IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC, d/b/a

BRAZOS LICENSING AND 

DEVELOPMENT

Plaintiff,

v.

MICROSOFT CORPORATION, 

Defendant.

 Civil Action No. 6:20-cv-00455

 Civil Action No. 6:20-cv-00457

 Civil Action No. 6:20-cv-00459

 Civil Action No. 6:20-cv-00463

 

DEFENDANT’S RESPONSIVE MARKMAN BRIEF

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 1 of 25
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TABLE OF CONTENTS

I. U.S. PATENT NOS. 7,750,286 (6:20-cv-459-ADA) and 8,226,241 

(6:20-cv-463-ADA) .................................................................................................................... 1

A. Background of U.S. Patent Nos. 7,750,286 and 8,226,241 .................................................1

1. The 286 Patent .................................................................................................................1

2. The 241 Patent .................................................................................................................3

B. “polarization beam splitter (PBS)” (286 Patent, Claim 15).................................................3

C. “quarter-wave plate” (286 Patent, Claim 15).......................................................................6

D. “spatial light modulator (SLM)” (286 Patent, Claim 15; 241 Patent, Claim 15).................9

II. U.S. PATENT NO. 8,965,978 (6:20-cv-457-ADA)............................................................. 12

A. Background of U.S. Patent No. 8,965,978.........................................................................12

B. “lobby” (Claim 12) ............................................................................................................13

C. “third party lobby” (Claims 1 and 12) ...............................................................................15

D. “gaining” (Claims 1 and 12) ..............................................................................................16

III. U.S. PATENT NO. 9,814,988 (6:20-cv-455-ADA)............................................................. 16

A. Background of U.S. Patent No. 9,814,988.........................................................................16

B. “adaptor unit” (Claim 20) ..................................................................................................18

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 2 of 25
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TABLE OF AUTHORITIES

Page(s)

Cases

AIA Eng’g Ltd. v. Magotteaux Int’l SA,

657 F.3d 1264 (Fed. Cir. 2011).....................................................................................................7

Curtiss-Wright Flow Ctr. Corp., v. Velan, Inc.,

438 F.3d 1374 (Fed. Cir. 2006)...................................................................................................21

GPNE Corp. v. Apple Inc.,

830 F.3d 1365 (Fed. Cir. 2016).............................................................................................15, 20

Howmedica Osteonics Corp. v. Zimmer, Inc.,

822 F.3d 1312 (Fed. Cir. 2016).....................................................................................................6

Intellectual Ventures I LLC v. Motorola Mobility LLC,

870 F.3d 1320 (Fed. Cir. 2017).....................................................................................................5

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)...........................................................................................3, 5, 10

Senmed, Inc. v. Richard-Allan Med. Indus.,

888 F.2d 815 (Fed. Cir. 1990).......................................................................................................8

Teva Pharms. USA, Inc. v. Sandoz, Inc.,

574 U.S. 318 (2015)......................................................................................................................4

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

669 F.3d 1362 (Fed. Cir. 2012).....................................................................................................8

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 3 of 25
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Microsoft submits this brief in response to WSOU’s Opening Claim Construction Brief 

(Dkt. 45, “PBr.”) addressing terms of U.S. Patent Nos. 7,750,286 (the “286 patent”) and

8,226,241 (the “241 patent”), which are asserted against Microsoft’s HoloLens 2, and U.S. 

Patent Nos. 8,965,978 (the “978 patent”) and 9,814,988 (the “988 patent”), which are asserted 

against Microsoft’s Xbox and Xbox Live.

I. U.S. PATENT NOS. 7,750,286 (6:20-cv-459-ADA) and 8,226,241 (6:20-cv-463-ADA)

A. Background of U.S. Patent Nos. 7,750,286 and 8,226,241

The 286 and 241 patents are both directed to image projectors. The patents describe an 

image projector as “a device that integrates a light source, optics, electronics, and a lightmodulating element for the purpose of projecting an image or a sequence of images ... onto a 

wall or screen for large-image viewing.” 286 patent at 1:15-19, 241 patent at 1:17-21. The 

patents contend that such projectors are differentiated in the marketplace based on size, 

resolution, and performance. 286 patent at 1:19-21, 241 patent at 1:21-23.

1. The 286 Patent

The 286 patent suggests that it is desirable to reduce the size of the image projector, such 

that it can be incorporated into, for example, a cell phone. 286 patent at 2:26-29. The overall 

size of a projector, of course, is determined by the size and relative orientation of its components. 

Id. at 3:44-46. One limiting factor for such projectors is the size of the spatial light modulator

(SLM), a specific optical component within the projector. Similar to a transparency on an 

overhead projector, an SLM is a panel that displays an image that can be illuminated to project 

the image on a screen. SLMs are computer controlled, such that the image displayed on the 

SLM can be changed. The length and width of the SLM depends on a number of factors, 

including the number of pixels that the SLM contains (e.g., 640 × 480), as well as its packaging. 

Id. at 3:59-4:5. In the example disclosed in the 286 patent, the SLM has a width of 15 mm, a 

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length of 12 mm, and a thickness of 3 mm. Id. When arranged in a conventional configuration, 

such as in the portion of Fig. 1 shown below, the height of the projector (in the Z axis) is 

determined by the length or width of the SLM (shown as the black bar at 156 in the part of Fig. 1 

reproduced below). Id. at 4:8-11, Fig. 1. Thus, in this configuration, the height of the projector 

is at least 12-15 mm, which the patent states is too large to fit inside a cell phone. Id. at 4:2-8. 

