Opinion
C.A. No. 18-588-LPS
09-21-2020
Citrix Systems, Inc. Plaintiff, v. Workspot, Inc. Defendant.
Denise S. Kraft, Brian A. Biggs, Erin E. Larson, DLA PIPER LLP, Wilmington, DE Michael Strapp, Safraz Ishmael, DLA PIPER LLP, Boston, MA Attorneys for Plaintiff Steven J. Balick, Andrew C. Mayo, ASHBY & GEDDES, P.A., Wilmington, DE Ronald F. Lopez, NIXON PEABODY LLP, San Francisco, CA Jennifer Hayes, NIXON PEABODY LLP, Los Angeles, CA Matthew A. Werber, Angelo J. Christopher, NIXON PEABODY LLP, Chicago, IL Attorneys for Defendant
Denise S. Kraft, Brian A. Biggs, Erin E. Larson, DLA PIPER LLP, Wilmington, DE Michael Strapp, Safraz Ishmael, DLA PIPER LLP, Boston, MA Attorneys for Plaintiff Steven J. Balick, Andrew C. Mayo, ASHBY & GEDDES, P.A., Wilmington, DE Ronald F. Lopez, NIXON PEABODY LLP, San Francisco, CA Jennifer Hayes, NIXON PEABODY LLP, Los Angeles, CA Matthew A. Werber, Angelo J. Christopher, NIXON PEABODY LLP, Chicago, IL Attorneys for Defendant MEMORANDUM OPINION September 21, 2020
Wilmington, Delaware STARK, U.S. District Judge :
Plaintiff Citrix Systems, Inc. ("Citrix" or "Plaintiff") initiated this action against Defendant Workspot, Inc. ("Workspot" or "Defendant") on April 19, 2018, alleging, inter alia, infringement of U.S. Patent Nos. 7,594,018 ("the '018 patent"), 7,949,677 ("the '677 patent"), 8,135,843 ("the '843 patent"), 8,341,732 ("the '732 patent"), and 10,063,595 ("the '595 patent") (collectively, "patents-in-suit"). (See D.I. 1, 218) The technologies of the patents-in-suit generally relate to cloud-based virtual desktop solutions.
Presently before the Court is the issue of claim construction. The parties have submitted claim charts (D.I. 319, 363), technology tutorials (D.I. 362), and claim construction briefs with supporting expert declarations (D.I. 322-24, 335-38). The Court held a claim construction hearing through videoconferencing on June 5, 2020. (D.I. 366) ("Tr.")
I. LEGAL STANDARDS
The ultimate question of the proper construction of a patent is a question of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct 831, 837 (2015) (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-91 (1996)). "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) (citation and internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction." Id. at 1324. Instead, the court is free to attach the appropriate weight to appropriate sources "in light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning . . . [which is] the meaning that the term would have to a person of ordinary skill in the art in the question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. At 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). The patent "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." Vitronics Corp. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular claims terms," the context of the surrounding words of the claim also must be considered. Phillips, 415 F.3d at 1314. Furthermore, "[o]ther claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment . . . [b]ecause claim terms are normally used consistently throughout the patent." Id. (internal citation omitted).
It is likewise true that "[d]ifference among claims can also be a useful guide . . . . For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1314-15 (internal citation omitted). This "presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should not be read into the independent claim." SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003).
It is also possible that "the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography governs." Phillips, 415 F.3d at 1316. It bears emphasis that "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
In addition to the specification, a court "should also consider the patent's prosecution history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996). The prosecution history, which is "intrinsic evidence," "consists of the complete records of the proceedings before the [Patent and Trademark Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d at 1317. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower that it would otherwise be." Id.
"In some cases, . . . the district court will need to look beyond the patent's intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science of the meaning of a term in the relevant art during the relevant time period." Teva, 135 S. Ct. at 841. "Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Markman, 52 F.3d at 980. For instance, technical dictionaries can assist the court in determining the meaning of a term to those of skill in the relevant art because such dictionaries "endeavor to collect the accepted meanings of terms used in various fields of science and technology." Phillips, 415 F.3d at 1318. In addition, expert testimony can be useful "to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and testimony [are] generated at the time of and for the purposes of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be useful to the court," it is "less reliable" than intrinsic evidence, and its consideration "is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583),
Finally, "[t]he construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (quoting Modine Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1550 (Fed. Cir. 1996)). II. CONSTRUCTION OF DISPUTED TERMS
The Court's analysis is organized in a fashion similar to that followed in Citrix's Opening Construction Brief. (See D.I. 322 at iv-xx) After addressing several terms to be construed (Terms 1-7, 9-14, 16), the Court turns to the Means-Plus-Function Disputes and the Ordering of the Method Steps (Terms I-IX). Prior to the June 5th hearing, the parties reached agreement on Term 8 ("a resource") and Term 15 ("enterprise agent"). (D.I. 364)
| Term 1: "web service directory"('843 patent, claims 1, 2, 9, 12, 20, 22, 23) |
|---|
| Citrix Proposal:Plain and ordinary meaning or in the alternative searchable directory of information for webservices |
| Workspot Proposal:a directory of information for web services |
| Courta directory of information for web services |
The '843 patent is directed to methods and systems for providing access to a remote application to an application client or end user application by, in part, "receiving, by a client, from a web service directory on a content server, a service access point associated with a first application, the service access point identifying a web server." ('843 patent at 10:21-36) (emphasis added) The parties dispute whether the "web service directory" includes non-searchable directories: Citrix contends it does not while Workspot argues it does. (D.I. 322 at 1; D.I. 323 at 15) The Court agrees with Workspot.
