1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 WESTERN DIGITAL TECHNOLOGIES, Case No. 22-cv-04376-HSG INC., et al., 8 CLAIM CONSTRUCTION ORDER Plaintiffs, 9 v. 10

VIASAT, INC.,

11 Defendant. 12 13 On July 28, 2022, Plaintiffs Western Digital Technologies, Inc., SanDisk Technologies 14 LLC, SanDisk3d IP Holdings LTD., Western Digital Ireland LTD., and SanDisk Storage Malaysia 15 SDN. BHD. (collectively, “Western Digital” or “WD”) filed this patent infringement action 16 against Defendant Viasat, Inc. (“Viasat”). Dkt. No. 1. The parties now seek construction of eight 17 terms found in two patents: U.S. Patent Nos. 9,424,400 and 10,447,667. This order follows claim 18 construction briefing and a claim construction hearing. See Dkt. Nos. 103 (“WD Br.”), 104 19 (“Viasat Br.”), and 105 (“WD Reply Brief”). 20 I. BACKGROUND 21 In this case, Western Digital claims that Viasat infringes two Asserted Patents: U.S. Patent 22 No. 9,424,400 (the “’400 Patent”) and U.S. Patent No. 10,447,667 (the “’667 Patent”). The ’400 23 Patent is entitled “Digital Rights Management System Transfer of Content and Distribution” and 24 was issued on August 23, 2016. See Dkt. No. 103-1. The ’667 Patent is entitled “Secure Stream 25 Buffer on Network Attached Storage” and was issued on October 15, 2019. See Dkt. No. 103-2. 26 The Accused Products are Defendant’s media streaming software, systems, and services, including 27 specifically in-flight entertainment and communication systems for use in commercial and private A. The ’400 Patent 1 The ’400 Patent relates to “digital rights management (DRM) for content that may be 2 downloaded and securely transferred from one storage to another storage.” ’400 Patent Abstract. 3 The claimed invention “performs cryptographic operations and provides a root of trust” which 4 “enables secure copying or transfer of content from one storage device to another storage device.” 5 Id. Essentially, the ’400 Patent claims a system that enables secure copying or transfer of media 6 content (e.g., video streams) to “portable data storage devices” whereby the system authenticates 7 the portable data storage device in question before providing an access key to decrypt the media 8 content. 9 The ’400 Patent has two independent claims—claim 1 and claim 9. Claim 1 recites: 10 A kiosk for provisioning secure media content to a plurality of 11 portable data storage devices, the kiosk comprising: 12 a first data interface configured to communicate with a portable data storage device; 13 a second data interface configured to communicate, over a network, 14 with a remote trusted server; and 15 a processor configured to: 16 obtain a unique identifier from the portable data storage device, wherein the unique identifier is specific to the portable data 17 storage device and is concealed by the portable data storage device; 18 authenticate the portable data storage device, using at least the 19 unique identifier, by communicating with the remote trusted server over the second data interface; 20 and in response to the authentication, provide to the portable data 21 storage device an encrypted first media content and a corresponding access key. 22 ’400 Patent cl. 1. Dependent claims 2–8 of the ’400 Patent recite kiosks with additional 23 limitations, including wherein the kiosk comprises “a local data storage,” ’400 Patent cl. 2, or a 24 “user interface for receiving a selection of the first media content from the local data storage,” 25 ’400 Patent cl. 3. Notably for the purposes of claim construction, dependent claim 8 further 26 recites a “kiosk of claim 1, wherein the kiosk is located in a public environment.” ’400 Patent cl. 27 8. Independent claim 9 recites a method for provisioning secure media content to a plurality of 1 portable data storage devices from a kiosk, but the limitations are substantially identical to the 2 limitations of claim 1. Similarly, dependent claims 10–17 are substantially identical to dependent 3 claims 2–8, only they depend on a method rather than system claim. 4 B. The ’667 Patent 5 The ’667 Patent relates to “[a] network attached storage [“NAS”] device coupled to a local 6 area network and including a network interface configured to receive digital content from a remote 7 content provider outside the local network.” ’667 Patent Abstract. According to the specification, 8 the ’667 Patent describes a problem whereby internet service providers are incentivized to throttle 9 download speeds for streaming services (e.g., Netflix, Hulu). This throttling creates Quality of 10 Service issues for consumers, as display devices often have very limited buffers and streaming 11 services generally prefer limited buffers. As a solution the ’667 Patent claims a novel system and 12 method for buffering streaming media content (e.g., movies, tv shows) that “maintain smaller sizes 13 of buffers on display device and [] maintain control over content while ensuring that content can 14 be viewed without deterioration due to throttling through the use of a Network Attached Storage 15 (NAS) device having a secure portion for buffering streaming content.” Id. at 2:30–34. 16 The ’667 Patent has three independent claims—claim 1, claim 11, and claim 20. Claim 1 17 of the ’667 Patent recites: 18 A media streaming system comprising: 19 a network interface adapter configured to transmit digital content, via a wide area network (WAN), to a network attached storage (NAS) 20 device operating on a local area network (LAN); and 21 one or more hardware processors configured to: 22 receive an indication of the NAS device +having a secure region comprising a buffer for streaming media on a separate 23 display device on the local area network, wherein access to the secure region is controlled by the media streaming system; 24 transmit the digital content to the secure region within the 25 NAS device for playback by the separate display device from the buffer; and 26 transmit instructions to the NAS device to control streaming 27 access to the digital content stored on the buffer. 