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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TEXAS 

SHERMAN DIVISION 

WAPP TECH LIMITED PARTNERSHIP 

and WAPP TECH CORPORATION, 

 Plaintiffs 

v. 

JPMORGAN CHASE BANK, N.A., 

 Defendant

§ 

§ 

§ 

§ 

§ 

§ 

§ 

§ 

 CIVIL ACTION NO. 4:23-CV-1137 

 (Judge Mazzant) 

 

 

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER 

 Before the Court is Plaintiffs WAPP Tech Limited Partnership and WAPP Tech 

Corporation’s (“Plaintiff’s” or “WAPP’s”) Opening Claim Construction Brief (Dkt. #64). Also 

before the Court is the Responsive Claim Construction Brief (Dkt. #66) filed by Defendant 

JPMorgan Chase Bank, N.A. (“Defendant” or “JPMC” or “Chase”), as well as Plaintiff’s reply 

(Dkt. #71). Further before the Court are the parties’ August 9, 2024 P.R. 4-3 Joint Claim 

Construction Statement (Dkt. #45), the parties’ October 29, 2024 P.R. 4-5(d) Joint Claim 

Construction Chart (Dkt. #72, Ex. A), and Defendant’s November 12, 2024 Supplemental 

Submission Regarding Claim Construction (Dkt. #77). 

 The Court held a claim construction hearing on November 8, 2024, to determine the proper 

construction of the disputed claim terms in United States Patents No. 8,924,192, 9,298,864, 

9,971,678, 10,353,811, and 10,691,579 (collectively, the “patents-in-suit”). 

 The Court issues this Claim Construction Memorandum Opinion and Order and hereby 

incorporates-by-reference the claim construction hearing transcript. 

 

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BACKGROUND 

 Plaintiff alleges infringement of United States Patents No. 8,924,192 (the “’192 Patent”), 

9,298,864 (the “’864 Patent”), 9,971,678 (the “’678 Patent”), 10,353,811 (the “’811 Patent”), and 

10,691,579 (the “’579 Patent”). 

 The ’192 Patent, titled “Systems Including Network Simulation for Mobile Application 

Development and Online Marketplaces for Mobile Application Distribution, Revenue Sharing, 

Content Distribution, or Combinations Thereof,” issued on December 30, 2014, and bears an 

earliest priority date of June 10, 2005. The Abstract of the ’192 Patent states: 

A system and methods emulate an application executing in real time in a mobile 

device. The mobile device is emulated in real time using a model running on a 

processor extrinsic to the mobile device. The model is based on characteristics 

indicative of performance of the mobile device. The application is executed in real 

time within the model and the application executing in the model is monitored to 

determine resource utilization information by the application for the mobile device. 

The resource utilization information for the mobile device is displayed. 

 

Plaintiff submits: 

The patents-in-suit are all within the same patent family and relate back to U.S. 

Patent No 7,813,910 (which is not asserted in this case). The ’192, ’678, and ’811 

Patents are continuations of the ’910 Patent and generally share the same 

specification. The ’864 and ’579 Patents are divisions of a continuation-in-part 

(U.S. Patent No. 8,589,140) of the ’910 Patent. As such, they include essentially 

the same specification as the ’192, ’678, and ’811 Patent continuations. The ’678, 

’811, ’864, and ’579 Patents incorporate the ’192 Patent specification. See ’678 

Patent at 1:8-18; ’811 Patent at 1:7-19; ’864 Patent at 1:7-14; ’579 Patent at 1:7-16. 

Thus, the citations herein are typically to the ’192 Patent specification for 

simplicity. (Dkt. #64, at p. 2). 

 The Court previously construed disputed terms in the ’192 Patent, the ’864 Patent, and the 

’678 Patent in Wapp Tech Ltd. P’Ship, et al. v. Seattle Spinco et al., No. 4:18-CV-00469-ALM, 

Dkt. 176 (E.D. Tex. Apr. 27, 2020) (attached to Plaintiff’s Opening Claim Construction Brief as 

Exhibit 6) (“Micro Focus”). 

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 The Court also previously construed disputed terms in the patents-in-suit in Wapp Tech 

Ltd. P’Ship, et al. v. Wells Fargo & Co., et al., No. 4:21-CV-00671-ALM, Dkt. 96 (E.D. Tex. 

July 6, 2022) (attached to Plaintiff’s Opening Claim Construction Brief as Exhibit 7) (“Wells 

Fargo,” sometimes referred to by the parties as the “Bank Cases”). 

LEGAL STANDARDS 

Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d 

967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and 

technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. 

Cir. 1997). When the parties dispute the scope of a claim term, “it is the court’s duty to resolve 

it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). 

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to 

which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 

(Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 

1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define the 

patented invention’s scope. Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad Commc’ns 

Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the claims, the rest 

of the specification, and the prosecution history. Phillips, 415 F.3d at 1312–13; Bell Atl. Network 

Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as 

understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 

1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). 

Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314. 

“[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other 

claims, asserted and unasserted, can provide additional instruction because “terms are normally 

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used consistently throughout the patent.” Id. Differences among claims, such as additional 

limitations in dependent claims, can provide further guidance. Id.

“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. at 1315 

(quoting Markman, 52 F.3d at 979). “[T]he specification ‘is always highly relevant to the claim 

construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a 

disputed term.’” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 

1996)); Teleflex. Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the 

specification, a patentee may define his own terms, give a claim term a different meaning than it 

would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. 

Although the Court generally presumes terms possess their ordinary meaning, this presumption 

can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced 

Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). This presumption does not 

arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite 

Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004). 

The specification may also resolve ambiguous claim terms “where the ordinary and 

accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of 

the claim to be ascertained from the words alone.” Teleflex, 299 F.3d at 1325. For example, “[a] 

claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, 

if ever, correct.’” Globetrotter Software, Inc. v. Elan Computer Group Inc., 362 F.3d 1367, 1381 

(Fed. Cir. 2004) (quoting Vitronics, 90 F.3d at 1583). But, “[a]lthough the specification may aid 

the court in interpreting the meaning of disputed language in the claims, particular embodiments 

and examples appearing in the specification will not generally be read into the claims.” Constant 

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v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988); accord Phillips, 415 F.3d 

at 1323. 

The prosecution history is another tool to supply the proper context for claim construction 

because a patentee may define a term during prosecution of the patent. Home Diagnostics Inc. v. 

LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent 

applicant may define a term in prosecuting a patent.”). The well-established doctrine of 

prosecution disclaimer “preclud[es] patentees from recapturing through claim interpretation 

specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v. Raytek Corp., 334 F.3d 

1314, 1323 (Fed. Cir. 2003). “Indeed, by distinguishing the claimed invention over the prior art, 

an applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 

1372, 1378–79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim interpretation, 

prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects 

the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, 334 F.3d 

at 1324. However, the prosecution history must show that the patentee clearly and unambiguously 

disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. 

Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002). Statements will constitute 

disclaimer of scope only if they are “clear and unmistakable statements of disavowal.” See Cordis 

Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1358 (Fed. Cir. 2003). An “ambiguous disavowal” 

will not suffice. Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir. 

2010) (citation omitted). 

 Although “less significant than the intrinsic record in determining the legally operative 

meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the 

relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises 

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may help the Court understand the underlying technology and the manner in which one skilled in 

the art might use claim terms, but such sources may also provide overly broad definitions or may 

not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may 

aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory, 

unsupported assertions by experts as to the definition of a claim term are not useful.” Id. 

Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in 

determining how to read claim terms.” Id.

