Valueclick Inc v. Revenue Science Inc

Filing 36

RESPONSE filed by Counter Claimant Revenue Science Inc, Defendant Revenue Science Inc RESPONSIVE MARKMAN BRIEF (Subhedar, Nitin)

Valueclick Inc v. Revenue Science Inc

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1 ROBERT T. HASLAM (State Bar No. 71134) 2 NITIN SUBHEDAR (State Bar No. 171802) 3 BHANU K. SADASIVAN (State Bar No. 233429) 4 HELLER EHRMAN LLP

[e-mail]

[e-mail] 275 Middlefield Road

[e-mail] Telephone: [phone]

5 Menlo Park, CA 94025-3506 6 Facsimile: [phone] 7 JOHN C. ULIN (State Bar No. 165524) 8 HELLER EHRMAN LLP th 10 Facsimile: [phone]

[e-mail] Telephone: [phone]

9 Los Angeles, CA 90071-3043

333 South Hope Street, 39 Floor

11 MATTHEW C. LAPPLE (State Bar No. 193546) 12 4350 La Jolla Village Drive, 7th Floor 13 Telephone: [phone]

[e-mail]

San Diego, CA 92122

Facsimile: [phone] Attorneys for Defendant

15 REVENUE SCIENCE, INC. 16 17 18 19 20

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION VALUECLICK, INC., Case No.: CV 07 2052 MMM (JCX) Plaintiff, v. a Washington Corporation, DEFENDANT REVENUE SCIENCE, INC.'S RESPONSIVE MARKMAN BRIEF

21 a Delaware Corporation, 22 23

24 REVENUE SCIENCE, INC., 25 26 27
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Defendant.

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TABLE OF ABBREVIATIONS RSI ValueClick `396 `735 112(6) DI 23 `396 F.H. Defendant Revenue Science, Inc. Plaintiff ValueClick, Inc. U.S. Patent No. 5,848,396, attached as Exhibit 1 to the Declaration of Bhanu K. Sadasivan In Support Of RSI's Opening Markman Brief U.S. Patent No. 5,991,735, attached as Exhibit 3 to the Declaration of Bhanu K. Sadasivan In Support Of RSI's Opening Markman Brief 35 U.S.C. § 112, paragraph 6 The Joint Claim Construction Chart ("JCCC") filed by the parties on September 28, 2007 The prosecution history of the `396 patent before the U.S. Patent & Trademark Office, attached as Exhibit 2 to the Declaration of Bhanu K. Sadasivan In Support Of RSI's Opening Markman Brief The prosecution history of the `735 patent before the U.S. Patent & Trademark Office, attached as Exhibit 4 to the Declaration of Bhanu K. Sadasivan In Support Of RSI's Opening Markman Brief The Manual of Patent Examining Procedure Declaration Of Kendyl Roman In Support Of RSI's Opening Markman Brief Declaration Of Kendyl Roman In Support Of RSI's Responsive Markman Brief Declaration of Peter Kent In Support of ValueClick, Inc.'s Claim Construction Brief Plaintiff ValueClick, Inc.'s Claim Construction Brief, dated October 15, 2007

`735 F.H.

MPEP Roman ¶ Roman Response ¶_ Kent Decl. VC Brief

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1 2 3 I. 4 5 6 7 8 9 10 11 12 13 14 IV. 15 16 17 18 19 20 21 22 23 24 25 26 27
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TABLE OF CONTENTS Page INTRODUCTION .......................................................................................... 1 VALUECLICK'S DESCRIPTION OF THE PATENTS-INSUIT IS INACCURATE AND MISLEADING............................................. 2 A. B. III. Overview of the patents-in-suit ............................................................ 2 ValueClick's Erroneous Description of the Technology ..................... 4

II.

VALUECLICK'S CLAIM CONSTRUCTION METHODOLOGY IS FLAWED ................................................................... 6 A. Claim Terms Are Given Their Ordinary Meaning As Understood By The Person Of Ordinary Skill In The Art In The Context Of The Entire Patent.................................................... 6 The Court Should Construe All The Claim Terms At Issue ................ 7

B.