1 configured to cause the NAS device to use encryption that secures the digital content to the secure 2 region (claim 5); provide instructions to the NAS device for controlling an encryption type used in 3 the secure region (claim 7); or provide instructions to the NAS device to reallocate a portion of the 4 secure region storing the digital object to an accessible region (claim 9). Independent claim 11 5 recites a method for transmitting media content from a media streaming system, but the limitations 6 are substantially identical to the limitations of claim 1. Similarly, dependent claims 12–19 are 7 substantially identical to dependent claims 2–8, only they depend on a method rather than system 8 claim. Independent claim 20 of the ’667 Patent is also a system claim, but is drafted in means- 9 plus-function language versus the “processor configured to” language of claim 1. 10 II. LEGAL STANDARD 11 Claim construction is a question of law to be determined by the Court. Markman v. 12 Westview Instruments, Inc., 517 U.S. 370, 384 (1996). “The purpose of claim construction is to 13 determine the meaning and scope of the patent claims asserted to be infringed.” O2 Micro Int’l 14 Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quotation omitted). 15 Accordingly, “[w]hen the parties present a fundamental dispute regarding the scope of a claim 16 term, it is the court’s duty to resolve it.” Id. at 1362; see also Eon Corp. IP Holdings v. Silver 17 Spring Networks, 815 F.3d 1314, 1319 (Fed. Cir. 2016) (finding legal error in trial court’s decision 18 not to construe terms despite fundamental dispute between parties). 19 It is “a basic principle of claim construction . . . that ‘the words of a claim are generally 20 given their ordinary and customary meaning.’ ” Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 21 F.3d 1291, 1299 (Fed. Cir. 2014) (quoting Philips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 22 2005)). There are only two circumstances where a claim is not entitled to its plain and ordinary 23 meaning: “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when 24 the patentee disavows the full scope of a claim term either in the specification or during 25 prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 26 In determining the ordinary and customary meaning, the claim language “provide[s] 27 substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d at 1314. 1 instructive.” Id. However, a person of ordinary skill in the art is “deemed to read the claim term 2 not only in the context of the particular claim in which the disputed term appears, but in the 3 context of the entire patent, including the specification.” Id. at 1313. The specification “is always 4 highly relevant to the claim construction analysis” and is usually “dispositive.” Id. at 1315. The 5 scope of the claims must be “determined and confirmed with a full understanding of what the 6 inventors actually invented and intended to envelop with the claim.” Id. at 1316 (quotation 7 omitted). Thus, the construction that “stays true to the claim language and most naturally aligns 8 with the patent's description of the invention will be, in the end, the correct construction.” Id. In 9 addition to the claims and the specification, the prosecution history may be used “to provide[ ] 10 evidence of how the PTO and the inventor understood the patent.” Id. at 1317. “[A]ny 11 explanation, elaboration, or qualification presented by the inventor during patent examination is 12 relevant, for the role of claim construction is to capture the scope of the actual invention that is 13 disclosed, described and patented.” Fenner Inv., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323 (Fed. 14 Cir. 2015) (quotation omitted). The claims, specification, and prosecution history together 15 constitute the “intrinsic evidence” that forms the primary basis for claim construction. Phillips, 16 415 F.3d at 1312–17 (citation omitted). 17 Courts may also consider extrinsic evidence, such as dictionaries, treatises, and expert 18 opinions, if it is “helpful in determining the ‘true meaning of language used in the patent claims’ ” 19 and is not contradicted by the intrinsic evidence. Id. at 1318 (quoting Markman, 52 F.3d at 980). 20 For example, dictionaries may reveal what the ordinary and customary meaning of a term would 21 have been to a person of ordinary skill in the art at the time of the invention. Frans Nooren 22 Afdichtingssystemen B.V. v. Stopaq Amcorr Inc., 744 F.3d 715, 722 (Fed. Cir. 2014) (“Terms 23 generally carry their ordinary and customary meaning in the relevant field at the relevant time, as 24 shown by reliable sources such as dictionaries, but they always must be understood in the context 25 of the whole document—in particular, the specification (along with the prosecution history, if 26 pertinent).”). Expert testimony can also help “to ensure that the court’s understanding of the 27 technical aspects of the patent is consistent with that of a person of skill in the art, or to establish 1 Phillips, 415 F.3d at 1318. Extrinsic evidence is, however, “less significant than the intrinsic 2 record in determining the legally operative meaning of claim language.” Id. at 1317 (quotation 3 omitted). 4 III. DISPUTED TERMS 5 A. “kiosk” (’400 Patent)

