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 6:20-cv-00455-ADA

CIVIL ACTION 6:20-cv-00457-ADA

CIVIL ACTION 6:20-cv-00459-ADA

CIVIL ACTION 6:20-cv-00463-ADA

WSOU’S OPENING CLAIM CONSTRUCTION BRIEF

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 1 of 21
ii

TABLE OF CONTENTS

Table of Contents............................................................................................................................ ii

Table of Authorities........................................................................................................................ ii

Exhibits............................................................................................................................................v

I. CLAIM CONSTRUCTION LEGAL STANDARDS..........................................................1

II. U.S. PATENT NO. 7,750,286 (Case No. WA:20-cv-00459-ADA)....................................2

A. Disputed Terms for the ’286 Patent.........................................................................2

1. “polarization beam splitter (PBS)” (Claim 15)........................................... 2

2. “quarter-wave plate” (Claim 15)................................................................. 5

3. “spatial light modulator (SLM)” (Claim 15) .............................................. 6

III. U.S. PATENT NO. 8,226,241 (Case No. WA:20-cv-00463-ADA)....................................8

A. Disputed Term for the ’241 Patent...........................................................................8

4. “spatial light modulator” (Claim 15) .......................................................... 8

IV. U.S. PATENT NO. 8,965,978 (Case No. WA:20-cv-00457-ADA)....................................8

A. Agreed Term for the ’978 Patent .............................................................................8

5. “gaining” (Claims 1 and 12) ....................................................................... 8

B. Disputed Terms for the ’978 Patent.......................................................................10

6. “third-party lobby” (Claim 1 and 12)........................................................ 10

7. “lobby” (Claim 12) ................................................................................... 12

V. U.S. PATENT NO. 9,814,988 (Case No. WA:20-cv-00455-ADA)..................................12

A. Disputed Term for the ’988 Patent.........................................................................12

8. “adaptor unit” (Claim 20) ......................................................................... 12

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 2 of 21
iii

TABLE OF AUTHORITIES

Cases

3M Innovative Props. Co. v. Tredegar Corp.,

725 F.3d 1315 (Fed. Cir. 2013).................................................................................................. 2

Castlemorton Wireless, LLC v. Bose Corp.,

6:20-CV-00029-ADA, 2020 WL 6578418 (W.D. Tex. July 22, 2020)................................... 10

Comark Commc'ns, Inc. v. Harris Corp.,

156 F.3d 1182 (Fed. Cir. 1998).................................................................................................. 1

Cont’l Circuits LLC v. Intel Corp.,

915 F.3d 788 (Fed. Cir.)..................................................................................................... 11, 12

Dayco Prods., Inc. v. Total Containment, Inc.,

258 F.3d 1317 (Fed. Cir. 2001).......................................................................................... 11, 12

Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc.,

946 F.3d 1367 (Fed. Cir. 2020).................................................................................................. 6

Home Diagnostics, Inc. v. LifeScan, Inc.,

381 F.3d 1352 (Fed. Cir. 2004)............................................................................................ 1, 13

K-2 Corp. v. Salomon S.A.,

191 F.3d 1356 (Fed. Cir. 1999)................................................................................................ 13

Liebel-Flarsheim Co. v. Medrad, Inc.,

358 F.3d 898 (Fed. Cir. 2004).................................................................................................... 1

Mangosoft, Inc. v. Oracle Corp.,

525 F.3d 1327 (Fed. Cir. 2008).................................................................................................. 2

Old Town Canoe Co. v. Confluence Holdings Corp.,

448 F.3d 1309 (Fed. Cir. 2006).................................................................................................. 2

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005)......................................................................................... passim

Power Mosfet Techs., L.L.C. v. Siemens AG,

378 F.3d 1396 (Fed. Cir. 2004)................................................................................................ 15

Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n,

988 F.2d 1165 (Fed. Cir. 1993)................................................................................................ 13

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

669 F.3d 1362 (Fed. Cir. 2012).................................................................................................. 2

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 3 of 21
iv

Unwired Planet, LLC v. Apple Inc.,

829 F.3d 1353 (Fed. Cir. 2016)................................................................................................ 11

Vitronics Corp. v. Conceptronic, Inc.,

90 F.3d 1576 (Fed. Cir. 1996).................................................................................................... 2

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 4 of 21
v

EXHIBITS

Exhibit Description

A Appl. Ser. No. 11/765,155, Not. Of Allow. of 02/23/10.

