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. 

GOOGLE LLC, 

Defendant. 

___________________________________

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§ 

§ 

§ 

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§ 

Civil Case No. 6:20-cv-573-ADA 

Civil Case No. 6:20-cv-575-ADA 

Civil Case No. 6:20-cv-577-ADA 

Civil Case No. 6:20-cv-585-ADA 

JURY TRIAL DEMANDED 

GOOGLE’S RESPONSIVE CLAIM CONSTRUCTION BRIEF

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 1 of 35
TABLE OF CONTENTS

Page

-iI. U.S. PATENT NO. 7,620,967 (CASE NO. 6:20-CV-573-ADA) ..................................... 1

A. broadcast/broadcasting” (claims 1, 7) .................................................................... 1

II. U.S. PATENT NO. 8,559,928 (CASE NO. 6:20-CV-575-ADA) ..................................... 4

A. “contact information” (claims 1, 15, 23) ............................................................... 4

B. “tree structure” (claims 1, 15, 23) .......................................................................... 5

III. U.S. PATENT NO. 8,737,961 (CASE NO. 6:20-CV-585-ADA) ..................................... 9

A. “stationary state” (claims 1 and 11) ....................................................................... 9

B. “incrementing [of] a count[er] for a stationary state” (claims 1 and 11) ............. 13

C. “determin[e/ing] a primary set of stationary states” (claims 1 and 11) ............... 14

IV. U.S. PATENT NO. 8,751,585 (CASE NO. 6:20-CV-00577-ADA) ............................... 18

A. “moving the selected electronic message from the inbox to the archive 

location after detection of the action defined in the archiving rule,” “to 

move the selected electronic message from the inbox to the archive 

location after detection of the action defined in the archiving rule,” and 

“moving the first electronic message from the inbox of the electronic mail 

client associated with the user to the first storage location associated with 

the first archiving rule after the first action specified in the first archiving 

rule is detected” (claims 1, 9, 17) ........................................................................ 18

B. “a list of actions” and “a plurality of actions” (claims 1, 9, 17) .......................... 20

C. “client management processor configured to enable the user to select an 

electronic message from the inbox” (claim 9) ..................................................... 22

D. “a detection processor configured to detect the action defined in the 

archiving rule assigned to the selected electronic message was carried out”

(claim 9) ............................................................................................................... 22

E. “a collaborative application management processor configured to manage 

collaborative applications” (claim 9) ................................................................... 22

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 2 of 35
-iiTABLE OF AUTHORITIES 

Page 

CASES

Atlas IP, LLC v. Medtronic, Inc., 

809 F.3d 599 (Fed. Cir. 2015)..................................................................................................21 

Cypress Lake Software, Inc. v. Samsung Elecs. Am. Inc., 

382 F. Supp.3d 586 (E.D. Tex. 2019) ......................................................................................25 

Dyfan, LLC v. Target Corp., 

6:19-cv-179-ADA, Dkt. 57 (W.D. Tex. 2020) ........................................................................23 

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

972 F.3d 1367 (Fed. Cir. 2020)................................................................................................24 

Infinity Comput. Prods. v. Oki Data Ams., Inc., 

Case No. 20-1189, Dkt. 46 (Fed. Cir. Feb. 10, 2021) ........................................................11, 15 

Interval Licensing LLC v. AOL, Inc., 

766 F.3d 1364 (Fed. Cir. 2014)................................................................................................11 

Jack Guttman, Inc. v. Kopykake Enters., Inc., 

302 F.3d 1352 (Fed. Cir. 2002)..................................................................................................8 

Joao Control & Monitoring Sys., LLC v. Protect Am., Inc., 

2015 WL 4937464, at *9 (W.D. Tex. 2015) ............................................................................23 

KLA-Tencor Corp. v. Xitronix Corp., 

Case No. 08-723, 2011 WL 318123 (W.D. Tex. Jan. 31, 2011) .............................................12 

Media Rights Techs., Inc. v. Capital One Fin. Corp., 

800 F.3d 1366 (Fed. Cir. 2015)................................................................................................24 

Merck & Co. v. Teva Pharms. USA, Inc., 

395 F.3d 1364 (Fed. Cir. 2005)..........................................................................................14, 16 

MIT v. Abacus Software, 

462 F.3d 1344 (Fed. Cir. 2006)................................................................................................25 

Nautilus, Inc. v. Biosig Instruments, Inc., 

572 U.S. 898 (2014) .................................................................................................................16 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 3 of 35
-iiiNoah Sys., Inc. v. Intuit Inc., 

675 F.3d 1302 (Fed. Cir. 2012)................................................................................................25 

O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 

521 F.3d 1351 (Fed. Cir. 2008)..........................................................................................1, 4, 5

Omega Patents, LLC v. CalAmp Corp., 

920 F.3d 1337 (Fed. Cir. 2019)..................................................................................................5 

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

378 F.3d 1396 (Fed. Cir. 2004)................................................................................................16 

Qcue, Inc. v. Digonex Techs., Inc., 

Case No. 12-484, 2013 WL 4784120 (W.D. Tex. Sept. 5, 2013), aff’d, 575 F. 

App’x 895 (Fed. Cir. 2014) ............................................................................................. passim

Rain Computing, Inc. v. Samsung Elecs. Co., 

2020 WL 708125 (D. Mass. Feb. 12, 2020) ............................................................................24 

Rapanos v. United States, 

547 U.S. 715 (2006) (Opinion of Scalia, J.) ......................................................................15, 17 

Rheox, Inc. v. Entact, Inc., 

276 F.3d 1319 (Fed. Cir. 2002)..................................................................................................9 

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

2016 WL 4988246 (E.D. Tex. 2016) .......................................................................................23 

Versata Software, Inc. v Zoho Corp., 

213 F. Supp. 3d 829 (W.D. Tex. 2016) ....................................................................................12 

Wang Labs., Inc. v. Am. Online, Inc., 

197 F.3d 1377 (Fed. Cir. 1999)................................................................................................13 

Welker Bearing Co. v. PHD, Inc., 

550 F.3d 1090 (Fed. Cir. 2008)................................................................................................24 

Williamson v. Citrix Online, LLC, 

792 F.3d 1339 (Fed. Cir. 2015)....................................................................................22, 23, 24 

OTHER AUTHORITIES

The IEEE Standard Dictionary of Electrical and Electronics Terms (6th Ed. 1996) .......................7 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 4 of 35
-iv1997 Microsoft Press Computer Dictionary (3d Ed.) ......................................................................7 

Dictionary of Networking (2000) ....................................................................................................2 

The Illustrated Dictionary of Electronics (Eighth Ed. 2001) ...........................................................2 

Newton’s Telecom Dictionary (16th Ed. 2000) ............................................................................2, 3 

Newton’s Telecom Dictionary (20th Ed. 2000) ................................................................................7 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 5 of 35
 -vTABLE OF EXHIBITS 

Exhibit No. Description 

Ex. 1 U.S. Patent No. 7,620,967 

Ex. 2 Broadcast, Narrowcasting, and Unicast, Newton’s Telecom 

Dictionary (16th Ed. 2000)

Ex. 3 Broadcast, The Illustrated Dictionary of Electronics (Eighth Ed. 

