1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 5 EBAY INC.; and MICROSOFT CORPORATION, v. 8 KELORA SYSTEMS, LLC, 9 Defendant. / 10 United States District Court For the Northern District of California ORDER ON CLAIM CONSTRUCTION AND GRANTING MOTION FOR SUMMARY JUDGMENT (Docket Nos. 94 in 10-4947, 57 in 11-1398 and 361 in 11-1548) Plaintiffs, 6 7 No. C 10-4947 CW 11 CABELA�S INC., Plaintiff, 12 13 No. C 11-1398 CW v. 14 KELORA SYSTEMS, LLC, 15 Defendant. / 16 17 18 No. C 11-1548 CW KELORA SYSTEMS, LLC, Plaintiff, 19 v. 22 TARGET CORPORATION; AMAZON.COM, INC.; DELL, INC.; OFFICE DEPOT, INC.; NEWEGG INC.; COSTCO WHOLESALE CORPORATION; HEWLETTPACKARD COMPANY; AUDIBLE, INC.; and ZAPPOS.COM, INC., 23 Defendants. 20 21 24 25 26 27 28 / AND ALL RELATED COUNTERCLAIMS / Plaintiffs and Counterclaim-Defendants eBay, Inc., Microsoft Corporation and Cabela�s Inc., Defendants and 1 Counterclaim-Plaintiffs Target Corporation, Amazon.com, Inc., 2 Dell, Inc., Office Depot, Inc., Newegg, Inc., Costco Wholesale 3 Corporation, Hewlett-Packard Company, Audible, Inc. and 4 Zappos.com, Inc. (hereinafter, collectively referred to as 5 Defendants) and Defendant/Counterclaim-Plaintiff and 6 Plaintiff/Counter-claim Defendant Kelora Systems, LLC 7 (hereinafter, Kelora) seek construction of terms and phrases used 8 in Kelora�s U.S. Patent No. 6,275,821 (�821 patent). 9 Defendants move for summary judgment of non-infringement and In addition, United States District Court For the Northern District of California 10 invalidity of the �821 patent. 11 Having considered the papers submitted by the parties and their 12 oral arguments, the Court construes the terms and phrases as set 13 forth below. 14 summary judgment. 15 16 Kelora opposes their motion. In addition, the Court GRANTS Defendants� motion for BACKGROUND Kelora Systems LLC is the current owner of the �821 patent, 17 which is entitled, �Method and System for Executing a Guided 18 Parametric Search,� and claims a �process for identifying a single 19 item from a family of items.� 20 invention is intended �to provide a guided parametric search to 21 isolate a subfamily of items within a family of items based on 22 alternatives associated with each item.� 23 patent specification describes two embodiments of the invention: 24 (1) an embodiment that runs on a single, local computer, see id. 25 at 5:50-18:9; and (2) an embodiment that runs over the Internet 26 and requires a server and client computer, see id. at 18:10- 27 19:34. 28 electronic catalog, providing an electronic alternative to �821 patent, Abstract. Id. The at 3:36-39. The Over the Internet, �the invention . . . may be used as an 2 1 updating and distributing product and/or service information.� 2 Id. at 4:6-9. 3 The �821 patent is the continuation of U.S. Patent No. 5,983, 4 219, which is itself a continuation of U.S. Patent No. 5,715,444 5 (�444 patent). 6 October 14, 1994. 7 Summary J. (Mot.), Ex. 6. 8 9 The application for the �444 patent was filed on Defs.� Claim Construction Brief and Mot. for A previous iteration of the �821 patent was at issue in a case previously before this Court, PartsRiver, Inc. v. Shopzilla, United States District Court For the Northern District of California 10 Inc., Case No. 09-0811 (N.D. Cal.). 11 previous owner of the �821 patent, charged eBay and Microsoft with 12 infringement. 13 non-infringement and invalidity. 14 and two of the patent were invalid based on the on-sale bar, 35 15 U.S.C. § 102(b). 16 had been the subject of a commercial offer for sale in March and 17 April 1992 and that they were reduced to practice in a 18 demonstration program, referred to as AMP Navigator, by April 19 1992. 20 judgment of invalidity to the Federal Circuit. There, PartsRiver, the eBay and Microsoft counterclaimed for judgment of The Court held that claims two In so holding, the Court found that those claims On September 18, 2009, PartsRiver appealed the Court�s 21 While litigation before this Court was ongoing in the 22 Partsriver case, the U.S. Patent and Trademark Office (PTO) was 23 conducting an ex parte reexamination of claims one and two. 24 There, the patent examiner initially rejected claims one and two 25 as being clearly anticipated by prior art. 26 reconsideration of this conclusion, arguing the prior art did not 27 teach the subject matter contained in claim one. 28 examiner dismissed PartsRiver�s arguments, concluding that 3 PartsRiver sought The patent 1 PartsRiver relied on features that did not appear in the language 2 of the claims subject to reexamination. 3 2009, PartsRiver appealed the patent examiner�s final rejection to 4 the Board of Patent Appeals and Interferences (BPAI). 5 On or about September 18, During the pendency of its appeals to the Federal Circuit and 6 the BPAI, PartsRiver proposed amending claim one and adding a 7 ninth claim to the �821 patent. 8 one necessarily changed dependent claim two. 9 deemed claim one, as amended, and new claim nine to be patentable. PartsRiver�s amendments to claim The patent examiner United States District Court For the Northern District of California 10 Claims three and four were not re-examined. 11 PartsRiver�s BPAI appeal was dismissed. 12 certificate for the �821 patent issued on November 2, 2010, 13 PartsRiver filed a motion to dismiss its appeal of this Court�s 14 judgment, which the Federal Circuit granted. Thereafter, After a reexamination 15 In these related cases, Kelora, to whom Partsriver had 16 transferred ownership of the �821 patent, and Defendants have 17 filed various complaints and counter-complaints against each 18 other, with Defendants seeking declarations of non-infringement, 19 invalidity and/or intervening rights and Kelora alleging that 20 Defendants have infringed the re-examined �821 patent. 21 asserts against Defendants two independent claims, claims one and 22 nine, and three dependent claims, claims two through four. Kelora 23 Claims one through four of the re-examined patent �821 are as 24 follows, with additions to, and deletions from, the original claim 25 one indicated in underlined text and brackets respectively: 26 27 28 1. A method for assisting a user in identifying a subfamily of items within a family of items said method performed with a server connected to a client computer through a computer network, comprising the steps of: 4 1 2 3 4 5 (a) providing a computer readable data file of stored information representing at least one family of items, said data file identifying at least one alternative for each item, (b) reading said data file, (c) displaying a feature screen indicating said alternatives represented in the family, 6 (d) accepting a first selection criteria of at least one alternative, 7 (e) determining a first subfamily of items wherein each said item in the first subfamily satisfies said first selection criteria, 8 9 United States District Court For the Northern District of California 10 (f) determining available alternatives represented in the first subfamily, 11 (g) revising said feature screen to indicate the available alternatives of the first subfamily, 12 (h) accepting a second selection criteria [comprising] from the client computer via said computer network at said server wherein the second selection criteria comprises a resubmission to the server of the alternative or alternatives of the first selection criteria plus at least one alternative selected from the revised feature screen, 13 14 15 16 17 18 19 (i) determining a second subfamily of items of the family wherein each item in the second subfamily satisfies said second selection criteria, (j) determining available alternatives represented in the second subfamily, and 20 (k) revising said feature screen to indicate the available alternatives of the second subfamily. 21 2. The method of claim 1 wherein each family has at least one feature associated therewith and further comprising the step of displaying at least one grouping wherein each said grouping comprises one of said features visually related to respective alternatives. 22 23 24 25 26 27 28 3. The method according to claim 2 and further comprising the step of: providing an interactive pointer and displaying information specific to one of said features upon a user initiated signal when said pointer is pointing to a feature caption on said feature screen. 4. The method according to claim 2 wherein at least one said grouping is hidden from view if all said respective alternatives are not available. 5 1 Mot., Ex. 2, at 20:5-20, and Ex. 3, at 1:26-2:7. 