Case 4:15-cv PJH Document 46 Filed 12/03/15 Page 1 of 29 UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION

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1 Case :-cv-0-pjh Document Filed /0/ Page of SPENCER HOSIE (CA Bar No. ) shosie@hosielaw.com DIANE S. RICE (CA Bar No. 0) drice@hosielaw.com ANTHONY K. LEE (CA Bar No. 0) alee@hosielaw.com DARRELL RAE ATKINSON (CA Bar No. 0) datkinson@hosielaw.com HOSIE RICE LLP Transamerica Pyramid 00 Montgomery Street, th Floor San Francisco, CA () -000 Tel. () -00 Fax LESLIE V. PAYNE (Pro Hac Vice) lpayne@hpcllp.com CHRISTOPHER M. FIRST (Pro Hac Vice) cfirst@hpcllp.com HEIM, PAYNE & CHORUSH, LLP 00 Travis Street, Suite Houston, Texas 00 () -000 Tel. Attorneys for MasterObjects, Inc. UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION 0 MASTEROBJECTS, INC., Plaintiff, v. GOOGLE INC., Defendant. PLAINTIFF MASTEROBJECTS, INC. S COMBINED REPLY CLAIM CONSTRUCTION BRIEF AND OPPOSITION TO GOOGLE INC. S MOTION FOR SUMMARY JUDGMENT ON COLLATERAL ESTOPPEL AND WRITTEN DESCRIPTION Date: February, 0, :00 a.m. Place: Courtroom Fifth Floor Judge: Hon. Phyllis J. Hamilton JURY TRIAL DEMANDED PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION BRIEF AND OPPOSITION TO GOOGLE S MOTION FOR

2 Case :-cv-0-pjh Document Filed /0/ Page of TABLE OF CONTENTS I. THE NEW CLAIMS ARE NOT LIMITED TO SENDING JUST THE CHANGES... A. The New Claim Language Does Not Require Sending Just the Changes... B. Neither the Specification Nor the Prosecution History Requires Sending Only the Changes.... There is No Specification Disavowal... Page 0 II.. There is No Prosecution History Disavowal... THE 0 PATENT FULLY DISCLOSES SNEIDNG THE FULL STRING, INCLUDING PREVIOUSLY SENT CHARACTERS, NOT JUST THE CHANGES... A. The Law... B. A Person of Ordinary Skill in the Art Would Not Conclude That the Inventor Lacked Possession of Sending a Character More Than Once... C. The Specification Discloses a Query Message Used in the Same Manner as Used in the Claims... D. A Person of Ordinary Skill in the Art Would Recognize That the Portion of the Disclosure Relied Upon by Google Addresses the Simple and Predictable Technology of Network Transmissions... E. Describing a System That May Be Optimized in One Particular Manner Necessarily Discloses Both the Optimization and the Underlying Embodiment... F. Summary Judgment in Google s Favor on This Fact-Intensive Issue is Improper... G. Google s Written Description Argument Fails...0 III. COLLATERAL ESTOPPEL DOES NOT APPLY TO THE NEW CLAIMS... A. The Law... B. The Issue At Stake Here is Not Identical to That in the Prior Action... PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION i

3 Case :-cv-0-pjh Document Filed /0/ Page of C. Even Assuming the Present Invention Issue Advanced by Google is the Issue at Stake, That Issue Was Not Actually Litigated in the Prior Case... 0 PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION ii

4 Case :-cv-0-pjh Document Filed /0/ Page of TABLE OF AUTHORITIES Cases Page 0 Abbott Labs v. Sandoz, Inc., F.d (Fed. Cir. 00)... Absolute Software, Inc. v. Stealth Signal, Inc., F.d (Fed. Cir. 0)... Ariad Pharms., Inc. v. Eli Lilly & Co., F.d (Fed. Cir. 0)..., Baran v. Med. Device Techs., Inc., et al., F.d 0 (Fed. Cir. 0)... Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., F.d (Fed. Cir. 0)..., 0 Enzo Biochem, Inc. v. Gen-Probe, Inc., F.d (Fed. Cir. 00)... Fujifilm Corp. v. Motorola Mobility, No. -cv-0-who, 0 WL, at *0 (N.D. Cal. 0)... Genentech, Inc. v. Trs. of the Univ. of Pa., F. Supp. d (N.D. Cal. 0)... Hayes Microcomputer Prods., Inc. v. Patent Litig., F.d (Fed. Cir. )... Helmsderfer v. Bobrick Washroom Equip., Inc., F.d (Fed. Cir. 00)... Hill-Rom Servs. Inc. v. Stryker Corp., F.d (Fed. Cir. 0)... Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 0 F.d (Fed. Cir. 00)... Ii Ltd. P ship v. Microsoft Corp., F.d (Fed. Cir. 0)... In re Skvorecz, 0 F.d (Fed. Cir. 00)... PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION iii