2001)

Ex. 4 Broadcast and Unicast, Dictionary of Networking (2000) 

Ex. 5 Broadcast and Narrowcast, PCMagazine.com (last visited Jan. 13, 

2021) 

Ex. 6 Unicast, Techterms.com (last visited Jan. 13, 2021) 

Ex. 7 U.S. Patent No. 8,559,928 

Ex. 8 Tree and Tree Structure, Computer Dictionary (3rd Ed. 1997) 

Ex. 9 Tree Structure, Appeal Brief with Appx A from ’928 file history 

(May 21, 2009 ) 

Ex. 10 Tree Structure, Applicant Arguments/Remarks Made in an 

Amendment from ’928 file history (Feb. 13, 2013) 

Ex. 11 Tree and Tree Structure, The IEEE Standard Dictionary of Electrical 

and Electronics Terms (6th Ed. 1996) 

Ex. 12 Tree, Newton’s Telecom Dictionary (20th Ed. 2000) 

Ex. 13 U.S. Patent No. 8,737,961 

Ex. 14 Request Under After Final Consideration Pilot Program of November 

12, 2013 for the ’961 patent 

Ex. 15 Notice of Allowance of December 16, 2013 for the ’961 patent 

Ex. 16 U.S. Patent No. 8,751,585 

 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 6 of 35
 -viTABLE OF ABBREVIATIONS 

Abbreviation Description 

WSOU Plaintiff WSOU Investments, LLC d/b/a Brazos License and 

Development 

Google Defendant Google LLC 

’967 patent U.S. Patent No. 7,620,967 

’928 patent U.S. Patent No. 8,559,928 

’961 patent U.S. Patent No. 8,737,961 

’585 patent U.S. Patent No. 8,751,585 

Group 3 Patents Collectively, U.S. Patent Nos. 7,620,967; 8,559,928; 8,737,961; and 

8,751,585 

POSITA Person Of Ordinary Skill In The Art 

* Emphasis added unless indicated otherwise. 

** For the Court’s convenience, Google cites to WSOU’s opening brief by referring to the 

brief filed in Case No. 6:20-cv-573-ADA (which is the same for all of the above-captioned 

cases) and to the pagination generated by CM/ECF (at the top of the page) rather than the 

pagination at the bottom of the page.

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 7 of 35
 1 

I. U.S. PATENT NO. 7,620,967 (CASE NO. 6:20-CV-573-ADA) 

The ’967 patent relates to methods of broadcasting information to all users in a network 

by first broadcasting descriptors of the information, allowing each receiver to qualify the 

potential interest in the respective information, and then broadcasting the information during offpeak times. (Ex. 1 at Abstract.) 

A. “broadcast/broadcasting” (claims 1, 7) 

Google’s Proposed Construction WSOU’s Proposed Construction 

simultaneously transmit/transmitting to all 

receivers in a network 

plain and ordinary meaning 

Google’s proposed construction of “broadcast/broadcasting” reflects the term’s 

established meaning as shown by how the inventors themselves used the term throughout the 

’967 patent and by contemporaneous dictionaries. WSOU attacks Google’s construction without 

stating what WSOU contends the term means. The Federal Circuit instructs that when a term’s 

ordinary meaning is disputed, “claim construction requires the court to determine what claim 

scope is appropriate in the context of the patents-in-suit.” O2 Micro Int’l Ltd. v. Beyond 

Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008). Google’s construction is 

appropriate and required, for several reasons. 

First, the intrinsic evidence confirms that “broadcasting” is the simultaneous transmission 

to all receivers in a network. The specification consistently uses the term “broadcast” as sending 

to all receivers. (See, e.g., Ex. 1 at 9:6-9 (“Step 14: The transmissions are broadcast to all 

receivers. The network of satellites 5 broadcasts throughout the coverage area each of the 

transmissions produced by the production units.”), 7:29-35 (“The system represented in FIG. 1 

comprises a hardware infrastructure consisting of a gateway 1, i.e. a system comprising a 

broadcast server 2, a transmission system 3 and an antenna 4. The infrastructure further includes 

a satellite or a constellation of satellites 5 adapted to distribute signals received from the sending 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 8 of 35
 2 

station to various receivers 7 in a given region or over the whole planet.”), 2:24-26 (“Expressed 

differently, the method according to the invention consists of sending all information items likely 

to be of interest to all users to all the receivers of the network.”), 11:8-22 (references to “each 

receiver”).) 

Second, contemporaneous dictionary definitions of “broadcast” further support Google’s 

construction: 

● Newton’s Telecom Dictionary, 16th Ed.: “to send information to two or more 

receiving devices simultaneously – over a data communications network, voicemail, 

electronic mail system, local TV/radio station or satellite system.”’ (Ex. 2 at 4.) 

● The Illustrated Dictionary of Electronics, Eighth Ed.: “transmission or dissemination 

of signals to a large, unspecified number of receiving stations” (Ex. 3 at 4.) 

● Dictionary of Networking: “to send a message to all users currently logged in to the 

network” (Ex. 4 at 6.) 

● PC Magazine: “To transmit to every receiver within a geographical area” (Ex. 5 at 

1.) 

The meaning of broadcast is further understood by describing what it is not, and 

dictionary definitions of other types of transmissions are informative. For example, a one-to-one 

data transmission is typically referred to as a “unicast.” Contemporaneous dictionaries define a 

unicast as: 

● Newton’s Telecom Dictionary, 16th Ed.: “The “communication from one device to 

another device over a network. In other words, a point-to-point communication” (Ex. 

2 at 6.) 

● Techterms.com: “A real-time data transmission from a single sender to one 

recipient.” (Ex. 6 at 1.) 

Similarly, contemporaneous dictionaries define a “narrowcast” as a transmission to only a 

subset of the receivers in an area: 

● PC Magazine: “To transmit to selected individuals” (Ex. 5 at 4.) 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 9 of 35
 3 

● Newton’s Telecom Dictionary, 16th Ed.: “First there was broadcasting. One signal 

went to many people. Radio and TV are the classic concepts of broadcasting. One 

signal – the same signal – to many people. Then came the idea of narrowcasting. 

One signal to a select number of people – maybe only those people who subscribed to 

the service and had the equipment to receive it.” (Ex. 2 at 5.) 

These terms, and other terminology used to refer to transmissions, have different meanings than 

“broadcast” and the construction of “broadcast” should not be so expansive as to cover these 

different approaches. 

WSOU proposes that “broadcast” should be afforded its plain and ordinary meaning, but 

fails to explain what that meaning is. WSOU’s attacks on Google’s proposed construction are 

meritless. First, WSOU argues that Google’s proposed construction improperly seeks to limit 

broadcasting to “an information item,” which it contends excludes the “descriptor” broadcast in 

the claims. (Dkt. 33 at 8.) Google did not intend to exclude the descriptor from its construction, 

and to remove any confusion as to the meaning of “an information item,” Google hereby revises 

its proposed construction of “broadcast/broadcasting” from “simultaneously transmitting an 

information item to all receivers in a network” to “simultaneously transmit/transmitting to all 

receivers in a network.” 

Second, WSOU argues that Google’s proposed construction is “confusing and unclear for 

requiring ‘simultaneously’ transmitting because “transmissions in a network are not 

instantaneous.” (Dkt. 33 at 8.) WSOU’s argument is unsupported by the ’967 patent and 

divorced from Google’s proposal. A simultaneous transmission does not require simultaneous 

receipt, or instantaneous completion of the transfer of data. Rather, Google’s construction 

reflects that the data being broadcast is sent to all receivers at the same time. 