 The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a 

patent’s claims, viewed in light of the specification and prosecution history, inform those skilled 

in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig 

Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a 

legal conclusion that is drawn from the court’s performance of its duty as the construer of patent 

claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) 

(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134 

S. Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co. 

v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). 

ANALYSIS 

Agreed Claim Terms 

 In their August 9, 2024 P.R. 4-3 Joint Claim Construction Statement (Dkt. #45, at p. 2) and 

in their October 29, 2024 P.R. 4-5(d) Joint Claim Construction Chart (Dkt. #72, Ex. A, at pp. 26–

35), the parties submitted the following agreed-upon constructions, which the Court hereby adopts 

as agreed-upon: 

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Term Agreed Construction 

“simultaneously visually emulate, via one or more 

profile display windows” 

(’192 Patent, Claims 1, 60) 

“emulate simultaneously, and display one 

or more windows showing resources of the 

mobile device that are available to the 

application” 

“simultaneously visually simulate, via one or more 

profile display windows” 

(’678 Patent, Claim 1) 

“simulate simultaneously, and display one 

or more windows showing resources of the 

mobile device that are available to the 

application” 

“simulate, via one or more profile display 

windows” 

(’864 Patent, Claim 1) 

“simulate, and display one or more 

windows showing resources of the mobile 

device that are available to the application” 

“one or more profile display windows” 

(’192 Patent, Claims 1, 60; 

’864 Patent, Claim 1; 

’678 Patent, Claim 1) 

“one or more windows showing resources 

of the mobile device that are available to 

the application” 

“configured to” 

(’192 Patent, Claims 1–2, 12–13, 60, 65; 

’864 Patent, Claims 1, 8, 17; 

’678 Patent, Claims 1) 

“actually programmed to” 

Disputed Claim Terms 

1. “simulate” and “emulate” 

“simulate” 

(’192 Patent, Claims 1, 3, 12–13; 

’864 Patent, Claim 1; 

’678 Patent, Claims 1, 3, 12–13; 

’811 Patent, Claims 1, 8, 22, 24; 

’579 Patent, Claims 19–20, 33) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

“emulate” “represent features of”; 

different than emulate 

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“emulate” 

(’192 Patent, Claims 1, 60; 

’811 Patent, Claim 26) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning “model the hardware [of]” 

(Dkt. #45, Ex. A, at pp. 2–3; id., Ex. B, at p. 3 & 7; Dkt. #64, at p. 5; Dkt. #72, Ex. A, at pp. 1–7). 

 a. The Parties’ Positions 

 Plaintiff argues that “‘[s]imulate’ and ‘emulate’ are interchangeable terms in the context of 

the patents-in-suit, and both terms should be given the same plain and ordinary meaning.” (Dkt. 

#64, at p. 5). Plaintiff submits that this was the Court’s finding in prior cases, and Plaintiff also 

argues that “Chase improperly asks the Court to limit the meanings of these terms to example 

embodiments, even though Chase does not allege disclaimer or express definition.” (Id., at pp. 5–

6). Further, Plaintiff argues that Defendant’s interpretation of these terms is inconsistent with how 

the terms are used in the claims. (Id., at pp. 8–9). 

 Defendant responds that “Wapp violates basic claim-construction principles by treating the 

two different terms as having the same meaning without revealing what it contends that meaning 

to be.” (Dkt. #66, at p. 2). Defendant also emphasizes that in Claim 26 of the ’811 Patent, for 

example, the patentee used “emulate” and “simulate” within 20 words of each other, which 

Defendant argues weighs heavily against interpreting those terms as being interchangeable. (Id., 

at pp. 2–3). Defendant further argues, as to Claims 9–11 of the ’864 Patent, that “[t]he claims’ 

explicit usage of two different terms—‘simulate’ and ‘emulate’—with respect to two different 

objects—‘real users’ and ‘real user behavior’—refutes Wapp’s contention.” (Id., at p. 4.) Finally, 

Defendant argues that the use of different terms in different claims weighs against, not in favor of, 

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finding that the terms have the same meaning. (Id., at p. 5) (citing Aspex Eyewear, Inc. v. Marchon 

Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). 

 As for the meaning of “emulate,” Defendant argues that the claims consistently use 

“emulate” with reference to hardware characteristics. (Id., at p. 6). Defendant also argues that 

“Wapp’s own dictionary definitions make clear that ‘emulate’ involves modeling something 

deeper than the surface features of the target system, namely, the system’s hardware.” (Id.) 

(citation omitted). Defendant also notes prosecution history in which “issued claim 1 (numbered 

claim 44 during prosecution) originally recited ‘emulate . . . a plurality of hardware 

characteristics,’” and “[a]fter the PTO’s notice of allowance, the inventor amended the claim to 

recite ‘emulate . . . a plurality of network characteristics.’” (Id., at p. 7) (citations omitted). 

Defendant highlights that “Wapp previously told this Court [that] ‘emulate’ only remains in this 

claim due to an ‘editing error.’” (Id., at pp. 7–8). 

 As for the meaning of “simulate,” Defendant argues that “the claims in the ’192, ’864, and 

’678 patents consistently use ‘simulate’ to refer to ‘network characteristics,’ (’864 patent, cl. 1; 

’678 patent, cl. 1), or ‘a network connection state,’ (’192 patent, cl. 1).” (Id., at p. 8). Defendant 

also argues that “the specification describes using a ‘simulator’ to simulate network 

characteristics,” and “contemporaneous technical dictionaries confirm JPMC’s construction.” 

(Id.) (citations omitted). 

 As to Plaintiff’s remaining arguments, Defendant argues, for example, “that an emulator 

can ‘simulate’ does not mean that the verb ‘emulate’ and the verb ‘simulate’ are interchangeable.” 

(Id., at p. 9). 

 Plaintiff replies that “Chase asks the Court to reverse its previous correct constructions of 

these terms, but Chase brings nothing new to the table.” (Dkt. #71, at p. 1). Plaintiff also reiterates 

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that “‘[s]imulate’ and ‘emulate’ are interchangeable throughout the intrinsic record . . .” and that 

“[i]f an emulator can include a simulator and a simulator can include an emulator, then these two 

concepts must be equivalent.” (Id., at pp. 1 & 2). 

 In a supplemental submission permitted by the Court, Defendant argues that the 

specification does not use “simulate” with reference to hardware but rather discloses a hardware 

emulator than can interact with a simulator, and “the emulator and the simulator remain separate 

components with separate functions.” (Dkt. #77, at p. 2) (citing ’192 Patent at 11:5–11). 

Defendant urges that “[o]nly after emulation occurs and the model is generated, can its 

functionality be simulated.” (Id.) 

 b. Analysis 

 Defendant submits authority that “a patent’s express purpose of the invention informs the 

proper construction.” Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1326 (Fed. Cir. 2023). The 

Background section of the patents-in-suit notes that different devices have different resources and, 

for example, “an application that plays correctly on the NOKIA 7610 may not play correctly on 

the NOKIA 6600 due to th[e] drop in inherent resources.” ’192 Patent at 1:49–51. The Court took 

this background context into account in Micro Focus and does so again here. 

 As to the present case, Claims 1 and 16 of the ’192 Patent, for example, recite (emphasis 

added): 

1. A system for developing an application for a mobile device comprising: 

 a software authoring interface configured to simultaneously visually 

emulate, via one or more profile display windows, a plurality of network 

characteristics indicative of performance of the mobile device when executing the 

application; wherein the software authoring interface is further configured to 

simulate a network connection state encountered by the mobile device. 