The alleged invention is to change the orientation of the SLM such that its dominant 

dimensions (length and width) are parallel to the plane of the light source. Id. at 4:27-30. By 

laying the SLM on its side, such as in Fig. 2A shown below, the height of the projector can be 

reduced without changing the length and width (and thereby the resolution) of the SLM. Id. at 

4:32-37, Fig. 2A. Here, the height of the projector (in the Z axis) is no longer determined by the 

length and width of the SLM (e.g., 12 mm × 15 mm), but rather, by its thickness (e.g., 3 mm).

However, because the SLM is now parallel to the light source, a specific arrangement of optical 

components is needed to direct the beam from the light source down to the SLM and then back 

up to the output of the projector to form an image on a screen. Id. at 4:38-60. The 286 patent 

thus discloses a specific configuration of a cubic polarization beam splitter (PBS), a mirror, and 

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two quarter-wave plates that, together with the SLM, form a “modulator section.” Id. 

2. The 241 Patent

The 241 patent shares an inventor with the 286 patent (Roland Ryf) and, like the 286 

patent, discloses an SLM-based projector. 241 patent at 1:49-2:14. But instead of illuminating 

the SLM with a conventional light source, the 241 patent proposes using one or more lasers to 

allow the projector to project more vibrant images onto a wall or screen. Id. at 1:23-26. The 241 

patent notes, however, that laser image projection has a problem with “speckle,” a granular 

structure superimposed on the perceived image, which degrades image sharpness. Id. at 1:26-29. 

The 241 patent proposes that speckle can be reduced by using specific types of broadband lasers

made with both an active optical element and a nonlinear optical element inside the laser cavity. 

Id. at 1:36-41. These optical elements are said to allow the laser to generate “a plurality of 

spectral lines corresponding to different spatial modes of the cavity.” Id. at 1:41-44. These 

different spectral lines allegedly “produce independent speckle configurations” which when 

super-imposed on each other, reduce the appearance of speckling on the screen. Id. at 1:44-48.

B. “polarization beam splitter (PBS)” (286 Patent, Claim 15)

Claim Term Microsoft’s Proposed Construction

polarization beam 

splitter (PBS)

optical component with two conjoined prisms, each of which reflects 

light of one polarization and transmits light of an orthogonal polarization

The parties agree that a “polarization beam splitter (PBS)” is an optical component that 

reflects light of one polarization and transmits light of an orthogonal polarization. The only 

dispute is whether the polarization beam splitter is limited to a cube, or can also be a plate.

As an initial matter, WSOU asserts that the term “polarization beam splitter” should be 

given its plain and ordinary meaning because it “is a term of art” readily understood by those of 

ordinary skill. PBr. at 3. But WSOU has it exactly backwards. It is precisely because this term 

is a technical term of art without a readily discernable lay meaning that a construction is 

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necessary. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). The jury needs a 

construction to understand this term and to avoid allowing the parties’ experts to argue claim 

construction to the jury. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 326 (2015). 

And in coming up with that construction, the use of the term in the context of the entire patent 

must be considered. Teva Pharms. USA, Inc., 574 U.S. at 332 (Even with terms of art, courts 

must conduct a legal analysis to determine “whether a skilled artisan would ascribe that same 

meaning to that term in the context of the specific patent claim under review.”) (emphasis in 

original).

Microsoft’s proposed construction properly captures how one of ordinary skill in the art 

would understand this term as used in the patent – as a cube made of two prisms, each of which 

is used to reflect or transmit polarized light, depending on its polarization. Microsoft’s proposed 

construction is drawn from the specification, which consistently describes the PBS as a cube. In 

the prior art projector of Fig. 1, PBS 152 is described as “a cube of about 4×4×4 mm3

” and the 

quarter-wave plate is “typically attached to a side of PBS 152.” 286 patent at 3:56-59. Likewise, 

in the embodiment shown in Fig. 2A, “PBS 252 is a cube similar to PBS 152, [and] its Z 

dimension is about 4mm.” 286 patent at 5:3-4. And in the embodiment shown in Figs 3A and 

3B, PBS 352g is described as being “analogous to” PBS 252 of Fig. 2A. Id. at 5:56-62. Further, 

the specification describes the thickness of the modulator section as being determined, in part, by 

a cubic PBS. Id. at 4:61-63 (“the cumulative thickness of the SLM 256, quarter-wave plates 

254a-b, and mirror 258 and the size of the PBS 252.”) (emphasis added). 

Microsoft’s proposed construction is also consistent with the language of asserted claim 

15, which requires the PBS to either reflect or transmit the light beam based on its polarization. 

For example, the PBS initially reflects the beam to “direct[] an input beam to a mirror.” Id. at 

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9:14-15. After the “first quarter-wave plate imparts on the reflected beam a first polarization,” 

the PBS then transmits the beam through to the spatial light modulator. Id. at 9:17-20. And after 

the “second quarter-wave plate imparts on [the beam] a second polarization,” the PBS reflects it 

to “direct said ... beam to an output port.” Id. at 9:24-27.