WSOU’s refusal to describe its meaning suggests its intent to improperly broaden the 

meaning of “broadcast” to encompass different types of transmissions, such as unicasts and 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 10 of 35
 4 

narrowcasts. The Court should adopt Google’s proposed construction to avoid confusion, 

improper expansion of the scope of the claims, and further disputes. 

II. U.S. PATENT NO. 8,559,928 (CASE NO. 6:20-CV-575-ADA) 

The ’928 patent is directed to a mobile communication apparatus with memory for 

storing contact information in a particular data structure—namely a tree structure with multiple 

logical levels—and methods of storing and accessing that information. (Ex. 7 at Abstract.) As 

evidenced by Google’s proposed constructions, which are intended to reflect established 

meanings, the concepts and terms used in this patent were well-known. But Google seeks 

construction of the following terms because, as WSOU’s brief demonstrates, it is apparent that 

despite their known meanings, the parties do not agree on their scope. Google respectfully 

submits that the Court is obligated to construe these terms now to resolve those disputes. O2 

Micro, 521 F.3d at 1362. 

A. “contact information” (claims 1, 15, 23) 

Google’s Proposed Construction WSOU’s Proposed Construction 

information related to the identity of and 

communication with an entity 

plain and ordinary meaning 

Google’s proposed construction is consistent with the plain and ordinary meaning of 

“contact information.” The specification supports Google’s construction, consistently referring 

to information related to the identity of and communication with an entity, such as telephone 

numbers, addresses, and e-mail addresses, as “contact information.” (Ex. 7 at 4:63-67, 3:62-65, 

4:27-29, Figs. 3-4.) WSOU claims that Google’s proposed construction is “confusing and 

unhelpful,” but fails to explain how it differs from WSOU’s interpretation of the plain and 

ordinary meaning of “contact information.” (Dkt. 33 at 8.) WSOU also claims without 

explanation that Google is “improperly importing limitations not required in the claims,” yet at 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 11 of 35
 5 

the same time implies that Google’s construction is too broad, because “at most, all that is 

required is a name and one or more telephone numbers.” (Id.) WSOU’s argument makes no 

sense because names and telephone numbers fall squarely within Google’s construction. 

What WSOU is really seeking is no construction at all to avoid having to take a position 

as to the boundaries of plain and ordinary meaning to allow it to later argue to the jury that 

information not relevant to “contact” an entity can somehow be contact information. This is 

evident from WSOU’s complaint and infringement contentions, which attempt to equate 

“settings” applied to users, such as permissions or policies governing access to particular 

applications or programs, with “contact information.” (Dkt. 1, ¶¶ 53-54.) The Court should 

resolve this dispute and adopt Google’s construction, which sets forth the proper scope of 

“contact information.” See O2 Micro, 521 F.3d at 1362; Omega Patents, LLC v. CalAmp Corp., 

920 F.3d 1337, 1346 (Fed. Cir. 2019) (“As we have held repeatedly, ‘[w]hen the parties raise an 

actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve 

that dispute.’”). 

B. “tree structure” (claims 1, 15, 23) 

Google’s Proposed Construction1 WSOU’s Proposed Construction 

a non-linear data structure consisting of an 

ordered set of linked nodes in a connected 

graph with a unique root node which is not a 

descendent of any other node, and in which 

each non-root node has at most one parent 

node, zero or more children nodes, and a 

unique hierarchy value 

plain and ordinary meaning 

 1

 WSOU claims that Google’s construction is “vague and unhelpful.” (Dkt. 33 at 9.) 

Google disagrees, but has made minor revisions to its construction to track the terminology used 

in the established definitions of “tree structure” in an attempt to address WSOU’s concerns. 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 12 of 35
 6 

A “tree” was a well-known data structure with defined properties used long before the 

priority date of the ’928 patent. (Ex. 8 at 6.) Indeed, the applicant conceded that this term was 

“well understood” and adopted a dictionary definition setting forth the properties of a “tree 

structure” during prosecution. (Ex. 9 at 6.) Google’s construction reflects the established 

meaning of this term adopted by the applicant as confirmed by contemporaneous dictionary 

definitions. 

The claims require storing “contact information” (data) using a particular structure: “a 

tree structure comprising a plurality of logical levels.” (Ex. 7 at 6:26-27, 6:66, 7:32-40, 8:28-

29.) Thus, the claimed “tree structure” is a data structure with specific properties. (Ex. 10 at 8 

(“A tree structure is a data structure of the memory of the mobile communication apparatus...”).) 

The applicant further defined the scope of those properties to overcome prior art cited during 

prosecution. For example, the applicant stated that a “tree structure” must be “hierarchical” in 

nature. (Ex. 9 at 6.) The applicant then represented that it “should be well understood that a 

‘tree structure’ is a way of representing the ‘hierarchical’ nature of a ‘structure’ in a graphical 

form ... [and] will typically be shown as a graph in the shape of a tree.” (Id.) The applicant 

continued to distinguish prior art that simply listed a number of “menu items” that displayed 

certain information when selected as not meeting the claimed “tree structure,” because it lacked 

the specific properties of being “ordered with ‘roots’ or ‘nodes.’” (Id.) The applicant also relied 

on a definition from Wikipedia (dated Feb. 6, 2008), which defined “tree structure” as “a way of 

representing the hierarchical nature of a structure in a graphical form,” and went on to describe 

the properties of that structure, including the relationships between the elements or “nodes,” 

including “root” nodes, “parent” nodes, and “child” nodes. (Ex. 9 at 19-22.) It further defined a 

“tree structure” as “acyclic”—i.e., “there is one and only one path from any point to any other 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 13 of 35
 7 

point.” (Id.) Google’s construction specifies the properties that define the claimed “tree 

structure”—an ordered set of linked nodes consisting of a unique root node and non-root nodes, 

each non-root node with at most one parent, zero or more children, and a unique hierarchy value 

(i.e., a member of only one level of the hierarchy). The applicant adopted these properties during 

prosecution, and other contemporaneous technical dictionaries confirm they are part of the 

established definition of this term: 

● 1996 IEEE Dictionary defining “tree” in the context of software as: “an abstract 

hierarchical structure consisting of nodes connected by branches, in which each 

branch connects one node to a directly subsidiary node; there is a unique node 

called the root which is not subsidiary to any other node; and every node 

besides the root is directly subsidiary to exactly one other node” and in the 

context of data management as: “a nonlinear data structure consisting of a finite 

set of nodes in which one node is called the root node and the remaining nodes are 

partitioned into disjoint sets, called subtrees, each of which is itself a tree.” (Ex. 

11 at 4.) 

● 1997 Microsoft Press Computer Dictionary (3d Ed.) defining “tree” as “a data 

structure containing zero or more nodes that are linked together in an 

hierarchical fashion. If there are any nodes, one node is the root; each node 

except the root is the child of one and only one node; and each node has zero or 

more nodes as children.” (Ex. 8 at 6.) 

● 2004 Newton’s Telecom Dictionary (20th Ed.) defining “tree” as “a network 

topology shaped like a branching tree...It is characterized by the existence of 

only one route between any two network nodes.” (Ex. 12 at 4 .) 