5 Case :-cv-0-pjh Document Filed /0/ Page of 0 Liebel-Flarsheim v. Medrad, Inc., F.d (Fed. Cir. 00)... LizardTech, Inc. v. Earth Res. Mapping, Inc., F.d (Fed. Cir. 00)..., Mallinckrodt, Inc. v. Masimo Corp., Fed. Appx. (Fed. Cir. 00)..., Martek Biosciences Corp. v. Nutrinova, Inc., F.d (Fed. Cir. 00)... Nazomi Communications, Inc. v. Nokia Corp., No. C--0, 0 WL (N.D. Cal. Jun., 0)... Phillips v. AWH Corp., F.d 0 (Fed. Cir. 00)..., Provenz v. Miller, F.d (th Cir. )..., 0 Renishaw PLC v. Mariposs Societa per Azioni, F.d (Fed. Cir. )... ScriptPro, LLC v. Innovation Assocs., F.d (Fed. Cir. 0)... Space Systems/Loral, Inc. v. Lockheed Martin Corp., 0 F.d (Fed. Cir. 00)... Syngqor, Inc. v. Artesyn Techs., Inc., 0 F.d (Fed. Cir. 0)..., 0 Telefex, Inc. v. Ficosa N. Am. Corp., F.d (Fed. Cir. 00)... Thorner v. Sony Computer Entm t Am. LLC, F.d (Fed. Cir. 0)..., Voda v. Cordis Corp., F.d (Fed. Cir. 00)... Statutes U.S.C.... U.S.C PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION iv

6 Case :-cv-0-pjh Document Filed /0/ Page of 0 I. THE NEW CLAIMS ARE NOT LIMITED TO SENDING JUST THE CHANGES. A. The New Claim Language Does Not Require Sending Just the Changes. The claim construction inquiry begins and ends in all cases with the actual words of the claim. Renishaw PLC v. Marposs Societa per Azioni, F.d, (Fed. Cir. ). The claims define the metes and bounds of the patentee s invention. Thorner v. Sony Computer Entm t Am. LLC, F.d, (Fed. Cir. 0). A patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning. Id.; Phillips v. AWH Corp., F.d 0, (Fed. Cir. 00). Claim language matters. Patentees write new claims for a reason. MasterObjects did so here. Google can snark that it is déjà vu all over again only by pretending that the new language merely repeats the old. It does not. Google s Position Then Google s construction of claim of U.S. Patent,, (the Patent) turned on four words which Google then said required that the client send only the changes, with the server constructing the lengthening query on the server side. Google argued that consecutive queries corresponding to the client changes were sent to the server, which then modified the string to form a new query on the server. The consecutive queries lengthen the string on the server. See MasterObjects Opening Br., Dkt. No. 0 at :- :. These claim terms, said Google, described a process turning on the client sending just the changes, and the server gluing the changes together all to form a query on the server. Google s construction absolutely pivoted on the words form (which it deemed the key claim language ), modify, lengthens, and corresponding. See generally Google s Responsive Claim Construction Brief, 0, Dkt. No. at 0:-; Google s With apologies to Mr. Berra. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

7 Case :-cv-0-pjh Document Filed /0/ Page of 0 Opp. to MasterObjects Mot. for Leave to File Mot. for Reconsideration and Opp. to Mot. for Reconsideration, 0, Dkt. No., III, B,, a, (). Google s Position Now None of these words appear in the new claims, which introduce the new concept of a query message. The new claim language does not speak of corresponding consecutive queries. The new claims say nothing about consecutive queries modifying the string. The new claims do not say that the consecutive queries form a lengthening string on the server. Nor do the new claims say that the consecutive queries lengthen the string. In short, the key words that Google said required its only the changes construction are entirely absent in the new U.S. Patent,,0 (the 0 Patent) claim language. Google now dismisses this profound change in language as merely differences in form, not substance. Google s Combined Responsive and Opening Sum. J. Br., Dkt. No. ( Google Br. ) at :- & :- ( MasterObjects elevates form over substance. ). Despite lacking the very words central to Google then, Google says that the new claims contain no material differences from those this Court previously construed. Id. at :-. But these suddenly immaterial words provided the very foundation for Google s only the changes construction. If the words were dispositive then, how can their absence not matter now? Google s brief thus turns on a profound inconsistency. On the one hand, Google says that the words (and process) it relied on previously do not matter, and that, in contending to the contrary, MasterObjects elevates form over substance. On the other hand, Google asks that this Court summarily affirm its prior ruling, a ruling that absolutely pivoted on words that Google now disavows. Which is it? What Do The New Claims Actually Say? Google asserts on page of its combined brief that MasterObjects has chosen not to propose any construction for the Additional Characters terms. See also Google Br. at PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