Because the intrinsic evidence discloses only a cubic PBS, WSOU resorts to extrinsic 

evidence under the guise of “plain and ordinary meaning” to improperly enlarge the scope of the 

claim to encompass a plate PBS. PBr. at 4. As an initial matter, the Shokooh-Saremi article on 

which WSOU relies is directed to optical communications using wavelengths in the infrared

range, rather than image projectors using visible light and is therefore of little, if any, relevance. 

Dkt. 45-3 at 2, 5. Not only is this extrinsic evidence “less significant than the intrinsic record in 

determining the legally operative meaning of claim language,” it is “unlikely to result in a 

reliable interpretation of patent claim scope unless considered in the context of the intrinsic 

evidence.” Phillips, 415 F.3d at 1317, 1319 (internal quotations and citation omitted). A plate 

PBS is structurally very different from a cubic PBS, and WSOU has made no attempt to show 

how a plate PBS would work in the context of the asserted claim or the specification. As one 

example, WSOU has not shown how the modulator section would work with a quarter-wave 

plate attached to a side of a plate PBS, which would create, among other things, enablement and 

written description issues if such a broad construction were adopted. See, e.g., Intellectual 

Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1325 (Fed. Cir. 2017) (declining to 

construe claim such that it “fails for lack of written description” and instead construing claim “in 

view of the specification.”) (citation omitted).

Finally, WSOU argues that because claim 17 recites that the PBS “comprises a beamsplitting cube,” the PBS of claim 15 must mean something broader. But “claim differentiation is 

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 8 of 25
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a rebuttable presumption that may be overcome by a contrary construction dictated by the written 

description or prosecution history.” Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 

1312, 1323 (Fed. Cir. 2016). As discussed above, the specification only discloses the PBS as a 

cube. It does not disclose a plate PBS nor does it explain how such a plate PBS could be used 

with the alleged invention. Additionally, claim 17 does more than state that the PBS is a cube; it 

sets forth a specific configuration of the mirror and SLM with respect to the cubic PBS. WSOU 

cannot use claim differentiation to broaden the claim beyond the specification’s teachings. Id.

C. “quarter-wave plate” (286 Patent, Claim 15)

Claim Term Microsoft’s Proposed Construction

quarter-wave plate optical component that shifts a polarized light beam passing therethrough 

by one quarter wavelength

The parties appear to agree that a “quarter-wave plate” encompasses an optical 

component that shifts the phase of one polarization component of the light beam passing 

therethrough by one quarter wavelength. The only disputes between the parties are (1) whether 

the quarter-wave plate acts on polarized light, and (2) whether the shift is necessarily one 

quarter-wavelength, or need only be “about” one quarter wavelength. 

With respect to the first point, WSOU resorts to extrinsic evidence to argue that the 

quarter wave plate need not act on polarized light. PBr. at 5. But WSOU’s extrinsic evidence 

shows that using a quarter-wave plate with unpolarized (also known as natural) light has no 

noticeable effect and thus even if natural light passes through the quarter wave plate, the quarter 

wave plate cannot be said to “act” on such light:

The quarter-wave plate is an optical element that introduces a relative phase 

shift of Δφ = π/2 between the constituent orthogonal o- and e-components 

of a wave. It follows once again from Fig. 8.7 that a phase shift of 90° will 

convert linear to elliptical light and vice versa. It should be apparent that 

linear light incident parallel to either principal axis will be unaffected by 

any sort of retardation plate. You can’t have a relative phase difference 

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 9 of 25
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without having two components. With incident natural light, the two 

constituent P-states are incoherent; that is, their relative phase difference 

changes randomly and rapidly. The introduction of an additional constant 

phase shift by any form of retarder will still result in a random phase 

difference and thus have no noticeable effect.

Dkt. 45-5, Hecht at 349 (underlining added, italics in original). “[A] construction that renders 

the claimed invention inoperable should be viewed with extreme skepticism.” AIA Eng’g Ltd. v. 

Magotteaux Int’l SA, 657 F.3d 1264, 1278 (Fed. Cir. 2011) (citation omitted). The lack of any 

effect on natural light by a quarter wave plate is precisely why the 286 patent repeatedly and 

exclusively discloses the use of polarized light. 286 patent at 3:2-5 (“Light source 110 may 

further incorporate a polarizer (not explicitly shown) that serves to control, if necessary, the 

polarization of output beam 132 to enable proper operation of modulator section 150.”)

(emphasis added), id. at 3:14-16 (“PBS 152 is oriented with respect to the polarization of beam 

132 so as to redirect substantially all light of that beam towards SLM 156.”) (emphasis added), 

id. at 3:16-20 (“Quarter-wave plate 154 is a birefringent plate that produces a retardation of 

about one quarter of a wavelength between two orthogonal linear polarization components of an 

optical beam normally passing therethrough.”) (emphasis added), id. at 4:42-45 (“PBS 252 is 

oriented with respect to the polarization of beam 132 so as to redirect substantially all light of 

that beam towards mirror 258.”) (emphasis added), id. at 4:45-50 (“Quarter-wave plate 254a, 

which is similar to quarter-wave plate 154, produces a retardation of about one quarter of a 

wavelength so that the light directed to and reflected from mirror 258 acquires a polarization

that causes PBS 252 to transmit the reflected light, as opposed to redirecting it back toward light 

source 110.”) (emphasis added). Only with polarized light can the two quarter-wave plates 

perform their respective functions, as recited in the specification and asserted claim 15, of (1) 

“impart[ing] on the reflected beam a first polarization that causes the PBS to direct said reflected 

beam to the SLM” and (2) “impart[ing] on said spatially modulated beam a second polarization

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that causes the PBS to direct said spatially modulated beam to an output port to form an output 

beam.” Id. at 1:47-49, 1:52-55, 9:14-27. Only polarized light will predictably reflect or pass 

through the PBS in the manner required for proper operation of the projector. 