* * * 

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16. The system of claim 1, wherein the software authoring interface has access to 

real-time interaction with network operators to measure and emulate network 

characteristics. 

As another example, Claim 26 of the ’811 Patent recites (emphasis added): 

26. The medium of claim 24, wherein the instructions simulate one or more network 

events that occur when interacting with a wireless network, wherein a user can 

create scripts to emulate actions of real user behavior to determine the performance 

of the application, or the network, or both. 

 In Micro Focus, Plaintiff proposed that no construction was necessary, and the defendants 

there proposed that “simulate” meant “imitate” (or, alternatively, “approximately represent”) and 

that “emulate” meant “mimic” (or, alternatively, “precisely represent”). Micro Focus at 17. The 

Court found that “the patentee used the terms ‘simulate’ and ‘emulate’ interchangeably” and 

construed “simulate” to mean “emulate” and construed “emulate” to have its plain meaning. Id.

at 25. 

 Although Defendant correctly argues that the Court’s prior claim construction is not 

binding in the present case, Defendant does not persuasively justify departing from the analysis 

and constructions set forth therein. See id. at 21–25. 

 In reaching its conclusion in Micro Focus, the Court considered intrinsic evidence as well 

as extrinsic evidence. See id. at 19–25. The Court considered various authorities, such as that “the 

use of both terms in close proximity in the same claim gives rise to an inference that a different 

meaning should be assigned to each.” Bancorp Servs., LLC v. Hartford Life Ins. Co., 359 F.3d 

1367, 1373 (Fed. Cir. 2004). In the present case, Defendant likewise cites authority that using 

different terms in similar claims can weigh against finding interchangeability. See Apple Inc. v. 

Omni MedSci, Inc., No. 2023-1034, 2024 WL 3084509, at *4 (Fed. Cir. June 21, 2024); see also 

Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (“The fact 

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that the two adjacent claims use different terms in parallel settings supports the district court’s 

conclusion that the two terms were not meant to have the same meaning . . . .”) (citation omitted). 

The Court in Micro Focus also considered, however, that the inference “is not conclusive; 

it is not unknown for different words to be used to express similar concepts, even though it may 

be poor drafting practice.” Bancorp, 359 F.3d at 1373; see Power Mosfet Techs., L.L.C. v. Siemens 

AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“[W]hile interpretations that render some portion of 

the claim language superfluous are disfavored, where neither the plain meaning nor the patent 

itself commands a difference in scope between two terms, they may be construed identically.”) 

 Defendant cites prosecution history in which the patentee amended application claim 44 of 

the ’192 Patent (which issued as Claim 1 of the ’192 Patent) so as to replace “emulate . . . a plurality 

of hardware characteristics” with “emulate . . . a plurality of network characteristics.” Defendant 

emphasizes that Plaintiff stated in Micro Focus that this was an “editing error”: 

Wapp agrees with Defendants that the use of “emulate” to refer to “network 

characteristics” in claim 1 of the ’192 patent was an editing error during 

prosecution. . . . That claim should recite the term “simulate” to refer to “network 

characteristics.” Whether the Court corrects the relevant language or finds that 

claim invalid for lack of written description, as Defendants have raised, is an issue 

for later adjudication. 

(Dkt. #66, Ex. A, Pl.’s Suppl. Submission Regarding Claim Construction, at p. 3 n.1). 

 Defendant’s reliance on Plaintiff’s statement in Micro Focus is unpersuasive because the 

Court disagreed with the parties; the Court instead construed “simulate” to mean “emulate” and 

construed “emulate” to have its plain meaning. See Micro Focus at 19–25. Further, Plaintiff’s 

statement in Micro Focus regarding how the specification “generally” uses these terms does not 

support any narrowing of the scope of either term. (Dkt. #66, Ex. A, Pl.’s Suppl. Submission 

Regarding Claim Construction, at p. 3) (“As both parties have noted, the patent claims and 

specification generally use the term ‘emulate’ to refer to a ‘mobile device’ and the term ‘simulate’ 

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to refer to ‘network characteristics.’”). Also of note, in Wells Fargo the parties agreed to adopt 

the Court’s Micro Focus construction by construing “simulate” and “simulating” as meaning 

“emulate” and “emulating,” respectively, and by construing “emulate” to have its plain meaning. 

Wells Fargo at 8. 

Plaintiff’s discussion of Claims 9, 10, and 11 of the ’864 Patent in the present case is further 

persuasive. Claim 9 of the ’864 Patent recites “defining one or more virtual users to simulate real 

users.” Claim 10, which depends from claim 9, recites “the one or more virtual users emulate 

actions of real user behavior.” Claim 11, which depends from claim 10, also recites “emulate real 

user behavior.” These claims thus use “simulate” and “emulate” interchangeably. Defendant’s 

attempt to rebut this by distinguishing between “real users” and “real user behavior”—as to which 

Defendant’s expert opines that “behavior” here refers to behavior of the hardware in response to 

user actions—is unpersuasive. (Dkt. #66, Ex. H, Aug. 9, 2024 van der Weide Decl. ¶¶ 96, 110–

111). 

 Defendant does not otherwise persuasively support its assertion that “emulate” is limited 

to “hardware.” Defendant emphasizes instances in which the specification uses “emulate” or 

“emulator” with reference to hardware characteristics, such as processor, storage, memory, or 

display. See ’192 Patent at 5:49–54, 5:61–6:13 & 8:36. Defendant’s argument is undercut by 

other disclosures, such as disclosure of “simulated functionality of model 102 (e.g., simulating 

additional handset functionality and/or network functionality).” Id. at 10:58–62. The opinions of 

Defendant’s expert in this regard are unpersuasive. (See Dkt. #66, van der Weide Decl. at ¶ 107) 

(“[T]he capabilities of the mobile device emulator and the network simulator remain distinct: the 

emulator models hardware (of a mobile device), and the simulator represents features (of a 

network). At most, the emulator could also simulate (i.e., represent features of the mobile device 

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via emulation), but the simulator is never described to model hardware of any kind. In other words, 

the emulator can emulate and simulate, but the simulator can only simulate and cannot 

‘emulate.’”). 

 At the November 8, 2024 claim construction hearing, the Court permitted Defendant to 

submit a short post-hearing brief to further respond to the Court’s question at the hearing regarding 

whether any evidence suggests that the word “simulate” cannot be used in the context of hardware. 

Defendant frames its supplemental submission as being based on “the Court invited a supplemental 

response regarding evidence that the word ‘simulate’ does not refer to hardware.” (Dkt. #77, at 

p. 1). Defendant concludes its submission by stating that “there is no disclosure within the 

Asserted Patents suggesting that the term ‘simulate’ is used in connection with mobile device 

hardware.” (Id., at p. 2). The Court believes that, more precisely, its inquiry was directed to 

whether any evidence precludes “simulate” from referring to hardware. In any event, although 

Defendant’s supplemental submission ably cites distinctions in the specification between 

particular disclosed emulators and simulators (see, e.g., ’192 Patent at 10:17–23 & 11:5–11), 

Defendant still does not persuasively show any reason to preclude “simulate” from potentially 

relating to hardware. 

Moreover, the Modern Dictionary of Electronics (7th ed. 1999) cited by Plaintiff in the 

present case, wherein the definition of “simulate” concludes with “See emulate,” and vice versa, 

although insufficient by itself to find interchangeable usage in the patents-in-suit, is at least 

somewhat further persuasive. (Dkt. #64, Ex. 11 at 257, 697). 

