UNITED STATES DISTRICT COURT 

WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

PROFECTUS TECHNOLOGY LLC, 

Plaintiff 

v. 

GOOGLE LLC, 

Defendant

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Civil Action No.: 6:20-CV-00101-ADA 

JURY TRIAL DEMANDED 

GOOGLE LLC’S CORRECTED OPENING CLAIM CONSTRUCTION BRIEF 

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TABLE OF CONTENTS 

Page 

I. BACKGROUND OF PLAINTIFF PROFECTUS TECHNOLOGY’S PATENT ..............1

II. PRIOR LITIGATION ..........................................................................................................2

III. ARGUMENT .......................................................................................................................3

A. Legal Standard for Claim Construction ...................................................................3

B. ’308 Patent Terms ....................................................................................................3

1. “Control circuitry” .......................................................................................4

a. “Control Circuitry” Is a Functional Claim Term .............................5

b. Although ‘Control Circuitry’ May be Implemented By a 

Microprocessor, The Disclosure of a General Purpose 

Microprocessor Also Fails To Provide Sufficient Structure 

to Prevent the Term From Being Indefinite. ....................................6

c. The Specification Discloses No Corresponding Structure, 

Because There is No Algorithm For The Microprocessor .............10

2. “Interface” ..................................................................................................12

a. “Interface” Requires Construction Because the Patent Uses 

the Term In Two Different Ways, Only One of Which Is 

Encompassed By the Claims ..........................................................12

b. The Patent Discloses a “User Interface” Which Is Not 

Relevant to This Claim Term .........................................................13

c. The Patent Also Discloses Interfaces For Connecting To 

External Devices, Which Are Relevant to This Claim Term .........14

d. The Specification Does Not Define “Interface,” So Google 

Offers Extrinsic Evidence ..............................................................15

3. “Activating the display screen” .................................................................17

4. “Changing an image displayed/changing an image of the display 

screen”........................................................................................................18

IV. CONCLUSION ..................................................................................................................20

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TABLE OF AUTHORITIES 

 Page(s) 

FEDERAL CASES 

Ancora Techs., Inc. v. Apple Inc., 

No. 11-CV-06357, 2012 WL 6738761 (N.D. Cal. Dec. 31, 2012) ..........................................15

Apple Inc. v. Motorola, Inc., 

757 F.3d 1286 (Fed. Cir. 2014)............................................................................................2, 16 

Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 

521 F.3d 1328 (Fed. Cir. 2008)................................................................................................11

Digital Retail Apps, Inc. v. H-E-B, LP, 

No. 6-19-CV-00167-ADA, 2020 WL 376664 

(W.D. Tex. Jan. 23, 2020) ..........................................................................................................7 

Egenera, Inc. v. Cisco Sys., Inc., 

972 F.3d 1367 (Fed. Cir. 2020)........................................................................................ passim

Foundry Networks v. Lucent Techs., Inc., 

No. CIV.A. 2-04-CV-40TJW, 2005 WL 6217420 (E.D. Tex. May 24, 2005) ........................17 

Iridescent Networks, Inc. v. AT&T Mobility, LLC, 

933 F.3d 1345 (Fed. Cir. 2019)................................................................................................19 

Noah Sys., Inc. v. Intuit Inc., 

675 F.3d 1302 (Fed. Cir. 2012)................................................................................................. 5

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005)..................................................................................... 3, 12, 15 

Profectus Tech. LLC v. Huawei Techs. Co., 

 No. 6:11-CV-474, 2014 WL 11728718 (E.D. Tex. Sept. 8, 2014) .......................................... 3

Profectus Tech. LLC v. Huawei Techs. Co., 

No. 6:11-CV-474, 2014 WL 1575719 (E.D. Tex. Apr. 17, 2014) ..................................... 2, 19

Profectus Tech. LLC v. Huawei Techs. Co., 

823 F.3d 1375 (Fed. Cir. 2016)................................................................................................. 3

St. Isidore Research, LLC v. Comerica Inc., 

No. 2:15-CV-1390-JRG-RSP, 2016 WL 4988246 (E.D. Tex. Sept. 19, 2016) ........................ 7 

Syneron Med. Ltd. v. Invasix, Inc., 

No. 8:16-cv-00143-DOC-KES, 2018 WL 4696971 (C.D. Cal. Sept. 5, 2018) ........................ 7 

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U.S. Surgical Corp. v. Ethicon, Inc., 

103 F.3d 1554 (Fed. Cir. 1997)............................................................................................... 12 

Video Prod., Inc. v. Rose Elecs., 

No. 5:03 CV 2283, 2005 WL 6258388 (N.D. Ohio Feb. 22, 2005) ........................................17

Vitronics Corp. v. Conceptronic, Inc., 

90 F.3d 1576 (Fed. Cir. 1996)..................................................................................................15

Williamson v. Citrix Online, LLC, 

792 F.3d 1339 (Fed. Cir. 2015)........................................................................................ passim

WMS Gaming, Inc. v. Int’l Game Tech., 

184 F.3d 1339 (Fed. Cir. 1999)............................................................................................... 11 

FEDERAL STATUTES 

35 U.S.C. 

§ 112(6) ..................................................................................................................................3, 4 

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INTRODUCTION 

The patent asserted in this case claims a picture frame for displaying digital images. For 

three of the four disputed claim terms, Defendant Google LLC (“Google”) has proposed 

constructions that hew to the technology as a person with skill in the art would have understood 

these terms based on the technology available in 1999-2000. The other term, “control circuitry,” 

falls squarely within the Williamson line of cases finding that functional claim terms lacking 

sufficient disclosure of corresponding structure are indefinite. 