With respect to the second point, the specification’s statement that the quarter-wave plate

produces a retardation of about one quarter of a wavelength is insufficient to rewrite the meaning 

of this term of art, because this statement provides neither a clear definition nor a clear intent to 

redefine the term. See Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. 

Cir. 2012) (to act as its own lexicographer, patentee must clearly define a term and clearly 

express intent to redefine the term). One of skill in the art would understand, as the extrinsic 

evidence that WSOU relies on confirms, that a quarter wave plate introduces a “phase shift of 

90°” and not “about 90°.” Dkt. 45-5 at 8. If the patentee wanted to allow for a specific range of 

phase shift, they could have done so through lexicography or explicit recitation of that range in 

the claim. Having failed to do so, the meaning of this term cannot be expanded now, especially 

given this vague definition would encompass structures that would render the purported 

invention inoperable.

The 286 patent’s use of quarter-wave plates is instructive in this regard. As the patent 

explains, a shift of a quarter-wavelength each time the beam passes through the quarter-wave 

plate is required so that the beam that is initially reflected by the PBS can ultimately pass 

through the PBS. In the portion of Fig. 2A shown below, the input light beam entering the left 

side of the PBS has a first polarization that causes the PBS to reflect it upwards towards the 

mirror 258. On its way to the mirror 258, however, the beam passes through quarter-wave plate 

254a and has the phase of one polarization component shifted by one quarter wavelength or 90° 

to produce, e.g., circularly polarized light. Ex. 1 at 5.23. After reflecting off the mirror 258, the 

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beam again passes through quarter-wave plate 254a and has the phase of a polarization 

component shifted by another quarter wavelength or 90°. At this point, the beam has had its 

polarization transformed again to, e.g., linearly polarized light, but with its 

polarization rotated 90° from the initial linear polarization. Id. at 5.24-25. 

Because of this precise polarization transformation, the beam will not be 

reflected by the PBS, but rather, will pass directly through the PBS to the 

SLM 256. See 286 patent at 4:45-51. Thus, it is the shifting of the phase 

of polarized light by one quarter wavelength each time the light passes through the quarter-wave 

plate that allows the PBS to reflect the beam or pass it through as appropriate to enable the beam 

to follow the intended path through the PBS, to the mirror, back through the PBS to the SLM, 

back through the PBS again, and then to the output as shown in the portion of Fig. 2A above. 

The word “about” that WSOU seeks to add to the proposed construction is untethered to 

any practical limitation, and would inject unnecessary ambiguity into the construction, leaving 

the scope of this term undefined. WSOU’s proposal is particularly improper when considering 

the context of the patent, which relates to compact optics, where precision is paramount. In 

contrast, Microsoft’s proposed construction comports with the specification, claims, and the 

understanding of one of ordinary skill in the art, and it should therefore be adopted by the Court.

D. “spatial light modulator (SLM)” (286 Patent, Claim 15; 241 Patent, Claim 

15)

Claim Term Microsoft’s Proposed Construction

spatial light 

modulator (SLM)

optical component with a 2-dimensional arrangement of pixels that 

displays an image 

As with the PBS term discussed above, WSOU ignores the intrinsic evidence and the fact 

that this is a term of art without a readily ascertainable meaning to a jury, and instead relies only 

on extrinsic evidence to argue that Microsoft’s construction is too limiting. Again, this is 

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because the intrinsic evidence (and, in fact, even the extrinsic evidence) supports Microsoft’s 

construction. See Phillips, 415 F.3d at 1317. Indeed, the very problem that the 286 invention 

seeks to solve is a reduction in the overall size of the image projector, which is determined by the 

size of its components and in particular, the SLM. 286 patent at 3:44-46, 3:55-56, 4:8-17. In 

turn, the size of the SLM is determined by the size of each pixel and the total number of pixels in 

the two-dimensional array that makes up the SLM (e.g., 640 × 480 for a VGA quality SLM). Id.

at 3:59-4:5. The crux of the 286 patent is to orient the SLM in a different direction such that its 

lateral dimensions no longer impact the size of the image projector. Id. at 4:27-37.

Both the 286 and 241 patents, as well as U.S. Patent 8,109,638 (the “638 patent”) (which 

lists the same inventors as, and is incorporated by reference into, the 241 patent1

) describe the 

SLM as having a length and width resulting from having a two-dimensional array of pixels. 