The dictionary definitions cited by Defendant are not inconsistent with finding that the 

patentee used “simulate” and “emulate” interchangeably. (See Dkt. #66, Ex. B, The IBM 

Dictionary of Computing 234, 626 (JPMC-00166573–74) (defining “emulate” as “[t]o imitate one 

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system with another, primarily by hardware, so that the imitating system accepts the same data, 

executes the same programs, and achieves the same results as the imitated system”; defining 

“simulate” as “[t]o imitate one system with another, primarily by software, so that the imitating 

system accepts the same data, executes the same computer programs, and achieves the same results 

as the imitated system”) (emphasis added); id., Ex. C, IEEE Standard Dictionary of Electrical and 

Electronics Terms 328, 902 (JPMC-0166581–82) (defining “emulation” as “[t]he imitation of all 

or part of one computer system by another, primarily by hardware, so that the imitating computer 

system accepts the same data, executes the same programs, and achieves the same results as the 

imitated system”; defining “simulation” as: “The representation of selected characteristics of the 

behavior of one physical or abstract system by another system. In a digital computer system, 

simulation is done by software, for example, (A) the representation of physical phenomena by 

means of operations performed by a computer system, (B) the representation of operations of a 

computer system by those of another computer system.”) (emphasis added). 

Also, although the IBM Dictionary notes that “simulate” “contrast[s] with emulate” (id., 

Ex. B) (JPMC-00166574), relying on this distinction in a particular dictionary definition would be 

disfavored. See Phillips, 415 F.3d at 1322 (“[a] claim should not rise or fall based upon the 

preferences of a particular dictionary editor”). 

 The Court therefore hereby construes these disputed terms as set forth in the following 

chart: 

Term Construction 

“simulate” “emulate” 

“emulate” Plain meaning 

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2. “application” 

“application” 

(’192 Patent, Claims 1, 60–61, 65; 

’864 Patent, Claims 1, 8, 13; 

’678 Patent, Claims 1, 21; 

’811 Patent, Claims 1–2, 9, 22, 26; 

’579 Patent, Claims 15–16, 20) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning “frame-based application” 

(Dkt. #45, Ex. A, at p. 4; id., Ex. B, at p. 12; Dkt. #64, at p. 11; Dkt. #72, Ex. A, at pp. 7–15). 

 a. The Parties’ Positions 

 Plaintiff argues: “Chase improperly asks the Court to limit ‘application’ to example 

specification embodiments, without even alleging disclaimer or express definition, which would 

be required to deviate from the ordinary meaning. Contrary to Chase’s position, the intrinsic 

evidence demonstrates the patentee used ‘frame-based application’ when he meant ‘frame-based 

application,’ and used the broader term ‘application’ when referring to applications in general.” 

(Dkt. #64, at p. 11). 

 Defendant responds that “[f]rom start to finish, the asserted patents solely describe systems 

and methods concerning ‘frame based applications.’” (Dkt. #66, at p. 10; see id., at pp. 12–16). 

Defendant also argues that the specification refers to “frame based application 104” and 

“application 104” interchangeably. (Id., at 11). Defendant urges that “the ‘repeated description’ 

of frame based applications, the ‘repeated extolling of the virtues’ of frame based applications, 

and the ‘repeated criticisms’ of non-frame based applications ‘clearly point’ to the conclusion that 

‘application,’ as used in the asserted patents, means ‘frame based application.’” (Id., at p. 16) 

(citing UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 823–24 (Fed. Cir. 2016)). 

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 Plaintiff replies that “Chase and its expert concede a POSITA in 2005 knew about both 

frame-based applications and non-frame-based applications and knew about tools for developing 

both frame-based and non-frame-based applications.” (Dkt. #71, at p. 3) (citations omitted). 

Plaintiff also reiterates that not all of the embodiments are frame-based and, even if they were, 

Plaintiff argues, “this still would not meet the high standard for disavowal or express definition.” 

(Id., at p. 4) (citations omitted). Plaintiff analogizes, for example, that “[i]f I mention my blue 

pickup truck, then I later refer to it shorthand as a ‘truck,’ this does not imply the word ‘truck’ can 

only refer to blue pickup trucks.” (Id., at p. 5). 

 b. Analysis 

 Claim 31 of the ’864 Patent recites “[a] method for emulating a frame-based application.” 

This weighs against limiting the term “application” to being “frame-based” in the instances in 

which the claims do not specify “frame-based.” See Phillips, 415 F.3d at 1314 (“Other claims of 

the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment 

as to the meaning of a claim term.”) (citation omitted). 

 Defendant’s reliance on disclosures of “application 104” as being frame-based are 

unpersuasive because those disclosures refer to a particular embodiment. See ’192 Patent at 4:53–

65, 4:66–5:4, 5:14–21, 7:12–14, 7:17–20 & 9:51–53. The Ironworks case cited by Defendant, 

wherein “[t]he specification refer[red] to ‘camera unit 14’ and its components as ‘camera 14a,’ 

‘optics 14b,’ and ‘image processing unit 14c,’” is not analogous. Ironworks Patents LLC v. 

Samsung Elecs. Co., No. 2020-1191, 798 F. App’x 621, 625–26 (Fed. Cir. Feb. 21, 2020). 

 Also, the specification refers to Java, .NET, and BREW as examples of mobile application 

development platforms (’192 Patent at 3:40–47), and Plaintiff’s expert persuasively submits that 

Java, .NET, and BREW can be used to develop applications that are not frame-based. (Dkt. #64, 

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Ex. 8, Aug. 9, 2024 Malek Decl. ¶ 151). The opinions of Defendant’s expert, such as that the 

provisional patent application purportedly disparages Java, .NET, and BREW, are unpersuasive. 

(Dkt. #66, Ex. H, Aug. 9, 2024 van der Weide Decl. ¶ 145). In particular, the provisional 

application discussed by Defendant’s expert refers to a feature that is absent in Java, .NET, and 

BREW, but this does not demonstrate that the patentee disparaged Java, .NET, or BREW or said 

anything to suggest that Java, .NET, and BREW were outside the scope of the term “application.” 

 Finally, as to Defendant’s argument that “the asserted patents never disclose mechanisms 

for profiling data or displaying resource utilization and availability that do not use a frame based 

application” (Dkt. #66, at p. 13) (citation omitted), this argument perhaps might bear upon issues 

of enablement or written description but does not warrant limiting the term “application” to the 

disclosed embodiments. 

 The UltimatePointer decision relied upon by Defendant does not compel any narrowing of 

“application.” UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816 (Fed. Cir. 2016). In 

UltimatePointer, the Federal Circuit construed “handheld device” as being a “direct-pointing 

device” (as contrasted with an indirect pointing device that interacted with a sensor rather than 

with the screen), noting: “Taken together, the repeated description of the invention as a directpointing system, the repeated extolling of the virtues of direct pointing, and the repeated criticism 

of indirect pointing clearly point to the conclusion that the ‘handheld device’ in [the] claims . . . is 

limited to a direct-pointing device.” Id. at 823. 

 In quoting UltimatePointer, Defendant conspicuously omits the phrase “[t]aken together” 

and omits the reference to “repeated criticism of indirect pointing.” (Dkt. #66, at p. 15). In the 

present case, as noted above, Defendant does not demonstrate disparagement of non-frame-based 

applications. Defendant’s reliance on UltimatePointer is unavailing. 

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 Plaintiff also persuasively distinguishes the other authorities relied upon by Defendant 

because those cases involved definitions or disavowals rather than the question, as here, of whether 

the patentee consistently used a term to have a narrower meaning than it would otherwise have. 