As Workspot explains, Citrix's construction would improperly read out of the claims an embodiment disclosed in the specification. The patent discloses an embodiment in which "client 105 . . . queries a service name from the web service directory 145," which a person of ordinary skill in the art ("POSA") would understand to be a searchable web service directory, as well as an as an embodiment in which "the user of the client 105 navigates the web service directory 145 until locating a particular service name that the user of the client 105 was attempting to find," which a POSA would understand to be a non-searchable web service directory. ('843 patent at 7:43-49) (emphasis added) The patent uses "navigates" and "searches" differently (id. at 1:43-49), so Citrix's contention that the "navigates" embodiment is subsumed within its proposed searchable limitation is unpersuasive.
| Term 2: "authenticating the user"('018 patent, claims 1, 29) |
|---|
| Citrix Proposal:Plain and ordinary meaning or in the alternative verifying the user |
| Workspot Proposal:verifying that the user is who they claim to be via the received authentication information |
| Courtverifying that the user is who they claim to be via the received authentication information |
During inter partes review proceedings on the '018 patent, Citrix submitted an expert declaration opining that the term "authentication" "typically refers to verifying the identity of an object or individuals as being what it purports to be." (D.I. 319 Ex. 7 at *249, ¶ 82) (emphasis added) The Court agrees with Workspot that this statement, along with other intrinsic evidence in the specification (see, e.g., '018 patent at 7:20-21 ("The authentication module 130 is responsible for authenticating a user that attempts to log on to the server 106 . . . . The authentication model then authenticates the user based on the user-provided authentication information")), supports its proposed construction.
Like the parties, the Court considers the issues presented in connection with Term 3 to be the same as those presented in connection with Terms 4 and 5. (See D.I. 322 at 2-4; D.I. 323 at 1-4) Therefore, the Court's analysis and decision with respect to Term 3 applies with equal force to Terms 4-5.
The parties dispute whether "one of . . . and" is disjunctive or conjunctive. (D.I. 322 at 2-4; D.I. 323 at 1-4) The Court agrees with Citrix that these limitations are disjunctive.
As Citrix acknowledges, "one of A, B, and C" implies a conjunctive list under general grammatical guidelines, meaning that one of A, one of B, and one of C would have to be selected. (See Tr. at 31; see also SuperGuide v. Direct TV Enters., Inc., 358 F.3d 870, 886 (Fed. Cir. 2004) (analyzing "common treatise on grammar," which teaches that "an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term")) But the result is sometimes different in the context of claim construction, as is the case here. See, e.g., Joao Bock Transaction Sys., LLC v. First Nat'l Bank, 2013 WL 3199981, at *6-7 (N.D. Ill. June 24, 2013) (construing " one of a limitation and a restriction" disjunctively as "one or more of the items in the list" or "either both of the items in the list," as a conjunctive construction "would render a substantial portion of [the] claims meaningless") (emphasis added); see also Sun Pharm. Indus., Ltd. v. Eli Lilly and Co., 611 F.3d 1381, 1388 (Fed. Cir. 2011) (explaining that courts should construe claim terms "in light of the entirety of the patent, including its specifications," thereby attempting to "stay true to the claim language and most naturally align[] with the patent's description of the invention").
Here, a conjunctive reading of the claim term would render a substantial portion of claims 1, 17, and 29 meaningless and be contrary to the specification. The claimed invention is aimed at multiple steps of granting remote access to a certain user; it does not appear to contemplate the same user simultaneously being required to, permitted to, and forbidden from accessing a particular session, as would be the result of Workspot's conjunctive reading. (See Tr. at 32; D.I. 322 at 2) Instead, various disclosures in the specification support a disjunctive reading. (See D.I. 322 at 3) For example, the '018 patent discloses an embodiment of "[o]ne rule stored in the rule source 128 [that] might require or forbid automatic connection to disconnected application sessions 118." ('018 patent at 7:6-8 (emphasis added); see also id. at 7:8-18, 9:38-48)
Workspot has not persuaded the Court that the prosecution history leads to a different result. It is true that the patentee amended "required, permitted, or forbidden" to "required, permitted, and forbidden" at the request of the Examiner. (Tr. at 43; see also D.I. 319 Ex. 7 at CTX00002389-240) But, as Workspot acknowledges, "[w]e don't know precisely why the Examiner wanted it to change or to and. We would be speculating to do so." (Tr. at 44; see also id. at 34) The Court does not find the amendment to have been a clear and unmistakable disclaimer, particularly given that the change from "or" to "and" could be read as not changing the meaning at all (particularly since the amendment was made after claim 1 was initially allowed with the disjunctive "or," see D.I. 335 at 3). See generally Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016) ("The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a 'clear and unmistakable' disclaimer that would have been evident to one skilled in the art."); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (instructing that prosecution disclaimer should not be applied "where the alleged disavowal of claim scope is ambiguous"). In other words, the impact (if any) of the amendment is ambiguous, which is insufficient to constitute a clear and unmistakable disavowal.
Workspot also argues that the challenged terms are indefinite, but Workspot has failed to show by clear and convincing evidence that a POSA would not know, with reasonable certainty, the scope of the claims. See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). To the contrary, the specification provides strong support for the view that a POSA would understand the scope of the term in the way Citrix posits. (See '018 patent at 7:6-18, 9:38-48) The parties have provided conflicting expert declarations on whether a POSA, considering the terms in the context of rules for providing access to computer resources, would understand the scope of "required," "permitted," and "forbidden" with reasonable certainty. (Compare D.I. 338 ¶¶ 7-9 (Smith Ans. Decl.) with D.I. 323 Ex. E ¶ 37 (Labruyére Decl.)) There is not clear and convincing evidence in the record (at least at this point) of indefiniteness.
