has chosen not

to propose any construction for the Additional Characters terms.” See also Google Br. at




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The new claim language explicitly defines what is sent from the client to the server.

The client provides input comprising a lengthening string of characters, and then sends

“query messages” to the server system. The term “query messages” was not used in the

‘529 claims, but is central to the ‘024 claims. And the new claims broadly state what these

“query messages” are: “whereby the query messages represent the lengthening string as

additional characters are being input by the user/software process” (‘024 Patent,3 claims

1, 35, 36, 37) and “multiple query messages corresponding to multiple versions of said

input” (‘024 Patent, claim 35).4 This claim language states that the client sends “query

messages” which represent the lengthening string and correspond to the input, not just

changes to the lengthening string.

And the one place that the specification uses the “query message” term, it explicitly

and unequivocally confirms that the “query message” is the full string, including characters

previously sent. See MasterObjects Opening Br. at 12:24-13:2; ‘024 Patent at 18:67-19:2.

The construction for “query message” cannot exclude the one “query message” expressly

described in the specification. See Baran v. Med. Device Techs., Inc., et al., 616 F.3d 1309,

1312 & 1316 (Fed. Cir. 2010); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d

1379, 1383 (Fed. Cir. 2008).

The ‘024 claims continue to state that the server receives “said query messages,” and

uses them to search for responsive content. See, e.g., ‘024 Patent, claim 1. “P,” search for

“p”; “pa,” search for “pa”; “pat,” search for “pat,” etc. The server then sends responsive

7:12-13. To the contrary, MasterObjects has proposed constructions for the embedded terms (“input,” “query,” and “query message”) that need constructions and has addressed in its brief all of the surrounding claim language, which requires no additional construction. 3 The ‘024 Patent is Exhibit 1 (Dkt. No. 40-2) to MasterObjects Opening Brief, while

the ‘529 Patent is Exhibit 2 (Dkt. No. 40-3) to that brief. 4 MasterObjects explained the significance of claim 35’s language in its opening brief

at page 15. Google cropped the quoted claim language from its proposed terms for construction because it directly contradicts Google’s construction. MasterObjects Opening Br. at 16:24-18:9.




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content to the client, and the client tests the relevance of the content “by checking that the

return message corresponds to the latest query….” See ‘024 Patent, claim 1. If the “query”

consists of only the changes, as Google contends, then this would be nonsensical. For

example, if searching for “pat,” and if “t” were the last change sent under Google’s

construction, then the system would compare results for the letter “t” (theatre; thematic;

transmogrify) against the client input (and search intent) of “pat” (patent).

The language of the new ‘024 claims does not limit the client to sending “only the

changes.” The claims do not say this; the claims do not suggest this. In arguing to the

contrary, Google is necessarily reading a “negative limitation” into the claims that requires

only sending the changes.

Since that is not what the claims say, how does Google get to this negative limitation?

By a combination of rewriting the claims and (largely) unacknowledged disavowal. But

there was no disavowal here, as explained in the next section. On re-writing, Google insists

that the query messages, “when combined” or “taken together,” represent the lengthening

string. Google Br. at 10:21-11:14. Google so reintroduces indirectly the very “form” and “to

form” ‘529 claim language that it once deemed “key” but now says is immaterial. In any

event, the ‘024 claims do not say “when combined” or “taken together” or together “form” or

anything remotely close to Google’s language. Instead, the claim language makes clear that

each “query message” is a snapshot of the input (e.g., the query message “corresponds” to the

input). Accordingly, even if Google’s “taken together” argument were considered, all it

would mean is that the query messages together “represent the lengthening string” because

each one by itself is just a snapshot that is not by itself “lengthening.”5

5 Google also argues at page 26 of its combined brief that MasterObjects is giving

“input” and “query messages” the “same meaning” or “conflating” the two terms. Yet, MasterObjects has proposed two different – not the same – constructions for these two terms which illustrate that the “query messages” are the means by which the “input” is transmitted. Of course, there is a difference between the information (here the “input”) and the mechanism (here the “query messages”) by which it is transmitted.




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B. Neither the Specification Nor the Prosecution History Requires Sending “Only the Changes.”

There are only two exceptions to the rule that the words of the claim are generally

“given their ordinary and customary meaning as understood by a person of ordinary skill in

the art.” Thorner, 669 F.3d at 1365. They are: “(1) when a patentee sets out a definition and

acts as its own lexicographer, or (2) when the patentee disavows the full scope of a claim

term either in the specification or during prosecution.” Id. See also Hill-Rom Servs. Inc. v.

Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (disavowal requires that the

specification makes “clear that the invention does not include a particular feature… or is

clearly limited to a particular form of the invention.”). Google does not contend that

MasterObjects acted as its own lexicographer, and indeed, the claims explicitly state that the

query messages represent the lengthening string and correspond to the input. This leaves

specification and/or prosecution disavowal.

1. There is No Specification Disavowal.

The standard for finding specification disavowal is exacting: “where the specification

makes clear that the invention does not include a particular feature, that feature is deemed to

be outside the reach of the claims of the patent.” Thorner, 669 F.3d at 1366. But such

disavowal must be clear, unmistakable, unambiguous, and manifestly said:

The patentee may demonstrate intention to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.