6 Western Digital’s Proposed Construction Viasat’s Proposed Construction 7 Non-limiting preamble, in the alternative, “a device whose user interface is used by 8 plain and ordinary meaning consumers” 9 The term “kiosk” appears in the preamble of asserted claims 1, 2, 6, 8-10, 13, and 17 of the 10 ’400 Patent. The parties present two disputes as to the interpretation of the term “kiosk.” First, 11 the parties dispute whether the term “kiosk” in the preamble is limiting—Western Digital argues 12 that the preamble is not limiting, whereas Viasat argues that it is. See WD Br. at 5–6; Viasat Br. at 13 2–3. Second, if the preamble is limiting, Viasat argues that the term “kiosk” should be construed 14 as “a device whose user interface is used by consumers.” Viasat Br. at 3–5. Western Digital 15 argues that the plain and ordinary meaning of the word “kiosk” does not include such 16 requirements, and that no construction is necessary. WD Br. at 6–8. 17 i. Whether the Preamble is Limiting 18 The first threshold issue the Court must resolve is whether the preamble is limiting. 19 “Whether to treat a preamble as a limitation is a determination resolved only on review of the 20 entire patent to gain an understanding of what the inventors actually invented and intended to 21 encompass by the claim.” Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 22 1362, 1367 (Fed. Cir. 2020) (cleaned up). “In general, a preamble limits the invention if it recites 23 essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” 24 Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting 25 Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, 26 a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim 27 body and uses the preamble only to state a purpose or intended use for the invention.’ ” Id. 1 Am. Axle & Mfg., Inc., 847 Fed. App’x 856, 858 (Fed. Cir. 2021) (The general rule is that a 2 preamble is not limiting, unless “it recites ‘additional structure or steps underscored as important 3 by the specification,’ is ‘essential to understand limitations or terms in the claim body,’ or 4 provides necessary structure absent from the claim body.” (quoting Catalina, 289 F.3d at 808)). 5 “Moreover, clear reliance on the preamble during prosecution to distinguish the claimed invention 6 from the prior art transforms the preamble into a claim limitation because such reliance indicates 7 use of the preamble to define, in part, the claimed invention.” Catalina, 289 F.3d at 808. 8 Viasat argues that the term “kiosk” in the ’400 Patent is limiting because of the prosecution 9 history of the ’400 Patent’s parent application—U.S. Patent No. 8,914,634 (the “’634 Patent”). 10 During prosecution of the ’634 Patent, the claims initially recited a “first storage device 11 configured to provide content to a player system for rendering of the content . . .” Dkt. No. 104-2 12 at 34. These claims were rejected by the USPTO in view of U.S. Patent Publication 13 2009/0052671 (“Bauchot”), which the examiner found to disclose each of the then-pending 14 claims. Id. The applicant then amended the claims, including replacing phrase ““first storage 15 device configured to provide content to a player system” with “[a] kiosk for provisioning secure 16 media content to a plurality of portable data storage devices.” Id. at 15 (emphasis in original). 17 The applicant further argued that Bauchot did not disclose the newly-amended claims, including 18 because “Bauchot fails to even mention use of a kiosk.” Id. at 19. Viasat argues that this 19 statement represents a clear statement that a “‘kiosk’ is not simply a ‘storage device,’ such as a 20 ‘media center’ connected to ‘a personal computer’ as in Bauchot—the ‘kiosk’ must be something 21 more than the configuration Bauchot expressly mentioned.” Viasat Br. at 3. 22 The Court finds that the applicants’ statements in the prosecution of the ’634 Patent suffice 23 to demonstrate a “clear reliance on the preamble . . . to distinguish the claimed invention from the 24 prior art[.]” Catalina, 289 F.3d at 808. Western Digital argues that the Court cannot look at the 25 prosecution history of a related patent to find such clear reliance, but the ’634 Patent is the parent 26 application of the ’400 Patent. In such cases, the Federal Circuit has repeatedly said that 27 statements made in the prosecution of a parent application are to be treated as intrinsic evidence 1 F.3d 1060, 1069 (Fed. Cir. 2019); Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1384 (Fed. 2 Cir. 1999) (applying statements from prosecution of a parent application where subject matter was 3 common to the continuation-in-part application); see also Jonsson v. Stanley Works, 903 F.2d 812, 4 818 (Fed. Cir. 1990) (affirming claim construction relying on “arguments and remarks” made 5 during the prosecution of a parent application for the same claim term). 6 Accordingly, because the patentee clearly used the term “kiosk” in the preamble as a 7 means to distinguish prior art during the prosecution of the ’400 Patent’s parent application, the 8 Court concludes that the preamble’s use of that term is limiting. 9 ii. Construction of “Kiosk” 10 The Court next turns to the proper construction of the term “kiosk.” Western Digital urges 11 that the Court need not construe the term beyond its “plain and ordinary meaning,” which it argues 12 would be understood by the jury in light of the specification as being “any device used to access 13 and distribute content provided by the system.” WD Br. at 6–8 (quoting ’400 Patent at 6:36–37). 14 Viasat argues that the term should be construed as “[a] device whose user interface is used by 15 consumers.” Viasat Br. at 3–5. Because the parties “present a fundamental dispute regarding the 16 scope of [the] claim term[,]” O2 Micro, 521 F.3d at 1362, the Court must resolve this dispute with 17 sufficient clarity that the issue is not left for the jury to decide. Accordingly, the Court will 18 proceed as if Western Digital’s proposed construction is “any device used to access and distribute 19 content provided by the system.” See Dkt. No. 117 (“Hearing Tr.”) at 12:10–18. The Court finds 20 that construction most supported by the intrinsic evidence here. Western Digital’s proposed 21 construction is adopted verbatim from the specification, which expressly states that “the kiosk 22 106’ may be any device used to access and distribute content provided by the system.” ’400 23 Patent at 6:36–37 (emphasis added). A POSITA, reading such a clear statement in the 24 specification, would understand the patentee’s intended meaning for “kiosk” to be broad enough to 25 encompass any such device, and that it need not be limited to a device having a “user interface” 26 that is “used by consumers.” 