Harry L. “Gil” Gillam, Jr. Melissa Richards Smith

Managing Partner Managing Partner

gil@gillamsmithlaw.com melissa@gillamsmithlaw.com

Tom Gorham, Partner Travis Underwood, Partner McKellar Karr, Associate

tom@gillamsmithlaw.com travis@gillamsmithlaw.com mckellar@gillamsmithlaw.com

303 South Washington Avenue, Marshall, Texas 75670 P 903.934.8450 | F 903.934.9257

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April 10, 2024

VIA CM/ECF

The Honorable Rodney Gilstrap, U.S.D.J.

Sam B. Hall, Jr. Federal Building and United States Courthouse 100 East Houston Street

Marshall, Texas 75670

Re: Display Technologies, LLC v. Sirius XM Radio Inc., No. 2:23-CV-00591-JRG; Parties’ Joint 

Letter Regarding Necessity of Prior Claim Construction to Decide Patent Eligibility Under 35 

U.S.C. § 101

Dear Judge Gilstrap:

Plaintiff Display Technologies, LLC (“Display Technologies” or “DT”) and Defendant 

Sirius XM Radio Inc. (“Sirius” or “SXM”) (collectively, the “Parties”) respectfully submit this 

joint letter pursuant to the Court’s Standing Order Regarding Motions Under 35 U.S.C. § 101 

where each of the Parties outline their respective positions below.

A table listing the Asserted Patents and the Asserted Claims appears below.

Asserted Patent Asserted Claims Count No. in Amended

Complaint (Dkt. 18)

U.S. Patent No. 8,671,195

(“the ’195 Patent”)

1, 2, 3, 13, 17-19, 23 Count One

U.S. Patent No. 9,300,723

(“the ’723 Patent”)

1, 3, 5, 6, 8, 9 Count Two

Case 2:23-cv-00591-JRG-RSP Document 25-1 Filed 04/10/24 Page 1 of 5 PageID #: 385
2

I. Plaintiff Symbology’s Position

In addition to the claim construction issue noted herein, there are a plethora of factual 

disputes the preclude resolution of this matter at the pleading stage. See Berkheimer v. HP, Inc.,

881 F.3d 1360, 1368 (Fed. Cir. Feb. 2018) (“The question of whether a claim element or 

combination of elements is well-understood, routine and conventional to a skilled artisan in the

relevant field is a question of fact that must be proven ‘by clear and convincing evidence.’”).

Specifically, Display Technologies contends that at least the following phrase must be construed 

prior to the Court ruling on Sirius’ motion to dismiss (all intrinsic evidence citations are made 

with respect to Patent No. 9,300,723):

Disputed Term/Phrase Patent/Claim 

Numbers

Preliminary Construction 

and Intrinsic Evidence

“a communication link . . . structured to 

bypass at least one media terminal 

security measure”

Pat. No. 9,300,723

1, 17, 23

Pat. No. 8,671,195

1

“a communication link 

capable of bypassing at 

least one security measure 

such that the transference of 

a media file between a 

media terminal and a media 

node can occur regardless 

of whether the media node 

has independent access to 

the interactive computer 

network.” 

Intrinsic Evidence:

5: 17-25

5: 37-44

For example, Sirius argues that the claims are directed to the abstract idea of “transferring 

a digital media file.” See Sirius’ Motion to Dismiss (Dkt. No. 13) at 17. However, the 

communication link used for transferring the digital media file must be properly structured such 

that the transference can occur regardless of regardless of whether the media node has independent 

access to the interactive computer network. This proper structure includes the ability to bypass at 

least one security measure. Thus, a proper construction of the phrase “a communication link . . . 

structured to bypass at least one media terminal security measure” is required in order to not only 

evaluate the merits of Sirius’ “abstract concept” arguments, but also to evaluate the merits of Sirius’ 

contention that the claims lack an inventive concept.