8 Case :-cv-0-pjh Document Filed /0/ Page of 0 The new claim language explicitly defines what is sent from the client to the server. The client provides input comprising a lengthening string of characters, and then sends query messages to the server system. The term query messages was not used in the claims, but is central to the 0 claims. And the new claims broadly state what these query messages are: whereby the query messages represent the lengthening string as additional characters are being input by the user/software process ( 0 Patent, claims,,, ) and multiple query messages corresponding to multiple versions of said input ( 0 Patent, claim ). This claim language states that the client sends query messages which represent the lengthening string and correspond to the input, not just changes to the lengthening string. And the one place that the specification uses the query message term, it explicitly and unequivocally confirms that the query message is the full string, including characters previously sent. See MasterObjects Opening Br. at :-:; 0 Patent at :-:. The construction for query message cannot exclude the one query message expressly described in the specification. See Baran v. Med. Device Techs., Inc., et al., F.d 0, & (Fed. Cir. 0); Helmsderfer v. Bobrick Washroom Equip., Inc., F.d, (Fed. Cir. 00). The 0 claims continue to state that the server receives said query messages, and uses them to search for responsive content. See, e.g., 0 Patent, claim. P, search for p ; pa, search for pa ; pat, search for pat, etc. The server then sends responsive :-. To the contrary, MasterObjects has proposed constructions for the embedded terms ( input, query, and query message ) that need constructions and has addressed in its brief all of the surrounding claim language, which requires no additional construction. The 0 Patent is Exhibit (Dkt. No. 0-) to MasterObjects Opening Brief, while the Patent is Exhibit (Dkt. No. 0-) to that brief. MasterObjects explained the significance of claim s language in its opening brief at page. Google cropped the quoted claim language from its proposed terms for construction because it directly contradicts Google s construction. MasterObjects Opening Br. at :-:. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

9 Case :-cv-0-pjh Document Filed /0/ Page of 0 content to the client, and the client tests the relevance of the content by checking that the return message corresponds to the latest query. See 0 Patent, claim. If the query consists of only the changes, as Google contends, then this would be nonsensical. For example, if searching for pat, and if t were the last change sent under Google s construction, then the system would compare results for the letter t (theatre; thematic; transmogrify) against the client input (and search intent) of pat (patent). The language of the new 0 claims does not limit the client to sending only the changes. The claims do not say this; the claims do not suggest this. In arguing to the contrary, Google is necessarily reading a negative limitation into the claims that requires only sending the changes. Since that is not what the claims say, how does Google get to this negative limitation? By a combination of rewriting the claims and (largely) unacknowledged disavowal. But there was no disavowal here, as explained in the next section. On re-writing, Google insists that the query messages, when combined or taken together, represent the lengthening string. Google Br. at :-:. Google so reintroduces indirectly the very form and to form claim language that it once deemed key but now says is immaterial. In any event, the 0 claims do not say when combined or taken together or together form or anything remotely close to Google s language. Instead, the claim language makes clear that each query message is a snapshot of the input (e.g., the query message corresponds to the input). Accordingly, even if Google s taken together argument were considered, all it would mean is that the query messages together represent the lengthening string because each one by itself is just a snapshot that is not by itself lengthening. Google also argues at page of its combined brief that MasterObjects is giving input and query messages the same meaning or conflating the two terms. Yet, MasterObjects has proposed two different not the same constructions for these two terms which illustrate that the query messages are the means by which the input is transmitted. Of course, there is a difference between the information (here the input ) and the mechanism (here the query messages ) by which it is transmitted. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

10 Case :-cv-0-pjh Document Filed /0/ Page of 0 B. Neither the Specification Nor the Prosecution History Requires Sending Only the Changes. There are only two exceptions to the rule that the words of the claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art. Thorner, F.d at. They are: () when a patentee sets out a definition and acts as its own lexicographer, or () when the patentee disavows the full scope of a claim term either in the specification or during prosecution. Id. See also Hill-Rom Servs. Inc. v. Stryker Corp., F.d, (Fed. Cir. 0) (disavowal requires that the specification makes clear that the invention does not include a particular feature or is clearly limited to a particular form of the invention. ). Google does not contend that MasterObjects acted as its own lexicographer, and indeed, the claims explicitly state that the query messages represent the lengthening string and correspond to the input. This leaves specification and/or prosecution disavowal.. There is No Specification Disavowal. The standard for finding specification disavowal is exacting: where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent. Thorner, F.d at. But such disavowal must be clear, unmistakable, unambiguous, and manifestly said: The patentee may demonstrate intention to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope. Id., citing with approval Teleflex, Inc. v. Ficosa N. Am. Corp., F.d, (Fed. Cir. 00). Disavowal through the specification cannot be the stuff of argument, innuendo, supposition, or inference. Disavowal is either manifest or absent. Period. Unless this rigorous standard is satisfied, features of an embodiment must not be imported into the claims. See Abbott Labs v. Sandoz, Inc., F.d, (Fed. Cir. 00) ( When consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification. ); see also Phillips, PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