27 In contrast, Viasat’s construction improperly imports optional features of the “kiosk” as 1 self-service computer terminal” and in other embodiments, may be placed in a public environment 2 and “may comprise various user interface equipment such as a keyboard, display, etc.” ’400 3 Patent at 6:37–43 (emphasis added). The “use of the word ‘may’ in the specification strongly 4 implies” that such features are not necessarily required. Game & Tech. Co. v. Wargaming Grp. 5 Ltd., 942 F.3d 1343, 1351 (Fed. Cir. 2019). Viasat’s intrinsic evidence supporting its “user 6 interface” requirement is all written in such permissive language, such that a POSITA reading the 7 specification would understand that while a “kiosk” may have a user interface, such features are 8 not mandatory. Furthermore, as to whether the “kiosk” must be “used by consumers,” Viasat cites 9 to no intrinsic evidence supporting such a requirement, and instead suggests that the plain meaning 10 of a “kiosk” implies such a requirement. See Hearing Tr. at 25:5–10 (suggesting that “kiosk” “had 11 a very specific meaning. . . . before computers, where people would go to a kiosk . . . for a 12 transaction with a consumer.”). The Court finds this argument insufficient to overcome the strong 13 intrinsic evidence supporting Western Digital’s broader proposed construction.1 Similarly, the 14 Court declines to consider Viasat’s extrinsic evidence (e.g., dictionary definitions) in support of its 15 narrow construction. While courts may consider such evidence on claim construction, it “is 16 generally of less significance than the intrinsic record[.]” Allergan Sales, LLC v. Sandoz, Inc., 935 17 F.3d 1370, 1373 (Fed. Cir. 2019). Because Viasat’s dictionary definitions conflict with the 18 specifications’ express statements, the Court concludes that they “do not necessarily reflect the 19 inventor’s goal of distinctly setting forth his invention as a person of ordinary skill in that 20 particular art would understand it.” Phillips, 415 F.3d at 1322. 21 The Court finds Viasat’s other counterarguments unpersuasive. Viasat also argues that 22 Western Digital’s alternative proposal is untimely because it was not disclosed in the parties’ 23 exchange of preliminary claim constructions or March 12, 2024 Joint Claim Construction and 24 Prehearing Statement. See Viasat Br. at 10. But Viasat cites to no authority suggesting that this 25 failure constitutes a waiver of the argument, and presents nothing to show that it has suffered any 26 real prejudice from such a failure. And in any case, Western Digital disclosed in the Joint Claim 27 1 Construction and Prehearing Statement that it intended to rely upon the specification’s 2 characterization of “kiosk” as “any device used to access and distribute content provided by the 3 system.” See Dkt. No. 95 at 4 (Appendix 1 citing ’400 Patent at 6:35–51 in support of Plaintiffs’ 4 proposed construction for “kiosk”). Any prejudice to Viasat from Western Digital’s purported 5 untimeliness is therefore minimal, as Viasat was on notice that, at a minimum, Western Digital 6 intended to rely upon that language in support of its “plain and ordinary meaning” construction. 7 Viasat next argues that this construction “violates black-letter law ‘preclud[ing] patentees 8 from recapturing through claim interpretation specific meanings disclaimed during prosecution.’ ” 9 Viasat Br. at 10 (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 10 2003)). This argument does not withstand scrutiny. Viasat essentially argues that when the 11 patentee distinguished Bauchot during the prosecution of the ’634 Patent for “fail[ing] to even 12 mention use of a kiosk[,]” it effectively disclaimed the broader construction that Western Digital 13 now proposes. But the ’634 Patent shares a specification with the ’400 Patent, including the 14 characterization of “kiosk” as “any device used to access and distribute content provided by the 15 system.” See ’634 Patent at 6:28–29. For Viasat’s argument to prevail, it would have to 16 demonstrate that the patentee’s use of the term “kiosk” in the ’634 Patent prosecution history 17 meant something narrower than what the ’634 Patent’s specification expressly stated. The Court 18 sees no evidence of this in the intrinsic record. 19 Accordingly, the Court adopts the construction “any device used to access and distribute 20 content provided by the system.” 21 B. “portable data storage device” (’400 Patent)

22 Western Digital’s Proposed Construction Viasat’s Proposed Construction 23 Plain and ordinary meaning “a storage device that can be easily carried or 24 moved about by its user” 25 The parties’ dispute as to this term boils down to a dispute over the meaning of the word 26 “portable,” and is two-fold: Viasat argues that for a “data storage device” to be “portable,” it must 27 (1) be easily carried or moved around (2) by its user. See Viasat Br. at 7–9. Western Digital 1 language, and that the term needs no construction. See WD Br. at 9. Alternatively, Western 2 Digital proposes a construction of “[a storage device] capable of being carried or moved.” 3 Hearing Tr. at 41:4–11. As with the prior term, the Court rejects Western Digital’s proposal that 4 no construction is necessary, and instead proceeds with its alternative proposal from the hearing. 5 See O2 Micro, 521 F.3d at 1362. 6 The Court turns to the crux of the parties’ dispute as to this claim term, beginning with 7 whether a “portable data storage device” must be a data storage device that “can be easily carried 8 or moved.” Notably, this dispute is almost directly analogous to the claim term at issue in Eon, 9 where the Federal Circuit reversed a district court’s construction of “portable” and “mobile” terms 10 in the claim language. In that case, the Federal Circuit held that the district court erred in not 11 construing these terms at claim construction, which permitted the plaintiff to take the position that 12 the terms “portable” and “mobile” “should be broadly interpreted as including, essentially, 13 anything that is theoretically capable of being moved.” Eon, 815 F.3d at 1321. In reversing the 14 district court, the Federal Circuit rejected plaintiffs’ interpretation as “completely untethered to the 15 context of the invention . . . .” Id. 16 Of course, this case is not Eon, and this Court must construe the terms