Miscellaneous Docket No. ___________
United States Court of Appeals
for the Federal Circuit
IN RE NEWEGG INC.,
Petitioner.
On Petition for a Writ of Mandamus to the United States District Court for the
Eastern District of Texas in Case No. 2:11-cv-00248, Judge Rodney Gilstrap
APPENDIX IN SUPPORT OF PETITION FOR WRIT OF MANDAMUS
Kent. E. Baldauf, Jr.
Daniel H. Brean
THE WEBB LAW FIRM
One Gateway Center
420 Fort Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
Telephone: (412) 471-8815
Mark. A. Lemley
DURIE TANGRI LLP
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: (415) 362-6666
Edward R. Reines
WEIL GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: (650) 802-3000
Counsel for Newegg Inc.
July 6, 2015
TABLE OF CONTENTS
Date
Docket
Filed
No.
11/25/13
407
Jury Verdict
Description
06/05/15
N/A
Docket Sheet
05/02/95
N/A
U.S. Patent No. 5,412,730
02/17/14
436
06/30/14
450
Newegg’s Rule 50(b) Motion for Judgment as a Matter
of Law
Newegg’s Notice of Subsequent Authority
07/25/14
453
Newegg’s Second Notice of Subsequent Authority
04/16/14
446
11/13/14
458
05/20/13
226
Newegg’s Notice of Request for Hearing on Post-Trial
Motions
Newegg’s Notice of Renewed Request for Hearing on
Post-Trial Motions
Claim Construction Memorandum and Order
02/21/14
152
06/20/14
192
07/23/14
203
11/08/13
379
11/27/13
413
Memorandum Opinion and Order (TQP v. Intuit, No.
2:12-cv-00180-WCB)
Memorandum Opinion and Order (TQP v. Intuit, No.
2:12-cv-00180-WCB)
Memorandum Opinion and Order (TQP v. Intuit, No.
2:12-cv-00180-WCB)
Order Granting TQP’s Motion in Limine to Exclude
Evidence and Argument Relating to Prosecution
History Estoppel
Transcript of Jury Trial (11/19/13 - afternoon session)
11/27/13
414
Transcript of Jury Trial (11/20/13 - morning session)
11/27/13
417
Transcript of Jury Trial (11/21/13 - afternoon session)
09/30/14
N/A
Civil Justice Reform Act Report
09/30/14
N/A
Civil Justice Reform Act Report for Judge Gilstrap
Appendix
Nos.
A0001 –
A0003
A0004 –
A0038
A0039 –
A0057
A0058 –
A0141
A0142 –
A0148
A0149 –
A0152
A0153 –
A0155
A0156 –
A0158
A0159 –
A0199
A0200 –
A0215
A0216 –
A0239
A0240 –
A0250
A0251 –
A0262
A0263 –
A0442
A0443 –
A0593
A0594 –
A0776
A0777 –
A0849
A0850 –
A0854
Case 2:11-cv-00248-JRG Document 407 Filed 11/25/13 Page 1 of 3 PageID #: 6491
IN THE UNITED STATES DISTRJCT COURT
FOR THE EASTERN DISTRJCT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Civil Action No. 2:11-CV-248-JRG-RSP
Plaintiff,
CONSOLIDATED
JURY TRIAL DEMANDED
1-800-FLOWERS.COM, INC, et al.,
Defendants.
VERDICT FORM
In answering these questions, you are to follow the instructions I have given you in the
Charge of the Court.
QUESTION 1
Did TQP Development, LLC ("TQP") prove by a preponderance of the evidence that
Newegg Inc. ("Newegg") directly infringed any of the asserted claims of the '730 Patent?
Answer "Yes" or "No" for each claim:
~--------------------------------~--------------------------------.
Infringed?
'730 Patent
Claim 1
Claim 6
Claim 8
Claim 9
1
A0001
Case 2:11-cv-00248-JRG Document 407 Filed 11/25/13 Page 2 of 3 PageID #: 6492
QUESTION2
Did TQP prove by a preponderance of the evidence that Newegg induced its customers to
infringe any ofthe asserted claims of the '730 Patent?
Answer "Yes" or "No" for each claim:
'730 Patent
Induced Infringement?
Claim 1
&irs
\)
t)(v~;'::c=
Claim 6
( J
>
j/l,-;~~
Claim 8
Ji,
Claim 9
()
/~::::::>
QUESTION 3
Did Newegg prove by clear and convincing evidence that any of the following claims of
the '730 Patent are invalid?
Answer "Yes" or "No" for each claim:
'730 Patent
Invalid?
Claim 1
ut0o
Claim 6
~--;:::;~
Claim 8
N
jLJT:=>
Claim 9
2
A0002
Case Document 407 Filed 11/25/13 Page 3 of 3 PageID 6493
For any claim you find infringed and not invalid, answer Question 4. If you find that
no claim was both infringed and not invalid, then do not answer Question 4.
QUESTION 4
What sum of money, if paid now in cash, do you ?nd from a preponderance of the
evidence would fairly and reasonably compensate TQP for its damages resulting from Newegg?s
infringement of the ?730 Patent?
Answer in Dollars and Cents:
:7 Wait; mm
INSTRUCTION: Please Sign this verdict form.
DATE: 1 i leaves?; rig,
Juryili?preperson
A0003
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JURY,PATENT/TRADEMARK,PROTECTIVE−ORDER,REOPEN,TransWard
U.S. District Court [LIVE]
Eastern District of TEXAS (Marshall)
CIVIL DOCKET FOR CASE #: 2:11−cv−00248−JRG
TQP Development LLC vs v. 1−800−Flowers.com Inc et al
Assigned to: Judge Rodney Gilstrap
Cause: 35:271 Patent Infringement
Date Filed
#
Date Filed: 05/06/2011
Jury Demand: Both
Nature of Suit: 830 Patent
Jurisdiction: Federal Question
Docket Text
05/06/2011
1 COMPLAINT for Patent Infringment against 1−800−Flowers.com, Inc., Alticor,
Inc., Amway Corp., Cellco Partnership, HSN, Inc., Micro Electronics, Inc.,
Newegg, Inc., QVC, Inc., Sprint Nextel Corporation, Verizon Communications,
Inc. ( Filing fee $ 350 receipt number 0540−3023721.), filed by TQP
Development, LLC. (Attachments: # 1 Exhibit A − U.S. Patent 5,412,730, # 2 Civil
Cover Sheet)(Spangler, Andrew) (Entered: 05/06/2011)
05/06/2011
2 Notice of Filing of Patent/Trademark Form (AO 120). AO 120 mailed to the
Director of the U.S. Patent and Trademark Office. (Spangler, Andrew) (Entered:
05/06/2011)
05/09/2011
Case assigned to Judge T. John Ward. (ch, ) (Entered: 05/09/2011)
05/09/2011
In accordance with the provisions of 28 USC Section 636(c), you are hereby
notified that a U.S. Magistrate Judge of this district court is available to conduct
any or all proceedings in this case including a jury or non−jury trial and to order
the entry of a final judgment. The form Consent to Proceed Before Magistrate
Judge is available here by clicking on the hyperlink and is also on our website. All
signed consent forms, excluding pro se parties, should be filed electronically using
the event Notice of Consent to Proceed Before Magistrate Judge. (ch, ) (Entered:
05/09/2011)
05/10/2011
3 E−GOV SEALED SUMMONS Issued as to 1−800−Flowers.com, Inc., Alticor,
Inc., Amway Corp., Cellco Partnership, HSN, Inc.. (Attachments: # 1 Alticor, # 2
Amway, # 3 Cellco, # 4 HSN)(ehs, ) (Entered: 05/10/2011)
05/10/2011
4 E−GOV SEALED SUMMONS Issued as to Micro Electronics, Inc., Newegg, Inc.,
QVC, Inc., Sprint Nextel Corporation, Verizon Communications, Inc..
(Attachments: # 1 Newegg, # 2 Nextel, # 3 QVC, # 4 Verizon)(ehs, ) (Entered:
05/10/2011)
05/13/2011
5 NOTICE of Attorney Appearance by Hao Ni on behalf of TQP Development, LLC
(Ni, Hao) (Entered: 05/13/2011)
05/20/2011
6 NOTICE of Attorney Appearance by Adam S Hoffman on behalf of TQP
Development, LLC (Hoffman, Adam) (Entered: 05/20/2011)
05/20/2011
7 NOTICE of Attorney Appearance by Marc A Fenster on behalf of TQP
Development, LLC (Fenster, Marc) (Entered: 05/20/2011)
05/20/2011
8 NOTICE of Attorney Appearance by Alexander Chester Giza on behalf of TQP
Development, LLC (Giza, Alexander) (Entered: 05/20/2011)
05/31/2011
9 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Alticor, Inc. served on 5/20/2011 by CM RRR through Registered Agent The
Corporation Co, answer due 6/10/2011. (ehs, ) (Entered: 05/31/2011)
05/31/2011
10 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Amway Corp. served on 5/20/2011 by CM RRR through Registered Agent CT
Corporation System, answer due 6/10/2011. (ehs, ) (Entered: 05/31/2011)
05/31/2011
11 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
HSN, Inc. served on 5/19/2011 by CM RRR through Registered Agent Corporation
Service Co, answer due 6/9/2011. (ehs, ) (Entered: 05/31/2011)
A0004
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05/31/2011
12 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Micro Electronics, Inc. served on 5/19/2011 by CM RRR through Registered
Agent Ltd., answer due 6/9/2011. (ehs, ) (Entered: 05/31/2011)
05/31/2011
13 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Newegg, Inc. served on 5/19/2011 by CM RRR on Registered Agent Corporation
Service Co, answer due 6/9/2011. (ehs, ) (Entered: 05/31/2011)
05/31/2011
14 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
QVC, Inc. served on 5/19/2011 by CM RRR through Registered Agent
Corporation Service Co, answer due 6/9/2011. (ehs, ) (Entered: 05/31/2011)
06/01/2011
15 Unopposed MOTION for Extension of Time to File Answer /Respond to Plaintiff's
Complaint by Micro Electronics, Inc.. (Attachments: # 1 Text of Proposed
Order)(Wilcox, Melvin) (Entered: 06/01/2011)
06/01/2011
16 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Sprint Nextel Corporation served on 5/18/2011 by CM RRR through registered
agent Corporation Servicee Co, answer due 6/8/2011. (ehs, ) (Entered: 06/01/2011)
06/02/2011
17 ***FILED IN ERROR, PLEASE IGNORE.***
HSN, Inc.'s First Unopposed Application for Extension of Time to Answer
Complaint.( Lanser, Joseph) Modified on 6/2/2011 (sm, ). (Entered: 06/02/2011)
06/02/2011
***FILED IN ERROR, WRONG EVENT (PLEADING DOES NOT MATCH
EVENT). Document # 11, Application to extend time. PLEASE IGNORE.***
(sm, ) (Entered: 06/02/2011)
06/02/2011
18 Unopposed MOTION for Extension of Time to File Answer re 1 Complaint, by
HSN, Inc.. (Attachments: # 1 Text of Proposed Order)(Lanser, Joseph) (Entered:
06/02/2011)
06/03/2011
19 NOTICE of Attorney Appearance by Lindsey Lauren Hargrove on behalf of Sprint
Nextel Corporation (Hargrove, Lindsey) (Entered: 06/03/2011)
06/03/2011
20 First MOTION for Extension of Time to File Answer to Plaintiff's Complaint by
Sprint Nextel Corporation. (Attachments: # 1 Text of Proposed Order)(Hargrove,
Lindsey) (Entered: 06/03/2011)
06/07/2011
21 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Sprint Nextel Corporation.( Hargrove, Lindsey) (Entered:
06/07/2011)
06/07/2011
Defendant's Unopposed First Application for Extension of Time to Answer
Complaint is GRANTED pursuant to Local Rule CV−12 for Sprint Nextel
Corporation to 7/8/2011. 30 Days Granted for Deadline Extension.( ch, ) (Entered:
06/07/2011)
06/07/2011
31 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Verizon Communications, Inc. served CMRR on 5/20/2011. (ch, ) (Entered:
06/09/2011)
06/07/2011
32 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
1−800−Flowers.com, Inc. served CMRR on 5/24/2011, answer due 6/14/2011. (ch,
) (Entered: 06/09/2011)
06/07/2011
33 E−GOV SEALED SUMMONS Returned Executed by TQP Development, LLC.
Cellco Partnership served CMRR on 5/24/2011. (ch, ) (Entered: 06/09/2011)
06/08/2011
22 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Newegg Inc. (Yarbrough, Herbert) (Entered: 06/08/2011)
06/08/2011
23 NOTICE of Attorney Appearance by Debra Elaine Gunter on behalf of Newegg,
Inc. (Gunter, Debra) (Entered: 06/08/2011)
06/08/2011
Defendant's Unopposed First Application for Extension of Time to Answer
Complaint is GRANTED pursuant to Local Rule CV−12 for Newegg, Inc. to
7/11/2011. 30 Days Granted for Deadline Extension.( sm, ) (Entered: 06/08/2011)
A0005
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06/08/2011
24 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Cellco Partnership.(Smith, Melissa) (Entered: 06/08/2011)
06/08/2011
25 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Verizon Communications, Inc..(Smith, Melissa) (Entered:
06/08/2011)
06/08/2011
26 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re QVC, Inc..( Durst, Timothy) (Entered: 06/08/2011)
06/08/2011
27 APPLICATION to Appear Pro Hac Vice by Attorney Laura Beth Miller for
Alticor, Inc., Amway Corp. (APPROVED FEE PAID) 2−553. (ch, ) (Entered:
06/08/2011)
06/08/2011
28 APPLICATION to Appear Pro Hac Vice by Attorney Joseph S Hanasz for Alticor,
Inc., Amway Corp. (APPROVED FEE PAID) 2−553. (ch, ) (Additional
attachment(s) added on 6/8/2011: # 1 CONFIDENTIAL INFORMATION) (ch, ).
(Entered: 06/08/2011)
06/08/2011
29 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Amway Corp..( Hanasz, Joseph) (Entered: 06/08/2011)
06/08/2011
30 Defendant's Unopposed First Application for Extension of Time to Answer
Complaint re Alticor, Inc..( Hanasz, Joseph) (Entered: 06/08/2011)
06/09/2011
Defendant's Unopposed First Application for Extension of Time to Answer
Complaint is GRANTED pursuant to Local Rule CV−12 for Verizon
Communications, Inc. to 7/15/2011; Cellco Partnership to 7/15/2011. 30/33 Days
Granted for Deadline Extension.( sm, ) (Entered: 06/09/2011)
06/09/2011
Defendant's Unopposed First Application for Extension of Time to Answer
Complaint is GRANTED pursuant to Local Rule CV−12 for Alticor, Inc. to
7/11/2011; QVC, Inc. to 7/11/2011; Amway Corp. to 7/11/2011. 30 Days Granted
for Deadline Extension.( sm, ) (Entered: 06/09/2011)
06/13/2011
34 ORDER granting 20 Motion for Extension of Time to Answer. Dft Sprint Nextel
Corporation deadline is extended to 7/22/2011. Signed by Judge T. John Ward on
6/13/2011. (ch, ) (Entered: 06/13/2011)
06/13/2011
Answer Due Deadline Updated for Sprint Nextel Corporation to 7/22/2011. (ch, )
(Entered: 06/13/2011)
06/13/2011
06/13/2011
06/14/2011
35 ORDER granting 18 Motion for Extension of Time to Answer. HSN Inc deadline is
extended to 7/11/2011. Signed by Judge T. John Ward on 6/13/2011. (ch, )
(Entered: 06/13/2011)
Answer Due Deadline Updated for HSN, Inc. to 7/11/2011. (ch, ) (Entered:
06/13/2011)
36 ORDER granting 15 Motion for Extension of Time to Answer. Micro Electronics
have up to and including July 11, 2011, to answer. Signed by Judge T. John Ward
on 6/13/11. (ehs, ) (Entered: 06/14/2011)
06/14/2011
Answer Due Deadline Updated for Micro Electronics, Inc. to 7/11/2011. (ehs, )
(Entered: 06/14/2011)
06/17/2011
37 APPLICATION to Appear Pro Hac Vice by Attorney Matthew A Werber for HSN,
Inc..(APPROVED, FEE PAID 2−575) (ehs, ) (Entered: 06/17/2011)
06/17/2011
38 APPLICATION to Appear Pro Hac Vice by Attorney Michael R Levinson for
HSN, Inc.. (APPROVED, FEE PAID 2−576) (ehs, ) (Entered: 06/17/2011)
06/22/2011
39 APPLICATION to Appear Pro Hac Vice by Attorney Mark L Varboncouer for
Sprint Nextel Corporation. (APPROVED, FEE PAID 2−586) (ehs, ) (Entered:
06/22/2011)
06/23/2011
40 APPLICATION to Appear Pro Hac Vice by Attorney David E Finkelson for Sprint
Nextel Corporation. (APPROVED, FEE PAID 2−282) (ehs, ) (Entered:
06/23/2011)
A0006
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06/23/2011
41 NOTICE of Voluntary Dismissal by TQP Development, LLC (Attachments: # 1
Text of Proposed Order)(Ni, Hao) (Entered: 06/23/2011)
06/27/2011
42 ORDER − granting 27 Notice of Voluntary Dismissal. Dft 1−800−Flowers.com Inc
is hereby dismissed without prejudice. All attorney fees and costs are to be borne
by the party that incurred them. Signed by Judge T. John Ward on 6/27/2011. (ch, )
(Entered: 06/27/2011)
07/06/2011
43 APPLICATION to Appear Pro Hac Vice by Attorney Anthony W Brooks for
Newegg, Inc.. (APPROVED, FEE PAID 6−3973) (ehs, ) (Entered: 07/06/2011)
07/06/2011
44 APPLICATION to Appear Pro Hac Vice by Attorney Bryan P Clark for Newegg,
Inc.. (APPROVED, FEE PAID 6−3973)(ehs, ) (Entered: 07/06/2011)
07/06/2011
45 APPLICATION to Appear Pro Hac Vice by Attorney Kent E Baldauf, Jr for
Newegg, Inc.. (APPROVED, FEE PAID 6−6973) (ehs, ) (Entered: 07/06/2011)
07/06/2011
46 Unopposed MOTION for Extension of Time to File Answer /Respond to Plaintiff's
Complaint by Micro Electronics, Inc.. (Attachments: # 1 Text of Proposed
Order)(Wilcox, Melvin) (Entered: 07/06/2011)
07/11/2011
47 NOTICE of Attorney Appearance by Matthew Colagrosso on behalf of QVC, Inc.
(Colagrosso, Matthew) (Entered: 07/11/2011)
07/11/2011
48 ANSWER to 1 Complaint, Affirmative Defenses, COUNTERCLAIM against TQP
Development, LLC by QVC, Inc..(Durst, Timothy) (Entered: 07/11/2011)
07/11/2011
49 CORPORATE DISCLOSURE STATEMENT filed by QVC, Inc. identifying
Corporate Parent Liberty Media Corporation for QVC, Inc.. (Durst, Timothy)
(Entered: 07/11/2011)
07/11/2011
50 HSN, Inc.'s ANSWER to 1 Complaint,, COUNTERCLAIM against TQP
Development, LLC by HSN, Inc..(Lanser, Joseph) (Entered: 07/11/2011)
07/11/2011
51 CORPORATE DISCLOSURE STATEMENT filed by HSN, Inc. identifying Other
Affiliate Liberty Media Corporation for HSN, Inc.. (Lanser, Joseph) (Entered:
07/11/2011)
07/11/2011
52 ORDER granting 46 Motion for Extension of Time to Answer. Dft Micro
Electronics deadline is extended to 7/26/2011. Signed by Judge T. John Ward on
7/11/2011. (ch, ) (Entered: 07/11/2011)
07/11/2011
Answer Due Deadline Updated for Micro Electronics, Inc. to 7/26/2011. (ch, )
(Entered: 07/11/2011)
07/11/2011
53 ANSWER to 1 Complaint,, COUNTERCLAIM against TQP Development, LLC
by Alticor, Inc., Amway Corp..(Hanasz, Joseph) (Entered: 07/11/2011)
07/11/2011
54 ANSWER to 1 Complaint,, COUNTERCLAIM against TQP Development, LLC
by Newegg, Inc..(Yarbrough, Herbert) (Entered: 07/11/2011)
07/11/2011
55 CORPORATE DISCLOSURE STATEMENT filed by Amway Corp. identifying
Corporate Parent Alticor Corporate Enterprises Inc. for Amway Corp.. (Hanasz,
Joseph) (Entered: 07/11/2011)
07/11/2011
56 CORPORATE DISCLOSURE STATEMENT filed by Alticor, Inc. identifying
Corporate Parent Solstice Holdings Inc. for Alticor, Inc.. (Hanasz, Joseph)
(Entered: 07/11/2011)
07/14/2011
57 MOTION to Dismiss with Prejudice (Stipulated) by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Spangler, Andrew) (Entered:
07/14/2011)
07/14/2011
58 APPLICATION to Appear Pro Hac Vice by Attorney Saritha K Tice for Verizon
Communications, Inc..(APPROVED, FEE PAID 2−617) (ehs, ) (Entered:
07/14/2011)
07/14/2011
59 APPLICATION to Appear Pro Hac Vice by Attorney Michael E Joffre for Verizon
Communications, Inc.. (APPROVED, FEE PAID 2−617) (ehs, ) (Entered:
07/14/2011)
A0007
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07/14/2011
60 Defendant Cellco Partnership's ANSWER to 1 Complaint, Affirmative Defenses
and, COUNTERCLAIM against TQP Development, LLC by Cellco
Partnership.(Smith, Melissa) (Entered: 07/14/2011)
07/14/2011
61 CORPORATE DISCLOSURE STATEMENT filed by Cellco Partnership
identifying Corporate Parent Verizon Communications Inc., Corporate Parent
Vodafone Group PLC for Cellco Partnership. (Smith, Melissa) (Entered:
07/14/2011)
07/14/2011
62 Defendant Verizon Communications Inc.'s ANSWER to 1 Complaint, Affirmative
Defenses and, COUNTERCLAIM against TQP Development, LLC by Verizon
Communications, Inc..(Smith, Melissa) (Entered: 07/14/2011)
07/14/2011
63 CORPORATE DISCLOSURE STATEMENT filed by Verizon Communications,
Inc. (Smith, Melissa) (Entered: 07/14/2011)
07/18/2011
64 ORDER granting 57 Motion to Dismiss. All claims and counterclaims asserted in
this suit between Plaintiff, TQP Development, LLC, and Defendant, Micro
Electronics, Inc., are hereby dismissed with prejudice, subject to the terms of that
certain agreement entitled PATENTS IN SUIT SETTLEMENT AGREEMENT
dated June 8, 2011. It is further ORDERED that all attorneys fees and costs are to
be borne by the party that incurred them. Signed by Judge T. John Ward on
7/18/2011. (ch, ) (Entered: 07/18/2011)
07/19/2011
65 Unopposed MOTION to Substitute Party by TQP Development, LLC. (Ni, Hao)
(Additional attachment(s) added on 7/20/2011: # 1 Text of Proposed Order) (ch, ).
(Entered: 07/19/2011)
07/25/2011
66 ORDER granting 65 Motion to Substitute Party. Sprint/United Management
Company substituted for Sprint Nextel Corporation terminated. Signed by Judge T.
John Ward on 7/22/11. (ehs, ) (Entered: 07/25/2011)
07/25/2011
67 ANSWER to 1 Complaint, by Sprint/United Management Company.(Hargrove,
Lindsey) (Entered: 07/25/2011)
07/25/2011
68 CORPORATE DISCLOSURE STATEMENT filed by Sprint/United Management
Company identifying Corporate Parent Sprint Nextel Corporation for Sprint/United
Management Company. (Hargrove, Lindsey) (Entered: 07/25/2011)
07/25/2011
69 RESPONSE to 53 Answer to Complaint, Counterclaim of Amway Corp. and
Alticor Inc. by TQP Development, LLC. (Ni, Hao) (Entered: 07/25/2011)
07/25/2011
70 RESPONSE to 50 Answer to Complaint, Counterclaim of HSN, Inc. by TQP
Development, LLC. (Ni, Hao) (Entered: 07/25/2011)
07/25/2011
71 RESPONSE to 54 Answer to Complaint, Counterclaim of Newegg Inc. by TQP
Development, LLC. (Ni, Hao) (Entered: 07/25/2011)
07/25/2011
72 RESPONSE to 48 Answer to Complaint, Counterclaim of QVC, Inc. by TQP
Development, LLC. (Ni, Hao) (Entered: 07/25/2011)
08/01/2011
73 ANSWER to 62 Answer to Complaint, Counterclaim by TQP Development,
LLC.(Ni, Hao) (Entered: 08/01/2011)
08/01/2011
74 ANSWER to 60 Answer to Complaint, Counterclaim by TQP Development,
LLC.(Ni, Hao) (Entered: 08/01/2011)
08/12/2011
75 CORPORATE DISCLOSURE STATEMENT filed by Newegg, Inc. (Yarbrough,
Herbert) (Entered: 08/12/2011)
10/05/2011
76 MISC. ORDER 11−1 REASSIGNING CASE. Case reassigned to Judge David
Folsom for all further proceedings. Judge T. John Ward no longer assigned to case.
Signed by Judge David Folsom on 10−3−11. (jml, ) (Entered: 10/05/2011)
11/17/2011
77 APPLICATION to Appear Pro Hac Vice by Attorney Karen L Carroll for
Sprint/United Management Company. (APPROVED FEE PAID) 2−817 (ch, )
(Entered: 11/17/2011)
12/19/2011
Case reassigned to Judge Rodney Gilstrap re: misc order 11−2. Judge David
Folsom no longer assigned to the case. (rvw, ) (Entered: 12/19/2011)
A0008
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01/04/2012
78 ORDER REASSIGNING CASE. Case reassigned to Judge David Folsom for all
further proceedings. Judge Rodney Gilstrap no longer assigned to case. Signed by
Judge Rodney Gilstrap on 1/4/2012. (ch, ) (Entered: 01/04/2012)
02/16/2012
79 NOTICE by TQP Development, LLC of Readiness for a Scheduling Conference
(Ni, Hao) (Entered: 02/16/2012)
02/21/2012
80 ORDER REFERRING CASE to Magistrate Judge Caroline Craven. Signed by
Judge David Folsom on 2/21/2012. (ch, ) (Entered: 02/21/2012)
02/22/2012
81 NOTICE OF SCHEDULING CONFERENCE, PROPOSED DEADLINES FOR
SCHEDULING AND DISCOVERY ORDER, ( Scheduling Conference set for
3/27/2012 10:00 AM in Ctrm 403 (Texarkana) before Magistrate Judge Caroline
Craven.). Signed by Magistrate Judge Caroline Craven on 2/21/2012. (sm, )
(Entered: 02/22/2012)
02/23/2012
82 ORDER that case is TRANSFERRED to the docket of Honorable Michael
Schneider. Signed by Judge David Folsom on 2/22/2012. (sm, ) (Entered:
02/23/2012)
02/23/2012
Judge Michael H. Schneider added as presiding judge. Judge David Folsom no
longer assigned to case. (sm, ) (Entered: 02/23/2012)
02/28/2012
83 APPLICATION to Appear Pro Hac Vice by Attorney Patrick T Muffo for HSN,
Inc.,Patrick T Muffo for HSN, Inc.. (APPROVED, FEE PAID 2−942) (ehs, )
(Entered: 02/28/2012)
03/01/2012
84 NOTICE by TQP Development, LLC of Change of Firm Name (Spangler,
Andrew) (Entered: 03/01/2012)
03/01/2012
85 NOTICE of Attorney Appearance by James A Fussell, III on behalf of TQP
Development, LLC (Fussell, James) (Entered: 03/01/2012)
03/16/2012
86 Opposed MOTION to Stay by Alticor, Inc., Amway Corp., Cellco Partnership,
HSN, Inc., Newegg, Inc., QVC, Inc., Sprint/United Management Company,
Verizon Communications, Inc.. (Attachments: # 1 Text of Proposed Order)(Smith,
Melissa) (Entered: 03/16/2012)
03/23/2012
87 REPORT of Rule 26(f) Planning Meeting. (Ni, Hao) (Entered: 03/23/2012)
03/26/2012
88 NOTICE of Attorney Appearance by Earl Glenn Thames, Jr on behalf of HSN, Inc.
(Thames, Earl) (Entered: 03/26/2012)
03/27/2012
89 MOTION PRACTICE ORDER. Signed by Magistrate Judge Caroline Craven on
3/27/2012. (sm, ) (Entered: 03/27/2012)
03/27/2012
90 PROTECTIVE ORDER. Signed by Magistrate Judge Caroline Craven on
3/27/2012. (sm, ) (Entered: 03/27/2012)
03/27/2012
91 ORDER REGARDING E−DISCOVERY IN PATENT CASES. Signed by
Magistrate Judge Caroline Craven on 3/27/2012. (sm, ) (Entered: 03/27/2012)
03/28/2012
92 Minute Entry for proceedings held before Magistrate Judge Caroline Craven:
Scheduling Conference held on 3/27/2012. (Court Reporter Libby Crawford.) (lfs, )
(Entered: 03/28/2012)
04/02/2012
93 RESPONSE in Opposition re 86 Opposed MOTION to Stay filed by TQP
Development, LLC. (Fenster, Marc) (Entered: 04/02/2012)
04/06/2012
94 Unopposed MOTION for Extension of Time to File Scheduling Order by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Ni, Hao) (Entered:
04/06/2012)
04/09/2012
95 First Amended ANSWER to 1 Complaint,, COUNTERCLAIM against TQP
Development, LLC by HSN, Inc..(Muffo, Patrick) (Entered: 04/09/2012)
04/09/2012
96 ORDER granting 94 Motion for Extension of Time to File Scheduling order up to
and including April 13, 2012. Signed by Magistrate Judge Caroline Craven on
4/9/2012. (sm, ) (Entered: 04/09/2012)
A0009
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04/10/2012
97 Unopposed MOTION to Withdraw as Attorney (Matthew Colagrosso) by QVC,
Inc.. (Attachments: # 1 Text of Proposed Order)(Durst, Timothy) (Entered:
04/10/2012)
04/10/2012
98 NOTICE of Attorney Appearance by Keith D Willis on behalf of QVC, Inc.
(Willis, Keith) (Entered: 04/10/2012)
04/10/2012
99 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
March 27, 2012, Scheduling Conference before The Honorable Magistrate Judge
Caroline M. Craven. Court Reporter/Transcriber: Libby Crawford, CSR, Telephone
number: 903.794.4067 Ext. 237 or lcrawford@cableone.net.
NOTICE RE
REDACTION OF TRANSCRIPTS: The parties have seven (7) business days
to file with the Court a Notice of Intent to Request Redaction of this
transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript
may be viewed at the court public terminal or purchased through the Court
Reporter/Transcriber before the deadline for Release of Transcript Restriction.
After that date it may be obtained through PACER. Redaction Request due
5/4/2012. Redacted Transcript Deadline set for 5/14/2012. Release of Transcript
Restriction set for 7/12/2012. (Crawford, Libby) (Entered: 04/10/2012)
04/11/2012
100 ORDER granting 97 Motion to Withdraw as Attorney for Defendant QVC.
Attorney Matthew Colagrosso terminated. Signed by Magistrate Judge Caroline
Craven on April 11, 2012. (rml, ) (Entered: 04/11/2012)
04/12/2012
101 Submission of Proposed Agreed Docket Control/Scheduling order by Alticor, Inc.,
Amway Corp., Cellco Partnership, HSN, Inc., Newegg, Inc., Sprint/United
Management Company, TQP Development, LLC, Verizon Communications, Inc..
(Attachments: # 1 Text of Proposed Order Proposed Scheduling Order, # 2 Text of
Proposed Order Proposed Order Regarding joint Case Management Statement)(Ni,
Hao) (Entered: 04/12/2012)
04/13/2012
102 REPLY to Response to Motion re 86 Opposed MOTION to Stay DEFENDANTS'
REPLY IN SUPPORT OF THEIR MOTION TO STAY filed by Alticor, Inc., Amway
Corp., Cellco Partnership, HSN, Inc., Newegg, Inc., QVC, Inc., Sprint/United
Management Company, Verizon Communications, Inc.. (Smith, Melissa) (Entered:
04/13/2012)
04/17/2012
103 SCHEDULING AND DISCOVERY ORDER: Pretrial Conference set for
9/30/2013 09:00 AM in Ctrm 403 (Texarkana) before Magistrate Judge Caroline
Craven. Amended Pleadings due by 4/27/2012. Discovery due by 6/14/2013.
Dispositive Motions due by 6/28/2013.. Signed by Magistrate Judge Caroline
Craven on 4/16/2012. (sm, ) (Entered: 04/17/2012)
04/17/2012
NOTICE of Hearing on Motion 86 Opposed MOTION to Stay : Motion Hearing
set for 5/11/2012 11:00 AM in Ctrm 403 (Texarkana) before Magistrate Judge
Caroline Craven. (lfs, ) (Entered: 04/17/2012)
04/18/2012
104 SUR−REPLY to Reply to Response to Motion re 86 Opposed MOTION to Stay
filed by TQP Development, LLC. (Fenster, Marc) (Entered: 04/18/2012)
04/25/2012
105 AMENDED ANSWER to 1 Complaint, AFFIRMATIVE DEFENSES AND,
COUNTERCLAIM against TQP Development, LLC by Verizon Communications,
Inc.. (Smith, Melissa) (Entered: 04/25/2012)
04/25/2012
106 AMENDED ANSWER to 1 Complaint, AFFIRMATIVE DEFENSES AND,
COUNTERCLAIM against TQP Development, LLC by Cellco Partnership.
(Smith, Melissa) (Entered: 04/25/2012)
04/25/2012
107 RESPONSE to 95 Answer to Complaint, Counterclaim of HSN, Inc. by TQP
Development, LLC. (Ni, Hao) (Entered: 04/25/2012)
04/26/2012
108 Amended ANSWER to 1 Complaint, by Sprint/United Management
Company.(Hargrove, Lindsey) (Entered: 04/26/2012)
04/27/2012
109 AMENDED ANSWER to 1 Complaint,, COUNTERCLAIM against TQP
Development, LLC by Alticor, Inc., Amway Corp.. (Hanasz, Joseph) (Entered:
A0010
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04/27/2012)
04/27/2012
110 NOTICE of Discovery Disclosure by HSN, Inc. (Muffo, Patrick) (Entered:
04/27/2012)
04/27/2012
111 NOTICE by Newegg, Inc. of Initial Disclosures (Brooks, Anthony) (Entered:
04/27/2012)
04/27/2012
112 NOTICE of Discovery Disclosure by Sprint/United Management Company Initial
Disclosures in Compliance with Scheduling Order (Hargrove, Lindsey) (Entered:
04/27/2012)
04/27/2012
113 NOTICE of Discovery Disclosure by QVC, Inc. (Initial Discovery Disclosures
served) (Durst, Timothy) (Entered: 04/27/2012)
04/27/2012
114 NOTICE of Discovery Disclosure by Alticor, Inc., Amway Corp. (Hanasz, Joseph)
(Entered: 04/27/2012)
05/01/2012
115 NOTICE of Discovery Disclosure by Verizon Communications, Inc. (Tice, Saritha)
(Entered: 05/01/2012)
05/01/2012
116 NOTICE of Discovery Disclosure by Cellco Partnership (Tice, Saritha) (Entered:
05/01/2012)
05/02/2012
117 Joint MOTION to Amend/Correct 103 Scheduling Order, (Agreed Discovery
Limitations) by Alticor, Inc., Amway Corp., Cellco Partnership, HSN, Inc.,
Newegg, Inc., QVC, Inc., Sprint/United Management Company, TQP
Development, LLC, Verizon Communications, Inc.. (Attachments: # 1 Text of
Proposed Order)(Durst, Timothy) (Entered: 05/02/2012)
05/03/2012
118 ORDER granting 117 Motion to Amend/Correct Scheduling and Discovery Order
AMENDING to include discovery limitations agreed to in the parties joint case
mgt statement. Signed by Magistrate Judge Caroline Craven on 5/3/2012. (sm, )
(Entered: 05/03/2012)
05/11/2012
119 Minute Entry for proceedings held before Magistrate Judge Caroline Craven:
Motion Hearing held on 5/11/2012 re 86 Opposed MOTION to Stay filed by
Verizon Communications, Inc., HSN, Inc., Cellco Partnership, Amway Corp.,
Newegg, Inc., Alticor, Inc., QVC, Inc., Sprint/United Management Company.
(Court Reporter Libby Crawford.) (lfs, ) (Entered: 05/11/2012)
05/11/2012
120 RESPONSE to 109 Amended Answer to Complaint, Counterclaim of Alticor, Inc.,
Amway Corp by TQP Development, LLC. (Ni, Hao) (Entered: 05/11/2012)
05/11/2012
121 RESPONSE to 106 Amended Answer to Complaint, Counterclaim of Cellco
Partnership by TQP Development, LLC. (Ni, Hao) (Entered: 05/11/2012)
05/11/2012
122 RESPONSE to 105 Amended Answer to Complaint, Counterclaim of Verizon
Communications, Inc by TQP Development, LLC. (Ni, Hao) (Entered: 05/11/2012)
05/18/2012
123 ORDER denying WITHOUT PREJUDICE 86 Motion to Stay. Signed by
Magistrate Judge Caroline Craven on 5/18/2012. (sm, ) (Entered: 05/18/2012)
05/30/2012
124 STIPULATION for Damages and Discovery for Claims Against Sprint/United
Management Company and Related Sprint Entities by Sprint/United Management
Company. (Hargrove, Lindsey) (Entered: 05/30/2012)
06/06/2012
125 Unopposed MOTION to Substitute Party by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Ni, Hao) (Entered: 06/06/2012)
06/08/2012
126 ORDER granting 125 Motion to Substitute Party. Verizon Communications
TERMINATED and Verizon Data Services becomes a dft as to all claims and
counterclaims between TQP. Verizon Communications is DISMISSED without
prejudice. Signed by Judge Michael H. Schneider on June 8, 2012. (rml, ) (Entered:
06/08/2012)
06/13/2012
127 NOTICE of Discovery Disclosure by HSN, Inc. (Muffo, Patrick) (Entered:
06/13/2012)
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06/13/2012
128 NOTICE of Discovery Disclosure by Alticor, Inc., Amway Corp. (Hanasz, Joseph)
(Entered: 06/13/2012)
06/13/2012
129 NOTICE of Discovery Disclosure by QVC, Inc. (Willis, Keith) (Entered:
06/13/2012)
06/13/2012
130 NOTICE of Discovery Disclosure by Sprint/United Management Company in
Compliance with Local Rule 3−4(a) (Hargrove, Lindsey) (Entered: 06/13/2012)
06/13/2012
131 NOTICE of Discovery Disclosure by Newegg, Inc. (Brooks, Anthony) (Entered:
06/13/2012)
06/13/2012
132 NOTICE of Discovery Disclosure by QVC, Inc. on behalf of all Defendants
(Willis, Keith) (Entered: 06/13/2012)
06/13/2012
133 NOTICE of Discovery Disclosure by Cellco Partnership, Verizon Data Services
LLC (Tice, Saritha) (Entered: 06/13/2012)
06/19/2012
134 CORPORATE DISCLOSURE STATEMENT filed by TQP Development, LLC
(Hoffman, Adam) (Entered: 06/19/2012)
07/02/2012
135 CORPORATE DISCLOSURE STATEMENT filed by Verizon Data Services LLC
(Tice, Saritha) (Entered: 07/02/2012)
07/11/2012
136 NOTICE of Attorney Appearance by Daniel H Brean on behalf of Newegg, Inc.
(Brean, Daniel) (Entered: 07/11/2012)
07/11/2012
137 STIPULATION of Dismissal by Sprint/United Management Company, TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Ni, Hao) (Entered:
07/11/2012)
07/16/2012
138 ORDER OF DISMISSAL With Prejudice re 137 Stipulation of Dismissal filed by
TQP Development, LLC, Dismissing all claims and counterclaims asserted
between plaintiff and Sprint/United Management Company. Signed by Judge
Michael H. Schneider on 7/14/2012. (sm, ) (Entered: 07/16/2012)
08/14/2012
139 ORDER REGARDING CLAIM CONSTRUCTION BRIEFING regarding for
efficiency purposes, one Defendant will be designated as Lead Defendant for
briefing and arguing claim construction issues and defendants must file a joint
notice designating the Lead Defendant 10 days prior to the deadline to exchange
proposed terms of contruction. Signed by Magistrate Judge Caroline Craven on
8/14/2012. (sm, ) (Entered: 08/14/2012)
08/31/2012
140 MOTION for modification of Order on Claim Construction Briefing and objection
to orderby Alticor, Inc., Amway Corp., HSN, Inc., Newegg, Inc.. (Attachments: # 1
Text of Proposed Order)(Brooks, Anthony) Modified on 9/4/2012 (sm, ). (Entered:
08/31/2012)
09/04/2012
141 NOTICE by Alticor, Inc., Amway Corp., Cellco Partnership, HSN, Inc., Newegg,
Inc., QVC, Inc., Verizon Data Services LLC of Designating Lead Defendant
(Brooks, Anthony) (Entered: 09/04/2012)
09/05/2012
142 STIPULATION of Dismissal by Cellco Partnership, TQP Development, LLC,
Verizon Data Services LLC. (Attachments: # 1 Text of Proposed Order)(Ni, Hao)
(Entered: 09/05/2012)
09/10/2012
143 ORDER granting 142 Stipulation of Dismissal filed by TQP Development, LLC,
Cellco Partnership, Verizon Data Services LLC. Verizon Data Services LLC, and
Cellco Partnership terminated. Signed by Judge Michael H. Schneider on 9/10/12.
(mrm, ) (Entered: 09/10/2012)
09/12/2012
144 Joint MOTION to Coordinate Claim Construction Briefing by Alticor, Inc.,
Amway Corp., HSN, Inc., Newegg, Inc., QVC, Inc., TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Brooks, Anthony) (Entered:
09/12/2012)
09/12/2012
145 Additional Attachments to Main Document (Cert of Conference): 144 Joint
MOTION to Coordinate Claim Construction Briefing.. (Brooks, Anthony)
Modified on 9/13/2012 (sm, ). (Entered: 09/12/2012)
A0012
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09/14/2012
146 ORDER granting 144 Motion to Coordinate Claim Construction Briefing. Signed
by Magistrate Judge Caroline Craven on 9/14/12. (bas) (Entered: 09/14/2012)
09/17/2012
147 RESPONSE to Motion re 140 MOTION Objection to Order on Claim Construction
Briefing and Motion to Modify same filed by TQP Development, LLC. (Hoffman,
Adam) (Entered: 09/17/2012)
09/20/2012
148 ORDER MODIFYING CLAIM CONSTRUCTION PROCEDURES granting in
part and denying in part 140 Motion to modify claim construction. Signed by
Magistrate Judge Caroline Craven on 9/20/2012. (sm, ) (Entered: 09/20/2012)
09/20/2012
149 NOTICE of Discovery Disclosure by Alticor, Inc., Amway Corp., HSN, Inc.,
Newegg, Inc., QVC, Inc. (Hanasz, Joseph) (Entered: 09/20/2012)
10/02/2012
150 MOTION for Leave to File Supplemental Complaint by TQP Development, LLC.
(Attachments: # 1 Exhibit A, # 2 Text of Proposed Order)(Hoffman, Adam)
(Entered: 10/02/2012)
10/19/2012
151 RESPONSE in Opposition re 150 MOTION for Leave to File Supplemental
Complaint filed by HSN, Inc., Newegg, Inc., QVC, Inc.. (Attachments: # 1 Exhibit
A)(Brooks, Anthony) (Entered: 10/19/2012)
10/19/2012
152 Joint MOTION to Dismiss by Alticor, Inc., Amway Corp., TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Ni, Hao) (Entered: 10/19/2012)
10/23/2012
153 ORDER, granting 152 Joint MOTION to Dismiss filed by Alticor, Inc., TQP
Development, LLC, Amway Corp. Amway Corp., and Alticor, Inc. terminated.
Signed by Judge Michael H. Schneider on 10/22/12. (mrm, ) (Entered: 10/23/2012)
10/31/2012
154 Joint MOTION to Dismiss by QVC, Inc., TQP Development, LLC. (Attachments:
# 1 Text of Proposed Order)(Ni, Hao) (Entered: 10/31/2012)
11/01/2012
155 ***FILED IN ERROR, PLEASE IGNORE.***RESPONSE in Support re 150
MOTION for Leave to File Supplemental Complaint filed by TQP Development,
LLC. (Hoffman, Adam) Modified on 11/2/2012 (sm, ). (Entered: 11/01/2012)
11/02/2012
***FILED IN ERROR, WRONG EVENT USED, ATTY MUST REFILE.
Document # 155, Response in support. PLEASE IGNORE.***
(sm, ) (Entered: 11/02/2012)
11/02/2012
156 ORDER GRANTING 154 Joint MOTION to Dismiss filed by TQP Development,
LLC, QVC, Inc. QVC terminated.. Signed by Judge Michael H. Schneider on
11/2/2012. (sm, ) (Entered: 11/02/2012)
11/02/2012
157 REPLY to Response to Motion re 150 MOTION for Leave to File Supplemental
Complaint filed by TQP Development, LLC. (Hoffman, Adam) (Entered:
11/02/2012)
11/12/2012
158 SUR−REPLY to Reply to Response to Motion re 150 MOTION for Leave to File
Supplemental Complaint filed by HSN, Inc., Newegg, Inc.. (Brooks, Anthony)
(Entered: 11/12/2012)
11/19/2012
159 Joint MOTION for Protective Order by HSN, Inc., Newegg, Inc., TQP
Development, LLC. (Attachments: # 1 [Proposed] Protective Order)(Brooks,
Anthony) (Entered: 11/19/2012)
11/20/2012
160 PROTECTIVE ORDER. Signed by Magistrate Judge Caroline Craven on
11/20/2012. (sm, ) (Entered: 11/20/2012)
11/26/2012
161 NOTICE by HSN, Inc., Newegg, Inc. JOINT NOTICE OF COMPLIANCE WITH
P.R. 4−2 (Muffo, Patrick) (Entered: 11/26/2012)
12/07/2012
162 NOTICE by HSN, Inc. JOINT CLAIM CONSTRUCTION AND PREHEARING
STATEMENT (Muffo, Patrick) (Entered: 12/07/2012)
12/17/2012
163 NOTICE by TQP Development, LLC of Parties Agreed Upon and Scheduled
Mediation (Hoffman, Adam) (Entered: 12/17/2012)
A0013
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12/18/2012
164 ORDER REASSIGNING REFERRAL. Case reassigned to Magistrate Judge Roy S
Payne for all pretrial purposes. Magistrate Judge Caroline Craven no longer
assigned to case. Signed by Judge Michael H. Schneider on 12/17/12. (mrm, )
(Entered: 12/18/2012)
01/04/2013
NOTICE of Hearing:Markman Hearing RESET for 3/12/2013 01:30 PM in Mag
Ctrm (Marshall) before Magistrate Judge Roy S Payne. Pretrial Conference RESET
for 9/30/2013 09:00 AM in Mag Ctrm (Marshall) before Magistrate Judge Roy S
Payne. (jml) (Entered: 01/04/2013)
01/07/2013
165 NOTICE of Attorney Appearance by Paul Anthony Kroeger on behalf of TQP
Development, LLC (Kroeger, Paul) (Entered: 01/07/2013)
01/14/2013
166 Order reassigning this case to United States District Judge Rodney Gilstrap and
referring this case to United States Magistrate Judge Roy Payne per General Order
13−3. For proposed scheduling order see Appendix E to General Order 13−3.