See Ironworks, 798 F. App’x at 625 (“a camera unit as expressly defined in the specification 

includes a camera, optics, and an image processing unit”); see also Edwards Lifesciences LLC v. 

Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) (“the specification defines ‘malleable’ to exclude 

any substantial resilience, and that definition overrides any ordinary meaning”); Poly-Am L.P. v. 

API Indus., Inc., 839 F.3d 1131, 1137 (Fed. Cir. 2016) (“the inventor intended to disavow any 

claim scope encompassing short seals that are not inwardly extended”); Renishaw PLC v. Marposs 

Societa’ per Azoni, 158 F.3d 1243, 1249–52 (Fed. Cir. 1998) (“the definition selected by the patent 

applicant controls”). 

 The Court therefore hereby expressly rejects Defendant’s proposed construction, and no 

further construction is necessary. 

 The Court accordingly hereby construes “application” to have its plain meaning. 

3. “system for [developing/testing] an application for a mobile device” 

“system for testing an application for a mobile device” 

(’864 Patent, Claim 1; 

’678 Patent, Claim 1) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

The preamble is limiting; plain meaning Not limiting 

“system for developing an application for a mobile device” 

(’192 Patent, Cl. 1) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

The preamble is limiting; plain meaning Not limiting 

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(Dkt. #45, Ex. A, at p. 1; id., Ex. B, at p. 1; Dkt. #64, at p. 14; Dkt. #72, Ex. A, at pp. 22–24). 

 At the November 8, 2024 hearing, the parties rested on their briefing without oral argument 

as to these terms. 

 a. The Parties’ Positions 

 Plaintiff argues that, in prior cases, the Court properly found that these preambles are 

limiting because they provide antecedent basis and recite essential structure. (Dkt. #64, at p. 15). 

 Defendant responds that Plaintiff fails to meet its burden to overcome the presumption that 

the preambles are not limiting. (Dkt. #66, at p. 17). Defendant argues that “courts routinely hold 

preambles are not limiting even when part of the preamble provides antecedent basis,” and “[h]ere, 

nothing in the preamble language limits the configuration of the software.” (Id.) (citations 

omitted). Defendant further argues that Plaintiff relies upon phrases that relate to intended use, 

not configuration, and “‘[s]oftware,’ by its very nature, is not structural.” (Id., at 18) (citation 

omitted). 

 Plaintiff replies that “these preambles recite specific structural relationships between the 

‘system,’ ‘testing/development,’ the ‘application,’ and the ‘mobile device’ that are not repeated in 

the bodies of the claims.” (Dkt. #71, at p. 6) (citation omitted). Plaintiff also reiterates that “these 

preambles are limiting because they provide antecedent basis for two claim terms.” (Id., at p. 7). 

 In their P.R. 4-5(d) Joint Claim Construction Chart, the parties noted that they “have agreed 

to rest on the briefs for this disputed term.” (Dkt. #72, Ex. A, at p. 22). 

 b. Analysis 

In general, a preamble limits the invention if it recites essential structure or steps, 

or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes[, 

Inc. v. Hewlett-Packard Co.], 182 F.3d [1298,] 1305 [(Fed. Cir. 1999)]. 

Conversely, a preamble is not limiting “where a patentee defines a structurally 

complete invention in the claim body and uses the preamble only to state a purpose 

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or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 

1550, 1553 (Fed. Cir. 1997). 

Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). 

 Claim 1 of the ’192 Patent recites (emphasis added): 

1. A system for developing an application for a mobile device comprising: 

 a software authoring interface configured to simultaneously visually 

emulate, via one or more profile display windows, a plurality of network 

characteristics indicative of performance of the mobile device when executing the 

application; 

 wherein the software authoring interface is further configured to simulate a 

network connection state encountered by the mobile device. 

 

Claim 1 of the ’864 Patent, for example, recites (emphasis added): 

1. A system for testing an application for a mobile device comprising: 

 software configured to simulate, via one or more profile display windows, 

a plurality of network characteristics indicative of performance of the mobile device

when executing the application; wherein the network characteristics are based on 

data of interaction with networks in non-simulated environments. 

 

 In Micro Focus, the Court cited authority regarding preambles providing antecedent basis, 

and the Court found that these preambles are limiting. See Micro Focus at 11–13 (citing Eaton 

Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the 

body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may 

act as a necessary component of the claimed invention.”)). In Wells Fargo, the parties agreed that 

these preambles are limiting. Wells Fargo at 8. 

 The Court reaches the same conclusion again here. The “developing” and “testing” are not 

“independent” parts of these preambles and are not “merely duplicative of limitations in the body 

of the claim.” TomTom, Inc. v. Adolph, 790 F.3d 1315, 1323–24 (Fed. Cir. 2015); cf. Proveris 

Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the 

image data’ clearly derives antecedent basis from the ‘image data’ that is defined in greater detail 

in the preamble as being ‘representative of at least one sequential set of images of a spray 

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plume.’”). Further, these preambles “serve[] to focus the reader on the invention that is being 

claimed” and “state[] the framework of the invention.” On Demand Mach. Corp. v. Ingram Indus., 

Inc., 442 F.3d 1331, 1343 (Fed. Cir. 2006). 

 The Court therefore hereby finds that the preambles of Claim 1 of the ’864 Patent, 

Claim 1 of the ’678 Patent, and Claim 1 of the ’192 Patent are limiting and have their plain 

meaning.

4. “the connection simulation” 

“the connection simulation” 

(’192 Patent, Claim 4) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at p. 5; id., Ex. B, at p. 14; Dkt. #64, at p. 17; Dkt. #72, Ex. A, at pp. 20–22). 

 a. The Parties’ Positions 

 Plaintiff argues that “Claim 2’s initial reference to ‘one or more connection simulations’ 

carries either a singular or plural meaning, and subsequent use of the definite article ‘the’ to refer 

back to it simply reinvokes that same ‘one or more’ meaning.” (Dkt. #64, at p. 18) (citing Baldwin 

Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). 

 Defendant responds that “‘the connection simulation’ in claim 4 lacks any explicit 

antecedent basis because claim 2 recites a generic set of ‘one or more connection simulations.’” 

(Dkt. #66, at p. 29). Defendant also argues that “[t]he inventor’s explicit use of the language ‘one 

or more connection simulations’ in claims 8 and 9 confirms that claim 4, which does not employ 

such language, cannot limit the ‘one or more connection simulations’ collectively.” (Id.) (citation 

omitted). 

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 Plaintiff replies that “‘[t]he connection simulation’ reinvokes the plural ‘one or more’ 

meaning of its antecedent basis—the ‘one or more connection simulations’ in claim 2.” (Dkt. #71, 

at p. 7) (citation omitted). 

 b. Analysis 

 Claims 2 and 4 of the ’192 Patent recite (emphasis added) 

2. The system of claim 1, wherein the software authoring interface is configured 

to enable a user to select from one or more connection simulations for testing how 

well mobile content performs on the mobile device. 

 

* * * 

 

4. The system of claim 2, wherein the connection simulation includes one or more 

profiles. 