| Term 6: "desktop computing environment"('677 patent, claims 1, 15) |
|---|
| Citrix Proposal:Plain and ordinary meaning or in the alternative a computing environment that includes one ormore graphical user interface components, such as windows, desktop icons, backgrounds,folders, and pull-down menus |
| Workspot Proposal:a display of a combination of graphical user interface components, such as of graphical userinterface components, such as windows, desktop icons, backgrounds, folders, and pull-downmenus |
|---|
| Courta computing environment that includes one or more graphical user interface components, suchas windows, desktop icons, backgrounds, folders, and pull-down menus |
Given what remains in dispute in connection with this term, Citrix's proposal is best supported by the intrinsic evidence. The term "desktop" is defined in the '677 patent specification to mean "[t]he collection of graphical user interface ["GUI"] components displayed to a user by the display" ('677 patent at 153:51-53), calling out as examples of GUIs windows, desktop icons, background folders, and pull-down menus (see id. at 31:41-43, 153:51-53). Moreover, the specification explains that a "collection" of GUI components can include "one or more components of a [GUI], such as windows and pull-down menus." (Id. at 153:49-51)
| Term 7: "plurality of levels of access" / "level of access"('677 patent, claims 1, 15) |
|---|
| Citrix Proposal:Plain and ordinary meaning or in the alternative plurality of access levels/access levels |
| Workspot Proposal:a plurality of allowable actions associated with the resources and/or a plurality of methods ofexecution of the resource |
| Courtplurality of access levels/access levels |
The'677 patent teaches that conventional prior art methods "typically requir[ed] that the access control decision result in either a denial or grant of access to a resource" and, "[i]n the event of a grant, the [conventional] methods can provide only full and complete disclosure of the resource," ('677 patent at 1:40-49) The specification goes on to describe embodiments of the invention in which "[i] the enumeration of resources includes an enumeration of levels of access to the resource . . . [ii] a plurality of allowable actions associated with the resource is enumerated. . . [and iii] a plurality of methods of execution of the resource is enumerated." (Id. at 38:14-19) Citrix's proposed construction properly captures all of these disclosed embodiments. Moreover, during prosecution, Citrix overcame certain prior art on the basis that the prior art "grants only one level of access to a resource; otherwise, the system denies access altogether." (D.I. 319 Ex. 8 at *25-26) Citrix's statements did not clearly and unambiguously disclaim binary access embodiments, contrary to Workspot's contention (D.I. 323 at 9-10; D.I. 335 at 9-10), but instead support the conclusion that binary access and plurality levels of access are included (D.I. 335 at 6).
| Terms 9-12: [first/second] terms('677 patent, claims 1, 15) | |
|---|---|
| Term 9: level of access | Citrix Proposal:Plain and ordinary meaning or in the alternative a [first/second]level of access chosen from a plurality of levels of access |
| Workspot Proposal:a second level of access that is different than the first level ofaccess | |
| Term 10: desktopcomputing environment | Citrix Proposal:Plain and ordinary meaning or in the alternative a [first/second]desktop computing environment provided by one or more virtualmachines |
| Workspot Proposal:a second desktop computing environment that is different thanthe first desktop computing environment | |
| Term 11: virtualmachines | Citrix Proposal:Plain and ordinary meaning or in the alternative a first and secondvirtual machines are not necessarily different |
| Workspot Proposal:a second virtual machine that is different than the first virtualmachine | |
| Term 12: executionmachine | Citrix Proposal:Plain and ordinary meaning or in the alternative a first and secondexecution machine are not necessarily different |
| Workspot Proposal:a second execution machine that is different than the firstexecution machine | |
| CourtCitrix's alternative proposed constructions are adopted for each of the foregoing terms, each ofwhich do not require separate and distinct levels of access, desktop computing environments,virtual machines, or execution machines |
While the parties agree that the "first request" and "second request" limitations are distinct, they disagree as to whether the "first" and "second" levels of access, desktop computing environment, virtual machines, and execution machines can be the same. (D.I. 322 at 6-7; D.I. 323 at 11-12) The Court agrees with Citrix that these terms do not require separate and distinct levels of access, desktop computing environments, virtual machines, or execution machines.
As Citrix points out, the '677 patent specification teaches that levels of access are specific to the data received from a particular client machine; the "level of access" provided to a first client machine in response to its request for access to a resource may be (but need not be) different than the "level of access" provided to a second client machine in response to its request for access to the same resource. (See D.I. 335 at 7; see also '677 patent at 38:7-18 ("In [one] embodiment, a plurality of allowable actions associated with the resource is enumerated."); id. at 35:43-63))
The Court's conclusion is further supported by unrebutted testimony from Citrix's expert, Dr. Smith, who opines that a POSA would understand the patent's disclosure to mean that "if the policy engine includes five different levels of access that may be provided to client machines in response to requests for access to resources, it is possible that the policy engine could provide access level 3 to both the first and second client machines in response to a request from those client machines for access to a particular resource." (D.I. 338 at ¶ 14)
Workspot's suggestion that the applicant's amendments adding "first" and "second" prior to "a computing environment," "a virtual machine," and "a client machine" requires its narrow construction is not persuasive. (See D.I. 323 at 12) (citing D.I. 319 Ex. 8 at CTX00000257-65) Rather, the Court agrees with Citrix that the words "first" and "second" are simply used to differentiate between a "first request" and a "second request" for access to a resource.
| Term 13: "the plurality of predetermined methods including a method for executing, onthe client machine or on a remote machine"('732 patent, claims 1, 20, 42) |
|---|
| Citrix Proposal:the plurality of predetermined methods includes a method for executing on the client machineor a method for executing on a remote machine |
| Workspot Proposal:the plurality of predetermined methods includes a method for executing on the client machineand a method for executing on a remote machine |
| Courtthe plurality of predetermined methods includes a method for executing on the client machineor a method for executing on a remote machine |
Claims 1, 20, and 42 of the '732 patent are directed to a method and systems relating to the execution of an application program, including the step of selecting, by a broker machine, one of a plurality of predetermined methods including a method for executing, on the client or on a remote machine, the requested application in a desktop computing environment provided by a virtual machine. ('732 patent at 234:62-235:26, 236:30-237:5, 238:21-52) The parties' dispute is whether both the "method for executing on the client machine" and the "method for executing on a remote machine" must be within the "plurality of predetermined methods," as Workspot contends, or whether it is sufficient that at least one of these methods be within the plurality of predetermined methods, as Citrix proposes. (D.I. 322 at 7-8; D.I. 323 at 13-14; see also Tr. at 90-98) The Court agrees with Citrix.