Judge Michael H. Schneider no longer assigned to the case. (tlh, ) (Entered:
01/14/2013)
01/22/2013
167 NOTICE of Attorney Appearance by James J Bosco, Jr on behalf of Newegg, Inc.
(Bosco, James) (Entered: 01/22/2013)
01/30/2013
ORDER. In preparation for the March 12, 2013 Markman Hearing, Plaintiff is
directed to file its Opening Claim Construction Brief no later than February 11,
2013. Defendants are directed to file their Responsive Brief no later than 14 days
later. Plaintiff may file a Reply Brief no later than 7 days after Defendants file their
Responsive Brief. The Joint Claim Construction Chart is to be filed no later than
March 7, 2013. Signed by Magistrate Judge Roy S. Payne on 1/30/2013. (rsp1)
(Entered: 01/30/2013)
01/31/2013
168 ORDER − consolidating the cases listed in the above−caption for pretrial purposes
only. Case No. 2:11−cv−248 is designated as the lead case. ALL FUTURE
FILINGS MUST BE MADE IN THE LEAD CASE UNTIL THIS
CONSOLIDATION ORDER IS VACATED. Signed by Magistrate Judge Roy S.
Payne on 1/31/2013. (ch, ) Modified on 1/31/2013 (ch, ). (Entered: 01/31/2013)
02/01/2013
169 ORDER, (Markman Hearing set for 3/12/2013 01:30 PM before Magistrate Judge
Roy S. Payne., Jury Selection set for 11/4/2013 09:00AM before Judge Rodney
Gilstrap., Pretrial Conference set for 10/16/2013 09:30 AM before Magistrate
Judge Roy S. Payne.). Signed by Magistrate Judge Roy S. Payne on 2/1/2013. (ch,
) (Entered: 02/01/2013)
02/07/2013
170 Joint MOTION to Dismiss WITH PREJUDICE by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Hoffman, Adam) (Entered:
02/07/2013)
02/08/2013
171 ORDER granting 170 Motion to Dismiss with Prejudice allclaims asserted between
them in TQP Development, LLC v. Allianz Life Insurance Company of North
America, Case No. 2:11−cv−249. Signed by Magistrate Judge Roy S. Payne on
2/8/13. (ehs, ) (Entered: 02/08/2013)
02/11/2013
172 CLAIM CONSTRUCTION BRIEF filed by TQP Development, LLC.
(Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5
Exhibit E)(Hoffman, Adam) (Entered: 02/11/2013)
02/11/2013
173 ***FILED IN ERROR PER ATTORNEY***Unopposed MOTION for
Extension of Time to File DEFENDANTS' MOTION FOR EXTENSION OF TIME
FOR CLAIM CONSTRUCTION BRIEFING AND HEARING by McAfee
Inc.(Parker, Robert) Modified on 2/12/2013 (ehs, ). (Entered: 02/11/2013)
02/12/2013
ORDER resetting Markman Hearing and briefing deadlines (Markman Hearing set
for 3/28/2013 09:00 AM in Mag Ctrm (Marshall) before Magistrate Judge Roy S.
Payne.),. Signed by Magistrate Judge Roy S. Payne on 2/12/13. (ehs, ) (Entered:
02/12/2013)
02/12/2013
174 MOTION to Compel by HSN, Inc., Newegg, Inc.. (Attachments: # 1 Exhibit A, # 2
Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit
G)(Muffo, Patrick) (Additional attachment(s) added on 2/13/2013: # 8 Text of
A0014
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 12 of 35
Proposed Order) (sm, ). (Entered: 02/12/2013)
02/15/2013
NOTICE of Hearing:Markman Hearing RESET for 3/12/2013 01:30 PM in Mag
Ctrm (Marshall) before Magistrate Judge Roy S. Payne. (jml) (Entered:
02/15/2013)
02/15/2013
175 Submission of PROPOSED DOCKET CONTROL ORDER by TQP Development,
LLC. (Attachments: # 1 Exhibit A)(Kroeger, Paul) (Entered: 02/15/2013)
02/20/2013
176 Joint MOTION to Stay All Pending Deadlines (for 30 days) by Disney Online,
TQP Development, LLC. (Attachments: # 1 Text of Proposed Order)(Unis, Joseph)
(Entered: 02/20/2013)
02/25/2013
177 Joint MOTION to Dismiss DEFENDANT DEERE &COMPANY by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 02/25/2013)
02/25/2013
178 CLAIM CONSTRUCTION BRIEF filed by Aflac Incorporated, Alaska Airlines,
Inc., Branch Bank and Trust Company, CHS, Inc., Caterpillar Inc., Deere
&Company, Disney Online, Expedia, Inc, Fareportal, Inc., Farmers Group, Inc.,
HSN, Inc., Horizon Air Industries, Inc., Hotwire, Inc., Humana Inc., McAfee Inc,
Newegg, Inc., Orbitz, LLC, Rite Aid Corporation, State Farm Mutual Automobile
Insurance Company, The Boeing Company, The Medical Protective Company,
Valero Energy Corporation, Valero Marketing and Supply Company.
(Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5
Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Errata H, # 9 Exhibit I, # 10 Exhibit J,
# 11 Exhibit L, # 12 Exhibit M, # 13 Exhibit N, # 14 Exhibit O, # 15 Exhibit P, #
16 Exhibit Q, # 17 Exhibit R, # 18 Exhibit S, # 19 Exhibit T, # 20 Exhibit U, # 21
Exhibit V, # 22 Exhibit W, # 23 Exhibit X, # 24 Exhibit Y, # 25 Exhibit Z)(Parker,
Robert) (Entered: 02/25/2013)
02/25/2013
179 SEALED PATENT ADDITIONAL ATTACHMENTS to Main Document: 178
Claim Construction Brief filed by Defendants (Attachments: # 1 Exhibit K)(Parker,
Robert) (Entered: 02/25/2013)
02/26/2013
180 NOTICE by McAfee Inc re 178 Claim Construction Brief,,, ERRATA TO
CORRECT PAGE NUMBERING ON DOCKET 178 − CLAIM CONSTRUCTION
BRIEF FILED BY DEFENDANTS (Attachments: # 1 Errata TO CORRECT PAGE
NUMBERING ON DKT. 178)(Parker, Robert) (Entered: 02/26/2013)
02/26/2013
181 Joint MOTION to Dismiss JEFFERIES &COMPANY, INC. by TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered:
02/26/2013)
02/27/2013
182 NOTICE of Attorney Appearance by Ricardo Joel Bonilla on behalf of CHS, Inc.,
Deere &Company, Expedia, Inc, Hotwire, Inc., Orbitz, LLC (Bonilla, Ricardo)
(Entered: 02/27/2013)
02/27/2013
183 NOTICE of Attorney Appearance by Wasif H Qureshi on behalf of CHS, Inc.,
Expedia, Inc, Hotwire, Inc., Orbitz, LLC (Qureshi, Wasif) (Entered: 02/27/2013)
02/27/2013
184 ORDER − The Court sua sponte VACATES the Consolidation Order with respect
to member case No. 2:12−CV−59. All orders entered in the lead case prior to this
Order shall continue to apply in the former member case. The Court intends to
keep the former member case on the same schedule as the consolidated action, and
to hold joint settings (e.g,. Markman hearing) whenappropriate. Signed by
Magistrate Judge Roy S. Payne on 2/27/2013. (ch, ) (Entered: 02/27/2013)
02/27/2013
185 ORDER The Court sua sponte VACATES the Consolidation Order with respect to
member case No. 2:11−CV−396. All orders entered in the lead case prior to this
Order shall continue to apply in the former member case. The Court intends to
keep the former member case on the same schedule as the consolidated action, and
to hold joint settings (e.g,. Markman hearing) when appropriate. Signed by
Magistrate Judge Roy S. Payne on 2/27/2013. (ch, ) (Entered: 02/27/2013)
02/27/2013
186 ORDER granting 177 Motion to Dismiss. Dft Deere &Company are hereby
dismissed with prejudice. Signed by Magistrate Judge Roy S. Payne on 2/27/2013.
(ch, ) (Entered: 02/27/2013)
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02/27/2013
187 Unopposed MOTION to Withdraw as Attorney by CHS, Inc., Deere &Company,
Hotwire, Inc., Orbitz, LLC. (Attachments: # 1 Text of Proposed Order)(Du, Jane)
(Entered: 02/27/2013)
02/28/2013
188 ORDER appointing David Keyzer as the courts technical advisor.. Signed by
Magistrate Judge Roy S. Payne on 2/28/2013. (ch, ) (Entered: 02/28/2013)
02/28/2013
189 ORDER granting 187 Motion to Withdraw as Attorney. Attorney Jane J Du
terminated. Signed by Magistrate Judge Roy S. Payne on 2/28/2013. (ch, )
(Entered: 02/28/2013)
02/28/2013
190 Joint MOTION to Dismiss DEFENDANTS VALERO ENERGY CORPORATION
AND VALERO MARKETING AND SUPPLY COMPANY by TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered:
02/28/2013)
03/04/2013
191 ORDER granting 190 Motion to Dismiss. All claims and counterclaims between
TQP and Valero Energy Corp and Valero Marketing &Supply Co in case
2:11cv399 with prejudice, all attorneys' fees and costs are to be borne by the party
that incurred them. Signed by Magistrate Judge Roy S. Payne on 3/3/13. (ehs, )
(Entered: 03/04/2013)
03/04/2013
192 REPLY to 178 Claim Construction Brief filed by TQP Development, LLC.
(Hoffman, Adam) (Entered: 03/04/2013)
03/04/2013
193 RESPONSE in Opposition re 174 MOTION to Compel filed by TQP Development,
LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5
Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Affidavit OF ERICH
SPANGENBERG, # 10 Text of Proposed Order)(Hoffman, Adam) (Entered:
03/04/2013)
03/05/2013
194 ORDER granting Stipulated Motion for Dismissal with prejudice of all claims and
counterclaims between pltf and deft Jefferies &Company Inc. All attorneys' fees
and costs are to be borne by the party that incurred them. Motions terminated: 181
Joint MOTION to Dismiss JEFFERIES &COMPANY, INC. filed by TQP
Development, LLC.. Signed by Magistrate Judge Roy S. Payne on 3/4/13. (ehs, )
(Entered: 03/05/2013)
03/05/2013
195 ***FILED IN ERROR, PLEASE IGNORE***NOTICE by TQP Development,
LLC of Attorney Withdrawal (Attachments: # 1 Text of Proposed Order)(Ni, Hao)
Modified on 3/6/2013 (sm, ). (Entered: 03/05/2013)
03/06/2013
196 NOTICE of Attorney Appearance by David Nicholas Patariu on behalf of Rite Aid
Corporation (Patariu, David) (Entered: 03/06/2013)
03/06/2013
197 Unopposed MOTION to Withdraw as Attorney by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Ni, Hao) (Entered: 03/06/2013)
03/06/2013
***FILED IN ERROR, WRONG EVENT USED. Document # 195, Notice.
PLEASE IGNORE.***
(sm, ) (Entered: 03/06/2013)
03/07/2013
ORDER granting 197 Motion to Withdraw as Attorney. Attorney Hao Ni
terminated. (No PDF Document Attached). Signed by Magistrate Judge Roy S.
Payne on March 7, 2013. (jml) (Entered: 03/07/2013)
03/08/2013
198 NOTICE by TQP Development, LLC OF SUBMISSION OF TECHNICAL
TUTORIAL (Attachments: # 1 Exhibit A)(Hoffman, Adam) (Entered: 03/08/2013)
03/08/2013
199 SUBMISSION OF JOINT CLAIM CONSTRUCTION CHART filed by TQP
Development, LLC. (Attachments: # 1 Exhibit A(Hoffman, Adam) (Entered:
03/08/2013)
03/08/2013
200 NOTICE by McAfee Inc OF SERVICE OF DEFENDANTS' TECHNOLOGY
TUTORIAL (Parker, Robert) (Entered: 03/08/2013)
03/11/2013
201 NOTICE of Settlement and Motion to Stay by Alaska Airlines, Inc., Horizon Air
Industries, Inc., TQP Development, LLC (Attachments: # 1 Text of Proposed
A0016
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Order Granting Motion to Stay)(Drake, Kirby) (Entered: 03/11/2013)
03/11/2013
202 NOTICE by McAfee Inc JOINT SUBMISSION OF PROPOSED CLAIM TERMS
AND ORDER FOR ARGUMENT AT MARKMAN HEARING (Attachments: # 1
Exhibit A)(Parker, Robert) (Entered: 03/11/2013)
03/11/2013
203 REPLY to Response to Motion re 174 MOTION to Compel filed by HSN, Inc.,
Newegg, Inc.. (Attachments: # 1 Exhibit H)(Muffo, Patrick) (Entered: 03/11/2013)
03/12/2013
204 ORDER re 201 Notice of Settlement filed by TQP Development, LLC, Horizon
Air Industries, Inc., and Alaska Airlines, Inc. The parties are ORDERED to file
dismissal papers within 30 days. Defendants' request to be excused from the claim
construction hearing is DENIED. Defendants may choose to not attend the hearing,
but they will be bound by the outcome of the hearing. Signed by Magistrate Judge
Roy S. Payne on 3/12/2013. (rsp1) (Entered: 03/12/2013)
03/12/2013
205 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne:
Markman Hearing held on 3/12/2013. (Court Reporter Shelly Holmes, CSR.)
(Attachments: # 1 Attorney Sign−in Sheet) (jml) (Entered: 03/13/2013)
03/15/2013
206 Joint MOTION to Dismiss DEFENDANTS ALASKA AIRLINES, INC. AND
HORIZON AIR INDUSTRIES, INC. by TQP Development, LLC. (Attachments: # 1
Text of Proposed Order)(Hoffman, Adam) (Entered: 03/15/2013)
03/19/2013
207 ORDER granting 206 Motion to Dismiss. All claims and counterclaims asserted in
TQP Development, LLC v. Alaska Air Group, Inc., C.A. 11−CV−398, between
plaintiff TQP Development, LLC and defendants Alaska Airlines, Inc. and Horizon
Air Industries, Inc. are hereby dismissed with prejudice. All attorneys fees and
costs are to be borne by the party that incurred them. Signed by Magistrate Judge
Roy S. Payne on 3/18/13. (ehs, ) (Entered: 03/19/2013)
03/22/2013
208 SUR−REPLY to Reply to Response to Motion re 174 MOTION to Compel filed by
TQP Development, LLC. (Hoffman, Adam) (Entered: 03/22/2013)
03/25/2013
209 Joint MOTION to Dismiss Without Prejudice by Branch Bank and Trust Company,
Radware, Inc.. (Attachments: # 1 Text of Proposed Order)(Craft, Roger) (Entered:
03/25/2013)
04/08/2013
210 ORDER granting 209 Motion to Dismiss. All claims for relief asserted between
BBTand Radware herein are dismissed without prejudice. Signed by Magistrate
Judge Roy S. Payne on 4/8/2013. (ch, ) (Entered: 04/08/2013)
04/08/2013
211 DOCKET CONTROL ORDER − Motions due by 9/23/2013., Proposed Pretrial
Order due by 10/7/2013., Jury Selection set for 11/4/2013 09:00AM before Judge
Rodney Gilstrap., Pretrial Conference set for 10/16/2013 09:30 AM before
Magistrate Judge Roy S. Payne. Signed by Magistrate Judge Roy S. Payne on
4/8/2013. (ch, ) (Entered: 04/08/2013)
04/17/2013
212 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
3/12/13 (Claim Construction Hearing) before Judge Roy Payne. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 663−5082
(shellyholmes@skynetcountry.com).
NOTICE RE REDACTION OF
TRANSCRIPTS: The parties have seven (7) business days to file with the
Court a Notice of Intent to Request Redaction of this transcript. If no such
Notice is filed, the transcript will be made remotely electronically available to
the public without redaction after 90 calendar days. The policy is located on
our website at www.txed.uscourts.gov
Transcript may be viewed at the court
public terminal or purchased through the Court Reporter/Transcriber before the
deadline for Release of Transcript Restriction. After that date it may be obtained
through PACER.. Redaction Request due 5/13/2013. Redacted Transcript Deadline
set for 5/23/2013. Release of Transcript Restriction set for 7/19/2013. (sholmes, )
(Entered: 04/17/2013)
04/30/2013
213 Joint MOTION to Dismiss DEFENDANT HUMANA, INC. by TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered:
04/30/2013)
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05/02/2013
214 ORDER granting 213 Motion to Dismiss. All claims and counterclaims asserted
between plaintiff TQP Development, LLC and defendant Human, Inc. in TQP
Development, LLC v. Aflac Incorporated, C.A. No. 11−CV−397, are hereby
dismissed with prejudice. Signed by Magistrate Judge Roy S. Payne on 5/1/2013.
(ch, ) (Entered: 05/02/2013)
05/06/2013
215 Emergency MOTION to Compel DEFENDANT EXPEDIA, INC. TO RESPOND
TO FIRST SET OF INTERROGATORIES AND TO PRODUCE WITNESS(ES)
FOR 30(b)(6) DEPOSITION by TQP Development, LLC. (Attachments: # 1
Exhibit A to Motion to Compel, # 2 Exhibit B to Motion to Compel, # 3 Affidavit
of Paul A. Kroeger In Support of Motion to Compel, # 4 Text of Proposed
Order)(Kroeger, Paul) (Entered: 05/06/2013)
05/07/2013
216 Joint MOTION to Dismiss DEFENDANT THE MEDICAL PROTECTIVE
COMPANY by TQP Development, LLC. (Attachments: # 1 Text of Proposed
Order)(Kroeger, Paul) (Additional attachment(s) added on 5/8/2013: # 2 REVISED
ORDER) (sm, ). (Entered: 05/07/2013)
05/08/2013
217 MOTION to Dismiss Based on Plaintiff's Failure to Provide Infringement
Contentions by Expedia, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text
of Proposed Order)(Qureshi, Wasif) (Entered: 05/08/2013)
05/10/2013
218 ORDER granting 216 Motion to Dismiss. The Medical Protective Company, are
hereby dismissed with prejudice. Signed by Magistrate Judge Roy S. Payne on
5/9/2013. (ch, ) (Entered: 05/10/2013)
05/13/2013
219 Unopposed MOTION for Extension of Time to File Response/Reply as to 215
Emergency MOTION to Compel DEFENDANT EXPEDIA, INC. TO RESPOND
TO FIRST SET OF INTERROGATORIES AND TO PRODUCE WITNESS(ES)
FOR 30(b)(6) DEPOSITIONEmergency MOTION to Compel DEFENDANT
EXPEDIA, INC. TO RESPOND TO FIRST SET OF INTERROGATORIES AND TO
PRODUCE WITNESS(ES) FOR 30(b)(6) DEPOSITION Defendant Expedia, Inc.'s
Unopposed Motion to Amend Deadlines for Response to Plaintiff's Emergency
Motion to Compel by Expedia, Inc. (Attachments: # 1 Text of Proposed
Order)(Qureshi, Wasif) (Entered: 05/13/2013)
05/14/2013
220 Unopposed MOTION to Amend the Parties' Protective Order by Aflac
Incorporated, Branch Bank and Trust Company, CHS, Inc., Expedia, Inc, Farmers
Group, Inc., HSN, Inc., Hotwire, Inc., McAfee Inc, Newegg, Inc., Orbitz, LLC,
Rite Aid Corporation, State Farm Mutual Automobile Insurance Company, TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Parker, Robert)
(Additional attachment(s) added on 5/15/2013: # 2 REVISED ORDER) (ch, ).
(Entered: 05/14/2013)
05/15/2013
221 FIRST AMENDED PROTECTIVE ORDER. Signed by Magistrate Judge Roy S.
Payne on 5/15/2013. (ch, ) (Entered: 05/15/2013)
05/15/2013
222 ORDER granting 219 Motion for Extension of Time to File Response/Reply to
Emergency Motion to Compel. Hearing in Open Court on 5/22/2013 @ 10:00 am.
Signed by Magistrate Judge Roy S. Payne on 5/15/2013. (ch, ) (Entered:
05/15/2013)
05/15/2013
ORDER Setting Hearing on Motion 215 Emergency MOTION to Compel
DEFENDANT EXPEDIA, INC. TO RESPOND TO FIRST SET OF
INTERROGATORIES AND TO PRODUCE WITNESS(ES) FOR 30(b)(6)
DEPOSITIONEmergency MOTION to Compel DEFENDANT EXPEDIA, INC. TO
RESPOND TO FIRST SET OF INTERROGATORIES AND TO PRODUCE
WITNESS(ES) FOR 30(b)(6) DEPOSITION : Motion Hearing set for 5/22/2013
10:00 AM before Magistrate Judge Roy S. Payne.. Signed by Magistrate Judge
Roy S. Payne on 5/15/2013. (ch, ) (Entered: 05/15/2013)
05/15/2013
223 RESPONSE in Opposition re 215 Emergency MOTION to Compel DEFENDANT
EXPEDIA, INC. TO RESPOND TO FIRST SET OF INTERROGATORIES AND TO
PRODUCE WITNESS(ES) FOR 30(b)(6) DEPOSITIONEmergency MOTION to
Compel DEFENDANT EXPEDIA, INC. TO RESPOND TO FIRST SET OF
INTERROGATORIES AND TO PRODUCE WITNESS(ES) FOR 30(b)(6)
DEPOSITION filed by Expedia, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, #
3 Exhibit C, # 4 Text of Proposed Order)(Qureshi, Wasif) (Entered: 05/15/2013)
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05/17/2013
224 RESPONSE to Motion re 217 MOTION to Dismiss Based on Plaintiff's Failure to
Provide Infringement Contentions filed by TQP Development, LLC. (Attachments:
# 1 Exhibit 1, # 2 Exhibit 2, # 3 Text of Proposed Order)(Kroeger, Paul) (Entered:
05/17/2013)
05/17/2013
225 REPLY to Response to Motion re 215 Emergency MOTION to Compel
DEFENDANT EXPEDIA, INC. TO RESPOND TO FIRST SET OF
INTERROGATORIES AND TO PRODUCE WITNESS(ES) FOR 30(b)(6)
DEPOSITIONEmergency MOTION to Compel DEFENDANT EXPEDIA, INC. TO
RESPOND TO FIRST SET OF INTERROGATORIES AND TO PRODUCE
WITNESS(ES) FOR 30(b)(6) DEPOSITION (AND OPPOSITION TO CROSS
MOTION FOR PROTECTIVE ORDER) filed by TQP Development, LLC.
(Attachments: # 1 Exhibit 1, # 2 Exhibit 2)(Kroeger, Paul) (Entered: 05/17/2013)
05/20/2013
226 CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by
Magistrate Judge Roy S. Payne on 5/20/2013. (ch, ) (Entered: 05/20/2013)
05/20/2013
227 Cross MOTION for Protective Order by Expedia, Inc. (Attachments: # 1 Text of
Proposed Order)(Qureshi, Wasif) (Entered: 05/20/2013)
05/20/2013
228 NOTICE by Branch Bank and Trust Company for Issuance of Subpoena to F5
Networks, Inc., Subpoena (Phipps, Charles) (Entered: 05/20/2013)
05/20/2013
229 ***FILED IN ERROR, PLEASE IGNORE***RESPONSE in Support re 217
MOTION to Dismiss Based on Plaintiff's Failure to Provide Infringement
Contentions filed by Expedia, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit
C)(Qureshi, Wasif) Modified on 5/21/2013 (sm, ). (Entered: 05/20/2013)
05/20/2013
230 ***DEFICIENT DOCUMENT, PLEASE IGNORE***SEALED
ADDITIONAL ATTACHMENTS to Main Document: 229 Response in Support of
Motion. Exhibit B (Qureshi, Wasif) Modified on 5/21/2013 (sm, ). Modified on
5/21/2013 (sm, ). (Entered: 05/20/2013)
05/20/2013
231 SUR−REPLY to Reply to Response to Motion re 215 Emergency MOTION to
Compel DEFENDANT EXPEDIA, INC. TO RESPOND TO FIRST SET OF
INTERROGATORIES AND TO PRODUCE WITNESS(ES) FOR 30(b)(6)
DEPOSITIONEmergency MOTION to Compel DEFENDANT EXPEDIA, INC. TO
RESPOND TO FIRST SET OF INTERROGATORIES AND TO PRODUCE
WITNESS(ES) FOR 30(b)(6) DEPOSITION filed by Expedia, Inc. (Attachments: #
1 Exhibit A, # 2 Exhibit C)(Qureshi, Wasif) Modified on 5/21/2013 (sm, ).
(Entered: 05/20/2013)
05/20/2013
232 ***DEFICIENT DOCUMENT, PLEASE IGNORE***SEALED
ADDITIONAL ATTACHMENTS to Main Document: 231 Sur−Reply to Reply to
Response to Motion,. (Qureshi, Wasif) Modified on 5/21/2013 (sm, ). (Entered:
05/20/2013)
05/20/2013
233 RESPONSE in Opposition re 227 Cross MOTION for Protective Order filed by
TQP Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger,
Paul) (Entered: 05/20/2013)
05/21/2013
***FILED IN ERROR, WRONG EVENT USED, ATTY MUST REFILE.
Document # 229, Response in support. PLEASE IGNORE.***
(sm, ) (Entered: 05/21/2013)
05/21/2013
NOTICE of DEFICIENCY regarding the 230, Sealed Additional Attachment,
submitted by Expedia, Inc., due to not include a cert of authority to seal, exhibits
not attached separately and linked to a filed in error document. Correction should
be made by 1 business day and refiled. (sm, ) (Entered: 05/21/2013)
05/21/2013
NOTICE FROM CLERK re 231 Sur−Reply to Reply to Response to Motion. This
entry has been modified to reflect that it is Only a Surreply to 215 Emergency
Motion since a response to #227 has not been filed yet so a reply canot be filed at
this time. (sm, ) (Entered: 05/21/2013)
05/21/2013
NOTICE of DEFICIENCY regarding the #232 Sealed Additional Attachment
submitted by Expedia, Inc. No certificate of authority to seal and exhibits not
A0019
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 17 of 35
separately attached. Correction should be made by 1 business day and refiled. (sm,
) (Entered: 05/21/2013)
05/21/2013
234 REPLY to Response to Motion re 217 MOTION to Dismiss Based on Plaintiff's
Failure to Provide Infringement Contentions filed by Expedia, Inc. (Attachments: #
1 Exhibit A, # 2 Exhibit C)(Qureshi, Wasif) (Entered: 05/21/2013)
05/21/2013
235 SEALED ADDITIONAL ATTACHMENTS to Main Document: 234 Reply to
Response to Motion. (Attachments: # 1 Exhibit B)(Qureshi, Wasif) (Entered:
05/21/2013)
05/21/2013
236 SEALED ADDITIONAL ATTACHMENTS to Main Document: 231 Sur−Reply to
Reply to Response to Motion,. (Attachments: # 1 Exhibit B)(Qureshi, Wasif)
(Entered: 05/21/2013)
05/22/2013
237 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne: Motion
Hearing held on 5/22/2013 re 215 Emergency MOTION to Compel DEFENDANT
EXPEDIA, INC. TO RESPOND TO FIRST SET OF INTERROGATORIES AND TO
PRODUCE WITNESS(ES) FOR 30(b)(6) DEPOSITIONEmergency MOTION to
Compel DEFENDANT EXPEDIA, INC. TO RESPOND TO FIRST SET OF
INTERROGATORIES AND TO PRODUCE WITNESS(ES) FOR 30(b)(6)
DEPOSITION filed by TQP Development, LLC. (Court Reporter Shelly Holmes.)
(bga, ) (Entered: 05/23/2013)
05/28/2013
238 DEMAND for Trial by Jury by Branch Bank and Trust Company. (Phipps,
Charles) (Entered: 05/28/2013)
05/31/2013
239 Joint MOTION to Dismiss DEFENDANT FAREPORTAL, INC. by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 05/31/2013)
06/03/2013
240 ORDER granting 239 Motion to Dismiss. Dft Fareportal Inc is hereby dismissed
with Prejudice. Signed by Magistrate Judge Roy S. Payne on 6/3/2013. (ch, )
(Entered: 06/03/2013)
06/07/2013
241 Joint MOTION to Dismiss DEFENDANT DISNEY ONLINE by TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered:
06/07/2013)
06/07/2013
242 ***FILED IN ERROR. WRONG CASE. PLEASE IGNORE.***ORDER
granting 176 Motion to Stay. All deadlines are hereby stayed until July 23, 2013 or
further order by the Court. Signed by Judge Rodney Gilstrap on 6/7/2013. (ch, )
Modified on 6/10/2013 (ch, ). (Entered: 06/07/2013)
06/10/2013
***FILED IN ERROR. CLERK FILED IN WRONG CASE PLEASE
DISREGARD Document # 242, Order. PLEASE IGNORE.***
(ch, ) (Entered: 06/10/2013)
06/10/2013
243 Joint MOTION to Amend/Correct DOCKET CONTROL ORDER (DKT. NO. 211)
by TQP Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger,
Paul) (Entered: 06/10/2013)
06/11/2013
244 ORDER amending docket control order # 211 (Complete Fact Discovery and file
Motions to Compel Discovery due by 8/5/2013., To serve Disclosures for Expert
Witness List due by 6/24/2013.), Deadline to Exchange Privilege Logs due
6/11/13. Motions terminated: 243 Joint MOTION to Amend/Correct DOCKET
CONTROL ORDER (DKT. NO. 211) filed by TQP Development, LLC.. Signed by
Magistrate Judge Roy S. Payne on 6/11/13. (ehs, ) (Entered: 06/11/2013)
06/12/2013
245 Agreed MOTION to Dismiss DEFENDANT AFLAC INCORPORATED by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 06/12/2013)
06/13/2013
246 ORDER granting 245 Motion to Dismiss. Dft Aflac Incorporated is hereby
dismissed without prejudice. Signed by Magistrate Judge Roy S. Payne on
6/13/2013. (ch, ) (Entered: 06/13/2013)
A0020
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06/14/2013
247 Joint MOTION to Amend/Correct FURTHER AMEND THE DOCKET CONTROL
ORDER by TQP Development, LLC. (Attachments: # 1 Text of Proposed
Order)(Kroeger, Paul) (Entered: 06/14/2013)
06/17/2013
248 Letter Brief filed by Expedia, Inc (Attachments: # 1 Exhibit A)(Qureshi, Wasif)
(Entered: 06/17/2013)
06/17/2013
249 Letter Brief filed by Hotwire, Inc. (Attachments: # 1 Exhibit A)(Qureshi, Wasif)
(Entered: 06/17/2013)
06/17/2013
250 Letter Brief filed by Orbitz, LLC (Attachments: # 1 Exhibit A)(Qureshi, Wasif)
(Entered: 06/17/2013)
06/17/2013
251 ***DEFICIENT DOCUMENT, PLEASE IGNORE***SEALED Letter Brief
filed by State Farm Mutual Automobile Insurance Company. (Attachments: # 1
Exhibit A)(Fenton, Truman) Modified on 6/18/2013 (sm, ). (Entered: 06/17/2013)
06/17/2013
252 Letter Brief filed by Branch Bank and Trust Company. (Attachments: # 1 Exhibit
A)(Phipps, Charles) (Entered: 06/17/2013)
06/17/2013
253 Letter Brief filed by Newegg, Inc., (Attachments: # 1 Exhibit A (Letter
Brief))(Brooks, Anthony) Modified on 6/18/2013 (sm, ). (Entered: 06/17/2013)
06/18/2013
NOTICE FROM CLERK re 253 Notice of Compliance − Letter Brief. THis entry
was modified to reflect that the letter brief is only filed by Newegg instead of all
parties previously entered. (sm, ) (Entered: 06/18/2013)
06/18/2013
NOTICE of DEFICIENCY regarding the #251 Sealed Letter Brief submitted by
State Farm Mutual Automobile Insurance Company. No certificate of authority to
seal statement was included. Correction should be made by 1 business day and
refiled. (sm, ) (Entered: 06/18/2013)
06/18/2013
254 SEALED Letter Brief filed by State Farm Mutual Automobile Insurance Company.
(Attachments: # 1 Exhibit A)(Fenton, Truman) (Entered: 06/18/2013)
06/19/2013
255 Joint MOTION to Amend/Correct DEADLINE TO COMPLETE MEDIATION by
TQP Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger,
Paul) (Entered: 06/19/2013)
06/21/2013
256 ORDER granting 255 Motion to Amend docket control order. Deadline extended to
7/20/13 to complete mediation. Signed by Magistrate Judge Roy S. Payne on
6/20/13. (ehs, ) (Entered: 06/21/2013)
06/24/2013
257 Agreed MOTION to Amend/Correct DOCKET CONTROL ORDER (DKT. NO.
211) by HSN, Inc.. (Attachments: # 1 Text of Proposed Order)(Muffo, Patrick)
(Entered: 06/24/2013)
06/24/2013
258 Joint MOTION to Dismiss DEFENDANT CHS, INC. by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered: 06/24/2013)
06/25/2013
259 ORDER granting 258 Motion to Dismiss all claims and counterclaims asserted
between TQP Development, LLC and CHS, Inc., all attorneys fees and costs are to
be borne by the party that incurred them. Signed by Magistrate Judge Roy S. Payne
on 6/25/13. (ehs, ) (Entered: 06/25/2013)
06/25/2013
260 ORDER granting 257 Motion to Amend docket control order. Deadline extended to
complete Fact Discovery and file Motions to Compel related to ATTreset to
7/22/13. Signed by Magistrate Judge Roy S. Payne on 6/25/13. (ehs, ) (Entered:
06/25/2013)
06/26/2013
261 Joint MOTION to Dismiss DEFENDANT STATE FARM MUTUAL
AUTOMOBILE INSURANCE COMPANY by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered: 06/26/2013)
06/27/2013
262 Joint MOTION to Dismiss DEFENDANT RITE AID CORPORATION by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 06/27/2013)
06/28/2013
263 ORDER − The Court has received Mr. Keyzers invoice for services through March
14, 2013 payment to be promptly made Signed by Magistrate Judge Roy S. Payne
A0021
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on 6/27/13. (ehs, ) (Entered: 06/28/2013)
07/01/2013
264 ORDER granting 262 Motion to Dismiss With Prejudice of all claims and
counterclaims asserted between plaintiff TQP Development, LLC and defendant
Rite Aid Corporation. All attorneys fees and costs are to be borne by the party that
incurred them. Signed by Magistrate Judge Roy S. Payne on 7/1/13. (ehs, )
(Entered: 07/01/2013)
07/01/2013
265 ORDER granting 261 Motion to Dismiss With Prejudice of all claims and
counterclaims asserted between TQP Development, LLC and State Farm Mutual
Automobile Insurance Company. All attorneys fees and costs are to be borne by the
party that incurred them. Signed by Magistrate Judge Roy S. Payne on 7/1/13. (ehs,
) (Entered: 07/01/2013)
07/01/2013
266 RESPONSE to Notice of Compliance − Letter Brief re 253 Notice of Compliance
− Letter Brief filed by CHS, Inc., Expedia, Inc, HSN, Inc., Newegg, Inc., Hotwire,
Inc., Farmers Group, Inc., Branch Bank and Trust Company, State Farm Mutual
Automobile Insurance Company, Orbitz, LLC filed by TQP Development, LLC.
(Attachments: # 1 Exhibit 1−Letter Brief)(Kroeger, Paul) (Entered: 07/01/2013)
07/01/2013
267 RESPONSE to Notice of Compliance − Letter Brief re 248 Notice of Compliance
− Letter Brief filed by Expedia, Inc Filed by TQP Development, LLC filed by TQP
Development, LLC. (Attachments: # 1 Exhibit 1−Letter Brief)(Hoffman, Adam)
(Entered: 07/01/2013)
07/01/2013
268 RESPONSE to Notice of Compliance − Letter Brief re 249 Notice of Compliance
− Letter Brief filed by Hotwire, Inc. Filed by TQP Development, LLC filed by TQP
Development, LLC. (Attachments: # 1 Exhibit 1−Letter Brief)(Hoffman, Adam)
(Entered: 07/01/2013)
07/01/2013
269 RESPONSE to Notice of Compliance − Letter Brief re 250 Notice of Compliance
− Letter Brief filed by Orbitz, LLC Filed by TQP Development, LLC filed by TQP
Development, LLC. (Attachments: # 1 Exhibit 1−Letter Brief)(Hoffman, Adam)
(Entered: 07/01/2013)
07/02/2013
270 RESPONSE to Notice of Compliance − Letter Brief re 252 Notice of Compliance
− Letter Brief filed by Branch Bank and Trust Company filed by TQP
Development, LLC. (Attachments: # 1 Exhibit 1−Letter Brief)(Hoffman, Adam)
(Entered: 07/02/2013)
07/03/2013
ORDER finding as moot 176 Motion to Stay. Signed by Magistrate Judge Roy S.
Payne on 7/3/2013. (rsp1, ) (Entered: 07/03/2013)
07/03/2013
ORAL ORDER granting 215 Motion to Compel; denying 227 Motion for
Protective Order (See hearing minutes, Dkt. No. 237). Signed by Magistrate Judge
Roy S. Payne on 3/22/2013. (rsp1) (Entered: 07/03/2013)
07/03/2013
NOTICE of Hearing on Motion 150 MOTION for Leave to File Supplemental
Complaint, 174 MOTION to Compel : Motion Hearing set for 7/19/2013 09:30
AM in Mag Ctrm (Marshall) before Magistrate Judge Roy S. Payne. (bga, )
(Entered: 07/03/2013)
07/03/2013
271 ORDER granting 241 Motion to Dismiss − for Dismissal With Prejudice of all
claims asserted by plaintiff TQP Development, LLC against defendant Disney
Online in the lead consolidated case, TQP Development, LLC v. 1−800
Flowers.com, Inc., Case No. 2:11−cv−248, and TQP Development, LLC v.
DirecTv, Inc., Case No. 2:11−cv−399, and all counterclaims by Disney Online
against TQP dismissed as moot. All attorneys fees and costs are to be borne by the
party that incurred them. Signed by Magistrate Judge Roy S. Payne on 7/3/13. (ehs,
) (Entered: 07/03/2013)
07/05/2013
272 ORDER granting in part and denying in part 247 Motion to Amend the Docket
Control Order as it related to Defendants Expedia and Farmers Group. Signed by
Magistrate Judge Roy S. Payne on 7/5/2013. (rsp1) (Entered: 07/05/2013)
07/08/2013
273 Letter Brief filed by Expedia, Inc (Attachments: # 1 Exhibit Exhibit A)(Qureshi,
Wasif) (Entered: 07/08/2013)
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07/08/2013
274 Letter Brief filed by Hotwire, Inc. (Attachments: # 1 Exhibit Exhibit A)(Qureshi,
Wasif) (Entered: 07/08/2013)
07/08/2013
275 Letter Brief filed by Orbitz, LLC (Attachments: # 1 Exhibit Exhibit A)(Qureshi,
Wasif) (Entered: 07/08/2013)
07/08/2013
276 Letter Brief filed by Newegg, Inc. (Attachments: # 1 Exhibit A)(Brooks, Anthony)
(Entered: 07/08/2013)
07/08/2013
277 Notice of Reply Letter Brief re 252 filed by Branch Bank and Trust Company.
(Attachments: # 1 Exhibit A)(Unis, Joseph) Modified on 7/9/2013 (sm, ). (Entered:
07/08/2013)
07/08/2013
278 Joint MOTION to Dismiss DEFENDANT HSN, INC. by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered: 07/08/2013)
07/09/2013
279 Unopposed MOTION to Withdraw as Attorney by Hotwire, Inc.. (Attachments: # 1
Text of Proposed Order)(Hall, Eric) (Entered: 07/09/2013)
07/09/2013
280 ORDER granting 278 Motion to Dismiss all claims and counterclaims asserted
between plaintiff TQP Development, LLC and defendant HSN, Inc.. All attorneys
fees and costs are to be borne by the party that incurred them. Signed by Magistrate
Judge Roy S. Payne on 7/9/13. (ehs, ) (Entered: 07/09/2013)
07/09/2013
281 Joint MOTION to Amend/Correct FURTHER, THE DOCKET CONTROL ORDER
by TQP Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger,
Paul) (Entered: 07/09/2013)
07/10/2013
282 ORDER granting 279 Motion to Withdraw as Attorney. Attorney Eric Brinn Hall
terminated as counsel for Defendant Hotwire, Inc.. Signed by Magistrate Judge
Roy S. Payne on 7/10/13. (ehs, ) (Entered: 07/10/2013)
07/10/2013
283 ORDER granting 281 Motion to Amend the Docket Control Order. July 30, 2013
Serve Disclosures for Rebuttal Expert Witnesses. August 14, 2013 Deadline to
Complete Expert Discovery. August 21, 2013 File Dispositive Motions or Motions
to Strike Expert Testimony (including Daubert Motions). Signed by Magistrate
Judge Roy S. Payne on 7/10/13. (ehs, ) (Entered: 07/10/2013)
07/11/2013
284 NOTICE by Newegg, Inc. of Partial Withdrawal of 174 Motion to Compel (Brean,
Daniel) (Entered: 07/11/2013)
07/16/2013
285 Joint MOTION to Stay All Pending Deadlines (for 30 days) by Farmers Group,
Inc.. (Attachments: # 1 Text of Proposed Order)(Bahler, David) (Entered:
07/16/2013)
07/17/2013
286 Unopposed MOTION to Withdraw as Attorney by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Fenster, Marc) (Entered: 07/17/2013)
07/17/2013
287 ORDER denying 285 Motion to Stay all Deadlines. Signed by Magistrate Judge
Roy S. Payne on 7/17/2013. (ch, ) (Entered: 07/17/2013)
07/18/2013
288 ORDER granting 286 Motion to Withdraw Attorney of Record, Kevin P. Burke.
Signed by Magistrate Judge Roy S. Payne on 7/18/13. (mrm, ) (Entered:
07/18/2013)
07/19/2013
289 ORDER granting 150 Motion for Leave to File a Supplemental Complaint. Signed
by Magistrate Judge Roy S. Payne on 7/19/2013. (rsp1) (Entered: 07/19/2013)
07/19/2013
294 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne: Motion
Hearing held on 7/19/2013 re 174 MOTION to Compel filed by HSN, Inc.,
Newegg, Inc. (Court Reporter Jill McFadden.) (bga, ) (Entered: 07/30/2013)
07/22/2013
290 MEMORANDUM ORDER denying motion # 174 to compel. The parties are
directed to meet and confer on the expenses and, if the matter is not resolved
beforehand, Plaintiff shall file a motion to fix expenses within 21 days. Signed by
Magistrate Judge Roy S. Payne on 7/19/13. (ehs, ) (Entered: 07/22/2013)
07/22/2013
291 SUPPLEMENTAL COMPLAINT FOR PATENT INFRINGEMENT against
Alticor, Inc., Amway Corp., HSN, Inc., Newegg, Inc., QVC, Inc., filed by TQP
Development, LLC.(Hoffman, Adam) Modified on 7/23/2013 (sm, ). (Entered:
A0023
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07/22/2013)
07/23/2013
07/23/2013
292 Joint MOTION to Dismiss DEFENDANT FARMERS GROUP, INC. by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 07/23/2013)
NOTICE OF CHANGE OF OFFICIAL COURT REPORTER AND
INSTRUCTIONS REGARDING DAILY TRANSCRIPTS : Effective August 1,
2013, Shelly Holmes will become the Official Court Reporter for this Court due to
the retirement of Susan Simmons as Official Court Reporter. To the extent the
current Docket Control Order in this case directs contact with Ms. Simmons to
arrange for daily transcripts, you should (on and after August 1, 2013) contact
Shelly Holmes at: Shelly_Holmes@txed.uscourts.gov in lieu of contacting Ms.
Simmons, in this regard. (jml) (Entered: 07/23/2013)
07/24/2013
293 ORDER granting 292 Motion to Dismiss with prejudice all claims and
counterclaims asserted between plaintiff TQP Development, LLC and defendant
Farmers Group, Inc.. All attorneys fees and costs are to be borne by the party that
incurred them. Signed by Magistrate Judge Roy S. Payne on 7/24/13. (ehs, )
(Entered: 07/24/2013)
08/05/2013
295 Opposed MOTION to Vacate Expenses Award by Newegg, Inc.. (Attachments: # 1
Text of Proposed Order)(Baldauf, Kent) (Additional attachment(s) added on
8/6/2013: # 2 REVISED ORDER (no lines)) (sm, ). (Entered: 08/05/2013)
08/05/2013
296 NOTICE by Farmers Group, Inc. OF REQUEST FOR TERMINATION OF
ELECTRONIC NOTICES (Bahler, David) (Entered: 08/05/2013)
08/05/2013
297 ANSWER to 291 Supplemental Complaint, COUNTERCLAIM against TQP
Development, LLC by Newegg, Inc..(Brooks, Anthony) Modified on 8/6/2013 (sm,
). (Entered: 08/05/2013)
08/08/2013
298 Joint MOTION to Amend/Correct 211 Order, Set Deadlines/Hearings,, (DOCKET
CONTROL ORDER) by TQP Development, LLC. (Attachments: # 1 Text of
Proposed Order)(Kroeger, Paul) (Entered: 08/08/2013)
08/09/2013
299 Opposed MOTION to Consolidate Cases FOR TRIAL by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered: 08/09/2013)
08/13/2013
300 NOTICE by Alaska Airlines, Inc. Reuqest for Termination of Electronic Notice
(Klemchuk, Darin) (Entered: 08/13/2013)
08/13/2013
301 NOTICE by Alaska Airlines, Inc. Request for Termination of Electronic Notice
(Drake, Kirby) (Entered: 08/13/2013)
08/15/2013
302 RESPONSE in Opposition re 295 Opposed MOTION to Vacate Expenses Award
filed by TQP Development, LLC. (Kroeger, Paul) (Entered: 08/15/2013)
08/21/2013
303 ***FILED IN ERROR, PLEASE IGNORE***RESPONSE in Support re 295
Opposed MOTION to Vacate Expenses Award filed by Newegg, Inc.. (Brean,
Daniel) Modified on 8/21/2013 (sm, ). (Entered: 08/21/2013)
08/21/2013
***FILED IN ERROR, WRONG EVENT USED, ATTY MUST REFILE.
Document # 303, Response in support. PLEASE IGNORE.***
(sm, ) (Entered: 08/21/2013)
08/21/2013
304 SEALED MOTION Daubert to Exclude the Opinions and Testimony of TQP's
Damages Expert Stephen L. Becker, Ph.D. by Newegg, Inc., Expedia Inc., Hotwire
Inc and Orbitz LLC (Attachments: # 1 Exhibit A−1, # 2 Exhibit A−2, # 3 Exhibit
A−3, # 4 Exhibit A−4, # 5 Exhibit B, # 6 Exhibit C, # 7 Exhibit D, # 8 Exhibit
E)(Brean, Daniel) Modified on 8/22/2013 (sm, ). (Entered: 08/21/2013)
08/21/2013
305 REPLY to Response to Motion re 295 Opposed MOTION to Vacate Expenses
Award filed by Newegg, Inc.. (Brean, Daniel) (Entered: 08/21/2013)
08/21/2013
306 Letter Brief filed by Branch Bank and Trust Company (Attachments: # 1
Exhibit)(Lein, Paul) (Entered: 08/21/2013)
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08/21/2013
307 SEALED MOTION to Exclude the opinions of expert Becker by Branch Bank and
Trust Company. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4
Exhibit D, # 5 Exhibit E)(Lein, Paul) (Entered: 08/21/2013)
08/22/2013
NOTICE FROM CLERK re 304 SEALED MOTION Daubert to Exclude the
Opinions and Testimony of TQP's Damages Expert Stephen L. Becker, Ph.D.. This
text entry was modified, Per Atty, to add 3 other dfts as filer (Expedia, Hotwire and
Orbitz). Text entry previously had just Newegg. (sm, ) (Entered: 08/22/2013)
08/22/2013
308 NOTICE of Attorney Appearance by Judith Lynn Meadow on behalf of TQP
Development, LLC (Meadow, Judith) (Entered: 08/22/2013)
08/22/2013
309 NOTICE of Amended Certificate of Service by Branch Bank and Trust Company
re 307 SEALED MOTION to Exclude the Opinions of TQP Expert Becker (Lein,
Paul) (Entered: 08/22/2013)
08/26/2013
310 SUR−REPLY to Reply to Response to Motion re 295 Opposed MOTION to
Vacate Expenses Award filed by TQP Development, LLC. (Kroeger, Paul)
(Entered: 08/26/2013)
08/26/2013
311 SEALED RESPONSE to Notice of Compliance − Letter Brief re 306 Notice of
Compliance − Supplemental Letter Brief filed by Branch Bank and Trust Company
filed by TQP Development, LLC. (Attachments: # 1 Exhibit 1−Letter
Brief)(Kroeger, Paul) (Entered: 08/26/2013)
08/27/2013
NOTICE of Hearing: Pretrial Conference set for 10/3/2013 09:00 AM in Mag Ctrm
(Marshall) before Magistrate Judge Roy S. Payne. The parties are instructed to
meet and confer and submit a proposed amended docket control order by no later
than August 30, 2013.(bga, ) (Entered: 08/27/2013)
08/29/2013
312 ORDER denying 298 Motion to Amend the Docket Control Order. Signed by
Magistrate Judge Roy S. Payne on 8/29/2013. (rsp1) (Entered: 08/29/2013)
08/29/2013
313 SEALED RESPONSE to Motion re 299 Opposed MOTION to Consolidate Cases
FOR TRIAL filed by Expedia, Inc, Hotwire, Inc., Newegg, Inc., Orbitz, LLC.
(Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Qureshi, Wasif)
(Entered: 08/29/2013)
08/30/2013
314 ORDER VACATING 168 Order to consolidate with respect to the following cases:
TQP Development, LLC v. Alaska Air Group, Inc., et al., Case No. 2:11−CV− 398
and TQP Development, LLC v. Branch Banking and Trust Co., Case No.
2:12−CV−55. All orders entered in the lead case prior to this order will continue to
be in effect in each member case. As no other member case is currently pending,
the Clerk is directed to close the lead case. Signed by Magistrate Judge Roy S.
Payne on 8/29/13. (ehs, ) (Entered: 08/30/2013)
08/30/2013
315 Joint MOTION to Amend/Correct 211 Order, Set Deadlines/Hearings,, by
Newegg, Inc., TQP Development, LLC. (Attachments: # 1 Text of Proposed
Order)(Brooks, Anthony) (Additional attachment(s) added on 9/3/2013: # 2
Revised Order (no signature lines)) (sm, ). (Entered: 08/30/2013)
08/30/2013
316 Joint MOTION to Amend/Correct 211 Order, Set Deadlines/Hearings,, by Branch
Bank and Trust Company. (Attachments: # 1 Text of Proposed Order)(Lein, Paul)
(Entered: 08/30/2013)
09/06/2013
317 NOTICE by Newegg Inc of Compliance pursuant to the Agreed Proposed Docket
Control Order re Service of Pretrial Disclosures (Brooks, Anthony) (Entered:
09/06/2013)
09/09/2013
318 REPLY to Response to Motion re 299 Opposed MOTION to Consolidate Cases
FOR TRIAL filed by TQP Development, LLC. (Kroeger, Paul) (Entered:
09/09/2013)
09/09/2013
319 NOTICE by TQP Development, LLC Of Compliance (Hoffman, Adam) (Entered:
09/09/2013)
09/09/2013
320 ***VACATED per Order # 327 *** Emergency SEALED MOTION MOTION
TO COMPEL A FURTHER SESSION OF DEPOSITION OF DEFENDANTS
INVALIDITY EXPERT DR. WHITFIELD DIFFIE AND FOR MONETARY
A0025
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SANCTIONS by TQP Development, LLC. (Attachments: # 1 Text of Proposed
Order, # 2 Declaration of Paul Kroeger, # 3 Exhibit 1, # 4 Exhibit 2)(Kroeger,
Paul) Modified on 9/18/2013 (ehs, ). (Entered: 09/09/2013)
09/09/2013
321 SEALED RESPONSE to Motion re 304 SEALED MOTION Daubert to Exclude
the Opinions and Testimony of TQP's Damages Expert Stephen L. Becker, Ph.D.
filed by TQP Development, LLC. (Attachments: # 1 Text of Proposed Order, # 2
Affidavit of Adam Hoffman, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit
4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit
9)(Hoffman, Adam) (Entered: 09/09/2013)
09/09/2013
322 SEALED RESPONSE to Motion re 307 SEALED MOTION filed by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order, # 2 Affidavit of
Adam Hoffman, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7
Exhibit 5)(Hoffman, Adam) (Entered: 09/09/2013)
09/10/2013
NOTICE of Hearing on Motion 320 Emergency SEALED MOTION MOTION TO
COMPEL A FURTHER SESSION OF DEPOSITION OF DEFENDANTS
INVALIDITY EXPERT DR. WHITFIELD DIFFIE AND FOR MONETARY
SANCTIONS : Motion Hearing set for 9/18/2013 02:00 PM in Mag Ctrm
(Marshall) before Magistrate Judge Roy S. Payne. Any response to the motion is
due by 9/16/13.(bga, ) (Entered: 09/10/2013)
09/13/2013
323 SEALED DEFENDANTS' REPLY to Response to Motion re 304 SEALED
MOTION Daubert to Exclude the Opinions and Testimony of TQP's Damages
Expert Stephen L. Becker, Ph.D. filed by Expedia, Inc, Hotwire, Inc., Newegg Inc,
Orbitz, LLC. (Attachments: # 1 Exhibit A)(Brean, Daniel) (Entered: 09/13/2013)
09/16/2013
324 SEALED DEFENDANTS' RESPONSE to TQP's Motion re 320 Emergency
SEALED MOTION MOTION TO COMPEL A FURTHER SESSION OF
DEPOSITION OF DEFENDANTS INVALIDITY EXPERT DR. WHITFIELD
DIFFIE AND FOR MONETARY SANCTIONS filed by Branch Bank and Trust
Company, Expedia, Inc, Hotwire, Inc., Newegg Inc, Orbitz, LLC. (Attachments: #
1 Affidavit of James J. Bosco with Exhibits A, B, and C, # 2 Affidavit of Joseph A.
Unis, Jr. with Exhibit A, # 3 Affidavit of Whitfield Diffie, Ph.D. with Exhibit
A)(Brooks, Anthony) (Entered: 09/16/2013)
09/16/2013
325 SEALED REPLY to Response to Motion re 307 SEALED MOTION Daubert to
Exclude the Opinions and Testimony of TQP's Damages Expert Stephen L. Becker,
Ph.D. filed by Branch Bank and Trust Company. (Lein, Paul) (Entered:
09/16/2013)
09/17/2013
326 Unopposed MOTION to Vacate ITS MOTION TO COMPEL A FURTHER
SESSION OF DEPOSITION OF DEFENDANTS' INVALIDITY EXPERT DR.
WHITFIELD DIFFIE AND FOR MONETARY SANCTIONS by TQP Development,
LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul) (Entered:
09/17/2013)
09/18/2013
327 ***ORDER cancelling Motion Hearing of 9/18/13*** −− GRANTING Motion #
326 Unopposed MOTION to Vacate Its Motion to Compel a further Session of
Deposition of Defendants' Invalidity Expert Dr. Whitfield Diffie and for Monetary
Sanctions filed by TQP Development, LLC, 320 Emergency SEALED MOTION
Motion to compel a further session of Deposition of Defendants Invalidity Expert
Dr. Whitfield Diffie and for Monetary Sanctions filed by TQP Development, LLC..
Signed by Magistrate Judge Roy S. Payne on 9/17/13. (ehs, ) Modified on
9/18/2013 (ehs, ) (Entered: 09/18/2013)
09/19/2013
328 ORDER REOPENING CASE − Newegg Inc reinstated, other aspects of the Courts
Order Vacating the Consolidation Order (Dkt. No. 314, filed August 30, 2013)
remain in effect. Signed by Magistrate Judge Roy S. Payne on 9/19/13. (ehs, )
(Entered: 09/19/2013)
09/19/2013
329 SEALED Sur−Reply In Opposition to Motion re 299 Opposed MOTION to
Consolidate Cases FOR TRIAL filed by Expedia, Inc, Hotwire, Inc., Newegg Inc,
Orbitz, LLC. (Qureshi, Wasif) (Entered: 09/19/2013)
A0026
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09/23/2013
330 Joint MOTION to Amend/Correct DOCKET CONTROL ORDER by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order)(Kroeger, Paul)
(Entered: 09/23/2013)
09/23/2013
331 SEALED SUR−REPLY to Response to Motion re 307 SEALED MOTION filed
by TQP Development, LLC. (Attachments: # 1 Affidavit Declaration of Adam
Hoffman, # 2 Exhibit 6)(Hoffman, Adam) (Entered: 09/23/2013)
09/23/2013
332 SEALED SUR−REPLY to Response to Motion re 304 SEALED MOTION
Daubert to Exclude the Opinions and Testimony of TQP's Damages Expert Stephen
L. Becker, Ph.D. filed by TQP Development, LLC. (Attachments: # 1 Affidavit
Declaration of Adam Hoffman, # 2 Exhibit 10)(Hoffman, Adam) (Entered:
09/23/2013)
09/24/2013
333 ORDER AMENDING DEADLINES, ( Motions in Limine due by 9/30/2013.,
Pretrial Order due by 10/7/2013., Jury Selection set for 11/4/2013 09:00 AM in
Ctrm 106 (Marshall) before Judge Rodney Gilstrap., Pretrial Conference set for
10/16/2013 09:00 AM in Mag Ctrm (Marshall) before Magistrate Judge Roy S.
Payne. Signed by Magistrate Judge Roy S. Payne on 9/24/13. (ehs, ) (Entered:
09/24/2013)
09/25/2013
334 Unopposed MOTION to Amend/Correct FURTHER AMEND DOCKET
CONTROL ORDER RE JURY SELECTION DATE IN LIGHT OF RECENTLY SET
CONFLICT SCHEDULE by TQP Development, LLC. (Attachments: # 1 Exhibit 1,
# 2 Text of Proposed Order)(Kroeger, Paul) (Entered: 09/25/2013)
09/26/2013
335 **STRUCK PER ORDER # 338 ** ORDER on Letter Briefs. Signed by
Magistrate Judge Roy S. Payne on 9/25/13. (ehs, ) Modified on 9/27/2013 (mrm, ).
(Entered: 09/26/2013)
09/27/2013
336 NOTICE TO PARTIES RE JURY SELECTION − Jury Selection set for
11/12/2013 and 11/18/2013 09:00AM before Judge Rodney Gilstrap.. Signed by
Judge Rodney Gilstrap on 9/27/2013. (ch, ) (Entered: 09/27/2013)
09/27/2013
337 ORDER denying 248 Letter Brief filed by Expedia, Inc, denying 252 Letter Brief
filed by Branch Bank and Trust Company, denying 253 Letter Brief filed by CHS,
Inc., Expedia, Inc, HSN, Inc., Newegg, Inc., Hotwire, Inc., Farmers Group, Inc.,
Branch Bank and Trust Company, State Farm Mutual Automobile Insurance
Company, Orbitz, LLC, denying 306 Letter Brief filed by Branch Bank and Trust
Company,denying 250 Letter Brief filed by Orbitz, LLC,denying 249 Letter Brief
filed by Hotwire, Inc. Signed by Magistrate Judge Roy S. Payne on 9/26/13. (mrm,
) (Entered: 09/27/2013)
09/27/2013
338 ORDER; striking 335 Order. Signed by Magistrate Judge Roy S. Payne on 9/26/13.
(mrm, ) (Entered: 09/27/2013)
09/30/2013
339 NOTICE by TQP Development, LLC OF REQUEST FOR DAILY TRANSCRIPT
AND REAL TIME REPORTING OF COURT PROCEEDINGS (Hoffman, Adam)
(Entered: 09/30/2013)
09/30/2013
340 NOTICE of Designation of Attorney in Charge to Marc A Fenster on behalf of
TQP Development, LLC (Fenster, Marc) (Entered: 09/30/2013)
09/30/2013
341 NOTICE by Newegg Inc of Request for Daily Transcript and Real Time Reporting
of Court Proceedings (Brooks, Anthony) (Entered: 09/30/2013)
09/30/2013
342 SEALED PATENT MOTION MOTIONS IN LIMINE by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit
3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10
Exhibit 9, # 11 Exhibit 10)(Hoffman, Adam) (Entered: 09/30/2013)
09/30/2013
343 SEALED PATENT MOTION OPPOSED MOTIONS IN LIMINE by Newegg, Inc..
(Attachments: # 1 Text of Proposed Order, # 2 Exhibit A, # 3 Exhibit B, # 4
Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G)(Brean,
Daniel) (Entered: 09/30/2013)
10/02/2013
344 NOTICE of Attorney Appearance by Benjamin T Wang on behalf of TQP
Development, LLC (Wang, Benjamin) (Entered: 10/02/2013)
A0027
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10/03/2013
345 NOTICE of Attorney Appearance by Michael T Boardman on behalf of TQP
Development, LLC (Boardman, Michael) (Entered: 10/03/2013)
10/07/2013
346 ***FILED IN ERROR, PER ATTY, PLEASE IGNORE***SEALED PATENT
RESPONSE NEWEGG' OPPOSITION TO TQP'S SEALED PATENT MOTIONS
IN LIMINE re 342 filed by Newegg, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit
B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8
Exhibit H)(Brean, Daniel) Modified on 10/8/2013 (sm, ). (Entered: 10/07/2013)
10/07/2013
347 SEALED PATENT RESPONSE to SEALED PATENT MOTION re 343 SEALED
PATENT MOTION OPPOSED MOTIONS IN LIMINE filed by TQP Development,
LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5
Exhibit 5)(Kroeger, Paul) (Entered: 10/07/2013)
10/08/2013
348 Proposed Pretrial Order JOINT PROPOSED PRETRIAL ORDER by TQP
Development, LLC. (Attachments: # 1 Exhibit 1−A, # 2 Exhibit 1−B, # 3 Exhibit
2−A, # 4 Exhibit 2−B, # 5 Exhibit 3−A, # 6 Exhibit 3−B, # 7 Exhibit 4, # 8 Exhibit
5−A, # 9 Exhibit 5−B)(Kroeger, Paul) (Entered: 10/08/2013)
10/08/2013
***FILED IN ERROR, PER ATTY, ATTY IS REFILING. Document # 346,
Sealed Response. PLEASE IGNORE.***
(sm, ) (Entered: 10/08/2013)
10/08/2013
349 SEALED PATENT RESPONSE Newegg's Opposition to TQP's SEALED
PATENT MOTIONS IN LIMINE re 342 filed by Newegg Inc. (Attachments: # 1
Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F,
# 7 Exhibit G, # 8 Exhibit H)(Brean, Daniel) (Entered: 10/08/2013)
10/11/2013
350 NOTICE by TQP Development, LLC OF AGREEMENTS REACHED DURING
MEET AND CONFER REGARDING OUTSTANDING OBJECTIONS AND
MOTIONS IN LIMINE (Kroeger, Paul) (Entered: 10/11/2013)
10/11/2013
351 ORDER REGARDING PRETRIAL CONFERENCE −. Signed by Magistrate
Judge Roy S. Payne on 10/11/2013. (ch, ) (Entered: 10/11/2013)
10/15/2013
352 Proposed Pretrial Order AMENDMENT to Joint Final Pretrial Order by Newegg,
Inc., TQP Development, LLC. (Attachments: # 1 Exhibit Amended Exhibit 3−A, #
2 Exhibit Amended Exhibit 3−B)(Kroeger, Paul) (Entered: 10/15/2013)
10/16/2013
353 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne: Initial
Pretrial Conference held on 10/16/2013. (Court Reporter Carla Sims.)
(Attachments: # 1 Attorney Sign−in Sheet) (bga, ) (Entered: 10/18/2013)
10/18/2013
354 ***DEFICIENT DOCUMENT, PLEASE IGNORE***MOTION in Limine TO
EXCLUDE EVIDENCE AND ARGUMENT RELATING TO PROSECUTION
HISTORY ESTOPPEL TO THE JURY by TQP Development, LLC. (Attachments:
# 1 Exhibit)(Fenster, Marc) Modified on 10/21/2013 (sm, ). (Entered: 10/18/2013)
10/18/2013
355 ***FILED IN ERROR, PLEASE IGNORE***Additional Attachments to Main
Document: 354 MOTION in Limine TO EXCLUDE EVIDENCE AND
ARGUMENT RELATING TO PROSECUTION HISTORY ESTOPPEL TO THE
JURY.. (Fenster, Marc) Modified on 10/21/2013 (sm, ). (Entered: 10/18/2013)
10/18/2013
356 ***DEFICIENT DOCUMENT, PLEASE IGNORE***MOTION to Strike
NEWEGG, INC.S LICENSE AND PATENT EXHAUSTION DEFENSES by TQP
Development, LLC. Responses due by 10/22/2013 (Attachments: # 1 Text of
Proposed Order, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit)(Fenster, Marc)
Modified on 10/21/2013 (sm, ). (Entered: 10/18/2013)
10/21/2013
NOTICE of DEFICIENCY regarding the #354, #355, #356 Motions and additional
attachment submitted by TQP Development, LLC. No certificate of conference
were included in the motion in limine or motion to strike and exhibits were not
properly identified per local rules. #355 was attachment to 354 which can be
attached when refiled. Corrections should be made by 1 business day and motions
refiled. These Documents are now TERMINATED. (sm, ) (Entered: 10/21/2013)
A0028
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10/21/2013
357 NOTICE of Attorney Appearance by Alan D Albright on behalf of Newegg, Inc.
(Albright, Alan) (Entered: 10/21/2013)
10/21/2013
358 SEALED MOTION IN LIMINE TO EXCLUDE EVIDENCE AND ARGUMENT
RELATING TO PROSECUTION HISTORY ESTOPPEL TO THE JURY by TQP
Development, LLC. (Attachments: # 1 Text of Proposed Order, # 2 Exhibit
1)(Fenster, Marc) (Entered: 10/21/2013)
10/21/2013
359 SEALED MOTION TO STRIKE NEWEGG, INC.S LICENSE AND PATENT
EXHAUSTION DEFENSES by TQP Development, LLC. (Attachments: # 1 Text of
Proposed Order, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4)(Fenster,
Marc) (Entered: 10/21/2013)
10/21/2013
364 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne: Interim
Pretrial Conference held on 10/21/2013. (Court Reporter Carla Sims.) (bga, )
(Entered: 10/23/2013)
10/22/2013
360 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
10/16/13 before Judge Roy S Payne. Court Reporter/Transcriber: Carla A
Sims,Telephone number: 903−646−2374.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER. Redaction Request
due 11/15/2013. Redacted Transcript Deadline set for 11/25/2013. Release of
Transcript Restriction set for 1/23/2014. (ehs, ) (Entered: 10/22/2013)
10/22/2013
361 ***STRICKEN PER ORDER # 376 Defendant Newegg Inc.'s SEALED
PATENT RESPONSE to Plaintiff TQP's SEALED PATENT MOTION re 359
TO STRIKE NEWEGG, INC.S LICENSE AND PATENT EXHAUSTION
DEFENSES filed by Newegg Inc. (Attachments: # 1 Text of Proposed
Order)(Brooks, Anthony) Modified on 11/4/2013 (ehs, ). (Entered: 10/22/2013)
10/22/2013
362 Defendant Newegg's SEALED PATENT RESPONSE to Plaintiff TQP's SEALED
PATENT MOTION re 358 MOTION IN LIMINE TO EXCLUDE EVIDENCE AND
ARGUMENT RELATING TO PROSECUTION HISTORY ESTOPPEL TO THE
JURY filed by Newegg Inc. (Attachments: # 1 Text of Proposed Order)(Brooks,
Anthony) (Entered: 10/22/2013)
10/22/2013
363 NOTICE by TQP Development, LLC of Supplemental Authority in Support of its
Motion to Consolidate (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit
C)(Boardman, Michael) (Entered: 10/22/2013)
10/23/2013
NOTICE of Hearing: Final Pretrial Conference set for 10/29/2013 01:30 PM in
Mag Ctrm (Marshall) before Magistrate Judge Roy S. Payne. (bga, ) (Entered:
10/23/2013)
10/24/2013
365 ***FILED IN ERROR, PLEASE IGNORE***NOTICE by Expedia, Inc,
Hotwire, Inc., Orbitz, LLC re 363 Notice (Other) Defendants' Response to
Plaintiff's Notice of Supplemental Authority (Attachments: # 1 Exhibit 1, # 2
Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6)(McNabnay,
Neil) Modified on 10/25/2013 (sm, ). (Entered: 10/24/2013)
10/25/2013
***FILED IN ERROR, WRONG EVENT USED, ATTY MUST REFILE.
Document # 365, Notice. PLEASE IGNORE.***
(sm, ) (Entered: 10/25/2013)
10/25/2013
366 RESPONSE to 363 Plaintiff's Notice of Supplemental Authority filed by Expedia,
Inc, Hotwire, Inc., Orbitz, LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3
Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6)(McNabnay, Neil) (Entered:
10/25/2013)
A0029
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10/28/2013
367 ORDER Regarding Priority for Trial. Signed by Magistrate Judge Roy S. Payne on
10/28/2013. (rsp2) (Entered: 10/28/2013)
10/29/2013
368 NOTICE by Newegg Inc re 352 Proposed Pretrial Order re Third Amended Exhibit
List (Attachments: # 1 Exhibit A)(Brooks, Anthony) (Entered: 10/29/2013)
10/29/2013
369 NOTICE by TQP Development, LLC re 348 Proposed Pretrial Order,
(Attachments: # 1 Exhibit 3−A TQPs Fourth Amended Trial Exhibit List)(Kroeger,
Paul) (Entered: 10/29/2013)
10/29/2013
373 Minute Entry for proceedings held before Magistrate Judge Roy S. Payne: Final
Pretrial Conference held on 10/29/2013. (Court Reporter Carla Sims.) (bga, )
(Entered: 11/01/2013)
10/30/2013
370 NOTICE of Attorney Appearance by Judith Lynn Meadow on behalf of TQP
Development, LLC (Meadow, Judith) (Entered: 10/30/2013)
10/30/2013
371 ORDER REGARDING EXHIBITS signed by Judge Rodney Gilstrap on 10/30/13.
(bas, ) (Entered: 10/30/2013)
10/31/2013
372 ORDER Granting and Denying in Part 299 Opposed MOTION to Consolidate
Cases FOR TRIAL filed by TQP Development, LLC ORDERING that Consenting
Defendants will be joined for trial and that Newegg and Consenting Defendants
will Not be joined for trial. Signed by Magistrate Judge Roy S. Payne on
10/30/2013. (sm, ) (Entered: 10/31/2013)
11/01/2013
374 NOTICE by TQP Development, LLC NOTICE OF ASSERTED CLAIMS AND
INVALIDITY THEORIES AND PRIOR ART REFERENCES (Fenster, Marc)
(Entered: 11/01/2013)
11/04/2013
375 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
10/21/2013 before Judge Roy S. Payne. Court Reporter/Transcriber: Carla A. Sims,
CSR, RPR,Telephone number: 903−646−2374.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER. Redaction Request
due 11/28/2013. Redacted Transcript Deadline set for 12/9/2013. Release of
Transcript Restriction set for 2/6/2014. (ch, ) (Entered: 11/04/2013)
11/04/2013
376 ORDER granting 359 Sealed Motion− Neweggs License and Patent Exhaustion
defenses are stricken # 31 . Signed by Magistrate Judge Roy S. Payne on 11/4/13.
(ehs, ) (Entered: 11/04/2013)
11/05/2013
377 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
10/29/13 (Pre−trial Hearing) before Judge Roy Payne. Court Reporter/Transcriber:
Carla A. Sims, CSR RPR,Telephone number: (903) 646−2374.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 11/29/2013. Redacted Transcript Deadline set for 12/9/2013. Release of
Transcript Restriction set for 2/6/2014. (sholmes, ) (Entered: 11/05/2013)
11/05/2013
ORDER finding as moot 330 Motion to Amend/Correct. Signed by Magistrate
Judge Roy S. Payne on 11/5/13. (rsp2) (Entered: 11/05/2013)
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11/05/2013
ORDER finding as moot 334 Motion to Amend/Correct. Signed by Magistrate
Judge Roy S. Payne on 11/5/2013. (rsp3) (Entered: 11/05/2013)
11/06/2013
378 REPORT of Mediation by Robert Faulkner. Mediation result: matter did not
settle(Faulkner, Robert) (Entered: 11/06/2013)
11/08/2013
379 ORDER granting 358 Sealed Motion in Limine. Signed by Magistrate Judge Roy
S. Payne on 11/7/2013. (ch, ) (Entered: 11/08/2013)
11/11/2013
380 NOTICE by TQP Development, LLC (AMENDED) OF ASSERTED CLAIMS AND
INVALIDITY THEORIES AND PRIOR ART REFERENCE (Attachments: # 1
Exhibit 1)(Fenster, Marc) (Entered: 11/11/2013)
11/11/2013
381 Emergency SEALED MOTION in Limine to Exclude Evidence and Argument
Regarding Settlement with Expedia, Inc., Hotwire, Inc., and Orbitz, LLC by TQP
Development, LLC. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Text of
Proposed Order)(Fenster, Marc) (Entered: 11/11/2013)
11/12/2013
382 ORDER denying # 304 SEALED MOTION Daubert to Exclude the Opinions and
Testimony of TQP's Damages Expert Stephen L. Becker, Ph.D. filed by Newegg,
Inc.. Signed by Magistrate Judge Roy S. Payne on 11/12/13. (ehs, ) (Entered:
11/12/2013)
11/12/2013
383 ORDER − Defendant Newegg, Inc. shall file its response to TQPs motion by the
end the day, Wednesday, November 13, 2013. Neweggs response should focus its
discussion on the prejudice TQP alleges will result from showing jurors licenses
with provisions that are contingent, in part, on their verdict. Signed by Magistrate
Judge Roy S. Payne on 11/12/13. (ehs, ) (Entered: 11/12/2013)
11/13/2013
384 NOTICE of Attorney Appearance by Edward R Reines on behalf of Newegg Inc
(Reines, Edward) (Entered: 11/13/2013)
11/13/2013
385 Newegg's SEALED PATENT RESPONSE to TQP's SEALED PATENT MOTION
re 381 Emergency SEALED MOTION in Limine to Exclude Evidence and
Argument Regarding Settlement with Expedia, Inc., Hotwire, Inc., and Orbitz, LLC
filed by Newegg Inc. (Attachments: # 1 Exhibit A)(Brean, Daniel) (Entered:
11/13/2013)
11/14/2013
386 NOTICE of Intent to Request Redaction by Anthony W Brooks re 377
Transcript,,,. (Brooks, Anthony) (Entered: 11/14/2013)
11/14/2013
387 ORDER granting in part and denying in part 342 Sealed Patent Motion; granting in
part and denying in part 343 Sealed Patent Motion. Signed by Magistrate Judge
Roy S. Payne on 11/14/13. (ehs, ) (Entered: 11/14/2013)
11/14/2013
388 NOTICE by TQP Development, LLC JOINT FINAL DEPOSITION
DESIGNATIONS (Fenster, Marc) (Entered: 11/14/2013)
11/15/2013
389 ORDER granting 381 Sealed Motion GRANTED−−evidence and argument
regarding the terms of the two recent Alaska Airlines settlement agreements are
excluded from trial. Signed by Magistrate Judge Roy S. Payne on 11/15/13. (ehs, )
(Entered: 11/15/2013)
11/15/2013
390 ORDER that TQP is hereby precluded from re−litigating these two issues at trial in
the instant case. Signed by Judge Rodney Gilstrap on 11/15/13. (ehs, ) (Entered:
11/15/2013)
11/15/2013
391 Proposed Jury Instructions by TQP Development, LLC. (Attachments: # 1 Exhibit
1)(Wang, Benjamin) (Entered: 11/15/2013)
11/15/2013
392 NOTICE by TQP Development, LLC re 348 Proposed Pretrial Order, AMENDED
EXHIBIT 3−A Fifth Amended Trial Exhibit List (Attachments: # 1 Exhibit
3−A)(Kroeger, Paul) (Entered: 11/15/2013)
11/17/2013
393 Emergency MOTION for Reconsideration re 390 Order by TQP Development,
LLC. (Attachments: # 1 Exhibit A, # 2 Text of Proposed Order)(Fenster, Marc)
(Entered: 11/17/2013)
A0031
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 29 of 35
11/18/2013
394 ORDERS that if Dft chooses to file a Response to Plaintiffs Motion 393 Motion for
Reconsideration, shall do so by or before 7:00 pm today 11/18/2013. Signed by
Judge Rodney Gilstrap on 11/18/2013. (ch, ) (Entered: 11/18/2013)
11/18/2013
395 NOTICE by TQP Development, LLC (Second Supplemental) OF ASSERTED
CLAIMS AND INVALIDITY THEORIES AND PRIOR ART REFERENCE
(Attachments: # 1 Exhibit A)(Fenster, Marc) (Entered: 11/18/2013)
11/18/2013
396 RESPONSE to Motion re 393 Emergency MOTION for Reconsideration re 390
Order filed by Newegg Inc. (Brooks, Anthony) (Entered: 11/18/2013)
11/18/2013
397 NOTICE by TQP Development, LLC REVISED FINAL JOINT DEPOSITION
DESIGNATIONS (Fenster, Marc) (Entered: 11/18/2013)
11/18/2013
423 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Selection
held on 11/18/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: # 1
Attorney Attendance Sheet) (jml) (Entered: 12/02/2013)
11/19/2013
424 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Trial held
on 11/19/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: # 1 Attorney
Attendance Sheet) (jml) (Entered: 12/02/2013)
11/20/2013
425 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Trial held
on 11/20/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: # 1 Attorney
Attendance Sheet) (jml) (Entered: 12/02/2013)
11/21/2013
398 TRIAL BRIEF re Claim Construction Issue by Newegg Inc. (Attachments: # 1
Exhibit Preliminary Claim Constructions)(Brooks, Anthony) (Entered: 11/21/2013)
11/21/2013
399 NOTICE of Attorney Appearance by Andrew Thompson Gorham on behalf of
Newegg Inc (Gorham, Andrew) (Entered: 11/21/2013)
11/21/2013
426 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Trial held
on 11/21/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: # 1 Attorney
Attendance Sheet) (jml) (Entered: 12/02/2013)
11/22/2013
400 ORDER denying 295 Opposed MOTION to Vacate Expenses Award filed by
Newegg, Inc. The parties are directed to meet and confer on the expenses and, if
the matter is not resolved beforehand, Plaintiff shall file a motion to fix expenses
within 21 days. Signed by Magistrate Judge Roy S. Payne on 11/22/13. (mrm, )
(Entered: 11/22/2013)
11/22/2013
427 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Trial held
on 11/22/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: # 1 Attorney
Attendance Sheet) (jml) (Entered: 12/02/2013)
11/25/2013
401 NOTICE by TQP Development, LLC AMENDED PROPOSED JURY
INSTRUCTIONS AND VERDICT FORM (Attachments: # 1 Exhibit A Revised
Proposed Jury Instructions, # 2 Exhibit B Redline Revised Proposed Jury
Instructions, # 3 Exhibit C TQP's Amended Proposed Verdict Form)(Wang,
Benjamin) (Entered: 11/25/2013)
11/25/2013
402 Opposed MOTION for Judgment on the Pleadings by TQP Development, LLC.
(Attachments: # 1 Text of Proposed Order)(Fenster, Marc) (Entered: 11/25/2013)
11/25/2013
403 MOTION for Judgment as a Matter of Law of Non−infringement by Newegg Inc.
(Attachments: # 1 Text of Proposed Order)(Brooks, Anthony) (Entered:
11/25/2013)
11/25/2013
404 MOTION for Judgment as a Matter of Law re Damages by Newegg Inc.
(Attachments: # 1 Text of Proposed Order)(Brooks, Anthony) (Entered:
11/25/2013)
11/25/2013
405 MOTION for Judgment as a Matter of Law re Invalidity by Newegg Inc.
(Attachments: # 1 Text of Proposed Order)(Brooks, Anthony) (Entered:
11/25/2013)
11/25/2013
406 TRIAL BRIEF re Opposition to Closing Demonstrative by Newegg Inc.
(Attachments: # 1 Exhibit A)(Brooks, Anthony) (Entered: 11/25/2013)
A0032
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11/25/2013
407 JURY VERDICT. (jml) (Entered: 11/26/2013)
11/25/2013
408 SEALED Jury Notes. (jml) (Entered: 11/26/2013)
11/25/2013
409 TQP Final Exhibit List. (jml) (Entered: 11/27/2013)
11/25/2013
410 Newegg Final Exhibit List. (jml) (Entered: 11/27/2013)
11/25/2013
428 Minute Entry for proceedings held before Judge Rodney Gilstrap: Jury Trial
completed on 11/25/2013. (Court Reporter Shelly Holmes, CSR.) (Attachments: #
1 Attorney Attendance Sheet) (jml) (Entered: 12/02/2013)
11/27/2013
411 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/18/13 (Jury Selection) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
412 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/19/13 Trial Transcript (Morning Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) Modified on 11/27/2013 (ch, ).
(Entered: 11/27/2013)
11/27/2013
413 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/19/13 Trial Transcript (Afternoon Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
414 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/20/13 Trial Transcript (Morning Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
A0033
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 31 of 35
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
415 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/20/13 Trial Transcript (Afternoon Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
416 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/21/13 Trial Transcript (Morning Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
417 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/21/13 Trial Transcript (Afternoon Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
418 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/22/13 Trial Transcript (Morning Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
A0034
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 32 of 35
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
419 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/22/13 Trial Transcript (Afternoon Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
420 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/25/13 Trial Transcript (Morning Transcript) before Judge Rodney Gilstrap.
Court Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903)
923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
421 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/25/13 Trial Transcript (Afternoon Session) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
11/27/2013
422 NOTICE OF FILING OF OFFICIAL TRANSCRIPT of Proceedings held on
11/25/13 Trial Transcript (Notes/Verdict) before Judge Rodney Gilstrap. Court
Reporter/Transcriber: Shelly Holmes, CSR,Telephone number: (903) 923−7464.
NOTICE RE REDACTION OF TRANSCRIPTS: The parties have seven (7)
business days to file with the Court a Notice of Intent to Request Redaction of
this transcript. If no such Notice is filed, the transcript will be made remotely
A0035
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 33 of 35
electronically available to the public without redaction after 90 calendar days.
The policy is located on our website at www.txed.uscourts.gov
Transcript may be viewed at the court public terminal or purchased through the
Court Reporter/Transcriber before the deadline for Release of Transcript
Restriction. After that date it may be obtained through PACER.. Redaction Request
due 12/23/2013. Redacted Transcript Deadline set for 1/2/2014. Release of
Transcript Restriction set for 2/28/2014. (sholmes, ) (Entered: 11/27/2013)
12/05/2013
429 ORDER; the Court hereby ORDERS that the parties meet and confer regarding a
proposed schedule suggesting how to proceed with Newegg's equitable defenses of
equitable estoppel and laches. The parties are instructed to jointly submit such a
proposal to the Court within ten (10) days of this date. Signed by Judge Rodney
Gilstrap on 12/5/13. (mrm, ) (Entered: 12/05/2013)
12/14/2013
430 Joint Submission of Proposals and Schedules Regarding Equitable Defenses by
Newegg Inc. and TQP Development, LLC pursuant to Court Order [Dkt. 429].
(Brean, Daniel) (Entered: 12/14/2013)
12/20/2013
431 ORDER regarding briefing schedule on Newegg's equitable defenses of laches and
equitable estoppel. Signed by Judge Rodney Gilstrap on 12/20/13. (bas, ) (Entered:
12/20/2013)
01/06/2014
432 SEALED PATENT MOTION for Judgment on Laches by Newegg Inc.
(Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5
Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H)(Brean, Daniel) (Additional
attachment(s) added on 1/6/2014: # 9 Text of Proposed Order) (ch, ). (Entered:
01/06/2014)
01/06/2014
***DISREGARD THIS FILED IN ERROR, WAS DOCKETED IN WRONG
CASE******FILED IN ERROR. NOT A PRETRIAL ORDER Document #
47, Pretrial Order. PLEASE IGNORE.***
(ch, ) Modified on 1/6/2014 (ch, ). (Entered: 01/06/2014)
01/23/2014
433 Plaintiff TQP Development, LLC's Opposition SEALED RESPONSE to Motion re
432 SEALED PATENT MOTION for Judgment on Laches filed by TQP
Development, LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4
Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Affidavit Spangenberg
Declaration)(Fenster, Marc) (Entered: 01/23/2014)
02/03/2014
434 REPLY to Response to Motion re 432 SEALED PATENT MOTION for Judgment
on Laches filed by Newegg, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3
Exhibit C)(Brean, Daniel) (Entered: 02/03/2014)
02/10/2014
435 SEALED SUR−REPLY to Response to Motion re 432 SEALED PATENT
MOTION for Judgment on Laches filed by TQP Development, LLC. (Fenster,
Marc) (Entered: 02/10/2014)
02/17/2014
436 MOTION for Judgment as a Matter of Law re Rule 50(b) by Newegg Inc.
Responses due by 3/6/2014 (Attachments: # 1 Exhibit A (Trial Demonstratives), #
2 Text of Proposed Order)(Brean, Daniel) (Entered: 02/17/2014)
02/17/2014
437 SEALED MOTION − Rule 59 Motion for a New Trial by Newegg, Inc..
(Attachments: # 1 Exhibit A (Report of Dr. Jaeger), # 2 Text of Proposed
Order)(Brean, Daniel) (Entered: 02/17/2014)
02/25/2014
438 Joint MOTION to Amend/Correct BRIEFING SCHEDULE ON DEFENDANT'S
MOTION FOR NEW TRIAL AND MOTION FOR JUDGMENT AS A MATTER OF
LAW by TQP Development, LLC. (Attachments: # 1 Text of Proposed
Order)(Kroeger, Paul) (Entered: 02/25/2014)
02/26/2014
439 ORDER, BRIEFING SCHEDULE ON DEFENDANTS' MOTION FOR NEW
TRIAL AND MOTION FOR JUDGMENT AS A MATTER OF LAW, terming
438 Joint Motion to Amend the Schedule. Signed by Judge Rodney Gilstrap on
2/26/14. (mrm, ) (Entered: 02/26/2014)
A0036
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 34 of 35
03/18/2014
440 RESPONSE in Opposition re 436 MOTION for Judgment as a Matter of Law re
Rule 50(b) filed by TQP Development, LLC. (Attachments: # 1 Exhibit 1, # 2
Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Text of Proposed Order)(Kroeger, Paul)
(Entered: 03/18/2014)
03/18/2014
441 SEALED RESPONSE to Motion re 437 SEALED MOTION − Rule 59 Motion for
a New Trial filed by TQP Development, LLC. (Attachments: # 1 Exhibit A, # 2
Exhibit B, # 3 Exhibit C, # 4 Text of Proposed Order)(Fenster, Marc) (Entered:
03/18/2014)
04/03/2014
442 REPLY to Response to Motion re 437 SEALED MOTION − Rule 59 Motion for a
New Trial filed by Newegg Inc. (Attachments: # 1 Exhibit A − Excerpts of
Stubblebine Report)(Brean, Daniel) (Entered: 04/03/2014)
04/03/2014
443 REPLY to Response to Motion re 436 MOTION for Judgment as a Matter of Law
re Rule 50(b) filed by Newegg Inc. (Attachments: # 1 Exhibit A − Excerpts of
Stubblebine Report)(Brean, Daniel) (Entered: 04/03/2014)
04/14/2014
444 SUR−REPLY to Reply to Response to Motion re 437 SEALED MOTION − Rule
59 Motion for a New Trial filed by TQP Development, LLC. (Fenster, Marc)
(Entered: 04/14/2014)
04/14/2014
445 SUR−REPLY to Reply to Response to Motion re 436 MOTION for Judgment as a
Matter of Law re Rule 50(b) filed by TQP Development, LLC. (Attachments: # 1
Exhibit 3, # 2 Exhibit 4)(Fenster, Marc) (Entered: 04/14/2014)
04/16/2014
446 NOTICE by Newegg Inc of Request for Hearing on Post−Trial Motions (Brean,
Daniel) (Entered: 04/16/2014)
06/04/2014
447 NOTICE by Newegg Inc re 437 SEALED MOTION − Rule 59 Motion for a New
Trial, 436 MOTION for Judgment as a Matter of Law re Rule 50(b) re NOTICE
OF SUPPLEMENTAL AUTHORITY (Attachments: # 1 Exhibit A (Slip
Opinion))(Brooks, Anthony) (Entered: 06/04/2014)
06/13/2014
448 Unopposed MOTION to Withdraw as Attorney Debby E. Gunter by Newegg Inc,
Newegg, Inc.. (Attachments: # 1 Text of Proposed Order)(Yarbrough, Herbert)
(Entered: 06/13/2014)
06/16/2014
449 ORDER granting 448 Motion to Withdraw as Attorney. Attorney Debra Elaine
Gunter terminated. Signed by Magistrate Judge Roy S. Payne on 6/16/2014. (ch, )
(Entered: 06/16/2014)
06/30/2014
450 NOTICE by Newegg Inc re 437 SEALED MOTION − Rule 59 Motion for a New
Trial, 436 MOTION for Judgment as a Matter of Law re Rule 50(b) re Notice of
Supplemental Authority (Attachments: # 1 Exhibit A (Memorandum Opinion and
Order))(Brooks, Anthony) (Entered: 06/30/2014)
07/08/2014
451 ORDER − The Court hereby ORDERS, sua sponte, that TQP shall file a single
response to the arguments raised in Neweggs two Notices of Supplemental
Authority within ten (10) days of this date. Signed by Judge Rodney Gilstrap on
07/08/2014. (nkl, ) (Entered: 07/08/2014)
07/18/2014
452 RESPONSE to 450 Notice (Other), 447 Notice (Other), Plaintiff TQP
Development, LLC's Response to Defendant NewEgg, Inc.'s Notices of
Supplemental Authorities filed by TQP Development, LLC. (Attachments: # 1
Exhibit A)(Kroeger, Paul) (Entered: 07/18/2014)
07/25/2014
453 NOTICE by Newegg Inc re 437 SEALED MOTION − Rule 59 Motion for a New
Trial, 436 MOTION for Judgment as a Matter of Law re Rule 50(b) re Second
Notice of Subsequent Authority (Attachments: # 1 Exhibit A)(Brean, Daniel)
(Entered: 07/25/2014)
08/07/2014
454 MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on
08/07/2014. (nkl, ) Modified on 8/13/2014 (nkl, ). (Entered: 08/07/2014)
08/11/2014
455 ORDER re 454 Sealed Order. Signed by Judge Rodney Gilstrap on 08/08/2014.
(nkl, ) (Entered: 08/11/2014)
A0037
Case: 2:11-cv-00248-JRG As of: 06/05/2015 12:56 PM CDT 35 of 35
08/11/2014
456 NOTICE by Newegg Inc re 455 Order re Joint Notice Regarding Redaction of
Laches Order (Brean, Daniel) (Entered: 08/11/2014)
08/12/2014
457 ORDER re 454 Sealed Order. Signed by Judge Rodney Gilstrap on 08/12/2014.
(nkl, ) (Entered: 08/12/2014)
11/13/2014
458 NOTICE by Newegg Inc of Renewed Request for Hearing on Post−Trial Motions
(Baldauf, Kent) (Entered: 11/13/2014)
A0038
lllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllllll
US005412730A
United States Patent
[11]
[191
Jones
[54]
[45]
ENCRYPTED DATA TRANSMISSION
SYSTEM EMPLOYING MEANS FOR
RANDOMLY ALTERING THE ENCRYPTION
KEYS
Patent Number:
Date of Patent:
4,985,919
Inventor:
Michael F. Jones, Nashua, N.H.
[73]
Assignee:
Telequip Corporation, Hollis, N.H.
[21]
Appl. No.: 872,674
[22]
Filed:
Apr. 23, 1992
Related U.S. Application Data
[63]
Continuation-in-part of Ser. No. 418,178, Oct. 6, 1989,
abandoned.
Int. Cl.6 ............................................... H04L 9/00
U.S. CI•.......................................... 380/46; 380/9;
380/21; 380/29; 380/49
[58] Field of Search ................... 380/9, 20, 21, 43, 44,
380/49,50,18,46,29
[51]
[52]
[56]
References Cited
May 2, 1995
1/1991 Naruse et al ....................... 380/9 X
Primary Examiner-Bemarr E. Gregory
Attorney, Agent, or Firm-Allegretti & Witcoff, Ltd.
[57]
[75]
5,412,730
ABSTRACT
A modem suitable for transmitting encrypted data over
voice-grade telephone line. The modem is implemented
by the combination of integrated circuit components
including a microprocessor, a serial communications
controller which communicates with connected data
terminal equipment, and a modulator/demodulator for
translating between voice band tone signals and digital
data. Pseudo random number generators are employed
at both the transmitting and receiving stations to supply
identical sequences of encryption keys to a transmitting
encoder and a receiving decoder. An initial random
number seed value is made available to both stations.
The random number generators are advanced at times
determined by predetermined characteristics of the data
being transmitted so that, after transmission has taken
place, the common encryption key can be known only
to the transmitting and receiving stations.
2 Claims, 5 Drawing Sheets
U.S. PATENT DOCUMENTS
Microfiche Appendix Included
(2 Microfiche, 119 Pages)
4,809,327 2/1989 Shima .................................... 380/44
4,876,716 10/1989 Okamoto ............................... 380/21
r·-------•-------------------------------------••••••••••••••••••••••·------------TRANSMITTING STATION,11
DATA
SOURCE
....
,.
ENCRYPTOR
1rl
t
15../
BLOCK
-
r - COUNTER
CIPHER-~·
PSEUDO-RANDOM
NUMBER GENERATOR
~23
21
.__
--------------------~-------------------------~--------------------------- i'-.
INTERVAL NUMBER
RANDOM NUMBER SEED
-------------------~--------------------------~--------------------------·
.r29
PSEUDO-RANDOM
NUMBER GENERATOR
BLOCK
COUNTER
13
1----
---.
27
l---J
~~
DATA
UTILIZATION
CIRCUIT
"'-- 33
L
DECRYPTOR
...