2 claim nine reads as follows, 3 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 The text of new 9. A method for assisting a user in identifying a subfamily of items within a family of items, the method comprising the following steps which are performed with a server connected to a computer network: (a) providing a computer readable data file of stored information representing at least one family of items, said data file identifying at least one alternative for each item, (b) reading said data file, (c) displaying a feature screen indicating said alternatives represented in the family, wherein data is output to a client computer via said computer network, (d) receiving and accepting a first selection criteria of at least one alternative from said client computer, said first selection criteria being received by said server from said client computer via said computer network, (e) determining a first subfamily of items wherein each said item in the first subfamily satisfies said first selection criteria, (f) determining available alternatives represented in the first subfamily, (g) revising said data for said feature screen to indicate the available alternatives of the first subfamily and outputting said revised data for said feature screen to said client computer via said computer network, (h) receiving and accepting a second selection criteria from the client computer via said computer network at said server wherein the second selection criteria comprises (1) a resubmission by the client computer of the alternative or alternatives of the first selection criteria along with (2) at least one alternative selected from the revised feature screen, (i) determining a second subfamily of items of the family wherein each item in the second subfamily satisfies said second criteria, (j) determining available alternatives represented in the second subfamily, and 28 6 (k) revising said data for said feature screen to indicate the available alternatives of the second subfamily and outputting said revised data for said feature screen to said client computer via said computer network. 1 2 3 4 Mot., Ex. 3, at 2:8-50. Defendants now move for summary judgment of non-infringement 5 6 7 and invalidity of the �821 patent based on obviousness and broadening during re-examination.1 DISCUSSION 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 I. Claim Construction A. Legal Standard The construction of a patent is a matter of law for the Court. (1996). Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 �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)). Accordingly, in construing disputed terms, the Court first looks to the words of the claims. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). 21 22 23 24 25 26 27 28 1 After the hearing on claim construction and Defendants� motion for summary judgment, the Court invited the parties to submit supplemental briefs and additional expert reports on a limited issue. Defendants argue that, in its supplemental brief and expert reports, Kelora has included arguments and evidence that go far beyond the subject matter that the Court gave it leave to address, and requests that the Court decline to consider this information. The Court has reviewed Kelora�s supplemental submissions and finds that they do exceed the scope of the Court�s prior order. However, the Court OVERRULES Defendants� objection as moot, because the Court has considered the arguments and evidence that exceed the scope and has found that they do not change the result of this Order. 7 Generally, the Court ascribes the words of a claim their ordinary 2 and customary meaning. 3 �the ordinary and customary meaning of a claim term is the meaning 4 that the term would have to a person of ordinary skill in the art 5 in question at the time of the invention, i.e., as of the 6 effective filing date of the patent application.� 7 F.3d at 1313. 8 assist in determining the meaning of a claim term. 9 �Because claim terms are normally used consistently throughout the 10 United States District Court For the Northern District of California 1 patent, the usage of a term in one claim can often illuminate the 11 meaning of the same term in other claims.� 12 Id. The Federal Circuit instructs that Phillips, 415 Other claims of the patent in question can also Id. at 1314. Id. The Federal Circuit also instructs that claims �must be read 13 in view of the specification, of which they are a part.� 14 1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 15 979 (Fed. Cir. 1995) (en banc), aff�d, 517 U.S. 370 (1996)). 16 specification must contain a description of the invention that is 17 clear and complete enough to enable those of ordinary skill in the 18 art to make and use it, and thus the specification is �always 19 highly relevant� to the Court's claim construction analysis. 20 Vitronics, 90 F.3d at 1582. 21 dispositive; it is the single best guide to the meaning of a 22 disputed term.� 23 that the patentee has given a special definition to a claim term 24 that differs from its ordinary meaning; in such cases, �the 25 inventor�s lexicography controls.� 26 The specification also may reveal the patentee�s intentional 27 disclaimer or disavowal of claim scope. 28 well, the inventor has dictated the correct claim scope, and the Id. Id. at The �Usually, [the specification] is In some cases, the specification may reveal 8 Phillips, 415 F.3d at 1316. �In that instance as 1 inventor�s intention, as expressed in the specification, is 2 regarded as dispositive.� 3 the preferred embodiment described in the specification. 4 Int�l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. 5 Cir. 1985) (en banc, plurality opinion). 6 Id. However, claims are not limited to See SRI In addition to reviewing the specification, the Court 7 considers the patent�s prosecution history. 8 980. 9 often inform the meaning of the claim language by demonstrating Markman, 52 F.3d at The prosecution history is intrinsic evidence that �can United States District Court For the Northern District of California 10 how the inventor understood the invention and whether the inventor 11 limited the invention in the course of prosecution, making the 12 claim scope narrower than it would otherwise be.� 13 F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83); see also 14 Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) 15 (�The purpose of consulting the prosecution history in construing 16 a claim is to exclude any interpretation that was disclaimed 17 during prosecution.�) (internal quotations omitted). 18 Court may find that the inventor �disclaimed protection during 19 prosecution only if the allegedly disclaiming statements 20 constitute �a clear and unmistakable surrender of subject 21 matter.�� 22 Cir. 2009) (quoting Bayer AG v. Elan Pharm. Research Corp., 212 23 F.3d 1241, 1251 (Fed. Cir. 2000)). 24 Phillips, 415 However, the Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1342 (Fed. While emphasizing the importance of intrinsic evidence in 25 claim construction, the Federal Circuit has authorized courts to 26 rely on extrinsic evidence, which consists of �all evidence 27 external to the patent and prosecution history, including expert 28 and inventor testimony, dictionaries, and learned treatises.� 9 1 Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980). 2 Although extrinsic evidence may be useful to the Court, it is less 3 significant than intrinsic evidence in determining the legally 4 operative meaning of claim language. 5 18; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 6 862 (Fed. Cir. 2004). 7 to lead to a reliable interpretation of claim language unless 8 considered in the context of the intrinsic evidence. 9 415 F.3d at 1319. Phillips, 415 F.3d at 1317- Furthermore, extrinsic evidence is unlikely Phillips, United States District Court For the Northern District of California 10 B. 11 The parties dispute the meaning of more than a dozen words or Discussion 12 phrases in claims one through four and nine of the amended patent 13 and one in the original claim one. 14 appear in other places in the patent as well. 15 The disputed terms and phrases Because the Court grants Defendants� motion for summary 16 judgment, the Court need not construe disputed terms beyond the 17 extent necessary for resolution of this motion. 18 19 1. �User� In their motion, Defendants argue that the word �user� means 20 �a person using a computer.�2 21 challenge this construction or propose an alternative. Mot. at 55. Kelora does not 22 23 24 25 26 27 28 2 Throughout their motion, Defendants cite a table that they include as Exhibit 1 to their motion. This table has �[a]dditional evidence in support of Defendants� proposed construction[s],� which they do not include or discuss in their brief �[d]ue to space limitations.� Mot. at 37, n.23. Kelora challenges the consideration of this table, arguing that Defendants �merely seek to circumvent the already extended page limit for Defendants� brief� by including a table with �arguments not deemed worthy of discussion in Defendants� Motion.� Opp. at 60. The Court SUSTAINS Kelora�s objection and declines to consider Defendants� Exhibit 1. 10 1 Accordingly, the Court adopts Defendants� proposed construction 2 and construes �user� to mean a �person using a computer.� 3 2. 