in the ’400 Patent in 17 accordance with the ’400 Patent’s intrinsic and extrinsic record. However, here too, the evidence 18 supports Viasat’s position. First, the ’400 Patent specification uses the word “portable” in ways 19 that suggest it means more than being capable of being moved or carried. For example, the 20 specification describes a “client system” in embodiments that “may comprise a computer, a 21 television, a portable or mobile device, a video game console, a portable video game console, as 22 well as associated storage.” ’400 Patent at 4:18–22 (emphasis added). The distinction between 23 “video game console” and “portable video game console” suggests that the patentee, when using 24 the word “portable,” understood it to mean something beyond the mere capability to be moved or 25 carried. Similarly, the specification’s description of certain devices as “portable or mobile 26 device[s]” suggests that a “portable” device is at least similar to, if not synonymous with, a 27 “mobile” device. This conclusion is later reinforced in the specification, which describes that the 1 such as an iPad, iPod, iPhone, a portable video game console, such as PlayStation® portable or a 2 Nintendo DS, etc.” ’400 Patent at 5:21–25. The portable and mobile devices described in this list 3 are all small devices, designed to be easily carried or moved about. Accordingly, by the canon of 4 noscitur a sociis, the intrinsic evidence strongly supports Viasat’s position that a POSITA would 5 understand that a “portable data storage device” is likewise a storage device that can be easily 6 carried or moved about, as opposed to anything (no matter how large, heavy, or ungainly) that is 7 capable of being carried or moved about. 8 Western Digital argues that Viasat’s construction introduces indefiniteness and 9 unnecessary confusion through the use of the word “easily,” and that it deviates from plain 10 English dictionary definitions of the word “portable.” See WD Br. at 9. Neither argument 11 persuades. First, it is well established that terms of degree, such as “easily,” are not inherently 12 indefinite. See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Rather, 13 such language “has long been found definite where it provided enough certainty to one of skill in 14 the art when read in the context of the invention.” Id. Here, the ’400 Patent’s descriptions of 15 exemplary portable devices in the specification are sufficient to enable one of ordinary skill in the 16 art to understand, with reasonable certainty, what it would mean for such a device to be “easily 17 carried or moved about.” Second, as to Western Digital’s dictionary definitions, these definitions 18 are extrinsic evidence at best, and thus do not give this Court reason to reject its conclusions as to 19 what the intrinsic evidence—the ’400 Patent specification—would inform a POSITA as to the 20 scope of the claim term. See Allergan Sales, 935 F.3d at 1373. 21 The Court next turns to the second requirement of Viasat’s proposed construction, that the 22 “portable data storage device” be “easily carried or moved about by its user.” According to 23 Viasat, this requirement is not strictly necessary for its proposed construction, but rather 24 something added to preclude a hypothetical future argument by Western Digital that objects which 25 can be easily carried or moved about by heavy machinery (e.g., a forklift) are nonetheless 26 “portable.” See Hearing Tr. at 38:19–25. To that extent, Viasat admits that this addition would 27 only provide “additional marginal clarity” to the jury. Id. Here, the Court agrees with Western 1 is. The Court sees no indication that Western Digital intends to argue that a device that is easily 2 carried or moved about by heavy machinery is still “portable,” and the Court need not “resolv[e] 3 all questions of meaning with absolute, univocal finality.” Eon, 815 F.3d at 1319; see also Vivid 4 Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (the Court need construe 5 “only those terms . . . that are in controversy, and only to the extent necessary to resolve the 6 controversy.”). Because this issue is at best, a hypothetical dispute, the Court declines to adopt 7 Viasat’s proposal here. 8 Accordingly, the Court adopts the construction: “a storage device that can be easily 9 carried or moved about.” 10 C. “authenticate the portable data storage device, using at least the unique identifier” (’400 Patent) 11 12 Western Digital’s Proposed Construction Viasat’s Proposed Construction 13 Plain and ordinary meaning “confirming that the portable data storage device is trusted using at least the unique 14 identifier” 15 The parties’ dispute regarding this term relates to the word “authenticate.” Western Digital 16 argues that plain and ordinary meaning of “authenticate” means simply to “confirm the identity” 17 of the portable data storage device, whereas Viasat argues for the additional step of “confirming” 18 that the portable data storage device “is trusted.” See WD Br. at 9–11; Viasat Br. at 9–12. 19 A POSITA would understand that, in the context of the ’400 Patent, Viasat’s construction 20 is more consistent with the intrinsic record. The ’400 Patent’s specification makes it clear that the 21 purpose of the claimed invention is to develop a digital rights management (“DRM”) system, 22 which is “used to control the use of digital content and devices” and “prevent unauthorized 23 copying of digital content.” ’400 Patent at 1:25–27. The specification further describes problems 24 with existing DRM systems, which “have security weaknesses and have been circumvented.” Id. 25 at 1:32–34. In solving these problems, the ’400 Patent describes embodiments in which a trusted 26 content server can authenticate devices “to ensure that entities in the system are trusted” and 27 “ensure[] that the storage device confirms a trust relationship with the player and vice versa.” Id. 1 confirming the trust level of the devices in question, and no embodiment in the specification 2 describes “authenticating” as a mere identification of the devices. Western Digital essentially 