_I
31
RECEIVING STATION, 12
~----------------------------------------------------------------------------------
A0039
U.S. Patent
May 2, 1995
5,412,730
Sheet 1 of 5
r••··------------------··-----------------------------·--·----------·-------------TRANSMITTING STATION, 11
DATA
SOURCE
ENCRYPTOR
1Y
,,
15_/
r-
CIPHER-~·
t
BLOCK
COUNTER
PSEUDO-RANDOM
1'--23
NUMBER GENERATOR
---------~~--------~-----------------------~----------------·---------- --INTERVAL NUMBER
""-.._
RANDOM NUMBER SEED
-------------------~--------------------------~-------------------------- ----
,-29
PSEUDO-RANDOM
NUMBER GENERATOR
BLOCK
COUNTER
13
--'"I
_37
4
DATA
..,
UTILIZATION
CIRCUIT
I
~
I
..,
DECRYPTOR
,~
31
"-._'
33
RECEIVING STATION, 12
~----------------------------------------------------------------------------------
Fig. 1
TODTE
~121
DISPLAY
r··------------------------------
SERIAL
COMMUNICATIONS
CONTROLLER
•I'
,
"---111
MODEM
UNIT
-1 D~ I
1
I
I
I
!(120
+-fl.e
i:r TO
ELEPHONE
I
'---t------~~~----c_;-1Jp_j
ETWORK
N
DATA BUS, 107
,,
MICROPROCESSOR
Fig. 2
\...__ 101
~
ADDRESS
BUS, 105
•
MEMORY
SUBSYSTEM
"--·103
A0040
A0041
1=
-'-
'1'
-'-
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-~~---~TMRINI
X2
r-------.---1 Xl
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~
~
...Ul
(JJ
e,
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('!)
('!)
(JJ
\0
\0
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~
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a
e;.
~
•
00.
•
U.S. Patent
May 2, 1995
5,412,730
Sheet 5 of 5
------------------------------------------------------------------------·----------------DATA
SOURCE
21..1
ae_
+
111
BLOCK
COUNTER
+
ENCRYPTOR
~
RESSOR
34--'
15/
TRANSMITTING STATION 11
DATA
COMP-
-4~
,
PSEUDO-RANDOM
NUMBER GENERATOR
.--39
+
{
...
c
PSEUDO-RANDOM
NUMBER GENERATOR
ERROR
CONTROL
r+
"'-36
~ffi
23
,
CIPHER-TEXT
KEY MEMORY
50
---------------------------------------------------------------------------------. 13,
r••••
---------------------------------------------------------------------------------·--i•
••
40,_r
PSEUDO-RANDOM
NUMBER GENERATOR
+
29"1.
SO...f
,
/35
....
.,.
"'t33
KEY MEMORY
J
BLOCK
COUNTER
DATA
UTIUZATION
CIRCUIT
.....
DATA
DECOMPRESSOR
"*
PSEUDO-RANDOM
NUMBER GENERATOR
31-........
~
11
-*
f+-
ERROR
CONTROL
DECODER
'-27
DECRYPTOR
RECEIVING STATION 12
·----------------------------------------------------------------------------------------~
Fig. 4
A0044
1
5,412,730
ENCRYPTED DATA TRANSMISSION SYSTEM
EMPLOYING MEANS FOR RANDOMLY
ALTERING THE ENCRYPTION KEYS
BACKGROUND OF THE INVENTION
5
This is a continuation-in-part of application Ser. No.
07/418,178 filed on Oct. 6, 1989.
A computer program listing is submitted herewith as
a microfiche appendix having 119 frames on 2 micro- 10
fiche.
This invention relates to data transmissions systems
and, more particularly, to systems for transmitting enciphered data.
Data encryption provides security for transmitted 15
data by scrambling the "clear text" data into "cipher
text". Typically, the transmitted data is scrambled in a
manner selected by a unique key value (such as a 56-bit
binary number) and unscrambled, at the receiving station, by a reverse process that requires the same key 20
value be known.
For increased data security, the encryption key value
may be changed frequently to further reduce the likelihood that an unauthorized party may decipher the data.
In such systems, new key values are sent at intervals 25
from the transmitting station to the receiving station.
The keys may be generated by a random number generator located at the transmitting end, encrypted in accordance with the currently active key, and transmitted
along with the other data. At the receiving station, the 30
encrypted key is extracted from the data stream, deciphered, and substituted at a designated time for the
prior key. In such a system, if any of the transmitted
keys are deciphered, the successive keys may be deciphered as well, so that all of the transmitted information 35
may be decoded.
In accordance with a principle feature of the present
invention, pseudo-random number generators are employed at both the transmitting and receiving stations to
supply a like sequence of encryption keys to both the 40
encryptor and decryptor, without these keys being
transmitted in any form over the transmission facility.
In accordance with the invention, to permit the two
stations to communicate, each supplied in advance with
a random number seed value which exclusively deter- 45
mines the numerical content of the sequence of numeric
values generated by each of the two pseudo-random
generators. In order that the two generators switch
from one output key value to the next in synchronism,
means are employed at both the transmitting and receiv- 50
ing stations to monitor the flow of transmitted data and
to advance the random number generator each time the
transmitted data satisfies a predetermined condition.
The monitoring function can advantageously be performed simply by counting the units of data being trans- 55
mitted and by advancing each pseudo-random key generator each time the count reaches an agreed-upon interval number. In this way, no additional synchronization information needs to be added to the data stream.
For even greater security, the interval number (which 60
must be reached before the key is switched) may itself
be a changing value generated by a random number
generator, so that the duration during which a given
key is active changes from key to key at times which are
predictable only by the authorized recipient.
65
In accordance with still another feature of the invention, different random number seed values and different
interval numbers (or different random number seed
2
values for the generator of the interval numbers) may be
associated with each of a plurality of remote locations
with whom secured communication is required, so that
the data on any given link is decipherable only by the
authorized receiving station, even though other stations
may have identical communication and decryption
hardware.
As a consequence of the foregoing feature, the invention may be used to advantage to control communications within a network. A key memory is provided
which permits a unique serial number identifying a
remote unit to be stored along with the current encryption key value, the serial number and key value being
stored on command from the local unit or by being
downloaded from a remote unit which serves as the
host or network supervisor. Once the host station has
supplied the initial seed value keys to the units forming
the two terminal locations for a given link and transmission over that link begins, the host is no longer "knows"
the encryption key values since they are dependent
upon the nature of the transmissions over the link. Consequently, link security cannot be compromised even by
an "insider" who is in possession of the initial key values
supplied by the host."
As contemplated by still another feature of the invention, the encryption and decryption may advantageously be accomplished within a modem unit which
also performs data compression and decompression, as
well as error-handling functions. Advantageously, the
compression, encryption and error-coding functions
may all be performed (in that sequence) at the transmitting station by the same processor, while a like processor at the receiving end is suitably programmed to provide, in sequence, the error control, decryption, and
decompression functions.
The principles of the invention may be applied to
advantage in terminals connected as part of a secured
communication network operating under central control. A key memory at each terminal may be loaded, by
a secure communication from the central control, with
encryption keys associated with other terminals with
which secured communication is authorized. In this
way, the central control can selectively permit or prohibit any terminal from decoding communications from
any other terminal on a dynamically changing basis.
This and other features and advantages of the invention may be more clearly understood by considering the
following detailed description of specific embodiments
of the invention.
BRIEF DESCRIPTION OF THE DRAWINGS
In the course of the detailed description to follow,
reference will frequently be made to the attached drawings, in which:
FIG. 1 is a functional block diagram illustrating the
basic signal processing steps which embody the invention;
FIG. 2 is a hardware block diagram which shows a
modem apparatus of the type contemplated by the invention;
FIGS. 3A, 3B and 3C are schematic representations
which, in combination, illustrate a preferred embodiment of the modem apparatus of FIG. 2; and
FIG. 4 is a functional block diagram illustrating enhanced signal processing capabilities used in the preferred embodiment of the invention.
A0045
3
5,412,730
DESCRIPTION OF THE PREFERRED
EMBODIMENT
FIG. 1-Basic Processing
FIG. 1 illustrates the manner in which the data being
transmitted is subjected to a sequence of signal processing steps as contemplated by the present invention.
These processing steps are executed at a transmitting
station 11 and at a receiving station 12 connected to
opposite ends of a communications channel 13.
At the transmitting station 11, a source of data 15
supplies a serial data stream to the data input of an
encryptor 17. The data from source 15 may take substantially any form, such as a file of text characters, each
encoded as a 8-bit byte, or a file of numerical binary
information expressed in 16-bit or 32-bit words. A block
counter 21 monitors the stream of data from the source
15 and generates an "advance signal" each time the data
meets a predetermined condition. Advantageously, the
block counter 21 may simply count the number of bytes
(characters), words or blocks of data being transmitted,
compare the current count with a predetermined 37
interval number" and produce an advance signal each
time the current count reaches the interval number (at
which time the current count is reset to 0).
The advance signal produced by block counter 21 is
supplied to the advance input of a pseudo-random number generator 23 which supplies a sequence of encryption key values to the key input of the encryptor 17. The
content of the key sequence is predetermined by the
combination of(l) the internal makeup ofthe generator
23 and by (2) a supplied random number seed value
which initializes the generator 23. The generator 23
responds to each advance signal from block counter 21
by changing its output to the next successive encryption
key value. Thus, for example, the combination of
counter 21 and generator 23 operate to change the encryption key each time total number of bytes transmitted is an exact multiple of the predetermined interval
number.
The encryptor 17 translates fixed length segments of
the data from source 15 ("clear text") into fixed-length
"cipher text" output segments, each segment translation
taking place in a manner uniquely determined by the
encryption key currently supplied by the pseudo-random number generator 23. The encryptor 17 (and the
decryptor 19, to be discussed) may advantageously
employ the accepted NBIS Data Encryption Standard
(DES), which codes and decodes data in 64-bit (8 byte)
units in accordance with a 56-bit key. The block
counter 21 need not supply advance signals on boundaries between encryption units, nor does the generator
23 need to provide new key value precisely on encryption unit boundaries. Instead, the encryptor 17 may
buffer the new keys temporarily, using it for the first
time on the next successive encryption unit of data.
At the receiving station 12, the incoming cipher text
is applied to the data input of the decryptor 31 whose
key input is connected to receive a sequence of keys
from the pseudo-random number generator 27. The
clear text output from the decryptor 31 is applied to a
data utilization device 33 and is monitored by a block
counter 29 which supplies advance signals to the number generator 27. Block counter 29 performs the identical function as that performed by the counter 21 at the
transmitting station 11 and hence supplies advance signals to the generator 27 at precisely the same times
(relative to the data stream) that counter 21 advances
5
10
15
20
25
4
generator 23. Each time the current count reaches the
interval number, the pseudo-random number generator
27 is advanced. Since the internal makeup of random
number generator 27 is identical to that of generator 23,
and since it is supplied with the same seed value, and
since block counter 29 is supplied with the same interval
number value as that supplied to the block counter 21,
exactly the same sequence of keys will be supplied to
the random number generators 23 and 27, and the keys
will change at precisely the same time (relative to the
data stream) to accurately decipher the transmitted
data.
Of course, in order for the receiving station to successfully decipher the incoming cipher text, the receiving station 12 must be provided (in some fashion) with
both the correct seed value and the correct interval
number. These values are supplied to the receiving
station in advance of the transmission by any secure
means. However, once the receiver possesses these
values, no further information is required to decipher
the transmissions. No key values, key verification values, or key synchronization signals need accompany the
transmitted ciphered text to control or coordinate the
encryption or decryption processing, even though the
encryption keys are continuously changing to enhance
security.
FIG. 2-Hardware
30
35
40
45
50
55
60
65
The principles of the present invention may be advantageously implemented in a data communications
modem having a hardware architecture of the type
generally depicted in FIG. 2 of the drawings. As
shown, the modem operates under the supervisory control of a microprocessor 101 such as the model 80188
microprocessor available from Intel Corporation. The
instructions and data operated on by the microprocessor 101 are stored in a memory subsystem 103 which is
composed of both read-only memory (advantageously
implemented as EPROM memory) and random access
memory (RAM). Memory subsystem 103 is coupled to
the microprocessor 101 by a memory address bus 105
and a data bus 107.
The data bus 107 also provides a data path to three
peripheral devices: a display 109, a serial communications controller (SCC) 111, and a modem module 113.
The SCC 111 may take the form of an integrated circuit
such as the model 82530 controller manufactured by
Intel Corporation. The modem module 113 may be
constructed using a modem unit 115, model R9696 chip
set available from Rockwell International Corporation,
a cooperating set of integrated circuits capable of performing trellis-coded modulation and demodulation
meeting the V.32 9600 baud communications protocol
standard, as well as the V.22 bis standard, and further
includes analog/digital conversion circuits which provide an interface to a direct access adapter (DAA) 117.
The adapter 117 may take the form of a type CH1828
integrated circuit DAA available from Cermetek Microelectronics, Inc.
The modem hardware shown in FIG. 2 is used at
both ends of the communications channel. At the transmitting end, data to be transmitted is supplied by the
connected data terminal equipment (DTE) via the serial
port 121 (e.g., a RS-232c or RS-422 standard port). The
asynchronous serial interface with the DTE typically
operates under the combined control of the microprocessor 101 and the sec 111 in accordance with a
A0046
5
5,412,730
standard interface protocol,(e.g., the V.42 standard
protocol). The DTE (data teiminal equipment) may be
any terminal or computer adapted to communicate via
this standard port using the selected serial protocol.
The encryption/decryption processing is essentially
"transparent" to the DTE; that is, the data is enciphered
and deciphered without effecting the content of the
data sent by or received by the DTE. However, it is
desirable to permit the connected DTE to send commands (such as extensions to the standard "AT command set") which will control encryption processing,
turning encryption ON and OFF, and accepting seed
values and interval numbers entered as "passwords"
directly from the connected DTE.
Data signals from the DTE which are to be transmitted are encrypted as described above and shown in
FIG. 1, the random number seed values and the interval
number values being pre-supplied to the microprocessor 101 and stored in memory subsystem 103. At the
receiving end, the modem module 113 shown in FIG. 2
receives the incoming data (typically as a 9600 baud
trellis-coded signal adapted for transmission over the
analog telephone link) and converts that incoming signal into data which is processed by microprocessor 101
and supplied via the SCC 111 to the connected DTE. In
the receiving mode, microprocessor 101 decrypts the
data as illustrated by the receiving station 12 in FIG. 1.
5
10
15
20
25
TABLE 1
FIGS. 3A, 3B and 3C-Preferred Embodiment
FIGS. 3A, 3B and 3C, in combination, illustrate a
preferred embodiment of the modem hardware shown
in FIG. 2. It should be noted that the devices illustrated
in FIGS. 3A, 3B and 3C which are common to the
functional units in FIG. 2 are designated by identical
"Drawing Reference Characters".
FIG. 3A illustrates the microprocessor 101, the memory subsystem 103, and various supporting logic. The
crystal inputs X1 and X2 to the microprocessor 101
provides an external connection for a fundamental
mode parallel resonant crystal 157 (Y1). The resonant
crystal 157 is utilized by the internal oscillator of the
microprocessor 101 to generate the clock signal,
CLKOUT. In a preferred embodiment, the resonant
crystal 157 has a fundamental frequency of 14.7456
Mhz.
The memory subsystem 103 includes memory devices
103a-d. The "jumper points" are designated as "E1-E12". The "jumper points" facilitate implementing various types of memory devices and memory configurations employed by the memory subsystem 103. The
memory subsystem 103 is discussed in detail below.
FIG. 3B illustrates the serial communications controller (SCC) 111, the serial port 121, the data terminal
equipment (DTE), and various supporting logic. The
integrated circuits 123, 124, 125, 127, 129, 131, 135 and
137 are utilized to time delay various signals from the
microprocessor 101 and thereby provide orderly operation between the microprocessor 101, the sec 111 and
the modem unit 115. These integrated circuits also generate the synchronous ready signal and asynchronous
ready signal, SRDY and ARDY, respectively.
As mentioned above, the data terminal equipment
(DTE) communicates with the modem hardware over
the serial port 121 (e.g., a RS-232c or a RS-422 standard
port). FIG. 3B illustrates interface configurations to
implement both a RS-232 interface standard and a RS422 interface standard. The differential line drivers 149
(U25) and the differential line receivers 151 (U26) are
6
employed to implement the RS-422 interface standard.
The line drivers 139 (U20), 141 (U21), and 147 (U24) are
employed to implement the RS-232 interface standard.
It will be readily appreciated by those skilled in the art
that although two types of interfaces are depicted, only
one interface is actually utilized at one time. The integrated circuits employed to implement the interface
standard not used are unnecessary.
FIG. 3C illustrates the modem unit 115, the direct
access adapter (DAA) 117, the telephone interface 120,
and various supporting logic. The micro-switch bank
155 (SW2) provide the user the option of "hard-wiring"
the baud rate settings for the modem unit 115. In operation, the switch settings of the micro-switch bank 155
are passed to the modem unit 115, via the octal buffer
145 (U23), when the modem hardware is powered-up or
reset.
TABLE I, below, provides information on the model
or type of devices employed in the modem hardware
illustrated in FIGS. 3A, 3B, and 3C. TABLE 1 also
provides one of several manufactures and/or suppliers
of the devices. TABLE 1 references the devices by
"Drawing Reference Characters" and "Device Reference Designations" consistent with their usage in FIGS.
3A, 3B, and 3C.
30
35
40
45
50
Drawing
Ref.
Char.
Device
Ref.
Desig. Type
103a
103b
103c
103d
119
123
124
125
127
129
131
133
135
137
111
115
117
139
141
143
145
147
149
151
153
155
157
U2
U3
U4
Manufacturer
----....;;~-..:..:.....------------101
Motorola, Inc.
U1
80188
us
U6
us
U9
UIO
U11
Ul2
U13
Ul4
UIS
U16
U17
UIS
Ul9
U20
U21
U22
U23
U24
U25
U26
B
SW2
Y1
27C256
27C256
JEDEC
JEDEC
74ALS373
74HC163
74HC163
74HC163
24ASOO
74AS04
74AS04
DS1232
74ASOO
74ASOO
82530
R9696-DP
CH1828
74HC126
DS14C88
74HC374
74HC540
26LS31
26LS32
CMB06
Intel Corporation
Intel Corporation
Intel Corporation
Intel Corporation
Texas Instruments, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Dallas Semiconductor
Texas Instruments, Inc.
Texas Instruments, Inc.
Intel Corporation
Rockwell International Corp.
Cermetek Microelectronics, Inc.
Motorola, Inc.
Motorola, Inc.
Texas Instruments, Inc.
Texas Instruments, Inc.
Motorola, Inc.
Motorola, Inc.
Motorola, Inc.
Star Micronics
55
The manufacturer specification sheets, commonly
known as "Data Sheets", for the device model or type·
indicated above are hereby incorporated by reference.
As mentioned above, the memory subsystem 103
60 includes memory devices 103a-d. The memory subsystem 103 may be implemented using RAM, ROM and/or
PROM type memory devices. TABLE 1 indicates the
memory devices 103a and 103b are type 27C256, ultra
violet erasable programmable read only memories (UV
65 PROMs) manufactured by Intel Corporation. When
either of memory devices 103a or 103b is a PROM type
device, then both 103a and 103b should be implemented
using PROM type devices.
A0047
5,412,730
7
Memory devices 103a and 103b may also be type
HM62256LP-SL series or HM62256LFP-SL series
CMOS static RAM manufactured by Hitachi America,
Ltd. Further, memory devices 103c and 103d may also
be type HM62256LP-SL series or HM62256LFP-SL
series CMOS static RAM. It will be appreciated by one
skilled in the art that a JEDEC type RAM, memory
devices 103c and 103d, is a RAM that conforms to the
industry standards regarding the integrated circuit
packaging. The type HM62256LP-SL series or
HM62256LFP-SL series CMOS static RAM devices
meet JEDEC standards.
The storage capacity of the memory subsystem 103
may be increased or decreased in relation to modem
hardware and/or modem software requirements. For
example, memory subsystem 103 may be configured
using 128K type, 256K type, and/or 512K type
RAMs/ROMs/PROMs. The "jumper points" facilitate
implementing various memory device types and memory configurations of the memory subsystem 103. The
manufacturer, by way of a memory device's data sheet,
provides configuration instructions. These instructions
dictate "jumper point" usage.
The power and ground pins for the integrated circuits, the buzzer 153, and the micro-switch bank 155 of
the modem hardware are not depicted in FIGS. 3A, 3B
and 3C. TABLE 2, below, provides power and ground
pin connections for the devices used to implement the
modem hardware illustrated in FIGS. 3A, 3B and 3C.
In particular, TABLE 2 indicates the pin connections to
+5V, digital ground, analog ground, and +I -12V.
TABLE 2 references the devices by the "Drawing
Reference Characters" and "Device Reference Designations" consistent with their usage in FIGS. 3A, 3B,
and 3C.
8
FIG. 4-Enhancements
5
10
15
20
25
30
35
The principles of the invention may be advantageously employed to encipher and decipher data which
is also compressed for enhanced transmission efficiency
and combined with error detection/correction coding.
Moreover, the invention may utilize a key storage system to store unique keys for different called and calling
parties, and may employ means for varying the interval
number in a random fashion so that the time durations
during which particular encryption keys are active
varies in unpredictable ways. These further enhancements to the system are depicted in FIG. 4 of the drawings which illustrates the preferred embodiment of the
invention.
If the data signals are to be "compressed" for increased transmission efficiency (e.g., by Huffman encoding or the like), the compression processing of the
data should precede encryption, because the encryption
process inherently randomizes the data, eliminating the
redundancy upon which efficient compression depends.
On the other hand, error control processing (such as
adding cyclic redundancy check (CRC) block checking
codes) is best done after encryption in accordance with
the invention, because successful synchronization of the
advance signals from the block counters 21 and 29 requires substantially error-free data transmission (which
the error-checking protocols insure).
As contemplated by the present invention, data compression, data encryption, and error control functions
may all be performed by a single control processor.
Thus, when a modem of the class shown in FIG. 2 of
the drawings is employed, the microprocessor 101 operates on the outgoing data stream by first performing
data compression, then performing the encryption step,
TABLE2
Drawing
Reference Character
Device
Reference Designation
101
103a
103b
103c
103d
119
123
124
125
127
I29
I31
I33
135
I37
III
I IS
117
139
I4I
I43
I45
I47
I49
ISI
I 53
ISS
Ul
U2
U3
U4
us
U6
us
U9
UIO
Ul1
Ul2
Ul3
Ul4
UIS
Ul6
Ul7
UIS
Ul9
U20
U2I
U22
U23
U24
U25
U26
B
SW2
+5 V Pin(s)
Digital
Ground Pin(s)
9, 21,43
28
28
28
28
20
1, 4, 5, 7, 10, 16
6, 10, 16
1, 4, 10, 13, 14
14
I4
I4
8
14
I4
7, 8, 9
1, 45, 6I
26, 46, 47, 50, 60
14
14
14
14
1, 10
3, 6, 8
3, 4, 5, 8
7
7
7
7
3, 4
7
7
3I
29, 37, 53
I4
7, I2, I3
20
20
I4
16
I6
Power
16
I, 10
IO
7
8, I2, IS
8, 12
Ground
9
Analog
Ground Pin(s)
+ I2 V
- I2 V
30, 31
3, 4
32
36
IO
7
14
I
and finally performing the error detection/protection
The bypass capacitors are not illustrated in FIGS.
processing before forwarding the data on to the modem
3A, 3B and 3C. It will be appreciated by those skilled in
the art that these capacitors have a first terminal con- 65 module 113 for trellis coding and digital-to-analog conversion for transmission over the telephone network.
nected to the power pin of the integrated circuit and a
second terminal to ground. These type capacitors may
The signal processing functions used in this enhanced
arrangement are shown in FIG. 4 of the drawings. In
have a capacitance value of about 0.01 microfarad.
A0048
9
5,412,730
FIG. 4, the functional units employed in the basic system shown in FIG. 1 are designated by the same numerals used in FIG. 1, and the description of those units
need not be repeated.
A data compressor 34 is shown connected between 5
the data source 15 and the encryptor 17. In the hardware as seen in FIG. 2, data compression may be conveniently performed by the microprocessor 101 on the
data from the DTE obtained via the SCC 111. At the
receiving station 12 as seen in FIG. 4, a data decompres- 10
sor 35 is connected between the decryptor 31 and the
data utilization device 33. Note also that, as depicted in
FIG. 4, the data is monitored by the block counter 21
prior to compression, rather than afterwards. Correspondingly, at the receiving station 12, the block 15
counter 29 monitors the data flow after it is decompressed. In this way, both counters monitor the same
data stream. Both could be reconnected to monitor the
compressed data stream if desired, however.
Error control processing is done by the error control 20
coder 36 which, for example, might add cyclic redundancy check data to the data being transmitted to permit data correction in the error detector/corrector 37 at
the receiving end, or to initiate a retransmission under
the active error correction protocol. This error correc- 25
tion processing (at both ends) may be advantageously
performed by the same microprocessor that performs
the data compression and encryption functions.
To further enhance the security of the transmission,
the duration of the interval during which each given 30
key is active may be changed in a pseudo-random fashion. For this purpose, a pseudo-random number generator 38 is used at the transmitting station 11 to supply the
interval numbers to the block counter 21. The generator
38 is advanced to a new number each time an advance 35
signal is received from the output of block counter 21
over line 39 (so that a new interval number is supplied
to the block counter 21 each time it advances the encryption key generator 23). Block counter 21 may simply load the interval number from generator 38 into an 40
accumulator which is then decremented toward zero
when it emits- the advance signal to generator 23, at
which time it is loaded with a new and different interval
number from generator 38. At the receiving station 12,
a pseudo-random generator 40 (which performs the 45
same pseudo-random number generating process as the
generator 38 at the transmitting station 11) supplies a
sequence of interval numbers to counter 29. Generator
40 is advanced by the advance signals from counter 29
which also advance the encryption key generator 27. 50
The random number generators 23 and 38 at the
transmitting station obtain their seed values from a key
memory 50. Key memory 50 stores the random number
keys indexed by destination (along with telephone dialup numbers for automatic dialing). Similarly, at the- 55
receiving station, the seed values for the remote terminals from which the receiving station is authorized to
receive information are stored in a key memory 60
connected to supply seed values to the generators 27
and 40. The key memories eliminates the need for au- 60
thorized users to remember and enter keys before each
transmission or reception.
In addition, the use of key memories allows the stations to be operated as terminals in a secure network
under the control of a central station which, in separate 65
transmissions over different secure links, enters (and
erases) the keys needed by authorized sending andreceiving stations connected to the network. In this way,
10
the central station permits one network user to transmit
to a single other user, or to "broadcast" to selected,
authorized users on the network only, while enabling all
terminals to use the network for unsecured transmissions.
The key memory within each station modem unit
includes a lookup table comprising a plurality of entries,
each of which stores control information concerning
another station in the network. Advantageously, each
table entry specifies:
(1) the serial number which identifies a remote hardware unit (and which corresponds to a serial number stored in the non-volatile memory of that remote unit);
(2) the current encryption key value (e.g. an 8 digit
DES encryption key) to be uS@d for communications to and from that remote station; and
(3) an optional dial-up telephone number (or comparable routing information used by the network
switching system).
A switch operated by a physical key is also advantageously included in each station unit and has "security
enabled" and "security disabled" positions. The key
memory can only be loaded with values identifying one
or more remote units with whom communications are
authorized when the switch is in the "security disabled"
position (typically when the unit is being set up by an
authorized operator who has the physical key needed to
disable the security switch). At that time, the table can
be loaded either from a remote (host) station or by a
local command which takes the form of an extension to
the standard modem AT command set. That load command take the form:
AT JSN KDESKEY PHONENUM
where AT is the AT command prefix, JSN is the letter
"J" immediately followed by the serial number of the
remote station with which communications is authorized, KDESKEY is the letter "K" immediately followed by an 8 character DES encryption key, and
PHONENUM is the standard routing code (e.g. dial-up
phone number string). In the preferred embodiment, up
to 1000 serial numbers and keys, and up to 100 optional
dial-up phone number strings (each with up to 39 digits)
may stored in the key memory lookup table.
To make a secured transmission, the calling station
uses PHONENUM to establish the connection, normal
modem handshaking procedures are executed to establish a working data connection, including standard parameter negotiations (e.g. the V.42 parameters if that
protocol is being used). If the security key is enabled,
and a secure transmission is being requested by the
caller, the answering modem will not send its parameter
message (the V.42 XID frame) until it receives one from
the originator, this initial message including the (unencrypted) originator's serial number. The answering
modem uses the received serial number to select the
locally stored encryption key corresponding to that
serial number, and encrypts its responsive XID frame
using the fetched key. Thereafter, all transmissions between the originating and answering modems are encrypted and the encryption keys at each end of the
secure ling are thereafter altered in accordance with the
encryption algorithm as heretofore described.
In accordance with an important feature of this arrangement, the host system may initially authorize communication between two connected units by supplying
A0049
11
5,412,730
12
the appropriate serial numbers and initial key values
"MODEM.H" is a "C" computer language program
(unique to an authorized link), but as soon as transmisthat provides definitions and parameters for the firmsion begins between the two units over the authorized
ware of the modem unit 115. The "SCC.ASM" is an
link, the encryption keys are changed in ways that are
assembly language program that facilitates interfacing
unknowable to the host. As a consequence, knowledge 5 with the SCC 111. The "STARTUP.ASM" is an assemof the initial seed values supplied by the host are of no
bly language program that performs initial setup and
further value and cannot be used to monitor ongoing
POST routines. The "TEST.C" is a "C" computer
communications over the authorized link.
language routine that performs self-test and power-on
self-check. The "UTIL.C" is a "C" computer language
Programming
10 routine that performs utility routines for the modem
The encryption and decryption operations may be
unit 115.
performed by special purpose devices, such as those
The computer program modules written in the "C"
widely sold to implement the DES standard encryption
computer language are specifically designed for "MImethod. As noted, however, the encryption function
CROSOFT C 5.1". It should be noted that computer
can be less expensively added by suitable programming 15 languages other than "C" may be employed to perform
of the microprocessor 101 to perform this function as
the function for which the "C" computer language
well as the control, compression, and error handling
modules were so designed.
functions.
Various preferred embodiments of the present invenWorking computer programs for use with an 80188
tion have been described. It is understood, however,
microprocessor appear in the computer program listing 20 that changes and modifications can be made without
in the microfiche appendix. These computer programs
departing from the true scope and spirit of the present
perform the encryption, decryption, control, compresinvention as defined by the following claims, which are
sion, and error handling functions. The computer proto be interpreted in view of the foregoing.
gram listing appearing in the microfiche appendix inWhat is claimed is:
cludes 14 modules, arranged alphabetically therein, 25
1. A method for transmitting data comprising a senamed: (1) "COMM.C"; (2) "COMMAND.C"; (3)
quence of blocks in encrypted form over a communica"DISPLAY.ASM"; (4) "DISPLAY.H"; (5) "ENtion link from a transmitter to a receiver comprising, in
CRYPT.ASM"; (6) "EQUS. INC"; (7) "KEY_SCHD.
combination, the steps of:
ASM"; (8) "MAIN. C"; (9) "MODEM. ASM"; (10)
providing a seed value to both said transmitter and
"MODEM.H"; (11) "SCC.ASM"; (12) "START- 30
receiver,
.ASM"; (13)"TEST.C"; and (14) "UTIL. C".
generating a first sequence of pseudo-random key
In the microfiche appendix, each computer program
values based on said seed value at said transmitter,
module includes a comment section followed by a comeach new key value in said sequence being proputer program listing. Comments are also interspersed
duced at a time dependent upon a predetermined
within the program listing. Each program is briefly 35
characteristic of the data being transmitted over
described below.
said link,
The "COMM.C" is· a "C" computer language proencrypting the data sent over said link at said transgram that performs communication routines. The
mitter in accordance with said first sequence,
"COMMAND.C" is also a "C" computer language
generating a second sequence of pseudo-random key
program that performs command processing routines. 40
values based on said seed value at said receiver,
The "DISPLAY.ASM" is an assembly language proeach new key value in said sequence being program that performs display initialization and display
duced at a time dependent upon said predetermined
interface. The "DISPLAY.H" is a "C" computer lancharacteristic of said data transmitted over said link
guage program whose function is to output LCD dissuch that said first and second sequences are identiplay strings. The "ENCRYPT.ASM" is an assembly 45
cal to one another a new one of said key values in
language program having the function "KEY_SCHD
said first and said second sequences being produced
ASM" which calculates a sequence of 16 key-related
each time a predetermined number of said blocks
values required in the DES algorithm. This sequence is
are transmitted over said link, and
pre-calculated when the DES key is changed to indecrypting the data sent over said link at said receiver
50
crease the speed of encryption and/or decryption.
in accordance with said second sequence.
The "EQUS.INC" is an assembly language listing
that defines assembly language names used in the sys2. The method as set forth in claim 1 further including
tem. The "MAIN.C" is a "C" computer language prothe step of altering said predetermined number of blocks
gram that performs modem supervisory control. The
each time said new key value in said first and said sec"MODEM.ASM" is an assembly language program 55 ond sequences is produced.
that facilitates interfacing with the modem unit 115. The
* * * * *
60
65
A0050
UNITED STATES PATENT AND TRADEMARK OFFICE
CERTIFICATE OF CORRECTION
PATENT NO.
APPLICATION NO.
DATED
INVENTOR(S)
: 5,412,730 Cl
: 90/011405
: September 20, 2011
: Michael F. Jones
Page 1 of 1
It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:
On the Title page item (73), change "Top" to --TOP--; and
On the Title page item (56) under U.S. Patent Documents, line 6, change "Herbem" to --Hebem--.
On the Title page item (56), second col. line 1, under Other Publications change "Encrption" to
--Encryption--.
Page 2, first column, line 3, change "Herbem" to --Hebem--; and
line 35, change "Frosch et al." to --Doland--.
Page 2, second column, line 15, change "Institute" to --Institution--;
line 31, change "Entemtainment" to --Entertainment--;
line 46, change "Des" to --DES--; and
line 55, change "Communication" to --Communications--.
Page 3, first column, line 3, change "unkown" to --unknown--; and
line 11, change "Cryptogprahy" to --Cryptography--.
Page 3, second column, lines 5-6, change
"http://groups.google.com/sci.crypt/browse_frm/month/1987 -09" to
--http://groups.google.com/ group/sci.crypt/browse_frm/month/1987 -09--; and
line 28, change "Philadephia" to --Philadelphia--.
Signed and Sealed this
Third Day of April, 2012
David J. Kappos
Director of the United States Patent and Trademark Office
A0051
UNITED STATES PATENT AND TRADEMARK OFFICE
CERTIFICATE OF CORRECTION
PATENT NO.
APPLICATION NO.
DATED
INVENTOR(S)
: 5,412,730 Cl
: 90/011405
: September 20, 2011
: Michael F. Jones
Page 1 of2
It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shown below:
On the Title page item (73), change "Top" to --TQP--; and
On the Title page item (56), under U.S. Patent Documents, line 6, change "Herbem" to --Hebem--.
On the Title page item (56), second col. line 1, under Other Publications, change "Encrption" to
--Encryption--.
Page 2, first column, line 3, change "Herbem" to --Hebem--; and
line 35, change "Frosch et al." to --Doland--.
Page 2, second column, line 15, change "Institute" to --Institution--;
line 31, change "Entemtainment" to --Entertainment--;
line 46, change "Des" to --DES--; and
line 55, change "Communication" to --Communications--.
Page 3, first column, line 3, change "unkown" to --unknown--; and
line 11, change "Cryptogprahy" to --Cryptography--.
This certificate supersedes the Certificate of Correction issued April 3, 2012.
Signed and Sealed this
Fourth Day of September, 2012
~-JJ:•t-.~
David J. Kappos
Director of the United States Patent and Trademark Office
A0052
CERTIFICATE OF CORRECTION (continued)
U.S. Pat. No. 5,412,730 Cl
Page 2 of2
Page 3, second column, lines 5-6, change
"http://groups.google.com/sci.crypt/browse_frm/month/1987 -09" to
--http://groups.google.com/ group/sci.crypt/browse_frm/month/1987 -09--; and
line 28, change "Philadephia" to --Philadelphia--.
A0053
111111
c12)
1111111111111111111111111111111111111111111111111111111111111
US005412730Cl
EX PARTE REEXAMINATION CERTIFICATE (8548th)
United States Patent
c1o)
Jones
(45)
(54)
ENCRYPTED DATA TRANSMISSION
SYSTEM EMPLOYING MEANS FOR
RANDOMLY ALTERING ENCRYPTION KEYS
(75)
Inventor:
Michael F. Jones, Nashua, NH (US)
(73)
Assignee: Top Development, LLC, Marshall, TX
(US)
Reexamination Request:
No. 90/011,405, Dec. 27, 2010
Reexamination Certificate for:
Patent No.:
5,412,730
May 2, 1995
Issued:
Appl. No.:
07/872,674
Filed:
Apr. 23, 1992
FOREIGN PATENT DOCUMENTS
CA
CA
EP
EP
EP
EP
EP
EP
GB
GB
GB
GB
GB
GB
JP
wo
wo
wo
Related U.S. Application Data
(63)
Continuation-in-part of application No. 07/418,178, filed on
Oct. 6, 1989, now abandoned.
(51)
Int. Cl.
H04L 9100
(52)
(58)
(56)
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A
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Field of Classification Search ........................ None
See application file for complete search history.
Number:
US 5,412,730 Cl
Certificate Issued:
Sep. 20, 2011
(Continued)
Primary Examiner-Minh Dieu Nguyen
(57)
ABSTRACT
A modem suitable for transmitting encrypted data over
voice-grade telephone line. The modem is implemented by
the combination of integrated circuit components including
a microprocessor, a serial communications controller which
communicates with connected data terminal equipment, and
a modulator/demodulator for translating between voice band
tone signals and digital data. Psuedo random number generators are employed at both the transmitting and receiving
stations to supply identical sequences of encryption keys to a
transmitting encoder and a receiving decoder. An initial random number seed value is made available to both stations.
The random number generators are advanced at times determined by predetermined characteristics of the data being
transmitted so that, after transmission has taken place, the
common encryption key can be known only to the transmitting and receiving stations.
A0054
US 5,412,730 Cl
Page 2
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Hitt
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Frutiger
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Tuckerman, III
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Branscome eta!.
Morgan
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A0055
US 5,412,730 Cl
Page 3
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A0056
US 5,412,730 Cl
1
2
5. The method of claim 1, wherein said provided seed
EX PARTE
value is one of a number of different seed values indexed by
REEXAMINATION CERTIFICATE
destination for a plurality of remote locations with which
ISSUED UNDER 35 U.S. C. 307
THE PATENT IS HEREBY AMENDED AS
INDICATED BELOW.
Matter enclosed in heavy brackets [ ] appeared in the
patent, but has been deleted and is no longer a part of the
patent; matter printed in italics indicates additions made
to the patent.
10
AS A RESULT OF REEXAMINATION, IT HAS BEEN
DETERMINED THAT:
The patentability of claims 1-2 is confirmed.
15
New claims 3-10 are added and determined to be patentable.
3. The method of claim 1, further comprising:
at said transmitter, associating with each of a plurality of
remote locations with which secured communication is
required different seed values, and
wherein said provided seed value is one of said different
seed values.
4. The method of claim 3, further comprising:
storing the different seed values indexed by remote location.
20
25
secure communication is required.
6. The method of claim 1, wherein said provided seed
value is one ofa number of different seed values for a plurality of remote locations with which secure communication is
required.
7. The method of claim 1,further comprising:
selecting the seed value from a number of different seed
values for a plurality of remote locations with which
secure communication is required.
8. The method of claim 1,further comprising:
associating different ones of seed values with each of a
plurality of remote locations with which secured communication is required.
9. The method of any one of claims 3, 4, 5, 6, 7, or 8,
further comprising:
adding error control information to the data sent over
said link, wherein the error control information is
added prior to transmitting the data over said link
10. The method of claim 9, further comprising:
compressing the data prior to encrypting the data.
* * * * *
A0057
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 1 of 70 PageID #: 8599
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
NO. 2:11-CV-248-JRG
1-800-FLOWERS.COM, INC., et al.,
Defendants.
NEWEGG’S RULE 50(b) MOTION FOR JUDGMENT AS A MATTER OF LAW
A0058
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 2 of 70 PageID #: 8600
TABLE OF CONTENTS
I. LEGAL STANDARD ............................................................................................................... 2
II. ARGUMENT ............................................................................................................................ 3
A. NO REASONABLE JURY COULD HAVE FOUND INFRINGEMENT OR ACTIVE INDUCEMENT OF
INFRINGEMENT ...................................................................................................................... 3
1. TQP Failed to Prove that Newegg's Accused Website Systems Satisfied All
Claim Requirements ...................................................................................................... 4
a. TQP Failed To Prove The “Have Been Sent” Requirement ................................... 4
b. TQP Failed to Prove the “Predetermined Number of Blocks” Requirement .......... 9
c. TQP Failed to Prove the “Generating First/Second Sequence[s]” Requirements . 10
2. There is No Evidence that Newegg Performed, or Controlled or Directed, All the Steps
of the Claimed Method ................................................................................................ 10
3. TQP Presented No Evidence of Even a Single Instance of Direct Infringement
During the Patent Term ............................................................................................... 13
a. TQP Failed to Prove That Newegg Or Its Customers Actually Used RC4 During
the Patent Term .................................................................................................... 14
b. TQP Failed to Prove How SSL was Implemented on the Accused NetScalers
During the Patent Term ........................................................................................ 17
4. TQP Failed to Present Sufficient Evidence that Newegg is Liable for Active Inducement
of Infringement ............................................................................................................ 19
B. NO REASONABLE JURY COULD HAVE FOUND THE ASSERTED CLAIMS VALID OVER THE
PRIOR ART OF RECORD ....................................................................................................... 21
1. The Prior Inventions of RC4 and Lotus Notes Including RC4 Invalidate the Asserted
Claims Under 35 U.S.C. § 102(g) ................................................................................ 22
a. RSA Invented The Claimed Subject Matter Of The ’730 Patent First .................. 23
b. RSA Did Not Abandon, Suppress, Or Conceal RC4, and Iris Associates Did Not
Abandon Suppress or Conceal Lotus Notes With RC4 ........................................ 25
2. The Prior Public Knowledge or Use of RC4 or Lotus Notes with RC4 Invalidate the
Asserted Claims Under 35 U.S.C. §§ 102(a)/(b) .......................................................... 31
i
A0059
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 3 of 70 PageID #: 8601
No. 2:11-CV-248-JRG
3. The Prior Offers for Sale and Sale of RC4 and Lotus Notes Incorporating RC4
Invalidate the Asserted Claims Under 35 U.S.C. § 102(b) ........................................... 34
4. The Asserted Claims Are Invalid Over the 1982 Denning Textbook, a Prior Printed
Publication, Under 35 U.S.C. § 102(a)/(b) .................................................................. 36
a. Denning Anticipates All Asserted Claims of the ’730 Patent ............................... 38
b. TQP’s Disputes Concerning Denning are Without Merit ..................................... 42
5. The Asserted Claims Are Obvious as a Matter of Law Under 35 U.S.C. § 103 ........... 45
a. RC4 Alone Renders the Asserted Claims Obvious............................................... 47
b. Denning Alone Renders the Asserted Claims Obvious ........................................ 48
c. Combinations of RC4, Lotus Notes with RC4, and Denning Render the Asserted
Claims Obvious.................................................................................................... 50
C. NO REASONABLE JURY COULD HAVE FOUND NEWEGG LIABLE FOR THE $2.3 MILLION
DAMAGES VERDICT ............................................................................................................. 51
1. Legal Background ....................................................................................................... 51
2. TQP Did Not Provide Legally Viable Evidence to Support Its Damages Claim .......... 52
a. The RSA Licenses Are Not Comparable to the ’730 Patent ................................. 53
b. Dr. Becker’s Royalty Tranches Were Arbitrarily Selected and Find No Support in
the Record ............................................................................................................ 56
3. TQP’s Position is Undermined by Compelling Evidence ............................................. 58
III. CONCLUSION ....................................................................................................................... 60
ii
A0060
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 12 of 70 PageID #: 8610
No. 2:11-CV-248-JRG
was from 2013, after the ’730 Patent expired. TQP may not rely on such evidence to prove
infringement during the damages period. Finally, TQP failed to prove that Newegg actively
induced infringement by intending to cause infringement or acting with culpable intent. For any
one of these reasons, the Court should grant Newegg’s motion.
1.
TQP Failed to Prove that Newegg’s Accused Website Systems Satisfied All
Claim Requirements
It was TQP’s burden at trial to prove that Newegg’s website met all the claim requirements.
The failure to establish that the accused product meets all limitations of the claim requires
judgment as a matter of law. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321
(Fed. Cir. 2009); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980-981 (Fed. Cir. 1999)
(judgment as a matter of law of non-infringement is appropriate when no reasonable fact finder
could determine “that the accused devices meet every limitation of the properly construed claims”).
Here, TQP withdrew its doctrine of equivalents case. Thus, it was required to show that Newegg
satisfied every limitation literally, but TQP failed to carry its burden of proof as a matter of law.
a.
TQP Failed To Prove The “Have Been Sent” Requirement
All the asserted claims require: “a new one of said key values in said first and said second
sequences being produced each time a predetermined number of said blocks are transmitted over
said link.” PX-1, ’730 Patent, at Claim 1. The Court construed this claim requirement to mean “a
new key value in the first and second sequence is used each time a predetermined number of
blocks have been sent from the transmitter over the communications link.” Dkt. No. 226, at 22.
TQP’s infringement theory is that a single byte of data is the “predetermined number of
blocks.” Trial Tr. Nov. 20, 2013 AM, at 12:24-13:5; 23:2-6 (“Q. What is the predetermined
number of blocks in SSL and RC4? A. RC4 defines a predetermined number of blocks in one—as
one, and it’s the—it is that way within SSL or TLS as well.”). Thus, the only legitimate reading of
4
A0069
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 13 of 70 PageID #: 8611
No. 2:11-CV-248-JRG
this construction in this case is that a new key value must be used at the transmitter for encrypting
the next block only after each prior encrypted block has already been transmitted over the link –
not before. A block of data must be encrypted and sent over the communication link before the
next block is encrypted. TQP failed to prove that Newegg’s NetScalers met this requirement.
TQP’s expert, Dr. Jaeger, did not address the “have been sent” requirement on direct
examination—he merely conclusorily asserted that the claim element is generally satisfied. Trial
Tr. Nov. 20, 2013 AM, at 17:25-18:21 (“Q. Does Newegg's use of SSL and RC4 meet all the
requirements of Element 1(e)? A. I find that it does, yes.”). Dr. Jaeger then confirmed on cross,
using the following demonstrative from his direct examination, that the one-byte “block” in
Newegg’s system is not transmitted when the next key value is used by the transmitter:
Dr. Jaeger’s Demonstratives, attached as Ex. A, at Slide 68.
Q
[I]n this animation—you show that we’ve got one block, the green block,
and two blocks—the second block, the blue block—block, they’ve been
encrypted already, correct?
5
A0070
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 14 of 70 PageID #: 8612
No. 2:11-CV-248-JRG
A
Q
A
Q
A
As is shown here, yes.
And they’ve each been encrypted using a different key value, correct?
Block 1 was encrypted with a different key value than Block 2, yes.
So Block 2, the blue block, is being encrypted using a new key value before
Block 1 has been transmitted across the communication link, correct?
That’s correct.
Trial Tr. Nov. 20, 2013 AM, at 130:11-23; see also id at 54:22-55:5 (admitting that multiple bytes
are transmitted en masse in Newegg’s accused system, not one at a time). TQP’s expert thus
openly acknowledged that, under his infringement theory, the new key value is used to encrypt the
next byte before the previously encrypted block has been sent over the communication link. The
Court’s claim construction is not met by Newegg’s accused system.