Indeed, because Sirius’ motion is presented to the Court at the pleading stage, the Court is 

left with zero developed record from which it could possibly assess what was, and what was not, 

well-understood, routine, and conventional in the art as of December 2007, not to mention a lack of 

familiarity with the disclosures.

Accordingly, Sirius’ motion is premature and should not be taken up until after claim 

construction has occurred in this case and the factual record as to the state of the prior art developed. 

Case 2:23-cv-00591-JRG-RSP Document 25-1 Filed 04/10/24 Page 2 of 5 PageID #: 386
3

See Exergen Corp. v. KAZ USA, Inc., No. 2016-2315, 2018 WL 1193529 at *4 (Fed. Cir. March 8, 

2018) (“Something is not well- understood, routine, and conventional merely because it is disclosed 

in a prior art reference.”).

II. Defendant SXM’s Position

DT fails to present a genuine dispute over whether claim construction is needed to resolve 

the patent eligibility challenge in SXM’s motion to dismiss (“MTD”). DT’s proposed construction 

impermissibly rewrites the claims to include an additional limitation and contradicts its prior 

position before this Court that no construction of the claim terms were needed for at least one of 

the Patents-in-Suit. But strictly for purposes of the MTD, SXM does not object to the Court 

adopting DT’s construction because the claims remain patent-ineligible as set forth in the MTD. 

Accordingly, there is no dispute over claim construction for the purposes of the MTD and the 

Court can, and should, find the claims invalid under Section 101 at this stage.

DT’s Construction Improperly Introduces New Limitations Into The Claims. SXM’s 

position is that no claim terms require construction for purposes of the MTD. DT’s proposed 

construction is an improper attempt to rewrite the Asserted Claims to include new subject matter. 

The added phrase “such that the transference of a media file between a media terminal and a media 

node can occur regardless of whether the media node has independent access to the interactive 

computer network” does not appear in the Asserted Claims and it “is improper to import such a 

limitation into the claims if the claim language itself does not provide support for such a 

limitation.” Trinity Indus., Inc. v. Rd. Sys., Inc., 121 F. Supp. 2d 1028, 1042 (E.D. Tex. 2000). 

While SXM will explain in more detail at the appropriate time why the Court should reject DT’s 

attempt to import limitations, SXM is willing, solely for purposes of the instant motion, to accept 

this construction as the Patents-in-Suit remain invalid under section 101 for the reasons outlined 

in the MTD and summarized briefly below. Thus, there is no claim construction dispute for the 

Court to decide and the Court can rule on SXM’s MTD now. See, e.g., Aatrix Software v. Green 

Shades Software, 882 F.3d 1121, 1125 (Fed. Cir. 2018) (explaining that, if there are claim 

construction disputes at the 12(b)(6) stage, the Court may “proceed by adopting the non-moving 

party’s constructions”).1

DT’s Proposed Construction Does Not Save the Patents-in-Suit From The MTD. DT’s 

proposed construction does not save its facially invalid claims because the claims are still directed 

to an abstract idea without an inventive concept. Regardless of whether the Court considers the 

claims as-is or with DT’s improper rewriting of them, the claims still do not recite how the 

communication link is “structured to bypass” any security measures (even when they include DT’s 

added limitation that the “transference of a media file between a media terminal and a media node 

can occur regardless of whether the media node has independent access to the interactive computer 

network”). 

1 Unlike the one term presented in this letter, DT originally identified eleven terms potentially 

requiring construction, including terms not appearing in the claims. For example, DT originally 

identified “at least one interactive computer network, media file one media terminal, or one media 

node (Claim 1 723 patent)” as a term requiring construction, but that term does not appear in Claim 

1 of the ’723 Patent.