The claim language supports Citrix's position, as the claims use "or," as does Citrix, while Workspot would replace the claims' "or" with Workspot's preferred "and." The specification also supports Citrix, as the '732 patent specification includes an embodiment illustrating only amethod for executing on a client machine (see '732 patent at 39:25-31, 127:17-20), as well as another embodiment teaching only a method for executing on a remote machine (see id. at 39:31-35, 127:14-17). Workspot's proposal would read out these embodiments. (See Tr. at 91)
Workspot relies on the prosecution history, including especially the examiner's summary of a telephone interview, stating that the applicant interpreted a particular prior art reference as "teaching that either [method option] can be done rather than a decision." (D.I. 391 Ex. 10 at *22) This is not a clear and unambiguous disclaimer of claim scope, for reasons including that it is not even clear what was discussed during the interview. (See id.) It does appear that the examiner and applicant disagreed about whether the prior art taught a method of executing both locally and remotely, and the examiner noted that "[n]o particular agreement was reached." (Id.)
| Term 14: "only accessible by"('595 patent, claims 1, 21, 27) |
|---|
| Citrix Proposal:Plain and ordinary meaning or in the alternative access to secure container is limited to a clientdevice with a verified user and to the one or more applications associated with the enterprise |
| Workspot Proposal:Access to the secure container is exclusively limited to (i) a verified user of the one or moreapplications associated with the enterprise, and (ii) the enterprise applications themselves.Alternative: Indefinite. |
| Courtaccess to secure container is limited to a client device with a verified user and to the one ormore applications associated with the enterprise |
Claims 1, 21, and 27 include the limitation "wherein the secure container is only accessible by [i] the verified user and [ii] by the one or more applications associated with the enterprise." ('595 patent at 101:36-38) (emphasis added) Citrix contends that the term limits access to any verified user and not, as Workspot (more narrowly) counters, only to any verified user of the one or more applications associated with the enterprise. (D.I. 322 at 8; D.I. 323 at 17-19) The Court agrees with Citrix. (See Tr. at 19)
The '595 patent specification states that access to the secure container may be accessed "by applications 318 and other components of the mobile device 120." ('595 patent at 86:46-49) (emphasis added) It adds that "a document access policy can limit access to the file system 338" based on, among other things, "whether the user of the device 120 provide[s] credentials." (Id. at 86:51-59) An example is also provided whereby "the access manager 340 can enable enterprise applications installed on the mobile device 120 to access data stored in the container 336 and to prevent non-enterprise application[s] from accessing the data stored in the container 136." (Id. at 86:67-87:4) All of this intrinsic evidence supports the conclusion that (i) access to the container is not limited to verified users of enterprise applications or the applications themselves, (ii) any verified user of the client device can access the container, e.g., upon providing correct credentials, and (iii) applications associated with the enterprise can access the container. (See Tr. at 19)
| Term 16: "the secure container being encrypted"('595 patent, claims 1, 21, 27) |
|---|
| Citrix Proposal:certain files within the secure container are stored in encrypted form |
| Workspot Proposal:the secure container itself is encrypted |
| Courtcertain files within the secure container are stored in encrypted form |
Workspot insists that the secure container itself must be encrypted while Citrix contends that the claim limitation is satisfied if certain files within the container are stored in encrypted form. (D.I. 322 at 9; D.I. 323 at 19; D.I. 335 at 11; Tr. at 5-8) Again, the Court agrees with Citrix.
As Citrix points out, the specification does not show an example of a container itself being encrypted. (See Tr. at 5-6) A POSA would understand that files are secured if the files are secured, even if the container in which the files are contained is not itself secured. (See id. at 6) ("[I]f, as Workspot contends, [the] secure container itself were encrypted, [then] the encryption keys within the container would be inaccessible and could not be used by applications as described in the specification to encrypt files and other data.")
Citrix's proposed construction is also supported by Figure 3A, which depicts a secure document container 336 accessing manager 340 governing access to the file system 338. (See id. at Fig. 3A, 86:22-26, 86:46-49) In this way, Figure 3A teaches that installed software applications 318 "can be programmed to encrypt or decrypt documents stored or to be stored within the container 336." (Id. at 88:7-9) This is additional intrinsic evidence that the secure container is a repository for information that may be encrypted, not that the container itself must be encrypted.
III. MEANS-PLUS-FUNCTION DISPUTES
Means-plus-function limitations permit a patentee to claim an element of the invention in terms of the element's function without reciting the corresponding structure in the claim itself:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.35 U.S.C. § 112, ¶ 6. If a claim does not use the word "means," there is a presumption that means-plus-function claiming does not apply. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). The presumption may be overcome if the claim term recites a function without reciting sufficiently definite structure for performing that function. See Williamson, 792 F.3d at 1349. Courts may consider both intrinsic and extrinsic evidence to determine whether a claim limitation is "so devoid of structure that the drafter constructively engaged in means-plus-function claiming." Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011), rev'd on other grounds by Williamson, 792 F.3d at 1349.
To construe a means-plus-function claim term, the Court must first determine the claimed function. Then the Court is to "identify the corresponding structure in the written description of the patent that performs that function." Applied Med. Res. Corp. v. Us. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (internal citation omitted). Means-plus-function claims are statutorily limited to the structure disclosed in the patent specification that corresponds to the claimed function, and equivalents. See Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003). The identified structure is required to "permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal quotation marks omitted).