Newegg’s technical expert, Dr. Stubblebine, confirmed non-infringement by examining the
same demonstrative slide prepared by Dr. Jaeger shown above. Trial Tr. Nov. 21, 2013 PM, at
32:17-25 (“The Court's construction says that new key value in the first and second sequence is
used each time a predetermined number of blocks have been sent from the transmitter over the
communication link. And what Dr. Jaeger was accusing as that predetermined number is one
block. And so one block has got to be sent before you use the next key to encrypt the next block,
and that's not what's going on.”). It is beyond any reasonable dispute that Newegg’s system does
not send an encrypted block over the communication link before the next key is used to encrypt.
As a result, Newegg is entitled to a judgment of non-infringement as a matter of law.
TQP initially disputed but ultimately conceded that Newegg’s reading of the claim
language and the construction is correct. During the claim construction phase of this case Newegg
proposed that the phrase “blocks are transmitted over said link” be interpreted to require that the
“blocks have been sent from the transmitter over the communication link.” Dkt. 226 [Claim
Construction Order] at 18. Newegg’s briefing clearly explained that the new key value at the
transmitter must not be used until after the prior block already has been sent over the link. Dkt.
6
A0071
Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 15 of 70 PageID #: 8613
No. 2:11-CV-248-JRG
178, at 20 (“[U]se of the past tense here indicates that the invention does not switch to the next key
value until after the predetermined number of data blocks have been transmitted.”).
TQP initially opposed the inclusion of the phrase “have been sent.” Dkt. 172, at 5-6.
TQP’s briefing on the issue was conclusory and unconvincing, essentially going no further than
expressing its belief that the “have been sent” language was redundant and unnecessary. Dkt. 172,
at 5-6. However at oral argument, TQP argued that “have been sent” should not be included in the
construction because it supposedly changed to the past tense the requirement that the first block be
sent when the next block is transmitted, making it “awkward.” Markman Tr., Dkt. 212 at 51:1520 (“the concern is this, it’s changing the present tense, ‘are transmitted,’ to the past tense, ‘have
been sent.’”). Specifically, TQP contended: “[t]he key values in the first sequence are in the
transmitter. Those values are being produced before the data is transmitted. So changing it to
‘have been sent’ seems awkward to us.” Id. at 51:11-52:5. Despite this supposed disagreement,
TQP characterized the difference between “are transmitted” and “have been sent” as “very close”
and “a minor issue.” Id. at 55:11-56:12. In fact, TQP’s counsel ultimately conceded that its
concerns were addressed by the Court’s ultimate construction: “To the extent that the Court's
construction is indicating that a new key value is used past tense each time a predetermined
number of blocks have been sent from the transmitter over the communication link, I think that
may be broad enough to address the concern that I’ve raised.” Id.
In the subsequent Claim Construction Order, this Court rejected TQP’s arguments and
adopted a construction requiring that the “blocks have been sent from the transmitter” because “the
claim explicitly refers to transmission, not to encryption or to some other step of preparing for
transmission.” Dkt. 226 at 21. TQP never objected to this construction. In sum, the parties
already debated during claim construction whether the new key value had to be used at the
7
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transmitter after the block had been sent. The Court found that it did and TQP, after initially
raising apparently grammatical rather than substantive concerns, accepted the construction.
Nevertheless, at trial, TQP suddenly contended that the requirement of the new key value
being used to encrypt a second block before the first encrypted block has been sent over the link
supposedly did not relate to the new key value in the transmitter, but rather only the new key value
on the receiver side. TQP argued that encryption at the transmitter was irrelevant because the two
sequences of key values are identical and the claim step at issue appears in a paragraph describing
the generation of the second sequence of key values at the receiver. Trial Tr. Nov. 25, 2013 PM, at
113:8-114:17. But again, at the claim construction hearing, TQP’s counsel accepted the Court’s
construction and acknowledged in the context of this very claim construction issue that the “key
values in the first sequence are in the transmitter.” Markman Tr. at 51-52.
In its mid-trial attempt to sidestep the claim constructions and backpedal from its previous
positions taken on the record, TQP first notes that this claim step starts with the language
“generating a second sequence of pseudo-random key values based on said seed value at said
receiver.” TQP asserts that this means the relevant clause (whose construction is at issue) “said
first and said second sequences being produced each time a predetermined number of said blocks
are transmitted over said link” must only relate to the receiver side.
But TQP does not get a “do-over” on claim construction. The claim requirement at issue
expressly refers to the “first sequence” of key values, which is the sequence on the transmitter side,
as this Court previously held. This is because the second step of the claim requires the step of
“generating a first sequence of pseudo-random key values based on said seed value at said
transmitter.”
Only the second sequence is at the receiver side. Thus, by the plain text of the
claim, the requirement that a new key value is used after the previously encrypted block “ha[s]
8
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Case 2:11-cv-00248-JRG Document 436 Filed 02/17/14 Page 17 of 70 PageID #: 8615
No. 2:11-CV-248-JRG
been sent” applies to both the first sequence in the transmitter and the second sequence in the
receiver: “a new one of said key values in said first and said second sequences being produced
each time a predetermined number of said blocks are transmitted over said link.” The new key
values are undeniably required to be used at both the transmitter and the receiver after a
predetermined number of blocks have been sent over the communication link.
Because TQP’s reading of the claim construction is inconsistent with a plain reading of the
Court’s construction and the claim, and it is undisputed that Newegg does not transmit a block of
encrypted data before encryption of a new block of data, Newegg is entitled to a judgment as a
matter of law that it does not infringe the ’730 Patent.
b.
TQP Failed to Prove the “Predetermined Number of Blocks” Requirement
The claim requires a “predetermined number of blocks.” This claim language requires a
plurality of blocks—a single block is insufficient to constitute the claimed “blocks.” Yet TQP’s
trial position was that a single block can satisfy the “blocks” requirement. Trial Tr. Nov. 20, 2013
AM, at 23:2-6 (“Q. What is the predetermined number of blocks in SSL and RC4? A. RC4
defines a predetermined number of blocks in one—as one, and it’s the—it is that way within SSL
or TLS as well.”).
This distinction—between the one block asserted by TQP as satisfying the
claim requirement and the multiple blocks actually required—is important because the patent
describes the invention as involving the counting of blocks as a part of the allegedly inventive
encryption scheme. ’730 Patent, at Col. 3 and Fig. 1. A single block, in addition to being
inconsistent with the plain meaning of the plural claim language, does not require counting and is
thus inconsistent with the patent’s teaching that the blocks need to be counted. See Claim
Construction Order, Dkt. 226 at 30 (noting that “use of the plural term ‘blocks’ in Claim 1 of the
’730 patent weighs in favor of finding that two or more blocks are required” and that “[n]othing in
9
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Case 2:11-cv-00248-JRG Document 436-1 Filed 02/17/14 Page 12 of 14 PageID #: 8680
RC4
Source: ‘730 Patent,
Fig. 1 (PX1)
Court’s construction:
“a new key value in the first and second sequence is used each time a
predetermined number of blocks have been sent from the transmitter over the
communication link”
A0139
68
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NO. 2:11-CV-248-JRG
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
NO. 2:11-CV-248-JRG
1-800-FLOWERS.COM, INC., et al.,
Defendants.
NOTICE OF SUBSEQUENT AUTHORITY
Defendant Newegg Inc. (“Newegg”) respectfully submits the Memorandum Opinion and
Order in TQP Development, LLC v. Intuit Inc., Case No. 2:12-cv-180, Dkt. 192 (attached as Exhibit
A) (the “Intuit Opinion”), which issued on June 20, 2014, as subsequent authority supporting
Newegg’s Rule 50(b) Motion for Judgment as a Matter of Law (Dkt. No. 436) and its Rule 59
Motion for a New Trial (Dkt. No. 437).1 The Intuit Opinion finds non-infringement—as a matter
of law—of the same patent, based on the same claim requirement, applied to identical accused
systems, as are involved in the Newegg case. The reasoning in the Intuit Opinion, combined with
TQP’s utter failure of proof in the trial against Newegg, is dispositive of Newegg’s post-trial
motions. Accordingly, the Court should enter a judgment of non-infringement.
In the Intuit Opinion, Judge Bryson, sitting by designation in this District, granted summary
judgment of non-infringement because the accused systems did not meet the following element of
asserted claim 1 of U.S. Patent No. 5,412,730 (the “’730 Patent”): “a new one of said key values
1
This notice supplements the arguments presented in Newegg’s Rule 50(b) Motion for Judgment as a Matter of Law
(Dkt. No. 436) and its Rule 59 Motion for a New Trial (Dkt. No. 437) and accompanying briefing. Thus, Newegg
expressly preserves and does not waive the arguments presented therein.
1
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NO. 2:11-CV-248-JRG
in said first and said second sequences being produced each time a predetermined number of said
blocks are transmitted over said link.” Judge Bryson held that this requirement was not practiced
by systems identical to Newegg’s, (see Intuit Opinion, Ex. A at 18 n.3), because the production of
key values in the accused systems is completely unrelated to the transmission of a predetermined
number of blocks. Intuit Opinion, Ex. A at 20. The Intuit Opinion decisively establishes that TQP
failed to prove infringement as a matter of law for the same reasons as set forth in Newegg’s Rule
50(b) motion.
In the Intuit case, Judge Bryson flatly rejected TQP’s primary argument opposing
Newegg’s post-trial motions that the “a new one of said key values” requirement applies only to
the receiver. See, e.g., TQP’s Opp. Br., Dkt. 440 at 5 n.4. Indeed, Judge Bryson noted that this
“limitation requires that a new key value be produced at the transmitter ‘each time a predetermined
number of blocks are transmitted over said link.’” Intuit Opinion, Ex. A at 18 (emphasis added).
This concept is expressly reflected in the language of Judge Bryson’s construction of that term:
For both the first and second sequences, at the transmitter and at the receiver
respectively, a new key value is produced each time a predetermined number of
blocks are transmitted over the link. The term ‘produced’ as used in that sentence,
means ‘generated’ or ‘supplied.’ The phrase ‘are transmitted’ means ‘are being
transmitted’ or ‘have been transmitted.’
Intuit Opinion, Ex. A at 17. Originally, in the Intuit case, the claim construction of the “a new one
of said key values” requirement had been agreed upon by the parties to be identical to the one
given to the jury in the TQP v. Newegg trial. See TQP Development, LLC v. Intuit Inc., Case No.
2:12-cv-180, Dkt. 135 at Ex. A, 5 (“a new key value in the first and second sequence is used each
time a predetermined number of blocks have been sent from the transmitter over the
communication link”). Ultimately, however, in Intuit, Judge Bryson adopted the above broader
construction, the final sentence of which was intended “to define the term ‘are transmitted’ to mean
2
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Case 2:11-cv-00248-JRG Document 450 Filed 06/30/14 Page 3 of 7 PageID #: 9173
NO. 2:11-CV-248-JRG
‘is being transmitted or has been transmitted’ for both the transmitter and receiver.” Id. (emphasis
added).
Clearly, Judge Bryson’s construction underscores the error of TQP’s “receiver only”
argument. Beyond that, however, Judge Bryson reaffirmed Newegg’s principal argument that
Newegg does not meet the “a new one of said key values” requirement because that limitation
requires the production of a new key value only upon transmission of a predetermined number of
blocks.
In the Intuit Opinion, Judge Bryson held as a matter of law that the “a new one of said key
values” requirement was absent from systems identical to Newegg’s, despite adopting a
construction broader than the one at issue in the Newegg litigation.2 TQP produced no evidence
that the production of key values depends on or had any other relationship to when a predetermined
number of blocks “have been transmitted” or “are being transmitted” over the communication
link.3 Id. at 20-24. Judge Bryson explained that “key values in the accused systems change for
each new block that enters the transmitter, not each time a single block is placed on the
communication link by the transmitter,” and that “each time an additional block enters the
[accused] transmitter, the key value is changed, no matter how many blocks are in the transmitter
at that time.” Id. at 21. In other words, “[i]n the patented method, a new key value is produced
each time a predetermined number of data blocks are transmitted, whereas in the accused systems
a new key value is produced each time the transmitter receives a predetermined number of data
blocks (one, in the case of defendants’ systems) . . . .” Id. at 22.
2
In the Newegg litigation, the controlling construction requires production of a new key value when a predetermined
number of blocks “have been sent” from the transmitter over the communication link, whereas Judge Bryson’s Intuit
construction requires production of a new key value when a predetermined number of blocks “have been transmitted”
or “are being transmitted.”
3
As Newegg demonstrated at trial, TQP failed to address this aspect of the claim construction even in Dr. Jaeger’s
expert report. Trial Tr. Nov. 19, 2013 AM, at 6:15-8:15 (identifying Dr. Jaeger’s failure to use the correct claim
construction of the “a new one of said key values” requirement).
3
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Case 2:11-cv-00248-JRG Document 450 Filed 06/30/14 Page 4 of 7 PageID #: 9174
NO. 2:11-CV-248-JRG
Moreover, in the Intuit Opinion, Judge Bryson noted that Dr. Jaeger’s testimony and
demonstrative in the Newegg trial showed that the accused systems encrypted multiple blocks of
data, each with a different key value, but that the transmitter retained those blocks until all were
ready to be placed on the communication link. Intuit Opinion, Ex. A at 18-19; see also Dkt. 436
at 5-6 (citing additional admissions of Dr. Jaeger that all blocks are encrypted with a different key
value without regard to whether a predetermined number of blocks have been transmitted). This
evidence, however, “does not establish that the production of new key values corresponds to times
when a predetermined number of blocks ‘have been transmitted’ or times when a predetermined
number of blocks ‘are being transmitted,’ i.e., when there is a predetermined number of blocks in
the transmitter.” Id. at 20. According to Judge Bryson, at most, Dr. Jaeger’s evidence suggests
that, in the accused systems, “blocks that enter the transmitter serve only to increase the number
of blocks in the transmitter by one [the predetermined number] because nothing is output onto the
communication channel until some relatively large number of blocks have been encrypted.” Id. at
21.
Judge Bryson’s reasoning and analysis applies equally to Newegg’s Rule 50(b) and 59
motions since Newegg’s systems are identical to those in the Intuit case. Here, TQP has failed to
prove any relationship between the production of new key values and the transmission of a
predetermined number of blocks over the communication link. See Dkt. 436 at 4-9; Dkt. 437 at 14. The controlling claim construction in the present litigation requires a new key value to be used
each time a predetermined number of blocks “have been sent,” which is virtually identical to the
“have been transmitted” portion of Judge Bryon’s Intuit construction. Moreover, even under the
“are being transmitted” construction advocated by TQP in its opposition to Newegg’s Rule 50(b)
motion (see Dkt. 440 at 2 n.2), the Intuit Opinion demonstrates that the “a new one of said key
4
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Case 2:11-cv-00248-JRG Document 450 Filed 06/30/14 Page 5 of 7 PageID #: 9175
NO. 2:11-CV-248-JRG
values” requirement cannot be present in Newegg’s accused systems because new key values are
produced only when the predetermined number of blocks are received – not when they “are being
transmitted” over the link.
As Judge Bryson succinctly noted, “[n]othing in the evidence shows that a new key value
is produced at the transmitter ‘each time’ a predetermined number of blocks have been transmitted
over the link or are in the transmitter awaiting transmission.” Intuit Opinion, Ex. A at 20. Just as
TQP was unable to find any evidence from the Newegg trial to survive summary judgment of noninfringement in the Intuit case, TQP is unable to find any trial evidence to support a verdict of
infringement in the present litigation.
For these reasons, and the reasons set forth in Newegg’s Rule 50(b) Motion for a Judgment
as a Matter of Law (Dkt. 436), Newegg is entitled to a judgment as a matter of law that it does not
infringe the ’730 Patent. 4
Dated: June 30, 2014
Respectfully submitted,
By: /s/ Anthony W. Brooks
Kent E. Baldauf, Jr.
James J. Bosco, Jr.
Daniel H. Brean
Anthony W. Brooks
THE WEBB LAW FIRM
One Gateway Center
420 Ft. Duquesne Boulevard, Suite 1200
Pittsburgh, PA 15222
Tel: (412) 471-8815
Fax: (412) 471-4094
kbaldaufjr@webblaw.com
jbosco@webblaw.com
dbrean@webblaw.com
abrooks@webblaw.com
4
Because judgment as a matter of law is warranted, there is no need to reach Newegg’s Rule 59 New Trial Motion,
but Judge Bryson’s reasoning in the Intuit Opinion also supports Newegg’s arguments presented therein.
5
A0146
Case 2:11-cv-00248-JRG Document 450 Filed 06/30/14 Page 6 of 7 PageID #: 9176
NO. 2:11-CV-248-JRG
Alan Albright
BRACEWELL & GUILIANI
111 Congress Avenue
Suite 2300
Austin, TX 78701-4061
Tel: (512) 494-3620
Fax: (512) 479-3920
alan.albright@bgllp.com
Edward R. Reines
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Tel: (650) 802-3000
Fax: (650) 802-3100
edward.reines@weil.com
Trey Yarbrough (Texas Bar No. 22133500)
YARBROUGH WILCOX PLLC
100 E. Ferguson St., Ste. 1015
Tyler, Texas 75702
Tel: (903) 595-3111
Fax: (903) 595-0191
trey@yw-lawfirm.com
Attorneys for Defendant Newegg Inc.
6
A0147
Case 2:11-cv-00248-JRG Document 450 Filed 06/30/14 Page 7 of 7 PageID #: 9177
NO. 2:11-CV-248-JRG
CERTIFICATE OF SERVICE
This is to certify that on June 30, 2014, a true and correct copy of the foregoing document
was served on all counsel of record via the Court’s ECF system.
/s/ Anthony W. Brooks
Attorney for Newegg Inc.
A0148
Case 2:11-cv-00248-JRG Document 453 Filed 07/25/14 Page 1 of 4 PageID #: 9246
NO. 2:11-CV-248-JRG
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
NO. 2:11-CV-248-JRG
1-800-FLOWERS.COM, INC., et al.,
Defendants.
SECOND NOTICE OF SUBSEQUENT AUTHORITY
Defendant Newegg Inc. respectfully submits the Memorandum Opinion and Order in TQP
Development, LLC v. Intuit Inc., Case No. 2:12-cv-180, Dkt. No. 203 (attached as Exhibit A, the
“Second Intuit Opinion”), which issued on July 23, 2014, as additional subsequent authority
supporting Newegg’s Rule 50(b) Motion for Judgment as a Matter of Law (Dkt. No. 436) and its
Rule 59 Motion for a New Trial (Dkt. No. 437).
Newegg previously notified the Court that summary judgment of non-infringement was
entered against TQP in the Intuit case, and explained the relevance of that decision to Newegg’s
pending post-trial motions. Dkt. No. 450. TQP submitted a response to Newegg’s notice, in which
TQP noted that it had filed a motion for reconsideration regarding the Intuit summary judgment
decision. Dkt. No. 452, at 4.
The attached Second Intuit Opinion denied TQP’s motion for reconsideration and
reaffirmed the decision to enter summary judgment of non-infringement against TQP. The Court
rejected TQP’s argument that the original Intuit decision applied an incorrect claim construction,
holding that “the language of the disputed limitation clearly requires a connection between the
1
A0149
Case 2:11-cv-00248-JRG Document 453 Filed 07/25/14 Page 2 of 4 PageID #: 9247
NO. 2:11-CV-248-JRG
transmission of data blocks and the change in key values.” Second Intuit Opinion, at 2. The Court
also rejected TQP’s argument that it had created a genuine issue of material fact on infringement,
holding that “TQP never introduced evidence sufficient to show that the ‘a new one of said key
values’ limitation is practiced by the accused systems.” Id. at 7-8 (explaining that “[t]he fact that
every block that is encrypted will also be transmitted does not mean that encryption and
transmission are the same or that the steps of encryption and transmission would correspond to
key changes in the same way.”); see also id. at 10 (further explaining that “what matters is that a
new key value is produced ‘each time’ a single block is being transmitted or a single block has
been transmitted, not simply that each block gets a new key value.”).
Newegg respectfully submits that the reasoning of the Second Intuit Opinion, like the initial
Intuit decision (see Dkt. No. 45), is equally applicable to Newegg’s post-trial motions and warrants
entry of judgment as a matter of law of non-infringement.
Dated: July 25, 2014
Respectfully submitted,
By: /s/ Daniel H. Brean
Kent E. Baldauf, Jr.
James J. Bosco, Jr.
Daniel H. Brean
Anthony W. Brooks
THE WEBB LAW FIRM
One Gateway Center
420 Ft. Duquesne Boulevard, Suite 1200
Pittsburgh, PA 15222
Tel: (412) 471-8815
Fax: (412) 471-4094
kbaldaufjr@webblaw.com
jbosco@webblaw.com
dbrean@webblaw.com
abrooks@webblaw.com
2
A0150
Case 2:11-cv-00248-JRG Document 453 Filed 07/25/14 Page 3 of 4 PageID #: 9248
NO. 2:11-CV-248-JRG
Alan Albright
BRACEWELL & GUILIANI
111 Congress Avenue
Suite 2300
Austin, TX 78701-4061
Tel: (512) 494-3620
Fax: (512) 479-3920
alan.albright@bgllp.com
Edward R. Reines
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Tel: (650) 802-3000
Fax: (650) 802-3100
edward.reines@weil.com
Trey Yarbrough (Texas Bar No. 22133500)
YARBROUGH WILCOX PLLC
100 E. Ferguson St., Ste. 1015
Tyler, Texas 75702
Tel: (903) 595-3111
Fax: (903) 595-0191
trey@yw-lawfirm.com
Counsel for Newegg Inc.
3
A0151
Case 2:11-cv-00248-JRG Document 453 Filed 07/25/14 Page 4 of 4 PageID #: 9249
CERTIFICATE OF SERVICE
This is to certify that on July 25, 2014, a true and correct copy of the foregoing document
was served on all counsel of record via the Court’s ECF system.
/s/ Daniel H. Brean
Counsel for Newegg Inc.
A0152
Case 2:11-cv-00248-JRG-RSP Document 446 Filed 04/16/14 Page 1 of 3 PageID #: 9147
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
NO. 2:11-CV-248-JRG
1-800-FLOWERS.COM, INC., et al.,
Defendants.
NOTICE OF REQUEST FOR HEARING ON POST-TRIAL MOTIONS
Defendant Newegg Inc. (“Newegg”) hereby respectfully requests that this Honorable Court
hold a hearing on Newegg’s Rule 50(b) Motion for Judgment as a Matter of Law and Rule 59 Motion
for a New Trial (Dkt. Nos. 436 and 437, respectively). Briefing on Newegg’s motions is now complete,
and Newegg respectfully submits that it believes a hearing will be beneficial to the parties and the
Court in resolving the numerous issues presented in the motions.
Dated: April 16, 2014
Respectfully submitted,
By: /s/ Daniel H. Brean
Kent E. Baldauf, Jr.
James J. Bosco, Jr.
Daniel H. Brean
Anthony W. Brooks
THE WEBB LAW FIRM
One Gateway Center
420 Ft. Duquesne Boulevard, Suite 1200
Pittsburgh, PA 15222
Tel: (412) 471-8815
kbaldaufjr@webblaw.com
jbosco@webblaw.com
dbrean@webblaw.com
abrooks@webblaw.com
1
A0153
Case 2:11-cv-00248-JRG-RSP Document 446 Filed 04/16/14 Page 2 of 3 PageID #: 9148
NO. 2:11-CV-248-JRG
Alan Albright
BRACEWELL & GUILIANI
111 Congress Avenue
Suite 2300
Austin, TX 78701-4061
Tel: (512) 494-3620
Fax: (512) 479-3920
alan.albright@bgllp.com
Edward R. Reines
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Tel: (650) 802 3000
Fax: (650) 802 3100
edward.reines@weil.com
Trey Yarbrough (Texas Bar No. 22133500)
Debra E. Gunter (Texas Bar No. 24012752)
YARBROUGH WILCOX GUNTER PLLC
100 E. Ferguson St., Ste. 1015
Tyler, Texas 75702
Tel: (903) 595-3111
Fax: (903) 595-0191
trey@yw-lawfirm.com
Counsel for Newegg Inc.
2
A0154
Case 2:11-cv-00248-JRG-RSP Document 446 Filed 04/16/14 Page 3 of 3 PageID #: 9149
NO. 2:11-CV-248-JRG
CERTIFICATE OF SERVICE
I certify that a true and correct copy of the foregoing document was served on April 16, 2014
upon all counsel of record via the Court’s ECF system.
/s/ Daniel H. Brean
Counsel for Newegg Inc.
A0155
Case 2:11-cv-00248-JRG Document 458 Filed 11/13/14 Page 1 of 3 PageID #: 9290
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
NO. 2:11-CV-248-JRG
1-800-FLOWERS.COM, INC., et al.,
Defendants.
NOTICE OF RENEWED REQUEST FOR HEARING ON POST-TRIAL MOTIONS
Defendant Newegg Inc. (“Newegg”) respectfully renews its request that this Honorable Court hold a
hearing on Newegg’s Rule 50(b) Motion for Judgment as a Matter of Law and Rule 59 Motion for a New Trial
(Dkt. Nos. 436 and 437, respectively).
Briefing on Newegg’s post-trial motions has been complete since April 14, 2014. Following the jury
verdict that was rendered in this case on November 25, 2013, awarding TQP damages in the amount of
$2,300,000 (Dkt. No. 407), Newegg has endured the uncertainty of whether the verdict will stand or whether
it will be discarded for the reasons set forth in Newegg’s post-trial motions. The sizable verdict has been kept
on Newegg’s books, which affects Newegg’s ability to make certain business decisions. Additionally, with
TQP being a patent assertion entity and not an operating company, delay of judgment increases the likelihood
that TQP will disperse its funds and assets, which may prevent Newegg from recovering fees or costs from
TQP in the event that Newegg ultimately prevails in this case.1
1
Newegg has been in similar situations in the past. In one instance, Newegg was unable to collect substantial costs awarded
to it because the plaintiff filed for bankruptcy. Kelora Systems, LLC v. Target Corp. et al., No. 11-1548 (C.D. Cal.) at ECF
Nos. 543, 551 (Newegg’s award of costs in the amount of $28,304.80 and subsequent mooting of motion to appoint receiver
due to Kelora’s bankruptcy). In another instance, the plaintiff underwent a massive corporate restructuring shortly after
Newegg filed its motions for attorneys’ fees and costs. Macrosolve, Inc. v. Antenna Software, Inc. et al., No. 6:11-cv-00287,
ECF Nos. 557, 558 (E.D. Tex. March 27, 2014).
A0156
Case 2:11-cv-00248-JRG Document 458 Filed 11/13/14 Page 2 of 3 PageID #: 9291
NO. 2:11-CV-248-JRG
Newegg respectfully resubmits that it believes a hearing will be beneficial to the parties and the Court
in resolving the numerous issues presented in the motions and bringing this case to judgment.
Dated: November 13, 2014
Respectfully submitted,
/s/ Kent E. Baldauf, Jr.
Kent E. Baldauf, Jr.
James J. Bosco, Jr.
Daniel H. Brean
Anthony W. Brooks
THE WEBB LAW FIRM
One Gateway Center
420 Ft. Duquesne Boulevard, Suite 1200
Pittsburgh, PA 15222
Tel: (412) 471-8815
kbaldaufjr@webblaw.com
Alan Albright
BRACEWELL & GUILIANI
111 Congress Avenue
Suite 2300
Austin, TX 78701-4061
Tel: (512) 494-3620
Fax: (512) 479-3920
alan.albright@bgllp.com
Edward R. Reines
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Tel: (650) 802 3000
Fax: (650) 802 3100
edward.reines@weil.com
Trey Yarbrough (Texas Bar No. 22133500)
YARBROUGH WILCOX
100 E. Ferguson St., Ste. 1015
Tyler, Texas 75702
Tel: (903) 595-3111
Fax: (903) 595-0191
trey@yw-lawfirm.com
Counsel for Newegg Inc.
2
A0157
Case 2:11-cv-00248-JRG Document 458 Filed 11/13/14 Page 3 of 3 PageID #: 9292
NO. 2:11-CV-248-JRG
CERTIFICATE OF SERVICE
I certify that a true and correct copy of the foregoing document was served on November 13,
2014 upon all counsel of record via the Court’s ECF system.
/s/ Kent E. Baldauf, Jr.
Counsel for Newegg Inc.
A0158
Case 2:11-cv-00248-JRG Document 226 Filed 05/20/13 Page 1 of 41 PageID #: 2286
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
v.
1-800-FLOWERS.COM, INC., et al.
§
§
§
§
§
Case No. 2:11-CV-248-JRG-RSP
CONSOLIDATED
CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
On March 12, 2013, the Court held a hearing to determine the proper construction of the
disputed claim terms in United States Patent No. 5,412,730. After considering the arguments
made by the parties at the hearing and in the parties’ claim construction briefing (Dkt. Nos. 172,
178, and 192), the Court issues this Claim Construction Memorandum and Order.
A0159
Case 2:11-cv-00248-JRG Document 226 Filed 05/20/13 Page 2 of 41 PageID #: 2287
TABLE OF CONTENTS
BACKGROUND ........................................................................................................................... 3
APPLICABLE LAW .................................................................................................................... 4
CONSTRUCTION OF AGREED TERMS ................................................................................ 7
CONSTRUCTION OF DISPUTED TERMS ............................................................................. 8
A. “seed value” .......................................................................................................................... 8
B. “providing a seed value to both said transmitter and receiver” .......................................... 12
C. “a new one of said key values in said first and second sequences being produced each
time a predetermined number of said blocks are transmitted over said link”........................... 18
D. “each new key value in said sequence being produced at a time dependent upon a
predetermined characteristic of the data being transmitted over said link” and “each new
key value in said sequence being produced at a time dependent upon said predetermined
characteristic of said data transmitted over said link” .............................................................. 22
E. “sequence of blocks in encrypted form” ............................................................................. 27
F. “predetermined”................................................................................................................... 31
G. “data” .................................................................................................................................. 34
H. “block” ................................................................................................................................ 36
I. “communication link from a transmitter to a receiver” ........................................................ 39
CONCLUSION ........................................................................................................................... 41
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BACKGROUND
Plaintiff asserts United States Patent No. 5,412,730 (“the ‘730 Patent”), titled “Encrypted
Data Transmission System Employing Means for Randomly Altering the Encryption Keys.” The
‘730 Patent issued on May 2, 1995, and claims priority to a patent application filed on October 6,
1989. Defendants submit that the ‘730 Patent has expired. Dkt. No. 180 at 1.
The Court has construed the ‘730 Patent four times: TQP Development, LLC v. Merrill
Lynch & Co., Inc., et al., No. 2:08-CV-471, Dkt. No. 383 (E.D. Tex. Mar. 28, 2011) (“Merrill
Lynch I”); id., Dkt. No. 512 (May 19, 2012) (“Merrill Lynch II”); TQP Development, LLC v.
Barclays PLC, et al., No. 2:09-CV-88, Dkt. 165 (E.D. Tex. Mar. 28, 2011) (“Barclays”); and
TQP Development, LLC v. Ticketmaster Entertainment, Inc., No. 2:09-CV-279, Dkt. No. 232
(E.D. Tex. Sept. 23, 2011) (“Ticketmaster”).
In general, the ’730 Patent relates to secure communication through the use of pseudorandom encryption keys. A sequence of pseudo-random keys is generated based on a seed value
and an algorithm, and keys are selected depending upon the message data that is being sent over
the transmission medium. The transmitter and receiver are thereby able to generate the same
sequence of keys without the security risk of transmitting keys from the transmitter to the
receiver or vice versa. The term “pseudo-random” means that the sequence has no apparent
regularities unless the seed value and algorithm are known or determined. Merrill Lynch I at 23;
Dkt. No. 172 at 2-3. The abstract of the ‘730 Patent states:
A modem suitable for transmitting encrypted data over voice-grade telephone
line. The modem is implemented by the combination of integrated circuit
components including a microprocessor, a serial communications controller
which communicates with connected data terminal equipment, and a
modulator/demodulator for translating between voice band tone signals and
digital data. Pseudo random number generators are employed at both the
transmitting and receiving stations to supply identical sequences of encryption
keys to a transmitting encoder and a receiving decoder. An initial random number
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seed value is made available to both stations. The random number generators are
advanced at times determined by predetermined characteristics of the data being
transmitted so that, after transmission has taken place, the common encryption
key can be known only to the transmitting and receiving stations.
The ‘730 Patent, in its original form, contained one independent claim and one dependent
claim. An Ex Parte Reexamination Certificate issued on September 20, 2011, confirming the
original claims and adding eight more dependent claims.
Claim 1 of the ‘730 Patent recites:
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical to
one another[,] a new one of said key values in said first and said second sequences
being produced each time a predetermined number of said blocks are transmitted
over said link, and
decrypting the data sent over said link at said receiver in accordance with
said second sequence.
APPLICABLE LAW
“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) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp.,
388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group,
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Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can aid in determining the
claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314-15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own
terms, give a claim term a different meaning than the term would otherwise possess, or disclaim
or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. The specification may also resolve the meaning of ambiguous claim
terms “where the ordinary and accustomed meaning of the words used in the claims lack
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sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
Teleflex, 299 F.3d at 1325. But, “‘[a]lthough the specification may aid the court in interpreting
the meaning of disputed claim language, particular embodiments and examples appearing in the
specification will not generally be read into the claims.” Comark Commc’ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323. The prosecution
history is another tool to supply the proper context for claim construction because a patent
applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan,
Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification, a patent
applicant may define a term in prosecuting a patent.”).
Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
testimony may aid a court in understanding the underlying technology and determining the
particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principles of stare decisis and the goals
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articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006). The Court nonetheless conducts an independent evaluation
during claim construction proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp.,
182 F. Supp. 2d 580, 589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite
Int’l Corp., 401 F. Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple,
Inc., No. 2:11-CV-390, 2012 WL 6494240 (E.D. Tex. Dec. 13, 2012).
CONSTRUCTION OF AGREED TERMS
Term
Construction
“based on said seed value”
“based exclusively on said seed value”
“associating different ones of seed values with
each of a plurality of remote locations with
which secured communication is required”
“when secured communication is required with
two or more remote locations, associating a
different seed value with each of the remote
locations”
“associating with each of a plurality of remote “when secured communication is required with
locations with which secured communication is two or more remote locations, associating, at
required different seed values”
the transmitter, a different seed value with each
of the remote locations”
“encrypting the data”
“converting clear text data into cipher text”
“decrypting the data”
“converting cipher text into clear text”
“pseudo-random key values”
“a sequence of numbers that are generated by
supplying a seed value to an algorithm, the
sequence of numbers have no apparent
regularities unless the seed value and algorithm
are known or determined”
“said provided seed value is one of a number of “when secured communication is required with
seed values for a plurality of remote locations two or more remote locations, providing more
with which secured communication is required” than one seed value for a number of the remote
locations for which secured communication is
required”
Dkt. No. 172 at 2-3.
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CONSTRUCTION OF DISPUTED TERMS
As a preliminary matter, Plaintiff’s opening brief proposed, without argument, that the
Court adopt several of its prior constructions. See Dkt. No. 172 at 3-4. Defendants, in their
response brief, stated that as to the terms “data being transmitted over said link” and
“predetermined number of said blocks,” Plaintiff “did not include these terms as disputed terms
requiring construction in the Local P.R. 4-3 Joint Claim Construction and Prehearing Statement.”
Dkt. No. 180 at 3 n.2. Defendants requested that the Court “defer ruling on these two terms until
the parties have an opportunity to confer on them and raise focused disputes, if any, to the
Court.” Id. at 4 n.2. In its reply brief, Plaintiff did not address these two terms apart from the
construction of larger terms (see Dkt. No. 192), and the parties did not address these two terms at
the March 12, 2013 hearing. The two terms at issue therefore need not be construed.
A. “seed value”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“initial value”
Dkt. No. 172 at 13.
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ construction is confusing and unnecessary.” Dkt. No.
172 at 13. Plaintiff also notes that in the preferred embodiment, “the seed value is not the ‘initial
value’ for this sequence, instead [it] is what determines what will be the initial value in the
sequence.” Id. Plaintiff further urges that Defendants’ proposed construction “would potentially
confuse the jury between the seed value supplied prior to decryption and the ‘first sequence’ of
key values that are generated . . . .” Id.
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Defendants respond that the specification consistently uses the term “seed value” to refer
to an “initial” value that is provided in advance. Dkt. No. 180 at 6. Defendants also rely upon
“the generally-understood meaning of ‘seed’” as meaning a “source or beginning; a germ.” Id.
at 7 (citing Ex. C, The American Heritage Dictionary of the English Language 1633 (3d ed.
1992)). Defendants also cite a technical dictionary that defines “seed” as “[a]n initial number
used by an algorithm such as a random number generator.” Id. at 7-8 (citing Ex. F, McGraw-Hill
Dictionary of Scientific and Technical Terms 1782 (5th ed. 1994)). Defendants emphasize that
“the seed value is not ‘any’ value, but rather is confirmed in the claims and throughout the
specification to be the ‘initial’ value used to generate the keys.” Id. at 9. Finally, Defendants
note that “although the phrases ‘providing a seed value to both said transmitter and receiver’ and
‘based on said seed value’ were construed in previous cases, the Court did not address the
meaning of ‘seed value’ within that phrase.” Id.
Plaintiff replies that “replacing the word ‘seed’ with ‘initial,’” as Defendants have
proposed, “does not appear to provide any further clarification.” Dkt. No. 192 at 9. Plaintiff
reiterates that “Defendants’ construction would potentially confuse the jury between the seed
value supplied prior to decryption and the ‘first sequence’ of key values that are generated to
decrypt . . . .” Id. at 10.
At the March 12, 2013 hearing, Defendants urged that in order to fully address the
parties’ dispute, the Court’s construction should explain that the seed value is not generated as
part of the key generation process. In response, Plaintiff cited PPG Industries v Guardian
Industries Corp., 156 F.3d 1351 (Fed. Cir. 1998), for the proposition that “after the court has
defined the claim with whatever specificity and precision is warranted by the language of the
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claim and the evidence bearing on the proper construction, the task of determining whether the
construed claim reads on the accused product is for the finder of fact.” Id. at 1355.
(2) Analysis
Although Plaintiff argues that this term should not be construed, the briefing
demonstrates that the parties have a “fundamental dispute regarding the scope of a claim term,”
and the Court has a duty to resolve the dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech.
Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008).
Claim 1 recites, in relevant part (emphasis added):
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, . . .
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, . . . .
The Abstract of the ‘730 Patent states that “[a]n initial random number seed value is
made available to both [the transmitting and receiving] stations.” The specification discloses
“seed values” multiple times, including in the context of an initial key:
In accordance with a principle feature of the present invention, pseudo-random
number generators are employed at both the transmitting and receiving stations to
supply a like sequence of encryption keys to both the encryptor and decryptor,
without these keys being transmitted in any form over the transmission facility.
In accordance with the invention, to permit the two stations to communicate, each
[is] supplied in advance with a random number seed value which exclusively
determines the numerical content of the sequence of numeric values generated by
each of the two pseudo-random generators.
‘730 Patent at 1:37-48 (emphasis added).
Once the host station has supplied the initial seed value keys to the units forming
the two terminal locations for a given link and transmission over that link begins,
the host . . . no longer “knows” the encryption key values since they are
dependent upon the nature of the transmissions over the link. Consequently, link
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security cannot be compromised even by an “insider” who is in possession of the
initial key values supplied by the host.
Id. at 2:17-25 (emphasis added).
The random number generators 23 and 38 at the transmitting station obtain their
seed values from a key memory 50. Key memory 50 stores the random number
keys indexed by destination (along with telephone dial-up numbers for automatic
dialing). Similarly, at the receiving station, the seed values for the remote
terminals from which the receiving station is authorized to receive information
are stored in a key memory 60 connected to supply seed values to the generators
27 and 40. The key memories eliminate[] the need for authorized users to
remember and enter keys before each transmission or reception.
Id. at 9:51-62 (emphasis added).
[K]nowledge of the initial seed values supplied by the host are of no further value
and cannot be used to monitor ongoing communications over the authorized link.
Id. at 11:5-8 (emphasis added).
These disclosures suggest that the “seed value” may be an initial key in the preferred
embodiment, but such a limitation should not be imported into the term “seed value” as used in
the claims.
Comark Commc’ns, 156 F.3d at 1187; accord Phillips, 415 F.3d at 1323.
Defendants’ proposal of “initial value,” which might be read to require that the “seed value” is
itself a key, is therefore hereby expressly rejected.
Nonetheless, the claim language and the above-quoted portions of the specification are
consistent with Defendants’ argument that the “seed value” is provided in advance of key
generation and, therefore, is not created as part of the claimed key generation process. Any other
interpretation would read the word “seed” out of the claim. Thus, the plain meaning of “seed
value” is appropriate, but the Court provides additional explanation, as follows:
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The Court hereby construes “seed value” to have its plain meaning. The Court further
hereby finds, as part of its construction: “The seed value is provided to the transmitter prior
to generating the first sequence of pseudo-random key values, and the seed value is
provided to the receiver prior to generating the second sequence of pseudo-random key
values.”
B. “providing a seed value to both said transmitter and receiver”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“providing the same seed value to both the
transmitter and receiver”
“supplying the same seed value to both said
transmitter and receiver in advance of the first
contact between the transmitter and receiver
from a source other than the transmitter and
receiver”
Dkt. No. 172 at 7.
(1) The Parties’ Positions
Plaintiff argues that here as in Merrill Lynch and Ticketmaster, the Court should reject
Defendants’ attempt “to add a limitation that the seed value be provided ‘from outside the
transmitter and receiver’ and to provide a temporal limitation as to when the seed value must be
provided.” Dkt. No. 172 at 8. First, Plaintiff submits that “[t]he claims do not place any
limitation on where the seed value originates.” Id. Second, Plaintiff urges that “[a]lthough the
transmitter would be required to have the seed value to generate the encryption keys prior to
transmission, there is no explicit requirement in the patent or file history that suggests that the
receiver must also be provided the seed value prior to transmission.” Id. at 9.
Defendants respond that because the claims require “providing” the seed value, it must
come from a source external to both the transmitter and the receiver. Dkt. No. 180 at 10.
Defendants also argue that because the transmitter and receiver must use the same seed value and
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because “it is impossible for the same seed values to organically come into existence in both the
transmitter and receiver,” “they must originate from the same source, outside those devices.” Id.
at 11-12.
In reply, Plaintiff reiterates that Merrill Lynch I and Ticketmaster rejected proposals “to
add (1) a limitation that the seed value be provided ‘from outside the transmitter and receiver’
and (2) a temporal limitation as to when the seed value must be provided.” Dkt. No. 192 at 5.
Plaintiff also notes that “at the time the seed value is provided to the transmitter and receiver it is
located in the key memory stored within those items.” Id. at 5. Finally, Plaintiff urges that
“[t]he invention of the [‘730] Patent would function as described as long as the seed value was
provided to the receiver any time prior to decrypting the encrypted data sent over the link.” Id.
at 5-6.
At the March 12, 2013 hearing, the parties discussed Figures 1 and 4. Whereas Figure 1
depicts a seed value entering the transmitter and the receiver, Figure 4 does not. Plaintiff argued
that Figure 4 thereby illustrates a seed value being internally generated. Defendants responded
that Figure 4 does not depict any internal generation and, moreover, the specification discloses
that the key memories shown in Figure 4 obtain the seed value from an external source.
(2) Analysis
In Merrill Lynch I, the Court noted disclosure with reference to Figure 4 that seed values
could be obtained from “key memory 50” within “transmitting station 11” and “key memory 60”
within “receiving station 12.” Merrill Lynch I at 18-19. In Ticketmaster, the Court found that
“[a]lthough[] the transmitter would be required to have the seed value to generate the encryption
keys prior to transmission, there is no explicit requirement in the patent or file history that
suggests that the receiver must also be provided the seed value prior to transmission.”
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Ticketmaster at 9; see id. at 12. Ticketmaster found, instead, that “[t]he invention of the ‘730
patent would likewise function if the seed value was provided to the receiver any time prior to
decrypting the encrypted data sent over the link.” Id. at 9; see id. at 12.
The specification discloses that the transmitter and receiver must be provided with the
seed value in order to perform their respective functions:
In accordance with the invention, to permit the two stations to communicate, each
[is] supplied in advance with a random number seed value which exclusively
determines the numerical content of the sequence of numeric values generated by
each of the two pseudo-random generators. In order that the two generators
switch from one output key value to the next in synchronism, means are employed
at both the transmitting and receiving stations to monitor the flow of transmitted
data and to advance the random number generator each time the transmitted data
satisfies a predetermined condition.
‘730 Patent at 1:43-53.
Once the host station has supplied the initial seed value keys to the units forming
the two terminal locations for a given link and transmission over that link begins,
the host . . . no longer “knows” the encryption key values since they are
dependent upon the nature of the transmissions over the link. Consequently, link
security cannot be compromised even by an “insider” who is in possession of the
initial key values supplied by the host.
Id. at 2:17-25.
Of course, in order for the receiving station to successfully decipher the incoming
cipher text, the receiving station 12 must be provided (in some fashion) with both
the correct seed value and the correct interval number. These values are supplied
to the receiving station in advance of the transmission by any secure means.
Id. at 4:13-20.
Data signals from the DTE [(data terminal equipment)] which are to be
transmitted are encrypted as described above and shown in FIG. 1, the random
number seed values and the interval number values being pre-supplied to the
microprocessor 101 and stored in memory subsystem 103.
Id. at 5:15-19.
The random number generators 23 and 38 at the transmitting station obtain their
seed values from a key memory 50. Key memory 50 stores the random number
keys indexed by destination (along with telephone dial-up numbers for automatic
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dialing). Similarly, at the receiving station, the seed values for the remote
terminals from which the receiving station is authorized to receive information are
stored in a key memory 60 connected to supply seed values to the generators 27
and 40. The key memories eliminate[] the need for authorized users to remember
and enter keys before each transmission or reception.
Id. at 9:51-60.
A switch operated by a physical key is also advantageously included in each
station unit and has “security enabled” and “security disabled” positions. The key
memory can only be loaded with values identifying one or more remote units with
whom communications are authorized when the switch is in the “security
disabled” position (typically when the unit is being set up by an authorized
operator who has the physical key needed to disable the security switch). At that
time, the table can be loaded either from a remote (host) station or by a local
command which takes the form of an extension to the standard modem AT
command set. That load command take the form:
AT JSN KDESKEY PHONENUM
where AT is the AT command prefix, JSN is the letter “J” immediately followed
by the serial number of the remote station with which communications is
authorized, KDESKEY is the letter “K” immediately followed by an 8 character
DES encryption key, and PHONENUM is the standard routing code (e.g. dial-up
phone number string). In the preferred embodiment, up to 1000 serial numbers
and keys, and up to 100 optional dial-up phone number strings (each with up to 39
digits) may [be] stored in the key memory lookup table.
Id. at 10:21-46.
In accordance with an important feature of this arrangement, the host system may
initially authorize communication between two connected units by supplying the
appropriate serial numbers and initial key values (unique to an authorized link),
but as soon as transmission begins between the two units over the authorized link,
the encryption keys are changed in ways that are unknowable to the host. As a
consequence, knowledge of the initial seed values supplied by the host are of no
further value and cannot be used to monitor ongoing communications over the
authorized link.
Id. at 10:66-11:8.
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Figures 1 and 4 of the ‘730 Patent are reproduced here:
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On balance, Defendants have failed to justify their proposed limitation that the seed value
must be provided to both the transmitter and the receiver before any contact between them.