I. BACKGROUND OF PLAINTIFF PROFECTUS TECHNOLOGY’S PATENT 

The digital picture frame disclosed in the ’308 Patent can be hung on a wall or placed on 

a desktop. Declaration of Dan Callaway at Ex. 1 (U.S. Patent No. 6,975,308) at 3:50-53. It 

includes a flat panel display “similar to those used for laptop computers.” Id. at 4:17-19. The 

picture frame “is a stand alone unit including a processor coupled to the display for managing 

data to be displayed on a screen of the display, the data being stored in a memory...” Id. at 2:39-

42. The processor may be a “conventional microprocessor.” Id. at 7:9-11. 

On the backside of the picture frame are interfaces, coupled to the memory, for 

downloading still images to the memory, e.g. from “VCRs, televisions, computers, a phone line 

(e.g. the Internet), a camera, etc.” Id. at Fig. 2, 3:11-12, 5:44-50. A side panel includes a floppy 

or a CD/DVD disk drive for reading/writing data to and from the memory. Id. at Fig. 2, 6:7-10. 

Separate from the “interface coupled to the memory,” the picture frame has a user 

interface that can include picture quality controls, a “select” button, and a ball or joystick for 

moving a cursor on the screen. Id. at 4:43-51; compare with 5:48-50. This allows a speaker or 

teacher to “bring a floppy disk with the slides or images to be shown” in a lecture, and then 

change the images “by hitting a button on the interface panel”. Id. at 5:65-6:6. 

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The picture frame, in conjunction with the microprocessor, can also “activate a particular 

function when at least one of motion sensing, achieving a particular time or date or achieving a 

particular lighting condition is experienced.” Id. at 6:44-50. This could include “automatically 

activating the display screen” or “changing an image of the display” in accordance with an event. 

Id. at 8:4-6, 10:18-20. 

II. PRIOR LITIGATION 

Beginning in 2011, Profectus asserted the ’308 Patent in prior litigation against 18 

manufacturers and sellers of tablet computer devices, including Apple based on its 

iPad. Profectus Technology LLC v. Huawei Technologies Co. Ltd., et al., No. 6:11-cv-474 (E.D. 

Tex.) (lead case); see also case Nos. 6:12-cv-178, 6:11-cv-674, 6:11-cv-675, 6:11-cv-676, 6:11-

cv-677. The district court in the consolidated cases issued a Markman Order construing a 

number of terms also at issue in this case. Profectus Tech. LLC v. Huawei Techs. Co., No. 6:11-

CV-474, 2014 WL 1575719, at *11 (E.D. Tex. Apr. 17, 2014), aff’d, 823 F.3d 1375 (Fed. Cir. 

2016). The constructions in that case were as follows: 

’308 Patent Claim Term Prior Claim Construction (2014)

Portable Memory Device External storage media 

Stand Alone Independently satisfying each of the 

claimed features

Mountable Having a feature for mounting

Picture Frame a unit used to replace a conventional 

picture frame

Activating the Display Screen Turning on the display screen

Changing an Image 

Displayed/Changing an Image of the 

Display Screen

altering or replacing an image 

displayed 

Adapted to Digitally Display at Least 

One Still Image/Adapted to Digitally 

Display Still Images Thereon

No construction necessary 

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Automatically No construction necessary

Display Screen No construction necessary

Still Image No construction necessary

Based on its construction of the term “mountable,” the district court issued an order 

granting summary judgment in favor of non-infringement because the accused tablet devices did 

not have “a feature for mounting.” Profectus Tech. LLC v. Huawei Techs. Co., No. 6:11-CV474, 2014 WL 11728718, at *1 (E.D. Tex. Sept. 8, 2014), aff’d, 823 F.3d 1375 (Fed. Cir. 

2016). Profectus appealed. Dkt. 449, No. 6:11-cv-00474 (Sept. 29, 2014). The Federal Circuit 

affirmed. Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1383 (Fed. Cir. 2016). 

III. ARGUMENT 

A. Legal Standard for Claim Construction 

The Court is intimately familiar with the general principles of claim construction under 

Phillips v. AWH Corp., and thus, Google focuses its attention in this section on the legal rules for 

when claims should be governed by 35 U.S.C. § 112(6). An element in a claim “may be 

expressed as a means or step for performing a specified function without the recital of structure, 

material, or acts in support thereof.” 35 U.S.C. § 112(6). “Generic terms such as ‘mechanism,’ 

‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may 

be used in a claim in a manner that is tantamount to using the word ‘means’ because they 

typically do not connote sufficiently definite structure and therefore may invoke § 112, para. 6.” 