11 Case :-cv-0-pjh Document Filed /0/ Page of 0 F.d at ( For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. ); Fujifilm Corp. v. Motorola Mobility, No. -cv-0-who, 0 WL, at *0 (N.D. Cal 0) (no unambiguous disavowal). Google s only the changes argument perforce turns on the notion that the QuestObjects system is not an embodiment, but rather cabins the claims. Although it took exactly the opposite position before the Federal Circuit in the case (no disavowal), Google now argues that the QuestObjects system is not just a preferred embodiment, but that all of its features must be read into the claims, including a communication protocol, requiring (not allowing ; see below) that the client send only the changes. See MasterObjects Opening Br. at :- quoting Google Federal Court brief (the standard for disclaimer/disavowment is inapposite here. ). So, did MasterObjects disavow any form of query message other than just the changes through its description of the QuestObjects system? It did not. The QuestObjects system is exemplary an illustration of one implementation covered by the claims. The patentee in no way intended to limit the claims to this embodiment, and the patentee made this point as bluntly as possible. To quote the actual text, which uses the word embodiment in conjunction with the QuestObjects system no fewer than forty-six times: In the detailed description below, an embodiment of the present invention is referred to as QuestObjects, and provides a system of managing client input, server queries, server responses and client output. Other terms used to describe the QuestObjects system in detail can be found in the glossary below. 0 Patent at :-0 (emphasis added). It will be evident to one skilled in the art that the model shown [QuestObjects] is purely an illustrative example of one embodiment of the invention, and that other models and implementations may be developed to practice the invention while remaining with in the spirt and scope of [sic] this disclosure. 0 Patent at :- (emphasis added). Google repeatedly cites and relies on two Figures, Figure and Figure. Oddly, Google never mentions what the specification says these figures represent. Why not? PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

12 Case :-cv-0-pjh Document Filed /0/ Page of Because the specification explicitly describes these figures as being embodiment specific: FIG. shows a sequence diagram illustrating the use of a system in accordance with an embodiment of the invention. 0 Patent at :- (emphasis added). 0 FIG. A shows a first thread flow chart illustrating the client side of an embodiment of the invention. 0 Patent at :- (emphasis added). In a nod to belt and suspenders, after making clear that the detailed description sets forth an enabling embodiment, the specification then reinforces the point that this embodiment is not designed to cabin the claims: The foregoing description of preferred embodiments of the present invention has been provided for the purposes of illustration and description. It is not intended to be exhaustive or to limit the invention to the precise forms disclosed. The embodiments were chosen and described in order to best explain the principles of the invention and its practical application, thereby enabling others skilled in the art to understand the invention for various embodiments that are suited to the particular use contemplated. It is intended that the scope of the invention be defined by the following claims and their equivalence. 0 Patent at :-0 (emphasis added). How could MasterObjects have described the QuestObjects system as an embodiment any more clearly? MasterObjects point that the QuestObjects system is an embodiment recently received support from an unusual source: Google s expert. MasterObjects deposed Dr. Martin Rinard, whose lengthy declaration Google appended to its claims opposition and summary judgment cross-motion. Dr. Rinard testified that the QuestObjects system was just an embodiment that did not cabin the claims. See Rinard Dep. :-, :- & :- :, Nov., 0 (Exhibit to the Declaration of Spencer Hosie In Support of Combined Reply and Opposition Brief ( Hosie Decl. )). He, likewise, testified that Figures and were embodiment specific: ( A: I think what s clear is figure, as a whole, illustrates an Because it is just one detailed example, the patent s description of the QuestObjects system is replete with highly specific defined terms not found in the claims, e.g., Quester, Questlet, Query Manager, Persistent Quester Store, etc. See generally, 0 Patent at :-:. These are embodiment terms, not claim terms. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

13 Case :-cv-0-pjh Document Filed /0/ Page of 0 embodiment ). Id. at :-. He confirmed that this is how he, as a person skilled in the art, read the plain text of the specification. Id. at :- & :-. Finally, even the MasterObjects preferred embodiment description of a communication protocol states that the embodiment is allow[ed] to send just the changes, as against being required to send just the changes. 0 Patent at 0:-. Allowed is not required. This allowed to send just the changes alternative is an optimization, not a closed-end description of the one required form of query message transmission. Id. at :-0 ( a communication protocol that is optimized for sending single characters ) (emphasis added). And the specification makes the base case clear the base case is sending the entire [client] input buffer. Id. at 0:-. As the specification sets forth, the client generates a character event by, e.g., typing in additional characters. See, e.g., id. at :-. Then, the client side input buffer is updated ( If the event is a character event, the input buffer is updated accordingly. ). See id. at 0:-. The system may then send the entire client input buffer, which would include characters already sent, or the QuestObjects embodiment allows the client to send just the changes to the input buffer, instead of sending the entire input buffer. Id. at 0:- (emphasis added). This language makes clear that while the system can be optimized to send just the changes, it is not required to send just the changes. In short, the specification discloses the prevalent standard sending the entire input buffer and one QuestObjects permissible embodiment sending just the changes. In no way does this passage state that this optimization of the base case is somehow required in every query. In fact, it says exactly the converse. See 0 Patent at 0:-. Google s expert, Dr. Rinard, agreed with this point as well, recognizing that the communication protocol language reflected an optimization. See Rinard Depo. 0:-:, Ex.. And the communications protocol language, which was in all of the asserted and claims from the previous case, was dropped from the 0 claims in any event PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