3 conceded as much at the hearing. See Hearing Tr. at 49:10–50:10. If anything, the specification 4 teaches away from mere identification. The Federal Circuit has affirmed narrower constructions 5 based on similar disparaging remarks, combined with “repeated[], consistent[], and exclusive[]” 6 depictions consistent with a narrower construction, and especially when the broader construction 7 runs contrary to the primary purpose of the invention. In re Abbott Diabetes Care Inc. (“Abbott”), 8 696 F.3d 1142, 1149 (Fed. Cir. 2012); see also Groove Digital v. United Bank, 825 Fed. App’x 9 852, 857 (Fed. Cir. 2020) (construing the term “applet” to require geotargeting based on 10 statements in specification that primary object of the claimed invention was geotargeting, and 11 every embodiment disclosed required geotargeting); Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 12 1317, 1326 (Fed. Cir. 2023) (“We have explained that a patent's express purpose of the invention 13 ‘informs the proper construction of claim terms.’ ”). Like in Abbott and Groove Digital, the ’400 14 patent’s exclusive use of “authenticat[ion]” to “prevent unauthorized copying of digital content,” 15 ’400 Patent at 1:25–27, confirms that the patentee intended for the term “authenticate” to include 16 confirmation that the portable data storage device is trusted or authorized. 17 Accordingly, the Court adopts the construction: “confirming that the portable data storage 18 device is trusted using at least the unique identifier.” 19 D. “provide to the portable data storage device . . . a corresponding access key” (’400 Patent) 20 21 Western Digital’s Proposed Construction Viasat’s Proposed Construction 22 Plain and ordinary meaning “provide to the portable data storage device . . . a key for the portable data storage device to 23 decrypt the first media content” 24 The parties’ dispute as to this claim term relates to what the “corresponding access key” is. 25 Viasat takes the position that the “corresponding access key” must be an access key specific to the 26 portable data storage device, and be used to decrypt the first media content. Viasat Br. at 13–15. 27 Western Digital argues that the access key merely has to “correspond” with the first media 1 Viasat first argues that the “corresponding access key” must be a key to “decrypt the first 2 media content. The Court agrees. The ’400 Patent’s specification makes it clear that the access 3 key is used for the encryption and decryption of content. For example, the specification plainly 4 states that the “[t]he access key is used to decrypt and render the [media] content.” ’400 Patent at 5 9:30; see also 18:6–7 (“Sixth, the host system 400 generates the access key 706 in order to decrypt 6 the content.”); 21:38–39 (same). It further states that the access key may be used to encrypt the 7 content. See id. at 12:20–22 (“The download server 300 may then use the binding key as one 8 component of an access key used to encrypt the content.”); 15:7–9 (“For example, the download 9 server 300 may employ AES encryption to encrypt the content 702 based on the access key 706.”). 10 Where, as here, “a patentee uses a claim term throughout the entire patent specification, in a 11 manner consistent with only a single meaning, he has defined that term ‘by implication.’ ” Bell 12 Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001); see 13 also Abbott, 696 F.3d at 1150 (claim term may be defined by implication where patents 14 “repeatedly, consistently, and exclusively” depict embodiments using that definition). 15 Viasat also argues that the “corresponding access key” must be specific to the portable data 16 storage device. Viasat argues that the specification describes the “access key” as being derived 17 from a “content key”—which is specific to the encrypted media content—and a “binding key”— 18 which is “used to bind content to the storage device . . . .” ’400 Patent at 9:5–6. According to 19 Viasat, one of the key improvements claimed by the ’400 Patent is this two-part “access key,” 20 which prevents any portable data storage device from accessing the content. This improved upon 21 prior art that only utilized a content-specific “content key,” which enabled bad actors with access 22 to the key to distribute and access the content with other data storage devices. See Viasat Br. at 23 13–14; see also Dkt. No. 103-4 (“Almeroth Decl.”) ¶¶ 68–71; Hearing Tr. at 59:17–60:2. Finally, 24 Viasat again cites to the prosecution history of the ’634 Patent, wherein the patentee distinguished 25 the patent from prior art by arguing that “Bauchot relies on storing content and keys separately . . . 26 rather than on binding content to a portable storage device . . . and teaches away from binding 27 content specifically to a portable storage device . . . .” Dkt. No. 103-5 at 7–8. 1 certain exemplary embodiments in the specification, which the claim language does not require. 2 See ’400 Patent at 7:63–8:3 (“FIG. 3 shows an exemplary download system of the embodiments. . . 3 . In one embodiment, download server 30 encrypts the content with an access key that may be 4 derived from a binding key and a content key.” (emphasis added)); 9:3–10 (“In one embodiment, . 5 . . the cryptographic module 409 may be configured to generate a binding key that is used to bind 6 content to the storage device 110.” (emphasis added)). Western Digital further argues that the 7 statements made during prosecution history of the ’634 Patent cannot support disclaimer in the 8 ’400 Patent, because the ’634 Patent expressly claimed a “binding key unique to the portable data 9 storage device . . . ,” a limitation notably missing from the ’400 Patent. See WD Br. at 13. 10 Finally, Western Digital argues that Viasat’s construction would exclude disclosed embodiments 11 in which the “corresponding access key” is used by devices other than the portable data storage 12 device to decrypt content, such as the playback device. See ’400 Patent at 9:27–30 (“Responsive 13 to this request, the storage device may then send the binding and content keys to the player so that 14 it can generate the access key. The access key is used to decrypt and render the content.”). 