WSOU’s attacks on Google’s construction reveal a fundamental dispute regarding the 

scope of this term that must be resolved. First, WSOU criticizes Google for importing 

limitations, including “ordered” “nodes,” “parent” nodes, and “child” nodes, erroneously 

contending there is no support for such requirements in the specification. (Dkt. 33 at 9.) As 

explained above, those terms come from established definitions of the properties of a “tree” data 

structure, including the one adopted by the applicant during prosecution. WSOU ignores the 

applicant’s admission that those properties were part of the “well understood” scope of “tree 

structure,” and reliance on them to overcome prior art with “menu items [that] are not ordered 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 14 of 35
 8 

with ‘roots’ or ‘nodes.’” (Ex. 9 at 6.) See Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 

F.3d 1352, 1359 (Fed. Cir. 2002) (adopting “the definition espoused by the applicant during 

prosecution”). 

Second, WSOU now contends that Google’s construction—and the established meaning 

adopted by the applicant during prosecution—should be rejected because “it expressly excludes 

at least a preferred embodiment.” (Dkt. 33 at 10.) WSOU’s complaint is focused on one 

property of a “tree” data structure—that it is acyclic, with each node having “at most one parent 

node.” This property was expressly included in the definition adopted by the applicant, and 

confirmed by other contemporaneous dictionaries. (See Exs. 8, 11, 12.) WSOU points to Figure 

2, which existed in the same form at the time the applicant adopted the Wikipedia definition, as 

an example the patent describes as “arranged in a tree structure.” (Ex. 7 at 3:48-49.) This figure 

depicts all of the properties in Google’s proposed construction except one. Specifically, it 

depicts an ordered set of linked nodes, with a unique root node which is not subsidiary to any 

other nodes, and in which each non-root node has a unique hierarchy value—but it depicts one 

non-root node that is connected to two different nodes on the level directly above it. (Dkt. 33 at 

9.) Figure 2 is thus not acyclic because it includes a node that has two parents. But as described 

above, the acyclic nature of a “tree structure” was not only well-known, but WSOU adopted that 

property during prosecution. (See Exs. 8-12.) WSOU is not advocating for the term’s plain and 

ordinary meaning, which would exclude Figure 2, but rather seeking a construction that provides 

for a data structure that allows non-root nodes in the “tree structure” to have multiple parents. 

WSOU, however, fails to articulate any such construction, nor provide any support for deviating 

from the admitted plain and ordinary meaning outside of Figure 2. 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 15 of 35
 9 

The applicant’s admission that the “well understood” scope of “tree structure” included 

the property that such a structure must be acyclic warrants adoption of Google’s construction. 

Explicit arguments made during prosecution to overcome prior art can lead to narrow claim 

interpretations because the public has a right to rely on such definitive statements made during 

prosecution.” Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (explaining that 

even though the specification described TSP as one of the preferred embodiments, the 

prosecution history required construing the issued claims as excluding TSP). Should the Court 

determine, however, that the scope should encompass Figure 2, Google submits the following 

alternative construction: “a non-linear data structure consisting of an ordered set of linked nodes 

in a connected graph, with a unique root node which is not a descendent of any other node, and 

in which each non-root node is allowed to have multiple parents, has zero or more children 

nodes, and has a unique hierarchy value.” 

III. U.S. PATENT NO. 8,737,961 (CASE NO. 6:20-CV-585-ADA) 

The ’961 patent generally describes deriving a context for a mobile device user such as 

“‘work’ or ‘lunch’ or ‘recreation,’” “at or near a usual spot (such as cafe, gym, work or home),” 

“currently at work but is about to leave for lunch,” in order to deliver a service, “such as a 

marketing service that provides restaurant coupons to a user going to lunch in the vicinity of a 

subscribing restaurant.” (Ex. 13 at 1:23-26, 7:63, 7:65-67.) The specification describes 

“incrementally learn[ing] the location states by constantly monitoring the signal environment of 

the mobile device.” (Id. at 4:28-30; see also id. at 22:1; 24:30-31; 29:47-49; 29:52-57.) 

A. “stationary state” (claims 1 and 11) 

Google’s Proposed Construction WSOU’s Proposed Construction 

indefinite plain and ordinary meaning 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 16 of 35
 10 

There is no dispute that the words “stationary” and “state” have plain and ordinary 

meanings. But the term “stationary state” in the ’961 patent does not. The ’961 patent explains 

that a “stationary state” is not merely the state of being stationary, but is a “semantic concept” 

representing more than mere location, such as “at or near a usual spot (such as cafe, gym, work 

or home).” (Ex. 13 at 1:23-24, 20:28-31; see also id. at 24:51-52 (“To the user, these access 

point IDs can be easily associated with some semantic meaning.”).) The patent teaches away 

from reliance on known geo-location systems, and confirms that a “stationary state” must be 

“learned” or “derived” or “discovered” or “mined”, based on the user’s ongoing behavior and not 

merely her current coordinates. (Id. at 8:1-49.) 

WSOU claims that “stationary state” means “when the mobile device is determined to be 

not moving outside a specified area based on signal data” (Dkt. 33 at 10 (quoting Ex. 13 at 2:37-

40)), but the patent disagrees. Describing the “semantic concept of stationary states,” the patent 

provides multiple competing definitions, leaving unanswered what scope of “stationary states” it 

claims: is a mobile device in a “stationary state” the instant it crosses into an unspecified 

“specified area,” or only if it stays within that “specified area” for some duration of time to be 

deemed “not moving?” Is a mobile device in a “stationary state” as long as it stays within a 

“specified area,” no matter how large that area and how much the device moves, or must the 

device be stationary—or, as the patent suggests, stationary-ish—to be “not moving?” 

The answers to these questions would dramatically alter the scope of the claim. Big Bend 

National Park, the City of Waco, and the United States of America could all be “specified areas.” 

A person of skill in the art is entitled to know whether a user is in “stationary state” as soon as 

she sets foot within the “specified area” of Waco, even if she immediately turns around. A 

person of skill in the art is likewise entitled to know whether a user is in a “stationary state” for 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 17 of 35
 11 

an entire ten-mile hike in Big Bend, or a drive across the United States—while both seem 

illogical, both are plausibly within the “plain and ordinary meaning” of “stationary state” WSOU 

proposes. The patent thus “does not provide a reasonably clear and exclusive definition” of a 

“stationary state.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373 (Fed. Cir. 2014); 

see also Infinity Comput. Prods. v. Oki Data Ams., Inc., Case No. 20-1189, Dkt. 46 at 17 (Fed. 

Cir. Feb. 10, 2021). 

The specification also teaches, as WSOU agrees, that “[w]hen a mobile terminal is 

frequently not moving with similar sets of transmitter IDs, those similar sets define a stationary 

state, e.g., a limited area where the user of the mobile terminal has a tendency to stay” (Dkt. 33 

at 10 (quoting Ex. 13 at 7:26-29)), and that “stationary states ‘represent the places that a user 

stays.’” (Dkt. 33 at 10 (citing Ex. 13 at 20:29-30).) But the patent does not explain how long a 

user must stay in a limited area, or how frequently, for the stay to meet the definition of a 

“stationary state.” And WSOU does not say whether it believes any duration or frequency is 

required under its “plain and ordinary meaning.” 