Id., citing with approval Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir.

2002). Disavowal through the specification cannot be the stuff of argument, innuendo,

supposition, or inference. Disavowal is either “manifest” or absent. Period.

Unless this rigorous standard is satisfied, features of an embodiment must not be

imported into the claims. See Abbott Labs v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir.

2009) (“When consulting the specification to clarify the meaning of claim terms, courts must

take care not to import limitations into the claims from the specification.”); see also Phillips,




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415 F.3d at 1323 (“For instance, although the specification often describes very specific

embodiments of the invention, we have repeatedly warned against confining the claims to

those embodiments.”); Fujifilm Corp. v. Motorola Mobility, No. 12-cv-03587-WHO, 2015

WL 757575, at *20 (N.D. Cal 2015) (no unambiguous disavowal).

Google’s “only the changes” argument perforce turns on the notion that the

QuestObjects system is not an embodiment, but rather cabins the claims. Although it took

exactly the opposite position before the Federal Circuit in the ‘529 case (no disavowal),

Google now argues that the QuestObjects system is not just a preferred embodiment, but that

all of its features must be read into the claims, including a “communication protocol,”

requiring (not “allowing”; see below) that the client send only the changes. See

MasterObjects Opening Br. at 7:21-26 quoting Google Federal Court brief (the “standard for

disclaimer/disavowment is inapposite here.”). So, did MasterObjects disavow any form of

query message other than “just the changes” through its description of the QuestObjects

system?

It did not. The QuestObjects system is exemplary – an illustration of one

implementation covered by the claims. The patentee in no way intended to limit the claims

to this embodiment, and the patentee made this point as bluntly as possible. To quote the

actual text, which uses the word “embodiment” in conjunction with the “QuestObjects

system” no fewer than forty-six times:

“In the detailed description below, an embodiment of the present invention is referred to as QuestObjects, and provides a system of managing client input, server queries, server responses and client output…. Other terms used to describe the QuestObjects system in detail can be found in the glossary below.” ‘024 Patent at 9:53-60 (emphasis added).

“It will be evident to one skilled in the art that the model shown [QuestObjects] is purely an illustrative example of one embodiment of the invention, and that other models and implementations may be developed to practice the invention while remaining with in the spirt and scope of [sic] this disclosure.” ‘024 Patent at 21:39-44 (emphasis added).

Google repeatedly cites and relies on two Figures, Figure 4 and Figure 6. Oddly,

Google never mentions what the specification says these figures represent. Why not?




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Because the specification explicitly describes these figures as being embodiment specific:

“FIG. 4 shows a sequence diagram illustrating the use of a system in accordance with an embodiment of the invention.” ‘024 Patent at 8:1-2 (emphasis added).

“FIG. 6A shows a first thread flow chart illustrating the client side

of an embodiment of the invention.” ‘024 Patent at 8:9-10 (emphasis added).

In a nod to belt and suspenders, after making clear that the detailed description sets

forth an enabling embodiment, the specification then reinforces the point that this

embodiment is not designed to cabin the claims:

The foregoing description of preferred embodiments of the present invention has been provided for the purposes of illustration and description. It is not intended to be exhaustive or to limit the invention to the precise forms disclosed…. The embodiments were chosen and described in order to best explain the principles of the invention and its practical application, thereby enabling others skilled in the art to understand the invention for various embodiments… that are suited to the particular use contemplated. It is intended that the scope of the invention be defined by the following claims and their equivalence.

6

‘024 Patent at 31:38-50 (emphasis added). How could MasterObjects have described the

QuestObjects system as an embodiment any more clearly?

MasterObjects’ point that the QuestObjects system is an embodiment recently

received support from an unusual source: Google’s expert. MasterObjects deposed Dr.

Martin Rinard, whose lengthy declaration Google appended to its claims opposition and

summary judgment cross-motion. Dr. Rinard testified that the QuestObjects system was just

an embodiment that did not cabin the claims. See Rinard Dep. 61:5-18, 63:10-21 & 64:17-

65:12, Nov. 10, 2015 (Exhibit 1 to the Declaration of Spencer Hosie In Support of Combined

Reply and Opposition Brief (“Hosie Decl.”)). He, likewise, testified that Figures 4 and 6

were embodiment specific: (“A: I think what’s clear is figure 4, as a whole, illustrates an

6 Because it is just one detailed example, the patent’s description of the QuestObjects

system is replete with highly specific defined terms not found in the claims, e.g., “Quester,” “Questlet,” “Query Manager,” “Persistent Quester Store,” etc. See generally, ‘024 Patent at 9:64-11:47. These are embodiment terms, not claim terms.




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embodiment…”). Id. at 55:22-25. He confirmed that this is how he, as a person skilled in

the art, read the plain text of the specification. Id. at 61:14-18 & 63:18-21.

Finally, even the MasterObjects preferred embodiment description of a

“communication protocol” states that the embodiment is “allow[ed]” to send just the

changes, as against being “required” to send just the changes. ‘024 Patent at 20:14-17.