B MPEP §§606, 606.01 (8th ed. Rev. 7 July 2008).

C M. Shokooh-Saremi et al., Design of Multilayer Polarizing Beam 

Splitters Using Genetic Algorithm, 233 Optics Communications 57 

(2004) at 57.

D David W. Ball, Field Guide to Spectroscopy (2004) at 28.

E Eugene Hecht, Optics (3rd ed. 1998), at 349 

(Microsot_HoloLens_WSOU000003941).

F Cardinal Warde et al., Charge-Transfer-Plate Spatial Light 

Modulators, 31 Applied Optics 20, at 3971 (Jul. 10, 1992).

G Spatial Light Modulator, Wikipedia, (archived Sept. 13, 2006) 

https://web.archive.org/web/20060913000000/https:/en.wikipedia.org/

wiki/Spatial_light_modulator.

H Appl. Ser. No. 11/393,900, Response of 07/10/09.

I Appl. Ser. No. 11/393,900, Amendment of 01/11/10.

J Appl. Ser. No. 11/393,900, Not. of Allow. of 10/07/14.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 5 of 21
1

Plaintiff WSOU Investments, LLC d/b/a Brazos License and Development (“WSOU”)

submits the following Opening Claim Construction Brief pursuant to the Orders Governing 

Proceedings and Scheduling Orders in the above-listed cases.

I. CLAIM CONSTRUCTION LEGAL STANDARDS

Generally, claim terms are given their plain and ordinary meaning. Phillips v. AWH Corp., 

415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); accord Home Diagnostics, Inc. v. LifeScan, Inc., 

381 F.3d 1352, 1355 (Fed. Cir. 2004) (citations and quotations omitted) (“[N]ormal rules of usage 

create a ‘heavy presumption’ that claim terms carry their accustomed meaning in the relevant 

community at the relevant time.”). The plain and ordinary meaning of a term is the “meaning that 

the term would have to a person of ordinary skill in the art in question at the time of the invention.” 

Philips, 415 F.3d at 1313.

“‘Although the specification may aid the court in interpreting the meaning of disputed claim 

language, particular embodiments and examples appearing in the specification will not generally 

be read into the claims.’” Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 

1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)). 

In particular, “it is improper to read limitations from a preferred embodiment described in the 

specification—even if it is the only embodiment—into the claims absent a clear indication in the 

intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. 

Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

When construing claim terms, courts may also consult extrinsic evidence, including 

dictionaries. See Phillips, 415 F.3d at 1319. But extrinsic evidence is “‘less significant than the 

intrinsic record in determining the legally operative meaning of claim language.’” Id., 415 F.3d at 

1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). Extrinsic 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 6 of 21
2

evidence should only be used to help the court come to the proper understanding of the claims; the 

ultimate construction given to the claims should be grounded in the intrinsic evidence. Vitronics 

Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996); Mangosoft, Inc. v. Oracle Corp., 

525 F.3d 1327, 1329-30 (Fed. Cir. 2008); Old Town Canoe Co. v. Confluence Holdings Corp., 448 

F.3d 1309, 1316 (Fed. Cir. 2006).

The “only two exceptions to [the] general rule” that claim terms are construed according to 

their plain and ordinary meaning are when the patentee (1) acts as his/her own lexicographer or (2) 

disavows the full scope of the claim term either in the specification or during prosecution. Thorner 

v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). To act as his/her own 

lexicographer, the patentee must “clearly set forth a definition of the disputed claim term,” and 

“clearly express an intent to define the term.” Id. To disavow the full scope of a claim term, the 

patentee's statements in the specification or prosecution history must represent “a clear disavowal 

of claim scope.” Id. at 1366. Accordingly, when “an applicant's statements are amenable to multiple 

reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M Innovative Props. 

Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).