14 Case :-cv-0-pjh Document Filed /0/ Page of 0 Google attempts to rebut the above specification passages with several misguided interpretations. It first argues that the abstract s reference to sending a character-bycharacter string somehow supports its just the changes construction. Google Br. at :- : & :-. But Google ignores the last part of the sentence at issue, which states that the server returns to the client increasingly appropriate database information as the client sends the string. (Emphasis added). The abstract does not say as the client sends only the changes or each new character only ; it says, the client sends the string. More, MasterObjects construction of sending the full string (even the previously sent characters) is perfectly consistent with sending a character-by-character string because the full string is typed in by the user character-by-character. Google also refers to the concept of synchronization between the client and server, claiming that MasterObjects attempted to distinguish[ ] the prior art based on sending only the changes. Google Br. at :- & :-:. But MasterObjects invention has never been about a specific form of synchronization, which the specification makes clear can be accomplished in multiple ways (e.g., by sending the full string or just the changes). The specification even notes that client/server synchronization methods were known in the prior art, further showing that MasterObjects never relied on a specific type of synchronization for patentability. 0 Patent at :-: & :-. Instead, MasterObjects invention distinguished the art on multiple grounds, including moving the search technology from the client to the server, 0 Patent at :-, and allowing the client and server to communicate asynchronously. Finally, in the face of the specification s clear statements that the server in even the QuestObjects preferred embodiment interpret[s] incoming strings before they are sent to the Service, 0 Patent at :- & :- (emphasis added), Google weakly suggests that the strings are not incoming from the client. Google Br. at :-. If not from the (except for 0 claims and ). PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

15 Case :-cv-0-pjh Document Filed /0/ Page of 0 client, then whence they come? The specification makes clear that the strings not just the changes are incoming from the client. See, e.g., 0 Patent at :- ( Clients can also use the protocol to send a string of characters ). Present Invention Language Google finally insists that the patent s use of the phrase present invention in describing the QuestObjects embodiment amounts to a clear and manifest disavowal of claim scope broader than the embodiment itself. But this is not what the specification says. To the contrary, the specification makes clear that the MasterObjects QuestObjects system is an illustrative embodiment, and not intended to cabin the claims. See 0 Patent at :- & :-0. The Federal Circuit has consistently refused to restrict claims based on the description of the present invention except in the case of clear disavowal. See, e.g., Rambus Inc. v. Infineon Techs., F.d, - (Fed. Cir. 00) ( While clear language characterizing the present invention may limit the ordinary meaning of claim terms, such language must be read in context of the entire specification and the prosecution history. The remainder of the specification and prosecution history shows that Rambus did not clearly disclaim or disavow such claim scope in this case. ); Voda v. Cordis Corp., F.d, 0 (Fed. Cir. 00); Liebel-Flarsheim v. Medrad, Inc., F.d, 0-0 (Fed. Cir. 00). For example, the Federal Circuit has held that a statement about the present invention does not limit the claims where the intrinsic evidence includes disclosures that are inconsistent with such a limitation. Absolute Software, Inc. v. Stealth Signal, Inc., F.d, (Fed. Cir. 0) ( [W]e have found that use of the phrase present invention or this invention is not always so limiting, such as where the references to a certain limitation as being the invention are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. ). Such inconsistent disclosures are present in the patent-in-suit, namely, that the client may send the entire string, or that the PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

16 Case :-cv-0-pjh Document Filed /0/ Page of 0 client may send the entire input buffer. See supra at :-; MasterObjects Opening Br. at :-:; 0 Patent at :-. Not surprisingly, the Federal Circuit has also held that where the present invention description uses permissive language, such as could be edited, can be created, and ability to work, this does not clearly disclaim systems lacking these benefits. ii Ltd. P ship v. Microsoft Corp., F.d, (Fed. Cir. 0). In the present case, even within the QuestObjects embodiment itself, the client is not required to send just the changes. To the contrary, the QuestObjects protocol provides messages to allow the Client Quester to send just the changes to the input buffer. 0 Patent at 0:- (emphasis added). Allow does not remotely rise to the level of manifest exclusion or restriction.. There is No Prosecution History Disavowal. There is nothing in the 0 prosecution history that supports Google s reading in a just the changes disclaimer. For this reason, Google turns to the prosecution history of the patent. This is odd, since the claim language is so different, and thus the prosecution history has no bearing on the new claims. In any event, Google s account is not faithful to the actual prosecution record recited below. The communication protocol (which has been eliminated from almost all 0 claims) and client object limitations of original claim read as follows: a communication protocol that provides a session-based connection between a client system and a server system, and allows said client system to query said server system for content; a client object, in communication with a client software at said client system, said client object capable of transmitting to a server object a plurality of queries to retrieve content from said content engine, wherein each of said plurality of queries comprises a single string character, and wherein each subsequent of said plurality of queries extends the query; and, Excerpt from U.S. Patent Application Publication 00/00 (Ex. to Hosie Decl.) (emphasis added). These original claims provide that the client system queries the server system by transmitting a plurality of queries compris[ing] a single string character. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