Allowed is not required.7 This “allowed to send just the changes” alternative is an

optimization, not a closed-end description of the one required form of query message

transmission. Id. at 11:58-60 (“a communication protocol that is optimized for sending

single characters”) (emphasis added). And the specification makes the base case clear – the

base case is “sending the entire [client] input buffer.” Id. at 20:14-17. As the

specification sets forth, the client generates a “character event” by, e.g., typing in additional

characters. See, e.g., id. at 18:45-47. Then, the client side input buffer is updated (“If the

event is a character event, the input buffer is updated accordingly.”). See id. at 20:2-3. The

system may then send the entire client input buffer, which would include characters already

sent, or the QuestObjects embodiment “allows” the client to send “just the changes to the

input buffer, instead of sending the entire input buffer.” Id. at 20:16-17 (emphasis

added). This language makes clear that while the system can be optimized to send “just the

changes,” it is not required to send just the changes.

In short, the specification discloses the prevalent standard – sending the entire input

buffer – and one QuestObjects permissible embodiment – sending just the changes. In no

way does this passage state that this “optimization” of the base case is somehow required in

every query. In fact, it says exactly the converse. See ‘024 Patent at 20:14-16. Google’s

expert, Dr. Rinard, agreed with this point as well, recognizing that the “communication

protocol” language reflected an “optimization.” See Rinard Depo. 40:24-41:10, Ex. 1.

7 And the “communications protocol” language, which was in all of the asserted ‘529

and ‘639 claims from the previous case, was dropped from the ‘024 claims in any event




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Google attempts to rebut the above specification passages with several misguided

interpretations. It first argues that the abstract’s reference to “sending a character-by-

character string” somehow supports its “just the changes” construction. Google Br. at 3:21-

4:7 & 13:4-11. But Google ignores the last part of the sentence at issue, which states that the

server returns “to the client increasingly appropriate database information as the client sends

the string.” (Emphasis added). The abstract does not say as the client sends “only the

changes” or “each new character only”; it says, the client “sends the string.” More,

MasterObjects’ construction of sending the full string (even the previously sent characters) is

perfectly consistent with “sending a character-by-character string” because the full string is

typed in by the user “character-by-character.”

Google also refers to the concept of “synchronization” between the client and server,

claiming that MasterObjects attempted to “distinguish[ ]” the prior art based on sending only

the changes. Google Br. at 4:8-16 & 14:17-15:3. But MasterObjects’ invention has never

been about a specific form of “synchronization,” which the specification makes clear can be

accomplished in multiple ways (e.g., by sending the full string or just the changes). The

specification even notes that client/server synchronization methods were known in the prior

art, further showing that MasterObjects never relied on a specific type of synchronization for

patentability. ‘024 Patent at 4:63-5:3 & 5:8-10. Instead, MasterObjects’ invention

distinguished the art on multiple grounds, including moving the search technology from the

client to the server, ‘024 Patent at 6:41-59, and allowing the client and server to

communicate asynchronously.

Finally, in the face of the specification’s clear statements that the server in even the

QuestObjects preferred embodiment “interpret[s] incoming strings before they are sent to

the Service,” ‘024 Patent at 10:33-34 & 10:46-48 (emphasis added), Google weakly suggests

that the strings are not “incoming” from the client. Google Br. at 21:9-11. If not from the

(except for ‘024 claims 32 and 33).




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client, then whence they come? The specification makes clear that the strings – not just the

changes – are “incoming” from the client. See, e.g., ‘024 Patent at 12:5-7 (“Clients can also

use the protocol to send a string of characters”).

Present Invention Language

Google finally insists that the patent’s use of the phrase “present invention” in

describing the QuestObjects embodiment amounts to a clear and manifest disavowal of claim

scope broader than the embodiment itself. But this is not what the specification says. To the

contrary, the specification makes clear that the MasterObjects QuestObjects system is an

illustrative embodiment, and not intended to cabin the claims. See ‘024 Patent at 21:39-44 &

31:38-50.

The Federal Circuit has consistently refused to restrict claims based on the description

of the “present invention” except in the case of clear disavowal. See, e.g., Rambus Inc. v.

Infineon Techs., 318 F.3d 1081, 1094-95 (Fed. Cir. 2003) (“While clear language

characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, such

language must be read in context of the entire specification and the prosecution history….

The remainder of the specification and prosecution history shows that Rambus did not clearly

disclaim or disavow such claim scope in this case.”); Voda v. Cordis Corp., 536 F.3d 1311,

1320 (Fed. Cir. 2008); Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 908-09 (Fed. Cir.

2004).

For example, the Federal Circuit has held that a statement about the “present

invention” does not limit the claims where the intrinsic evidence includes disclosures that are

inconsistent with such a limitation. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d

1121, 1136 (Fed. Cir. 2011) (“[W]e have found that use of the phrase ‘present invention’ or

‘this invention’ is not always so limiting, such as where the references to a certain limitation

as being the ‘invention’ are not uniform, or where other portions of the intrinsic evidence do

not support applying the limitation to the entire patent.”). Such “inconsistent disclosures” are

present in the patent-in-suit, namely, that the client may send the entire string, or that the




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client may send the entire input buffer. See supra at 8:10-26; MasterObjects Opening Br. at

15:13-16:9; ‘024 Patent at 12:5-10.