Instead, the above-quoted portions of the specification contemplate that the seed value need only
be provided before any encrypted communication can be accomplished between the transmitter
and the receiver. To that end, the seed value must be provided to the transmitter before a
communication can be encrypted and must be provided to the receiver before the encrypted
communication can be decrypted.
Defendants’ proposal to limit the claims to a preferred
embodiment is hereby expressly rejected.
Comark Commc’ns, 156 F.3d at 1187; accord
Phillips, 415 F.3d at 1323.
Similarly, Defendants have failed to justify their proposed limitation that the seed value
must be provided by a source other than either the transmitter or the receiver. The claim
language does not recite a separate source. Further, Defendants have not shown that the claimed
use of a pseudo-random sequence of encryption keys, which is based in part on the transmitted
data, necessarily precludes the seed value from being provided by the transmitter or the receiver.
As noted by the specification, once the seed value is provided and communication has
commenced, the communication is secure, even if an intruder knows the seed value. See ‘730
Patent at 10:66-11:8. In short, the origin of the seed value is not a limitation of the claim.
Defendants’ proposal to limit the claims to a preferred embodiment is hereby expressly rejected.
Comark Commc’ns, 156 F.3d at 1187; see Phillips, 415 F.3d at 1323.
The Court therefore hereby construes “providing a seed value to both said transmitter
and receiver” to mean “providing the same seed value to both the transmitter and
receiver.”
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C. “a new one of said key values in said first and second sequences being produced each
time a predetermined number of said blocks are transmitted over said link”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a new key value in the first and second
sequence is produced each time a
predetermined number of blocks are
transmitted over the link”
“switching to the next new key value in the first
and second sequences of key values each time a
predetermined number of blocks have been sent
from the transmitter over the communication
link”
Dkt. No. 172 at 5.
(1) The Parties’ Positions
Plaintiff proposes the construction reached in Barclays. Barclays at 18. Plaintiff argues
that because key values cannot be “switched” if they have not already been generated,
Defendants’ proposal improperly requires that key values must be generated in advance. Dkt.
No. 172 at 5.
Plaintiff submits that “Defendants’ proposal also improperly excludes the
possibility, inconsistent with the specification, that multiple key values are generated at the same
time.” Id. at 6. Finally, Plaintiff argues that Defendants’ proposal that “blocks have been sent
from the transmitter over the communication link” is “redundant and unnecessary.” Id.
Defendants respond that although Barclays construed the disputed term, “two important
requirements were not addressed in that proceeding: what it means to (1) ‘produce’ a new key
value in the sequence (2) each time blocks ‘are transmitted.’” Dkt. No. 180 at 14. Defendants
argue that “coordinated ‘switching’ of key values is critical to the invention, as it allows the
transmitter and receiver to stay in sync.” Id. Defendants further argue that the claims and the
specification consistently explain that “the key value is not changed until after the blocks being
counted have been transmitted.” Id. at 17. Finally, Defendants argue that Plaintiff’s proposed
construction repeats the constituent terms “produced” and “transmitted” and thus fails to resolve
the parties’ dispute. Id. at 17 n.12.
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Plaintiff replies by reiterating its opening arguments and by urging that Defendants’
proposal adds an improper temporal limitation because “[t]here is nothing to ‘switch’ to if the
key values have not yet been produced.” Dkt. No. 192 at 2.
(2) Analysis
Claim 1 recites (emphasis added):
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical to
one another[,] a new one of said key values in said first and said second
sequences being produced each time a predetermined number of said blocks are
transmitted over said link, and
decrypting the data sent over said link at said receiver in accordance with
said second sequence.
In Barclays, the court agreed with Plaintiff’s argument that “what is important is that
each key be used at precisely the right time relative to the data. It does not matter whether that
key is generated at that time, or pre-generated and stored.” Barclays at 16; see id. at 17.
Barclays construed the disputed term to mean “a new key value in the first and second sequence
is produced each time a predetermined number of blocks are transmitted over the link.” Id. at 18.
The abstract of the ‘730 Patent states (emphasis added):
The random number generators are advanced at times determined by
predetermined characteristics of the data being transmitted so that, after
transmission has taken place, the common encryption key can be known only to
the transmitting and receiving stations.
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The specification discloses counting blocks to determine when to advance to a new key value:
In accordance with a principle feature of the present invention, pseudo-random
number generators are employed at both the transmitting and receiving stations to
supply a like sequence of encryption keys to both the encryptor and decryptor,
without these keys being transmitted in any form over the transmission facility.
In accordance with the invention, to permit the two stations to communicate, each
[is] supplied in advance with a random number seed value which exclusively
determines the numerical content of the sequence of numeric values generated by
each of the two pseudo-random generators. In order that the two generators
switch from one output key value to the next in synchronism, means are employed
at both the transmitting and receiving stations to monitor the flow of transmitted
data and to advance the random number generator each time the transmitted data
satisfies a predetermined condition.
The monitoring function can advantageously be performed simply by counting the
units of data being transmitted and by advancing each pseudo-random key
generator each time the count reaches an agreed-upon interval number. In this
way, no additional synchronization information needs to be added to the data
stream. For even greater security, the interval number (which must be reached
before the key is switched) may itself be a changing value generated by a random
number generator, so that the duration during which a given key is active changes
from key to key at times which are predictable only by the authorized recipient.
‘730 Patent at 1:37-65 (emphasis added).
The advance signal produced by block counter 21 is supplied to the advance input
of a pseudo-random number generator 23 which supplies a sequence of
encryption key values to the key input of the encryptor 17. The content of the key
sequence is predetermined by the combination of (1) the internal makeup of the
generator 23 and by (2) a supplied random number seed value which initializes
the generator 23. The generator 23 responds to each advance signal from block
counter 21 by changing its output to the next successive encryption key value.
Thus, for example, the combination of counter 21 and generator 23 operate to
change the encryption key each time [the] total number of bytes transmitted is an
exact multiple of the predetermined interval number.
***
The block counter 21 need not supply advance signals on boundaries between
encryption units, nor does the generator 23 need to provide new key value
precisely on encryption unit boundaries. Instead, the encryptor 17 may buffer the
new key[] temporarily, using it for the first time on the next successive encryption
unit of data.
***
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Block counter 29 performs the identical function as that performed by the counter
21 at the transmitting station 11 and hence supplies advance signals to the
generator 27 at precisely the same times (relative to the data stream) that counter
21 advances generator 23. Each time the current count reaches the interval
number, the pseudo-random number generator 27 is advanced. Since the internal
makeup of random number generator 27 is identical to that of generator 23, and
since it is supplied with the same seed value, and since block counter 29 is
supplied with the same interval number value as that supplied to the block counter
21, exactly the same sequence of keys will be supplied to the random number
generators 23 and 27, and the keys will change at precisely the same time (relative
to the data stream) to accurately decipher the transmitted data.
Id. at 3:26-40, 3:50-56 & 3:64-4:12 (emphasis added).
Thus, the ‘730 Patent refers to “a sequence of encryption key values” and also to
“advanc[ing] the random number generator,” when a certain number of data units have been
transmitted, so as to use a new encryption key. See id. at Abstract, 1:37-65 & 3:26-40. On
balance, nothing in the ‘730 Patent precludes generating a sequence of encryption key values in
advance and then using the key values at appropriate times. As found in Barclays, Claim 1 does
not specify whether the key is generated at the time of use or is generated ahead of time and then
selected at the time of use. Barclays at 17 (“The claim further only requires that each new key
be ‘produced’ at a specific time relative to the data. It does not matter whether that key is
generated at that time, or pre-generated and stored.”). To the extent Defendants are proposing
that the new key value cannot be created until after the predetermined number of blocks have
been transmitted, Defendants’ proposal is hereby expressly rejected.
Finally, as to the determination of whether “a predetermined number of said blocks” have
been “transmitted over said link,” the claim explicitly refers to transmission, not to encryption or
to some other step of preparing for transmission.
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The Court therefore hereby construes “a new one of said key values in said first and
second sequences being produced each time a predetermined number of said blocks are
transmitted over said link” to mean “a new key value in the first and second sequence is
used each time a predetermined number of blocks have been sent from the transmitter over
the communication link.”
D. “each new key value in said sequence being produced at a time dependent upon a
predetermined characteristic of the data being transmitted over said link” and “each new
key value in said sequence being produced at a time dependent upon said predetermined
characteristic of said data transmitted over said link”
“each new key value in said sequence being produced at a time dependent upon a
predetermined characteristic of the data being transmitted over said link”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a new key value in the first sequence is
produced each time a condition based on a
predetermined characteristic of the transmitted
data is met at the transmitter”
“each new key value in the first sequence is
produced each time a predetermined number of
blocks are transmitted over said link”
“each new key value in said sequence being produced at a time dependent upon said
predetermined characteristic of said data transmitted over said link”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a new key value in the second sequence is
produced each time a condition based on a
predetermined characteristic of the transmitted
data is met at the receiver”
“each new key value in the second sequence is
produced each time a predetermined number of
blocks are transmitted over said link”
Dkt. No. 172 at 6; Dkt. No. 180 at 17.
(1) The Parties’ Positions
Plaintiff proposes the constructions reached by the Court in Merrill Lynch I and
Ticketmaster.
Merrill Lynch I at 26-27; Ticketmaster at 17-18.
Plaintiff argues that
“Defendants’ proposed construction would effectively exclude th[e] preferred embodiment
which provides the new key value based upon a varying interval number and not a
‘predetermined number of blocks.’” Dkt. No. 172 at 7.
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Defendants respond that producing a new key value based on an “interval number” of
blocks transmitted over the communications link is “a critical aspect of the claimed invention”
because “it enables the transmitter and the receiver to switch from one key value to the next in
sync with each other, without transmitting any additional information in the data stream across
the communications link.” Dkt. No. 180 at 19. As to Figure 4 of the ‘730 Patent, Defendants
respond that “[a]lthough the embodiment depicted in Figure 4 allows for the interval number to
actively vary over the course of a series of transmissions ([‘730 Patent] at 8:7-15, 9:29-50), the
interval number is still under all circumstances a predetermined number of blocks that have been
transmitted over the link.” Dkt. No. 180 at 21. Defendants further cite Plaintiff’s response to a
motion for summary judgment in one of the present consolidated cases, in which Plaintiff stated:
(1) the “predetermined characteristics relate to the ‘correct interval number’ described in some
embodiments of the specification”; (2) “‘interval numbers’ are represented in the claims by
‘predetermined characteristic[s] of the data being transmitted’ and ‘predetermined number of
said blocks’”; and (3) “the claimed method includes ‘interval numbers’ as part of the claim
language requiring ‘predetermined characteristic of the data’/‘predetermined number of said
blocks . . . .’” Id. at 21-22 (citing Case No. 2:12-CV-55, Dkt. No. 53 at 9-10 & 12; id., Dkt. No.
59 at 9-10).
Plaintiff replies by reiterating that “Defendants’ proposed construction would effectively
exclude th[e] preferred embodiment [shown in Figure 4], which provides the new key value
based upon a varying interval number and not a ‘predetermined number of blocks.’” Dkt. No.
192 at 4.
Plaintiff also highlights disclosure in the specification that “the predetermined
condition can be satisfied after counting ‘the number of bytes (characters), words, or blocks of
data transmitted.’” Id. (quoting ‘730 Patent at 3:20-21). As to the summary judgment briefing
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cited by Defendants, Plaintiff replies that it “noted that the ‘interval number’ was the
‘predetermined characteristic’ in ‘some embodiments,’” not necessarily in all embodiments. Id.
at 4 n.1 (citing Dkt. No. 180 at 21).
(2) Analysis
Claim 1 recites (emphasis added):
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical
to one another[,] a new one of said key values in said first and said second
sequences being produced each time a predetermined number of said blocks are
transmitted over said link, and
decrypting the data sent over said link at said receiver in accordance with
said second sequence.
In Merrill Lynch I, the Court clarified that the first disputed phrase relates to the first
sequence and the transmitter and the second disputed phrase relates to the second sequence and
the receiver. Merrill Lynch I at 26.
The background of the invention states:
The monitoring function can advantageously be performed simply by counting the
units of data being transmitted and by advancing each pseudo-random key
generator each time the count reaches an agreed-upon interval number.
‘730 Patent at 1:54-58 (emphasis added). The specification discloses that the “interval number”
may be constant or may change every time the encryption key value is advanced:
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A block counter 21 monitors the stream of data from the source 15 and generates
an “advance signal” each time the data meets a predetermined condition.
Advantageously, the block counter 21 may simply count the number of bytes
(characters), words or blocks of data being transmitted, compare the current count
with a predetermined 37 [“]interval number” and produce an advance signal each
time the current count reaches the interval number (at which time the current
count is reset to 0).
The advance signal produced by block counter 21 is supplied to the advance input
of a pseudo-random number generator 23 which supplies a sequence of
encryption key values to the key input of the encryptor 17. The content of the key
sequence is predetermined by the combination of (1) the internal makeup of the
generator 23 and by (2) a supplied random number seed value which initializes
the generator 23. The generator 23 responds to each advance signal from block
counter 21 by changing its output to the next successive encryption key value.
Thus, for example, the combination of counter 21 and generator 23 operate to
change the encryption key each time [the] total number of bytes transmitted is an
exact multiple of the predetermined interval number.
Id. at 3:16-40 (emphasis added).
To further enhance the security of the transmission, the duration of the interval
during which each given key is active may be changed in a pseudo-random
fashion. For this purpose, a pseudo-random number generator 38 is used at the
transmitting station 11 to supply the interval numbers to the block counter 21.
The generator 38 is advanced to a new number each time an advance signal is
received from the output of block counter 21 over line 39 (so that a new interval
number is supplied to the block counter 21 each time it advances the encryption
key generator 23). Block counter 21 may simply load the interval number from
generator 38 into an accumulator which is then decremented toward zero when it
emits the advance signal to generator 23, at which time it is loaded with a new
and different interval number from generator 38. At the receiving station 12, a
pseudo-random generator 40 (which performs the same pseudo-random number
generating process as the generator 38 at the transmitting station 11) supplies a
sequence of interval numbers to counter 29. Generator 40 is advanced by the
advance signals from counter 29 which also advance the encryption key generator
27.
Id. at 9:29-50 (emphasis added).
As to the prosecution history, Defendants have cited an amendment in which the
applicant cancelled the original claims and added new claims containing the disputed terms.
Dkt. No. 180, Ex. T, 12/4/1992 Amendment at 2. On balance, the prosecution history contains
no “definitive” statements that limit the scope of the disputed terms. Omega Eng. v. Raytek
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Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“As a basic principle of claim interpretation,
prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects
the public’s reliance on definitive statements made during prosecution.”) (emphasis added). In
particular, Defendants have not shown how this amendment warrants limiting “predetermined
characteristic of said data” to mean a “predetermined number of blocks.”
On balance, Defendants’ proposal to limit the disputed terms to the preferred
embodiments that employ an “interval number” is hereby rejected. Comark Commc’ns, 156 F.3d
at 1187; see Phillips, 415 F.3d at 1323. Moreover, even if an interval number limitation were
appropriate, reference to a “predetermined number of blocks” might be read to exclude
embodiments that use a varying interval between key value changes rather than a static,
predetermined interval. Id. at 9:29-50; see id. at Fig. 4. Defendants’ proposed constructions are
therefore hereby expressly rejected.
The Court accordingly hereby construes the disputed terms as set forth in the following
chart:
Term
Construction
“each new key value in said sequence being
produced at a time dependent upon a
predetermined characteristic of the data
being transmitted over said link”
“a new key value in the first sequence is
produced each time a condition based on a
predetermined characteristic of the
transmitted data is met at the transmitter”
“each new key value in said sequence being
produced at a time dependent upon said
predetermined characteristic of said data
transmitted over said link”
“a new key value in the second sequence is
produced each time a condition based on a
predetermined characteristic of the
transmitted data is met at the receiver”
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E. “sequence of blocks in encrypted form”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary1
“a sequence of blocks, encrypted together using
the same key value for transmission, which
signals to change the encryption key”
Dkt. No. 172 at 13; Dkt. No. 180 at 23.
(1) The Parties’ Positions
Plaintiff argues that based on the Court’s prior construction of the term “block” to mean
“a group of bits, such as a character, word, or other unit of data,” a “sequence of blocks” is
simply a sequence of groups of bits. Dkt. No. 172 at 14. Plaintiff also argues that contrary to
Defendants’ proposal, nothing in the claim language or the specification requires that every
transmission of a “sequence of blocks” must change the encryption key. Id. In particular,
Plaintiff submits that “the preferred embodiment could change its key after counting the blocks
from multiple transmission[s], and not just one.” Id.
Defendants respond that the Court has not previously considered the present dispute,
which is whether “the claimed ‘sequence of blocks in encrypted form’ must be encrypted
together with the same key,” as Defendants propose. Dkt. No. 180 at 23 (emphasis omitted).
Defendants argue that “[b]ecause the encryption key does not change until a predetermined
number or sequence of blocks is transmitted, the blocks in each sequence of blocks are encrypted
together with the same key.” Id. at 23-24.
Plaintiff replies that “the preferred embodiment can change its key after counting the
blocks from multiple transmissions, and not just one.” Dkt. No. 192 at 10. Plaintiff also argues
1
Plaintiff submits that the disputed term is simply “sequence of blocks.” Dkt. No. 172 at 13.
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that Defendants’ proposal that only a predetermined number of blocks can change the encryption
key is contrary to the disclosed embodiments in which the number of blocks can vary. Id.
At the March 12, 2013 hearing, Plaintiff emphasized that as to the term “said blocks,”
which appears in the disputed term discussed in subsection C., above, the antecedent basis for
“said blocks” is “blocks,” not “sequence.”
(2) Analysis
As a threshold matter, the parties do not appear to dispute the meaning of the constituent
term “sequence.” That term can therefore be used in the Court’s construction without any
elaboration.
In Merrill Lynch I and Barclays, the Court construed the constituent term “block” to
mean “a group of bits, such as a character, word, or other unit of data.” Merrill Lynch I at 16;
Barclays at 8.
Claim 1 recites (emphasis added):
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical to
one another[,] a new one of said key values in said first and said second
sequences being produced each time a predetermined number of said blocks are
transmitted over said link, and
decrypting the data sent over said link at said receiver in accordance with
said second sequence.
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The specification discloses using a particular key to encrypt segments of data, advancing
the key to a new value, and using the new key to encrypt more data:
In order that the two generators switch from one output key value to the next in
synchronism, means are employed at both the transmitting and receiving stations
to monitor the flow of transmitted data and to advance the random number
generator each time the transmitted data satisfies a predetermined condition.
***
Thus, for example, the combination of counter 21 and generator 23 operate to
change the encryption key each time [the] total number of bytes transmitted is an
exact multiple of the predetermined interval number.
The encryptor 17 translates fixed length segments of the data from source 15
(“clear text”) into fixed-length “cipher text” output segments, each segment
translation taking place in a manner uniquely determined by the encryption key
currently supplied by the pseudo-random number generator 23.
‘730 Patent at 1:50-58 & 3:36-46.
Defendants’ proposed construction appears to require multiple blocks. On one hand, use
of a plural term does not always mandate a plurality. For example:
In the phrase “[plurality of . . .] projections with recesses therebetween,” the use
of “recesses” can be understood to mean a single recess where there are only two
projections and more than one recess where there are three or more projections.
Indeed, in the present context, if the patentees had wanted to require . . . more
than one recess, it would have been natural to limit the claimed invention to an
insert means with a “plurality of recesses.”
Dayco Prods, Inc. v. Total Containment, Inc., 258 F.3d at 1328; see Versa Corp. v. Ag-Bag Int’l
Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (as to the term “means . . . for creating air channels,”
noting that “in context, the plural can describe a universe ranging from one to some higher
number, rather than requiring more than one item”).
On the other hand, the plural form of a noun generally refers to two or more, as found in
Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1297 (Fed. Cir. 2011), and Leggett & Platt,
Inc. v. Hickory Springs Manufacturing Co., 285 F.3d 1353, 1357 (Fed. Cir. 2002). The Court
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addressed these cases and other relevant cases in Calypso Wireless, Inc., et al. v. T-Mobile USA,
Inc., No. 2:08-CV-441, Dkt. No. 281 at 27-32 (E.D. Tex. Dec. 3, 2012) (discussing Flash Seats,
LLC v. Paciolon, Inc., No. 07-575-JJF, 2010 WL 184080 (D. Del. Jan. 19, 2010), aff’d, 469 Fed.
App’x 916 (Fed. Cir. 2012), Every Penny Counts, Inc. v. Bank of Am. Corp., No. 2:07-CV-42FTM-29SPC, 2008 WL 4491113 (M.D. Fla. Sept. 29, 2008), and MOAEC, Inc. v. Pandora
Media, Inc., No. 07-CV-654-BBC, 2008 WL 4500704 (W.D. Wis. Sept. 30, 2008)).
Thus, the use of the plural form of “blocks” in Claim 1 of the ‘730 Patent weighs in favor
of finding that two or more blocks are required. Leggett & Platt, 285 F.3d at 1357 (“At the
outset, the claim recites ‘support wires’ in the plural, thus requiring more than one welded
‘support wire.’”). Nothing in the ‘730 Patent is contrary to such a natural reading.
As to the prosecution history, Defendants have submitted that in response to a rejection,
the applicant narrowed “data” to “data comprising a sequence of blocks,” and added “a new one
of said key values in said first and said second sequences being produced each time a
predetermined number of said blocks are transmitted over said link[.]” Dkt. No. 180 at 24 (citing
Ex. P, 7/8/1993 Office Action at 2; Ex. Y, 12/13/1993 Amendment After Final at 1-2).
Nonetheless, Defendants have not identified any definitive statement by the patentee that all of
the blocks in a “sequence of blocks” must be encrypted using the same key value. Omega Eng.,
334 F.3d at 1324 (“As a basic principle of claim interpretation, prosecution disclaimer promotes
the public notice function of the intrinsic evidence and protects the public’s reliance on definitive
statements made during prosecution.”) (emphasis added).
Finally, Defendants’ proposal (that the recited “sequence” is encrypted using the same
key) would seem to require that every time a key new value is produced, all of the steps recited
in Claim 1 must be performed again. Such an interpretation might arise from the preamble,
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which recites: “A method for transmitting data comprising a sequence of blocks in encrypted
form . . . .” If the entire sequence is encrypted using the same key, then production of a new key
must relate to transmission of a new sequence. Defendants have not argued that “a sequence”
must refer to at least two sequences, so to the extent the claim encompasses transmission of a
single sequence, the production of a new key might be read to require performing all of the
recited steps again, including providing a seed value. Requiring a new seed value upon every
key change would be inconsistent with the specification and even the claim language itself,
which contemplates synchronized advancement through a sequence of key values that have been
generated from a common seed value. Defendants’ proposal, which would thus render the claim
confusing and potentially inconsistent with itself and the specification, is accordingly disfavored.
On balance, none of the evidence warrants requiring that all of the blocks in the recited
“sequence of blocks” must be encrypted using the same key. Defendants’ proposal in that regard
is hereby expressly rejected.
The Court therefore hereby construes “sequence of blocks in encrypted form” to mean
“sequence of two or more blocks that have been encrypted.”
F. “predetermined”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“determined before any transmission over said
communication link”
Dkt. No. 172 at 10; Dkt. No. 180 at 25.
(1) The Parties’ Positions
Plaintiff argues that “[t]he term ‘predetermined’ is a commonly used term and does not
need any construction” and “simply means to determine beforehand.” Dkt. No. 172 at 11 (citing
Ex. E, Merriam-Webster Dictionary (on-line version)). Plaintiff cites the finding in Ticketmaster
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that “neither the claim language nor specification requires that the claimed ‘predetermined’
characteristic or claimed ‘predetermined’ number of blocks be ‘determined before any
transmission,’ instead it only requires that these be determined in advance of ‘any
communications,’ not transmissions.” Ticketmaster at 23.
Defendants respond that “[a]ccording to the claims and specification, the ‘determining’
must occur before the encrypted transmissions commence.” Dkt. No. 180 at 25. As to Plaintiff’s
reliance on Ticketmaster, Defendants submit they have no opposition to substituting
“communication” for “transmission” in their proposed construction. Id. at 26.
Plaintiff replies by again emphasizing Ticketmaster. Dkt. No. 192 at 8.
(2) Analysis
Although Plaintiff argues that this term should not be construed, the briefing
demonstrates that the parties have a “fundamental dispute regarding the scope of a claim term,”
and the Court has a duty to resolve the dispute. O2 Micro, 521 F.3d at 1362-63.
Claim 1 recites (emphasis added):
1. A method for transmitting data comprising a sequence of blocks in encrypted
form over a communication link from a transmitter to a receiver comprising, in
combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical to
one another[,] a new one of said key values in said first and said second sequences
being produced each time a predetermined number of said blocks are transmitted
over said link, and
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decrypting the data sent over said link at said receiver in accordance with
said second sequence.
The specification discloses that for encryption and decryption to occur, certain information must
be provided to the transmitter and the receiver “in advance”:
In accordance with the invention, to permit the two stations to communicate, each
[is] supplied in advance with a random number seed value which exclusively
determines the numerical content of the sequence of numeric values generated by
each of the two pseudo-random generators. In order that the two generators
switch from one output key value to the next in synchronism, means are employed
at both the transmitting and receiving stations to monitor the flow of transmitted
data and to advance the random number generator each time the transmitted data
satisfies a predetermined condition.
The monitoring function can advantageously be performed simply by counting the
units of data being transmitted and by advancing each pseudo-random key
generator each time the count reaches an agreed-upon interval number. In this
way, no additional synchronization information needs to be added to the data
stream.
‘730 Patent at 1:43-59 (emphasis added).
Once the host station has supplied the initial seed value keys to the units forming
the two terminal locations for a given link and transmission over that link begins,
the host . . . no longer “knows” the encryption key values since they are
dependent upon the nature of the transmissions over the link. Consequently, link
security cannot be compromised even by an “insider” who is in possession of the
initial key values supplied by the host.
Id. at 2:17-25 (emphasis added).
Of course, in order for the receiving station to successfully decipher the incoming
cipher text, the receiving station 12 must be provided (in some fashion) with both
the correct seed value and the correct interval number. These values are supplied
to the receiving station in advance of the transmission by any secure means.
Id. at 4:13-20.
As found in Ticketmaster, these disclosures, as well as the plain language of the claim,
are consistent with construing “predetermined” to refer to a determination that occurs before any
communication involving data comprising a sequence of blocks that have been encrypted using
the recited pseudo-random key values. Otherwise, the recited sequences of pseudo-random keys
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could not be generated and, in turn, the data could not be encrypted. Finally, at the March 12,
2013 hearing, Plaintiff’s counsel stated that “predetermined” refers to the same point in time
regardless of whether the term is being used with respect to the transmitter or with respect to the
receiver.
The Court therefore hereby construes “predetermined” to mean “determined before
any communication of a sequence of encrypted blocks.”
G. “data”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“serial data”
Dkt. No. 172 at 12.
(1) The Parties’ Positions
Plaintiff argues that “data” is a “broad term” and “[n]othing in the claim language
requires the data be transmitted, encrypted or decoded in a series.” Dkt. No. 172 at 12.
Defendants respond that the claims recite transmission of a “sequence” of data blocks,
which refers to serial data rather than parallel data. Dkt. No. 180 at 26. Defendants note that the
applicant added this “sequence” language to the claim during prosecution. See id., Ex. Y,
12/13/1993 Amendment After Final Rejection at 1-2.
Plaintiff replies that “Defendants improperly seek to import a limitation from the
preferred embodiment to the claims by noting that the preferred embodiment makes use of a
‘serial communication control,’ a ‘serial port,’ ‘serial interface,’ and ‘serial protocol.’” Dkt. No.
192 at 9.
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(2) Analysis
In Barclays, the parties, including Plaintiff, agreed that the preamble phrase “A method
for transmitting data comprising a sequence of blocks in encrypted form over a communication
link from a transmitter to a receiver comprising, in combination, the steps of” is a limitation of
the claim. Barclays at 9.
The specification discloses “data” multiple times, including in the context of serial
communication:
The monitoring function can advantageously be performed simply by counting the
units of data being transmitted and by advancing each pseudo-random key
generator each time the count reaches an agreed-upon interval number.
‘730 Patent at 1:54-58 (emphasis added).
At the transmitting station 11, a source of data 15 supplies a serial data stream to
the data input of an encryptor 17.
Id. at 3:11-13 (emphasis added).
The encryptor 17 translates fixed length segments of the data from source 15
(“clear text”) into fixed-length “cipher text” output segments, each segment
translation taking place in a manner uniquely determined by the encryption key
currently supplied by the pseudo-random number generator 23. The encryptor 17
(and the decryptor 19, to be discussed) may advantageously employ the accepted
NBIS Data Encryption Standard (DES), which codes and decodes data in 64-bit
(8 byte) units in accordance with a 56-bit key. The block counter 21 need not
supply advance signals on boundaries between encryption units, nor does the
generator 23 need to provide new key value precisely on encryption unit
boundaries. Instead, the encryptor 17 may buffer the new key[] temporarily,
using it for the first time on the next successive encryption unit of data.
Id. at 3:40-56 (emphasis added).
The asynchronous serial interface with the DTE typically operates under the
combined control of the microprocessor 101 and the SCC 111 in accordance with
a standard interface protocol (e.g., the V.42 standard protocol). The DTE (data
terminal equipment) may be any terminal or computer adapted to communicate
via this standard port using the selected serial protocol.
Id. at 4:65-5:4 (emphasis added).
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As mentioned above, the data terminal equipment (DTE) communicates with the
modem hardware over the serial port 121 (e.g., a RS-232c or a RS-422 standard
port).
Id. at 5:62-65 (emphasis added).
[E]rror control processing (such as adding cyclic redundancy check (CRC) block
checking codes) is best done after encryption in accordance with the invention,
because successful synchronization of the advance signals from the block
counters 21 and 29 requires substantially error-free data transmission (which the
error-checking protocols insure).
Id. at 8:22-28 (emphasis added).
On balance, the term “data” is used generically and has not been imbued with any special
meaning. The disclosure of “serial data” pertains to a preferred embodiment and is not required
by any claim language or any definitive statements in the specification or the prosecution history.
Comark Commc’ns, 156 F.3d at 1187; accord Phillips, 415 F.3d at 1323; see Omega Eng., 334
F.3d at 1324. Defendants’ proposal to limit “data” to serial data is therefore rejected.
The Court accordingly hereby construes “data” to have its plain meaning, and the Court
hereby expressly rejects Defendants’ proposal to limit “data” to “serial data.”
H. “block”
Plaintiff’s Proposed Construction
“a group of bits, such as a character, word, or
other unit of data”
Defendants’ Proposed Construction
“fixed length segment of the data”
Dkt. No. 172 at 9.
(1) The Parties’ Positions
Plaintiff proposes the construction reached by the Court in Merrill Lynch I. Merrill
Lynch I at 16. Plaintiff argues that the claim language specifies no “fixed length” and that the
specification discloses a block counter that may count units, words, or blocks of data of any size.
Dkt. No. 172 at 10.
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Defendants respond that the specification describes encryption as being performed upon
“fixed length segments of the data.”
Dkt. No. 180 at 28 (citing ‘730 Patent at 3:41-46).
Defendants also argue that “[t]he patent’s description of block counting as being compressionsensitive further supports Defendants’ proposed construction.” Dkt. No. 180 at 28. Defendants
further argue that Plaintiff’s position is inconsistent with the prosecution history, in which the
patentee “limit[ed] the scope of ‘data’ to ‘data comprising a sequence of blocks,’ to overcome
the examiner’s final rejection.” Id. (citing Ex. Y, 12/13/1993 Amendment After Final Rejection
at 1-2).
Plaintiff replies that the specification discloses that “a block counter may count ‘groups
of bits’ of varying sizes or units of data, words, or blocks of data of any other size.” Dkt. No.
192 at 7 (citing ‘730 Patent at 1:54-58 & 3:19-25). Plaintiff also submits that Merrill Lynch I
rejected the same prosecution history argument that Defendants are advancing here. Id. (citing
Merrill Lynch I at 17).
(2) Analysis
As the Court stated in Merrill Lynch I, “the specification does not provide an explicit
definition of the term ‘blocks.’” Merrill Lynch I at 10; see id. at 12. As to the prosecution
history, Merrill Lynch I noted: “The Court agrees that the applicant did limit the term ‘data.’
However, what is unclear from the prosecution history is exactly how the term ‘data’ was
narrowed by the amendment.” Id. at 13. Merrill Lynch I found that “contrary to Defendants’
contention, it is unclear from the intrinsic record if the only defining feature of a block with
which to narrow the term ‘data’ is length.” Id. at 14 (internal citation and quotation marks
omitted). Having considered the intrinsic evidence as well as extrinsic definitions submitted by
the parties, Merrill Lynch I concluded that rather than specifying any particular length, “the term
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‘block’ narrowed the term ‘data’ by requiring the data to be a group of bits, such as a character,
word, or other unit of data.” Id. at 16.
The specification discloses various different groupings of data, and those groupings may
indeed be fixed-length:
The monitoring function can advantageously be performed simply by counting the
units of data being transmitted and by advancing each pseudo-random key
generator each time the count reaches an agreed-upon interval number.
‘730 Patent at 1:54-58 (emphasis added).
The data from source 15 may take substantially any form, such as a file of text
characters, each encoded as a 8-bit byte, or a file of numerical binary
information expressed in 16-bit or 32-bit words. A block counter 21 monitors the
stream of data from the source 15 and generates an “advance signal” each time the
data meets a predetermined condition. Advantageously, the block counter 21 may
simply count the number of bytes (characters), words or blocks of data being
transmitted, compare the current count with a predetermined 37 [“]interval
number” and produce an advance signal each time the current count reaches the
interval number (at which time the current count is reset to 0).
Id. at 3:13-25 (emphasis added).
The encryptor 17 translates fixed length segments of the data from source 15
(“clear text”) into fixed-length “cipher text” output segments, each segment
translation taking place in a manner uniquely determined by the encryption key
currently supplied by the pseudo-random number generator 23.
Id. at 3:41-46 (emphasis added).
Note also that, as depicted in FIG. 4, the data is monitored by the block counter
21 prior to compression, rather than afterwards. Correspondingly, at the receiving
station 12, the block counter 29 monitors the data flow after it is decompressed.
In this way, both counters monitor the same data stream. Both could be
reconnected to monitor the compressed data stream if desired, however.
Id. at 9:12-19.
On balance, the claimed invention depends upon the transmitter and receiver counting
blocks in the same manner, but nothing in the ‘730 Patent requires that the blocks must be fixedlength. The above-quoted discussion of “fixed length segments” (id. at 3:41-46) thus relates to a
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preferred embodiment, and Defendants’ proposal, which would import that limitation into the
claims, is hereby expressly rejected. Comark Commc’ns, 156 F.3d at 1187; accord Phillips, 415
F.3d at 1323.
The Court therefore hereby construes “block” to mean “a group of bits, such as a
character, word, or other unit of data.”
I. “communication link from a transmitter to a receiver”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“a connection for communication between a
transmitter and a receiver”
Dkt. No. 172 at 11.
(1) The Parties’ Positions
Plaintiff argues that no construction is necessary because “the language is plain and can
be easily understood and applied by the jury.” Dkt. No. 172 at 11. Plaintiff also argues that
“Defendants’ attempt to rewrite the claim language from a ‘communication link from a
transmitter to a receiver’ to ‘a connection for communication between a transmitter and a
receiver’ finds no support in the specification.” Id. at 12.
Defendants respond that their proposal “clarifies that a link from a transmitter and a
receiver is a connection between those two points.” Dkt. No. 180 at 29. Defendants urge that
“[t]he communication channel or link must be the connection between the transmitting and
receiving station—rather than a part of the transmitting and receiving stations—otherwise the
claim language would contradict the specification.” Id. at 30. Finally, Defendants submit that
“[c]ontrary to [Plaintiff’s] assertions, Defendants’ proposed construction does not require a
‘direct’ connection, but simply clarifies that the claimed link is between a transmitter and a
receiver.” Id.
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Plaintiff replies that the “communication link 13” shown in Figures 1 and 4 of the ‘730
Patent is simply an arrow, and Plaintiff argues that “[n]othing in the specification or claims
requires a ‘connection’ between the transmitter and receiver, simply that communications from
one reach the other.” Dkt. No. 192 at 8.
(2) Analysis
The specification discloses:
FIG. 1 illustrates the manner in which the data being transmitted is subjected to a
sequence of signal processing steps as contemplated by the present invention.
These processing steps are executed at a transmitting station 11 and at a
receiving station 12 connected to opposite ends of a communications channel 13.
Id. at 3:5-10 (emphasis added).
On balance, Defendants’ proposed construction is unnecessary and would do little, if
anything, to clarify the disputed term. Instead, the claim language is sufficiently clear such that
the disputed term need not be construed. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings and
technical scope, to clarify and when necessary to explain what the patentee covered by the
claims, for use in the determination of infringement.
It is not an obligatory exercise in
redundancy.”); see O2 Micro, 521 F.3d at 1362 (“[D]istrict courts are not (and should not be)
required to construe every limitation present in a patent’s asserted claims.”). To whatever extent
Defendants are proposing that the “communication link” must be a wired connection or must be
a direct connection (without any intermediate devices), Defendants’ proposal is hereby expressly
rejected.
The Court therefore hereby construes “communication link from a transmitter to a
receiver” to have its plain meaning.
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.
CONCLUSION
The Court adopts the above constructions. The parties are ordered that they may not
refer, directly or indirectly, to each other’s claim construction positions in the presence of the
jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion,
other than the actual definitions adopted by the Court, in the presence of the jury. Any reference
to claim construction proceedings is limited to informing the jury of the definitions adopted by
the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 20th day of May, 2013.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
INTUIT INC.,
Defendant.
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§
CASE NO. 2:12-CV-180-WCB
MEMORANDUM OPINION AND ORDER
Before the Court are the parties’ responses (Dkt. Nos. 148 and 149) to the Court’s request
for supplemental briefing (Dkt. No. 145). The Court sought supplemental briefs on one of the
claim construction issues that arose in the course of proceedings on the defendants’ motion for
summary judgment of non-infringement. The claim construction issue in dispute relates to the
limitation in independent claim 1 of TQP’s U.S. Patent No. 5,412,730 (the ’730 patent) that
recites “a new one of said key values in said first and said second sequences being produced each
time a predetermined number of said blocks are transmitted over said link.” The Court now
adopts a modified claim construction for the “a new one of said key values” limitation. Because
the new construction appears to resolve the claim-construction issue on which the defendants’
motion for summary judgment of non-infringement was based, the Court DENIES the motion for
summary judgment of non-infringement (Dkt. No. 118). In addition, the stay previously entered
in this case (Dkt. No. 147) is VACATED.
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I. Background
Claim 1 of the ’730 patent recites as follows, with the disputed limitation underscored:
1. A method for transmitting data comprising a sequence of blocks in
encrypted form over a communication link from a transmitter to a receiver
comprising, in combination, the steps of:
providing a seed value to both said transmitter and receiver,
generating a first sequence of pseudo-random key values based on said
seed value at said transmitter, each new key value in said sequence being
produced at a time dependent upon a predetermined characteristic of the data
being transmitted over said link,
encrypting the data sent over said link at said transmitter in accordance
with said first sequence,
generating a second sequence of pseudo-random key values based on said
seed value at said receiver, each new key value in said sequence being produced
at a time dependent upon said predetermined characteristic of said data
transmitted over said link such that said first and second sequences are identical to
one another a new one of said key values in said first and said second sequences
being produced each time a predetermined number of said blocks are transmitted
over said link, and
decrypting the data sent over said link at said receiver in accordance with
said second sequence.
Figure 1 of the patent, which is a schematic diagram of the components used to practice
the claimed method, is reproduced below:
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At the outset of the claim construction proceedings in this case, the parties agreed on a
construction of the “a new one of said key values” limitation. The agreed-upon construction of
that limitation read as follows: “A new key value in the first and second sequence is used each
time a predetermined number of blocks have been sent from the transmitter over the
communication link.” In the course of the briefing and argument of the summary judgment
motion, however, it became clear that the agreement as to that claim construction language
concealed a fundamental disagreement about the meaning of the limitation.
Defendants Intuit and Hertz interpreted the limitation, as construed, to require that “the
transmitter and the receiver . . . use a new key value each time the transmitted-block count
reaches the predetermined number.” (Dkt. No. 118, at 7). That is, the defendants took the
position that “[i]f a new key value is used at either the transmitter or receiver before the
predetermined number of blocks of data have been sent, there can be no infringement.” (Dkt.
No. 118, at 3). The defendants further argued that the limitation, which refers to the “new one of
said key values in said first and said second sequences,” applies to both the transmitter and the
receiver, which are identified with the “first sequence of pseudo-random key values” and the
“second sequence of pseudo-random key values,” respectively.
More specifically, the
defendants argued that the limitation requires a new key value to be produced at both the
transmitter and the receiver each time a predetermined number of blocks of data is transmitted
over the communication link.
Relying on that interpretation of the “a new one of said key values” limitation, the
defendants argued that the limitation requires the encryption of all data with the same encryption
key until the “predetermined number of blocks have been” transmitted. Because, according to
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the defendants, the changes in the encryption key values in the accused systems are not triggered
by the transmission of a predetermined number of blocks, they contended that they were entitled
to summary judgment of non-infringement.
TQP interpreted the claim language—including the agreed-upon construction—quite
differently. TQP argued that the “a new one of said key values” limitation, which is part of the
paragraph in the claim that deals with the receiver, applies only to the receiver and not to the
transmitter. That is, according to TQP, the limitation “concerns when the receiver produces a
sequence of pseudo-random key values” (emphasis in original); it “does not govern when or how
the transmitter generates its sequence of pseudo-random key values.” (Dkt. No. 132, at 7).
Because, in TQP’s view, the claim construction “only places a limitation on when the receiver
produces the new sequence of pseudo-random key values,” (Dkt. No. 132, at 7), TQP contended
that the defendants’ arguments about when the new key value is used at the transmitter were
beside the point and did not support the defendants’ request for summary judgment.
From the briefing and argument on the summary judgment motions, it was apparent to
the Court that, despite the putative agreement between the parties over the construction of the “a
new one of said key values” limitation, the parties interpreted the claim language very
differently. Accordingly, the Court requested supplemental briefing from the parties as to how
the agreed-upon construction of the limitation in question should be modified so as to resolve the
dispute over the meaning of the claim. That briefing has been completed, and the parties have
now produced new proposed constructions of the disputed claim language that are quite different
from one another.
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For its part, TQP has abandoned the agreed-upon claim construction in favor of a
construction that essentially tracks the claim language verbatim. TQP’s proposed construction of
the “a new one of said key values” limitation reads: “a new key value in the first and second
sequence is produced each time a predetermined number of blocks are transmitted over the link.”
The defendants also departed from the previously agreed-upon language. They proposed
an amended claim construction that reads as follows: “a new key value in the first and second
sequence is respectively used at said transmitter and at said receiver only after each time a
predetermined number of blocks have been sent from the transmitter over the communication
link.” 1
II. Discussion
The “a new one of said key values” limitation was added to claim 1 during prosecution.
It had originally been part of claim 9, which depended from original claim 8. Original claim 8
contained the essence of what ultimately issued as claim 1, but without being limited to the
1
TQP argues that its proposed claim construction tracks the construction adopted by the
district court in TQP Development, LLC v. Barclays PLC, Case No. 2:09-cv-88 (E.D. Tex. Mar.
28, 2011) (Dkt. No. 165), one of the first in the series of TQP cases filed in this district. TQP
urges the Court to follow that claim construction as a matter of stare decisis. While this Court
attaches substantial weight to the prior claim construction orders in the TQP series of cases, any
stare decisis effect of the claim construction order in the Barclays case is undercut by the fact
that claim construction orders in later TQP cases adopted a different construction of the “a new
one of said key values” limitation, which formed the basis for the claim construction on which
the parties agreed in this case, and which TQP has now abandoned. See TQP Dev., LLC v. 1800-Flowers.com, Inc., Case No. 2:11-cv-248, at 22 (E.D. Tex. May 20, 2013) (Dkt. No. 226);
TQP Dev., LLC v. Wells Fargo & Co., Case No. 2:12-cv-61, at 20 (E.D. Tex. Dec. 2, 2013)
(Dkt. No. 187). Moreover, the fact that the parties disagree as to the meaning of the claim, both
as construed in Barclays and as construed in 1-800-Flowers.com and Wells Fargo, requires the
Court to conduct further claim construction, if possible, in order to minimize the risk of a dispute
at trial over the meaning of the Court’s claim construction orders.
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transmission of data comprising a sequence of blocks and without the “a new one of said key
values” limitation. Dependent claim 9 read as follows:
9. The method set forth in claim 8 wherein said data transmitted over said
link comprises a sequence of blocks and wherein a new one of said key values in
said first and said second sequences is produced each time a predetermined
number of said blocks are transmitted over said link.
The examiner rejected claim 8 as filed but agreed to allow the claim if the limitations of
dependent claim 9 were added to claim 8. The applicant did so, albeit somewhat clumsily, and
the combined claims ultimately issued as independent claim 1 in the ’730 patent.
Because the “a new one of said key values” limitation began life as part of a dependent
claim, the description of that limitation is found in the specification as part of the description of a
preferred embodiment. That description occurs in two places in the specification. First, in the
Background of the Invention, the specification provides:
In order that the two [pseudo-random number] generators switch from one output
key value to the next in synchronism, means are employed at both the transmitting
and receiving stations to monitor the flow of transmitted data and to advance the
random number generator each time the transmitted data satisfies a predetermined
condition.
The monitoring function can advantageously be performed simply by
counting the units of data being transmitted and by advancing each pseudorandom key generator each time the count reaches an agreed-upon interval
number.
’730 patent, col. 1, ll. 48-58.
Second, in the Description of the Preferred Embodiment, the specification provides:
A block counter 21 monitors the stream of data from the source 15 and generates
an “advance signal” each time the data meets a predetermined condition.
Advantageously, the block counter 21 may simply count the number of bytes
(characters), words or blocks of data being transmitted, compare the current count
with a predetermined 37 interval number and produce an advance signal each time
the current count reaches the interval number (at which time the current count is
reset to 0).
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’730 patent, col. 3, ll. 16-25.
A. A New One of Said Key Values “In Said First and Second Sequences”
The text of claim 1 and the specification make clear that in the claimed method the key
values that are generated at the transmitter and the key values that are generated at the receiver
are both produced each time the predetermined number of blocks is transmitted over the
communication link. Despite TQP’s argument to the contrary in its brief in response to the
defendants’ summary judgment motion, the limitation that recites “a new one of said key values
in said first and second sequences being produced each time a predetermined number of said
blocks are transmitted over said link” cannot sensibly be read any other way. The fact that the “a
new one of said key values” limitation appears in the paragraph of claim 1 that relates to the
receiver is entitled to little weight, as the plain language of the limitation refers to both the first
sequence of pseudo-random key values (which is associated with the transmitter) and the second
sequence of pseudo-random key values (which is associated with the receiver).
The etiology of claim 1 supports that interpretation. In its original dependent claim form,
that limitation was plainly not limited to the receiver, but applied to the key values produced at
both the transmitter and the receiver. There is no indication in the prosecution history that the
language from dependent claim 9 was intended to be given an altogether different meaning when
it was added to independent claim 8. Certainly the fact that the language from dependent claim 9
was placed at the end of the paragraph of the claim dealing with the receiver is not sufficient to
support such a different interpretation.