17 Case :-cv-0-pjh Document Filed /0/ Page of 0 Importantly, the language regarding a single [ ] character transmission was quickly eliminated. By the second office action response, it was clear that MasterObjects had broadened the claim scope to cover both single character and entire string transmission methods. That response includes the following amended communication protocol and client object limitations of claim (with deletions struck through and additions underlined): a communication protocol that provides a enables an asynchronous session-based connection between a client system and a server system, and allows said the client system to send a query string to query said server system for content, within a session between the client system and the server system, a plurality of consecutively input query strings, to query the server system for content as part of a session; a client object, in communication with a client software at said the client system and with the communication protocol, said wherein the client object capable of transmitting transmits to a server object at the server system a plurality of consecutive queries, within the same session, to retrieve content from said content engine the server system, wherein each of said plurality of consecutive query one of lengthens or shortens the query string by one or more characters, queries comprises a single string character and forms an increasingly focused query string for retrieving content from the server system, and wherein each subsequent of said plurality of queries extends the query string; and[[,]] Excerpt from December, 00 Request for Continued Examination and Response from prosecution history (Ex. to Hosie Decl.) (Emphasis added in bold). These amended claims underscore two points. First, in the communication protocol limitation, the amended language covers the client sending consecutively input query strings, as opposed to the client simply querying the server as in the original claim. Second, in the client object limitation, the single [ ] character language was deleted and the concept of each consecutive query lengthening or shortening the query string to form[] an increasingly focused query string was introduced. These amendments represent an evolution from claiming that the client sends single [ ] character transmissions to claiming the client s sending query strings that have been lengthened (or shortened). In the very next filing at the PTO, MasterObjects further clarified in its remarks that the amended claims capture both transmission methods. The pertinent remarks arose in PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

18 Case :-cv-0-pjh Document Filed /0/ Page of 0 the context of addressing the Zim prior art reference, as follows: Unlike Zim, which discloses database objects in a SQL client-server environment, embodiments of the present invention use strings of characters themselves (which grow in size as the user types the characters in the string), and more particularly consecutive queries that one of lengthen or shorten the query string by the additional characters, and that form an increasingly focused query string for retrieving matching content from the server system. *** [A]s defined by Claim, the client object receives additional characters from the client software, and as each character is being received, transmits to a server object at the server system a plurality of consecutive queries, within the same session, to retrieve content from the server system, and that each consecutive query one of lengthens or shortens the query string by one or more additional characters. Consecutive queries only contain the growing string of characters (rather than a set of stored procedures with corresponding parameters [as in Zim]. As such, in the embodiment defined by Claim, the input string has a direct relationship to the content being matched on the server once a client has registered with the server by starting a session (at which time the name of the Content Source to be used is specified to the Server), then subsequent requests from that client simply pass along the user data (the "growing string of characters"), rather than names of additional/different stored procedure(s) with parameters to be executed. September, 00 Response to Office Action from prosecution history (Ex. to Hosie Decl.) (emphasis added). Far from limiting claim to the client sending only the changes, these remarks make clear that the client sends consecutive queries that include the growing string of characters, such that each query contains a different query string that lengthens or shortens the previous one. II. There was no prosecution history disclaimer here. THE 0 PATENT FULLY DISCLOSES SENDING THE FULL STRING, INCLUDING PREVIOUSLY SENT CHARACTERS, NOT JUST THE CHANGES. Google s brief also cites to inventor testimony, see Google Br. at &, but most of the testimony does not support Google and it is irrelevant as a matter of law. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 0 F.d, (Fed. Cir. 00). Google says that, in this claims hearing, MasterObjects is somehow precluded from tendering its own claim terms for construction. The parties Joint CMC Statement is directly to the contrary. See Joint Claim Construction and Prehearing Statement (Dkt. ) at :-: ( MasterObjects submits terms to be construed... pursuant to the Joint Case Management Statement. See Dkt. No. at ( Parties to exchange list of claim term(s) ). PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

19 Case :-cv-0-pjh Document Filed /0/ Page of 0 On Google s written description challenge: A. The Law. The test for written description is whether a patent s disclosure reasonably conveys to a person having ordinary skill in the art (a PHOSITA ) that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., F.d, (Fed. Cir. 0) (en banc). There is no requirement that a specification disclose every embodiment covered by the claims. See LizardTech, Inc. v. Earth Res. Mapping, Inc., F.d, (Fed. Cir. 00) ( A claim will not be invalidated on section grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. ). A patent can satisfy the written description requirement even if the claims are broader than the specific examples disclosed. See Martek Biosciences Corp. v. Nutrinova, Inc., F.d, (Fed. Cir. 00) (reversing JMOL of lack of written description even though the specification did not contain working examples of the claimed features). Further, the specification does not have to include information that is already known and available to the experienced public. Space Systems/Loral, Inc. v. Lockheed Martin Corp., 0 F.d, (Fed. Cir. 00). All that is required is for the patent to convey to a PHOSITA that the inventor had possession of the claim subject matter. See ScriptPro, LLC v. Innovation Assocs., F.d, (Fed. Cir. 0) (reversing summary judgment of invalidity for lack of written description and noting that the specification s description of embodiments having [a certain feature] does not necessarily mean that the only described invention [has that feature] ). Compliance with the written description requirement is a question of fact. Syngqor, Inc. v. Artesyn Techs., Inc., 0 F.d, (Fed. Cir. 0); see also Genentech, Inc. v. Trs. of the Univ. of Pa., F. Supp. d, 0 (N.D. Cal. 0). Summary judgment is generally inappropriate when an expert s testimony supports the non- PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