4 �Server� Defendants contend that the word �server� need not be 5 construed. 6 throughout the claims refers to a �web server.� 7 that the word �server� was limited to a �web server� during the 8 prosecution history of the �821 patent to distinguish it from 9 prior art. Kelora states that the word �server� as used Kelora argues Defendants reply that Kelora�s proposed construction United States District Court For the Northern District of California 10 is incorrect, and that the cited pages from the prosecution 11 history do not constitute a �clear and unmistakable waiver of 12 subject matter.� 13 The portions of the prosecution history cited by Kelora do 14 not constitute a clear and unmistakeable waiver of subject matter. 15 Kelora relies on a response sent by the patentee to the 16 Commissioner for Patents, requesting reconsideration of the 17 rejection of the original claims one and two. 18 Defendants, the claims addressed at the time did not include the 19 words �server,� and the letter did not propose any amendments to 20 the claims. 21 patentee used the word �webserver� in paragraphs that were 22 intended to provide an example of how the patented method 23 addressed a problem that servers faced. 24 concrete example may be helpful here. 25 .�). 26 with no qualification, as the more general term. 27 typical client server applications, the server establishes a 28 separate session with each user . . .�). Reexam. Ex. 5, at 2-5. As noted by In the discussion, the See id. at 10 (�A Assume a webserver . . In fact, the surrounding sentences use the word �server,� 11 See id. (�In There is no language 1 that provides a clear and unmistakable waiver of subject matter 2 related to any server that is not a web server. 3 4 Accordingly, the Court declines to construe the word server to be limited to a web server. 5 6 3. �With a server� Kelora argues in an indirect manner that the phrase �with a 7 server� should be construed to mean �by a server.� 8 that the use of this phrase in the preamble means that all of the 9 steps in claims one and nine require no action by any entity other Kelora states United States District Court For the Northern District of California 10 than a server, specifically, no action by a client computer, and 11 that the �server performs each step.� 12 Defendants respond that this construction is incorrect, because 13 the plain terms of the preamble allow some of the steps to be 14 performed by a client computer as long as it is connected with the 15 server when the step is performed. 16 See Opp. at 47, 48. As Defendants point out, this Court has already found that 17 the steps in the claims do require some action by a client 18 computer. 19 in step (h) of amended claim one and claim nine, tasks are divided 20 between the client computer and the server, and that �the client 21 computer combines �the alternative or alternatives of the first 22 selection criteria plus at least one alternative selected from the 23 revised feature screen,� which, together, constitute the �second 24 selection criteria.�� 25 Plaintiffs� Motion for Summary Judgment and Consolidating Cases, 26 Docket No. 70 in Case No. 10-4947, at 7-8. 27 28 In the Order of May 9, 2011, the Court recognized that, Order Granting in Part and Denying in Part Further, the clear terms of the specification support Defendants� interpretation. The specification describes, for 12 1 example, that the client computer, and not the server, performs 2 the step of �displaying.� 3 See below, section I.B.4, �Displaying.� Accordingly, the Court declines to construe the phrase �with 4 a server� to mean �by a server.� 5 construed. 6 4. 7 The phrase need not be �Displaying� Defendants propose that the word �displaying� should be 8 construed as �showing on the display device of the user�s 9 computer.� Kelora contends that the word should be construed as United States District Court For the Northern District of California 10 �the action of sending a page to a display surface or device for 11 viewing.� 12 Defendants� proposed construction is more consistent with the 13 claim language. 14 from step (c) of claim one, which did not change during 15 re-examination, only by the addition of �wherein data is output to 16 a client computer via said computer network.� 17 this clause means that �displaying� must include the concept of 18 outputting. 19 this already, the additional phrase in claim nine would be 20 superfluous, and step (c) in each claim would have the same 21 meaning. 22 meaning to all terms of the claim is preferred over one that does 23 not.� 24 (Fed. Cir. 2005). 25 additional phrase meaningful and allows step (c) to be 26 differentiated between the two claims. 27 28 Step (c) of the newly added claim nine differs Kelora argues that However, if �displaying� were construed to include Both parties point out, �A claim construction that gives Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 Defendants� proposed construction renders this Kelora also argues that Defendants� construction disregards language from the preamble of claims one and nine, which states 13 1 that the steps are �performed with a server connected [. . .] to a 2 computer network.� 3 the steps are all performed by the server. 4 specification makes clear that the display step is performed by �a 5 client,� in conjunction with a server sending data to the client, 6 and not by the server alone. 7 However, the preamble does not specify that Instead, the In arguing that �displaying� is defined in part as �sending,� 8 Kelora states that �the specification describes the act of 9 �displaying� by the server in the Internet embodiments,� and �that United States District Court For the Northern District of California 10 the client then merely reflects what the server sends it.� 11 at 50 (citing Mot., Ex. 2, 18:48-54, 61-63). 12 inaccurately describes the contents of the specification. 13 Instead, the specification clearly distinguishes between �sending� 14 and �displaying,� and states that the server computer performs the 15 former and the client computer performs the latter. 16 18:49, 61-63 (�the server sends a feature screen status . . . The 17 client receives the feature screen status and displays the feature 18 screen accordingly.�). 19 non-interchangeable manner, and the division of roles is 20 reiterated, elsewhere in the specification. 21 (�The server sends the feature screen status . . . to the client. 22 The client receives the feature screen status and displays the 23 updated feature screen.�). 24 that the client refers to the user�s computer. 25 18:12-13 (distinguishing between the server computer and the 26 client computer); 18:45 (�a user on the client�); 18:64 (�The user 27 on the client�). Opp. However, this See Ex. 2, These two words are consistently used in a See id. at 19:6-10 The specification also makes clear See, e.g., id. at Thus, Kelora�s proposed construction is not 28 14 1 consistent with the language of the specification, while 2 Defendants� proposal is. 3 Defendants� proposed construction is also consistent with the 4 prosecution history of the �821 patent. 5 that, during the re-examination process, the patentees proposed a 6 new claim one in which the step of �displaying� was replaced with 7 a step of �outputting data for a feature screen.� 8 (citing �821 Reexam., Ex. 8 at 5). 9 �displaying� language in the final amendment, which demonstrates Defendants point out Mot. at 48 They later reverted to the United States District Court For the Northern District of California 10 that the patentees deliberately chose not to use the word 11 �outputting.� 12 addition of the phrase �wherein data is output to� supports its 13 construction, which is unavailing for the reasons addressed above. 14 Id. In response, Kelora argues only that the Finally, the inventor testimony offered is also consistent 15 with Defendants� position that �displaying� refers to the browser 16 �showing,� as distinguished from the server �sending.� 17 at 51 (quoting deposition testimony of inventor Sherif Danish that 18 �it is a function of the server to determine what is this feature 19 screen and send it to the browser, and the browser will interpret 20 it and visualize it for the user� and �the browser can only 21 display what it receives�); Mot. at 48 (inventor Mr. Danish 22 agreeing that �the browser process[es] HTML code that it receives 23 from the server,� formats it, and then �displays it on the 24 screen,� and that �the display is . . . a display that happens on 25 the user of the--on the browser of the client�). 26 27 See Opp. Thus, the Court construes the word �displaying� to mean �showing on the display device of the user�s computer.� 28 15 1 2 5. �Resubmission� Kelora contends that the phrase �resubmission to the server,� 3 which appears in claim one and nine, does not need to be 4 construed. 5 construed in claim one, but not in claim nine, where it is 6 followed by the phrase �by said client computer.