Case 2:19-cv-10202-DDP-E Document 147 Filed 03/08/23 Page1lof8 Page ID #:2000

1 10 11 UNITED STATES DISTRICT COURT 12 CENTRAL DISTRICT OF CALIFORNIA 13 || NOMADIX, INC., ) Case No. 2:19-cv-10202 DDP-E 14 ) Plaintiff, ) CLAIM CONSTRUCTION ORDER 15 ) 16 v. ) [Dkt. 146] 17 || SIA MIKROTIKLS, ET AL., 18 ) Defendants. ) 19 ) 20 ) 21 22 23 24 25 26 27 28

Case 2#:19-cv-10202-DDP-E Document 147 Filed 03/08/23 Page 2 o0f8 Page ID #:2001

1 Presently before the court are the parties’ claim construction briefs and stipulation, > detailed below. Having considered the parties’ submissions and heard oral argument, the 3, || court adopts the following Order. 4 I. BACKGROUND 5 Plaintiff Nomadix, Inc. (“Nomadix”) and Defendant DIS Mikrotikls (“MikroTik”) 6 || have filed claim construction briefs regarding claim terms found in five asserted patents 7 || assigned to Nomadix: U.S. Patent Numbers (1) 7,194,554 (“the ‘554 Patent”), (2) 6,636,894 g || (“the “894 Patent”), (3) 8,156,246 (“the ‘246 Patent”), (4) 7,554,995 (“the ‘995 patent”), and g || ©) 7,088,727 (“the ‘727 patent”). 10 MikroTik filed an Opening Brief on July 25, 2022, proposing construction for ten 11 || claim terms. (Dkt. 105.) Nomadix filed a Responsive Brief on August 22, 2022, arguing 12 || that the court should reject MikroTik’s proposed constructions. (Dkt. 107.) Nomadix 13 || argued that several of the terms did not require construction at all. In the event that the 14 || Court found that those terms did require a construction, Nomadix provided alternate 15 || constructions for certain terms. MikroTik filed a reply brief on February 17, 2023, 16 || agreeing with four of Nomadix’s alternative constructions and revising one proposed 17 || construction in response to Nomadix’s argument. At hearing, the parties clarified that 18 || they agreed in the construction of two terms, and three terms remained in dispute. After 19 || hearing, the parties filed a joint stipulation adopting this Court’s claim construction order 20 || ina prior case concerning overlapping subject matter. (Dkt. 146, appending Nomadix v. 21 || Hewlett-Packard Company et al., Case CV09-08441, Dkt. 458 (“the HP order”)). 22 Only one term remains in dispute:! 23 24 ' As for the terms for which MikroTik initially proposed a construction and has since 25 withdrawn, plain and ordinary meaning applies. The court notes that during the coming 26 || stages of this litigation, the parties may present evidence as to the plain and ordinary meaning of the claim terms for a person of standard skill in the art. The parties may not 27 argue that a term is otherwise limited. 28

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1 Claim Term Nomadix’s MikroTik’s Position Position 2 incorrectly No construction is | messages that have a source and/or 3 configured necessary. destination address that is not compatible messages with the first network 4 || | (727 claim 19) 6 Il. LEGAL STANDARD 7 As established in Markman v. Westview Instruments, 517 U.S. 370 (1996), claim g || construction is a matter wholly within the jurisdiction of the court. Id. at 372 (“[T]he g |] construction of a patent . . . is exclusively within the province of the court.”). The purpose 10 || of claim construction is to “determin[e] the meaning and scope” of a patented invention 11 || in order to define the patent owner's rights. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312 12 || (Fed. Cir. 2005) (en banc). Claim construction is a legal issue that may require subsidiary 13 || findings of fact. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). 14 Generally, a claim term is given its “ordinary and customary meaning.” Phillips, 15 || 415 F.3d at 1312 (citing Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 16 |} 1996)). In patent cases, “the ordinary and customary meaning .. . is the meaning that the 17 || term would have to a person of ordinary skill in the art in question at the time of 18 |] invention.” Id. at 1313. “In some cases, the ordinary meaning . . . may be readily 19 || apparent,” requiring only common sense application of a widely accepted meaning. Id. at 20 || 1314. However, when claim meaning is not so readily apparent, a court must determine 21 || what a skilled person in the appropriate field of art would understand a claim term to 22 |} mean. Id. 23 Courts first consider the intrinsic evidence, which includes the patent claims, 24 || patent specification, and prosecution history. Vitronics, 90 F.3d at 1582. “Attending this 25 principle, a claim construction analysis must begin and remain centered on the claim 26 language itself, for that is the language the patentee has chosen to ‘particularly point out 27 || and distinctly claim the [patented] subject matter.” Innova/Pure Water, Inc. v. Safari Water 28