20 Case :-cv-0-pjh Document Filed /0/ Page 0 of 0 moving party. Provenz v. Miller, F.d, 0 (th Cir. ); see also Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., F.d, (Fed. Cir. 0) ( Where there is a material dispute as to the credibility and weight that should be afforded to conflicting expert reports, summary judgment is usually inappropriate. ). B. A Person of Ordinary Skill in the Art Would Not Conclude That the Inventor Lacked Possession of Sending a Character More Than Once. The 0 specification clearly discloses sending several characters at a time. 0 Patent at :-. It also discloses sending the complete string. See supra at :-; MasterObjects Opening Br. at :-:; see also 0 Patent at :-. It also discloses sending a query message that contains previously sent characters, i.e., the query message is not restricted to just the changes. 0 Patent at :-:. And the specification also describes that the QuestObjects embodiment allowed an optimization, i.e., sending just the changes, as against resending the entire lengthening string in the client input buffer. See supra at :-. Describing a system that may be optimized in one particular fashion necessarily discloses both the optimization and the underlying base case. Google addresses none of this in its brief. On this, a complex factual issue with warring descriptions and experts (MasterObjects submits the Declaration of Dr. Gareth Loy ( Loy Decl. ) showing written description satisfaction), the jury should decide the written description question, not this Court on a truncated summary judgment record. C. The Specification Discloses a Query Message Used in the Same Manner as Used in the Claims. MasterObjects proposed construction for the term query message is transmissions that include at least the input. See MasterObjects Opening Br. at :-. The specification explicitly supports the term query message with this meaning: starting from a point in time when the input is a, an additional character event is generated when the user has typed a second character b. Id. at :-; 0 Patent at :-:; Loy Decl. at par. -. The system analyzes the string, and then send[s] the appropriate query message ab to the Service. 0 Patent at :-: (emphasis added). PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

21 Case :-cv-0-pjh Document Filed /0/ Page of 0 Google does not dispute that the term query message, as used in the specification, describes a transmission that may include the input string (including previously transmitted characters). Google hangs its entire written description position, then, on a narrower argument: The [query message] disclosure describes only server-to-service communications, not client-to-server communications These two types of communications, however, are entirely distinct aspects of the disclosed system. Rinard Decl., 0. The two have different requirements and parameters, and are not interchangeable. Id. Google Br. at :-:. In short, Google contends that a PHOSITA would conclude that while the inventors were clearly in possession of sending a query message (including previously sent characters) from a server to a service, the ability to send such a query message from a client to a server is a concept that would have been beyond what the inventors possessed. You can carry your wallet in your left pocket, says Google, but no one would ever think you could carry the same wallet in your right pocket. This remarkable proposition is unsupported by either common usage or the plain language of the specification. There is nothing magic about the designations of client, server, and service used by the specification. See 0 Patent at :0-:; Loy Decl. at par. -. As used by a PHOSITA, these devices are simply a way to denote roles that different portions of a larger system may play. See Loy Decl. at par. -. While query message is used in the specification to describe sending the full string in the context of a server to service transmission, there is nothing in the specification that suggests that the ability to send such a query message is limited to only the server. In fact, the specification confirms this and explicitly contradicts Google s position that the specification describes the client as a portion of the system that possesses strictly Indeed, dependent claim, which was in the very first claims draft in the history, see Ex. to Hosie Decl., states that the client, can be a content engine, which is defined as a server-side function. Far from a magical client-server great divide, the claims PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

22 Case :-cv-0-pjh Document Filed /0/ Page of 0 limited functionality: Generally, any process or mechanism that can send characters and receive string lists can be considered a client of the system. 0 Patent at :-: (emphasis added). Thus, Google s implicit proposition that the specification holds the client out as a uniquely inflexible component of the larger system is wrong. See Loy Decl. at par. -. It does not end there: [o]ne skilled in the art would appreciate that it is not necessary to replicate the tiers. Indeed, there may be only a single copy of each tier, and that all tiers (Client, Server, and Service) may be running on a single computer system. 0 Patent at :- (emphasis added). This passage alone should debunk any notion that the specification draws distinct lines between the client, server, and service. See Loy Decl. at par. -. A PHOSITA would read the specification and determine that the inventors were clearly in possession of sending a query message that contains previously transmitted characters. See Loy Decl. at par. -. Given that neither the specification nor common usage supports Google s position that this ability is, for some inexplicable reason, limited only to the server, a PHOSITA would not draw such a distinction. See id. Accordingly, the specification directly supports a construction of query message that covers transmissions that include at least the input. D. A Person of Ordinary Skill in the Art Would Recognize That the Portion of the Disclosure Relied Upon by Google Addresses the Simple and Predictable Technology of Network Transmissions. It is well-settled law that the level of detail required in a disclosure varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, F.d. Further, there is no length requirement for a disclosure, because an inventor is not required to describe every detail of his invention. In make plain that server-side to server-side query messages are covered, e.g., the ab in the query message portion of the specification. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