In cases where the claimed invention is computer-implemented, the structure identified in the specification must be more than a general-purpose computer or microprocessor, which "can be programmed to perform very different tasks in very different ways." Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Instead, a computer-implemented means-plus-function term must generally disclose a computer programmed to carry out an algorithm, in which case "the disclosed structure is not the general-purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm." Id. (internal quotation marks omitted); see also Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005). An exception to this rule arises when the claimed functions "can be achieved by any general-purpose computer without special programming." In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,1316 (Fed. Cir. 2011). This exception is a "narrow" one that applies "only in the rare circumstances where any general-purpose computer without any special programming can perform the function." Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364-65 (Fed. Cir. 2012).
| Terms A-C: "network module" / "authentication module" / "server process"('018 patent, claim 29) |
|---|
| Term A: "networkmodule for receivingauthenticationinformation associatedwith a user operating aclient computer" | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: receiving authentication information associated with auser operating a client computerStructure: a server (i) programmed with software executable onone of several computer operating systems, including withoutlimitation the Windows family of operating systems (MicrosoftCorporation), the MacOS family of operating systems (AppleComputer, Inc., Cupertino, Calif.), and Unix based operatingsystems (e.g., Solaris, Sun Microsystems, Sunnyvale, Calif.) orimplemented in hardware as application specific integrated circuits(ASICs), Read Only Memory (ROM) devices, or other digitalhardware circuitry; or (ii) programmed to receive user informationover standard telephone lines, LAN or WAN links (using, e.g.,802.11, T1, T3, 56 kb, or X.25 protocols), broadband connections(using, e.g., ISDN, Frame Relay, or ATM protocols), Internetconnections, or wireless connections, or some combination of anyor all of the above |
|---|---|
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Function: receiving authentication information associated with auser operating a client computerStructure: (i) a server programmed with software executable onthe Windows family of operating systems, the MacOS family ofoperating systems, and Unix based operating systems, or (ii)application specific integrated circuits (ASICs), Read OnlyMemory (ROM) devices, or other digital hardware circuity, where(i) or (ii) are programmed to (a) receive authentication informationover one or more data networks or links and decrypt the receivedauthentication information or (b) receive authenticationinformation according to one of HTTP, Independent ComputingArchitecture (ICA) protocol, Remote Desktop Protocol (RDP), orCommon Gateway Protocol (GCP), wherein the data networkincludes standard telephone lines, LAN or WAN links (using802.11, T1, T3, 56 kb, or X.25 protocols), broadband connections(using ISDN, Frame Relay, or ATM protocol), and wirelessconnections, or a combination thereof | |
| Term B:"authentication modulefor authenticating the | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6 |
| user via theauthenticationinformation receivedfrom the user" | To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: authenticating the user via the authenticationinformation received from the userStructure: a server programmed with software executable on oneof several computer operating systems, including withoutlimitation the Windows family of operating systems (MicrosoftCorporation), the MacOS family of operating systems (AppleComputer, Inc., Cupertino, Calif.), and Unix based operatingsystems (e.g., Solaris, Sun Microsystems, Sunnyvale, Calif.) orimplemented in hardware as application specific integrated circuits(ASICs), Read Only Memory (ROM) devices, or other digitalhardware circuitry. |
|---|---|
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Function: authenticating the user via the authentication receivedfrom the userStructure: None; Indefinite | |
| Term C: "serverprocess forreestablishing the firstdisconnectedapplication" | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: reestablishing the first disconnected applicationStructure: a server programmed with software executable on oneof several computer operating systems, including withoutlimitation the Windows family of operating systems (MicrosoftCorporation), the MacOS family of operating systems (AppleComputer, Inc., Cupertino, Calif.), and Unix based operatingsystems (e.g., Solaris, Sun Microsystems, Sunnyvale, Calif.) orimplemented in hardware as application specific integrated circuits(ASICs), Read Only Memory (ROM) devices, or other digitalhardware circuitry. |
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Function: reestablishing the first disconnected applicationStructure: i) a server programmed with software executable on theWindows family of operating systems, the MacOS family ofoperating systems, and Unix based operating systems, or (ii)application specific integrated circuits (ASICs), Read Only |
| Memory (ROM) devices, or other digital hardware circuity, where(i) or (ii) are programmed to modify an entry in a data store toindicate that the user is connected to the first application sessionand to indicate from which client computer the user is connectedto the server | |
| Court:Not construed under 35 U.S.C. § 112, ¶ 6 |
|---|
Claim 29 claims a server for providing remote access to an application session, wherein the "server" comprises software processes programmed to perform particular functions, including: (1) a "network module" programmed to "receiv[e] authentication information associated with a user operating a client computer" (Term A); (2) an "authentication module" programmed to "authenticat[e] the user via the authentication information received from the user" (Term B); and (3) a "server process" programmed to "reestablish[] the first disconnected application" (Term C). ('018 patent at 14:41-62)
As the word "means" does not appear in claim 29, the parties agree that Section 112(6) is presumed not to apply to any of Terms A-C. (See Tr. at 60-61) In Workspot's view, the claim is a means-plus-function claim because a POSA would not understand "module" in Terms A and B and "process for" in Term C to convey a specific known structure. (See D.I. 323 at 4-6) The Court, however, agrees with Citrix that Workspot has failed to rebut the presumption that Terms A-C are not means-plus-function terms.