The argument made by TQP in its summary judgment response is also at odds with the
specification. The specification describes the embodiment recited in the “a new one of said key
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values” limitation as relating to the production of key values at the transmitter as well as the
receiver. The specification states: “[T]he combination of counter 21 and generator 23 [the
counter and generator associated with the transmitter] operate to change the encryption key each
time [the] total number of bytes transmitted is an exact multiple of the predetermined interval
number. . . . At the receiving station 12, . . . [b]lock counter 29 performs the identical function as
that performed by the counter 21 at the transmitting station 11 and hence supplies advance
signals to the generator 27 [the generator associated with the receiving station] at precisely the
same times (relative to the data stream) that counter 21 advances generator 23.” ’730 patent, col.
3, line 36, to col. 4, line 1. Accordingly, the Court concludes that the “a new one of said key
values” limitation applies to new key values being produced, not only at the receiver but also at
the transmitter.
That conclusion, however, does not resolve all the differences between the parties as to
the construction of the “a new one of said key values” limitation. The two remaining problems
are (1) the meaning of the verb “produced” in that limitation, and (2) the meaning of the phrase
“each time a predetermined number of said blocks are transmitted over said link.”
B. A New One of Said Key Values . . . “Being Produced”
The patent uses four verbs to describe actions taken with respect to seed values or key
values, but it does not carefully distinguish among them. At various points, the patent refers to
“generating” and “providing” seed values or key values, and it also refers to seed values or key
values being “supplied” or “produced,” without any apparent distinction in meaning according to
the verb selected.
Claim 1 uses three of those verbs—“providing,” “generating,” and
“produced.”
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The structure of claim 1 suggests that the verb “providing” means conveying without
necessarily generating. Thus, the first step of claim 1 recites “providing a seed value to both said
transmitter and receiver,” while the second and fourth steps of the claim recite “generating a first
sequence of pseudo-random key values” and “generating a second sequence of pseudo-random
keys values.” That distinction is supported by the specification, which uses “providing” in a
manner equivalent to “supplying.” See, e.g., ’730 patent, col. 4, ll. 13-17 (“[I]n order for the
receiving station to successfully decipher the incoming cipher text, the receiving station 12 must
be provided (in some fashion) with both the correct seed value and the correct interval number.
These values are supplied to the receiving station in advance of the transmission by any secure
means.”) (emphases added).
The verb “produced” presents more of a problem.
The question with respect to
“produced” is whether it means the same thing as “generated” or something broader, such as
“generated or supplied.”
The term “produced” is used in the same limitations of claim 1 as the verb “generating.”
See ’730 patent, col. 12, ll. 32-37 (“generating a first sequence of pseudo-random key values
based on said seed value at said transmitter, each new key value in said sequence being produced
at a time dependent upon a predetermined characteristic of the data being transmitted over said
link”) (emphases added); id., col. 12, ll. 40-44 (same with respect to second sequence of pseudorandom key numbers). The use of different terms in the same claim gives rise to an inference
that the term “produced” was intended to have a meaning different from “generated,” see
Chicago Bd. of Options Exchange, Inc. v. Int’l Sec. Exchange, LLC, 677 F.3d 1361, 1369 (Fed.
Cir. 2012); CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed.
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Cir. 2000), although that inference can be overcome if the contrary evidence is strong, see Baran
v. Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010); Bancorp Servs., L.L.C. v.
Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004).
The specification shows that the two verbs are used interchangeably in the patent.
Compare ’730 patent, col. 3, ll. 16-19 (“A block counter 21 monitors the stream of data from the
source 15 and generates an ‘advance signal’ each time the data meets a predetermined
condition.”) (emphasis added), with id., col. 3, ll. 19-25 (“Advantageously, the block counter 21
may simply count the number of bytes . . . and produce an advance signal each time the current
count reaches the interval number.”) (emphasis added), and id., col. 3, ll. 26-28 (“The advance
signal produced by block counter 21 is supplied to the advance input of a pseudo-random
number generator 23, which supplies a sequence of encryption key values to the key input of the
encryptor 17.”) (emphasis added). The fact that “production” and “generation” may have the
same meaning with regard to the advance signal, however, does not necessarily mean that the
two terms have the same meaning with regard to the key values. While the specification
describes the pseudo-random number generator as “respond[ing] to each advance signal from
block counter 21 by changing its output to the next successive encryption key value,” ’730
patent, col. 3, ll. 33-36, it does not specifically require that the generator respond to the advance
signal by generating a new key value, as opposed to producing a new key value from a set of key
values that had been previously generated and stored.
Several of the previous claim construction orders in the TQP series of cases have
addressed this issue, and they have all reached the conclusion that the term “produced” is not
limited to the meaning of “generated.” As the court explained in the Barclays claim construction
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order, the claim “only requires that each new key be ‘produced’ at a specific time relative to the
data. It does not matter whether that key is generated at that time, or pre-generated and stored.”
TQP Dev., LLC v. Barclays PLC, Case No. 2:09-cv-88 (E.D. Tex. Mar. 28, 2011) (Dkt. No.
165), at 17; see also TQP Dev., LLC v. 1-800-Flowers.com, Inc., Case No. 2:11-cv-248, at 22
(E.D. Tex. May 20, 2013) (Dkt. No. 226), at 21 (“Claim 1 does not specify whether the key is
generated at the time of use or is generated ahead of time and then selected at the time of use.”);
TQP Dev., LLC v. Wells Fargo & Co., Case No. 2:12-cv-61, at 20 (E.D. Tex. Dec. 2, 2013)
(Dkt. No. 187), at 20 (same). Those prior claim construction decisions are entitled to stare
decisis weight and are independently persuasive. In light of those orders, and after a careful
analysis of the claims and the specification, the Court concludes that the inference that the claim
terms “produced” and “generating” have different meanings has not been overcome.
Accordingly, the Court concludes that the term “produced” in the “a new one of said key values”
limitation is best construed to mean “generated or supplied.”
C. “Each Time A Predetermined Number of Said Blocks Are Transmitted”
The final, and most difficult, problem presented by the “a new one of said key values”
limitation is to construe the phrase “each time a predetermined number of said blocks are
transmitted over said link.” The language of that phrase is deceptively simple. Although it
seems facially unambiguous, the parties have quite different interpretations of it, and the task of
construing it turns out to be more difficult than might at first appear.
The defendants interpret the phrase “each time a predetermined number of said blocks are
transmitted over said link” to require that the new key value be used at the transmitter and
receiver “only after each time a predetermined number of blocks have been sent from the
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transmitter over the communication link.” (Dkt. 149, at 1). TQP, on the other hand, argues that
there is no “temporal limitation between use of a new key value and transmission.” According to
TQP, the key value in the preferred embodiments is changed “based on an advance signal sent by
the block counter when the block counter at the transmitter reaches a predetermined interval
number before transmission.” (Dkt. No. 148, at 2) (emphasis in original). Therefore, TQP
argues, the defendants’ claim construction cannot be correct, because it would exclude the
principal embodiment described in the patent.
The claim language, which refers to the new key values being produced “each time a
predetermined number of said blocks are transmitted over said link” does not expressly state
whether the production of a new key value occurs only after the transmission takes place. That
ambiguity is a consequence of the use of the verb phrase “are transmitted” rather than, for
example, the verb phrase “have been transmitted.”
To be sure, the most natural reading of the claim language, standing alone, is that the new
key value in the transmitter is produced after the predetermined number of blocks have been
transmitted over the communication link. With that said, however, there are a number of reasons
to view that “natural reading” of the claim language skeptically. First, it is important to keep in
mind that the “a new one of said key values” limitation came from a dependent claim in the
original application. The only apparent role of the dependent claim was to specify that the
“predetermined characteristic of the data” in the independent claim could be limited to “a
predetermined number of said blocks,” a preferred embodiment that is described in detail in the
specification. See ’730 patent, col. 1, ll. 54-65; id. col. 3, line 19 to col. 4, line 24. There is no
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indication, either in the prosecution history or in the specification, that the dependent claim was
intended to otherwise modify the limitations of the independent claim.
In the independent claim, both originally and in the issued patent, the “generating” clause
pertaining to the transmitter provided for new key values at the transmitter to be produced “at a
time dependent upon a predetermined characteristic of the data being transmitted over said link”
(emphasis added). The “generating” clause pertaining to the receiver, by contrast, provided for
the new key values at the receiver to be produced “at a time dependent upon said predetermined
characteristic of said data transmitted over said link” (emphasis added). The reason for the use
of the different terms “being transmitted” and “transmitted” in the two clauses is clear: at the
time the new key value is produced at the transmitter, the data has not yet been transmitted and is
only in the middle of the process of “being transmitted,” because the data is located within the
transmitter. At the time the new key value is produced at the receiver, however, the data
necessarily has already been transmitted.
The “a new one of said key values” limitation compressed those two different verb
phrases into one—“are transmitted”—because the limitation speaks to both the transmitter and
the receiver.
But the purpose of the dependent claim was to limit the predetermined
characteristic of the data to a predetermined number of blocks. It seems unlikely that the
patentee intended to use the combination of claims 8 and 9 to add a second, less explicit,
limitation by requiring the transmitter to count blocks only after they have been transmitted. Yet
if the Court were to adopt the defendants’ interpretation of the verb phrase “are transmitted,” it
would have to attribute just that intention to the patentee.
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The specification provides additional support for the broader reading of the “are
transmitted” language in claim 1.
First, the specification uses the term “transmitted”
interchangeably with “being transmitted.” Compare ’730 patent, col. 1, ll. 50-53 (“[M]eans are
employed at both the transmitting and receiving stations to monitor the flow of transmitted data
and to advance the random number generator each time the transmitted data satisfies a
predetermined condition.”) (emphasis added), and id., col. 3, ll. 36-40 (“the combination of
counter 21 and generator 23 operate to change the encryption key each time total [sic: the total]
number of bytes transmitted is an exact multiple of the predetermined interval number”)
(emphasis added), with id., col. 1, ll. 55-58 (the embodiment described in the “a new one of said
key values” limitation is performed “simply by counting the units of data being transmitted and
by advancing each pseudo-random key generator each time the count reaches an agreed-upon
interval number”) (emphasis added), and id., col. 3, ll. 5-7 (“Fig. 1 illustrates the manner in
which the data being transmitted is subjected to a sequence of signal processing steps.”)
(emphasis added), and id., col. 3, ll. 20-21 (the block counter “may simply count the number of
bytes (characters), words or blocks of data being transmitted”) (emphasis added). For that
reason, it would be a mistake to conclude that the phrase “are transmitted” must mean “have
been transmitted” in the “a new one of said key values” limitation.
More significantly, the interpretation of the claim that the defendants advocate would be
at odds with a large portion of the specification that describes how the claimed invention and the
preferred embodiment recited in claim 1 are employed. As illustrated in Figure 1, reproduced
above, the data source in the transmitter is input to the block counter, which counts the number
of blocks in the data stream. When the block counter detects that the proper predetermined
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number of blocks have emerged from the data source, it signals the pseudo-random number
generator to generate a new key value. That key value is fed to the encryptor, which encrypts the
data stream, after which the data is transmitted to the receiver. That operation is depicted in
Figure 1 and described in detail in the specification at column 3, lines 11-40. Yet if the claim
language were interpreted to require that the new key value in the transmitter be produced only
after a predetermined number of blocks has actually been transmitted through the communication
link, that would describe an entirely different system from the one described and depicted in the
specification. It is a well-established proposition that a claim interpretation that excludes a
preferred embodiment is rarely, if ever, correct. Dow Chem. Co. v. Sumitomo Chem. Co., 257
F.3d 1364, 1378 (Fed. Cir. 2001); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996). That is because “it is unlikely that an inventor would define the invention in a
way that excluded the preferred embodiment.” Hoechst Celanese Corp. v. BP Chems. Ltd., 78
F.3d 1575, 1581 (Fed. Cir. 1996). Accordingly, to adopt a claim construction that would exclude
a preferred embodiment “would require highly persuasive evidentiary support.” Rexnord Corp.
v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001), quoting Vitronics, 90 F.3d at 1583.
The construction proposed by the defendants would be inconsistent with the embodiment
depicted in Figure 1 of the ’730 patent and described in the portion of the specification that
relates to Figure 1. Absent clearer contrary evidence than is present in this case, the Court will
not construe the claim language in a manner that excludes such a fundamental portion of the
specification from the scope of claim 1 of the patent.
The foregoing analysis leads the Court to adopt a modified construction of the “a new
one of said key values” limitation:
“For both the first and second sequences, at the
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transmitter and at the receiver respectively, a new key value is produced each time a
predetermined number of blocks are transmitted over the link. The term ‘produced,’ as
used in that sentence, means ‘generated’ or ‘supplied.’ The phrase ‘are transmitted’
means ‘are being transmitted’ with respect to the transmitter and ‘have been transmitted’
with respect to the receiver.”
The defendants’ motion for summary judgment of non-infringement (Dkt. No. 118) was
predicated on the application of the previously agreed-upon claim construction, which has been
modified in a manner that appears to resolve the issue on which the motion was based.
Accordingly, the Court denies the motion for summary judgment.
Because the Court has
modified the claim construction, the Court will allow the defendants to file a new motion for
summary judgment if they believe that they are entitled to summary judgment under the Court’s
modified construction of the “a new one of said key values” limitation. Any such new motion
for summary judgment must be filed within 10 days of the date of this order.
The order staying proceedings in this matter until the resolution of the defendants’ two
pending summary judgment motions (Dkt. No. 147) is now vacated, and the previously entered
scheduling order will continue to be in effect.
It is so ORDERED.
SIGNED this 21st day of February, 2014.
__________________________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
INTUIT INC.,
Defendant.
§
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§
§
§
§
§
§
§
§
CASE NO. 2:12-CV-180-WCB
MEMORANDUM AND ORDER
Before the Court is Defendants’ Motion for Reconsideration of Denial of Summary
Judgment of Non-infringement (Dkt. No. 155). Because it is apparent to the Court that its earlier
claim construction needs to be refined, the Court will GRANT reconsideration of the claim
construction issued in its previous order (Dkt. No. 152) in order to modify the construction
slightly.
In its earlier order, the Court granted the defendants permission to file a renewed motion
for summary judgment if they believed that they were entitled to summary judgment based on
the Court’s new claim construction. See Dkt. No. 152, at 16. Rather than filing a renewed
motion for summary judgment, the defendants have sought reconsideration of the Court’s order
denying summary judgment as part of their motion seeking reconsideration of the Court’s claim
construction order. Because the Court believes the plaintiff is not prejudiced by defendants’
choice to proceed in this fashion, the Court will treat the present motion as a renewed motion for
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summary judgment, and will GRANT the renewed motion for summary judgment of
noninfringement.
I. Claim Construction
The defendants raise several objections to the Court’s construction of the phrase “are
transmitted” in claim 1 of TQP’s patent, U.S. Patent No. 5,412,730 (“the ’730 patent”). The
Court construed that phrase to mean “are being transmitted” with respect to the transmitter
referenced in the claim, and “have been transmitted” with respect to the recited receiver.
One of the defendants’ claim construction arguments is persuasive. But first the Court
will deal with the other claim-construction arguments, which are not.
A. Grammar
First, the defendants contend that the verb phrase “are transmitted” is “not a verb tense
that can reasonably be understood, consistently with English grammar, to include ‘are being
transmitted.’” The Court does not find that assertion persuasive. The phrase “are transmitted”
can indeed carry the sense of “are being transmitted,” as in the sentence, “The messages are
encoded each time they are transmitted.” That sentence requires that encoding be associated
with each transmission, but it does not require that the encoding take place only after the
transmission has occurred. The language of the claim limitation in question, “a new one of said
key values in said first and said second sequences being produced each time a predetermined
number of said blocks are transmitted over said link,” is similarly ambiguous as to whether it
refers to the production of new key values that occurs after an act of transmission takes place, or
to the production of new key values that occurs either before or during the transmission.
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Notwithstanding the defendants’ insistence to the contrary, English usage does not require that
the clause be read in the former sense and not the latter.
Turning to principles of English grammar, the defendants argue that the phrase “are
transmitted” must refer to the data blocks having been transmitted, because the phrase is in the
stative passive voice—a passive construction in which a form of the verb “to be” is combined
with the past participle form of another verb that is used as an adjective, e.g., “When I arrived, I
found that the courthouse was closed.” But not all combinations of the verb “to be” and a word
in past participle form are used as adjectives; they are often used instead to form simple passive
verb phrases, e.g., “The courthouse was closed just three minutes before I arrived.” In fact, the
very sentence in which the defendants argue that the phrase “are transmitted” is in the stative
passive voice (i.e., that “transmitted” is used as an adjective) contains another similarly
structured phrase in which the verb accompanying the “to be” verb is clearly not used as an
adjective. The sentence reads, in pertinent part: “Specifically, the phrase ‘are transmitted’ was
drafted in the stative passive voice . . . .” In that sentence, the verb “drafted” is not used as an
adjectival passive (“the drafted phrase”), but as a simple verbal passive (“the phrase was drafted
at some time in the past by someone”). See Rodney Huddleston & Geoffrey K. Pullum, The
Cambridge Grammar of the English Language 1436-39 (2002) (“There is a large-scale overlap
between adjectives and the past participle form of verbs, and since the verb be can take
complements headed by either of these categories we find a significant resemblance, and often
an ambiguity, between a verbal passive and a complex-intransitive clause containing an
adjectival passive as predicative complement.”). Huddleston and Pullum give three instructive
examples: “The kitchen window was broken by thieves” (a verbal passive); “They were very
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worried” (an adjectival passive as predicative complement); and “They were married” (in which
the word “married” could play either role, with a very different meaning attached to each). Id. at
1436.
The point of all this pedantry is that the phrase “are transmitted,” as used in claim 1 of the
’730 patent can fairly be read as a dynamic verb phrase that describes the act of transmission, not
a stative phrase that is used adjectivally to describe the data blocks as having been transmitted.
For that reason, in the context of claim 1 of the ’730 patent the phrase “are transmitted” conveys
the occurrence of the act of transmission, but it does not restrict that act to the past. That is, to
refer to a new key value “being produced” each time a predetermined number of blocks “are
transmitted” does not necessarily mean that the transmission of the blocks must have been
completed before the new key value is produced. The events could be occurring simultaneously
or in close succession, with the transmission onto the communication link occurring after the
new key value is produced. Accordingly, contrary to the defendants’ contention, the plain
language of the claim does not dictate that the phrase “are transmitted” must be interpreted to
mean “only after a predetermined number of blocks have been sent from the transmitter over the
communication link.”
B. Excluding the Preferred Embodiment
Second, and relatedly, the defendants argue that the Court has impermissibly redrafted
the claim. That characterization is based on the defendants’ contention that the meaning of the
claim language is clear on its face and that the Court’s construction departs from that clear
meaning. The Court, however, concludes that the phrase “each time a predetermined number of
said blocks are transmitted over said link” in the fifth limitation of claim 1 of the ’730 patent is
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ambiguous. For that reason, the Court regards its prior construction of that claim language as the
product of interpretation, not redrafting.
The Court bases its conclusion that the claim language is ambiguous on the reasons set
forth above as well as the reasons given in the Court’s prior order on this issue (Dkt. No. 152).
In the present order, the Court will focus on describing in more detail one of the considerations
that drove the Court’s claim construction decision in the prior order—the need for the claim, as
construed, to read on the preferred embodiment featured in the patent.
As the Court noted in its earlier order, the defendants’ interpretation of the claim
language would leave the preferred embodiment outside the scope of the claim, even though that
embodiment is depicted in Figure 1 of the patent and is described in the specification as the
preferred embodiment of the invention. That is a powerful factor cutting against adopting the
defendants’ interpretation.
As explained in the Court’s earlier order, the specification of the ’730 patent makes clear
that Figure 1 depicts the essentials of the claimed method. The Description of the Preferred
Embodiment begins: “Fig. 1 illustrates the manner in which the data being transmitted is
subjected to a sequence of signal processing steps as contemplated by the present invention.”
’730 patent, col. 3, ll. 5-7. It then describes the way the method of claim 1 is practiced. After
describing the process of supplying a serial data stream to the data input of an encryptor, the
specification states: “A block counter 21 monitors the stream of data from the source 15 and
generates an ‘advance signal’ each time the data meets a predetermined condition.” Id., col. 3, ll.
16-19. Then, describing the particular preferred embodiment recited in claim 1, the specification
states:
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Advantageously, the block counter 21 may simply count the number of bytes
(characters), words or blocks of data being transmitted, compare the current count
with a predetermined 37 interval number and produce an advance signal each time
the current count reaches the interval number (at which time the current count is
reset to 0).
Id., col. 3, ll. 19-25. After that, “[t]he advance signal produced by block counter 21 is supplied
to the advance input of a pseudo-random number generator 23 which supplies a sequence of
encryption key values to the key input of the encryptor 17.” Id., col. 3, ll. 26-29. The generator
then “responds to each advance signal from block counter 21 by changing its output to the next
successive encryption key value.” Id., col. 3, ll. 33-36.
That text, and its graphical representation in Figure 1, describes a process in which the
data source is input to the block counter, which counts the number of blocks in the data stream.
When the block counter detects that the proper predetermined number of blocks have been
supplied by the data source, it signals the pseudo-random number generator to generate a new
key value. That key value is provided to the encryptor, which encrypts the data stream, after
which the data is placed on the communication link to the receiver.
The problem with the defendants’ proposed construction of the claim is that it would
leave that preferred embodiment outside the scope of any claim of the ’730 patent. That is
because the defendants’ claim construction requires that the new key values in the transmitter be
produced only after the predetermined number of blocks have been sent to the receiver, i.e., only
after the blocks have been placed on the communication link to the receiver.
On numerous occasions, the Federal Circuit has held that claim interpretations that
exclude the preferred embodiment of the invention are disfavored. See Rambus Inc. v. Rea, 731
F.3d 1248, 1253 (Fed. Cir. 2013) (“A claim construction that excludes the preferred embodiment
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‘is rarely, if ever, correct and would require highly persuasive evidentiary support.’”), quoting
Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010);
Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (“[A]
claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely,
if ever, correct.”), quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d
1133, 1138 (Fed. Cir. 2004); InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d
1318, 1326 (Fed. Cir. 2012) (same); In re Katz Interactive Call Processing Patent Litig., 639 F.3d
1303, 1324 (Fed. Cir. 2011) (“[T]here is a strong presumption against a claim construction that
excludes a disclosed embodiment.”); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
1379, 1383 (Fed. Cir. 2008) (“[O]ur court has cautioned against interpreting a claim term in a
way that excludes disclosed embodiments, when that term has multiple ordinary meanings
consistent with the intrinsic record.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 158384 (Fed. Cir. 1996) (same); Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1581
(Fed. Cir. 1996) (“We share the district court's view that it is unlikely that an inventor would
define the invention in a way that excluded the preferred embodiment, or that persons of skill in
this field would read the specification in such a way.”).
The defendants argue that even if their proposed construction of the claim language
excludes the embodiment depicted in Figure 1 of the ’730 patent, that does not matter, and their
construction should be adopted anyway. 1 In making that argument, the defendants rely on cases
1
The defendants do not acknowledge that their construction would mean that claim 1
would not read on Figure 1 and the preferred embodiment described at column 3 of the patent.
At the same time, however, their motion for reconsideration does not directly challenge the
Court’s finding that their construction would not read on that embodiment. Instead, pointing to
another embodiment contained in a microfiche appendix of source code that was filed with the
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in which the Federal Circuit has recognized exceptions to the general principle that claims should
not be construed in a manner that excludes embodiments of the invention that are described in
the specification.
The Federal Circuit has identified four such exceptions.
First, if the claim language is clear, the court will construe the claim according to its clear
meaning, even though that construction results in the claim not reading on one of the described
embodiments. See TIP Sys., LLC v. Phillips & Brooks/Gladwin, 529 F.3d 1364, 1373 (Fed. Cir.
2008) (“[T]o construe the claim term to encompass the alternative embodiment in this case
would contradict the language of the claims.”); Rolls-Royce, PLC v. United Techs. Corp., 603
F.3d 1325, 1334-35 (Fed. Cir. 2010); Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 121516 (Fed. Cir. 2008).
Second, construing a particular claim to exclude a particular embodiment is of little
concern if a different claim in the patent or a related patent is construed to read on the
embodiment. See PSN Ill., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008)
(“[C]ourts must recognize that disclosed embodiments may be within the scope of other allowed
but unasserted claims.”); August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278, 1285 (Fed. Cir.
2011); Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008);
Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1336-37 (Fed. Cir. 2007); ACCO
Brands, Inc. v. Micro Sec. Devices, Inc., 346 F.3d 1075, 1079 (Fed. Cir. 2003) (embodiments
carried over from patent application and claimed in other patents).
patent, they state that the source code embodiment “is not foreclosed by anything” in the
preferred embodiment depicted in Figure 1. That assertion, however, is irrelevant to the question
whether the embodiment described in Figure 1 and column 3 of the patent is consistent with the
claim language as the defendants would construe it.
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Third, sometimes patents are drafted so as to disclose unclaimed subject matter along
with the subject matter that is within the scope of the claims; such action has the effect of
dedicating the unclaimed subject matter to the public. See Johnson & Johnston Assocs. Inc. v.
R.E. Serv. Co., 285 F.3d 1046, 1054 (Fed. Cir. 2002) (en banc) (“[W]hen a patent drafter
discloses but declines to claim subject matter . . . this action dedicates that unclaimed subject
matter to the public.”); Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1108 (Fed. Cir. 1996); Unique
Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-63 (Fed. Cir. 1991).
Fourth, sometimes claims are altered during prosecution in a way that leaves some
disclosed embodiment or embodiments outside the scope of the amended claims. See N. Am.
Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (Fed. Cir. 2005) (“[T]he fact
that claims do not cover certain embodiments disclosed in the patent is compelled when
narrowing amendments are made in order to gain allowance over prior art.”); Rheox, Inc. v.
Entact, Inc., 276 F.3d 1319, 1327 (Fed. Cir. 2002).
None of those exceptions to the general rule applies in this case. First, as discussed
above, the language of the claim is not “plain”; it certainly does not so clearly favor the
defendants’ construction that it overcomes the fact that under their construction the claim would
not read on the principal preferred embodiment described in the specification. Second, there is
no claim other than claim 1, either in the ’730 patent or in a related patent, that would read on the
preferred embodiment under the defendants’ claim construction. Third, there is no indication in
the specification that the embodiment of Figure 1 was intended to be described in the
specification but treated as unclaimed subject matter. Figure 1 and the associated text in column
3 of the patent is the principal preferred embodiment of the invention; moreover, Figure 1 is
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described as “illustrat[ing]” the manner in which data being transmitted is subject to processing
steps “as contemplated by the present invention.” ’730 patent, col. 3, ll. 5-7. The reference to
Figure 1 as illustrating the operation of “the present invention” makes clear that it is not simply
unclaimed subject matter. To the contrary, Figure 1 and the portion of the specification that
discusses it were plainly meant to constitute the core description of the invention claimed in the
patent. Fourth, for the reasons explained in the earlier order in this case, the prosecution history
does not justify reading claim 1 to exclude the embodiment found in Figure 1. The defendants
disagree with the Court’s analysis in that order and contend that the prosecution history explains
the disconnect between the preferred embodiment and the defendants’ proposed claim
construction. Careful analysis of the prosecution history, however, shows that the defendants’
argument does not stand up.
As the Court noted in its previous order, the prosecution history shows that what is now
claim 1 was the product of a combination of an independent claim (original claim 8) and a
dependent claim (original claim 9). That change had the effect of restricting the scope of claim 1
to embodiments in which the “predetermined characteristic of the data being transmitted” is a
“predetermined number of said blocks.”
Claim 9 in the original application read as follows:
9. The method set forth in claim 8 wherein said data transmitted over said
link comprises a sequence of blocks and wherein a new one of said key values in
said first and said second sequences is produced each time a predetermined
number of said blocks are transmitted over said link.
The two elements of claim 9 were incorporated into claim 8 to make what is now claim 1. The
words “comprising a sequence of blocks” were added to the first limitation of claim 8, and the
words “a new one of said key values in said first and second sequences is produced each time a
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predetermined number of said blocks are transmitted over said link” were added to the fifth
limitation of claim 8.
Those changes had the effect of restricting claim 8 to a method in which the data to be
transmitted is in the form of a sequence of blocks and in which new key values are produced
each time a predetermined number of those blocks are transmitted over the communication link.
In that form, the new claim corresponded to the embodiment described at column 3, lines 19-40,
described above. There is no indication that the change to the independent claim was meant to
have a second, more subtle effect of limiting the claim to cases in which the new key values in
the first and second sequences are produced each time a predetermined number of blocks of data
“have already been sent,” as would be required by the defendants’ claim construction. 2 Hence,
the prosecution history does not support the defendants’ claim that the amendment to the
independent claim had the effect of taking the principal preferred embodiment in the
specification outside the scope of any of the patent claims.
C. Revised Claim Construction
The defendants next object to the Court’s decision to construe the pertinent claim
language differently from the construction to which the parties initially agreed, which was that
2
The defendants take issue with this conclusion, arguing that in its previous order the
Court did not explain its rationale for finding that the dependent claim added only a single
limitation. In arguing to the contrary, they note that the applicant told the Patent and Trademark
Office that the revised version of claim 8 “incorporates the elements [plural] of claim 9 in their
entirety into claim 8.” That argument is unpersuasive. The reference to “the elements” plainly
denotes the two amendments to claim 8 that were made by inserting two portions of claim 9 into
claim 8. Both of those amendments relate to the single substantive change made to claim 8, i.e.,
to restrict the “predetermined characteristic of the data” to “a predetermined number of said
blocks.” There is no evidence to support the defendants’ suggestion that the amendments were
also intended to have the separate effect of requiring that the blocks of data “have been sent”
when the key values are produced, as the defendants contend.
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“are transmitted” means “have been sent.” As the Court explained in its earlier order, the need
for further construction of the limitation at issue arose because the apparent agreement between
the parties as to the proper claim construction masked real disagreement about the meaning of
the claim language and the language used in the proposed construction. Without further claim
construction, that disagreement would likely manifest itself at trial, when the problem would be
more difficult to resolve. Moreover, in response to the Court’s request for supplemental briefing
in this case, the parties made it clear that they no longer agree on the proper claim construction
of the “a new one of said key values” limitation. Rather, both parties have submitted different
proposed constructions for the phrase “are transmitted.”
For that reason, the Court felt
compelled to conduct further construction of the claim language both to resolve what is now an
open dispute between the parties as to the proper claim construction and to avoid problems that
could arise at trial, when amending the claim construction would be more problematical.
D. Stare Decisis and Unfairness
Next, the defendants contend that the Court has departed from principles of stare decisis
by adopting a claim construction that is at variance with the construction adopted in other cases
involving the same patent.
They add that it is unfair for the Court to change the claim
construction in a way that allows TQP to avoid the consequences of its previously agreed-upon
claim construction.
As a technical matter, stare decisis does not apply here, as “[t]he doctrine of stare decisis
does not compel one district court judge to follow the decision of another.” Threadgill v.
Armstrong World Indus., Inc., 928 F.2d 1366, 1371 & n.7 (3d Cir. 1991). “Where a second
judge believes that a different result may obtain, independent analysis is appropriate.” Id. at
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1371; see also ATSI Commc’ns, Inc. v. Shaar Fund, Ltd., 547 F.3d 109, 112 n.4 (2d Cir. 2008)
(same); Midlock v. Apple Vacations W., Inc., 406 F.3d 453, 457-58 (7th Cir. 2005) (“[A] district
court decision does not have stare decisis effect . . . .”); Starbuck v. City & County of San
Francisco, 556 F.2d 450, 457 n.13 (9th Cir. 1977). Nonetheless, previous claim constructions in
cases involving the same patent are entitled to substantial weight, and the Court has determined
that it will not depart from those constructions absent a strong reason for doing so. For reasons
explained in this order and in the previous one, however, the Court has concluded that it is
necessary to conduct further claim construction in this case.
In addition to the disagreement between the parties as to the meaning of the agreed-upon
claim construction, the defendants in their supplemental claim construction brief (Dkt. No. 149)
requested a claim construction different from any that has been adopted by a court in any of the
previous cases involving the ’730 patent. Moreover, as this Court noted in its earlier order, the
construction given to the claim language in question has varied in the other cases involving the
’730 patent. There is therefore no construction of the claim language that would not be at odds
with at least one of the prior claim-construction orders associated with the ’730 patent. Finally,
as the Court explained at the hearing on the summary judgment motion in this case, the previous
claim construction orders provide an important starting point, but the prior orders in related cases
do not bar the Court from conducting additional construction in order to refine earlier claim
constructions.
As to the complaint of unfairness, the Court does not regard the revision of the claim
construction in this case as unfair to the defendants. The Federal Circuit has made clear that a
district court may adopt an “evolving” or “rolling” claim construction, in which the court’s
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construction of claims evolves as the court better understands the technology and the patents at
issue. See Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed.
Cir. 2010) (quoting Pfizer, Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir.
2005)) (“[D]istrict courts may engage in a rolling claim construction, in which the court revisits
and alters its interpretation of the claim terms as its understanding of the technology evolves.”);
Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1381-82 (Fed. Cir. 2003)
(same); Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002)
(same); see also In re Acacia Media Techs. Corp., 2010 WL 2179875, at *4 (N.D. Cal. May 25,
2010) (“The Court finds that it would hinder litigation and the claim construction process to find
a change in claim construction position to be vexatious or improper, since the Court's role is to
determine the proper construction, which may entail an evolving understanding of the claim
terms.”).
Nor does the Court regard TQP’s conduct with respect to the claim construction issue to
have resulted in any unfairness to the defendants. As noted, although the parties agreed on the
language of the construction of the phrase “are transmitted,” there was clearly a dispute between
the parties regarding the meaning of that language as construed.
Oral argument on the
defendants’ motion for summary judgment and the supplemental briefing requested by the Court
made it evident that the parties had materially different views of the meaning of the agreed-upon
construction of that phrase. The Court explained at the time of the oral argument on the
summary judgment motions that it would reconsider the issue of claim construction in light of
the parties’ disagreement as to the meaning of the putatively agreed-upon construction, and the
Court has done so. The Court does not regard any of the changes in the parties’—and the
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Court’s—interpretation of the claim language as having resulted in unfair prejudice to the
defendants.
E. The “Source Code” Embodiment
Finally, the defendants argue that the microfiche appendix to the patent, which contains
source code, is an embodiment of the patent and is not within the scope of the Court’s
construction of the “a new one of said key values” limitation. If that is so, construing the claim
language to encompass the source code embodiment would result in broadening the Court’s
construction of the claim, not in narrowing it. It is not at all clear how an argument that results in
broadening the claim construction benefits the defendants in their pursuit of summary judgment
of noninfringement. Nonetheless, the Court will consider the argument.
The defendants’ argument is this: The source code provides that the key values in the
transmitter are not changed until the transmitter receives an acknowledgment from the receiver
that the correct number of transmitted data blocks have been received.
Because of the
acknowledgement feature, the defendants argue, the source code provides that new key values at
the transmitter are not produced until the predetermined number of blocks have been transmitted
over the communication link.
Referring to its expert’s declaration, TQP responds that the acknowledgement step is
merely an optional feature that would not be necessary for the production of a new pseudorandom key value in the transmitter in other embodiments. Therefore, TQP contends, the source
code is not inconsistent with the Court’s construction of the claim language in dispute.
TQP’s argument misses the point. It does not matter whether the acknowledgment step is
essential to the production of a new pseudo-random key value or is merely optional, as TQP
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contends. What matters is how the source code actually goes about causing the production of
such a key value. The parties have agreed that the source code is a preferred embodiment of the
invention. Therefore, in order for claim 1 to read on the source code, claim 1 must be construed
to provide for the production of such a key value in the manner in which the source code
performs that task. For that reason, the Court agrees with the defendants that the source code
points out a flaw in the Court’s earlier construction of the “a new one of said key values”
limitation. However, the Court does not agree with the defendants’ proposed solution to the
problem.
The defendants would have the Court construe the “a new one of said key values”
limitation to require that the phrase “are transmitted” means “have been sent.” That construction
has the virtue that it includes the source code embodiment within claim 1. But it has the flaw
that it excludes the embodiment depicted in Figure 1 and discussed in the specification.
Fortunately, the problem can be solved by a refinement to the claim construction that will cover
both embodiments—Figure 1 and the source code. The refinement is simply to define the term
“are transmitted” to mean “is being transmitted or has been transmitted” for both the transmitter
and receiver. In addition to covering both embodiments, that change has the advantage of not
according the same phrase a different definition depending on whether it is used to describe
processing on the transmitter or processing on the receiver. Accordingly, the Court concludes
that the claim construction should be refined so that the phrase “are transmitted” is accorded a
single meaning with respect to both the transmitter and the receiver. The Court will therefore
modify its construction of the “a new one of said key values” limitation to read as follows:
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“For both the first and second sequences, at the transmitter and at the receiver
respectively, a new key value is produced each time a predetermined number of blocks are
transmitted over the link. The term ‘produced’ as used in that sentence, means ‘generated’
or ‘supplied.’ The phrase ‘are transmitted’ means ‘are being transmitted’ or ‘have been
transmitted.’”
II. Infringement
The Court now turns to the defendants’ argument that, even under the Court’s claim
construction, summary judgment of noninfringement should be granted.
The essence of the defendants’ argument is that TQP has not offered evidence showing
that the production of new key values is linked to the transmission of a predetermined number of
blocks of data, regardless of how the phrase “are transmitted” is defined. The defendants note
that TQP’s infringement contentions tie the production of new key values at the transmitter to
encryption, not transmission. They also point to evidence offered by TQP’s expert, Dr. Trent
Jaeger, that the accused systems encrypt one block of data and then produce a new key value to
encrypt the next block of data, without regard to when any particular block of data is transmitted
over the communication link. For that reason, the defendants claim that the new key values are
not “produced at a time dependent upon a predetermined characteristic of the data being
transmitted,” and are not “produced each time a predetermined number of said blocks are
transmitted” over the communication link. ’730 patent, col. 12, ll. 34-36, 47-49.
TQP agrees that in the accused systems multiple data blocks are shipped to the receiver at
the same time. Thus, after one block is encrypted, it is joined with other blocks for ultimate
shipment to the receiver. According to TQP, each data block that has been encrypted and is
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awaiting shipment is in the process of being transmitted. In order for a block to be “being
transmitted,” TQP contends, it is not necessary for the block to have left the transmitter and to be
in the communication channel between the transmitter and the receiver.
With respect to the “at a time dependent” limitation, the evidence in the summary
judgment record indicates that a new key value is produced in the accused systems “at a time
dependent upon a predetermined characteristic of the data being transmitted,” ’730 patent, col.
12, ll. 35-36. That is because it is predetermined that a new key value will be produced
immediately after the encryption of each data block—i.e., the predetermined characteristic is the
amount of data in a single block—and because those blocks are all “being transmitted” in that
they are inside the transmitter being prepared to be placed onto the communication link.
Summary judgment of noninfringement therefore cannot be granted on the “at a time dependent”
limitation.
With respect to the “a new one of said key values” limitation, however, the situation is
different. That limitation requires that a new key value be produced at the transmitter “each time
a predetermined number of blocks are transmitted over said link.” In support of their motion, the
defendants cite testimony and a demonstrative exhibit from the trial in TQP Development, LLC
v. Newegg, Inc., No. 2:11-cv-248, which involved the same patent.
In that trial, Dr. Jaeger
testified that in the accused system, a new key value is produced “based on a predetermined
characteristic in the transmitter.” 3 He explained that “[t]his key value encrypts a block of
ciphertext,” and then “[t]he next key value will be used to—to encrypt the next block of
ciphertext.”
Those blocks then “are transmitted.”
That testimony is consistent with the
3
The parties agree that the accused systems in this case, which employ the SSL/TLS
protocols with the RC4 cipher, are identical to the system at issue in Newegg.
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demonstrative exhibit used during Dr. Jaeger’s testimony, which shows that in the accused
systems, multiple blocks of data are encrypted, with different key values used to encrypt each
one, but then the blocks of data are retained at the transmitting station until they are ready to be
placed on the communication link to the receiver. Based on that evidence, and the similar
evidence offered by TQP on summary judgment in this case, the defendants assert that TQP has
effectively conceded that a new key value is not produced each time a predetermined number of
data blocks are transmitted over the communication link, as required by claim 1 of the ’730
patent.
Put simply, the defendants’ argument is that, even under this Court’s construction of the
phrase “are transmitted,” the accused systems do not infringe, because the production of a new
key value is triggered by the encryption of a predetermined number of data blocks, not by their
transmission. That is, a new key value is produced each time a new data block is encrypted, not
each time one is transmitted. The production of new key values thus does not depend on, or even
correspond to, the transmission of a predetermined number of data blocks, regardless of whether
those blocks “are being transmitted” or “have been transmitted.”
In response, TQP does not point to any relationship or correspondence in the accused
systems between the production of a new key value and the time when data blocks are
transmitted. To the contrary, Dr. Jaeger states in a declaration that “SSL ships multiple blocks to
the transmitter [sic: receiver] at the same time, when certain conditions are satisfied.” Dr. Jaeger
does not assert that the “certain conditions” that must be satisfied before placing blocks onto the
communication link are the same as, or related to, the conditions necessary for production of new
key values. Nor is there any evidence that the conditions that determine how many blocks are
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stored before being sent, or the conditions that trigger when a particular group of blocks will be
sent, have any relationship to the generation of a new key value. 4
Instead, the evidence shows that the production of a new key value in the accused
systems occurs after each data block is received by the transmitter from the data source. The
evidence proffered by TQP does not establish that the production of new key values corresponds
to times when a predetermined number of blocks “have been transmitted” or times when a
predetermined number of blocks “are being transmitted,” i.e., when there is a predetermined
number of blocks in the transmitter. Nothing in the evidence shows that a new key value is
produced at the transmitter “each time” a predetermined number of blocks have been transmitted
over the link or are in the transmitter awaiting transmission. TQP has thus failed to show that
there is any causal relationship, or even any correspondence, between the production of new key
values and the times when a predetermined number of data blocks are transmitted. TQP’s
evidence shows only that key value changes occur during the same general period during which
data blocks are being transmitted.
TQP’s theory of infringement relies on the fact that that a new key value is generated to
encrypt each block of data, i.e., the predetermined number of data blocks is one. Modifying the
language of claim 1 to fit that theory, while incorporating the claim construction provided by this
4
TQP argues in passing that the defendants’ summary judgment motion is inappropriate
at this time because the parties have not yet exchanged expert reports. TQP, however, did not
make that argument when the defendants first filed their summary judgment motions or when the
parties argued the motions before the Court. Moreover, and more importantly, the parties on two
occasions jointly sought and obtained a stay of proceedings, including the preparation and
exchange of expert reports, until the briefing and decision of the summary judgment motions was
complete. TQP cannot now argue that the stay of proceedings pending the Court’s rulings on the
summary judgment motions, to which TQP agreed, has had the effect of disabling the Court from
ruling on the motions, the very thing that was the purpose of the stay motions in the first place.
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Court, illustrates why TQP has failed to show infringement. First, TQP has not shown “a new
one of said key values . . . being produced each time [one] of said blocks [has been transmitted]
over said link.” A block that has entered the transmitter has not “been transmitted” until the
transmitter has completed its processing of the block and placed it on the communication
channel. TQP has shown only that key values in the accused systems change for each new block
that enters the transmitter, not each time a single block is placed on the communication link by
the transmitter. TQP’s evidence therefore cannot establish infringement under the “have been
transmitted” portion of the Court’s claim construction.
Second, TQP has not shown “a new one of said key values . . . being produced each time
[one] of said blocks [is being transmitted] over said link.” TQP’s evidence does not show that
key-value changes are tied to the number of blocks that are being transmitted at any particular
moment, i.e., that the key value is changed each time the number of blocks in the transmitter
reaches the predetermined number one.
Instead, TQP has shown only that each time an
additional block enters the transmitter, the key value is changed, no matter how many blocks are
in the transmitter at that time. In the words of the patent, the accused systems do not “advance[]
each pseudo-random key generator each time the count [of units of data being transmitted]
reaches an agreed-upon interval number.” ’730 patent, col. 1, ll. 56-58. Indeed, the evidence
from Dr. Jaeger suggests that most blocks that enter the transmitter serve only to increase the
number of blocks in the transmitter by one because nothing is output onto the communication
channel until some relatively large number of blocks have been encrypted. TQP’s evidence is
therefore insufficient to establish that the key value in the accused systems will change each time
there is a single block in the transmitter “being transmitted.”
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In his declaration, Dr. Jaeger asserts that the accused systems produce “a new key value
each time a predetermined number of blocks are transmitted over the link, where ‘are
transmitted’ means ‘are being transmitted.’” Jaeger declaration ¶ 19. But that statement is not
supported by any analysis explaining how the production of key values is triggered by or
corresponds to the transmission of a predetermined number of blocks. It therefore amounts to a
conclusory assertion of infringement, and such conclusory assertions, even from experts, are not
sufficient to avoid summary judgment. Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d
929, 941 (Fed. Cir. 2013), quoting Sitrick v. Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir.
2008) (“Conclusory expert assertions cannot raise triable issues of material fact on summary
judgment.”); Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355, 1364 (Fed. Cir. 2010) (“An
unsupported opinion . . . cannot and does not create a genuine issue of material fact . . . .”); OnLine Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1144 (Fed. Cir. 2004)
(“[C]onclusory assertions by expert witnesses are not sufficient to avoid summary judgment.”);
Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046-48 (Fed. Cir. 2000) (same).
The defendants have therefore pointed out a flaw in TQP’s theory of infringement, even
under the Court’s claim construction: In the patented method, a new key value is produced each
time a predetermined number of data blocks are transmitted, whereas in the accused systems a
new key value is produced each time the transmitter receives a predetermined number of data
blocks (one, in the case of the defendants’ systems) from the data source.
When a party moves for summary judgment on an issue as to which the nonmoving party
bears the burden of proof, the moving party may discharge its initial burden “by ‘showing’—that
is, by pointing out to the district court—that there is an absence of evidence supporting the
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nonmoving party’s case.”
Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986); Brilliant
Instruments, Inc. v. GuideTech., LLC, 707 F.3d 1342, 1350 (Fed. Cir. 2013). That burden is not
a heavy one. The Federal Circuit has explained that in light of Celotex, “nothing more is
required than the filing of a summary judgment motion stating that the patentee had no evidence
of infringement and pointing to the specific ways in which accused systems did not meet the
claim limitations.” Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1308-09 (Fed.
Cir. 2006).
After the movant points out the absence of evidence to support the nonmovant’s case, the
burden shifts to the nonmoving party to set forth specific facts showing that there is a genuine
dispute for trial. See Simanski v. Sec’y of Health & Human Servs., 671 F.3d 1368, 1379 (Fed.
Cir. 2012) (“A party moving for summary judgment under Rule 56 . . . is not necessarily
required to submit evidence in support of its motion. Instead, when the non-moving party bears
the burden of proof on an issue, the moving party can simply point out the absence of evidence
creating a disputed issue of material fact. The burden then falls on the non-moving party to
produce evidence showing that there is such a disputed factual issue in the case.”); Arthur A.