II. U.S. PATENT NO. 7,750,286 (CASE NO. WA:20-CV-00459-ADA)

A. Disputed Terms for the ’286 Patent

1. “polarization beam splitter (PBS)” (Claim 15)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning optical component with two conjoined prisms, 

each of which reflects light of one polarization 

and transmits light of an orthogonal 

polarization

The term “polarization beam splitter (PBS)” requires no construction for the following 

reasons.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 7 of 21
3

First, the term “polarization beam splitter (PBS)” is a term of art. As noted, plain and 

ordinary meaning is the “meaning that the term would have to a person of ordinary skill in the art 

in question at the time of the invention.” Philips, 415 F.3d at 1313. The term’s status as a term of 

art is indicative by the specification’s introduction of the term “polarization beam splitter (PBS)” 

without explaining what that term means. For instance, the term “polarization beam splitter” first 

appears in the Title. See ’286 patent at Title (“Compact Image Projector Having a Mirror for 

Reflecting a Beam from a Polarization Beam Splitter Back to the Polarization Beam Splitter”).1

The Application that led to the issuance of the ‘’286 patent was initially drafted with the Title of 

“Compact Image Projector,” and the Examiner via an Examiner’s Amendment appended the phrase 

“Having a Mirror for Reflecting a Beam from a Polarization Beam Splitter Back to the Polarization 

Beam Splitter.” Appl. Ser. No. 11/765,155, Not. Of Allow. of 02/23/10, at 2 (Ex. A). The MPEP 

instructs Examiners that patent titles must be “brief but technically accurate and descriptive,” and 

instructs Examiners to require the substation of a new title that is “clearly indicative of the invention 

to which the claims are directed.” MPEP §§606, 606.01 (8th ed. Rev. 7 July 2008) (Ex. B). The 

Examiner’s appending the term “polarization beam splitter” to the title demonstrates that the term 

is both “technically accurate” and “clearly indicative.” See id. Accordingly, the term “polarization 

beam splitter” undoubtedly has a plain and ordinary meaning. Other portions of the ’286 patent use 

the term “polarization beam splitter” or its acronym “PBS” without providing definitions. See, 

e.g.,’286 patent at 3:8. The absence of any definition in the specification is further indicative that a 

POSITA would understand a plain and ordinary meaning for “polarization beam splitter (PBS).”

The Court need not construe this term.

Second, Microsoft also errs by arbitrarily limiting the term “polarization beam splitter 

1 Emphasis is added unless otherwise noted.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 8 of 21
4

(PBS)” to one specific configuration of a polarization beam splitter, when the broader concept is 

claimed. In particular, Microsoft’s construction attempts to redraft the plain language as “optical 

component with two conjoined prisms, each of which reflects light of one polarization and transmits 

light of an orthogonal polarization.” But Microsoft’s construction fails to acknowledge that a 

POSITA would have understood “polarization beam splitter (PBS)” to have encompassed a 

definition at least two different configurations: 

Plate and cube are the main two configurations of thin film PBSs. In the plate type, 

the layers are deposited on a plane substrate while in the cubic form, the layers are 

deposited on the hypotenuse of two prisms and then these prisms are cemented 

together with an optical adhesive to produce a cube [1].

M. Shokooh-Saremi et al., Design of Multilayer Polarizing Beam Splitters Using Genetic 

Algorithm, Optics Communications 233 (2004) 57, at 57 (Ex. C); see also David W. Ball, Field 

Guide to Spectroscopy (2004) at 28 (“A beamsplitter is an optical component that allows part of an 

electromagnetic beam to pass through and reflects the rest. Beamsplitters can be cemented right 

prisms or partially silvered mirrors.”) (Ex. D). Microsoft’s inclusion of the phrase “with two 

conjoined [which can be cemented] prisms, each of which reflects light of one polarization” would 

only encompass the cube or cubic configuration and would exclude the plate PBS configuration. 

This deviation from the plain and ordinary meaning is improper.