The specification implies that some degree of non-movement is required for a mobile 

device to be in “stationary state,” but, critically, it doesn’t say how much. In WSOU’s example, 

“the specification discloses that ‘[w]hen mobile terminal 150 is not moving substantively, e.g., 

not moving outside a limited or otherwise specified area, the [wireless transmitter] identifiers 

indicated by successive signal data fields 203 are similar (changing slightly, for example, if one 

or more WiFi access points powers up or powers down or the user moves to different locations 

within an apartment).’” (Dkt. 33 at 10 (quoting Ex. 13 at 7:17-22) (alteration in original).) But 

“not moving substantively” is a purely subjective measurement, and the patent nowhere defines 

it, instead adding ambiguity through additional subjective criteria such as “similar” data fields, or 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 18 of 35
 12 

changing “slightly.” This passage likewise confirms that “not moving outside a limited or 

otherwise specified area” is merely an example (“e.g.”) of “not moving substantively,” which 

WSOU admits is part of “a stationary state.” The patent thus “fails to notify[ ] the public of the 

[scope of the] patentee’s right to exclude” and is indefinite. Qcue, Inc. v. Digonex Techs., Inc., 

Case No. 12-484, 2013 WL 4784120, at *9 (W.D. Tex. Sept. 5, 2013) (alteration in original), 

aff’d, 575 F. App’x 895 (Fed. Cir. 2014). 

WSOU’s attempt to save the claims thus makes the situation worse, as it offers 

conflicting examples of what it asserts is the term’s “plain and ordinary meaning,” each 

including different and ambiguous criteria: must a mobile device be “not moving” at all, just not 

moving “outside a specified area,” “not moving substantively,” not moving “frequently,” nor 

moving for the duration of a “stay?” The boundaries of the term “stationary state” in the ’961 

patent “are essentially whatever [the plaintiff] can convince a jury to find constitutes” a 

stationary state. Qcue, 2013 WL 4784120, at *9. As this Court has explained: 

[I]n interpreting Section 112’s indefiniteness requirement, the Federal Circuit stated, 

“[t]he scope of claim language cannot depend solely on the unrestrained, subjective 

opinion of a particular individual purportedly practicing the invention. Some objective 

standard must be provided in order to allow the public to determine the scope of the 

claimed invention.” The court reasoned that “[r]eference to undefined [subjective] 

standards, regardless of whose views might influence the formation of those standards, 

fails to provide any direction to one skilled in the art attempting to determine the scope of 

the claimed invention.” 

Versata Software, Inc. v Zoho Corp., 213 F. Supp. 3d 829, 835 (W.D. Tex. 2016) (quoting 

Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1352 (Fed. Cir. 2005)) (alterations in 

original); see also KLA-Tencor Corp. v. Xitronix Corp., Case No. 08-723, 2011 WL 318123, at 

*4 (W.D. Tex. Jan. 31, 2011). This term is indefinite.2

 2

 WSOU briefly claims it is “odd that Defendant contends that this term is indefinite but 

proposes a definition which includes the term ‘stationary state’ in the next disputed term.” (Dkt. 

33 at 10.) Nothing could be less odd: precisely because Google is unable to define “stationary 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 19 of 35
 13 

B. “incrementing [of] a count[er] for a stationary state” (claims 1 and 11) 

Google’s Proposed Construction WSOU’s Proposed Construction 

incrementing a count representing time at a 

stationary state 

plain and ordinary meaning 

The parties dispute whether the “incrementing [of] a count[er] for a stationary state” 

should represent time at a stationary state—assuming that “a stationary state” is not indefinite, 

see supra—or can include any counting whatsoever. WSOU complains that Google’s 

construction is “unnecessary and confusing,” but makes no attempt to explain what it believes 

the “plain and ordinary meaning” of this term to be, or what “requirements” the claim language 

purportedly dictates. (Dkt. 33 at 11.) 

The patent describes two (and only two) counters for a stationary state, both representing 

time; Google’s construction correctly represents these counters. First, “the location context 

client 103 continuously samples the signal fingerprints from a user’s mobile terminal 101,” using 

a “fixed sampling time interval (e.g., 30 seconds).” (Ex. 13 at 6:31-34.) The “stationary state 

record 250” includes “count field 256,” which “holds data that indicates the number of sample 

intervals for which that particular set of transmitter IDs was received simultaneously.” (Id. at 

9:22-24.) Second, the patent describes “a fixed transition time interval (tick),” and, after 

determining “the most recent stationary state z,” indicates that “the duration γ is incremented by 

the tick time (e.g., 10 minutes).” (Id. at 7:29-30, 16:45-51.) Google’s construction thus gives 

meaning to the only counters for a stationary state described in the patent, which represent time. 

See, e.g., Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999) (“claims 

 

state,” it must use those words in its proposed construction of “incrementing [of] a count[er] for 

a stationary state.” 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 20 of 35
 14 

were correctly interpreted as limited” to the “only embodiment described in the ’669 patent 

specification”). 

Although WSOU’s position is not entirely clear, by objecting to Google’s construction it 

appears to contend that the plain and ordinary meaning of “incrementing [of] a count[er] for a 

stationary state” includes incrementing any counter about anything, such as a counter showing 

the number of applications open on a device. If that is so, then WSOU’s proposed construction 

would improperly read “for a stationary state” out of the claim. As WSOU admits regarding the 

’728 patent, “interpretations that render some portion of the claim language superfluous are 

disfavored.” Case No. 6:20-cv-583-ADA, Dkt. 35 at 10 (quoting Power Mosfet Techs., L.L.C. v. 

Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)); see, e.g., Merck & Co. v. Teva Pharms. 

USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all 

the terms of the claim is preferred over one that does not do so.”); Qcue, 2013 WL 4784120, at 

*4 (“[P]roposed construction would impermissibly read ‘pricing’ out of the claim.”). Should the 

Court find a definite meaning for “stationary state” and thus confront this issue, it should adopt 

Google’s construction. 

C. “determin[e/ing] a primary set of stationary states” (claims 1 and 11) 

Google’s Proposed Construction WSOU’s Proposed Construction 

indefinite plain and ordinary meaning 

The patentees added this term to the asserted claims during prosecution following a final 

rejection for obviousness. (Ex. 14 at 2.) Following this amendment, the examiner allowed the 

claims without further comment. (Ex. 15 at 8-9.) But the patentees did not explain, and the 

patent nowhere describes, any process for determining which “stationary states” are “primary” 

and which are not. The scope of the “primary set of stationary states” is bounded by the purely 

subjective term “primary set,” and is thus indefinite. 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 21 of 35
 15 

The parties appear to agree that the “primary set” must be less than all the possibilities 

(see Dkt. 33 at 12), but that is where agreement ends and confusion begins. The patent provides 

no guidance on what it means by “primary set” or “primary,” and WSOU’s attempts to fill this 

gap only point to equally subjective criteria. “Primary” appears only twice in the specification: 

The user input is anything input by the user that is passed to the location context server, 

including any response to prompts for identifying the user’s current location, to anything 

the user does or says at the mobile device, including applications opened and closed. For 

example, in some embodiments, when a primary stationary state is identified, as 

described in more detail below, the user is prompted to label the user’s current location 

with a word or phrase that can be used to tag the associated stationary state. In some 

embodiments, the user’s messages or voice calls are monitored while the user is in one 

of the primary stationary states, and the words are mined to derive a context for the 

stationary state. 