Not surprisingly, the Federal Circuit has also held that where the “present invention”

description uses “permissive language,” such as “could be edited,” “can be created,” and

“ability to work,” this does not clearly disclaim systems lacking these benefits. i4i Ltd.

P’ship v. Microsoft Corp., 598 F.3d 831, 844 (Fed. Cir. 2010). In the present case, even

within the QuestObjects embodiment itself, the client is not required to send “just the

changes.” To the contrary, the QuestObjects “protocol” provides “messages” to “allow the

Client Quester to send just the changes to the input buffer….” ‘024 Patent at 20:14-16

(emphasis added). “Allow” does not remotely rise to the level of manifest exclusion or

restriction.

2. There is No Prosecution History Disavowal.

There is nothing in the ‘024 prosecution history that supports Google’s reading in a

“just the changes” disclaimer. For this reason, Google turns to the prosecution history of the

‘529 patent. This is odd, since the ‘529 claim language is so different, and thus the ‘529

prosecution history has no bearing on the new claims. In any event, Google’s account is not

faithful to the actual ‘529 prosecution record recited below.

The “communication protocol” (which has been eliminated from almost all ‘024

claims) and “client object” limitations of original ‘529 claim 1 read as follows:

a communication protocol that provides a session-based connection between a client system and a server system, and allows said client system to query said server system for content;

a client object, in communication with a client software at said client system, said client object capable of transmitting to a server object a plurality of queries to retrieve content from said content engine, wherein each of said plurality of queries comprises a single string character, and wherein each subsequent of said plurality of queries extends the query; and,

Excerpt from U.S. Patent Application Publication 2003/0041147 (Ex. 2 to Hosie Decl.)

(emphasis added). These original claims provide that the client system queries the server

system by transmitting a “plurality of queries compris[ing] a single string character.”




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Importantly, the language regarding a “single [ ] character” transmission was quickly

eliminated.

By the second office action response, it was clear that MasterObjects had broadened

the claim scope to cover both single character and entire string transmission methods. That

response includes the following amended “communication protocol” and “client object”

limitations of ‘529 claim 1 (with deletions struck through and additions underlined):

a communication protocol that provides a enables an asynchronous session-based connection between a client system and a server system, and allows said the client system to send a query string to query said server system for content, within a session between the client system and the server system, a plurality of consecutively input query strings, to query the server system for content as part of a session;

a client object, in communication with a client software at said the client system and with the communication protocol, said wherein the client object capable of transmitting transmits to a server object at the server system a plurality of consecutive queries, within the same session, to retrieve content from said content engine the server system, wherein each of said plurality of consecutive query one of lengthens or shortens the query string by one or more characters, queries comprises a single string character and forms an increasingly focused query string for retrieving content from the server system, and wherein each subsequent of said plurality of queries extends the query string; and[[,]]

Excerpt from December 19, 2005 Request for Continued Examination and Response from

‘529 prosecution history (Ex. 3 to Hosie Decl.) (Emphasis added in bold).

These amended ‘529 claims underscore two points. First, in the communication

protocol limitation, the amended language covers the client sending “consecutively input

query strings,” as opposed to the client simply querying the server as in the original claim.

Second, in the client object limitation, the “single [ ] character” language was deleted and the

concept of each consecutive query lengthening or shortening the query string to “form[] an

increasingly focused query string” was introduced. These amendments represent an

evolution from claiming that the client sends “single [ ] character” transmissions to claiming

the client’s sending query strings that have been lengthened (or shortened).

In the very next ‘529 filing at the PTO, MasterObjects further clarified in its remarks

that the amended claims capture both transmission methods. The pertinent remarks arose in




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the context of addressing the Zim prior art reference, as follows:

Unlike Zim, which discloses database objects in a SQL client-server environment, embodiments of the present invention use strings of characters themselves (which grow in size as the user types the characters in the string), and more particularly consecutive queries that one of lengthen or shorten the query string by the additional characters, and that form an increasingly focused query string for retrieving matching content from the server system.

*** [A]s defined by Claim 1, the client object receives additional

characters from the client software, and as each character is being received, transmits to a server object at the server system a plurality of consecutive queries, within the same session, to retrieve content from the server system, and that each consecutive query one of lengthens or shortens the query string by one or more additional characters…. Consecutive queries only contain the growing string of characters (rather than a set of stored procedures with corresponding parameters [as in Zim]. As such, in the embodiment defined by Claim 1, the input string has a direct relationship to the content being matched on the server—once a client has registered with the server by starting a session (at which time the name of the Content Source to be used is specified to the Server), then subsequent requests from that client simply pass along the user data (the "growing string of characters"), rather than names of additional/different stored procedure(s) with parameters to be executed.

September 11, 2006 Response to Office Action from ‘529 prosecution history (Ex. 4 to Hosie

Decl.) (emphasis added).