Case 2:23-cv-00591-JRG-RSP Document 25-1 Filed 04/10/24 Page 3 of 5 PageID #: 387
4

The rewriting of the claims merely adds one more functional condition that must be met, 

not a recitation for how to perform the functions recited in the claims. Indeed, DT fails to identify 

the “proper structure” or explain how that purportedly “proper structure” would perform the recited 

function. DT does nothing to take away from SXM’s arguments that the Asserted Claims are 

directed to an abstract idea of transferring a digital media file using commonplace, generic 

computing and networking devices working as one would expect them to work in their normal 

everyday usage. MTD at 16-26. And, whether the elements are read individually or as an ordered 

combination, they fail to provide the necessary “inventive concept” to transform the claims into a 

patent-eligible application of the abstract idea of transferring a digital media file. See In re TLI 

Commn’s LLC Patent Litig., 823 F.3d 607, 612-15 (Fed. Cir. 2016); see also MTD at 21-26. Even 

under DT’s construction, the claims still do not describe any “new” computer or networking 

technology, or any “new” improvement of same; instead, they merely use generic networked 

computers that “behave exactly as expected according to their ordinary use.” TLI, 823 F.3d at 615. 

Thus, the Patents-in-Suit remain patent ineligible even under DT’s proposed construction. 

DT’s Position Here Contradicts Its Prior Arguments Raised In This Court. DT has 

filed numerous actions in this and other federal courts asserting at least one of the two Asserted 

Patents. In one case before this Court, DT argued that the claim terms of the ’723 Patent do not 

require construction. See Display Techs. v. ZTE (USA), Civ. No. 2:17-00068, Dkt. No. 26 (stating 

that “there are no terms that require construction” with respect to the ’723 Patent). Similarly, in an 

inter partes review filed against the ’723 Patent, DT did not dispute that an explicit construction 

was not required for the invalidity analysis. See IPR2022-00230, Paper 1 at 23; see also IPR2022-

00230 Institution Decision, Paper 6 at 10 (granting institution as to the ’723 Patent and finding 

that “no terms of the challenged claims require explicit construction”). This contradiction in DT’s 

current position confirms that DT’s proposed claim constructions are intended only to delay 

consideration of SXM’s MTD, rather than comprise a legitimate claim construction dispute.

DT’s Additional Arguments Are Irrelevant. DT’s remaining arguments regarding 

factual disputes or the need to develop the record are irrelevant as they are unrelated to the claim 

construction dispute between the parties. Notably, DT fails to mention a single factual dispute or 

any development of the record that is needed for the Court to rule on the MTD now, as opposed to 

waiting for claim construction. Indeed, everything needed for the Court to rule on the MTD is in 

the Patents-in-Suit. If a substantive argument about additional facts is presented at some point, 

SXM will respond to such arguments at that time. 

Case 2:23-cv-00591-JRG-RSP Document 25-1 Filed 04/10/24 Page 4 of 5 PageID #: 388
5

Respectfully submitted,

/s/ Randall T. Garteiser

Randall Garteiser

Texas Bar No.: 24038912 

rgareiser@ghiplaw.com

GARTEISER HONEA, PLLC

119 W. Ferguson Street Tyler, Texas 

75702

903-705-7420

Attorneys for Plaintiff

/s/ Mark A. Baghdassarian

Mark A. Baghdassarian

Shannon Hedvat

Jeffrey Coleman

mbaghdassarian@kramerlevin.com

shedvat@kramerlevin.com

jcoleman@kramerlevin.com

KRAMER LEVIN NAFTALIS & 

 FRANKEL LLP

1177 Avenue of the Americas

New York, NY 10036

Tel: (212) 715-9100

Fax: (212) 715-8000

Melissa R. Smith

Texas Bar No. 24001351

GILLAM & SMITH, LLP

303 South Washington Avenue

Marshall, Texas 75670

Telephone: (903) 934-8450

Facsimile: (903) 934-9257

Email: melissa@gillamsmithlaw.com

Counsel for Defendant Sirius XM Radio 

Inc.

Case 2:23-cv-00591-JRG-RSP Document 25-1 Filed 04/10/24 Page 5 of 5 PageID #: 389