Third, the claim language itself refutes Microsoft’s incorrect definition. For example, 

independent claim 15 recites a “polarization beam splitter (PBS)” and then dependent claim 17, 

which indirectly depends on claim 15, recites that “the PBS comprises a beam-splitting cube.” The 

doctrine of claim differentiation proscribes incorporating into an independent claim a limitation 

(such as the “beam-splitting cube”) that is introduced in a dependent claim. Phillips, 415 F.3d at 

1315 (“The presence of a dependent claim that adds a particular limitation gives rise to a 

presumption that the limitation in question is not present in the independent claim.”) (citation 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 9 of 21
5

omitted). As explained in the prior paragraph, the concept of the “beam-splitting cube” is 

synonymous with “two conjoined prisms” in Microsoft’s proposed constructions. Thus, Microsoft’s 

proposed construction violates the doctrine of claim differentiation.

2. “quarter-wave plate” (Claim 15)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning optical component that shifts a polarized light 

beam passing therethrough by one quarter 

wavelength

The term “quarter-wave plate” requires no construction for the following reasons.

First, the term “quarter-wave plate” is a term of art. As noted, plain and ordinary meaning 

of a term is the “meaning that the term would have to a person of ordinary skill in the art in question 

at the time of the invention.” Philips, 415 F.3d at 1313. As with the previous term, “quarter-wave 

plate” is used throughout the specification without further defining the term. See e.g.,’286 patent at 

43-49. This lack of a definition demonstrates that a POSITA at the time of the invention understood 

the term to have a plain and ordinary meaning.

Second, Microsoft errs by arbitrarily limiting the term “quarter-wave plate” by including 

the phrases “polarization light beam passing therethrough.” A POSITA would have understood a 

“quarter-wave plate” to not be limited to “polarization light beam passing therethrough.” For 

instance, textbooks that existed at the time of the invention described quarter wave plate as 

including “optical element[s] that introduce[] a relative phase shift of Δ φ= π /2 between the 

constituent orthogonal o- and e-components of a wave.” E. Hecht, Optics (3rd ed. 1998), at 349 

(Microsot_HoloLens_WSOU000003941) (Ex. E). A POSITA would thus not have included the 

phrase “polarization light beam passing therethrough” given this broad understanding of the term 

“quarter-wave plate.” 

Third, Microsoft’s proposed construction is also flawed by requiring that the shift in 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 10 of 21
6

wavelength is rigidly “one quarter wavelength” without the ability for minor variations of about 

one quarter wavelength. The specification describes at least one embodiment of a quarter wave plate 

where the shift is “about one quarter of a wavelength.” ’286 patent at 3:16. While quarter wave 

plate is not limited to this particular embodiment in the specification, narrowly defining a “quarterwave plate” to exactly product a shift of one quarter wave (as Microsoft proposes) should be 

rejected for excluding a preferred embodiment. Eko Brands, LLC v. Adrian Rivera Maynez 

Enterprises, Inc., 946 F.3d 1367, 1373 (Fed. Cir. 2020) (“[a] claim construction that ‘excludes the 

preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary 

support.”) (quoting SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1378–79 (Fed. Cir. 2013), 

which quotes Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 

2010)).

3. “spatial light modulator (SLM)” (Claim 15)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning optical component with a 2-dimensional 

arrangement of pixels that displays an image

The term “spatial light modulator (SLM)” requires no construction for the following 

reasons.

First, the term “spatial light modulator (SLM)” is a term of art and should be accorded the 

“meaning that the term would have to a person of ordinary skill in the art in question at the time of 

the invention.” Philips, 415 F.3d at 1313. Just as with the prior two terms, the introduction of the 

term “spatial light modulator (SLM)” in the specification and subsequent references are all made 

without defining the term. This lack of a definition is indicative that the term would have a plain 

and ordinary meaning to a POSITA. For instance, the term “spatial light modulator” first appears 

in the Abstract without any definition of what that term means. See ’286 patent at Abstract (“A 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 11 of 21
7

representative embodiment of the invention provides a compact image projector having a light 

source coupled to a spatial light modulator (SLM).”). “The purpose of the abstract is to enable the 

United States Patent and Trademark Office and the public generally to determine quickly from a 

cursory inspection the nature and gist of the technical disclosure.” 37 CFR §1.72. And an abstract 

should “sufficiently describe the disclosure to assist readers in deciding whether there is a need for 

consulting the full patent text for details.” MPEP §608.01(b) (8th ed. Rev. 7 July 2008) (Ex. F). 