15 On this issue, the Court agrees with Western Digital. As it argues, the specification’s 16 language describing the “access key” being derived from a “content key” and a “binding key” is 17 permissive and only describes exemplary embodiments. Such language would indicate to a 18 POSITA that the “corresponding access key” claimed in the ’400 Patent may be so derived, but 19 need not be. See Game & Tech., 942 F.3d at 1351. To adopt Viasat’s proposed construction 20 would improperly import limitations from those embodiments into the claim language. Moreover, 21 such a construction would also improperly exclude embodiments in which the “corresponding 22 access key” is generated and used by the playback device, not the portable data storage device, to 23 decrypt and render the content. See Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 24 2022) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct[.]”). 25 The intrinsic evidence does not support such a construction. As for Viasat’s arguments from the 26 ’634 Patent prosecution history, the Court does not find the statements made regarding Bauchot’s 27 lack of a binding key disclosure relevant to the ’400 Patent, which, unlike the ’634 Patent, does 1 Viasat argued at the hearing that unless the “corresponding access key” was specific to the 2 portable data storage device, the construction would “collapse the distinction between an access 3 key and the content key.” Hearing Tr. at 61:8–62:6. However, the claim language does not claim 4 that the access key must be distinct from a “content key”—unlike the ’634 Patent, the ’400 5 Patent’s claims do not recite a “content key” or “binding key” anywhere. This argument, like 6 Viasat’s arguments from the ’634 Patent’s prosecution history, presumes that the ’400 Patent 7 recites the same claim language as the ’634 Patent. But the ’400 Patent was drafted using broader 8 language in this regard. A POSITA, having read the intrinsic record of both patents, would not 9 understand that, in the context of the ’400 patent, the “corresponding access key” must necessarily 10 be distinct from a “content key.” 11 Accordingly, the Court adopts the construction: “provide to the portable data storage 12 device . . . a key to decrypt the first media content.” 13 E. “public environment” (’400 Patent)

14 Western Digital’s Proposed Construction Viasat’s Proposed Construction 15 Plain and ordinary meaning “a location accessible by the general public” 16 It is unclear to the Court that there is a genuine fundamental dispute as to the scope of this 17 term. Both parties seem to agree that the term “public environment” should be accorded its plain 18 and ordinary meaning, with the only difference between the parties’ respective proposed 19 constructions being the inclusion of the word “general” in Viasat’s construction. See Hearing Tr. 20 at 76:4–11 (Western Digital proposing construction of “environment accessible to the public.”). 21 As with many of Viasat’s proposals, the inclusion of the word “general” here appears to be 22 a litigation-driven decision to preclude an as-yet hypothetical position that Western Digital might 23 take. Here, Viasat argues that, without the inclusion of the word “general,” Western Digital might 24 try to argue that any location accessible to any singular member (or subset of) the public is a 25 “public environment,” such as a person’s house. See Hearing Tr. 73:6–14. Again, there is no 26 evidence that Western Digital intends to take such a position, and as such, the Court sees no real 27 dispute between the parties as to the scope of the claim. Absent such a dispute, the Court sees no 1 reason to add a term to the construction that may inject confusion for the jury. 2 Viasat argues in its briefing that “there is a clear dispute over this term as evidenced by 3 Plaintiffs’ infringement contentions where they contend that a server located above the ceiling or 4 under the floor of a plane, and thus completely inaccessible to airline customers, is still somehow 5 in a ‘public environment.’ ” Viasat Br. at 16. But that dispute concerns infringement, not claim 6 scope. Unlike in Eon, where the Court’s failure to construe the terms “portable” and “mobile” left 7 open infringement positions that would otherwise have been foreclosed, the parties’ respective 8 constructions are not so different here as to leave open a dispute of infringement. A location 9 “accessible by the general public” and a location “accessible by the public” are substantially the 10 same, and whether a server on a plane satisfies this accessibility requirement is a fact question for 11 the jury to resolve. Because the parties’ dispute has no bearing on their respective proposed 12 constructions, the Court declines to consider it. See Scripps Clinic & Res. Found. v. Genentech, 13 Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) (“the words of the claims are construed independent of 14 the accused product.”). 15 Accordingly, the Court adopts the construction: “location accessible by the public.” 16 F. “secure region” (’667 Patent) 17 The parties resolved their dispute as to the scope of this claim term at the hearing, and per 18 the Court’s instructions, submitted a stipulated construction of “secure region” as “a region of the 19 NAS device to which access is controlled.” See Dkt. No. 119. 20 Accordingly, the Court adopts the construction: “a region of the NAS device to which 21 access is controlled.” 22 G. “receive an indication of the NAS device having a secure region” (’667 Patent)