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (quotation omitted). If 

the specification fails to disclose adequate corresponding structure for a means-plus-function 

term, the term is indefinite. Id. at 1351-52. 

B. ’308 Patent Terms 

Google addresses the following claim terms for construction in the ’308 Patent: 

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1. “Control circuitry” 

Google’s Proposed Construction Profectus Proposed Construction 

Indefinite. 

Means-plus-function term. 

Functions: (1) activating the display in 

accordance with an event and (2) changing an 

image displayed in accordance with the event. 

Corresponding Structure: None 

Plain and ordinary meaning. 

The claim limitations that include the term “control circuitry” are drafted in a purely 

functional way, and should therefore be construed under §112, ¶6. In view of the specification, 

the only structure that could perform the claimed functions is the “microprocessor,” but the 

patent does not disclose an algorithm and therefore fails to disclose sufficient corresponding 

structure. The term “control circuitry” in claims 1, 3, 13, 22, 29, and 31 is therefore indefinite. 

A patentee may express a claim term using functional language. See 35 U.S.C. § 112, ¶6; 

Williamson, 792 F.3d at 1347–49 & n.3 (en banc in relevant portion). Specifically, section 

112 ¶6 provides that a structure may be claimed as a “means . . . for performing a specified 

function,” which is “construed to cover the corresponding structure, material, or acts described in 

the specification.” If the claim language does not include the word “means,” a relatively weak 

rebuttable presumption arises that the functional term is not a means-plus-function term. 

Williamson, 792 F.3d at 1349. This presumption is rebutted if a challenger demonstrates that the 

language of the claim fails to “recite sufficiently definite structure” or discloses a “function 

without reciting sufficient structure for performing that function.” Id. 

The Court construes a “means-plus-function” claim term in two steps. “The court must 

first identify the claimed function. Then, the court must determine what structure, if any, 

disclosed in the specification corresponds to the claimed function.” Williamson, at 1351 

(quoting Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012). If the patent’s 

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specification does not disclose adequate corresponding structure, the claim containing the meansplus-function term is indefinite. Williamson, 792 F.3d at 1351. 

a. “Control Circuitry” Is a Functional Claim Term 

The “control circuitry” claim term is a generic “black box” that does not recite sufficient 

structure for performing the claimed functions. Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 

1374 (Fed. Cir. 2020) (“As used, ‘logic’ is no more than a ‘black box recitation of structure’ that 

is simply a generic substitute for “means.”). Therefore the weak presumption against meansplus-function claiming should be set aside. Id. 

Claim 1 recites “control circuitry coupled to the display screen for automatically 

activating the display screen in accordance with an event...”, while claim 29 recites “control 

circuitry coupled to the display screen for automatically changing an image of the display 

screen in accordance with an event...”, and claim 22 combines both functions. See Declaration 

of Dr. Paul Gratz (“Gratz Decl.”) at ¶ 31. 

In all three claims, the terms are drafted in a functional way, consisting primarily of verb 

phrases. Indeed, the term “control circuitry” itself is another functional phrase, i.e., circuitry for 

controlling something. But “control circuitry” does not convey what structure would be 

sufficient to perform the claimed functions. In the context of a “display screen for displaying the 

at least one still image stored in a memory,” only “circuitry” could perform the functions of 

“automatically activating the display screen” or “automatically changing an image of the display 

screen,” because practically every functional part of such a digital picture frame device can be 

considered “circuitry.” See Gratz Decl. at ¶ 33. The term “control circuitry” adds no structure 

to the claim, and is as equally functional as the term “control module” that Williamson 

previously determined to being purely functional. Williamson, 792 F.3d at 1349; see Gratz Decl. 

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at ¶ 33. Therefore, the “control circuitry” terms overcome the Williamson presumption because 

they recite “function without reciting sufficient structure for performing that function.” Id. 

Nor is there sufficient structure by virtue of the claims reciting a “screen.” The screen 

does not and cannot perform the actual function of “activating” itself or “changing an image” 

displayed on itself. Gratz Decl. at ¶ 35. The question is not whether a claim term recites 

any structure but whether it recites sufficient structure—a claim term is subject to § 112(6) if it 

recites “function without reciting sufficient structure for performing that function.” Williamson, 

792 F.3d at 1348 (emphasis added). The screen displays whatever image is formed by its input 

signal, but the screen is not “control circuitry” for changing or activating that input signal. Gratz 

Decl. at ¶ 35. 

The Federal Circuit’s recent decision in Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 

1367, 1372-75 (Fed. Cir. 2020), is instructive. The Court construed the term “logic to modify 

said received messages to transmit said modified messages to the external communication 

network and to the external storage network” as a means-plus-function limitation. Id. at 1375. 

The Court found that “logic is no more than a black box recitation of structure that is simply a 

generic substitute for ‘means.’” Id. (citing Williamson). So too here, the “control circuitry” is 

simply a black box term that is a generic substitute for “means” to perform the claimed function. 