� 7 propose that the phrase in claim one should be construed as 8 �resubmission by said client computer to the server.� 9 responds with two arguments: that Defendants� construction Defendants argue that this phrase does need to be Defendants Kelora United States District Court For the Northern District of California 10 improperly changes a noun to a verb requiring action, and that 11 requiring this action to be done by the client computer violates 12 the limitation of the preamble that the steps are to be �performed 13 with a server.� 14 First, Kelora�s argument that Defendants� construction 15 improperly changes a noun to a verb is unpersuasive. 16 correct that the word �resubmission� is a noun; however, contrary 17 to Kelora�s contentions, nouns can describe actions and not all 18 words that describe actions are verbs. 19 New International Dictionary 1545 (Philip Babcok Gove ed., 1993) 20 (defining a noun as �a word that is the name of a subject of 21 discourse (as a person, animal, plant, place, thing, substance, 22 quality, idea, action, or state)�); Merriam-Webster Dictionary 23 (May 18, 2012, 2:04 p.m.), http://www.merriam- 24 webster.com/dictionary/noun (defining a noun as �any member of a 25 class of words that typically can be combined with determiners to 26 serve as the subject of a verb, can be interpreted as singular or 27 plural, can be replaced with a pronoun, and refer to an entity, 28 quality, state, action, or concept�). 16 Kelora is See, e.g., Webster�s Third Resubmission is such a 1 noun. 2 1937 (�resubmission� is a noun defined as �an act of 3 resubmitting�). See Webster�s Third New International Dictionary, above, at 4 As Defendants point out, the plain text of the claim and the 5 specification demonstrate that the resubmission is something that 6 the client computer sends to the server. 7 step of �accepting a second selection criteria from said client 8 computer . . . wherein the second selection criteria comprises a 9 resubmission to the server . . .� The claim describes a Mot., Ex. 3 at 1:46-50. The United States District Court For the Northern District of California 10 specification explains that the user on the client computer �makes 11 selections,� and the client computer �initiates a search with the 12 modified selection criteria� and �sends to the server, the 13 ScreenNum value . . . and the modified selection criteria.� 14 Ex. 3 at 18:64-19:2. 15 and �executes the search operation.� 16 resubmission is sent from the client computer to the server is 17 also supported by the re-examination history: when allowing the 18 re-examined claims, the Examiner stated that �when the client 19 computer of claims 1 or 9 submits a second query, it transmits 20 both the previous and current selection criteria together.� 21 Reexam., Ex. 16 at 3. Mot., In turn, the �server receives� these items Id. at 19:3-5. That the �821 22 Kelora responds that this construction would �render 23 superfluous� the limitation in the preamble that the steps are 24 performed �with a server.� 25 actions between the server and client computer does not render 26 �with a server� superfluous; the client computer must send the 27 resubmission to the server, as is evident from the claims 28 themselves. Opp. at 12. 17 However, allocating 1 Accordingly, the Court construes the phrase �resubmission to 2 the server� to mean �resubmission by said client computer to the 3 server.� 4 II. Motion for Summary Judgment 5 A. 6 Summary judgment is properly granted when no genuine and Legal Standard 7 disputed issues of material fact remain, and when, viewing the 8 evidence most favorably to the non-moving party, the movant is 9 clearly entitled to prevail as a matter of law. Federal Rule United States District Court For the Northern District of California 10 Civil Procedure 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 11 (1986); Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89 12 (9th Cir. 1987). 13 The moving party bears the burden of showing that there is no 14 material factual dispute. 15 true the opposing party�s evidence, if supported by affidavits or 16 other evidentiary material. 17 815 F.2d at 1289. 18 in favor of the party against whom summary judgment is sought. 19 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 20 587 (1986); Intel Corp. v. Hartford Accident & Indem. Co., 952 21 F.2d 1551, 1558 (9th Cir. 1991). 22 Therefore, the court must regard as Celotex, 477 U.S. at 324; Eisenberg, The court must draw all reasonable inferences Material facts which would preclude entry of summary judgment 23 are those which, under applicable substantive law, may affect the 24 outcome of the case. The substantive law will identify which 25 facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 26 242, 248 (1986). 27 28 18 1 Where the moving party does not bear the burden of proof on 2 an issue at trial, the moving party may discharge its burden of 3 production by either of two methods: 4 7 The moving party may produce evidence negating an essential element of the nonmoving party�s case, or, after suitable discovery, the moving party may show that the nonmoving party does not have enough evidence of an essential element of its claim or defense to carry its ultimate burden of persuasion at trial. 8 Nissan Fire & Marine Ins. Co., Ltd., v. Fritz Cos., Inc., 210 F.3d 9 1099, 1106 (9th Cir. 2000). 5 6 United States District Court For the Northern District of California 10 If the moving party discharges its burden by showing an 11 absence of evidence to support an essential element of a claim or 12 defense, it is not required to produce evidence showing the 13 absence of a material fact on such issues, or to support its 14 motion with evidence negating the non-moving party�s claim. 15 see also Lujan v. Nat�l Wildlife Fed�n, 497 U.S. 871, 885 (1990); 16 Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir. 1991). 17 the moving party shows an absence of evidence to support the non- 18 moving party�s case, the burden then shifts to the non-moving 19 party to produce �specific evidence, through affidavits or 20 admissible discovery material, to show that the dispute exists.� 21 Bhan, 929 F.2d at 1409. 22 Id.; If If the moving party discharges its burden by negating an 23 essential element of the non-moving party�s claim or defense, it 24 must produce affirmative evidence of such negation. 25 F.3d at 1105. 26 burden then shifts to the non-moving party to produce specific 27 evidence to show that a dispute of material fact exists. Nissan, 210 If the moving party produces such evidence, the 28 19 Id. 1 If the moving party does not meet its initial burden of 2 production by either method, the non-moving party is under no 3 obligation to offer any evidence in support of its opposition. 4 Id. 5 ultimate burden of persuasion at trial. 6 This is true even though the non-moving party bears the Id. at 1107. Where the moving party bears the burden of proof on an issue 7 at trial, it must, in order to discharge its burden of showing 8 that no genuine issue of material fact remains, make a prima facie 9 showing in support of its position on that issue. UA Local 343 v. United States District Court For the Northern District of California 10 Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir. 1994). 11 is, the moving party must present evidence that, if uncontroverted 12 at trial, would entitle it to prevail on that issue. 13 also Int�l Shortstop, Inc. v. Rally�s, Inc., 939 F.2d 1257, 1264- 14 65 (5th Cir. 1991). 15 must set forth specific facts controverting the moving party�s 16 prima facie case. 17 party�s �burden of contradicting [the moving party�s] evidence is 18 not negligible.� 19 because resolution of the relevant issue is �highly fact 20 specific.� That Id.; see Once it has done so, the non-moving party UA Local 343, 48 F.3d at 1471. Id. The non-moving This standard does not change merely Id. 21 B. 22 Under 35 U.S.C. § 103(a), a patent is invalid �if the 23 differences between the subject matter sought to be patented and 24 the prior art are such that the subject matter as a whole would 25 have been obvious at the time the invention was made to a person 26 having ordinary skill in the art to which said subject matter 27 pertains.� 28 the predictable use of prior art elements according to their Summary Judgment of Invalidity due to Obviousness To avoid being obvious, a patent must be �more than 20 1 established functions.� 2 398, 417 (2007). 3 considered as a whole and the claims must be considered in their 4 entirety.� 5 (Fed. Cir. 1998). 6 KSR Int�l Co. v. Teleflex Inc., 550 U.S. To determine obviousness, �the invention must be Kahn v. General Motors Corp., 135 F.3d 1472, 1479 �Although the ultimate determination of obviousness under 7 § 103 is a question of law, it is based on several underlying 8 factual findings, including (1) the scope and content of the prior 9 art; (2) the level of ordinary skill in the pertinent art; (3) the United States District Court For the Northern District of California 10 differences between the claimed invention and the prior art; and 11 (4) evidence of secondary factors, such as commercial success, 12 long-felt need, and the failure of others.