(Ex. 13 at 8:1-13). Although the patent promises later description in more detail, it never returns 

to the word “primary” or explains the bounds of the “primary set of stationary states.” Thus, the 

sole description of “primary” assumes that a “primary stationary state” or “one of the primary 

stationary states” has already been determined, without specifying or indicating how. The patent 

thus fails to provide “notice to the public of ‘what is still open to them.’” Infinity Comput. 

Prods., slip op. at 13. 

Seeking to fill this gap, WSOU asserts that “the claims provide context for this claim 

term” because “claim 1 recites: ‘determining a primary set of stationary states, each stationary 

state in the primary set associated with a frequently incremented count . . . .’” (Dkt. 33 at 11-12 

(quoting Ex. 13 at 37:18-22).) But this language cannot suffice, for two reasons. First, the 

claims do not state that the “primary set of stationary states” is “primary” solely because each 

member of the set has “a frequently incremented count”; to the contrary, they confirm that “a 

frequently incremented count” is necessary, but not sufficient, for membership in the “primary 

set of stationary states.” WSOU’s construction would read “primary set of stationary states” out 

of the claim, leaving only ‘determining a set of stationary states associated with a frequently 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 22 of 35
 16 

incremented count . . . .’ If the patentees had wanted to write this claim, they could have, but did 

not. Merck, 395 F.3d at 1372; Power Mosfet, 378 F.3d at 1410; Qcue, 2013 WL 4784120, at *4. 

Second, WSOU cannot avoid the inherently subjective term “primary” by pointing to the 

equally subjective term “frequent” or “frequently.” WSOU points to “frequent” in both the 

claims (see supra) and the specification, specifically: “cumulative distribution of most frequent 

stationary states for a mobile terminal accumulated incrementally over time.” (Dkt. 33 at 12 

(quoting Ex. 13 at 3:33-37)). But the patent does not define the boundaries of “frequently” any 

more than it does “primary,” leaving unanswered how “frequently” is frequent enough to be 

“primary,” and creating “[a] zone of uncertainty which enterprise and experimentation may enter 

only at the risk of infringement claims” in violation of § 112. Nautilus, Inc. v. Biosig 

Instruments, Inc., 572 U.S. 898, 909-10 (2014) (“And absent a meaningful definiteness check, 

we are told, patent applicants face powerful incentives to inject ambiguity into their claims.”). A 

person could accurately state that she frequently visits the dentist and frequently washes her 

dishes, even though one of those likely occurs far more often than the other. A different person 

could accurately state that she frequently visits the dentist and frequently visits her mother, and 

the listener would have no idea which occurs more often because the concept of a ‘frequent visit’ 

is inherently subjective and depends on factors including one’s feelings about one’s dentist and 

one’s mother. 

WSOU points to Figures 11A and 11B, and Tables 6 and 7, as shedding light on the 

meaning of “frequency.” (Dkt. 33 at 12 (citing Ex. 13 at 3:33-37, 23:15-54; 24:10-18).) They do 

the opposite: Figures 11A and 11B show the distribution of “top” stationary states, described in 

the specification as the “most frequent stationary states for a mobile terminal accumulated 

incrementally over time.” (Id. at 23:24-26.) Figures 11A and B thus show stationary states that 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 23 of 35
 17 

have already been determined to be the “top” or “most frequent” from among some greater set, 

but do nothing to explain how to make that determination, and thus cannot help elucidate 

“determin[e/ing] a primary set of stationary states.” WSOU notes that these figures track only 

the “first through sixth most frequent stationary states” (Dkt. 33 at 12), again begging the 

question of how to “determine” the “primary set” ends at number six. Likewise, Tables 6 and 7 

show that some “stationary states” occur more frequently than others, but do not show how to 

separate “a primary set” from the full set of “stationary states,” and do not even purport to do so. 

(Ex. 13 at 23:15-22, 24:10-19.) Instead, these tables skip the “determining” step and assume that 

the “primary set” is the “stationary states that cover 95% of the stationary time of a user.” (Id. at 

23:64-65.) But neither the patent nor WSOU in its brief explains how it arrived at the 95% 

cutoff, whether the 95% cutoff separates the “primary set of stationary states” from the others, or 

how a person of skill in the art could find the line without asking WSOU. (Ex. 13 at 23:12 to 

24:46; Dkt. 33 at 12.) Finally, WSOU claims that “determining a primary set of stationary states 

includes stationary states with the most observations, or highest (most frequently) incremented 

counters,” (Dkt. 33 at 12), but again this only begs the question: how many are among “the 

most?” The patent does not say, and WSOU does not know. 

The term “determin[e/ing] a primary set of stationary states” is indefinite because 

“primary set” is inherently subjective, and WSOU’s attempts to define it rely on new terms that 

are equally subjective, an example of “turtles all the way down.” Rapanos v. United States, 547 

U.S. 715, 754 (2006) (Opinion of Scalia, J.). The patent provides no objective criteria to 

determine what is “primary” and thus “[a]ny system designed by a competitor necessarily faces 

some litigation risk.” Qcue, 2013 WL 4784120, at *9. “This may be a fine system for patentCase 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 24 of 35
 18 

litigation plaintiffs, but it is no system at all for the public.” Id. The Court should find this term 

indefinite. 

IV. U.S. PATENT NO. 8,751,585 (CASE NO. 6:20-CV-00577-ADA) 

The ’585 patent is directed to a specific method of managing electronic messages in an 

inbox by assigning a rule to selected messages that moves them to an archive location after a 

particular action is detected. (Ex. 16 at Abstract.) 

A. “moving the selected electronic message from the inbox to the archive 

location after detection of the action defined in the archiving rule,” “to move 

the selected electronic message from the inbox to the archive location after 

detection of the action defined in the archiving rule,” and “moving the first 

electronic message from the inbox of the electronic mail client associated 

with the user to the first storage location associated with the first archiving 

rule after the first action specified in the first archiving rule is detected” 

(claims 1, 9, 17) 

Google’s Proposed Construction3 WSOU’s Proposed Construction 

“moving the selected electronic message from 

the inbox to a different location in memory 

corresponding to the previously defined 

archive location after the communication 

system detects the action defined in the 

archiving rule” / “to move the selected 

electronic message from the inbox to a 

different location in memory corresponding 

to the previously defined archive location 

after the communication system detects the 

action defined in the archiving rule” / 

“moving the first selected electronic message 

from the inbox to a different location in 

memory corresponding to the previously 

defined first storage location after the 

communication system detects the action 

specified in the first archiving rule” 

plain and ordinary meaning 

 3

 WSOU takes issue with Google’s proposed construction as applied across these claims 

given minor differences in their respective wording. (Dkt. 33 at 17.) For example, in claim 9 the 

term is “to move” as opposed to “moving,” and in claim 17 the term is “specified” as opposed to 

“defined.” None of these differences are material to Google’s construction, and for avoidance of 

doubt, Google has clarified that the language of the respective claims should be used by 

including the variants here. 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 25 of 35
 19 

Google’s proposed construction clarifies two issues: (1) the requirement that it is the 

communication system that “detects” the action; and (2) the antecedent basis for the terms “the 

archive location” (claims 1, 9) and “the first storage location” (claim 17). WSOU does not 

appear to dispute the first issue—nor could it. The claims expressly require that the actions “can 

be detected by the communication system” (Ex. 16 at 8:21-22, 9:51-52, 11:21-22), and the 

specification is replete with references to “detection by the said communication system” (Ex. 16 

at Abstract, 2:27-36, 4:35-37.) 