286 patent at 3:59-62 (“The size of SLM 156 depends on the pixel size and the total number of 

pixels therein. For example, a typical VGA-quality LCOS SLM that can be used as SLM 156 has 

a two-dimensional array of 640×480 pixels ....”), 241 patent at 4:57-60 (“SLM 156 typically has 

a generally rectangular active area (i.e., the area that contains reconfigurable pixels) suitable for 

displaying rectangular images.”), Ex. 2, 638 patent at 4:29-32 (“SLM 156 typically has a 

generally rectangular active area (i.e., the area that contains reconfigurable pixels) suitable for 

displaying rectangular images.”). Moreover, the SLM’s length and width are. key constraints on 

the size of the projector that the 286 patent seeks to overcome. 286 patent at 4:15-17.

The 286, 241, and 638 patents further disclose that the pixels of the SLM can be 

controlled to be OFF or ON to display an image. 286 patent at 3:31-35 (“Each reflection pattern 

displayed by the ON-state pixels of SLM 156 represents an image to be projected onto screen 

 1 The 241 patent incorporates by reference patent application Ser. No. 12/017,440, which issued as the 638 patent. 

241 patent at 3:8-10.

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190, and the SLM can display a new reflection pattern for each laser pulse. In effect, projection 

lens 160 images the reflection pattern displayed by SLM 156 onto screen 190.”) (emphasis 

added), 241 patent at 4:46-50 (“Each reflection pattern displayed by the ON-state pixels of SLM 

156 represents an image to be projected onto screen 190, and the SLM can display a new 

reflection pattern for each burst of light. In effect, projection lens 160 images the reflection 

pattern displayed by SLM 156 onto screen 190.”) (emphasis added), Ex. 2, 638 patent at 2:14-16 

(“modulating said illuminating light beam with a spatial pattern displayed by a plurality of pixels 

of the SLM to form said image”) (emphasis added), Ex. 2, 638 patent at 4:18-22 (“Each 

reflection pattern displayed by the ON-state pixels of SLM 156 represents an image to be 

projected onto screen 190, and the SLM can display a new reflection pattern for each laser pulse. 

In effect, projection lens 160 images the reflection pattern displayed by SLM 156 onto screen 

190.”) (emphasis added). Thus, the intrinsic evidence fully supports Microsoft’s construction. 

WSOU’s extrinsic evidence does not suggest a different result. Indeed, both the Warde 

article and the Wikipedia page (to the extent it has any evidentiary value) on which WSOU relies 

disclose that SLMs are two-dimensional devices, consistent with Microsoft’s construction. The 

Warde article begins with “Two-dimensional spatial light modulators (SLM’s) ....” Dkt 45-6, 

Warde at 3971 (emphasis added). Warde further explains that its SLM can be controlled by “a 

two-dimensional electrical voltage or current pattern.” Id. Indeed, the charge-transfer-plate 

(CTP) which Warde uses to control its CTPSLM has the CTP pins hexagonally packed in a twodimensional array. Id. at 3971-72. Thus, even without addressing whether the CTPSLM of 

Warde could be functionally incorporated as an SLM into the invention of the 286 and 241 

patents, it is clear that even this CTPSLM is arranged in a two-dimensional array.

The Wikipedia page discloses that an SLM is basically an overhead projector 

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transparency that is controlled by a computer. Dkt 45-7 at 1. Consistent with Microsoft’s 

definition, a transparency is a 2-dimensional image through which light is projected. Examples 

in the Wikipedia page, such as the Electrically-addressed Spatial Light Modulator is said to be 

“commonly available at resolutions up to SXGA (1280 × 1024)” with “an active area of about 2 

cm2

.” Id. This description of the EASLM is again consistent with Microsoft’s construction, 

which requires the SLM to have a 2-dimensional arrangement of pixels that displays an image. 

II. U.S. PATENT NO. 8,965,978 (6:20-cv-457-ADA)

A. Background of U.S. Patent No. 8,965,978

The 978 patent arises in the context of online gaming over the Internet or other networks. 

Some of those online games allow for players to form groups and play together as a team. The 

978 patent is directed to the formation of these groups of players. 978 patent at 1:8-11. A stated 

goal of the patent is to allow users to “easily and quickly communicate with one another” to be 

able to play games with one another, including with users of similar gaming skill levels. Id. at 

1:34-35. When the user requests to play a game, an agent associated with the user determines 

which of the user’s buddies are online and available to play the game. Id. at 4:13-21.

The patent’s so-called “novel architecture” may include a virtual lobby that is “operable 

to form and maintain user groups, where each group may be associated with” an online game. 

Id. at 1:53-57. Lobbies as described in the 978 patent also carry out so-called “matchmaking 

activities.” Id. at 7:54-57. Thus, when a user wants to play a game, its agent coordinates with 

other available users’ agents to forward their identities to a lobby, which matches available users 

into a group. Id. at 5:1-6. Groups formed and managed by lobbies include those containing 

“users who have the same skill level in a particular game or games.” Id. at 7:59-65; see id. at 

7:66-8:17. The lobby then coordinates with a game server to initiate the game. Id. at 5:6-10. 

However, if the lobby cannot form a group that meets the user’s requirements, (e.g.,

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because the users available to the lobby do not meet a particular skill level), it forwards the 

requirements of the request to one or more “third party or remote global lobbies.” Id. at 9:41-46. 