 

 The recital of “one or more connection simulations” is, in patent parlance, equivalent to 

reciting “a connection simulation,” and the Federal Circuit has established that a subsequent use 

of the definite article, “the,” as in “the connection simulation,” invokes the same “one or more” 

meaning. Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) 

(“Because the initial indefinite article (‘a’) carries either a singular or plural meaning, any later 

reference to that same claim element merely reflects the same potential plurality.”). Also, the 

recital of a user “select[ion] in Claim 2 does not give rise to any indefiniteness at least because 

Claim 4 refers generally to “the connection simulation,” not necessarily a selected connection 

simulation. Defendant’s reliance on the recital of “the one or more connection simulations” in 

Claims 8 and 9 (which depend from Claim 2) is unpersuasive and tends to reinforce, rather than 

rebut, the reasonable clarity of Claim 4. The patentee simply used more than one permissible way 

to refer back to the recital of “one or more connection simulations” recited in Claim 2. 

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 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument and 

finds that the antecedent basis for “the connection simulation” in Claim 4 of the ’192 Patent 

is the recital of “one or more connection simulations” in Claim 2 of the ’192 Patent. 

5. “the monitored resource” 

“the monitored resource” 

(’579 Patent, Claims 15, 27) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at p. 8; id., Ex. B, at p. 25; Dkt. #64, at p. 18; Dkt. #72, Ex. A, at p. 24). 

 At the November 8, 2024 hearing, the parties rested on their briefing without oral argument 

as to this term. 

 a. The Parties’ Positions 

 Plaintiff argues that Defendant’s argument regarding purported lack of antecedent basis 

“does not make sense because ‘the monitored resource’ can refer to a plurality of resources; it 

means ‘the one or more monitored resources’ and it refers back to the ‘one or more resources’ 

whose utilization is being monitored.” (Dkt. #64, at p. 19) (citing Baldwin, 512 F.3d at 1342). 

Moreover, Plaintiff agues, “[t]he specification provides multiple examples of monitoring resources 

and displaying them.” (Id., at p. 19). 

 Defendant responds that “Claim 15 recites ‘display a representation of one or more of the 

monitored resources,’ but the claim does not recite a monitored resource from which ‘the 

monitored resource’ could reasonably depend.” (Dkt. #66, at p. 30). Defendant also argues that 

“[t]here is no indication anywhere in the specification which ‘resource’ is ‘the monitored resource’ 

recited in claim 15.” (Id.). 

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 Plaintiff replies that “‘[t]he monitored resource’ reinvokes the plural ‘one or more’ 

meaning of its antecedent basis, i.e., the ‘one or more resources’ whose utilization is being 

monitored.” (Dkt. #71, at p. 7) (citation omitted). 

 In their P.R. 4-5(d) Joint Claim Construction Chart, the parties noted that they “have agreed 

to rest on the briefs for this disputed term.” (Dkt. #72, Ex. A, at p. 22). 

 b. Analysis 

 The analysis for this term is essentially the same as for “the connection simulation” in 

Claim 4 of the ’192 Patent, discussed above. The recital of “display a representation of one or 

more of the monitored resource” in Claims 15 and 27 of the ’579 Patent refers back to “monitor

utilization of one or more resources of the mobile device over time by an application running on 

a simulation of the mobile device.” To whatever extent this antecedent basis is deemed to be not 

explicit, this antecedent basis relationship is implicit because monitoring utilization of one or more 

resources gives rise to one or more monitored resources, and “the monitored resource” 

encompasses both the singular and the plural. See Baldwin, 512 F.3d at 1342 (quoted above); see 

also Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1371 (Fed. Cir. 2006) 

(holding that “an anode gel comprised of zinc as the active anode component” provided implicit 

antecedent basis for “said zinc anode”); see also Ex Parte Porter, 25 U.S.P.Q. 2d (BNA) 1144, 

1145 (B.P.A.I. 1992) (“The term ‘the controlled fluid’ . . . finds reasonable antecedent basis in the 

previously recited ‘controlled stream of fluid . . . .’”); Fisher-Price, Inc. v. Graco Children’s 

Prods., No. 05-1258, 154 F. App’x 903, 909 (Fed. Cir. Nov. 4, 2005) (“[a] claim is not invalid for 

indefiniteness if its antecedent basis is present by implication”) (citations omitted). 

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 Finally, to the extent Defendant argues that this term lacks support in the specification, 

Defendant’s argument perhaps might pertain to the requirements of written description and 

enablement but does not raise any issue of indefiniteness. 

 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument and 

finds that the antecedent basis for “the monitored resource” is the recital of “monitor 

utilization of one or more resources.”

6. “network characteristics indicative of performance of the mobile device [when 

executing the application]” and “operator network characteristics including at least 

bandwidth availability indicative of performance of the mobile device when 

executing the application” 

“network characteristics indicative of performance of the mobile device [when executing 

the application]” 

(’192 Patent, Claim 1; 

’864 Patent, Claim 1) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

“operator network characteristics including at least bandwidth availability indicative of 

performance of the mobile device when executing the application” 

(’678 Patent, Claim 1) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at pp. 5–6; id., Ex. B, at pp. 16 & 18–19; Dkt. #64, at p. 21; Dkt. #72, Ex. A, at 

pp. 15–17). 

 a. The Parties’ Positions 

 Plaintiff argues that “[a] POSITA would readily understand these terms, and Chase’s 

artificial confusion is the result of its nonsensically narrow interpretation of the claims.” (Dkt. 

#64, at p. 21). Plaintiff submits that “[b]oth the specification and the claims give specific examples 

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(e.g., bandwidth availability and receiving a message) of ‘network characteristics indicative of 

performance of the mobile device,’ demonstrating a POSITA would readily understand the 

meaning of this phase.” (Id., at p. 23). 

 Defendant responds that “[s]killed artisans would not understand how ‘network 

characteristics’ could indicate performance of a mobile device because ‘network characteristics’ 

are not related to mobile devices,” and “[t]he specification nowhere describes mobile devices as 

having ‘network characteristics.’” (Dkt. #66, at pp. 25 & 26) (citations omitted). 

 Plaintiff replies that “[a]nyone who has ever used a mobile phone knows how network 

characteristics relate to mobile device performance—mobile device applications tend to perform 

badly on slow networks and well on fast networks, for example.” (Dkt. #71, at pp. 7–8) (citation 

omitted). Plaintiff further argues: 

Chase insinuates this claim limitation is an error because it “arises from an 

amendment made during prosecution of the ’192 patent.” Resp. at 25. But the 

patentee deliberately repeated the same “network characteristics indicative of 

performance of the mobile device” language in the subsequent claims of the ’864 

and ’678 Patents. This repeated and deliberate claim language is not an error, and 

it is amply supported by the specification. Br. at 23. 

(Dkt. #71, at p. 8). 

 b. Analysis 

 Claim 1 of the ’192 Patent, for example, recites (emphasis added): 

1. A system for developing an application for a mobile device comprising: 

 a software authoring interface configured to simultaneously visually 

emulate, via one or more profile display windows, a plurality of network 

characteristics indicative of performance of the mobile device when executing the 

application; wherein the software authoring interface is further configured to 

simulate a network connection state encountered by the mobile device. 

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 In Wells Fargo, the Court construed various “network characteristics” and “indicative of” 

terms in several claims, including the claims here at issue in the present case, to have their plain 

meaning. Wells Fargo at 11–37. 

 Defendant emphasizes that during prosecution of the ’192 Patent, after allowance, the 

patentee amended Claim 1 of the ’192 Patent from reciting “a plurality of hardware characteristics 

indicative of performance of the mobile device” to reciting “a plurality of network characteristics 

indicative of performance of the mobile device.” Ex. D at 8. Yet, the patentee repeated this 

“network characteristics” language in the claims of the ’864 Patent and the ’678 Patent, which 

undercuts Defendant’s suggestion that the language at issue was a mistake. 