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Case 2:19-cv-10202-DDP-E Document 147 Filed 03/08/23 Page 4 of 8 Page ID #:2003 FiltrationSys.,Inc.,381F.3d1111,1116(Fed.Cir.2004) (internalbrackets omitted) (quoting InteractiveGift Express, Inc.v.Compuserve, Inc.,256F.3d1323,1331(Fed.Cir. 2001)).A term’suse incontextmayhelptodistinguishorclarifyits meaningfrom other potential definitions. See, e.g., Phillips,415F.3dat1314 (illustrating that“steel baffles” implies that“baffles”are notintrinsicallymade of steel).Claim terms are commonlyused consistentlythroughoutapatent, andthus“the usage of aterm inone claim canoften illuminate the meaningof the sameterm inother claims.” Id. The claim terms mustbe readinlightof the specification. Id.at1315(citing VitronicsCorp.,90F.3dat1582(“[T]he specificationis alwayshighlyrelevant. ... Usually,itis dispositive;itis the single bestguide tothe meaningof adisputedterm.”)). The specificationmay provideinsightinto aninventor’sunderstanding of herinvention atthe timeof patenting, as itmightcontain anintentionaldisclaimerof claim scope that reveals limits onaninventor’sintendedinvention. Phillips,415F.3dat1316. The Federal Circuithas alsorecognizedthataninventor mayinvokeaparticulardefinitionof aterm inherspecificationor otherwise use aterminthe specificationin amanner thatdiffers from the term’sordinaryusage.Id.“Insuchcases,the inventor’slexicographygoverns.” Id. Inaddition tothe patent itself,the Court“shouldalsoconsiderthe patent’s prosecutionhistory, if itis inevidence.”Id.at1317.The prosecutionhistory consists of “allthe proceedings before the Patent andTrademarkOffice,includingany express representations made bythe applicantregardingthe scope of the claims.”Vitronics,90 F.3dat1582. However,becausethe prosecutionhistory,alsocalledthe “file history” or “file wrapper,”is aproductof negotiations betweenthe inventor andthe USPTO, “it oftenlacks the clarity of the specificationandthusis less usefulforclaim construction purposes.” Phillips,415F.3dat1317. Nevertheless,like the specification, the prosecution historymaystillbe usefulinunderstanding the inventor’sunderstanding of their own invention.Id.(citingVitronics,90F.3dat1582–83).Moreover,duringprosecutionhistory, Case #:19-cv-10202-DDP-E Document 147 Filed 03/08/23 Page5of8 Page ID #:2004