Each global lobby, having “knowledge of many more users and their preferences, etc., that may 

satisfy the request,” attempts to identify users from its larger pool that satisfy the requirements 

and sends their identities to the forwarding lobby for group formation. Id. at 9:46-53.

WSOU asserts independent claims 1 and 12 of the 978 patent. The term “lobby” is found 

only in system claim 12, while the term “third party lobby” is found in both method claim 1 and 

claim 12. Both claims are directed to “forming one or more groups associated with one or more 

online ga[m]ing sessions” that comprise various steps. Id. at 10:5-6, 11:3-4.

B. “lobby” (Claim 12)

Claim Term Microsoft’s Proposed Construction

lobby software and/or hardware that matches users to form groups 

The concept of a “lobby” is fundamental to the 978 patent and the asserted claims. As 

described in the 978 patent specification, the lobby is the component of the system architecture 

discussed in the patent that actually forms and manages groups of game players and matches up 

players into groups. 978 patent at 7:55-57. However, the term “lobby” has no single, common, 

or accepted meaning in the realm of online gaming or in the software context more generally, 

and thus must be construed. Microsoft’s proposed construction is anchored to the claims, closely 

aligns with the 978 patent description, and is consistent with the patentee’s explanation to the 

Patent Examiner. By contrast, WSOU simply asserts that the term “lobby” has a plain and 

ordinary meaning, but what that meaning might be is left wholly undisclosed.

As an initial matter, a “lobby” in common parlance refers to a portion of a building at or 

near the entrance, such as a hall, foyer, or waiting room. That description of a “lobby” makes no 

sense in this context. It is the intrinsic evidence that provides the guidance needed here.

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 16 of 25
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As described in the asserted claims, the lobby must (1) compare profiles of users with 

attributes of a request to determine the users’ gaming skill level and (2) form a gaming group 

containing those users that have substantially the same gaming skill level as that required by the 

request. Id. at 10:11-20, 11:9-18. 

The specification, first, explicitly discloses that the lobby takes the form of either 

hardware or software, i.e., “software or firmware applications” that are stored on a computer 

readable medium that are part of a larger device. Id. at 2:40-47, 8:50-61. Indeed, this is exactly 

what the patentee told the Patent Office to obtain allowance of the 978 patent claims: the lobby 

of independent claim 12 correlated to these same paragraphs in the originally filed specification 

describing the lobby as software, firmware, and/or hardware. Ex. 3, Appellants’ Br. on Appeal 

(Dec. 17, 2010) at 2; Ex. 4, Specification (Mar. 31, 2006) at 4, 16.

The specification is also unambiguous that the lobby must perform the functions of group 

formation and management, and matchmaking: It describes that “[i]n general, lobbies provided 

by the present invention carry out: (a) group formation and management, and (b) matchmaking 

activities associated with sessions.” 978 patent at 7:55-57. This is no mere example, it is a 

general principle. When a patent “describes the features of the ‘present invention’ as a whole, 

this description limits the scope of the invention.” GPNE Corp. v. Apple Inc., 830 F.3d 1365, 

1371 (Fed. Cir. 2016).

Every embodiment of the lobby describes it as performing these same two inter-related 

functions of matching users and forming groups. See, e.g., 978 patent at 7:59-63 (“the lobby 4 

may form and manage groups that contain: (1) those users who are interested in playing a 

particular game or games; ... and (3) those users who have the same skill level in a particular 

game or games”); id. at 8:12-17 (“upon receiving each identity of the invited third party users the 

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lobby 4 determines through its matchmaking functions that each user is qualified to play a game 

or otherwise communicate with the user of device 200. Thereafter, the lobby 4 is operable to 

form a group that consists of all of the identified third party users along with the user of device 

200”). “[W]hen a patent ‘repeatedly and consistently’ characterizes a claim term in a particular 

way, it is proper to construe the claim term in accordance with that characterization.” GPNE 

Corp., 830 F.3d at 1370.

C. “third party lobby” (Claims 1 and 12)

Claim Term Microsoft’s Proposed Construction

third party lobby lobby separate from the local lobby associated with the gaming session 

A “third party lobby” must logically be a type of “lobby,” and it is explicitly described by 

the 978 patent as the separate, backup lobby to the local lobby making the first attempt to match 

online game players into groups. As with the term “lobby,” “third party lobby” has no common, 

accepted meaning, and simply claiming that it should be given its plain and ordinary meaning is 

meaningless. It is only in the context of the 978 patent that the term makes any sense.

The asserted claims themselves make clear that the third party lobby must be separate 

from the lobby that initiates the gaming session, whatever that lobby is called, since that “lobby” 

forwards the requirements of the user’s request to the “third party lobby”:

forward requirements of the request on to a third party lobby to identify the 

third party users that satisfy the request; and receive an identification of 

each third party user that satisfies the request.

978 patent at 11:22-26 (emphasis added); id. at 10:24-28. Because the lobby forwards the 

request to a third party lobby, the forwarding lobby and third party lobby must be separate. 

Moreover, the claims require that the request is forwarded to “a third party lobby,” confirming 

that the third party lobby is separate from the forwarding lobby.

The specification emphasizes the distinction between the recited lobbies. When “the 

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lobby 4 cannot form a group that meets the requirements of a request,” it “may forward the 

requirements of the request on to one or more, third party or remote global lobbies.” Id. at 9:41-

46. In this same passage, the specification interchangeably refers to the lobby 4 as “local 

lobby 4” to distinguish it from the third party lobby, which it also refers to as a remote global 

lobby or global lobby. Id. 