Terms A-C convey sufficiently definite structure. Figure 1 of the '018 patent depicts a "client-server computer system" with "server 106" containing a "network module 120" (Term A), an "authentication module 130" (Term B), and a "server process 122" (Term C). Figures 2 and 3 provide flowcharts showing how these processes and modules interact. See Apple Inc. v. Motorola Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (explaining that to POSA, "the 'structure' of computer software is understood through, for example, an outline of an algorithm, a flowchart, or a specific set of instructions of rules"); see also Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 2016 WL 1171496, at *3 (D, Del. Mar. 24, 2016). The specification goes on to disclose multiple embodiments of "server 106," including that the server can run specific operating systems (such as Mac OS X and Windows XP) and that the server can include multiple connected computers configured as a "server farm." (Id. at 2:28-29, 4:33-56) The specification also discloses structural embodiments for Terms A-C within the context of server 106. (See, e.g., id. at 4:57-5:17 ("networkmodule 120" communicates through specific protocols), 5:18-31 ("server process 122" can initiate new application sessions, disconnect client computers from application session, and detect client computer disconnection), 7:20-30 ("authentication module 130" transmits results of authentication process to server process 122)
Further supporting the Court's conclusion is the opinion of Citrix's expert, Dr. Hugh Smith, that the terms "module" and "process" are generally known in the art and would convey definite structure to a POSA. (See D.I. 324 at ¶¶ 12-18) Dr. Smith relies on the Fifth Edition of the Microsoft Computer Dictionary, which defines "module" as a noun meaning "a collection of routines and data structures that perform a particular task," and "process" as a noun meaning "[a] program or part of a program; a coherent sequence of steps undertaken by a program." (Id. Ex. A at 34, 42; see also Sound View Innovations, LLC v. Facebook, Inc., 2017 WL 2221177, at *10-11 (D. Del. May 19, 2017) (relying on Third Edition of the Microsoft Computer Dictionary to support proposition that "'[s]erver' has a well-known meaning to a [POSA] and connotes a definite structure"))
Taken together, the Court is not persuaded that Terms A-C within claim 29 do not sufficiently convey structure to a POSA such that Section 112(6) applies. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008-09 (Fed. Cir. 2018) (holding the terms "program" and "user interface code," despite their functional language, were not subject to Section 112(6) when viewed in the full context of the written description).
| Terms D-F: "broker machine" limitations('677 patent, claims 1, 15; '732 patent, claim 1) | |
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| Term D: "identifying,by a broker machine, afirst desktopcomputingenvironment alreadyassociated with theuser . . . establishing,by the broker machineresponsive to the firstgranted level of access,a connection betweenthe first clientmachine and the firstdesktop computingenvironment"('677 patent, claim 1) | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: (1) identifying a first desktop computing environmentalready associated with the user, and (2) establishing, responsive tothe first granted level of access, a connection between the firstclient machine and the first desktop computing environmentStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed functions,including but not limited to a general purpose computer, a generalpurpose server, file server, application server, appliance, networkappliance, gateway, application gateway, gateway server,virtualization server, deployment server, firewall, VPN server, oran application acceleration appliance. |
| WorkspotMeans plus function limitation under 35 U.S.C. § 112, ¶ 6Functions: (1) identifying a first desktop computing environmentalready associated with the user, and (2) establishing responsive tothe first granted level of access, a connection between the firstclient machine and the first desktop computing environmentStructure: None; Indefinite | |
| Term E: "a brokermachine that i)enumerates a firstdesktop computingenvironment... and ii)establishes a firstconnection . . ."('677 patent, claim 15) | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: (1) enumerating a first desktop computing environment(2) establishing a first connectionStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed functions,including but not limited to a general purpose computer, a generalpurpose server, file server, application server, appliance, networkappliance, gateway, application gateway, gateway server,virtualization server, deployment server, firewall, VPN server, or |
| an application acceleration appliance. | |
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Functions: (1) enumerating a first desktop computing environmentassociated with the client machine, and (2) establishing a firstconnection between the first client machine and the first desktopcomputing environment providing the resource according to thefirst granted level of accessStructure: None; Indefinite | |
|---|---|
| Term F: "selecting, bya broker machine, oneof a plurality ofpredeterminedmethods for executingthe requestedapplication . . . by . . . i)selecting the method ofexecution . . . ii)selecting the virtualmachine . . . iii)selecting an executionmachine . . . iv)launching the virtualmachine . . . v)launching the desktopcomputingenvironment . . . vi)launching therequested application. . ."('732 patent, claim 1) | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: selecting one of a plurality of predetermined methods forexecuting the requested application byi) selecting the method of execution responsive to the policy basedon at least the received user credentials,ii) selecting the virtual machine that can provide the desktopcomputing environment and an operating system in which toexecute the desktop computing environment,iii) selecting an execution machine executing a hypervisorproviding access to hardware resources required by the virtualmachine,iv) launching the virtual machine into the execution machine,v) launching the desktop computing environment into the executingoperating system on the execution machine, andvi) launching the requested application into the desktop computingenvironmentStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed functions,including but not limited to a general purpose computer, a generalpurpose server, file server, application server, appliance, networkappliance, gateway, application gateway, gateway server,virtualization server, deployment server, firewall, VPN server, oran application acceleration appliance. |
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Functions: selecting one of a plurality of predetermined methodsfor executing the requested application,i) selecting the method of execution responsive to the policy basedon at least the received user credentials, |
| ii) selecting the virtual machine that can provide the desktopcomputing environment and an operating system in which toexecute the desktop computing environment,iii) selecting an execution machine executing a hypervisorproviding access to hardware resources required by the virtualmachine,iv) launching the virtual machine into the execution machine,v) launching the desktop computing environment into the executingoperating system on the execution machine, andvi) launching the requested application into the desktop computingenvironmentStructure: None; Indefinite | |
| CourtNot construed under 35 U.S.C. § 112, ¶ 6 |
|---|
The parties dispute whether the term "broker machine" conveys sufficient structural meaning to a POSA. (D.I. 322 at 12-13; D.I. 323 at 6-7) As the word "means" does not appear in the claims in dispute, the burden is on Workspot to show that Section 112(6) applies. Workspot fails to meet this burden. Thus, Terms D-F are not subject to means-plus-function construction.