The Egenera Court found that the patentee failed to “explain how its ‘logic’—even assuming it 

connotes some possible structure in the general sense of software, firmware, or circuitry—

amounts to ‘sufficient structure for performing [the modification] function.’” Id. at 1374 

(emphasis added). So too here, “control circuitry” does not supply sufficient structure for the 

claimed “activating” and “changing an image” functions. Gratz Decl. at ¶ 33. 

b. Although ‘Control Circuitry’ May be Implemented By a 

Microprocessor, The Disclosure of a General Purpose 

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Microprocessor Also Fails To Provide Sufficient Structure to 

Prevent the Term From Being Indefinite. 

In light of the ’308 patent specification, a person of skill in the art would understand that 

to perform the claimed functions of “automatically activating the display screen” or 

“automatically changing an image of the display screen,” the “control circuitry” would need to 

include a processor executing a specific purpose-designed algorithm. Gratz Decl. at ¶ 36. As 

discussed below, the specification confirms that the claimed functions require a microprocessor. 

But even if the “microprocessor” is recited in the claim, it cannot provide sufficient structure for 

a functional claim term.1 Egenera, 972 F.3d at 1374 (“Egenera does not explain how its 

“logic”—even assuming it connotes some possible structure in the general sense of software, 

firmware, or circuitry—amounts to “sufficient structure for performing [the modification] 

function.”); St. Isidore Research, LLC v. Comerica Inc., No. 2:15-CV-1390-JRG-RSP, 2016 WL 

4988246, at *14 (E.D. Tex. Sept. 19, 2016) (“[E]ach processor is defined only by the function 

that it performs. As such, the Defendants have rebutted the presumption that § 112, ¶ 6 does not 

apply to the term ‘processor’ in these claims.”); Syneron Med. Ltd. v. Invasix, Inc., No. 8:16-cv00143-DOC-KES, 2018 WL 4696971, at *14 (C.D. Cal. Sept. 5, 2018) (“the disputed “processor 

. . .” terms are defined only by the function they perform.”). 

1

 Claim 22 separately recites a “microprocessor” in addition to the “control circuitry.” 

But that does not distinguish claim 22 from claims 1 and 29 in this indefiniteness analysis, 

because the term “microprocessor” is itself insufficient structure. Combining two terms that lack 

sufficient structure cannot create sufficient structure. Digital Retail Apps, Inc. v. H-E-B, LP

(Slip Copy), No. 6-19-CV-00167-ADA,2020 WL 376664, , at *6 and n.3 (W.D. Tex. Jan. 23, 

2020) (J. Albright) (explaining that “web API” software lacked sufficient structure, and therefore 

could not be the corresponding structure for a “first communications module,” holding the claim 

indefinite.); Egenera, 972 F.3d at 1374 (“Mere inclusion of a limitation within a structure does 

not automatically render the limitation itself sufficiently structural.”). 

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The patent specification confirms that the claimed functions require a microprocessor. 

For example, Figure 5 shows a block diagram in which “the blocks . . . may be implemented in 

software, hardware, or a combination of both.” ’308 Patent at 6:27-30. 

Figure 5 includes “microprocessor 124” with an arrow pointing to the “display 126,” 

signifying that the microprocessor can control the display. Gratz Decl. at ¶ 39. The 

microprocessor would be a necessary component for performing the “activating” or the 

“changing an image” functions, for several reasons. First, the microprocessor is the only block 

in Figure 5 with an arrow indicating it can control or influence “display 126,” and it would need 

to run an algorithm to effectuate that control. Gratz Decl. at ¶ 39. Second, the claimed function 

of “control circuitry . . . for automatically changing an image” (in claims 22 and 29), under either 

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party’s construction, would require decoding a digital image (e.g., a JPEG) and rendering it to 

the screen. Gratz Decl. at ¶ 36; ’308 Patent at 6:10-13. That function, practically speaking and 

in the context of the ’308 Patent, could only be performed by a microprocessor, because 

decoding a photographic image stored in memory requires thousands to millions of 

multiplications, cosine computations, and rounding in order to determine the correct colors for 

each pixel in the image. Gratz Decl. at ¶ 36. Third, the claimed “control circuitry” functions of 

“activating the display screen” and “automatically changing an image” are performed “in 

accordance with an event, wherein the event includes one of a change in light intensity, and a 

sound detected in proximity of the display.” ’308 Patent at Claims 1, 22 and 29. But a 

microprocessor would be needed in order for the control circuitry to determine if and when the 

triggering event occurred. Gratz Decl. at ¶ 38. For example, the microprocessor (running an 

algorithm) would contain criteria for the particular “change in light intensity necessary” or the 

particular volume or proximity of a sound that would be necessary to activate the display, or to 

automatically change an image. Id.