It may occur that the lobby 4 cannot form a group that meets the 

requirements of a request initiated by the user of device 200. When this 

occurs the local lobby 4 (“local” because it is associated with agent 3 and 

client 2) may forward the requirements of the request on to one or more, 

third party or remote global lobbies (not shown in FIG. 1). Each global 

lobby then attempts to identify users (and their profiles) that have attributes 

which satisfy the requirements of the request. Each global lobby has 

knowledge of many more users and their preferences, etc., that may satisfy 

the request than the local lobby 4. An identification of some sort of each 

user is sent to the locally lobby 4 by the respective global lobby. Thereafter, 

the local lobby 4 may form a group.

Id. at 9:41-53. Thus, contrary to WSOU’s argument that the term “local lobby” would be 

confusing to the jury, the specification clearly distinguishes between the term “local lobby” or 

“lobby 4” and the third party or remote global lobby. Microsoft’s construction comports with 

common sense and finds support in the claims and intrinsic evidence, and should be adopted.

D. “gaining” (Claims 1 and 12)

Claim Term WSOU’s Proposed 

Construction

Microsoft’s Proposed 

Construction

gaining gaming gaming

The parties agree that the term “gaining” in claims 1 and 12 of the 978 patent was an

error made by the USPTO and should be understood to mean “gaming.”

III. U.S. PATENT NO. 9,814,988 (6:20-cv-455-ADA)

A. Background of U.S. Patent No. 9,814,988

Game consoles in the early 2000s, when the 988 patent was filed, could be connected to a 

television to allow users to play games, but these consoles were otherwise limited in their 

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functionality. 988 patent at 1:5-14. The 988 patent describes an after-market way to increase a 

console’s functionality: an adaptor for a video game console that allows users to gain access to 

interactive television services. Id. at Abstract, 1:18-21. To provide game consoles the additional 

ability to function as an interactive television receiver, the patent specification describes the 

adaptor as including: (1) a TV tuner for receiving broadcast TV channels (id. at 1:24-26, 1:62-65, 

2:8-11), (2) a modem so the user can connect to a media server to download/stream videos or a 

game server to download games (id. at 1:31-33, 1:65-2:4, 2:11-19), (3) a hard disk for storing 

video data and game history data (id. at 1:29-30, 2:19-22), and (4) a CPU for decoding and 

encoding video data (id. at 2:35-41). 

Because of the 988 patent’s focus on receiving television signals, for security reasons,

that video data, whether received from broadcast TV or media server, must be encrypted. Id. at 

2:29-32. The CPU in the adaptor uses an encryption key (stored in a smart card plugged into the 

adaptor unit) to decrypt the received video data. Id. at 2:32-38. However, because other devices 

can be connected to the link between the adaptor unit and the game console and can intercept the 

video, the 988 patent discloses that the adaptor unit re-encrypts the video data with a second key 

before sending it to the game console. Id. at 2:38-41, 2:66-3:2. The adaptor unit also provides 

the game console with a video player module that includes the encryption key, such that the 

game console can execute the video player module to play the video. Id. at 2:48-56, 2:60-66. 

With respect to game play, since that is the original purpose of the game console, the 988 

patent discloses that the hard disk in the adaptor unit can be used to store game history data. Id.

at 1:29-30. When the user plays a game and saves their current position, the game controller (in 

the game console) sends the game history data to the adaptor unit for storage in the hard disk. Id. 

at 4:55-66. When the user later decides to resume playing the game, the game controller in the 

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console requests the game history data from the hard disk in the adaptor unit and resumes the 

game using the previously stored game history data. Id. at 4:65-5:12. Games downloaded from 

the remote game server can also be stored in the hard disk of the adaptor unit. Id. at 5:21-24.

B. “adaptor unit” (Claim 20)

Claim Term Microsoft’s Proposed Construction

adaptor unit a device, having a video receiver, hard disk, and CPU that encodes video 

data, that provides a game console with access to interactive services

The invention of the 988 patent is an adaptor that provides a game console with access to 

interactive services. The patent uses the terms “adaptor” and “adaptor unit” interchangeably.

“Adaptors” and “adaptor units” as used in the 988 patent have a precise meaning and 

purpose—providing a game console with access to interactive services through a device with 

video receiver, hard disk, and certain CPU components. WSOU’s assertion that “adaptor unit”

has a plain and ordinary meaning requiring no construction is unhelpful to understanding what 

the term means in the context of the patent. In lay terms, an “adaptor” (and thus an adaptor unit) 

normally refers to a device for connecting two apparatuses or parts of an apparatus together. For 

example, the term “adaptor” is commonly used to refer to a variety of different adaptors, such as 

an AC adaptor, a travel plug adaptor, or a computer adaptor such as a USB adaptor. Clearly, that 

is not how the term is used in the 988 patent. Rather, the adaptor of the 988 patent provides 

access to interactive services to a game console that cannot otherwise access such services.