23 Case :-cv-0-pjh Document Filed /0/ Page of 0 re Hayes Microcomputer Prods., Inc. v. Patent Litig., F.d, (Fed. Cir. ). These propositions are especially true in predictable fields like the one in question here, where less disclosure is necessary to satisfy the written description requirement. See In re Skvorecz, 0 F.d, 0 (Fed. Cir. 00). The specification here clearly discloses a client sending a string to the server. See, e.g., 0 Patent at :-. In doing so, all parties agree that it describes at least one way of achieving that goal: [i]n one embodiment, [] the Server receives a single character from the Client. 0 Patent at :-. Network transmissions between devices including clients and servers, as well as synchronization techniques, were well known in 00 and are a predictable field a PHOSITA would recognize that there are several conventional ways to implement transmission of a string. See Loy Decl. at par. 0-, -. Thus, such a person would recognize that the description of the Server receiv[ing] a single character from the client in multiple separate transmissions is merely one way of accomplishing the broader concept that the inventors clearly described and were in possession of: sending a string to the server. See id. This is especially true here, given the specification s unambiguous disclosure that the Client may then send the entire string all at once to the Server. 0 Patent at :-. E. Describing a System That May Be Optimized in One Particular Manner Necessarily Discloses Both the Optimization and the Underlying Embodiment. In addition to ignoring the fact that the embodiment upon which it relies is merely an exemplary embodiment, Google also ignores the fact that sending only the changes, even within that embodiment, is disclosed only as an optimization. See, e.g., 0 Patent at :- 0 ( protocol that is optimized for sending single characters from a Client to a Server ). A PHOSITA would recognize that in order to optimize something, there must be another option: the base case. See Loy Decl. at par. -. Otherwise, an optimization is not an optimization at all, it is simply the only way that a system may function. See id. In the case of the specification, the fact that sending only the changes is a possible PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

24 Case :-cv-0-pjh Document Filed /0/ Page of 0 optimization necessarily discloses the underlying base case: that the client does not send only the changes and instead sends the entire string from the client to the server. See id. The specification even explicitly recognizes the fact that this base case is one potential (albeit non-optimized) way to send the string from the client to the server: allow the Client Quester to send just the changes to the input buffer, instead of sending the entire input buffer. 0 Patent at 0:- (emphasis added). Thus, even the preferred embodiment relied upon by Google clearly shows that the inventors possessed sending the entire input string each time a change is made. F. Summary Judgment in Google s Favor on This Fact-Intensive Issue is Improper. Google must meet an extraordinarily high burden to succeed in its written description argument. Google faces two separate hurdles. First, in order to invalidate a presumptively valid patent under U.S.C., Google must prove by clear and convincing evidence that the patent lacks written description. Enzo Biochem, Inc. v. Gen-Probe Inc., F.d, (Fed. Cir. 00). But more importantly, Google asks the Court to preempt the role of the jury on a pure fact question (Syngqor, 0 F.d at ), and hold that any reasonable juror must conclude Google has met its high burden of proving, by clear and convincing evidence, that a PHOSITA would find the specification does not meet the written description requirement. This is rarely proper. Summary judgment is generally inappropriate when an expert s testimony supports the non-moving party. Provenz, F.d at 0; Crown Packaging, F.d at. Indeed, the specification s clear disclosure of sending an entire string from the client to the server is enough for the Court to grant summary judgment for MasterObjects. At the very least, the disclosures cited above are enough to raise a question of fact sufficient for submission to the jury, mandating denial of summary judgment for Google. G. Google s Written Description Argument Fails. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION

25 Case :-cv-0-pjh Document Filed /0/ Page of 0 A glaring inherent flaw in Google s argument is that it requires a finding that defies common sense. Google acknowledges that a PHOSITA would recognize that the inventors were in possession of sending the entire string from a client to a server, but nevertheless contends that same person of skill would conclude that the inventors were not in possession of sending the entire string or portions thereof more than a single time why on earth not? Aside from the obvious lack of common sense this conclusion would require, Google s proposition is not consistent with the facts. Simple transmission of a string was a simple and repeatable activity, and a PHOSITA would recognize that the ability to transmit a string from a client to a server once would be performable iteratively. See Loy Decl. at par., -. Even the lone case relied upon by Google in this key portion of its argument makes clear that the law does not require what Google urges: A claim will not be invalidated on section grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. See Union Oil Co. v. Atl. Richfield Co., 0 F.d, (Fed. Cir. 000). That is because the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., F.d, (Fed. Cir. ). Placed in that context, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention. LizardTech, F.d at. Thus, Google s argument is flawed at its core a PHOSITA would fully understand that an inventor with the ability to send an entire string from a client to the server would necessarily be capable of repeating that transmission. See Loy Decl. at par., -. The specification shows a person of ordinary skill that the inventors were in possession of the ability to send the full input string from the client to the server. Neither the specification nor the law supports Google s argument that the inventors were only in possession of the ability to send just the changes to the input. Accordingly, Google cannot meet its high burden and its written description challenge fails. III. COLLATERAL ESTOPPEL DOES NOT APPLY TO THE NEW CLAIMS. PLAINTIFF S COMBINED REPLY CLAIM CONSTRUCTION 0