Far from limiting ‘529 claim 1 to the client sending “only the changes,” these remarks

make clear that the client sends consecutive queries that include the “growing string of

characters,” such that “each query contains a different query string that lengthens or shortens

the previous one.” 8

There was no prosecution history disclaimer here.9

II. THE ‘024 PATENT FULLY DISCLOSES SENDING THE FULL STRING, INCLUDING PREVIOUSLY SENT CHARACTERS, NOT “JUST THE CHANGES.”

8 Google’s brief also cites to inventor testimony, see Google Br. at 8 & 16, but most of

the testimony does not support Google and it is irrelevant as a matter of law. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 (Fed. Cir. 2008). 9 Google says that, in this claims hearing, MasterObjects is somehow precluded from

tendering its own claim terms for construction. The parties’ Joint CMC Statement is directly to the contrary. See Joint Claim Construction and Prehearing Statement (Dkt. 36) at 2:16-3:4 (“MasterObjects submits terms to be construed . . . pursuant to the Joint Case Management Statement. See Dkt. No. 33 at 12 (“Parties to exchange list of claim term(s) …”).




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On Google’s written description challenge:

A. The Law.

The test for written description is whether a patent’s disclosure reasonably conveys to

a person having ordinary skill in the art (a “PHOSITA”) “that the inventor had possession of

the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598

F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

There is no requirement that a specification disclose every embodiment covered by

the claims. See LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir.

2005) (“A claim will not be invalidated on section 112 grounds simply because the

embodiments of the specification do not contain examples explicitly covering the full scope

of the claim language.”). A patent can satisfy the written description requirement even if the

claims are “broader than the specific examples disclosed.” See Martek Biosciences Corp. v.

Nutrinova, Inc., 579 F.3d 1363, 1371 (Fed. Cir. 2009) (reversing JMOL of lack of written

description even though the specification did not contain “working examples” of the claimed

features). Further, the specification does not have to include “information that is already

known and available to the experienced public.” Space Systems/Loral, Inc. v. Lockheed

Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005). All that is required is for the patent to

convey to a PHOSITA that the inventor had possession of the claim subject matter. See

ScriptPro, LLC v. Innovation Assocs., 762 F.3d 1355, 1359 (Fed. Cir. 2014) (reversing

summary judgment of invalidity for lack of written description and noting that “the

specification’s description of embodiments having [a certain feature] does not necessarily

mean that the only described invention [has that feature]”).

“Compliance with the written description requirement is a question of fact….”

Syngqor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1373 (Fed. Cir. 2013); see also

Genentech, Inc. v. Trs. of the Univ. of Pa., 871 F. Supp. 2d 963, 980 (N.D. Cal. 2012).

Summary judgment is generally inappropriate when an expert’s testimony supports the non-




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moving party. Provenz v. Miller, 102 F.3d 1478, 1490 (9th Cir. 1996); see also Crown

Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1384 (Fed.

Cir. 2011) (“Where there is a material dispute as to the credibility and weight that should be

afforded to conflicting expert reports, summary judgment is usually inappropriate.”).

B. A Person of Ordinary Skill in the Art Would Not Conclude That the Inventor Lacked Possession of Sending a Character More Than Once.

The ‘024 specification clearly discloses sending several characters at a time. ‘024

Patent at 12:5-7. It also discloses sending the complete string. See supra at 8:10-26;

MasterObjects’ Opening Br. at 15:13-16:9; see also ‘024 Patent at 12:7-10. It also discloses

sending a “query message” that contains previously sent characters, i.e., the query message is

not restricted to “just the changes.” ‘024 Patent at 18:67-19:2. And the specification also

describes that the QuestObjects embodiment allowed an optimization, i.e., sending just the

changes, as against resending the entire lengthening string in the client input buffer. See

supra at 8:6-9. Describing a system that may be optimized in one particular fashion

necessarily discloses both the optimization and the underlying base case.

Google addresses none of this in its brief. On this, a complex factual issue with

warring descriptions and experts (MasterObjects submits the Declaration of Dr. Gareth Loy

(“Loy Decl.”) showing written description satisfaction), the jury should decide the written

description question, not this Court on a truncated summary judgment record.

C. The Specification Discloses a “Query Message” Used in the Same Manner as Used in the Claims.

MasterObjects’ proposed construction for the term “query message” is “transmissions

that include at least the ‘input.’” See MasterObjects Opening Br. at 12:12-23. The

specification explicitly supports the term “query message” with this meaning: starting from a

point in time when the input is “a,” an “additional character event is generated when the user

has typed a second character ‘b.’” Id. at 12:26-28; ‘024 Patent at 18:45-19:14; Loy Decl. at

par. 48-52. The system analyzes the string, and then “send[s] the appropriate query message

‘ab’ to the Service.” ’024 Patent at 18:67-19:2 (emphasis added).




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Google does not dispute that the term “query message,” as used in the specification,

describes a transmission that may include the input string (including previously transmitted

characters). Google hangs its entire written description position, then, on a narrower

argument:

The [query message] disclosure … describes only server-to-service communications, not client-to-server communications … These two types of communications, however, are entirely distinct aspects of the disclosed system. Rinard Decl., ¶ 80. The two have different requirements and parameters, and are not interchangeable. Id.