 Further, “indicative of” has a broad plain meaning and can be reasonably read as 

encompassing various correlations between network characteristics and mobile device 

performance, such as relatively high network bandwidth resulting in relatively fast device 

performance and relatively low network bandwidth resulting in relatively slow device 

performance. The opinion of Plaintiff’s expert is further persuasive in this regard. (Dkt. #64, 

Ex. 8, Aug. 9, 2024 Malek Decl. ¶ 109). The opinions of Defendant’s expert to the contrary are 

unpersuasive. (See Dkt. #66, Ex. H, Aug. 9, 2024 van der Weide Decl. ¶¶ 147–165). Defendant’s 

reliance on authority that the “claims are nonsensical in the way a claim to extracting orange juice 

from apples would be, and are thus indefinite,” is unavailing. Trs. of Columbia Univ. v. Symantec 

Corp., 811 F.3d 1359, 1367 (Fed. Cir. 2016). 

 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument. 

Defendant presents no alternative proposed construction, and no further construction is necessary. 

 The Court accordingly hereby construes these disputed terms as set forth in the following 

chart: 

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Term Construction 

“network characteristics indicative of 

performance of the mobile device [when 

executing the application]” 

(’192 Patent, Claim 1; ’864 Patent, Claim 1) 

Plain meaning 

“operator network characteristics including at 

least bandwidth availability indicative of 

performance of the mobile device when 

executing the application” 

(’678 Patent, Claim 1) 

Plain meaning 

7. “on the mobile device” 

“on the mobile device” 

(’192 Patent, Claim 60) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at p. 7; id., Ex. B, at p. 21; Dkt. #64, at p. 24; Dkt. #72, Ex. A, at p. 20). 

 a. The Parties’ Positions 

 Whereas “Chase argues indefiniteness because the first use of ‘the mobile device’ is 

preceded by the word ‘the’ instead of ‘a,’” Plaintiff argues that “whether the term uses ‘a’ or ‘the’ 

is of no import here because its meaning is unambiguous in light of the claim language and 

specification.” (Dkt. #64, at p. 24) (citations omitted). Plaintiff urges that “[a]s in [In re] 

Downing[, 754 F. App’x 988, 996 (Fed. Cir. 2018)], there is only one mobile device this claim is 

talking about—the mobile device executing the application.” (Dkt. #64, at p. 24). Plaintiff also 

argues that the specification supports this understanding. (Id., at 25.) “In the alternative,” Plaintiff 

argues, “this claim is not indefinite because the Court can correct ‘on the mobile device’ to ‘on a

mobile device’ as an obvious minor typographical error.” (Id., at 26.) 

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 Defendant responds that “the claim fails to supply any antecedent basis for ‘on the mobile 

device,’” and “[f]rom the plain language, it is then unclear if the phrase ‘on the mobile device’ 

limits ‘a system,’ or ‘an application,’ or ‘a user,’ or ‘a photo,’ or ‘to modify.’” (Dkt. #66, at p. 23). 

Defendant argues that this is “not a minor typographical mistake or clerical error” and therefore 

Plaintiff cannot seek a judicial correction. (Id., at p. 25). 

 Plaintiff replies: 

Chase’s feigned confusion is premised entirely on the fact that “mobile device” is 

preceded by the article “the.” A claim does not need to be optimally drafted to be 

definite; it just needs to provide “reasonable certainty.” There is only one valid 

interpretation of this claim, and Chase does not propose any alternative 

interpretation: “the first instance of ‘the mobile device’ provides antecedent basis 

for the second instance.” Malek Dec. ¶133. Chase does not dispute that this is the 

only way to interpret the claim—it is therefore reasonably certain and not indefinite. 

(Dkt. #71, at p. 8). Alternatively, Plaintiff argues that judicial correction is appropriate because 

the correction is not subject to reasonable debate and because the prosecution history does not 

suggest a different interpretation. (Id., at p. 9). 

 b. Analysis 

 Claim 60 of the ’192 Patent recites (emphasis added): 

60. A system comprising: 

 an application configured to enable a user to modify a photo on the mobile 

device, wherein the application is developed using a software authoring platform 

configured to simultaneously visually emulate, via one or more profile display 

windows, a plurality of hardware characteristics indicative of performance of the 

mobile device when executing the application. 

The specification discloses, for example: 

In one embodiment, a method emulates and profiles an application to play on a 

mobile device that includes a Flash Player. Characteristics defining performance of 

the mobile device are loaded. The mobile device is emulated using a model based 

upon the characteristics. 

’192 Patent at 2:13–17. 

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 The Downing and Lite-Netics cases cited by Plaintiff are analogous. See In re Downing, 

754 F. App’x 988, 996 (Fed. Cir. 2018) (“a claim term that lacks an antecedent basis may, but does 

not necessarily, render a claim indefinite”; “[C]laim 1’s recitation of one end user could only refer 

to the end user using the product. Who else could the end user be? We therefore agree with 

Downing that the claims are not indefinite for lacking an antecedent basis for ‘the end user’”) 

(citation omitted); see also Lite-Netics v. Nu Tsai Capital, No. 8:22-CV-314, 2024 WL 4136271, 

at *32–*33 (D. Neb. Sept. 10, 2024) (“dependent claim 5 introduces the term ‘the wire clamp’ 

without antecedent basis,” but “the context provided by the specification makes plain what ‘the 

wire clamp’ is, despite the absence of that claim term from independent claim 1 from which claim 5 

depends”). 

 Here, “an application configured to enable a user to modify a photo on the mobile device” 

is reasonably clear as referring to the mobile device that the user is using. Defendant’s suggestion 

that “it is . . . unclear if the phrase ‘on the mobile device’ limits ‘a system,’ or ‘an application,’ or 

‘a user,’ or ‘a photo,’ or ‘to modify’” is unpersuasive. (Dkt. #66, at p. 23). 

 Defendant’s reliance on a purported absence of any disclosure in the specification 

regarding a photo editing application for a mobile device appears to be incorrect (see ’192 Patent 

at 8:5–14) (“image manipulation”), but in any event Defendant’s argument is unpersuasive because 

the claim language is reasonably clear on its face. 

 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument. 

Defendant presents no alternative proposed construction, and no further construction is necessary. 

 The Court accordingly hereby construes “on the mobile device” to have its plain 

meaning. 

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8. “select one or more characteristics associated with a mobile device” 

“select one or more characteristics associated with a mobile device” 

(’579 Patent, Claim 15) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at p. 7; id., Ex. B, at p. 23; Dkt. #64, at p. 26; Dkt. #72, Ex. A, at pp. 17–18). 

 a. The Parties’ Positions 

 Plaintiff argues that, whereas the Court previously found Claim 1 of the ’579 Patent 

indefinite, “the Court’ prior holding was based on the fact that ’579 [C]laim 1 does not recite 

selecting any characteristics, but ’579 Claim 15 does explicitly recite “select one or more 

characteristics” and also makes clear which characteristics are selected, namely, “one or more 

characteristics associated with a mobile device.” (Dkt. #64, at p. 28). 

 Defendant argues that this phrase is indefinite because “it is not reasonably clear to skilled 

artisans what characteristics or combinations of characteristics (if any) can be selected.” (Dkt. 

#66, at p. 19). Defendant submits that whereas “Wapp explicitly cites to an embodiment where a 

user selects a mobile device and asks the Court to infer that this represents selecting characteristics

associated with that device,” “[t]his is the same inference the Court previously rejected” in prior 

cases. (Id.) (citations omitted). Defendant urges that “[s]electing characteristics is not the same 

as selecting mobile device type.” (Id.). 