Collins, Inc., 216 F.3d at 1046 (after the moving party points out that the evidence would be
insufficient to avoid a directed verdict, the nonmoving party is “required to designate specific
facts showing that there [is] a genuine issue for trial”). Where the nonmoving party fails to make
a showing sufficient to establish an element essential to that party's case, and on which that party
will bear the burden of proof at trial, “summary judgment is required under the plain language of
Rule 56.” Minkin v. Gibbons, P.C., 680 F.3d 1341, 1349 (Fed. Cir. 2012); see also Dairyland
Power Coop. v. United States, 16 F.3d 1197, 1202 (Fed. Cir. 1994) (“A nonmoving party's
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failure of proof concerning the existence of an element essential to its case on which the
nonmoving party will bear the burden of proof at trial necessarily renders all other facts
immaterial and entitles the moving party to summary judgment as a matter of law.”).
The defendants pointed out the absence of evidence that a new key value in the
transmitter is produced “each time a predetermined number of said blocks are transmitted over
said link,” i.e., the absence of evidence that there is a relationship between when a fixed number
of blocks are transmitted and the production of a new key value. In response, TQP failed to offer
evidence of such a relationship. 5 Because TQP’s evidence on that limitation consists only of the
conclusory assertion of its expert, it has not met its burden under Celotex, and the Court is
therefore required to grant summary judgment of noninfringement.
It is so ORDERED.
SIGNED this 20th day of June, 2014.
__________________________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
5
Although TQP complains that summary judgment should not be granted on the “limited
factual record” in this case, the summary judgment procedure dictated by Celotex requires the
nonmoving party to make a showing, once the moving party has pointed out the absence of
evidence to support the non-movant’s case, that there is a disputed issue of material fact in the
case. TQP has had two opportunities to do so, and it has filed evidence and made arguments on
the merits of the summary judgment issue on both occasions. TQP has not made the requisite
showing to this point, and the Court sees no reason to postpone entry of judgment of
noninfringement based on TQP’s claim that such a step is premature.
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TQP DEVELOPMENT, LLC,
Plaintiff,
v.
INTUIT INC.,
Defendant.
§
§
§
§
§
§
§
§
§
§
CASE NO. 2:12-CV-180-WCB
MEMORANDUM OPINION AND ORDER
On June 20, 2014, the Court granted summary judgment of noninfringment in favor of
the defendants in this case (Dkt. No. 192). Plaintiff TQP Development, LLC (“TQP”) has now
moved for reconsideration of that order (Dkt. No. 196). The Court DENIES TQP’s motion for
reconsideration.
The background relevant to the present motion is set forth in this Court’s Memorandum
and Order of June 20, 2014 (Dkt. No. 192), and will not be repeated here. TQP makes three
principal arguments why the Court should reconsider its entry of summary judgment of
noninfringement. None of those arguments is convincing.
I
The Court Did Not Apply an Incorrect Claim Construction or
Impose a Claim Limitation of Which TQP Was Unaware
TQP first argues that the Court applied an incorrect construction of the key claim
limitation in this case: “a new one of said key values in said first and said second sequences
1
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being produced each time a predetermined number of said blocks are transmitted over said link.”
U.S. Patent No. 5,412,730 (“the ’730 patent”), col. 12, ll. 46-49. According to TQP, the Court’s
summary judgment order incorrectly requires a connection between the transmission of data
blocks and the use of a new encryption key value in the transmitter. TQP asserts that neither the
claim language nor the Court’s construction of the “a new one of said key values” limitation
supports the requirement of a connection—temporal or otherwise—between transmission of data
blocks and changing the encryption key value in the transmitter.
Contrary to TQP’s contention, the language of the disputed limitation clearly requires a
connection between the transmission of data blocks and the change in key values. The limitation
reads: “a new one of said key values . . . being produced each time a predetermined number of
said blocks are transmitted . . . .” ’730 patent, col. 12, ll. 46-49 (emphases added). The entire
point of that phrase is to describe a temporal relationship between the transmission of data blocks
and the production of new key values.
Although the precise meaning of the phrase “are
transmitted” in the context of the ’730 patent has been the subject of considerable dispute in this
case, there has never been any serious question raised as to whether the “a new one of said key
values” limitation requires a connection between the production of a new key value and some act
of transmission—however that act of transmission is defined.
This Court’s claim construction, along with that of each of the other judges who have
construed the claim, 1 has consistently required a temporal connection between the production of
1
See TQP Dev., LLC v. Wells Fargo & Co., No. 2:12-cv-61, Dkt. No. 187, at 20 (E.D.
Tex. Dec. 2, 2013); TQP Dev., LLC v. 1-800-Flowers.com, Inc., No. 2:11-cv-248, Dkt. No. 226,
at 22 (E.D. Tex. May 20, 2013); TQP Dev., LLC v. Barclays PLC, No. 2:09-cv-88, Dkt. No. 165,
at 18 (E.D. Tex. Mar. 28, 2011).
2
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new key values and the transmission of data blocks. The Court initially construed the “a new
one of said key values” limitation as follows:
For both the first and second sequences, at the transmitter and at the
receiver respectively, a new key value is produced each time a
predetermined number of blocks are transmitted over the link. The term
“produced,” as used in that sentence, means “generated” or “supplied.”
The phrase “are transmitted” means “are being transmitted” with respect
to the transmitter and “have been transmitted” with respect to the receiver.
Dkt. No. 152, at 15-16. Like the language of the claims, that construction clearly requires a
particular temporal connection between the production of new key values and the transmission of
data blocks.
Subsequently, the Court modified its construction based on additional evidence submitted
by the defendants of a preferred source-code embodiment, which is part of a microfiche
appendix to the ’730 patent. Even though broadening the construction could only serve to help
TQP, the Court accepted the defendants’ argument about the source-code embodiment and
broadened the construction of the term “are transmitted” to mean either “are being transmitted”
or “have been transmitted.” Dkt. No. 192, at 17. That construction maintained the requirement
of a temporal connection between the production of new key values and the transmission of data
blocks. Indeed, TQP’s own proposed construction of the “a new one of said key values”
limitation in this case was: “a new key value in the first and second sequence is used each time a
predetermined number of blocks have been sent from the transmitter over the communication
link.” Dkt. No. 135-1, at 5 (joint claim construction chart) (emphases added). That proposed
construction also clearly calls for a temporal connection between the transmission of data blocks
and the production of new key values.
To characterize the claim language, the Court’s
3
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constructions, or TQP’s proposed construction as not requiring such a connection is simply
inaccurate.
The “a new one of said key values limitation” originated in original dependent claim 9,
which was incorporated into original independent claim 8 to form what is now claim 1 of the
’730 patent. In its initial opinion construing the “a new one of said key values” limitation, the
Court stated that “[t]he only apparent role” of original claim 9 “was to specify that the
‘predetermined characteristic’ of the data in the independent claim could be limited to ‘a
predetermined number of said blocks.’” Dkt. No. 152, at 12. According to TQP, that statement
shows that the Court previously interpreted the “a new one of said key values” limitation as not
imposing a temporal connection between the production of new key values and the transmission
of data blocks.
The Court meant no such thing. Nor is it reasonable to read the Court’s statement, in
context, in the manner TQP suggests. Original claim 9 read as follow: “The method set forth in
claim 8 wherein said data transmitted over said link comprises a sequence of blocks and wherein
a new one of said key values in said first and said second sequences is produced each time a
predetermined number of said blocks are transmitted over said link.” Accord Dkt. No. 152, at 6
(emphasis added). When the Court characterized the impact of original claim 9 in its original
claim construction order, it used the phrase “a predetermined number of said blocks” as
shorthand for “a predetermined number of said blocks [that] are transmitted over said link,” since
that is what original dependent claim 9 referred to.
Additionally, the Court’s discussion was directed to rejecting the defendants’ proposed
construction that would have limited the production of new key values to the time after the
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predetermined number of data blocks had been transmitted. Id. at 12. The Court found instead
that the ’730 patent disclosed a system whereby key values could be produced based on a count
of the number of data blocks being transmitted, even if the transmission of those blocks was not
yet completed. In other words, the Court was resolving a dispute about whether the phrase “are
transmitted” referred to blocks that had already been transmitted or blocks that were in the
process of being transmitted. See id. at 11-16. The Court never implied that some tie to an act
of transmission—however defined—was not required. Any doubt on that point should have been
resolved by the actual claim construction issued at the end of the Court’s opinion.
That
construction clearly required a relationship between the production of new key values and the
times when a predetermined number of blocks “are being transmitted.” Id. at 15-16.
TQP next argues the embodiment depicted in Figure 1 of the ’730 patent shows that there
is no required temporal relationship between the production of new key values and the
transmission of data blocks. In support of that argument, TQP offers the opinion of its expert
that Figure 1 “does not expressly disclose a temporal link between use of a new key value and
the process of transmission.” Dkt. No. 196-1 ¶ 15. That argument fails for several reasons.
First, contrary to TQP’s expert, the description of Figure 1 in the ’730 specification discloses a
temporal link between the use of a new key value and the process of transmission, in the course
of generating encrypted data in the transmitter.
See ’730 patent, col. 3, ll. 36-40 (“[T]he
combination of counter 21 and generator 23 operate to change the encryption key each time [the]
total number of bytes transmitted is an exact multiple of the predetermined interval number.”).
The block counter and generator in the receiver mirror the operation of the block counter and
generator in the transmitter. See id., col. 3, line 64-col. 4, line 1 (“Block counter 29 performs the
5
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identical function as that performed by the counter 21 at the transmitting station 11 and hence
supplies advance signals to the generator 27 at precisely the same times (relative to the data
stream) that counter 21 advances generator 23.”). That parallelism in the functioning of the
transmitter and receiver indicate that the same temporal link that applies to the transmitter
applies to the receiver as well.
Further evidence of a required temporal connection between the generation of a new key
value and the transmission of data blocks is found in the portion of the specification that
describes the invention as a whole.
Consistently with description of Figure 1, but more
explicitly, the specification there provides: “In order that the two generators switch from one
output key value to the next in synchronism, means are employed at both the transmitting and
receiving stations to monitor the flow of transmitted data and to advance the random number
generator each time the transmitted data satisfies a predetermined condition.” ’730 patent, col. 1,
ll. 48-53 (emphasis added).
Finally, and dispositively, the “a new one of said key values” limitation expressly
provides for a temporal relationship between the production of new key values and the
transmission of data blocks both in the receiver and in the transmitter. The limitation requires “a
new one of said key values in [both the transmitter and receiver] being produced each time a
predetermined number of said blocks are transmitted over said link.” ’730 patent, col. 12, ll. 4649. Even if we were persuaded that Figure 1, as described in the specification, did not require a
connection between the production of new key values and the transmission of data blocks, the
claim language is clear in that regard and governs the scope of the patent. See Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc); Zenith Labs., Inc. v. Bristol-
6
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Myers Squibb Co., 19 F.3d 1418, 1423 (Fed. Cir. 1994) (in an infringement analysis “the only
proper comparison is with the claims of the patent”).
II
The Court Did Not Substitute Its Judgment for that of a Jury
TQP’s second argument is that the issue on which the Court granted summary judgment
presented a jury question. In TQP’s view, its evidence created a genuine issue of material fact
that should not have been decided by the Court. According to TQP, “the Court granted summary
judgment because it found that TQP was required to present evidence showing that the encrypted
blocks were also transmitted.” TQP thereby implies that summary judgment would not have
been granted if there were evidence that the encrypted blocks were transmitted. That is not an
accurate description of the ground for the Court’s ruling, however. The Court has never doubted,
nor have the defendants contested, that the accused systems transmit every block that is
encrypted. What the Court found lacking was proof that new key values are produced in the
accused systems “each time a predetermined number of said blocks are transmitted over [the
communication] link.”
TQP argues that having demonstrated facts that it contends show that the “a new one of
said key values” limitation was met, “the question of whether (1) use of a new key value when a
block is encrypted by the transmitter for transmission is the same as (2) using a new key value
when a block is transmitted is now a question of fact for the jury to decide.” But as the Court
found in its summary judgment opinion, TQP never introduced evidence sufficient to show that
the “a new one of said key values” limitation is practiced by the accused systems. See Dkt. No.
192, at 24. Furthermore, encryption and transmission are distinct actions. The fact that every
7
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block that is encrypted will also be transmitted does not mean that encryption and transmission
are the same or that the steps of encryption and transmission would correspond to key changes in
the same way.
At best, TQP’s attempt to equate encryption and transmission amounts to an argument for
infringement under the doctrine of equivalents—i.e., that changing key values each time a
predetermined number of blocks are encrypted is equivalent to changing key values each time a
predetermined number of blocks are transmitted. TQP, however, has conceded that it is barred
by prosecution history estoppel from asserting infringement under the doctrine of equivalents for
the “a new one of said key values” limitation. Dkt. No. 132, at 2 n.2 (“TQP does not contest
Defendants’ arguments concerning the doctrine of equivalents.”). TQP therefore cannot now
argue that counting the number of blocks encrypted since the previous key change is equivalent
to counting the number of blocks that “are being transmitted” or “have been transmitted.”
III
TQP’s New Evidence is Not Material to Infringement
TQP asserts that had it been aware that the Court would construe the ’730 patent as
requiring a connection between the production of new key values and transmission of data
blocks, it would have presented evidence in the form of a declaration from its expert—Dr. Trent
Jaeger—that the accused systems have such a connection. According to TQP, Dr. Jaeger’s new
declaration creates a dispute of fact as to whether the “a new one of said key values limitation” is
met by the accused systems when that limitation “includes the temporal relationship between the
process of transmission and use of a new key value . . . i.e., that the use of a new key value must
be based on when a block is in the process of transmission or is being transmitted.”
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TQP’s argument is implausible on its face. Essentially, TQP’s argument is that it did not
proffer Dr. Jaeger’s new declaration at an earlier point because it was not previously aware that
the Court would require “that the use of a new key value must be based on when a block is in the
process of transmission or is being transmitted.” But that requirement was plainly set forth in the
Court’s initial claim construction order, which construed the disputed limitation to include the
requirement that “a new key value is produced each time a predetermined number of blocks are
transmitted over the link. . . . The phrase ‘are transmitted’ means ‘are being transmitted’ with
respect to the transmitter . . . .” Dkt. No. 152, at 16. And, as already described, the requirement
of a connection between the transmission of data blocks and the production of new key values is
clear on the face of the disputed limitation; indeed, it was present in TQP’s own proposed
construction, even if the exact nature of that connection was disputed.
Furthermore, Dr. Jaeger’s declaration does not add any information that the Court
considers “new” or that would impact the Court’s judgment.
TQP relies on Dr. Jaeger’s
declaration for the proposition that “there is no distinction between encryption and transmission
with regard to production and use of a new key value.”
Dkt. No. 196-1 ¶ 14 (Jaeger
Declaration). Dr. Jaeger reaches that conclusion because every data block produced in the
accused systems “will be both encrypted and transmitted using the same key value.” Id. ¶ 9.
Therefore, according to Dr. Jaeger, “there is already a temporal link between use of a new key
value and transmission.” Id. The Court, however, already knew that every encrypted block at
the transmitter was eventually transmitted, and the Court assumed as much in its summary
judgment analysis. The fact that every encrypted block will eventually be transmitted simply
does not support Dr. Jaeger’s statement that “there is no distinction between encryption and
9
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transmission with regard to production and use of a new key value.” As already described,
encryption and transmission are distinct events that can each maintain a separate relationship
with respect to the production of new key values.
Beyond that, Dr. Jaeger’s conclusion that “there is already a temporal link between the
production and use of a new key value and transmission” misses the point. The “a new one of
said key values” limitation is not satisfied by just any temporal connection; it is satisfied only by
the particular temporal connection described in the claim: that a new key value is produced “each
time a predetermined number of . . . blocks are transmitted over said link.” ’730 patent, col. 12,
ll. 48-49 (emphases added). Dr. Jaeger’s declaration does not address the particular temporal
connection required by the claims and therefore does not address the underlying reason why
summary judgment was granted in this case.
Similarly, Dr. Jaeger’s statement that the accused systems “produce[] a new key value for
every block that is being transmitted” does not address the temporal connection required by the
claims. What matters is that a new key value is produced “each time” a single block is being
transmitted or a single block has been transmitted, not simply that each block gets a new key
value.
The Court thus concludes that TQP has offered no valid excuse for failing to present its
alleged new evidence at an earlier time. Moreover, that evidence does nothing to further TQP’s
infringement case and would not have changed the outcome with respect to the Court’s grant of
summary judgment in the defendants’ favor, even if it had been timely presented to the Court.
For the foregoing reasons, TQP’s Motion for Reconsideration is denied.
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It is so ORDERED.
SIGNED this 23rd day of July, 2014.
______________________________
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
11
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As discussed above, the Court heard argument from the Parties on this issue, and the
Parties were given the opportunity to state their evidence and contentions on this issue. The
Court, having reviewed the Parties briefing and their arguments at the hearing, finds that the
evidence does not support a finding that one of the exceptions to rebut the presumptive
application of prosecution history estoppel exists.
TQP is therefore barred, by the doctrine of prosecution history estoppel, from arguing the
doctrine of equivalents in regards to the relevant limitation of Claim 1 of the ’730 Patent.
CONCLUSION
For the foregoing reasons, TQP’s Motion in Limine to Exclude Evidence and Argument
. Relating to Prosecution History Estoppel to the Jury is GRANTED, to the extent that the issue
will not be presented to the jury. However, the Court holds that TQP is barred, by the doctrine of
prosecution history estoppel, from arguing the doctrine of equivalents in regards to the following
limitation of Claim 1 of the ’730 Patent:
generating a second sequence of pseudo-random key values based
on said seed value at said receiver, each new key value in said
sequence being produced at a time dependent upon said
predetermined characteristic of said data transmitted over said link
such that said first and second sequences are identical to one
another, a new one of said key values in said first and said second
sequences being produced each time a predetermined number of
said blocks are transmitted over said link, and
SIGNED this 3rd day of January, 2012.
SIGNED this 8th day of November, 2013.
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
- 12 -
A0262
119
1
as part of that process.
2
3
Q
Which claims of the '730 patent did you
analyze for your infringement analysis?
4
A
We'll discuss today 1, 6, 8, and 9.
5
Q
Okay.
6
A
And I -- I looked at others as well over the
7
course of my analysis.
8
Q
9
10
11
12
13
Okay.
MR. GIZA:
Okay.
Let's go to the next
slide.
Q
(By Mr. Giza) This is Claim 1.
Can you walk
us through the language of Claim 1 at a high level?
A
Sure.
So we're going to go into this in --
14
in a lot of detail, so I'm just going to touch on -- on
15
the claim language here.
16
So Claim Element 1(a) describes a method for
17
transmitting data.
18
from a transmitter to a receiver, and this data is going
19
to consist of encrypted blocks of data.
20
will be cut up into blocks and encrypted, and there will
21
be a sequence of these blocks.
22
So this data is going to be sent
So the data
Claim Element 1(b) describes providing a
23
seed value to the transmitter and the receiver.
They
24
say a seed value, so this is the same seed value to both
25
the transmitter and the receiver.
A0381
120
1
Claim Element 1(c) is a little longer,
2
but it talks about -- speaks about generating first
3
sequence of the pseudo-random key values you heard about
4
a little while back, based on the seed value -- and this
5
is at the transmitter.
6
7
Claim Element 1(d) uses the sequence to
encrypt the data.
8
9
10
Claim Element 1(e) is even longer.
It
talks about generating a second of pseudo-random key
values based on seed value at the receiver.
11
And then it places some constraints on
12
the relationship between the first sequence and the
13
second sequence so that this works out because you need
14
to be able to decrypt the data at the receiver in
15
accordance with the second sequence, and you need to get
16
the data you originally sent in the first place.
17
Q
And then what's the last one?
18
A
Decrypting the data on the receiver.
19
Q
Thank you.
20
21
22
Can you explain, using a figure from the
patent, how Claim 1 works?
A
So this is the -- the main figure, Figure 1,
23
from the '730 patent.
24
diagram.
25
the moment.
It represents a functional
I'm going to try the laser pointer here for
A0382
121
1
So on the top, we have the transmitter, or
2
transmitting station, you'll see it called, okay?
3
on the bottom, we have the receiver or the receiving
4
station.
5
And
Both of these have functional elements for
6
pseudo-random number generation.
7
going to be doing encryption, and the receiver is going
8
to be doing decryption.
9
And the transmitter is
So this -- what I want to do is show you
10
how -- how things happen.
11
this functional diagram, we've created a -- whoops --
12
we've created an animation.
13
So rather than -- than using
So I'm going to show you how this -- how
14
these claim elements work in terms of an animation.
The
15
animation here, we've converted all the functional
16
elements to -- to icons and included all of the -- the
17
flows disclosed in the patent.
18
And -- but for the block counter, we don't
19
need that because it's not a requirement of the claims
20
that we'll be looking at.
21
simpler figure.
22
Q
So we'll use this somewhat
Professor Jaeger, were you in the room, in
23
the courthouse (sic) here when Mr. Jones gave his
24
testimony?
25
A
Yes, I was.
A0383
122
1
Q
Is this essentially the same animation?
2
A
Yes, it is.
3
Q
Okay.
Can you show us how the steps of
4
Claim 1 look on your animation as we go through the
5
claims?
6
Now, when Mr. Jones gave his testimony, he
7
didn't talk about the claims of the patent, so I need
8
you to do that.
9
A
10
Yes, I can.
So -- so, basically, we're trying to get
11
data from the data source to this data utilization
12
circuit.
13
card information, and you want to ensure that this is
14
protected in -- in -- in its transmission.
So you're sending something, maybe your credit
15
So the first claim element, 1(a), describes
16
a system for transmitting data comprising a sequence of
17
blocks in encrypted form over a communication link -- so
18
between two computers.
19
One is called the transmitter.
That's --
20
the sender of the data is called the transmitter to a
21
receiver, okay?
22
the top.
23
And so, again, the transmitter is on
The receiver is on the bottom.
Now, what you're going to do is send
24
these -- a sequence of blocks in encrypted form, so
25
it's -- the output of the encryptor is going to be
A0384
123
1
transmitted to the -- from the transmitter to the
2
receiver over the communication link as shown here.
3
Q
Okay.
And what's the next step?
4
A
The next step describes providing a seed
5
value.
And here you can see we have this seed value.
6
And they look the same because they -- they have to be
7
the same.
8
receiver.
It's a seed value to both the transmitter and
9
Q
Okay.
What happens next?
10
A
Next a seed value is used on the transmitter
11
by this functional element, the pseudo-random number
12
generator.
13
described earlier, will generate a sequence of
14
pseudo-random numbers.
The pseudo-random number generator, as
15
This is called the first sequence on the
16
transmitter.
We call them keys here because we're going
17
to use them for encryption.
18
of pseudo-random key values based on said seed value at
19
said transmitter, says the first half of Claim 1(c).
20
Q
Okay.
21
A
Okay.
So this is a first sequence
And then the second half starting
22
with each key value or each new key value in the second
23
line is:
24
produced at a time dependent upon a predetermined
25
characteristic of the data being transmitted over said
Each new key value in said sequence being
A0385
124
1
link.
2
So here we have the item of this
3
predetermined characteristic and -- so that the data may
4
have some -- some property, we're going to talk -- we're
5
showing you what we'll call a block of data, which is
6
some size of data being -- it's the data being
7
transmitted.
8
9
And when this predetermined characteristic
is met, then a new key value is produced for that data.
10
Q
Okay.
And then what happens next?
11
A
Next, now that we have the key value and the
12
data, we have the information necessary to do the
13
encryption.
14
have our first block of encrypted data, or you may hear
15
the term cipher text from time to time.
16
So we're going to encrypt the data, and we
Now, the last part says:
In accordance with
17
said first sequence.
18
blocks that you want to send.
19
big message.
20
predetermined characteristic is satisfied again.
21
second key value from this first sequence is used to
22
encrypt the data and so on.
23
24
25
Q
So there may be, of course, many
You may want to send a
So then a second block may arrive.
Okay.
The
A
Now that you have some encrypted
blocks of data, what can you do?
A
Well, we can transmit them, as required in
A0386
125
1
Claim Element 1(a), which is a method for transmitting
2
data comprising a sequence of blocks.
3
So we have our sequence of blocks.
They're
4
in encrypted form over a communication link from the
5
transmitter to the receiver.
6
Q
7
what happens?
8
A
9
10
11
Okay.
Yeah.
So now we're at the receiver.
Then
So the receiver -- this is a very
long Claim Element 1(c), but the first part of it has a
lot of similarity.
So seed is going to be used by the
12
pseudo-random number generator on the receiver to
13
produce a second sequence of pseudo-random -- I'll call
14
them key values; they're numbers still -- based on the
15
seed at the receiver.
16
Again -- excuse me, again.
These key values
17
will be -- from the sequence will be produced at a time
18
dependent on the predetermined characteristic of the
19
data transmitted.
20
of data, produce a new key value.
21
So when the receiver receives a block
Now, there's some additional constraints
22
on -- in Claim 1(e) about the -- the relationship; for
23
example, between the sequences.
24
says the first and second sequences are identical.
25
So here the bolded part
So if there are differences in the first and
A0387
126
1
second sequence, then we won't be able to decrypt the
2
data properly and get our proper plain text back.
3
And as was mentioned earlier this morning
4
using this pseudo-random number generator, if you have
5
the same seed value, you'll produce the same sequence of
6
numbers.
7
So this requires explicitly that the first
8
and second sequences are identical to one another.
And
9
additionally, there's a more specific limitation on the
10
predetermined characteristic where it's said to be a
11
predetermined number of said blocks.
12
13
14
15
Q
Okay.
And in your example here, what's the
predetermined number?
A
My example is showing the predetermined
number of said blocks.
Be one block.
16
Q
So one key for one block?
17
A
One key for one block, yes.
18
Q
Okay.
19
A
Well, then we can do the decryption.
And then what happens?
So we
20
can do this first decryption, and we have the key in
21
the -- on the cipher text.
22
original plain text.
23
We now will produce the
And, again, we will continue to do the
24
decryption in accordance with the second sequence so we
25
get the -- all the data that we wanted to send.
A0388
12
1
2
3
Q
Okay.
And do you have any -- any evidence
that further supports what you just said?
A
Yes.
So to be a little more specific, RC4
4
combines one block of data with one key value -- the key
5
value happens to be the same size as the -- the data in
6
RC4 -- and one block of ciphertext.
7
8
9
Q
And, again, you know the operation of RC4
based upon your experience with the algorithm itself?
A
That's correct.
And there are also
10
descriptions of RC4 available, such as this one from the
11
book Applied Cryptography by Bruce Schneier, where he
12
states that a byte K -- so K is the key value -- is
13
what's called XOR'd or exclusive OR'ed -- that's the
14
operation for combining plaintext with a key to perform
15
the encryption.
16
It's used sometimes to do encryption to --
17
so it combines this byte of key with -- byte of
18
plaintext because they need to be the same size to
19
produce a byte of ciphertext.
20
Q
And Mr. Schneier and this book, Applied
21
Cryptography, is this the book that Mr. Jones referred
22
to in his testimony?
23
A
I believe so, yes.
24
Q
What is the predetermined characteristic in
25
the combination of SSL and RC4?
A0454
13
1
A
The predetermined characteristic is one
2
block of data.
3
1 byte.
4
different than that, but that's how we normally think of
5
it as -- as 1 byte.
6
7
8
9
Q
In Mr. Schneier's description, it's
And in some implementations, it may be a little
A block is a byte, 8 bits.
Is the one block characteristic of SSL and
RC4 predetermined?
A
Yes, it is.
It's built into the RC4 code.
It's not any kind of input parameter.
It's the way that
10
the implementation will work.
11
obviously, before you're doing any encryption.
12
13
14
Q
And the code is there,
Do you have any further evidence that
supports your understanding of this element?
A
So Dr. Rivest, he states that RC4 uses a
15
byte of pseudo-random sequence for each byte of data
16
stating -- so the encryption algorithm will generate a
17
byte of pseudo-random sequence for each byte of
18
plaintext, yes.
19
20
21
Q
Okay.
Can you show us how Newegg's use of
SSL and RC4 meets this part of 1(c)?
A
So this shaded area here refers to the --
22
the domain of the RC4 algorithm.
It's received the seed
23
value from -- from SSL handshake.
24
pseudo-random number generator, produces this first
25
sequence of seed values.
RC4 implements the
A0455
23
1
A
Yes, it is.
2
Q
What is the predetermined number of blocks
3
4
in SSL and RC4?
A
RC4 defines a predetermined number of blocks
5
in one -- as one, and it's the -- it is that way within
6
SSL or TLS as well.
7
Q
And how do you know this?
8
A
As we discussed, RC4 combines one block of
9
10
11
12
ciphertext with one block of key value, same size, to
what is one block -- block.
Q
And you know this based upon your experience
with RC4?
13
A
Yes.
14
Q
Do you have any additional evidence that
15
16
supports your understanding?
A
Yes.
So the -- the book we've looked at a
17
couple of times also describes decryption, stating that
18
a byte K -- we -- we use the same operation for -- for
19
decryption as encryption.
20
Turns out XOR is reversible.
So you can
21
combine 1 byte of cipher text to produce 1 byte of
22
plaintext using the -- the key value of the size 1 block
23
or 1 byte.
24
25
Q
And is the number of blocks in RC4
predetermined?
A0465
54
1
A
All right.
2
Q
And how many bytes would that be?
3
200 bytes, correct?
4
A
Be 160 bytes.
5
Q
160 bytes.
6
A
Would be -- if a block is 1 byte, as in
7
8
9
10
11
How many blocks is that?
Schneier's description, it would be 20 blocks.
Q
In the Newegg system, is a new key used to
encrypt each one of those bytes?
A
In the Newegg system, a new key is produced
to encrypt each of those blocks.
12
Q
And how many of those blocks is that again?
13
A
20.
14
Q
Now, after those encrypt -- those -- that
15
data is encrypted, is that entire 200-byte web page sent
16
at once from the Newegg transmitter, or is it sent byte
17
by byte in 200 different transmissions?
18
A
Well, it's 160 bytes.
19
Q
I'm sorry.
20
A
And it's transmitted however the lower
21
22
layers want to transmit it.
Q
For 2 -- I'm sorry -- for 160 bytes, do you
23
know whether that's -- in the Newegg system, whether
24
that's transmitted all at once or whether it's
25
transmitted in 160 different pieces being sent one at a
A0496
55
1
2
time over the Internet?
A
Well, so SSL and TLS don't determine that.
3
But my -- my experience is that that's smaller than the
4
maximum packet size, so -- so likely it would be
5
transmitted in one.
6
Q
All at one time?
7
A
Yeah.
8
Q
So in that instance in the Newegg system, an
9
encryption key -- a new encryption key is used to
10
encrypt Byte No. 2 before encrypted Byte No. 1 is sent
11
over the Internet, correct?
12
A
That's true, but that -- that isn't -- that
13
isn't related to the claim language, as I understand --
14
or the claim construction, as I understand it.
15
Q
16
17
18
19
Let's take a look at your slide -MR. BALDAUF:
Mr. Patterson, could you
bring up their Slide 67 and 68?
Q
(By Mr. Baldauf) Now, do you recall
explaining this during your direct testimony?
20
A
Yes, I do.
21
Q
Now, the green box, what is that?
22
A
The green box is a block of encrypted data.
23
Q
And what is the blue box that's still inside
24
25
the -- the pink square?
A
The encryptor.
That's a block that
A0497
123
1
whether there was anything in the claims that required
2
when a sequence of blocks could be sent.
3
4
5
6
7
Did you say that there was nothing in the
claims that limited that?
A
When the blocks are -- nothing that limits
when blocks can be sent?
Q
With respect to when a key value is used, do
8
you agree with me that the claim requires that a new key
9
value can be used only when the previously encrypted
10
11
block has been transmitted over the communication link?
A
12
I see.
Yeah.
So what I was referring to was the
13
transmitter -- that there wasn't a limit on when --
14
constraint on when the transmitter could send the block.
15
But there is a limitation, as you point out
16
here, that the new key value, which is the same value,
17
and needs to be the same value in the
18
transmitter/receiver for things to work.
19
So the new key value in the first and second
20
sequence is used -- at this time the block has been sent
21
because this is part of 1(e), which is describing what's
22
going on in the receiver.
23
to use the same key value as the transmitter.
24
25
Q
It's saying the receiver has
But this construction requires -- has been
sent from the transmitter over the communication link,
A0565
124
1
correct?
2
A
Yes.
3
Q
So we're talking about when blocks are being
4
sent from the transmitter to the receiver, correct?
5
6
A
No.
What we're talking about -- the fact
that they have been sent.
7
Q
Correct, have been sent.
8
A
Yes.
9
Q
Okay.
10
11
Thank you.
MR. BALDAUF:
Nothing further, Your
Honor.
12
THE COURT:
13
MR. GIZA:
14
Mr. Wietholter, could I please get
15
18
19
20
21
22
23
24
25
Thank you, Your Honor.
Slide 64?
16
17
Redirect, Plaintiff?
REDIRECT EXAMINATION
BY MR. GIZA:
Q
Professor Jaeger, do you still have the
remote control?
A
No, I don't.
MR. GIZA:
Can we provide Professor
Jaeger with the remote?
THE TECHNICIAN:
May I approach the
witness, Your Honor?
THE COURT:
You may.
A0566
130
1
Q
What is the first sequence?
2
A
The first sequence is the sequence of
3
pseudo-random key values on the transmitter.
4
Q
So this claim construction is a new key
5
value, and the first and the second sequence is used
6
each time a pre -- predetermined number of blocks have
7
been sent from the transmitter over the communication
8
link.
9
Did I read that correctly?
10
A
Read the words correctly, yes.
11
Q
And what you have in this animation -- you
12
show that we've got one block, the green block, and two
13
blocks -- the second block, the blue block -- block,
14
they've been encrypted already, correct?
15
A
As is shown here, yes.
16
Q
And they've each been encrypted using a
17
18
19
20
different key value, correct?
A
Block 1 was encrypted with a different key
value than Block 2, yes.
Q
So Block 2, the blue block, is being
21
encrypted using a new key value before Block 1 has been
22
transmitted across the communication link, correct?
23
A
That's correct.
24
Q
Thank you.
25
MR. BALDAUF:
I have nothing further.
A0572
32
1
So the steps -- the requirements of Claim 1 have got to
2
be satisfied for any of the dependent ones to be.
3
4
Q
And how many limitations of a claim must be
satisfied for there to be infringement?
5
A
All of them.
6
Q
I'd like you to take -- talk to you now
7
about the limitation that's designated on this board as
8
1(d), generating a second sequence.
9
10
11
MR. BALDAUF:
Mr. Patterson, can we pull
up Dr. Jaeger's Slide 68 from yesterday?
Q
(By Mr. Baldauf) Dr. Stubblebine, looking at
12
Dr. Jaeger's own slide, what does this tell us about
13
whether or not this limitation can be satisfied?
14
A
This tells us that it's not satisfied
15
because the Court's construction that's at the bottom
16
wasn't satisfied.
17
Q
And can you please explain that.
18
A
Yes.
The Court's construction says that new
19
key value in the first and second sequence is used each
20
time a predetermined number of blocks have been sent
21
from the transmitter over the communication link.
22
And what Dr. Jaeger was accusing as that
23
predetermined number is one block.
And so one block has
24
got to be sent before you use the next key to encrypt
25
the next block, and that's not what's going on.
A0625
Civil Justice Reform Act of 1990
Report of Motions Pending More Than Six Months,
Bench Trials Submitted More Than Six Months,
Bankruptcy Appeals Pending More Than Six Months,
Social Security Appeal Cases Pending More Than Six Months, and
Civil Cases Pending More Than Three Years on
September 30, 2014
Introduction
The Civil Justice Reform Act of 1990 (CJRA) requires the Director of the
Administrative Office of the United States Courts (AO), under 28 U.S.C. § 476, to
prepare a semiannual report showing, by U.S. district judge and U.S. magistrate
judge, all motions pending more than six months, all bench trials that have remained
undecided more than six months, and all civil cases pending more than three years.
In accordance with the policy of the Judicial Conference of the United States, this
report also presents data on bankruptcy appeals pending more than six months (Rpt. of
Proc. of JCUS, Mar. 10, 1998, at 11) and Social Security appeals pending more than
six months (Rpt. of Proc. of JCUS, Sept. 15, 1998, at 63). The reporting requirements
under the CJRA are designed to help reduce both costs and delays in civil litigation
in the district courts. The information also may be used to evaluate demands on the
district courts’ resources.
The CJRA report is prepared through the use of the Case Management/Electronic
Case Files (CM/ECF) system. As a result, pending motions, bench trials, threeyear-old cases, bankruptcy appeals, and Social Security appeals are reported in a
standardized and consistent fashion.
Appendix A provides data for each district judge and magistrate judge on
motions pending, bench trials submitted, cases pending more than three years,
bankruptcy appeals pending, and Social Security appeals pending. The CJRA requires
the AO Director to establish uniform standards for determining when a motion, bench
trial, case, or bankruptcy appeal is “pending”; Appendix B lists these definitions.
Along with the semiannual consolidated national report, the AO prepares a
supplemental report, A Report on Motions Pending for More Than Six Months,
Bench Trials Submitted for More Than Six Months, Bankruptcy Appeals Pending for
More Than Six Months, Social Security Appeals Pending for More Than Six Months,
and Civil Cases Pending Three Years or More, that provides detailed information
regarding the individual cases, motions, bench trials, and appeals pending in the
district courts. This document is available to the public through the district courts,
the executive offices of the U.S. courts of appeals, the AO, and the Federal Judiciary
website www.uscourts.gov.
Report Findings
The information in this report presents what may best be described as a “snapshot”
of motions pending more than six months, bench trials submitted more than six
months, civil cases pending more than three years, bankruptcy appeals pending
more than six months, and Social Security appeals pending more than six months on
1
A0777
Fifth Circuit (Continued)
Civil
District Judges and
Cases Motions Bench Trials Bankruptcy Social Security
Magistrate Judges
Pending Pending Submitted
Appeals
Appeals
Texas Eastern
21
20
0
3
0
258
132
3
15
0
District Judges
18
14
0
3
0
SCHELL, RICHARD A.
7
1
0
0
0
HEARTFIELD, THAD
1
1
0
0
0
DAVIS, LEONARD E. (CJ)
5
0
0
0
0
CLARK, RON
2
12
0
3
0
CRONE, MARCIA A.
2
0
0
0
0
SCHNEIDER, MICHAEL H.
0
0
0
0
0
GILSTRAP, JAMES R.
1
0
0
0
0
Magistrate Judges
3
6
0
0
0
CRAVEN, CAROLINE M.
1
0
0
0
0
BUSH, DONALD D.
0
0
0
0
0
GIBLIN, KEITH F.
0
0
0
0
0
LOVE, JOHN D.
0
0
0
0
0
MAZZANT, AMOS
1
1
0
0
0
HAWTHORNE, ZACK
0
0
0
0
0
PAYNE, ROY S.
1
5
0
0
0
MITCHELL, K. NICOLE
0
0
0
0
0
Texas Southern
District Judges
238
116
3
15
0
KAZEN, GEORGE P.
1
5
0
0
0
HEAD, HAYDEN W., JR.
0
0
0
0
0
HINOJOSA, RICARDO H. (CJ)
7
2
0
0
0
HUGHES, LYNN N.
11
66
1
3
0
HITTNER, DAVID
2
0
1
0
0
HOYT, KENNETH M.
21
3
0
0
0
LAKE, SIMEON TIMOTHY, III
6
0
0
3
0
HARMON, MELINDA
12 1 12
0
2
0
RAINEY, JOHN D.
0
0
0
0
0
WERLEIN, EWING, JR.
2
0
0
0
0
ROSENTHAL, LEE H.
5
5
0
1
0
JACK, JANIS GRAHAM
1
0
0
0
0
GILMORE, VANESSA D.
3
1
0
0
0
ATLAS, NANCY F.
0
0
0
0
0
TAGLE, HILDA G.
1
2
0
0
0
ELLISON, KEITH P.
13 2 3
0
1
0
CRANE, RANDY
2
2
0
0
0
HANEN, ANDREW S.
136 3 2
0
1
0
Three-year-old caseload consists mostly of cases related to multidistrict litigation.
Three-year-old caseload consists mostly of cases related to BP Securities multidistrict litigation.
3
Three-year-old caseload consists mostly of cases related to border fence condemnation.
1
2
(CJ) = Chief Judge
(VJ) = Visiting Judge
29
A0805
Appendix B.
Definitions
All active and senior district court judges, as well as all full-time and part-time magistrate
judges, must report pending matters. Several issues relevant to the reporting of cases pending for
more than three years include the following.
• With respect to cases pending for more than three years that have been assigned to district judges and magistrate judges from outside the districts where the cases originated, such
cases are included in the totals for the districts where they were filed originally. Sometimes a
block of cases or a class of cases that are similar in nature is assigned to a single judge. Such cases
often require lengthy litigation when they involve complex issues and large numbers of parties.
• This report includes some asbestos cases. The Judicial Panel on Multidistrict Litigation
(MDL) authorized the transfer of most of the pending asbestos personal injury/product liability
cases to the Eastern District of Pennsylvania under Order Number 875. Asbestos cases that have
remained in the districts where they were filed originally or that were transferred back to the
original districts are included in this report. However, those cases transferred according to MDL
Order Number 875 are excluded. All other MDL cases are included in this report.
Cases Pending More Than Three Years. The CJRA requires a report, by district judge and
magistrate judge, of cases pending more than three years in the district courts. A case becomes
pending as of the date the case originally was filed in the district court or the date the case was
reopened, whichever is later. If a case has not been disposed of within three years after its filing
date or reopening date, the case shall be reported as pending more than three years.
Motions Pending More Than Six Months. The CJRA mandates a report enumerating all
motions that have been pending six months or longer. A motion is a request made to a district
judge or magistrate judge for an order, ruling, or similar determination. The opposing party has
30 days from the date of a motion’s filing to respond to it. A motion becomes pending 30 days
after the date it was filed or was referred to a magistrate judge, whichever is later. If no decision
on a motion has been filed within six months after the date the motion became pending, and
the motion has not been referred to a magistrate judge, the motion shall be reported as pending
more than six months before the presiding judge. If a motion is referred to a magistrate judge,
the magistrate judge must file a report and make a recommendation for, or dispose of, the motion within six months after the date the motion became pending, or the motion shall be reported as pending for both the district judge and the magistrate judge.
Bench Trials Submitted More than Six Months. The CJRA requires the AO to prepare a
report of bench trials submitted more than six months. In a bench trial, the judge (rather than
a jury) decides the facts of the case. A bench trial is considered to be submitted on the date the
courtroom proceedings are concluded. If a judge fails to file an opinion within six months after a
bench trial was submitted, the bench trial shall be reported as submitted more than six months.
Bankruptcy Appeals Pending More Than Six Months. In accordance with an action of
the March 1998 Judicial Conference, the CJRA now requires a report, by district judge and
magistrate judge, of bankruptcy appeals pending more than six months in the district courts. A
bankruptcy appeal becomes pending as of the date the appeal originally was filed in the district
66
A0842
court or the date the case was reopened, whichever is later. If an appeal has not been disposed of
within six months plus 60 days after its filing date or reopening date, the appeal shall be reported
as pending more than six months.
Social Security Appeals Pending More Than Six Months. In accordance with an action of
the September 1998 Judicial Conference, the CJRA now requires a report, by district judge and
magistrate judge, of Social Security appeal cases pending more than six months in the district
courts. A Social Security appeal case becomes pending as of the date of the filing of the latest
transcript in such case. If a case has not been disposed of within six months plus 120 days after
its filing date, the case shall be reported as pending more than six months.
67
A0843
CJRA Table 7W––Report Of Civil Cases Pending Over Three Years
For Period Ending September 30, 2014
056
5TH Circuit
U.S. District Court for TEXAS EASTERN
District
A2040
District Judge GILSTRAP, JAMES R.
Nature of Suit
Case Title
CJRA
Deadline
Status
Status Description
Insurance
Yule v. Blue Cross Blue Shield of Texas, a Division of
09/14/2014
O
Judicial Officer Action Delayed by Illness
Insurance
Yule v. Blue Cross Blue Shield of Texas, a Division of
09/14/2014
V
Change of Counsel
Insurance
Yule v. Blue Cross Blue Shield of Texas, a Division of
09/14/2014
X
Trial Scheduled
Total All Cases for District Judge : GILSTRAP, JAMES R.
Run : 05/05/2015
1
1
c
1
v
1
0
c
0
1
v
4
1
1
0
0
c
0
v
4
1
0
0
0
4
1
0
1
1,284 of 3,463
A0850
CJRA Table 8W––Report Of Motions Pending Over Six Months
For Period Ending September 30, 2014
056
5TH Circuit
U.S. District Court for TEXAS EASTERN
A2040
District
District Judge GILSTRAP, JAMES R.
Nature of Suit
Case Title
There are no events of this type to
report
Total Cases for District Judge : GILSTRAP, JAMES R.
Motion Text
Status
Status Description
0
* Filed at same time as first item listed in this box in a multipart motion. Each multipart motion is counted as a single motion regardless of the number of parts.
Magistrate
830 of 2,167
Run : 05/05/2015
A0851
CJRA Table 9W––Report Of Bench Trials Submitted Over Six Months
For Period Ending September 30, 2014
056
5TH Circuit
U.S. District Court for TEXAS EASTERN
A2040
District
District Judge GILSTRAP, JAMES R.
Nature of Suit
Case Title
There are no events of this type to report
Total Cases for District Judge : GILSTRAP, JAMES R.
Status
Status Description
Docket Number
0
ABG40
Magistrate
628 of 1,718
Run : 05/05/2015
A0852
CJRA Table 10W––Report of Bankruptcy Appeals Pending For More Than Six Months
For Period Ending September 30, 2014
056
5TH Circuit
U.S. District Court for TEXAS EASTERN
District
A2040
District Judge GILSTRAP, JAMES R.
Nature of Suit
Case Title
Status
There are no events of this type to report
Total Cases for District Judge : GILSTRAP, JAMES R.
Status Description
Docket Number
0
Magistrate
ABG40
Run : 05/05/2015
Page 630 of 1,721
A0853
CJRA Table 11W––Report of Social Security Appeal Cases Pending for More Than Six Months
For Period Ending September 30, 2014
056
5TH Circuit
U.S. District Court for TEXAS EASTERN
District
A2040
District Judge GILSTRAP, JAMES R.
Nature of Suit
Case Title
Status
There are no events of this type to report
Total Cases for District Judge : GILSTRAP, JAMES R.
Status Description
Docket Number
~
0
Magistrate
Run : 05/05/2015
Page 642 of 1,748
A0854
CERTIFICATE OF SERVICE
This is to certify that on July 6, 2015, the foregoing APPENDIX IN
SUPPORT OF PETITION FOR WRIT OF MANDAMUS was electronically
filed with the Court. A copy has been served on counsel for Respondent TQP
Development, LLC via Federal Express upon the following:
Marc Aaron Fenster
Adam S. Hoffman
RUSS AUGUST & KABAT
12424 Wilshire Boulevard
Suite 1200
Los Angeles, CA 90025
Tel: (310) 826-7474
Fax: (310) 826-6691
mafenster@raklaw.com
ahoffman@raklaw.com
A copy has also been served on the date above via Federal Express on:
The Honorable Rodney Gilstrap
U.S. District Court
Sam B. Hall, Jr. Federal Building
and United States Courthouse
100 East Houston Street
Marshall, Texas 75670
Tel: (903) 935-3868
Fax: (903) 935-2295
An original and four hard copies and a PDF copy on disk of this Appendix have
been hand-delivered to the U.S. Court of Appeals for the Federal Circuit on the
date indicated above.
/s/ Daniel H. Brean
Daniel H. Brean
Counsel for Newegg Inc.