l a patent applicant may disclaim claim scope by making a clear and unequivocal 9 disavowal of the plain meaning of ordinary claim language. Id. at 1319 (citing Texas 3 Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)). 4 Il. ANALYSIS 5 The only term in dispute is “incorrectly configured messages.” The parties’ 6 positions on the term are: MikeoTiis Position messages that have a source 8 No construction is necessary. and/or destination address 9 that is not compatible with the first network 10 Claim 19 of the “727 patent reads in relevant part: 1 Modifying incorrectly configured messages transmitted by the user device 12 based on the network settings of the foreign network, wherein modifying incorrectly configured messages transmitted by the user device includes 13 “pas : substituting the permanent address of these messages with a router address as 14 the source address, wherein the router address is an address recognized by the foreign network. 15 MikroTik initially proposed that “incorrectly configured messages” be construed 16 to mean “messages addressed to an incorrect address.” Nomadix argued that such Vv construction improperly limited the claim term to one kind of incorrectly configured 18 message. That is, by construing the term as “messages addresed to an incorrect address,” 9 MikroTik was excluding messages that were incorrectly configured due to their source 20 address. MikroTik amended their proposal as follows to address Nomadix’s argument: 21. “messages that have a source and/or destination address that is not compatible with the 22 first network.” 23 . . . At hearing, the parties disputed whether “incorrectly configured messages” can 24 encompass issues beyond incompatibility between the source/destination address and 25 the network. Nomadix hypothesized that the incompatibility could arise from a source or 26 destination address that, although not technically incorrect, did not correspond to any 27 28

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l device on the network. MikroTik’s reference to the patent specificaiton does not rebut 9 this possibility. The patent specification explains: 3 If a host is configured incorrectly (bad address or address of a router not on the 4 local network), then the host computer and router will be unable to communicate... 7 ‘727 patent 1:51-53. MikroTik failed to meet its burden to establish that the “incorrectly 8 configured messages” must be limited to messages with a source or destination address 9 incompatible with the first network. Accordingly, no construction is necessary. 10 “incorrectly configured No construction i messages” ("727 patent, 12 claim 19) 13 a IV. CONCLUSION

iz The Court CONSTRUES the disputed term and ADOPTS the parties stipulated construction as follows:

18 incorrectly configured No construction is necessary. messages 19 ‘727 patent, claim 19 20 21. : 3 Claim Term Stipulated Construction 22 foreign network No construction is necessary. The term does not 23 '727 patent claims 19, 20 appear in the claims as corrected by the PTO. 24 5 administrator No construction is necessary. The Court's ruling is ss 894 patent claims 1, 5 further set forth in the HP Order.

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1 determining the access No construction is necessary. The Court's ruling is rights of the source based | further set forth in the HP Order. 2 upon the source profile, 3 wherein access rights define the rights of the source to access the 5 network 6 ’554 patent claim 1 determining the access No construction is necessary. The Court's ruling is rights of the source based | further set forth in the HP Order. 8 upon the identification of 9 the source, wherein the access rights define the 10 || | rights of the source to 1 access destination sites via the network 12 “554 patent claim 17 13 regardless of network regardless of network address settings 14 configurations ’554 The Court's ruling is further set forth in the HP Order. 15 patent claims 1, 17 16 17 18 the source Not indefinite, as Defendant SIA Mikrotitkls 554 patent claims 1, 17 withdrew its request for an indefiniteness ruling. No 19 construction is necessary. 20 21 the gateway device °554 | Not indefinite, as Defendant SIA Mikrotikls 9 || | patent claim 1 withdrew Its request for an indefiniteness ruling. No construction 1s necessary. 23 24 the destination address Not indefinite, as Defendant SIA Mikrotikls 25 554 patent claim 24 withdrew its request for an indefiniteness ruling. No construction 1s necessary. 26 27 28

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1 the second local area Not indefinite, as Defendant SIA Mikrotikls > || | network withdrew its request for an indefiniteness ruling. No construction is necessary. 3 °727 patent claim 15 4 || | the user host device is No construction is necessary. 5 configured to communicate through a 6 || | home gateway by using - an IP address of the home gateway 5 °995 patent claim 24 ? || | home network No construction is necessary. 10 °727 patent claim 20 11 a foreign gateway a gateway not on a network of the home gateway 12 995 patent claim 24 13 an incompatible private | a private IP address not compatible with the network u IP address °727 patent claim 11 15 16

IT IS SO ORDERED.

17 18 19 Dated: March 8, 2023 20 21 22 TT 23 DEAN D. PREGERSON 74 UNITED STATES DISTRICT JUDGE 25 26 27 28