23 Western Digital’s Proposed Construction Viasat’s Proposed Construction 24 Plain and ordinary meaning “receive an indication of the presence of a 25 secure region within the NAS device” 26 The parties dispute whether the claim term “receive an indication of the NAS device 27 having a secure region” requires that the processor merely receive an indication of the NAS device 1 of the presence of the secure region itself. See WD Br. at 17–18; Viasat Br. at 21–23. Western 2 Digital argues that the plain language of the claim term does not require the processor to receive 3 an indication of the presence of the secure region, and that the claim should not be construed as 4 requiring such an indication every time media is transmitted through the claimed system. Viasat 5 counters that the novel aspect of the claimed invention is the use of this secure region to buffer 6 content for streaming providers, and that the system would not be able to operate without the 7 processor being aware of the presence of the secure region to stream content to. 8 The Court is persuaded by Viasat’s argument. The focus of the ’667 Patent, as described 9 by the specification, is a novel NAS device having a secure region to buffer content from 10 streaming services; as such, the claims logically require an indication that the NAS device has 11 such a secure region for this buffer. Simply put, the claimed processor must have some indication 12 of the presence of the secure region to use that secure region as a buffer. Otherwise, the claimed 13 invention would not make sense, because if the system did not have an indication of the presence 14 of the secure region, it would not be able to use that secure region to buffer content. Because 15 “claims are directed to the invention that is described in the specification[,] they do not have 16 meaning removed from the context in which they arose.” Netword, LLC v. Centraal Corp., 242 17 F.3d 1347, 1352 (Fed. Cir. 2001); see also Sequoia, 66 F.4th 1326. Viasat’s construction most 18 clearly describes what a POSITA would understand the claim language to mean, when viewed 19 “with a full understanding of what the inventors actually invented and intended to envelop with 20 the claim.” Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 21 158 F.3d 1243, 1250 (Fed. Cir. 1998)). 22 Accordingly, the Court adopts the construction: “receive an indication of the presence of a 23 secure region within the NAS device.” 24 \\ 25 \\ 26 \\ 27 \\ H. “access to the secure region is controlled by the media streaming system” / 1 “control streaming access to the digital content stored on the buffer” (’667 Patent) 2 3 Western Digital’s Proposed Construction Viasat’s Proposed Construction 4 Plain and ordinary meaning “access to the secure region is managed by the media streaming system”… “manage 5 streaming access to the digital content stored on the buffer” 6 Viasat argues this claim term should be construed because the specification describes the 7 secure region as being controlled in a “continuous manner” (i.e., control is maintained) by the 8 media streaming system. Viasat Br. at 24–25. Viasat argues that the word “manage” better 9 captures the continuous nature of this control than simply the word “control.” Id. Western Digital 10 argues that no construction is necessary here. WD Br. at 19–20. 11 The Court agrees that there is no reason to construe this term. Western Digital does not 12 dispute that the specification describes the secure region as being continuously controlled by the 13 media streaming system, and Viasat has provided no basis for its assertion that the word “manage” 14 better captures the continuous nature of this control than the plain language of the claim. Viasat 15 appears to simply request that the Court replace the plain language of the claim with a word that it 16 prefers, but has provided no reason to do so. See Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., 17 No. 13-CV-2637 (SRN/BRT), 2017 WL 2274959, at *4 (D. Minn. May 24, 2017) (rejecting 18 construction replacing “point of sale” with “point of purchase” as “it does not in any way clarify 19 the original term[.]”); Tech. Innovations, LLC v. Nstein Techs., Inc., No. 2:10-CV-341-FTM, 2015 20 WL 1910434, at *10 (M.D. Fla. Apr. 27, 2015) (“[S]imply replacing one word of the term at issue 21 with a synonym does not provide any type of a construction.”). Accordingly, because there is no 22 fundamental dispute as to the scope of this claim term, and the plain language of the claim term 23 adequately describes the agreed scope of the term, the Court declines to construe this term. 24 \\ 25 \\ 26 \\ 27

IV. CONCLUSION

The Court construes the claim terms as follows: 2

“kiosk” (400 Patent) “any device used to access and distribute 4 content provided by the system” 5 “portable data storage device” (400 Patent) “a storage device that can be easily carried or 6 moved about” “authenticate the portable data storage device, | “confirming that the portable data storage 7 using at least the unique identifier” (°400 device is trusted using at least the unique g Patent) identifier” “provide to the portable data storage device □□ | “provide to the portable data storage device . . 9 . a corresponding access key” (°400 Patent) . a key to decrypt the first media content” 10 66. 29 > public environment” (°400 Patent) “location accessible by the public” “secure region” (’667 Patent) “a region of the NAS device to which access is D controlled”

13 “receive an indication of the NAS device “receive an indication of the presence of a = having a secure region” (667 Patent) secure region within the NAS device”

“access to the secure region is controlled by No construction necessary 15 the media streaming system” / “control streaming access to the digital content stored A 16 on the buffer” (°667 Patent)

17 The Court further SETS a telephonic case management conference on October 15, 2024, at Z 18 || 2:00 p.m. The hearing will be held by Public Zoom Webinar. All counsel, members of the public, 19 and media may access the webinar information at https://www.cand.uscourts.gov/hsg. All 20 attorneys and pro se litigants appearing for the case management conference are required to join at 21 least 15 minutes before the hearing to check in with the courtroom deputy and test internet, video, 22 and audio capabilities. The Court further DIRECTS the parties to meet and confer and submit a 23 || joint case management statement by October 8, 2024. 24 IT IS SO ORDERED. 25 Dated: 9/20/2024 26 Abeer 3, Mbt).

HAYWOOD S. GILLIAM, JR.

27 United States District Judge 28