The term is then used in the specification without any explanation of what that term means. See’286 

patent at 1:26-28. As with the two prior terms, the lack of any definition for this term demonstrates 

that POSITA would understand a plain and ordinary meaning for “spatial light modulator (SLM).”

Accordingly, no construction is required by the Court.

Second, Microsoft errs by arbitrarily limiting the term “spatial light modulator (SLM)” to 

one configuration, when the broader term concept is claimed. In particular, Microsoft’s construction 

limits to “optical component with a 2-dimensional arrangement of pixels that displays an image.” 

The specification describes the context of that a SLM merely as “adapted to spatially modulate the 

beam.” ‘’286 patent at 1:50. Moreover, a POSITA at the time of the invention would not apply such 

a narrow understanding of the plain and ordinary meaning. SLMs were described more broadly at 

the time of the invention: 

SLM’s modify the amplitude, phase, polarization, or intensity of a readout light 

beam in response to either the intensity of a second write-light beam or to a twodimensional electrical voltage or current pattern.

Cardinal Warde et al., Charge-Transfer-Plate Spatial Light Modulators, 31 Applied Optics 20, at 

3971 (Jul. 10, 1992) (Ex. F).

A “spatial light modulator” (SLM) is an object that imposes some form of spatiallyvarying Modulation on a beam of light.... Usually, an SLM modulates the Intensity 

of the light beam, however it is also possible to produce devices that modulate the 

phase of the beam or both the intensity and the phase simultaneously.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 12 of 21
8

Spatial Light Modulator, Wikipedia, (archived Sept. 13, 2006) 

https://web.archive.org/web/20060913000000/https:/en.wikipedia.org/wiki/Spatial_light_

modulator (Ex. G). A POSITA would thus not have understood the term “spectral light 

modulator” to be limited to those “with a 2-dimensional arrangement of pixels that displays 

an image” as Microsoft contends.

III. U.S. PATENT NO. 8,226,241 (CASE NO. WA:20-CV-00463-ADA)

A. Disputed Term for the ’241 Patent

4. “spatial light modulator” (Claim 15)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning optical component with a 2-dimensional 

arrangement of pixels that displays an image

For both the ‘241 patent and the previously-discussed ’286 patent, the parties take the same 

position with respect to claim construction (or lack thereof). As with the ’286 patent, WSOU asserts 

that no construction is required for the term in the ’241 patent and that the plain and ordinary 

meaning should apply. Given this position, WSOU incorporates by reference arguments made in 

Section II.A.3., above. WSOU reserves the right to make any patent-specific arguments should 

Microsoft raise them.2

IV. U.S. PATENT NO. 8,965,978 (CASE NO. WA:20-CV-00457-ADA)

A. Agreed Term for the ’978 Patent

5. “gaining” (Claims 1 and 12)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

gaming gaming

The parties agree that the term “gaining” (first recited in issued claim 1 and also recited in 

2 While the inventor of the’241 patent is also one of the two co-inventors of the ’286 patent, the 

two patents are not related in that they do not rely or result from a common application.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 13 of 21
9

issued claim 12) should be construed as “gaming.” The word “gaining” was introduced by a USPTO 

clerical error and should be construed here as “gaming” to correct that error. This error appears to 

have been introduced by the failure of the USPTO’s processes to properly recognize text a scanned 

document in the file history. Two amendments to application claim 12 (which issued as claim 1 in 

the ’978 Patent) reveal that the term as originally submitted recited “gaming”:

Appl. Ser. No. 11/393,900, Response of 07/10/09, at 2-3 (highlighting added) (Ex. H).

Appl. Ser. No. 11/393,900, Resp. of 01/11/10, at 3 (highlighting added) (Ex. I). 

The USPTO made a similar error with respect to application claim 26, which issued as claim 

12 in the ’978 patent. Appl. Ser. No. 11/393,900, Resp. of 01/11/10, at 4. The USPTO eventually 

issued a Notice of Allowability, which included an Examiner’s Amendment intentionally amending

certain claim language in application claims 12 and 26 unrelated to “gaming.” Appl. Ser. No. 