Intrinsic evidence indicates that "machine" has a sufficiently definite structure. For example, the '677 patent specification discloses that "broker machines" are a species of "remote machine 30," which in turn "may be servers, file servers, application servers, appliances, network appliances, gateways, application gateways, gateway servers, virtualization servers, deployment servers, or firewalls." ('677 patent at 13:8-11) Figures 7A, 7B, and 8 depict an embodiment in which the "broker server" - a term the specification uses interchangeably with "broker machine" (see id. at 3:57-59) - is on remote machine 30 and interacts with a separate structure. (See id. at 38:25-38) ("[T]he policy engine 706 transmits an assigned level of action applicable to a requested recourse to a remote machine 30 functioning as a broker server.").
Citrix's expert, Dr. Smith, again supports the Court's conclusion, opining that "broker" is a "common industry term used to mean a structure of an intermediate server that performs brokering function." (D.I. 324 at ¶ 24; see also Tr. at 65 (Citrix arguing that "broker machine" is "something that sits between a client and the resource that want to access")) Even Workspot's witnesses do not do not strongly undermine Dr. Smith's opinion. (See D.I. 323 Ex. 1 at ¶ 49 (Dr. LaBruyére, relying on IEEE dictionary definition, declaring that machine is "device such as a processor or computer"); D.I. 324 Ex. B at 349 (Workspot's founder and CEO, Amitabh Sinha, testifying (10 years after relevant filing date) that "broker machine" is "common industry term" and means "something sits between a client and the resource they want to access"))
| Terms G-I: "identification," "management," and "execution" component limitations('732 patent, claim 20) | |
|---|---|
| Term G: "anidentificationcomponent" / "selecting,by the identificationcomponent, an executionmachine . . ." | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: selecting an execution machine executing a hypervisorproviding access to hardware resources required by the virtualmachineStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed function,including but not limited to a general purpose computer, ageneral purpose server, file server, application server, appliance,network appliance, gateway, application gateway, gatewayserver, virtualization server, deployment server, firewall, VPNserver, or an application acceleration appliance. |
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Function: selecting an execution machine executing a hypervisorproviding access to hardware resources required by the virtualmachineStructure: None; Indefinite | |
| Term H: "a managementcomponent" / "selecting,by the virtual machinemanagement component, | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6: |
| the virtual machine . . ." | Function: (1) selecting the virtual machine that can provide thedesktop computing environment and an operating system inwhich to execute the desktop computing environment, and (2)establishing a connection between the client machine and thedesktop computing environmentStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed functions,including but not limited to a general purpose computer, ageneral purpose server, file server, application server, appliance,network appliance, gateway, application gateway, gatewayserver, virtualization server, deployment server, firewall, VPNserver, or an application acceleration appliance. |
|---|---|
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Function: selecting the virtual machine that can provide thedesktop computing environment and an operating system inwhich to execute the desktop computing environment, andestablishing a connection between the client machine and thedesktop computing environmentStructure: None; Indefinite | |
| Term I: "an executioncomponent" / "launching,by the executioncomponent, the virtualmachine . . ." and"launching, by theexecution component, thedesktop computingenvironment . . ." | Citrix Proposal:Not construed under 35 U.S.C. § 112, ¶ 6To the extent the Court construes under 35 U.S.C. § 112, ¶ 6:Function: (1) launching the virtual machine into the executingmachine, and (2) launching the desktop computing environmentinto the executing operating system on the execution machineStructure: a general purpose computing device or a softwarecomponent programmed to perform the claimed functions,including but not limited to a general purpose computer, ageneral purpose server, file server, application server, appliance,network appliance, gateway, application gateway, gatewayserver, virtualization server, deployment server, firewall, VPNserver, or an application acceleration appliance. |
| Workspot Proposal:Means plus function limitation under 35 U.S.C. § 112, ¶ 6Functions: launching the virtual machine into the executingmachine, and launching the desktop computing environment intothe executing operating system on the execution machine |
| Structure: None; Indefinite | |
| CourtNot construed under 35 U.S.C. § 112, ¶ 6 |
|---|
The parties dispute whether the "identification," "management," and "execution" components of claim 20 of the '732 patent convey sufficient structure to avoid a means-plus-function construction. (D.I. 322 at 13-14; D.I. 323 at 12-13) Again, the claims do not use the term "means," the presumption is that Section 112(6) applies, and Workspot has not rebutted that presumption.
Figure 13 and the accompanying disclosure in columns 50-52 of the specification make clear that the disputed components reside within the session management component, which in turn may reside on one or more machines. (See '732 patent at Fig. 13, 10:30-11:5, 13:25-41, 50:48-52:6) These disclosures describe software processes on a remote machine (such as a server) in communication over a network with the virtual machine, which, to a POSA, connotes sufficient structure.
Extrinsic evidence further supports this conclusion. Dr. Smith explains that a POSA would find in claim 20 a sufficiently detailed algorithm for how each of the structures interact. (See D.I. 338 ¶¶ 17-18) (opining on sub-steps (ii)-(v))
Workspot points out that the examiner initially considered these claim terms as being covered by Section 112(6) (see D.I. 319 Ex. 10 at *42-43, *69-70), but the examiner appears to have changed course after an interview in which the applicant stated that these terms were not intended to be interpreted as means-plus-function terms (see id. at *10). Regardless of the weight, if any, given to an applicant's subjective intent on this point, the Court concludes that the specification conveys sufficient structure with respect to disputed Terms G-I. See Zeroclick, LLC v. Apple Inc., 891 F.3d 1001, 1008 (Fed. Cir. 2018).