� 13 Inc. v. Becton, 653 F.3d 1296, 1310 (Fed. Cir. 2011) (citing 14 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). 15 the content of the prior art, the scope of the patent claim, and 16 the level of ordinary skill in the art are not in material 17 dispute, and the obviousness of the claim is apparent in light of 18 these factors, summary judgment is appropriate.� 19 427. 20 Retractable Techs., �Where . . . KSR, 550 U.S. at The Court is not required to accept blindly conclusory 21 assertions made by the parties� experts. 22 Court rejected the approach that the patentee can necessarily 23 create a material question of fact by proffering a conclusory 24 expert affidavit. 25 court understood the Graham approach to exclude the possibility of 26 summary judgment when an expert provides a conclusory affidavit 27 addressing the question of obviousness, it misunderstood the role 28 expert testimony plays in the analysis.�). In KSR, the Supreme See 127 S. Ct. at 1745 (�To the extent the 21 Thus, when considering 1 summary judgment on the question of obviousness, �the district 2 court can and should take into account expert testimony, which may 3 resolve or keep open certain questions of fact,� but expert 4 testimony is not the end of discussion, because �[t]he ultimate 5 judgment of obviousness is a legal determination.� 6 Id. Defendants contend that the re-examined �821 patent is obvious, based on a combination of the AMP Navigator program, 8 which this Court found was prior art for the original �821 patent, 9 with other prior art. 10 United States District Court For the Northern District of California 7 1. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The hypothetical person of ordinary skill in the art The parties agree that �a low level of skill in the art� is the appropriate standard to use. While Defendants define this as �a person with a moderate level of computer science experience acquired through either formal or informal training,� Mot. at 29, n.18, Kelora defines it as someone with �2-3 years of experience or education with computer programming and familiarity with standards that had been established at the time,� Opp. at 20. The difference between these two definitions, if any, is not material to the resolution of this motion. Thus, the Court adopts Kelora�s proposed definition for the purposes of this order. In its supplemental opposition, Kelora refers to anecdotal evidence from one of its experts about her first-hand experience reviewing solutions generated by computer science and engineering students in response to an assignment to adapt a computer application with search capability to a networked application. Kelora argues that, because none of these students adapted the application to the Web or to use resubmission, such steps were not 22 1 obvious to a person of ordinary skill in the art. 2 expert also refers to the fact that the inventors themselves were 3 unfamiliar with web servers until the second quarter of 1994 and 4 could not have adapted the invention to the Web before that time. 5 However, this evidence is not determinative. 6 obviousness is determined entirely with reference to a 7 hypothetical �person having ordinary skill in the art.�� 8 Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). 9 Thus, the actual skills displayed or solutions derived by any Kelora�s other �The issue of Std. Oil United States District Court For the Northern District of California 10 particular person or people are irrelevant to the inquiry. 11 e.g., id. (stating that, because the focus is on a hypothetical 12 person, the �actual inventor�s skill is irrelevant to the 13 inquiry�). 14 in the art, the fact that the students did not choose to go beyond 15 the basic requirements of a school assignment to adapt their 16 applications to the Web or use resubmission does not establish or 17 suggest that they lacked the skills to do so with the appropriate 18 motivation. 19 had access to all prior art references at the time, or that they 20 viewed the collective teachings of the prior art �as a whole,� as 21 is presumed of the hypothetical person of ordinary skill. 22 Std. Oil, 774 F.2d at 454; In re Gorman, 933 F.2d 982, 986 (Fed. 23 Cir. 1991). 24 25 See, Further, even if the students were of ordinary skill 2. Similarly, there is no showing that these students See The scope and content of the prior art Prior art refers to �knowledge that is available, including 26 what would be obvious from it, at a given time, to a person of 27 ordinary skill in an art.� 28 Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984). Kimberly-Clark Corp. v. Johnson & 23 Under section 103, 1 the relevant content for the obviousness analysis is what was in 2 the prior art �at the time of the invention was made.� 3 § 103. 4 5 a. 35 U.S.C. The time of invention For consideration of obviousness, the relevant prior �art 6 must have existed as of the date of invention, presumed to be the 7 filing date of the application until an earlier date is proved.� 8 Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 9 449 (Fed. Cir. 1986). See also 35 U.S.C. § 103(a) (stating that United States District Court For the Northern District of California 10 the relevant consideration is what �would have been obvious at the 11 time the invention was made�). 12 the relevant application filing date was August 14, 1994. 13 e.g., Mot. at 19 n.6; Opp. at 22. 14 The parties do not dispute that See, See also Defs.� Exs. 2, 6. Kelora, however, argues that there is a material dispute of 15 fact as to whether the date of invention was during or before the 16 second quarter of 1994. 17 cites its interrogatory responses, in which it states that the 18 inventors, Kris Kimbrough and Mr. Danish, conceived of the 19 Internet embodiment after taking a class on web servers that Mr. 20 Danish learned of through a listserve that he joined in or before 21 April 1994, and that the only witnesses to the conception were the 22 two inventors. 23 Decl. ¶ 1 (Mr. Danish is a managing member of Kelora). 24 basis, Kelora argues that, because one of the claimed pieces of 25 prior art, a message posted to the WWW-Talk listserve by Nick See Opp. at 22, 24. In support, Kelora Id. (citing Mot., Ex. 15, at 5-6); see also Danish 26 27 28 24 On that 1 Arnett,3 bears the date of May 16, 1994, there is a genuine issue 2 of material fact as to whether the Arnett prior art was known to 3 others or publicly available as a printed publication before the 4 date of invention. 5 Id. However, inventor testimony alone is insufficient to 6 establish a conception date. 7 party seeks to prove conception via the oral testimony of a 8 putative inventor, the party must proffer evidence corroborating 9 that testimony.� �It is well established that when a P&G v. Teva Pharms. USA, Inc., 566 F.3d 989, 999 United States District Court For the Northern District of California 10 (Fed. Cir. 2009) (quoting Shu-Hui Chen v. Bouchard, 347 F.3d 1299, 11 1309 (Fed. Cir. 2003)). 12 Micro Int�l Ltd., 2010 U.S. Dist. LEXIS 13106, at *27 (N.D. Cal.) 13 (�in addition to providing the testimony of the inventor, whose 14 credibility can be judged by a jury, a patentee must offer 15 independent corroborating evidence to establish a priority date 16 earlier than the application filing date�). 17 consist of testimony of a witness, other than an inventor, to the 18 actual reduction to practice or it may consist of evidence of 19 surrounding facts and circumstances independent of information 20 received from the inventor.�� See also Monolithic Power Sys. v. O2 �Such evidence �may Hahn v. Wong, 892 F.2d 1028, 1032- 21 22 23 3 24 25 26 27 28 Kelora objects to paragraphs four through ten of the declaration of Nick Arnett as hearsay and without foundation. Kelora does not object to the admissibility of Exhibit A to the declaration, which contains the message posted by Mr. Arnett. Mr. Arnett attests that the statements in the declaration are based on his personal knowledge; many of the statements within the challenged paragraphs describe his own activities, including comments that he made and messages that he received. Thus, to extent that the Court relies upon the Arnett declaration, Kelora�s objection is OVERRULED. 25 1 1033 (Fed. Cir. 1989) (quoting Reese v. Hurst, 661 F.2d 1222, 1225 2 (C.C.P.A. 1981)) (emphasis added). 