11/393,900, Not. of Allow. of 10/07/14, at 4-5 (Ex. J). But the Examiner’s Amendment 

inadvertently replaced the word “gaming” with “gaining.” Id. The ‘’978 patent issued with the 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 14 of 21
10

“gaining” language in the claims. 

“[D]istrict courts may correct an error in a patent where no certification has been issued if: 

(1) the correction is not subject to reasonable debate to a person of ordinary skill in the art based on 

consideration of the claim language and the specification; and (2) the prosecution history does not 

suggest a different interpretation of the claims.” Castlemorton Wireless, LLC v. Bose Corp., 6:20-

CV-00029-ADA, 2020 WL 6578418, at *2 (W.D. Tex. July 22, 2020). Here, both prongs are met. 

First, the parties both agree that the term “gaining” should mean “gaming,” and, thus, the correction 

is not subject to a reasonable debate. Second, the prosecution history does not suggest a different 

interpretation as noted above.

B. Disputed Terms for the ’978 Patent

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

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning lobby separate from the local lobby associated 

with the gaming session

The term “third party lobby” requires no construction for the following reasons.3

First, both “third party” and “lobby” are terms that have a plain and ordinary meaning in 

the recited context. For instance, Microsoft tacitly concedes that “third party” has a plain and 

ordinary meaning by not identifying the different term—“third party users” in claim 1 and 12—as 

requiring construction. If “third party users” is subject to plain and ordinary meaning and does not 

require construction, the same should be true for the term “third party lobby.”

Second, the surrounding claim language provides context to define, in part, “third party 

3 Claim 1 only recites to “third party lobby,” and never refers to a standalone reference to just 

“lobby” as in claim 12. Accordingly, WSOU has ordered “lobby” after “third party lobby” in this 

Brief pursuant to the OGP. To the extent Microsoft argues that its proposed definition of “lobby” 

should be incorporated into “third party lobby,” WSOU refers to and incorporates by reference 

its arguments made with respect to “lobby” below.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 15 of 21
11

lobby.” Claim 1 recites the step of “comparing profiles of the identified and available third party 

users, with attributes of a request to initiate an online gaming session of a game by a user...” ’978 

patent at 10:11-13. The “request” is then referenced in claim 1 in the step for “forwarding 

requirements of the request on to a third party lobby to identify the third party users that satisfy the 

request.” Id. at 10:24-26. Thus, the claim language—and in particular the relationship between the 

“request” and “third party lobby”—is definitive by itself.

Third, Microsoft errs by seeking to redraft the term “third party lobby” as “lobby separate 

from the local lobby associated with the gaming session.” Microsoft impermissibly seeks to add 

limitations (noted in italic in the previous sentence) neither required by claim terms nor 

unambiguously required by either the specification or the prosecution history. See, e.g., Cont’l 

Circuits LLC v. Intel Corp., 915 F.3d 788, 796–97 (Fed. Cir.), cert. denied, 140 S. Ct. 648 (2019); 

Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327 (Fed. Cir. 2001); see also

Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358, (Fed. Cir. 2016) (noting that because the 

disputed claim term did not specify how the input was transmitted, the term was broad enough to 

cover a voice input transmitted over a voice or data channel, and it thus was error to construe “voice 

input” to be limited to a voice input transmitted over a voice channel).

Fourth, Microsoft’s erroneous construction also unnecessarily injects ambiguity into a 

straightforward term that should simply be afforded its plain and ordinary meaning. The phrase 

“local lobby” in Microsoft’s proposed construction is not recited in any of the claims. Adding the 

term “local lobby” will thus needlessly confuse the jury, especially when Microsoft’s proposed 

construction requires that the “third party lobby” be “separate from” the “local lobby.” As claim 1 

recites, a “third party lobby” is merely a lobby to “to identify the third party users that satisfy the 

request.” There is no need to interject the notion of “local lobby” and “separate” when those terms 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 16 of 21
12

are not claimed.

7. “lobby” (Claim 12)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning software and/or hardware that matches users to 

form groups

The term “lobby” requires no construction for the following reasons.