Regarding the second issue, Google’s construction is not a rewrite as WSOU contends. 

(Dkt. 33 at 17.) Both the claim language and the specification support Google’s construction, 

and WSOU’s arguments otherwise demonstrate the need to define the proper scope. First, the 

claims require movement of a selected electronic message from the inbox to a particular 

location—“the archive location” or “the first storage location.” (Ex. 16 at 8:28-29, 9:63-64, 

11:31-33.) A plain reading establishes that “the archive location” in claims 1 and 9 refers back 

to “an archive location within the communication system” defined in conjunction with the 

archiving rule. (Ex. 16 at 8:25-27, 9:44-57.) Similarly, “the first storage location” refers back to 

“a first storage location within the communication system” specified in conjunction with the first 

archiving rule. (Ex. 16 at 11:18-27.) A POSITA would understand the patent’s discussion of the 

movement of messages to “archive” and “storage” locations within the communication system to 

refer to locations in memory. (Ex. 16 at 7:37-42.) As such, WSOU’s assertion that that the 

absence of the exact term “memory” from the ’585 patent is “independently fatal to Google’s 

construction” demonstrates that WSOU is not applying the plain and ordinary meaning of these 

terms and that the parties need a construction. (Dkt. 33 at 17.) Second, the specification 

confirms that the claimed movement of the selected message is from the inbox to a different

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 26 of 35
 20 

location in memory within the communication system—the location previously defined as the 

“archive location” or “first storage location.” (Ex. 16 at 2:30-37, 2:44-54, 7:35-54.) 

B. “a list of actions” and “a plurality of actions” (claims 1, 9, 17) 

Google’s Proposed Construction WSOU’s Proposed Construction 

a finite number of selectable items every one 

corresponding to an executable function 

 plain and ordinary meaning 

Google’s proposed construction clarifies that the list or plurality of actions required by 

the ’585 patent is composed of selectable items that correspond to executable functions. This 

reflects the plain meaning of these terms based on the intrinsic evidence. WSOU’s arguments 

demonstrate that it is not applying plain and ordinary meaning, and construction is required. 

First, WSOU erroneously claims that Google’s construction excludes the possibility of a 

list of one action. (Dkt. 33 at 14.) One is a “finite number,” and thus a list consisting of a single 

action falls within Google’s construction. Google has further clarified that “every one” of the 

selectable items corresponds to an executable function to further address WSOU’s concern. 

Moreover, the crux of Google’s construction is not how many actions are on the list, but rather 

that the list is finite. And this necessarily follows from the claims’ requirement that an action be

selected from a list—the user’s choice is not unlimited and the universe of actions to choose from 

must be defined. (Ex. 16 at 8:19-21, 9:49-51, 11:19-21.) WSOU does not appear to contest this 

point, agreeing that “the ‘list of actions’ is further limited in terms of ‘an action’ that must be 

selected from the list.” (Dkt. 33 at 13.) To the extent WSOU argues that the doctrine of claim 

differentiation requires the terms “a list of actions” and “a plurality of actions” to be construed 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 27 of 35
 21 

differently, Google is willing to clarify that a “plurality” refers to a finite number greater than or 

equal to two.4

Second, WSOU acknowledges that in claims 1 and 9, “an action is selected from a list of 

actions that can be detected by the communication system.” (Dkt. 33 at 13.) Similarly, in claim 

17, “a first action is selected from a plurality of actions that can be detected by the 

communication system.” (Ex. 16 at 11:19-21.) It is common sense that if an action is to be 

selected from a list of actions, the actions that make up that list must by definition be 

“selectable.” The specification confirms as much. (Ex. 16 at 4:15-23.) Moreover, the actions on 

the list cannot be just any actions—they must be executable functions that can be detected by the 

communication system. The claims require that the actions “can be subsequently carried out 

using at least some portion of the communication system.” (Ex. 16 at 8:17-19, 9:47-49, 11:28-

30.) The inventors also describe numerous “actions” that a user could select for the archiving 

rule, all of which are functions executed using parts of the communication system. (Ex. 16 at 

4:39-53, 4:54-5:24.) WSOU’s argument that Google adds “extraneous requirement[s]” ignores 

this intrinsic evidence and leads to nonsensical results. (Dkt. 33 at 14-15.) For example, 

according to WSOU, because “only ‘the action defined by the archiving rule’ need be ‘selected 

from a list of actions,’” there is no requirement that each action in the list be “selectable.” (Dkt. 

33 at 14-15.) Under WSOU’s interpretation, the list or plurality of actions could include actions 

that were not selectable by a user. That does not make sense in the context of the ’585 patent. 

 4

 The terms “list of actions” and “plurality of actions” appear in independent claims. The 

Federal Circuit instructs that courts must “be[] cautious in assessing the force of claim 

differentiation in particular settings, recognizing that patentees often use different language to 

capture the same invention, discounting it where it is invoked based on independent claims rather 

than the relation of an independent and dependent claim.” Atlas IP, LLC v. Medtronic, Inc., 809 

F.3d 599, 607 (Fed. Cir. 2015). 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 28 of 35
 22 

C. “client management processor configured to enable the user to select an 

electronic message from the inbox” (claim 9) 

D. “a detection processor configured to detect the action defined in the 

archiving rule assigned to the selected electronic message was carried out”

(claim 9) 

E. “a collaborative application management processor configured to manage 

collaborative applications” (claim 9) 

Google’s Proposed Construction WSOU’s Construction 

Section 112, ¶ 6 applies. 

Function: to enable the user to select an 

electronic message from the inbox 

Structure: indefinite 

 For all three “... processor configured to ...” 

terms of claim 9: plain and ordinary meaning; 

not subject to means-plus-function treatment; 

and definite. 

Section 112, ¶ 6 applies. 

Function: to detect the action defined in the 

archiving rule assigned to the selected 

electronic message was carried out 

Structure: indefinite 

Section 112, ¶ 6 applies. 

Function: to manage collaborative 

applications 

Structure: indefinite 

For these terms, the issues are: (1) whether the phrase “processor configured to” invokes 

Section 112, ¶ 6, and (2) are these terms indefinite for failure to disclose corresponding structure 

for their respective functions. WSOU wholly fails to address the second issue, forfeiting any 

argument regarding alleged structure for these terms. 

For the first issue, the essential inquiry is “whether the words of the claim are understood 

by [POSITAs] to have a sufficiently definite meaning as the name for structure.” Williamson v. 

Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Though absence of the word “means” 

creates a rebuttable presumption that a term is not a means-plus-function limitation, Section 112, 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 29 of 35
 23 

¶ 6 applies when the claim term: (i) “fails to recite sufficiently definite structure,” or (ii) “recites 

function without reciting sufficient structure for performing that function.” Id. at 1349. 

As a threshold matter, WSOU’s primary argument rests on the erroneous premise that 

there is a categorical rule that the term “processor” avoids means-plus-function treatment. This 

Court and other districts make clear that whether the term “processor” invokes Section 112, ¶ 6 

requires a case-specific analysis. See, e.g., Dyfan, LLC v. Target Corp., 6:19-cv-179-ADA, Dkt. 