3 Kelora has pointed only to the inventors� own statements to 4 establish a conception date earlier than the application filing 5 date, which is insufficient to support that finding as a matter of 6 law. 7 conception date is October 14, 1994, the application filing date 8 of the �444 patent, or that Arnett is prior art. 9 United States District Court For the Northern District of California 10 Therefore, there is no material dispute of facts that b. AMP Navigator as prior art Kelora also contests Defendants� use of the AMP Navigator 11 demonstration program as prior art. 12 make no showing that the AMP Navigator program represents an on- 13 sale bar to the re-examined claims or that it anticipates the re- 14 examined claims by itself. 15 claims one and two of the original �821 patent were invalid �due 16 to the on-sale bar because they were the subject of a commercial 17 offer for sale of an invention that was reduced to practice before 18 October 14, 1993.� 19 Dist. LEXIS 74433 (N.D. Cal.). 20 one and two of the original �821 patent were in fact valid or 21 dispute Defendants� argument that it would be barred from doing so 22 as the successor-in-interest to PartsRiver, Inc. 23 Kelora argues that Defendants This Court has already found that PartsRiver, Inc. v. Shopzilla, Inc., 2009 U.S. Kelora does not argue that claims The Federal Circuit has clearly stated, �Prior art under the 24 § 102(b) on-sale bar is also prior art for the purposes of 25 obviousness under § 103.� 26 1337, 1344 (Fed. Cir. 2007). 27 Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003). 28 argues that this is improper �bootstrapping� on the prior finding Dippin� Dots, Inc. v. Mosey, 476 F.3d See also TorPharm Inc. v. Ranbaxy 26 While Kelora 1 of invalidity, the courts have repeatedly recognized that �Section 2 102(b) may create a bar to patentability . . . in conjunction with 3 [§ 103], if the claimed invention would have been obvious from the 4 on-sale device in conjunction with the prior art.� 5 v. United States ITC, 958 F.2d 1066, 1071 (Fed. Cir. 1992). 6 also TorPharm, 336 F.3d at 1327-1328 (describing �the § 102(b)/103 7 bar�); Pfaff v. Wells Elecs., 124 F.3d 1429, 1436 (Fed. Cir. 8 1997), aff�d 525 U.S. 55 (1998) (same). 9 LaBounty Mfg. See Kelora contends that �the law does not permit the AMP United States District Court For the Northern District of California 10 Navigator to be combined with other art that is created after the 11 offer for sale . . . to show obviousness.� 12 (emphasis omitted). 13 support of the proposition that the Court should ignore the clear 14 statutory language of § 103(a) that the prior art relevant to 15 obviousness is that which existed �at the time the invention was 16 made.� 17 consists of those sources that are otherwise �prior art for 18 purposes of Section 103 . . . plus those sources enumerated in 19 Section 102(b) with effective dates more than one year before the 20 applicant�s filing date.� 21 § 5.03[2][b], at 5-133-134 (2012) (emphasis in original). 22 also Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 2010 U.S. 23 Dist. LEXIS 56752, at *10-11 (E.D. Mich.). 24 Sur-reply at 4 However, Kelora cites no legal authority in For the purposes of obviousness, the relevant prior art 2 Donald S. Chisum, Chisum on Patents See In opposing Defendants� obviousness arguments, Kelora focuses 25 on the source code of the AMP Navigator demonstration program and 26 argues that a person of ordinary skill in the art would not have 27 been able to transform that source code into a client server 28 arrangement. However, these arguments are irrelevant. 27 The prior 1 invalidity finding placed the claimed features that were the 2 subject of the offer for sale--claims one and two of the original 3 �821 patent--into the prior art for the obviousness inquiry, along 4 with the specific reduction-to-practice and unclaimed limitations 5 that were contained in the AMP Navigator demonstration program. 6 See Pfaff v. Wells Elecs., 525 U.S. 55, 60 (1998) (stating that, 7 in summarizing the lower court�s obviousness inquiry, �[g]iven the 8 [lower] court�s § 102(b) holding, the prior art included [the 9 patent�s] first four claims�). See also Lockwood v. American United States District Court For the Northern District of California 10 Airlines, 107 F.3d 1565, 1570 (Fed. Cir. 1997) (�it is the claims 11 that define a patented invention. . . . [the] public use of the 12 high-level aspects of the SABRE system was enough to place the 13 claimed features of the �359 patent in the public�s possession�). 14 This Court has already determined that the AMP Navigator 15 demonstration program constituted a reduction to practice of the 16 original claims and thus that all elements of the local embodiment 17 of the original claims were obvious. 18 to re-litigate each of these, as Kelora urges, and AMP Navigator 19 is prior art citable against the patent claims for obviousness 20 purposes. 21 the current claims by showing that they would have been obvious 22 from the combination of AMP Navigator, including the concept of 23 parametric search, with other prior art, including the Arnett and 24 Suzuki prior art. Defendants are not required Accordingly, Defendants may prove the obviousness of 25 Defendants contend that the only differences between the 26 original and re-examined claims are the requirement of the client- 27 server arrangement and the resubmission requirement for iterative 28 searching, and that each of these elements was taught in the prior 28 1 art. 2 expert witness, Mr. Gafford, also identifies these as the two 3 specific items that the AMP Navigator prior art does not teach, 4 and which are contained in the re-examined �821 patent. 5 Gafford Decl. ¶¶ 34-39. 6 same). See Mot. at 17; Reply at 9-10. 7 8 9 c. In his declaration, Kelora�s See See also Sur-reply at 3 (recognizing the Client-server arrangements Defendants argue that client-server arrangements were well-known and obvious, and rely on a number of prior art examples United States District Court For the Northern District of California 10 to demonstrate this. 11 server� system is not taught in the prior art, but does not 12 dispute that a �client-server� system was taught. 13 Kelora responds primarily that a client-�web Kelora argues that the AMP Navigator prior art �teaches away� 14 from a web server arrangement, because the code for the AMP 15 Navigator demonstration program does not have this functionality 16 itself and cannot be altered to include it. 17 and Mr. Gafford do not dispute that the Suzuki4 reference and AMP 18 Navigator together teach the combination of the local search 19 process contained in the original claim one with the use of a 20 database on a remote server, even though Suzuki does not use the Nonetheless, Kelora 21 22 4 23 24 25 26 27 28 The Suzuki reference is to a patent published by the Japan Patent Office on January 5, 1989, entitled �File Searching Method.� Leventhal Decl., Ex. 2 at 321. Kelora objects to the English translation of the reference. The translation is accompanied by the declaration of Takeo Ohashi, who declares under penalty of perjury that he has �competent knowledge of the Japanese and English languages� and that the �translation is an accurate representation of� the original Japanese patent. Id. at 340. Defendants have laid a proper foundation for the admission of the translated reference. See 28 U.S.C. § 1746; Federal Rules of Evidence 604, 702, 901. Accordingly, Kelora�s objection is OVERRULED. 29 1 words �client� and �server.� 2 Decl. ¶ 43 (recognizing that �combining Suzuki with the AMP 3 Navigator demonstration program would have been expected by a 4 person of ordinary skill in the art as of October 14, 1994, to 5 have resulted, and would have resulted, in a system with the 6 logical model of the AMP Navigator demonstration program, . . . 7 coupled with a remote database�). 8 9 See Opp. at 32; see also Gafford Further, Defendants offer substantial evidence, uncontested by Kelora, that such an arrangement was common knowledge in the United States District Court For the Northern District of California 10 art prior to the time of invention and would have been obvious to 11 try. 12 examination of the grandparent patent to the patent-in-suit, when 13 the Examiner considered a claim dependent on the claim from which 14 the original claim one is derived and which is nearly identical to 15 the original claim one. 16 7 ¶ 28). 17 which added a client server arrangement, stating that �client 18 server systems are well known in the art and it would have been 19 obvious to one of ordinary skill in the DP art at the time of the 20 applicant�s invention to provide the invention also on a client 21 server system as that would provide a wider range of utilization.� 22 �444 Prosecution, No. 7 ¶ 28. 23 1385, 1390 (C.C.P.A. 1969) (noting that a patent examiner may 24 properly rely on �common knowledge and common sense of the person 25 of ordinary skill in the art� in making conclusions regarding 26 obviousness). 