First, as noted above with respect to the previous term, “lobby” has a plain and ordinary 

meaning in the recited context. There is no need for the Court to construe this easily understood 

term.

Second, the surrounding claim language provides context to define, in part, “lobby.” Claim 

12 first recites “a memory storing instructions to implement a lobby, the lobby operable to receive 

one or more identifies of one or more third party users.” ’978 at 11:5-7. Thus, the surrounding claim 

language provides context to the plain and ordinary meaning of this term. 

Third, Microsoft errs by seeking to redraft the term “lobby” as “software and/or hardware 

that matches users to form groups.” The claim language, however, does not reference “software,” 

“hardware,” or “matches.” The entirety of Microsoft’s proposed construction impermissibly seeks 

to add these limitations neither required by claim term “lobby” nor unambiguously required by 

either the specification or the prosecution history. See, e.g., Cont’l Circuits, 915 F.3d 788 at 796–

97; Dayco, 258 F.3d at 1327.

V. U.S. PATENT NO. 9,814,988 (CASE NO. WA:20-CV-00455-ADA)

A. Disputed Term for the ’988 Patent

8. “adaptor unit” (Claim 20)

WSOU’s Proposed Construction Microsoft’s Proposed Construction

Plain and ordinary meaning. a device, having a video receiver, hard disk, 

and CPU that encodes video data, that provides 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 17 of 21
13

a game console with access to interactive 

services

The “adaptor unit” term requires no construction. Consistent with the “heavy presumption” 

for plain and ordinary meaning, see Home Diagnostics, 381 F.3d at 1355, the Court should give 

effect to the terms chosen by the patentee. Microsoft’s proposed construction for “adaptor unit” 

should be rejected as deviating from the term’s plain and ordinary meaning, conflicting with 

intrinsic evidence, and erroneously rewriting the claims. See, e.g., K-2 Corp. v. Salomon S.A., 191 

F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims; instead, we give effect to the terms 

chosen by the patentee.”); Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 

(Fed. Cir. 1993) (“[C]ourts can neither broaden nor narrow claims to give the patentee something 

different than what he has set forth.”) (internal quotes omitted). 

First, Microsoft errs in attempting to rewrite “unit” as “device” in this context. Nothing in 

either the ’988 patent itself or its prosecution history compels the erroneous rewrite Microsoft 

proposes. While the term “adaptor unit” appears throughout the ’988 patent in various contexts, the 

word “device” is not applied to describing the “adaptor unit” itself. For instance, “device” is recited 

with respect to “other devices (such as a personal computer)” or “other computer devices.” ’988 

patent at 5:42-43; 6:33-35. The word “device” also appears in the claims with respect to a “large 

capacity storage device.” The word “device” is not used in the claims or specification to describe 

the “adaptor unit.” There is no reason to substitute the word selected by the patentee—“unit.”

Second, WSOU anticipates that Microsoft will allege the patentee acted as his own 

lexicographer by describing, in part, an exemplary embodiment in the specification as follows: 

As shown, 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....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. In this embodiment, the video data received by the 30 television tuner 

31 and the ADSL modem 33 is encoded MPEG video data that is encrypted using 

the 3DES encryption technique....A central processing unit (CPU) 47 runs a 

decryption module 49 stored in a memory 51 using the 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 40 in the memory 51 together with 

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 18 of 21
14

an encryption key 53 (labelled Key 2) stored on the smart-card 43.

’988 patent at 2:8-41. This description, however, expressly pertains to “an exemplary embodiment.” 

’988 patent at 1:37. It is not unambiguously offered as explicit lexicography that necessarily 

pertains universally to all adaptor units in all disclosed embodiments. 