 Plaintiff replies by reiterating its opening arguments. (See Dkt. #71, at p. 9). Plaintiff also 

argues that Defendant’s argument regarding lack of support in the specification “is a red herring 

that goes to enablement or written description, not indefiniteness,” and “[r]egardless, the 

specification amply supports this term.” (Id., at pp. 9–10) (citation omitted). Plaintiff also submits 

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that “the first instance of ‘a mobile device’ appears in the preamble, which is not limiting (and 

Chase does not argue it is).” (Id., at p. 10). 

 b. Analysis 

 In Wells Fargo, the Court found that Claim 1 of the ’579 Patent (which is not asserted in 

the present case) was indefinite because “the selected characteristics” lacked antecedent basis, 

finding that the claim was “unclear as to which characteristics are selected.” Wells Fargo at 37–

42; see id. at 40 (“the ‘simulate ...’ limitation refers to the ‘mobile device type’ (rather than the 

‘characteristics’) as being ‘selected’”). 

 Claim 15 of the ’579 Patent, by contrast, expressly recites selecting characteristics 

(emphasis added): 

15. A non-transitory, computer-readable medium comprising software instructions 

for developing an application to be run on a mobile device, wherein the software 

instructions, when executed, cause a computer to: 

select one or more characteristics associated with a mobile device; 

 monitor utilization of one or more resources of the mobile device over time 

by an application running on a simulation of the mobile device; 

 display a representation of one or more of the monitored resource; 

 correspond the utilization of a specific displayed resource at a given time 

with one or more functions, or code, or both of the application responsible for that 

utilization; 

 initiate transmission of the application on a simulation of the mobile device, 

or to the physical mobile device, or both. 

 The specification provides examples of “Mobile Device Characteristics” in Table 1, which 

is reproduced here: 

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See ’192 Patent at 6:11–13 (“Table 1 Mobile Device Characteristics shows exemplary 

characteristics that may be used to specify performance of model 102 to emulate mobile device 

114.”); see also id. at 6:13–47 (discussing Table 1). Defendant’s argument that the specification 

“only supports selecting a mobile device with associated characteristics,” even if accepted as true, 

is unpersuasive because the claim language at issue is sufficiently clear on its face. The opinions 

of Defendant’s expert in this regard are likewise unpersuasive. (See Dkt. #66, Ex. H, Aug. 9, 2024 

van der Weide Decl. at ¶ 190). 

 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument. 

Defendant presents no alternative proposed construction, and no further construction is necessary. 

 The Court accordingly hereby construes “select one or more characteristics associated 

with a mobile device” to have its plain meaning. 

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9. “the physical mobile device” 

“the physical mobile device” 

(’579 Patent, Claims 15–16) 

Plaintiffs’ Proposed Construction Defendant’s Proposed Construction 

Plain meaning Indefinite 

(Dkt. #45, Ex. A, at p. 8; id., Ex. B, at p. 26; Dkt. #64, at p. 28; Dkt. #72, Ex. A, at pp. 18–20). 

 a. The Parties’ Positions 

 Plaintiff argues that the meaning of this claim language is reasonably clear because “all 

instances of ‘a mobile device’ refer to the same physical mobile device—the device whose 

characteristics are being selected is the same device that is being simulated,” and “[s]ubsequent 

references to ‘a simulation of the mobile device’ refer to a computer simulation of that physical 

mobile device.” (Dkt. #64, at p. 29). 

 Defendant responds that “Claim 15 is indefinite because it recites different types of mobile 

devices but provides no antecedent basis for the claimed ‘the physical mobile device.’” (Dkt. #66, 

at p. 20; see id., at pp. 20–23). 

 Plaintiff replies that “Claim 15 uses the word ‘physical’ to emphasize that this mobile 

device is real rather than simulated,” and “[t]he claim’s prior recitation of ‘a mobile device’ refers 

to the same physical device.” (Dkt. #71, at p. 10). 

 b. Analysis 

 Claim 15 of the ’579 Patent, by contrast, expressly recites selecting characteristics 

(emphasis added): 

15. A non-transitory, computer-readable medium comprising software instructions 

for developing an application to be run on a mobile device, wherein the software 

instructions, when executed, cause a computer to: 

 select one or more characteristics associated with a mobile device; 

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 monitor utilization of one or more resources of the mobile device over time 

by an application running on a simulation of the mobile device; 

 display a representation of one or more of the monitored resource; 

 correspond the utilization of a specific displayed resource at a given time 

with one or more functions, or code, or both of the application responsible for that 

utilization; 

 initiate transmission of the application on a simulation of the mobile device, 

or to the physical mobile device, or both. 

 Although “the physical mobile device” lacks explicit antecedent basis, the recital of 

“a mobile device,” as contrasted with the recital of “a simulation of the mobile device,” provides 

reasonably clear implicit antecedent basis. See, e.g., Energizer, 435 F.3d at 1371; Ex Parte Porter, 

25 U.S.P.Q. 2d at 1145; Fisher-Price, 154 F. App’x at 909. The opinion of Plaintiff’s expert is 

further persuasive in this regard. (Dkt. #64, Aug. 9, 2024 Malek Decl. ¶¶ 170–171) (“a POSITA 

would recognize that a mobile device refers to a physical object”; “[a] POSITA would understand 

that a ‘simulation of the mobile device’ is different than ‘a mobile device’”). This is also consistent 

with disclosures in the specification that use the phrase “mobile device” to refer to a physical 

device. See, e.g., ’192 Patent at 1:24–27 (“It is estimated that nearly 700 million new mobile 

devices will be shipped in 2005, with a new handset model being launched every other day.”) 

 This understanding does not amount to “rewriting the claims,” as Defendant argues. 

Synchronoss Tech., Inc. v. Dropbox, Inc., 987 F.3d 1358, 1367 (Fed. Cir. 2021). Rather, this 

understanding is apparent on the face of the claim, which is reinforced by the specification as noted 

above. Also, disclosure regarding characteristics for “each mobile device type” (’192 Patent at 

6:41–42), cited by Defendant, likewise is not inconsistent with understanding the recital of “a 

mobile device” in this claim as referring to a physical device. 

 Further, Defendant notes that the claim previously recited “one or more physical versions 

of the mobile device” instead of “the physical mobile device” (Dkt. #66, Ex. F, Nov. 18, 2019 

Amendment and Response to Non-Final Office Action at 4 (JPMC-00006142)), but this 

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prosecution history does not undermine the readily understandable meaning that is evident on the 

face of the issued claim, as discussed above. 

 Finally, the recital of “developing an application to run on a mobile device,” in the 

preamble, does not give rise to any uncertainty. Plaintiff argues that the preamble of this claim is 

not limiting, and Defendant’s claim construction brief does not suggest otherwise. The antecedent 

basis is the recital of “a mobile device” in the body of the claim. Alternatively, even if the preamble 

were found to be limiting, a plain reading of the claim is that these two instances of “a mobile 

device” are coextensive. 

 The Court therefore hereby expressly rejects Defendant’s indefiniteness argument and 

finds that the antecedent basis for “the physical mobile device” is the recital of “a mobile 

device” in the first limitation of the body of Claim 15 of the ’579 Patent.

CONCLUSION 

 The Court adopts the constructions set forth in this opinion for the disputed terms of the 

patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each 

other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered 

to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by 

the Court, in the presence of the jury. Any reference to claim construction proceedings is limited 

to informing the jury of the definitions adopted by the Court. 

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