57 at 20 & n.4 (W.D. Tex. 2020); St. Isidore Research, LLC v. Comerica Inc., 2016 WL 

4988246, at *14 (E.D. Tex. 2016) (construing term “processor configured to” as a means-plusfunction limitation because the processor “is defined only by the function that it performs”). As 

this Court instructs, applicants cannot “simply recite two nonce words—‘processor’ and 

‘code’—together in order to essentially write the claim in a means-plus-function format without 

being subject to § 112, ¶ 6.” Dyfan, Dkt. 57 at 20 n.4. 

The intrinsic record establishes that the phrase “processor configured to” in claim 9 does 

not provide sufficient structure for performing the claimed functions. First, claim 9 is drafted in 

the same format as traditional means-plus-function claims with the phrase “processor configured 

to” simply substituted for the phrase “means for.” The claim language following the “processor 

configured to” phrase is purely functional without reciting any structure. See Joao Control & 

Monitoring Sys., LLC v. Protect Am., Inc., 2015 WL 4937464, at *9 (W.D. Tex. 2015) 

(construing “processing device” as a means-plus-function term because the claim “employs 

purely functional claiming without reciting sufficient structure in the claims to perform the 

function described”). In short, claim 9 tells you what the “processor” does—i.e., it “enable[s] 

the user to select an electronic message,” it “detect[s] the action defined in the archiving rule,” 

and it “manage[s] collaborative applications”—not what it is. Accordingly, the “processor 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 30 of 35
 24 

configured to” phrase “does not provide any indication of structure because it sets forth the same 

black box recitation of structure for providing the same specified function as if the term ‘means’ 

had been used.” Williamson, 792 F.3d at 1350. 

Second, contrary to WSOU’s assertion, the adjectival modifiers preceding the term 

“processor” in these terms are not “structural descriptions.” (Dkt. 33 at 20.) They also merely 

describe the processor’s intended function—i.e., “client management,” “detection,” and 

“collaborative application management.” WSOU fails to argue that any of those modifiers has a 

generally understood structural meaning in the art, or explain how they provide structural 

significance. Williamson, 792 F.3d at 1351; Media Rights Techs., Inc. v. Capital One Fin. Corp., 

800 F.3d 1366, 1373 (Fed. Cir. 2015); Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096–

97, (Fed. Cir. 2008); Rain Computing, Inc. v. Samsung Elecs. Co., 2020 WL 708125, at *4 (D. 

Mass. Feb. 12, 2020). They do not. 

Third, while claim 9 uses the term “processor,” the specification uses either “means” or a 

well-known nonce word such as “agent” when discussing performance of the same functions. 

For example, the specification describes a “collaborative application management means,” as 

opposed to a “collaborative application management processor.” (Ex. 16 at 3:21-22, 5:8-10.) 

Additionally, it does not describe a “detection processor,” but rather a “means of detection to 

detect that the action attached to the said message has been carried out” (Ex. 16 at 2:50-51), and 

further describes that “[d]etection of the performance of an action is rendered possible using 

different agents” (Ex. 16 at 6: 1-2). These “agents” are depicted simply as black boxes in Figure 

1 (Ex. 16 (114a-d)), and the specification provides no disclosure of how any of them perform the 

specialized function of detecting the various actions that take place throughout the 

communication system. Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367, 1373 (Fed. Cir. 2020). 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 31 of 35
 25 

Similarly, Claim 9 requires an “electronic message client comprising a client 

management processor configured to enable the user” to take certain actions (Ex. 16 at 9:43-44), 

but the specification provides that the “electronic message client comprises means to enable the 

user” to take those actions (Ex. 16 at 2:41-42). Such interchangeable treatment of “processor” 

and “means” demonstrates that the patent uses the term “as synonyms.” MIT v. Abacus 

Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006). WSOU’s own cited cases confirm this point. 

See Cypress Lake Software, Inc. v. Samsung Elecs. Am. Inc., 382 F. Supp.3d 586, 615-16 (E.D. 

Tex. 2019) (“By using this parallel language, [POSITAs] would understand that the [patent] uses 

the terms ‘code for’ and ‘means for’ as synonyms. Accordingly, Defendants have rebutted the 

presumption that § 112, ¶ 6 does not apply to the disputed ‘code for’ terms.”). 

Given that the “processor configured to” phrase as used in each of these terms invokes 

Section 112, ¶ 6, they are indefinite because the ’585 patent fails to provide structure for 

performing any of the claimed functions. Instead, the specification simply repeats each claimed 

function, but it does not provide any algorithm or other structure for carrying out that specific 

function. (Ex. 16 at 2:37-54; 5:54-62; 5:66-6:43, Fig. 1.) “This type of purely functional 

language, which simply restates the function associated with the means-plus-function limitation, 

is insufficient to provide the required corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 

F.3d 1302, 1317 (Fed. Cir. 2012). Tellingly, WSOU cannot identify any structure for performing 

any of the claimed functions. 

 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 32 of 35
 26 

Date: February 12, 2021 Respectfully submitted, 

/s/ Tharan Gregory Lanier 

 Tharan Gregory Lanier (pro hac vice) 

Jones Day 

1755 Embarcadero Road 

Palo Alto, California, 94303 

+1 (650) 739-3939 

+1 (650) 739-3900 facsimile 

tglanier@jonesday.com 

Michael E. Jones (Texas Bar No. 10929400) 

Patrick C. Clutter (Texas Bar No. 24036374) 

Potter Minton, P.C. 

110 North College, Suite 500 

Tyler, Texas, 75702 

+1 (903) 597-8311 

+1 (903) 593-0846 facsimile 

mikejones@potterminton.com 

patrickclutter@potterminton.com 

Matthew S. Warren (California Bar No. 

230565) 

Jennifer A. Kash (California Bar No. 203679) 

(pro hac vice) 

Erika Warren (California Bar No. 295570) 

Warren Lex LLP 

2261 Market Street, No. 606 

San Francisco, California, 94114 

+1 (415) 895-2940 

+1 (415) 895-2964 facsimile 

20-585@cases.warrenlex.com 

 Sasha Mayergoyz 

Jones Day 

77 W. Wacker Drive 

Chicago, IL 60601 

+1 (312) 782-3939 

smayergoyz@jonesday.com 

Tracy A. Stitt 

Jones Day 

51 Louisiana Avenue NW 

Washington, DC 20001 

+1 (202) 879-3641 

tastitt@jonesday.com 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 33 of 35
 27 

Michael A. Lavine 

Jones Day 

555 California Street 

26th Floor 

San Francisco, California 94104 

+1 (415) 626-3939 

mlavine@jonesday.com 

David E. Anderson 

Jones Day

325 John H. McConnell Blvd, Suite 600 

Columbus, OH 43215 

+1 (614) 281-3617 

danderson@jonesday.com 

Attorneys for Defendant Google LLC

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 34 of 35
CERTIFICATE OF SERVICE 

I certify that on February 12, 2021, I served the foregoing by electronic mail on counsel 

of record. 

/s/ David E. Anderson 

David E. Anderson 

Case 6:20-cv-00573-ADA Document 34 Filed 02/12/21 Page 35 of 35