Moreover, the claim language of both asserted and unasserted claims does not support 

Microsoft’s proposed construction. In particular, asserted claim 20 does not expressly recite the 

“adaptor unit” having any additional structural limitations that Microsoft contends (e.g., “video 

receiver, hard disk, and CPU”). Asserted claim 20 is reproduced below with the term “adaptor unit” 

highlighted:

20. A games console for use with an adaptor unit, the games console comprising: 

a console housing;

a game interface within said console housing configured to receive a game 

product;

a display interface within said console housing configured to interface said 

games console to a display;

a user interface within said console housing for receiving user input;

a game controller within said console housing configured to receive game 

data from said game interface, to receive said user input from said 

user interface, and to generate therefrom game video data for output 

to said display interface, wherein the game controller is responsive 

to the user input from the user interface and configured to transmit 

game history data to the adaptor unit;

an adaptor interface within said console housing configured to couple the 

games console with said adaptor unit;

a memory within the console housing configured to store software 

modules; and

a console processor within the console housing configured to execute the 

software modules stored in the memory;

wherein the games console is configured to receive a video player software 

module from the adaptor unit, store the video player software 

module in the memory, use the console processor to execute the 

video player software module, receive encoded video data from the 

adaptor unit, and use the video player software module to generate 

decoded video data from the received encoded video data for output 

to the display via the display interface;

wherein, in response to user input including a first user activation to request 

that a current position in a first game be saved, the game controller

is configured to transmit a first request to the adaptor unit to save 

the current position in the first game and corresponding game 

history data in the adaptor unit;

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 19 of 21
15

wherein, in response to user input including a second user activation to 

request to resume play of the first game or a second game from a 

saved position, the game controller is configured to transmit a 

second request to the adaptor unit for retrieval of the saved position 

and corresponding saved game history data for the corresponding 

game from the adaptor unit and to resume play of the corresponding 

game from the saved position using the saved game history data.

’988 patent at 10:25-11:5 (highlighting added). 

In contrast, claim 1 (which is not presently asserted) does includes express claim limitations 

on what the “adaptor unit” comprises, including a “video data receiver” and a “large capacity 

storage device” (which is not limited to but would encompass a hard disk):

wherein said adaptor unit comprises: 

an adaptor housing;

a memory within the adaptor housing configured to store a video player 

software module;

a video data receiver within said adaptor housing configured to receive 

encoded video data from a remote video provider;

a games console interface within said adaptor housing configured to 

interface said adaptor unit to said adaptor interface of said games 

console;

a communications controller within said adaptor housing configured to 

control communications between the adaptor unit and said games 

console via said games console interface and said adaptor interface; 

and

a large capacity storage device configured to store at least one of the 

encoded video data, game video data, and game data;

’988 patent at 7:45-62 (highlighting added).

Given “adaptor unit” is recited in both claim 1 and 20, Microsoft’s proposed construction 

of “adaptor unit” is nonsensical as it would render “video data receiver” and “large capacity storage 

device” claim language of unasserted claim 1 superfluous. Power Mosfet Techs., L.L.C. v. Siemens 

AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“interpretations that render some portion of the claim 

language superfluous are disfavored.”). In other words, if as Microsoft contends, an “adaptor unit” 

always requires a “video receiver” and a “hard disk” there would have be no need for the patentee 

to expressly add the equivalent of those terms in unasserted claim 1.

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 20 of 21
16

Dated: January 8, 2021 Respectfully submitted,

By: /s/ Ryan Loveless

James L. Etheridge

Texas Bar No. 24059147

Ryan S. Loveless

Texas Bar No. 24036997

Brett A. Mangrum

Texas Bar No. 24065671

Travis L. Richins

Texas Bar No. 24061296

Jeffrey Huang

Brian M. Koide

Etheridge Law Group, PLLC

2600 E. Southlake Blvd., Suite 120 / 324

Southlake, TX 76092

Tel.: (817) 470-7249

Fax: (817) 887-5950

Jim@EtheridgeLaw.com

Ryan@EtheridgeLaw.com

Brett@EtheridgeLaw.com

Travis@EtheridgeLaw.com

Jhuang@EtheridgeLaw.com

Brian@EtheridgeLaw.com

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

Counsel for Plaintiff WSOU Investments, LLC

CERTIFICATE OF SERVICE

A true and correct copy of the foregoing instrument was served or delivered electronically 

via U.S. District Court [LIVE]- Document Filing System, to all counsel of record, on this the 8th 

day of January, 2021.

/s/ James L. Etheridge

James L. Etheridge

Case 6:20-cv-00455-ADA Document 45 Filed 01/08/21 Page 21 of 21