2

 

As in Egenera, the claimed “light intensity” and “sound detected in proximity” are terms 

of degree that serve as “inputs” to the control circuitry. Egenera, 972 F.3d at 1374. But, “the 

claims and specification provide no structural limitation to the inputs” of the claimed “control 

circuitry.” Instead, the specification repeats verbatim the language of the claims, i.e. “the event 

may include...a change in light intensity and a sound detected in proximity of the display,” while 

2

 In its infringement contentions, Profectus also maps the term “control circuitry” to a 

microprocessor. The contentions state: “The control circuitry of the Google Nest Hub includes, 

but is not limited to, the AMLogic S905D2 System on a Chip, microphones, Google Assistant, 

and an ambient light sensor and accompanying software and/or firmware.” Ex. 5 (infringement 

contentions) at 10. The AMLogic S905D2 system on a Chip includes a microprocessor, which, 

in the Google Nest Hub, executes custom software. Gratz Decl. at ¶ 40. 

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providing no detail about the specific structures that determine when an “event” has occurred. 

’308 Patent at 2:17-20 (disclosing a change in light intensity and a sound in proximity); 2:32-36 

(same); 3:14-16 (same). Figure 5 shows a “light sensor” connected to “logic circuits/control 

circuits 116,” which is only mentioned in one passage of the patent: 

In one embodiment, a logic circuit or chip 116 is employed to 

activate a particular function when at least one of motion sensing, 

achieving a particular time or date or achieving a particular 

lighting condition is experienced. Logic circuit 116 may act 

independently or in conjunction with microprocessor 124. For 

example, motion is detected and display 126 is activated showing 

the last picture in memory, or light intensity has decreased and 

display intensity is thereby reduced. 

’308 Patent at 6:44-53 (emphasis added).3 This passage says nothing about an algorithm for 

performing the claimed functions, or what structure executes the algorithm (the circuit 116 may 

act independently or in conjunction with microprocessor 124). Indeed, it adds almost nothing to 

the bare claim language, and does not even mention the claimed “sound detected in proximity of 

the display.” As was the case in Egenera, Profectus does not explain how its control circuitry, 

“even assuming it connotes some possible structure in the general sense of software, firmware, or 

circuitry—amounts to sufficient structure for performing [the] function.” Egenera, 972 F.3d at 

1374. 

c. The Specification Discloses No Corresponding Structure, 

Because There is No Algorithm For The Microprocessor

“Structure disclosed in the specification qualifies as ‘corresponding structure’ if the 

intrinsic evidence clearly links or associates that structure to the function recited in the claim.” 

3

 Nor is a “light sensor” sufficient structure to perform the claimed functions “activating 

the display screen” and “changing an image,” because a light sensor is a passive device that 

simply outputs a signal commensurate with the intensity of light shining on it. Gratz Decl. at ¶ 

41. 

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Williamson, 792 F.3d at 1352. If a POSITA could not “recognize the structure in the 

specification and associate it with the corresponding function in the claim, a means-plus-function 

clause is indefinite.” Id.

If the “means” in a MPF claim is a “computer” or “microprocessor” programmed with 

instructions (i.e., software) to perform the claim function, the specification must disclose the 

specific algorithm, either in code or in a similarly detailed disclosure. “We require that the 

specification disclose an algorithm for performing the claimed function.” Williamson, 792 F.3d 

at 1352 (citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)). If 

the specification does disclose an algorithm, whether that algorithm provides sufficient structure 

is “judged in light of what one of ordinary skill in the art would understand the disclosure to 

impart.” Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 

2008) (cited with approval in Williamson, 792 F.3d at 1352). If no algorithm is disclosed by the 

specification—only a general purpose computer or generic microprocessor capable of 

performing a multitude of functions—the claim is indefinite. Id. 

As discussed above, the claimed functions for “control circuitry” could only be 

performed by the microprocessor of Figure 5, and then only with a suitable algorithm to perform 

the claimed functions. Gratz Decl. at ¶ 36. The ’308 Patent discloses no such algorithm, 

showing only generic “logic circuits” and results-oriented functional descriptions. Gratz Decl. at 

¶ 39; see ’308 Patent at 6:27-7:2; Fig. 5; Aristocrat Techs., 521 F.3d at 1334 (finding 

insufficient disclosure of algorithm where the specification merely “describes the outcome of 

performing the function.”). Egenera specifically held that “logic” is a black box recitation” 

necessarily lacking sufficient structure. Moreover, Column 6 of the ’308 Patent describes only 

the “inputs, outputs, connections, and operation of the logic component,” and such generic 

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descriptions were deemed insufficient in Egenera. Id. at 1374. The ’308 Patent admits that the 

necessary disclosure of an algorithm is absent, stating “[o]perating system 120 includes all 

protocols and interface information for controlling the functions of components of frame 10.” 

’308 Patent at 7:39-41. Therefore, the ’308 Patent lacks any disclosure of an algorithm adequate 

to transform the generic “microprocessor” of Figure 5 into a definite “control circuitry” means 

that performs the claimed functions for “activating the display” and “changing an image 

displayed.” 

2. “Interface” 

Google’s Proposed Construction Profectus Proposed Construction 

A shared electrical boundary between parts of a 

computer system, through which information is 

conveyed. 

Or (construing the entire claim phrase “interface 

coupled to the memory”): a shared boundary between 

the memory and another part of the system, through 

which information is conveyed. 