IV. ORDERING OF THE METHOD STEPS
To determine whether steps of a method claim must be performed in a particular order, courts look to whether the claims require, as a matter of logic or grammar, that the steps be performed in the order written; and, if not, then courts look to whether the specification directly or implicitly requires such a construction. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001); see also Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70; Personalized User Model LLP v. Google Inc., 2012 WL 295048, at *28 (D. Del. Jan. 25, 2012) ("If the invention could potentially be performed without going in the specific sequence, then the claim does not require an order of steps.").
| Terms I-II: "receive" / "direct" / "grant" limitations('677 patent, claims 1, 15) | |
|---|---|
| Term I: "(a) receiving, bya policy engine, a firstrequest . . . (b) directing,by the policy engine . . ."and "(c) granting, by thepolicy engine . . ." | Citrix Proposal:Plain and ordinary meaning; step (b) need not necessarily occurafter step (a) |
| Workspot Proposal:Step (b) must be performed after step (a) | |
| Term II: "i) receives afirst request . . . ii) directa first collection agent . .." and "iii) grants . . ." | Citrix Proposal:Plain and ordinary meaning; step (ii) need not necessarily occurafter step (i) |
| Workspot Proposal:Step (ii) must be performed after step (i) | |
| Court:Step (b)/(ii) must be performed after step (a)/(ii) |
The Court agrees with Workspot that for Terms I and II the second listed step of the method (step (b) or step (ii)) must be performed after the first listed step of the method (step (a) or step (i)).
Citrix agrees that step (c)/(iii) in Terms I-II must be performed after step (b)/(ii). (D.I. 363 at 3-4; D.I. 335 at 17)
Claim 1 of the '677 patent is directed to "a method for providing authorized remote access to resources on desktop computing environments provided by virtual machines" comprising the steps (a) "receiving, by a policy engine, a first request for access to a resource from a user at a first client machine" and (b) "directing, by the policy engine, a first collection agent to gather information about the first client machine." ('677 patent at 234:59-235:17) Claim 15 is similarly directed to a system with a policy engine that "i) receives a first request for access to a resource" and "ii) directs a first collection agent to gather information." (Id. at 236:45-238:12)
The logic and grammar of the claim language support an ordered construction. The policy engine in step (b)/(ii) gathers information " about the first client machine" - that is, the "first client machine" from step (a)/(i) from which access to a resource was first requested by a user. As Workspot explains, "logically, there must be a restriction on the relative timing of the receiving step, otherwise the claims would permit an absurd scenario where the collection agent [in step (b)/(ii)] gathers information about the first client machine, the policy engine grants the first level of access, and the broker machine establishes a connection for the first client machine before the user even requests access to the resource." (D.I. 323 at 11) (emphasis in original)
Given the Court's conclusion based on the logic and grammar of the claim language, the Court need not address Citrix's points based on the specification or the extrinsic evidence.
| Workspot Proposal:steps (a)-(d) must be performed in order |
|---|
| Court:Steps (c)-(d) are not required to be performed in that order |
The parties agree that Term III is illustrative of the disputes also presented by Terms IV-IX. (Tr. at 88-90) Therefore, the Court's analysis and ruling with respect to Term III apply with equal force to Terms IV-IX.
At this point, Citrix "does not take issue with Workspot's contention that elements (a) and (b) must be performed in the order as written." (D.I. 322 at 18; see also D.I. 363 at 2-4; Tr. at 76 (Citrix counsel: "We have conceded that B must take place after A . . . .") --------
Claim 1 of the '843 patent recites the following method:
A method of providing access to a remote application to an application client or end user application comprising:
('843 patent at 10:21-36)(a) receiving, by a client, from a web service directory on a content server, a service access point associated with a first application, the service access point identifying a web server;
(b) receiving, by the client, from the web server identified by the service access point, address information associated with the first application;
(c) [1] launching, by the client, a second application, [2] the second application communicating via a presentation layer protocol with an application server identified by the received address information; and
(d) [1] launching, by the application server, the first application and [2] returning information to the second application via the layer protocol.
"If the invention could potentially be performed without going in the specific sequence, then the claim does not require an order of steps." Personalized User Model, 2012 WL 295048, at *28. The intrinsic evidence supports Citrix's view that the launch of the second application in (c)[1] and of the first application in (d)[1] could occur in either order. (See D.I. 322 at 18) The specification discloses an embodiment in which "the customer's computer establishes a communication session with the application server 205 to view the latest version of Spreadsheet X [the first application] using the ICA client 215." ('843 patent at 10:7-10) (emphasis added) Citrix explains that since the customer's computer can "view" the latest version of the first application, this "suggests that the first application has already been launched by the application server ((d)[1]), before the client established the communication session with the application server ((c)[2])." (D.I. 322 at 18) Workspot's position would read out this embodiment from the claims.
Dr. Smith's opinion further supports the Court's understanding of the claim:
39. . . . [I]t is technically possible, and sometimes desirable, to perform the launching of the first and second application even before step (a) in claim 1. For example, the claimed method could launch one or both of the two application and keep them executing, before the client receives the SAP, and before the client receives the address information associated with the first application. In other words, the application would already be executing before the steps labeled (a) and (b) take place.(D.I. 324 at ¶¶ 39-40; see also id. at ¶¶ 41-42) Dr. Smith's testimony on this point is not rebutted by Workspot's expert. (See Tr. at 73; '843 patent at 10:7-10)
40. In such a system, in step (c)[2] ("the second application communicating . . ."), the previously launched second application would then communicate with the application server. And in step (d)[2] ("returning information to the second application via the presentation layer protocol"), the previously launched first application would perform the returning step.
Workspot's argument based on prosecution history is unavailing. (See D.I. 323 at 16-17) While the applicant has articulated that steps (a)-(d) of the method can happen in the order written (see, e.g., D.I. 319 Ex. 9 at *75-76), that is not inconsistent with an understanding that the method may also be performed in a manner in which step (d) occurs prior to step (c). See TQ Beta LLC v. Dish Network Corp., 2016 WL 356064, at *3 (D. Del. Jan. 28, 2016).
V. CONCLUSION
An appropriate Order follows.