Google Br. at 34:25-35:2. In short, Google contends that a PHOSITA would conclude that

while the inventors were clearly in possession of sending a query message (including

previously sent characters) from a server to a service, the ability to send such a query

message from a client to a server is a concept that would have been beyond what the

inventors possessed. You can carry your wallet in your left pocket, says Google, but no one

would ever think you could carry the same wallet in your right pocket.

This remarkable proposition is unsupported by either common usage or the plain

language of the specification. There is nothing magic about the designations of “client,”

“server,” and “service” used by the specification. See ‘024 Patent at 11:50-12:1; Loy Decl. at

par. 48-52. As used by a PHOSITA, these devices are simply a way to denote roles that

different portions of a larger system may play.10

See Loy Decl. at par. 48-52. While “query

message” is used in the specification to describe sending the full string in the context of a

server to service transmission, there is nothing in the specification that suggests that the

ability to send such a “query message” is limited to only the server.

In fact, the specification confirms this and explicitly contradicts Google’s position

that the specification describes the client as a portion of the system that possesses strictly

10 Indeed, dependent ‘529 claim 7, which was in the very first claims draft in the ‘529

history, see Ex. 2 to Hosie Decl., states that the “client,” can be a “content engine,” which is defined as a server-side function. Far from a magical client-server great divide, the claims




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limited functionality: “Generally, any process or mechanism that can send characters and

receive string lists can be considered a client of the system.” ‘024 Patent at 11:66-12:1

(emphasis added). Thus, Google’s implicit proposition that the specification holds the

“client” out as a uniquely inflexible component of the larger system is wrong. See Loy Decl.

at par. 48-52.

It does not end there: “[o]ne skilled in the art would appreciate that it is not necessary

to replicate the tiers. Indeed, there may be only a single copy of each tier, and that all tiers

(Client, Server, and Service) may be running on a single computer system.” ‘024 Patent

at 12:44-48 (emphasis added). This passage alone should debunk any notion that the

specification draws “distinct” lines between the client, server, and service. See Loy Decl. at

par. 48-52.

A PHOSITA would read the specification and determine that the inventors were

clearly in possession of sending a “query message” that contains previously transmitted

characters. See Loy Decl. at par. 48-52. Given that neither the specification nor common

usage supports Google’s position that this ability is, for some inexplicable reason, limited

only to the server, a PHOSITA would not draw such a distinction. See id. Accordingly, the

specification directly supports a construction of “query message” that covers “transmissions

that include at least the input.”

D. A Person of Ordinary Skill in the Art Would Recognize That the Portion

of the Disclosure Relied Upon by Google Addresses the Simple and

Predictable Technology of Network Transmissions.

It is well-settled law that the level of detail required in a disclosure “varies depending

on the nature and scope of the claims and on the complexity and predictability of the relevant

technology.” Ariad, 598 F.3d 1351. Further, there is “no length requirement” for a

disclosure, because “an inventor is not required to describe every detail of his invention.” In

make plain that server-side to server-side query messages are covered, e.g., the “ab” in the “query message” portion of the specification.




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re Hayes Microcomputer Prods., Inc. v. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir. 1992).

These propositions are especially true in predictable fields like the one in question here,

where less disclosure is necessary to satisfy the written description requirement. See In re

Skvorecz, 580 F.3d 1262, 1270 (Fed. Cir. 2009).

The specification here clearly discloses a client sending a string to the server. See,

e.g., ‘024 Patent at 12:5-10. In doing so, all parties agree that it describes at least one way of

achieving that goal: “[i]n one embodiment, [] the Server receives a single character from the

Client.” ‘024 Patent at 11:61-62. Network transmissions between devices including clients

and servers, as well as synchronization techniques, were well known in 2001 and are a

predictable field – a PHOSITA would recognize that there are several conventional ways to

implement transmission of a string. See Loy Decl. at par. 20-24, 32-37. Thus, such a person

would recognize that the description of the “Server receiv[ing] a single character from the

client” in multiple separate transmissions is merely one way of accomplishing the broader

concept that the inventors clearly described and were in possession of: sending a string to the

server. See id. This is especially true here, given the specification’s unambiguous disclosure

that “the Client may then send the entire string all at once to the Server.” ‘024 Patent at 12:7-

10.

E. Describing a System That May Be Optimized in One Particular Manner Necessarily Discloses Both the Optimization and the Underlying Embodiment.

In addition to ignoring the fact that the embodiment upon which it relies is merely an

exemplary embodiment, Google also ignores the fact that “sending only the changes,” even

within that embodiment, is disclosed only as an optimization. See, e.g., ‘024 Patent at 11:59-

60 (“protocol that is optimized for sending single characters from a Client to a Server”).

A PHOSITA would recognize that in order to optimize something, there must be

another option: the “base case.” See Loy Decl. at par. 46-47. Otherwise, an “optimization” is

not an optimization at all, it is simply the only way that a system may function. See id. In

the case of the specification, the fact that “sending only the changes” is a possible




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optimization necessarily discloses the underlying base case: that the client does not “send

only the changes” and instead sends the entire string from the client to the server. See id. The

specification even explicitly recognizes the fact that this base case is one potential (albeit

non-optimized) way to send the string from the client to the server: “…allow the Client

Quester to send just the changes to the input buffer, instead of sending the entire input

buffer.” ‘024 Patent at 20:15-17 (emphasis added). Thus, even the preferred embodiment

relied upon by Google clearly shows that the inventors possessed sending the entire input

string each time a change is made.