27 irrelevant as to whether one would be motivated to combine the 28 present claim with a client server arrangement, but does not Defendants cite statements from the Examiner during the Mot. at 21 (citing �444 Prosecution, No. The Examiner rejected as obvious the dependent claim, See also In re Bozek, 416 F.2d Kelora responds only that this statement is 30 1 dispute this as evidence that client server systems were well- 2 known in the art prior to the invention of the disputed claims. 3 Opp. at 37. 4 Defendants also offer PC Magazine�s 1993 book, Guide to 5 Client/Server Databases, which explains the concept of client- 6 server database arrangements and various benefits associated with 7 such systems. 8 development of the World Wide Web as an example of a client-server 9 arrangement, which consisted of a server and client-side browser They also provide references to Tim Berners-Lee�s United States District Court For the Northern District of California 10 and which was available in 1992 and earlier. 11 Jason Ng�s GSQL program, which taught the use of remote databases 12 on a web server. 13 references teach client-server arrangements, including client-web 14 server arrangements, Kelora contends only that these references do 15 not teach resubmission. Defendants also cite Rather than disputing that these prior art 16 Accordingly, the Court finds that client-server systems were 17 known at the time of invention to people of ordinary skill in the 18 art, were obvious to try and were taught by prior art. 19 d. Resubmission 20 Similarly, the Court concludes that resubmission of all 21 search terms was a method taught by the prior art to resolve the 22 problem of statelessness. 23 �A �stateless� server does not remember previous requests 24 from a user.� 25 of the server, each request is treated independently and is 26 unrelated to any other. 27 search criteria to a stateless server, the server conducts a 28 search, returns the search results to the user, and then �forgets� Larson II Decl. ¶ 26. Id. Thus, from the perspective �For example, if a user submits 31 1 both the search and the results.� 2 the Web is a stateless protocol. 3 at 1. 4 ordinary skill in the art knew of the Web�s use of stateless 5 servers. 6 Id. The HTTP protocol used on See, e.g., Leventhal Decl. Ex. 8 Defendants offer evidence to support that persons of Larson II Decl. ¶ 35. Such a design had critical advantages over a stateful server, 7 such as to reduce the amount of disk storage and memory space 8 required and to simplify crash recovery. 9 reexamination of the �821 patent, the inventors themselves Id. at ¶ 29. During the United States District Court For the Northern District of California 10 acknowledged disadvantages of stateful servers on the World Wide 11 Web. 12 identify and track individual sessions with each such user in 13 order to know what criteria the user previously searched in 14 earlier search iterations, there is clearly a tremendous overhead 15 load on the webserver to service such individual search 16 sessions.�). 17 See �821 Reexam. Ex. 5 at 10 (�If the webserver has to As previously stated, the Arnett reference consists of a 18 message written by Mr. Arnett in May 1994 on the WWW-Talk 19 listserve. 20 for discussion by active implementers of particular systems or 21 protocols.� 22 venues for discussion of WWW implementation issues.� 23 message, Arnett remarks in part, 24 25 26 27 28 �At the time of the invention, listserves were a venue Larson II Decl. �WWW-Talk was one of the primary Id. In the I�m working on an application that would take advantage of this sort of capability, but I don�t think it requires abandonment of statelessness. My experience so far tells me that when the user wants to perform multiple queries and transfers, it�s because they are somehow related to one another. I�m attacking the problem by passing parameters, which are kept by the *browser* and re-sent. I see the need for improvement of the browsers� ability to keep track of queries and 32 1 such, based on interaction, rather than a need to change the servers� capabilities in that area. . . . 2 At first glance, you�d think that that would require the server to record the state of the outline, but the people who�ve done it actually just create a document that contains a list of parameters describing the outline�s state, then pass those parameters back to the server on each subsequent query. . . . 3 4 5 There�s no reason that the subsequent query can�t pass back to the server a set of parameters that describes the previous search results, to which new narrowing or widening parameters can be added. 6 7 Arnett Declaration, Ex. A at 1-2. 9 expert, Dr. Larson, supports that this constitutes resubmission. 10 United States District Court For the Northern District of California 8 Kelora responds that Arnett does not teach resubmission for Defendants contend, and their 11 several reasons. 12 different approaches to keeping previous search results, only one 13 of which is resubmission of the original search terms along with 14 the new search terms and that this would not have been the single 15 solution necessarily chosen by a person of ordinary skill in the 16 art. 17 teach away.� 18 Kelora concedes that Arnett discloses that �a client can resend 19 certain parameters,� admitting that Arnett describes a 20 resubmission by a client. 21 �teaches away� from resubmission by a server. 22 This argument is premised on Kelora�s argument for a construction 23 that limits �resubmission� to something that a server does. 24 Because the Court has already declined to adopt this construction, 25 Kelora�s argument is unavailing. 26 Kelora argues that Arnett teaches several However, �mere disclosure of alternative designs does not In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Kelora asserts instead that Arnett Sur-reply at 6. Kelora also contends that there may have been solutions to 27 the problem of statelessness that would not have involved 28 resubmission. See, e.g., Gafford II Decl. ¶ 15. 33 However, the 1 fact that there are multiple solutions, only one of which was 2 resubmission, does not mean resubmission was not obvious to try. 3 As the Supreme Court recognized in KSR, �When there is a design 4 need or market pressure to solve a problem and if there are a 5 finite number of identified, predictable solutions to a problem, a 6 person of ordinary skill has good reason to pursue the known 7 options within his or her technical grasp.� 8 9 550 U.S. at 421. Kelora finally argues that, even though Arnett suggests that the client resubmit all earlier parameters in a successive search, United States District Court For the Northern District of California 10 the discussion in Arnett is not clear and at a high level of 11 abstraction, without specific guidance as to how a person of 12 ordinary skill at that time would be able to perform a 13 resubmission. 14 as the specification of the �821 patent itself does regarding how 15 resubmission is performed. 16 explains that, when a user makes a first selection, 17 18 19 20 21 22 23 However, Arnett provides the same level of detail As background, the specification the server 125 sends a feature screen status 127 to the client 126. The feature screen status 127 comprises a feature screen code, ScreenNum 102 in a preferred embodiment, all features 5 appropriate to the feature screen 9 specified in ScreenNum 102, all available alternatives 7, all unavailable alternatives 8, and the selection criteria 14. . . . It is apparent, therefore, that the server 125 sends all of the information necessary to define the current subfamily 2 to the client 126. The information, therefore need not be retained in memory on the server 125. This particular feature renders it particularly appropriate for an Internet environment. 24 Mot., Ex. 2, at 18:49-61. 25 specification goes onto state that the user may then select a 26 further criteria, �generating a selection criteria 14 different 27 from that which was set [sic] to it. 28 search with the modified selection criteria 14. See also �821 Reexam. Ex. 5 at 10. 34 The The client 126 initiates a The client 126 1 sends to the server 125, the ScreenNum 102 value sent to it by the 2 server, and the modified selection criteria,� the resubmission, 3 which the server then uses to execute the search. 4 18:64-19:5. 5 Arnett reference. 6 patentee�s arguments where the �patent itself does not disclose 7 the level of detail that [the patentee] would have us require of 8 the prior art�). 9 explain how to perform resubmission implies that persons of Mot., Ex. 2, at This is a level of detail analogous to that in the Lockwood, 107 F.3d at 1570 (rejecting Further, the fact that the patent did not United States District Court For the Northern District of California 10 ordinary skill in the art would know how to do so. 11 Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir. 12 1987) (�A patent need not teach, and preferably omits, what is 13 well known in the art.�). 