Microsoft’s construction comports with the intrinsic evidence, which describes that the 

adaptor unit of the 988 patent is a device that, when connected to a game console, enables the 

game console to receive broadcast television channels (988 patent at 1:24-26), connect to a 

media server to download video data (id. at 2:11-14), store received video files (id. at 2:19-22), 

and decode and encode video data (id. at 2:35-41). Thus, the adaptor unit is integral to the core 

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goal of the 988 patent, and it seeks to achieve this goal via a video receiver, hard disk, and CPU 

that encodes video data, thus allowing the game console to access interactive services.

The specification consistently describes the adaptor unit as having a video receiver. One 

type of video receiver is a television tuner, which receives broadcast television channels. Id. at 

1:24-26 (“[t]he adaptor includes a television tuner for receiving broadcast television channels”), 

2:8-11 (“the adaptor unit 3 includes a television tuner 31 for receiving video signals from the 

overhead satellite 13 or the broadcast transmitter 11 via the television aerial 15.”). Another type 

of video receiver is a modem, which provides access to remote servers. Id. at 1:31-33 (“The 

adaptor may also include a modem via which the user can gain access to remote servers 

connected to a data network.”), 2:11-14 (“The adaptor unit 3 also includes an ADSL modem 33 

for connecting the adaptor unit 3 to the data network 19 so that the adaptor unit 3 can receive 

video data from the remote media server 17.”). Either type is capable of receiving video data. 

Id. at 2:29-32 (“the video data received by the television tuner 31 and the ADSL modem 33 is 

encoded MPEG video data”). And while the embodiments described in the 988 patent include 

both types of video receivers, at least one is required. Id. at 6:1-4 (“In the above embodiment, 

the adaptor unit included both a television tuner and an ADSL modem. As those skilled in the art 

will appreciate, in an alternative embodiment one of these video receivers may be omitted.”). 

GPNE Corp., 830 F.3d at 1370 (claim terms construed in accordance with repeated and 

consistent characterization in patent specification). 

Once the video data is received by either the tuner or modem, it needs to be decrypted 

and re-encrypted for sending to the game console. The specification discloses that it is the 

adapter unit CPU 47 that performs the decryption and re-encryption. Id. at 2:35-41 (“A central 

processing unit (CPU) 47 runs a decryption module 49 stored in a memory 51 using the 

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decryption key 41 to decrypt the received video data. The adaptor unit CPU 47 then re-encrypts 

the decrypted video data using an encryption module 53 stored in the memory 51 together with 

an encryption key 53 (labelled Key 2) stored on the smart-card 43.”) Therefore, the CPU is an 

integral part of the functionality provided by adaptor unit. 

The specification also states that the adaptor unit has a hard disk for storing video and 

game history data. Id. at 1:29-30; 2:19-22 (“The adaptor unit 3 also includes a hard disk 39 into 

which received video files can be recorded for subsequent play out to the user on the television 

5”), 4:55-58 (“the controller module 95 allows a user to save a current position in a game being 

played by storing the necessary game history data in the hard disc 39 of the adaptor unit 3.”). 

WSOU appears to be making a claim differentiation argument that, because unasserted 

claim 1 recites the adaptor unit as including certain components such as a video data receiver and 

large capacity storage device, the adaptor unit of claim 20 cannot be construed to include these 

components. This argument misapprehends the law. Claim differentiation presumes that an 

independent claim should not be construed as requiring a limitation that already appears in a 

dependent claim such that the independent and dependent claims become coextensive. CurtissWright Flow Ctr. Corp., v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). There is no such 

risk here, and WSOU’s claim differentiation argument is misplaced. Were WSOU’s argument to 

be taken literally, any component recited as part of the adaptor unit in claim 1 could not be part 

of the adaptor unit of claim 20, regardless of what the patent specification discloses or requires. 

All of the components of Microsoft’s proposed construction are described as essential for 

the adaptor unit to provide the game console with access to interactive services, and the Court 

should construe “adaptor unit” as “a device, having a video receiver, hard disk, and CPU that 

encodes video data, that provides a game console with access to interactive services.” 

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 23 of 25
21

DATED: January 29, 2021 By: /s/ Irene Yang

Barry K. Shelton 

Texas State Bar No. 24055029

SHELTON COBURN LLP

311 RR 620 S, Suite 205

Austin, TX 78734

Telephone: (512) 263-2165

Fax: (512) 263-2166

bshelton@sheltoncoburn.com

Of Counsel

Michael J. Bettinger

Irene Yang

SIDLEY AUSTIN LLP

555 California St., Suite 2000

San Francisco, CA 94104

Telephone: (415) 772-1200

Fax: (415) 772-7400

mbettinger@sidley.com 

irene.yang@sidley.com 

Richard A. Cederoth

John W. McBride

SIDLEY AUSTIN LLP

1 South Dearborn St.

Chicago, IL 60603

Telephone: (312) 853-7000

Fax: (312) 853-7036

rcederoth@sidley.com 

jwmcbride@sidley.com 

Attorneys for Defendant Microsoft Corporation

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 24 of 25
CERTIFICATE OF SERVICE

I certify that on January 29, 2021, I electronically filed the foregoing with the Clerk of 

Court using the CM/ECF system, which will send notification of such filing to all counsel of 

record as identified below.

/s/ Irene Yang

Irene Yang

Case 6:20-cv-00457-ADA Document 46 Filed 01/29/21 Page 25 of 25