Plain and ordinary meaning. 

a. “Interface” Requires Construction Because the Patent Uses the 

Term In Two Different Ways, Only One of Which Is 

Encompassed By the Claims 

The term “interface” should be construed in accordance with the understanding of a 

POSITA at the time of the ’308 Patent’s priority date. It is not enough to rely on the plain 

meaning of “interface,” because the term has multiple meanings. Phillips v. AWH Corp., 415 F. 

3d 1303, 1313 (Fed. Cir. 2005) (“Importantly, 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”); 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, not an obligatory exercise in redundancy.”); 

see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“in case of doubt or 

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ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to 

aid in solving the doubt or in ascertaining the true intent and meaning of the language employed 

in the claims”) (internal cites omitted). The jury should receive a clear definition that avoids 

confusion between similarly-named but otherwise distinct concepts in the patent. Indeed, the 

patent specification discloses at least two separate “interfaces,” not all of which are consistent 

with the claimed interface which is “coupled to the memory for downloading still images to the 

memory.” ’308 Patent at claims 1, 22 & 29. Therefore, claim construction is necessary to 

resolve the correct scope of the term “interface.” 

b. The Patent Discloses a “User Interface” Which Is Not Relevant 

to This Claim Term 

Figure 1, showing front-panel “control/interface 

devices” that are not relevant to the claimed “interface” 

The first instance of an “interface” in the specification is shown in Figure 1, which shows 

the front view of a digital picture frame including “control/interface devices 18.” ’308 Patent at 

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Fig. 1; 3:33-34; 4:43-47. These control/interface devices can include picture controls such as 

contrast, tint, hue, etc., and “may also include a select button or program button for selecting 

pictures or programs of pictures to be run.” Id. at 4:43-47. The control/interface devices shown 

in Figure 1 are intended for the user to interact with the device. Id. at 4:43-51 (e.g. “picture 

quality features,” “button for selecting pictures or program of pictures to be run,” “ball or 

joystick for moving a cursor on the screen of display 12 to select options, select alphanumeric 

characters for labeling files and/or photographs or other interfacing activities”). The 

control/interface devices shown in Figure 1 are not what is contemplated by the term “interface” 

as used in claims 1, 22 and 29, because they are not “coupled to the memory for downloading 

still images to the memory.” See Gratz Decl. at ¶ 42. 

c. The Patent Also Discloses Interfaces For Connecting To 

External Devices, Which Are Relevant to This Claim Term 

The second instance of an “interface” in the specification is shown in Figure 2, which 

shows “interfaces 30,” drawn as three circles and a rectangle located at the bottom-right edge of 

the device. Id.; see also ’308 Patent at 5:48-50. 

Figure 2, showing rear-panel “interfaces 30” 

Interfaces 30 “are provided for interfacing frame 10 to other devices such as VCRs, televisions, 

computers, a phone line (e.g., the Internet), a camera, etc.” ’308 Patent at 5:48-50; see also 8:15-

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17 (dependent claim 4); 9:40-42 (dependent claim 23). Notably, each of these examples of 

“interfaces 30” is a physical medium; VCRs, televisions, computers, and cameras would all be 

connected to the frame using a wire for either an analog video signal, a digital video signal, or a 

digital peripheral medium such as USB or RS-232. See Gratz Decl. at ¶ 43. The frame “may 

include protocols, stored in memory (operating system), for interfacing with these devices in a 

similar manner as is provided by personal digital assistants (PDAs) and the like.” '308 Patent at 

5:50-53; see also 7:38-51. A POSITA would understand that a PDA at the time of the purported 

invention of the ’308 Patent would have a wired serial interface (such as USB or RS-232) with a 

protocol for transferring data to or from the PDA. See Gratz Decl. at ¶ 44. 

d. The Specification Does Not Define “Interface,” So Google 

Offers Extrinsic Evidence 

Notably, every discussion of the claimed “interface” in the patent specification concerns 

what the interface does, not what the interface is.

4

 Jurors in this case will be looking at the 

accused device and the prior art for an “interface” in the context of infringement and invalidity, 

and they will need to understand what an interface is. Therefore, a technical dictionary may 

assist a court in “better understand[ing] the underlying technology and the way in which one of 

skill in the art might use the claim terms.” Phillips, 415 F.3d at 1318 (quoting Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)); see also Ancora Techs., Inc. v. 

4

See, e.g. ’308 Patent at 2:11-12 and 3:11-12 (interface is coupled to the memory for 

downloading still images); 2:21-24, 3:16-20 and 5:48-50 (interface may be adapted to receive 

image data from a digital camera, VCR, television, phone line (e.g. the Internet), computer, or 

portable memory device); 3:55-58 (“The frame may include a plurality of interfaces for coupling 

to devices such as a digital camera or a computer for downloading and storing photographic 

images for display.”); 7:38-41 (“Operating system 120 includes all protocols and interface 

information for controlling the functions of components of frame 10.”); and 7:41-43 (“Operating 

system may further include protocols for interfacing with external devices 130 in a direct 

manner.”). 

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Apple Inc., No. 11-CV-06357, 2012 WL 6738761, *5-7 (N.D. Cal. Dec. 31, 2012), related 

appeal, 744 F.3d 732 (Fed. Cir. 2014) (relying on extrinsic evidence to construe the term 

“BIOS,” which was not defined in the claims or specification). 