14 See Spectra- Defendants� expert provides evidence that a person of 15 ordinary skill in the art at the time of the invention would have 16 been able to implement resubmission in a web server arrangement, 17 through one of several known design methods. 18 ¶¶ 44-50. 19 argue only that a person of ordinary skill would not have been 20 able to implement resubmission with the source code of the AMP 21 Navigator demonstration program. 22 dispute of material fact, as already addressed. See Larson II Decl. Kelora and its expert do not dispute this fact, and This argument does not raise a 23 Thus, Defendants have demonstrated that the Arnett reference 24 taught a person of ordinary skill at the time of the invention of 25 the re-examined �821 claims that resubmission was one available 26 approach to address the issue of statelessness and that it was 27 within the technical grasp of such a hypothetical person. 28 35 1 2 e. Motivation to combine prior art references �Generally, a party seeking to invalidate a patent as obvious 3 must demonstrate by clear and convincing evidence that a skilled 4 artisan would have had reason to combine the teaching of the prior 5 art references to achieve the claimed invention, and that the 6 skilled artisan would have had a reasonable expectation of success 7 from doing so.� 8 Release Capsule Patent Litig., 2012 U.S. App. LEXIS 7571, at *10 9 (Fed. Cir.) (internal citations omitted). In re Cyclobenzaprine Hydrochloride Extended- In KSR, the Supreme United States District Court For the Northern District of California 10 Court emphasized that this is to be a �flexible inquiry� in which 11 a court should �take account of �the inferences and creative 12 steps,� or even routine steps, that an inventor would employ.� 13 Ball Aerosol & Spec. Container v. Ltd. Brands, 555 F.3d 984, 993 14 (Fed. Cir. 2009). 15 Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (noting the obviousness 16 inquiry may �include recourse to logic, judgment, and common sense 17 available to the person of ordinary skill that do not necessarily 18 require explication in any reference or expert opinion�). 19 See also Perfect Web Techs., Inc. v. InfoUSA, Defendants offer evidence that one of ordinary skill in the 20 art would have been motivated to combine the teachings of AMP 21 Navigator with a client-server arrangement. 22 ¶¶ 32-33. 23 opinion of the patent examiner. 24 Kelora does not offer any evidence creating a material dispute of 25 fact as to this point. 26 that a person of ordinary skill would not have reason to combine 27 the Suzuki client-server arrangement with AMP Navigator, he states 28 that this is because Suzuki teaches nothing not already contained See Larson II Decl. As previously noted, this is further supported by the See �444 Prosecution, No. 7 ¶ 28. While Kelora�s expert, Mr. Gafford, opines 36 1 in AMP Navigator, �other than, possibly, a remote database.� 2 Gafford Decl. ¶ 43. 3 person of ordinary skill in the art would be motivated to combine 4 these. 5 ordinary skill in the art would be expected to achieve �a system 6 with the logical model of the AMP Navigator demonstration program, 7 . . . coupled with a remote database.� 8 9 He offers no evidence to dispute that a He further concedes that, combining the two, one of Id. Defendants also offer evidence that persons of ordinary skill in the art would have been motivated to adapt a client-server United States District Court For the Northern District of California 10 arrangement to the Internet. 11 expert does not challenge this basic motivation. 12 Decl. ¶ 47 (�Motivation to adapt applications, in general, to the 13 web, is not contested.�). 14 Larson II Decl. ¶ 36. Kelora�s See Gafford Finally, as discussed above, the Arnett reference describes 15 the concept of resubmission as being a potential solution for the 16 then-known problem of statelessness with web server protocols, and 17 thus provides motivation to combine resubmission with a client-web 18 server arrangement. 19 ordinary skill in the art would have expected to achieve success 20 in doing so. 21 Kelora�s arguments against these findings. 22 Further, as previously found, a person of The Court has already addressed and rejected Accordingly, the Court finds that there are no genuine issues 23 of materially disputed facts as to whether there was a motivation 24 to combine the various teachings. 25 26 27 28 f. Cumulative to references before the Examiner Kelora argues that Defendants� proffered prior art references are cumulative to those before the Patent Examiner and that this 37 1 Court should defer to the Examiner�s decision to grant the 2 reexamination certificate over those teachings. 3 The Court declines to do so because, as Defendants pointed 4 out at the hearing and in their renewed motion, the primary prior 5 art references relied on by this Court were either not submitted, 6 or not explained, to the Examiner. 7 given to the Examiner. 8 not before the Examiner, because re-examinations are limited to 9 prior art patents or printed publications, and not public use or The Arnett reference was not Further, the AMP Navigator prior art was United States District Court For the Northern District of California 10 sale. 11 Suzuki reference was before the Examiner, it was not discussed or 12 addressed by the patentees, and �the requisite degree of 13 consideration to be given to such information will be normally 14 limited by the degree to which the party filing the information 15 citation has explained the content and relevance of the 16 information.� 17 18 See Manual of Patent Examining Procedure § 2258. 3. While the Id. § 2256. Secondary considerations of obviousness Kelora argues that evidence of the commercial success of the 19 claimed invention precludes summary judgment. 20 may be relevant �to the overall obviousness determination, . . . a 21 nexus must exist between the commercial success and the claimed 22 invention.� 23 (Fed. Cir. 2011) (internal citations omitted). 24 success is due to an element in the prior art, no nexus exists.� 25 Id. (citations omitted). 26 declaration of Mr. Danish, discussing the commercial success of 27 the �guided parametric search technology� in the �821 patent. 28 Danish Decl. ¶¶ 2-10. While such evidence Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1369 �If commercial Kelora points specifically to the However, that feature was part of the 38 1 original patent which was previously put into the public domain 2 through Mr. Danish�s offer for sale. 3 that suggests commercial success due to elements not in the prior 4 art. 5 Kelora points to no evidence Further, even if Kelora had offered evidence of a nexus, such 6 evidence would be insufficient to overcome the strong showing of 7 obviousness made here. 8 Deck Co., 596 F.3d 1334, 1339 (Fed. Cir. 2010) (�a highly 9 successful product alone would not overcome the strong showing of United States District Court For the Northern District of California 10 obviousness�). 11 12 See Media Techs. Licensing, LLC v. Upper 4. The dependent claims For the foregoing reasons, the Court finds that there is no 13 material dispute of fact that claims one and nine are invalid due 14 to obviousness. 15 the modifications of dependent claims two, three and four are also 16 obvious. 17 dependent claims only to the extent that it disputes the 18 obviousness of the re-examined claims one and nine. 19 the Court has found that claims one and nine are obvious, there is 20 also no material dispute of fact that the dependent claims are 21 obvious as well. 22 23 24 25 26 27 28 C. Defendants make additional arguments as to why However, Kelora disputes the obviousness of the Thus, because Summary Judgment of Non-Infringement and of Invalidity on other grounds Because the Court has concluded that claims one through four and nine are invalid due to obviousness, the remainder of Defendants� motion, to the extent it seeks summary judgment of invalidity on other grounds and of non-infringement, is moot. See, e.g., Princeton Biochems., Inc. v. Beckman Coulter, Inc., 411 39 1 F.3d 1332, 1339-40 (Fed. Cir. 2005)(�Because claim 32 is invalid 2 for obviousness, this court need not reach the issues of prior 3 invention and infringement.�); Richdel, Inc., v. Sunspool Corp., 4 714 F.2d 1573, 1580 (Fed. Cir. 1983)(�The claim being invalid, 5 there is nothing to be infringed.�). 6 reach Defendants� other arguments. Thus, the Court does not 7 CONCLUSION 8 For the reasons set forth above, the Court construes the 9 disputed claim language in the manner explained and GRANTS United States District Court For the Northern District of California 10 Defendants� motion for summary judgment of invalidity (Docket Nos. 11 94 in 10-4947, 57 in 11-1398 and 361 in 11-1548). 12 enter judgment and close the file. 13 costs from Kelora. 14 The Clerk shall Defendants shall recover their IT IS SO ORDERED. 15 16 17 Dated: 5/21/2012 CLAUDIA WILKEN United States District Judge 18 19 20 21 22 23 24 25 26 27 28 40