F. Summary Judgment in Google’s Favor on This Fact-Intensive Issue is Improper.

Google must meet an extraordinarily high burden to succeed in its written description

argument. Google faces two separate hurdles. First, in order to invalidate a presumptively

valid patent under 35 U.S.C. §112, Google must prove by clear and convincing evidence that

the patent lacks written description. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956,

962 (Fed. Cir. 2002).

But more importantly, Google asks the Court to preempt the role of the jury on a pure

fact question (Syngqor, 709 F.3d at 1373), and hold that any reasonable juror must conclude

Google has met its high burden of proving, by clear and convincing evidence, that a

PHOSITA would find the specification does not meet the written description requirement.

This is rarely proper. Summary judgment is generally inappropriate when an expert’s

testimony supports the non-moving party. Provenz, 102 F.3d at 1490; Crown Packaging,

635 F.3d at 1384.

Indeed, the specification’s clear disclosure of sending an entire string from the client

to the server is enough for the Court to grant summary judgment for MasterObjects. At the

very least, the disclosures cited above are enough to raise a question of fact sufficient for

submission to the jury, mandating denial of summary judgment for Google.

G. Google’s Written Description Argument Fails.




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A glaring inherent flaw in Google’s argument is that it requires a finding that defies

common sense. Google acknowledges that a PHOSITA would recognize that the inventors

were in possession of sending the entire string from a client to a server, but nevertheless

contends that same person of skill would conclude that the inventors were not in possession

of sending the entire string or portions thereof more than a single time – why on earth not?

Aside from the obvious lack of common sense this conclusion would require,

Google’s proposition is not consistent with the facts. Simple transmission of a string was a

simple and repeatable activity, and a PHOSITA would recognize that the ability to transmit a

string from a client to a server once would be performable iteratively. See Loy Decl. at par.

49, 53-54. Even the lone case relied upon by Google in this key portion of its argument

makes clear that the law does not require what Google urges:

A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. See Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). That is because the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Placed in that context, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention.

LizardTech, 424 F.3d at 1345. Thus, Google’s argument is flawed at its core – a PHOSITA

would fully understand that an inventor with the ability to send an entire string from a client

to the server would necessarily be capable of repeating that transmission. See Loy Decl. at

par. 49, 53-54.

The specification shows a person of ordinary skill that the inventors were in

possession of the ability to send the full input string from the client to the server. Neither the

specification nor the law supports Google’s argument that the inventors were only in

possession of the ability to send just the changes to the input. Accordingly, Google cannot

meet its high burden and its written description challenge fails.

III. COLLATERAL ESTOPPEL DOES NOT APPLY TO THE NEW CLAIMS.




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The ‘024 claims are materially different than the ‘529 claims. If Google were right

on collateral estoppel, continuation patents would cease to exist. But the right to file

continuations is set forth in statute. See 35 U.S.C. § 120. New claims mean a new case.

A. The Law.

The law of the regional circuit, as against Federal Circuit law, applies on collateral

estoppel. Mallinckrodt, Inc. v. Masimo Corp., 147 Fed. Appx. 158, 168 (Fed. Cir. 2005).

Under Ninth Circuit law, “[a] party seeking to invoke collateral estoppel bears the burden to

prove three elements: (1) the issue at stake must be identical to the one alleged in the prior

action; (2) the issue must have been actually litigated; and (3) the determination of the issue

in the prior litigation must have been a necessary part of the judgment in the prior action.”

Id. “‘The party asserting collateral estoppel must show that the estopped issue is identical to

an issue actually litigated and decided in the previous action.’ ‘If there is doubt, however,

collateral estoppel will not be applied.’ Even where the requirements for collateral estoppel

are met, the decision to apply the doctrine is within the Court’s discretion.” Mallinckrodt,

Inc. v. Masimo Corp., 254 F. Supp. 2d 1140, 1148 (C.D. Cal. 2003) (citations omitted).

B. The Issue At Stake Here is Not Identical to That in the Prior Action.

Google identifies the issue at stake as the commonality of the specification of the

‘529 Patent and the ‘024 Patent and its scope. See Google Br. at 30:2-4 & 30:14. Google

does not argue that this Court construed the ‘024 claim language in a prior case. Instead, it

argues that MasterObjects is estopped from advancing a construction for the new language,

because this Court, in construing different claims language in a different patent, looked to a

single statement in the shared specification to confirm the understanding of the prior

language it reached by analyzing that language itself. See Google Br. at 30:2-4 & 30:14; see

also Claim Construction Order, 1054, Dkt. No. 153 at 17:8-13. But the issue advanced by

Google is not the issue here. Instead, the issue is the meaning of specific new claim

language, not the scope of disclosure of a specific statement in the specification. Since the




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new language is very different, the issues present are not “identical” and estoppel does not

lie.