A POSITA at the time of the purported invention of the ’308 Patent would have understood 

an “interface” to be “a shared electrical boundary between parts of a computer system, through 

which information is conveyed” (the “IEEE Definition”). This is the first definition listed in the 

1996 IEEE Standard Dictionary of Electrical and Electronics Terms, Sixth Edition (The “IEEE 

Dictionary”). See Ex. 3.5 Indeed, almost every definition of the term “interface” in the IEEE 

Dictionary uses the words “shared boundary,” “common boundary,” “junction,” or “physical 

connection.” Id.; Ex. 4. This definition would help the jury to understand the correct context of 

the term “interface” in the eyes of a POSITA. 

The IEEE Definition is consistent with the claims and specification of the ’308 Patent. The 

claims require that the “interface” is “coupled to the memory for downloading still images to the 

memory.” (claims 1, 22 & 29). The written description describes the “interface” as being 

connected to something physical, such as a digital camera, VCR, television, portable memory 

device, computer, or phone line. ’308 Patent at 2:21-24, 3:16-20 and 5:48-50. And, the 

operating system of the claimed device “may further include protocols for interfacing with 

external devices 130 in a direct manner”, i.e. physically interfacing. Id. at 7:41-43; See Gratz 

Decl. at ¶ 47. All of this is consistent with the concept of a “shared electrical boundary” as 

described in the IEEE Definition. 

5

 The same definition quoted above from the Sixth Edition of the IEEE Dictionary, from 

1996, is also the first listed definition in the Seventh Edition from 2000. See Ex. 4. This 

suggests that the definition of “interface” did not change in the timeframe of the purported 

invention. 

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Other courts have similarly construed the term “interface” (or variants thereof) to include a 

“shared boundary” across which information may be passed or conveyed. See, e.g., Foundry 

Networks v. Lucent Techs., Inc., No. CIV.A. 2-04-CV-40TJW, 2005 WL 6217420, at *5 (E.D. 

Tex. May 24, 2005) (Citing IEEE Dictionary and determining that “[t]he court construes 

“telephone network interface” to mean “a shared boundary between a telephone network and 

another system or device across which information is passed.”); Video Prod., Inc. v. Rose 

Elecs., No. 5:03 CV 2283, 2005 WL 6258388, at *5 (N.D. Ohio Feb. 22, 2005) (Citing IEEE 

dictionary, and determining that “[i]n light of this reasoning, the Court construes “interface” to 

mean “a shared boundary that is a component part of the patented switch.”) 

Accordingly, Google proposes that “interface” be construed as “a shared electrical 

boundary between parts of a computer system, through which information is conveyed.” 

Alternately, the entire claimed phrase “interface coupled to the memory” may be construed as “a 

shared boundary between the memory and another part of the system, through which information 

is conveyed.” 

3. “Activating the display screen” 

Google’s Proposed Construction Profectus Proposed Construction 

Turning on the display screen. Switching the display screen from a screen 

saver or power down mode. 

Google proposes adopting the prior construction of “activating the display screen” to mean 

“turning on the display screen,” from the 2014 Markman order in the Eastern District of Texas 

Profectus v. Huawei case. See above at Section II. 

During prosecution of the ’308 Patent, the Applicant explicitly stated that “activating” the 

display screen meant “powering on.” To overcome a rejection, the Applicant argued that the 

prior art did not disclose a device with functionality for “automatically activating the display 

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screen in accordance with an event” such as a change in light intensity or sound. Ex. 2 at 34 

(Applicant Remarks of 3/14/2005) (italics in original). The Applicant explained that “[w]ith the 

present invention, the addition of sound or light intensity detection permits the triggering of a 

useful event such as a power on sequence or change of displayed picture.” Id. (emphasis 

added). The Applicant further emphasized that “[t]he motion detection in the present invention is 

used to trigger an event such as changing the displayed picture or powering the device on.” Id.

at 35 (emphasis added). 

The specification also supports the prior construction of “activating the display screen.” 

’308 Patent 5:25-30 (“For example, when display 12 is in a power down mode, a person enters a 

room. Motion sensor 24 senses the motion and activates the display 12 to return an image to 

display 12.”) (emphasis added). The specification also states that the motion sensor “includes a 

switch which is activated for turning on a particular function . . . .” Id. at 6:35-36 (emphasis 

added). Thus, the Applicant used “activate” in the sense of turning on the display screen. 

4. “Changing an image displayed/changing an image of the display 

screen” 

Google’s Proposed Construction Profectus Proposed Construction 

Switching the still image on the display screen 

to a different still image. 

Altering or replacing an image displayed. 

The term “changing an image displayed/changing an image of the display screen” means 

“switching the still image on the display screen to a different still image.” This is consistent with 

the claim language, which unequivocally reveals that the screen is meant to switch between still 

images. Claims 22 and 29 both recite in the preamble that the picture frame is “for displaying 

still digital images.” ’308 Patent at 9:17-18 (claim 22); and 10:6-7 (claim 29). And, both claims 

return to the “still image” language in the body of the claim, using the same language. Id. at 

9:23-24 and 10:12-13 (“a display screen for displaying the at least one still image stored in a 

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memory”). Based on the definitional language early in the claim, the later claim language 

“automatically changing an image” refers back to the still images, and means switching between 

those images. 

Google’s construction is also consistent with every embodiment given in the specification. 

For example, the patent discloses that an image on the screen may be “changed” to show 

different images based on the time of day, with an image of a sunrise in the morning, a sunset in 

the evening, and stars at night. ’308 Patent at 5:5-10. And the patent discloses that the picture 

frame could be provided in a meeting room, so that a speaker or teacher could display images for 

a lecture. ’308 Patent at 5:65-6:2. “The images may be changed” by a button, voice activation, 

or remote signal. Id. at 6:2-6. In both of these disclosures, the screen is switching between 

displayed images, as opposed to modifying or altering a displayed image. 

Indeed, during prosecution the applicant distinguished prior art by emphasizing that the 

claims of the ’308 Patent required changing the whole image, as opposed to modifying it. 

Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1353 (Fed. Cir. 2019) 

(intrinsic evidence can provide objective boundaries to the scope of the term, and the Court “may 

look to the prosecution history for guidance without having to first find a clear and unmistakable 

disavowal.”). For example, the examiner cited a passage in a prior art reference (“Jacklin”) that 

read “Display screen 7 allows a user to view any selected digital still photograph, in addition to 

displaying the available operator selection options (or “setup menu”), when same has been 

selected by a user.” See Ex. 2 at 46 (Non-Final Rejection of 12/20/2004, at 3); see also Ex. 6 

(U.S. Patent No. 6,396,472) at 6:8-12. The examiner used the applicant’s claim language to 

characterize this passage, noting that “Jacklin further teaches the control circuitry changes an 

image displayed in accordance with an event.” See Ex. 2 at 46 (Non-Final Rejection of 

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12/20/2004, at 3). The applicant distinguished Jacklin while adopting the examiner’s use of the 

term “changes an image,” stating: “With the present invention, the addition of sound or light 

intensity detection permits the triggering of a useful event such as a power on sequence or 

change of displayed picture.” Ex. 2 at 34 (Applicant Remarks of 3/14/2005). 

Additionally, the Applicant distinguished a claim interpretation whereby “changing an 

image” can be equivalent to “altering” that image. In particular, the Examiner cited a prior art 

picture frame including a “contrast/brightness control wheel” to alter the brightness and contrast 

of the display screen. Ex. 2 at 85-86; see also . To overcome that rejection, the Applicant told 

the PTO that brightness control “is not relevant to the claim language submitted” and “does not 

even remotely set forth the features of the amended claims.” Id. at 84-85 (Applicant Remarks 

of 7/7/2003 at 8-9) (emphasis added). This cuts against Profectus’ proposed construction, which 

backslides on applicant’s statements during prosecution by encompassing “altering” an image in 

the construction. See also Ex. 2 at 35 (Applicant Remarks of 3/14/2005 at 12) (“The motion 

detection in the present invention is used to trigger an event such as changing the displayed 

picture or powering the device on . . . . The present invention provides additional functionality 

over Hsien and all other known prior art by allowing the user to view a wide variety of images, 

with no active intervention on the part of the user.”); Ex. 2 at 86 (Applicant Remarks of 7/7/2003 

at 10) (“The picture frame is reactive to stimuli in its environment and is activated (claim 1) or 

changes the image (claim 31) when subjected to an event. For example, on a given date or given 

time an image may be switched.”) 

IV. CONCLUSION 

Based on the foregoing, Google respectfully requests that the Court adopt Google’s 

proposed constructions. 

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DATED: November 25, 2020 Respectfully submitted, 

 /s/ Daniel C. Callaway 

Daniel C. Callaway (PRO HAC VICE) 

dcallaway@fbm.com

Stephanie Skaff (PRO HAC VICE) 

sskaff@fbm.com

Eugene Y. Mar (Admitted) 

emar@fbm.com 

Winston Liaw (Admitted) 

wliaw@fbm.com

Laura Pedersen (PRO HAC VICE) 

lpedersen@fbm.com

Farella Braun & Martel LLP 

235 Montgomery Street, 17th Floor 

San Francisco, California 94104 

Telephone: (415) 954-4400 

Facimile: (415) 954-4480 

Stephen E. McConnico 

State Bar No.: 13450300 

smcconnico@scottdoug.com

Paige Arnette Amstutz 

State Bar No.: 00796136 

pamstutz@scottdoug.com

Scott, Douglass & McConnico, LLP 

303 Colorado Street, Suite 2400 

Austin, TX 78701 

Telephone: (512) 495-6300 

Facimile: (512) 495-6399 

Counsel for Defendant Google LLC

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CERTIFICATE OF SERVICE 

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on November 25, 2020, all counsel of record who have appeared in this case are being 

served with a copy of the foregoing via the Court’s CM/ECF system. 

/s/ Daniel Callaway 

Daniel Callaway 

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