Google relies heavily on Nazomi Communications, Inc. v. Nokia Corp., No. C-10-

04686, 2013 WL 2951039 (N.D. Cal. Jun. 14, 2013). Nazomi is not on point. In Nazomi, the

issue was whether the patentee was estopped from arguing a different construction for the

same claim language, “instructions,” where the patent at issue had a specification that was

identical to the patent in the prior suit. See 2013 WL 2951039, at * 5-6. Here, while there is

specification commonality, there is no identity of issues, as the claim language at issue in the

present suit differs materially.

In construing language in the ‘529 Patent to be limited to sending only the changes in

the prior case, this Court first addressed the claim language at issue, holding that the claim

language itself suggested it was limited to sending only the changes. Claim Construction

Order, 1054, Dkt. No. 153 at 16:27-17:8. Then, and only then, did this Court look to a

specific statement in the specification and concluded that that statement “confirm[ed]” the

limit on the ‘529 claim language at issue. Id. at 17:8-13 (“The specification confirms this

understanding, as ‘the protocol of the current invention’ is one that ‘sends just the changes to

the input buffer, instead of sending the entire input buffer.’ ‘529 patent, 20:11-14 . . . The

Court finds that the use of ‘current invention’ here indicates that the description is intended

to apply to the invention as a whole . . . “) (emphasis added).

In contrast, here, the new ‘024 claim language is devoid of the ‘529 claim language

(e.g., “form,” “modify,” “lengthens,” and “corresponding”). See MasterObjects Opening Br.,

§ 3. Further, the specification statement previously cited by the Court dealt with the term

“protocol,” a term present only in 2 of the 15 claims asserted here. Compare ‘024 claims 32

& 33 with ‘024 claims 1, 6, 7, 15, 16, 18, 19, 20, 25, 28, 35, 36 & 37. The “protocol”

language is simply not in the vast majority of the new claims, and there is no basis for

Google to read in this limitation now.

More, the new claim language directly implicates different language in the

specification. For example, the new claim language uses a term, “query messages,” which is




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defined in a part of the specification not considered by the Court in reaching its prior

construction. See MasterObjects Opening Br., § IV. Since the Court’s prior holding was not

that the single statement in the specification alone supported the prior claim construction, but

that that statement in conjunction with the actual claim language at issue there supported the

Court’s construction, the issue presented here - what does the specification, including

portions of the specification not addressed by the Court’s prior “additional characters”

construction, in conjunction with different claim language, say about what that different

claim language means - is different, and estoppel is inapplicable. Cf. Mallinckrod, 254 F.

Supp. 2d at 1149 (reasoning that collateral estoppel did not apply where the prior

construction relied on (1) a specification that the patents at issue shared with the prior patent,

(2) the prior patent’s claim language, and (3) the prosecution history of the prior patent, but

the claim language and prosecution history for the patents at issue differed from the prior

patent).

C. Even Assuming the “Present Invention” Issue Advanced by Google is the Issue At Stake, That Issue Was Not Actually Litigated in the Prior Case.

Even assuming the issue here is identical to the issue addressed earlier, Google cannot

show the issue was actually litigated in the prior action or that it was necessary to the prior

judgment. For these reasons, too, estoppel does not apply.

To start, the ‘529 issue actually litigated by the parties, as then framed by Google

itself, was the meaning of the claim language as defined by the claim language itself.11

See,

e.g., Google’s Federal Circuit Br., 14-1148, Dkt. No. 40 at 26 (“The Claim Language Itself

Dictates That The Client May Send The Server Only The Changes To The Previous Query”);

cf. id. at 13-15. Google stated that it did not rely on specification disclaimer in the prior case.

11 MasterObjects had no reason in the prior action to direct the Court’s attention to

specification language that support’s claim construction language (for example the specification’s definition of query messages) that was then not at issue—MasterObjects simply did not have an opportunity to make the specification based arguments it now makes, and the Court cannot simply ignore this specification language now.




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Id. at 3 (the “standard [for disclaimer/disavowal] is inapposite here”). What is now central

was then not litigated.12

Dated: December 3, 2015 Respectfully submitted,

/s/ Spencer Hosie

SPENCER HOSIE (CA Bar No. 101777)

[email protected]

DIANE S. RICE (CA Bar No. 118303)

[email protected]

ANTHONY K. LEE (CA Bar No. 156018)

[email protected]

DARRELL RAE ATKINSON (CA Bar No. 280564) [email protected] HOSIE RICE LLP

Transamerica Pyramid

600 Montgomery Street, 34th

Floor

San Francisco, CA 94111

(415) 247-6000 Tel.

(415) 247-6001 Fax

LESLIE V. PAYNE (Pro Hac Vice)

[email protected]

CHRISTOPHER M. FIRST (Pro Hac Vice)

[email protected]

HEIM, PAYNE & CHORUSH, LLP

600 Travis Street, Suite 6710

Houston, Texas 77002

(713) 221-2000 Tel.

(713) 221-2021 Fax

Attorneys for MasterObjects, Inc.

12 The Federal Circuit’s decision also did no more than endorse Google’s argument that

the claim language itself was limiting (and, as noted above, Google in fact distanced itself from any specification disavowal argument on appeal).


1 spencer hosie (ca bar no. 101777) diane s. rice (ca bar

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