ValueClick's definitions are inconsistent with the patent specification and file history ........................................................................... 8 A. Non-112(6) claim elements .................................................................. 9 1. 2. 3. 4. 5. 6. 7. 8. user [all asserted claims] ............................................................ 9 Psychographic profile of a (each) user [all asserted claims] ...................................................................................... 11 agate information / agate data [all asserted claims] AND advertisement [`396:5, 7; `735:5, 8, and 18] .................. 16 screen view [`735:1, 5, 8, 15 and 18] ....................................... 18 demographic profile [no asserted claims] ................................ 19 "computer apparatus" [`396:1, 5, 8; and `735:14] ................... 19 "a computer program embodied on a computer readable medium" [`735:1, 5, and 8]........................................ 21 "Physical Activity" [all asserted claims] AND "User Response" [all asserted claims] ..................................... 21
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9.

target profile of desired users to whom to display the advertisement / target audience profile of each advertisement [`396:5, 7; `735:5, and 8].................................. 23

B.

112(6) claim terms .............................................................................. 23 1. RSI's Position that the 112(6) Elements Disclose Insufficient Structure is correct and appropriate at this stage ................................................................................... 23 Specific 112(6) Claim Terms ................................................... 28

2. V.

CONCLUSION ............................................................................................. 31

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1 2

TABLE OF AUTHORITIES CASES Number 2006-1440, 2007 WL 2963933 (Fed. Cir. Oct. 12, 2007) .............. 25

3 Allvoice Computing PLC v. Nuance Communications, Inc., 4 5

Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999)..................................................................... 28 359 F.3d 1367 (Fed. Cir. 2004)..................................................................... 22

6 Bancorp Services, L.L.C. v. Hartford Life Insurance Co., 7 8

Campbell v. Sec'y of Health & Human Services, 69 Fed. Cl. 775 (2006) .................................................................................... 7 412 F.3d 1291 (Fed. Cir. 2005)..................................................................... 24

9 Default Proof Credit Card System, Inc. v. Home Depot U.S.A., 10 11

Ethicon Endo-Surgery v. United States Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996)................................................................. 20, 21 417 F.3d 1241 (Fed. Cir. 2005)..................................................................... 24

12 Harris Corp. v. Ericsson, Inc., 13 14

Hastings v. United States, 78 Fed. Cl. 729 (2007) .................................................................................... 8 379 F.3d 1311 (Fed. Cir. 2004)....................................................................... 1

15 Linear Technology Corp. v. Impala Linear Corp., 16 17

Medical Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205 (Fed. Cir. 2003)..................................................................... 24 415 F.3d 1303 (Fed. Cir. 2005)................................................. 6, 7, 11, 19, 22

18 Phillips v. AWH Corp., 19 20

Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841 (Fed. Cir. 2006)....................................................................... 22 355 F.3d 1313 (Fed. Cir. 2004)....................................................................... 2

21 Toro Co. v. Deere Co., 22 23

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)....................................................................... 15 370 F.3d 1343 (Fed. Cir. 2004)....................................................................... 8 STATUTES

24 W.E. Hall Co., Inc. v. Atlanta Corrugating, LLC, 25 26

27 35 U.S.C. 112, 6 ................................................................................................ 24, 28
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1 I. 2

INTRODUCTION ValueClick's opening brief appears to be intended to achieve one overarching

3 goal, and that is to divorce the claims completely from the intrinsic record of which 4 they are a part. The entire focus of the patents-in-suit ­ indeed, the very thing touted 5 by the patentee as the benefit of the alleged invention ­ is a method of creating a 6 psychographic profile for an individual user and then utilizing it to display content in 7 a layout that is customized to that individual's particular interests and preferences. 8 Yet, while the constructions that RSI has proffered through the use of well9 established claim interpretation principles remain faithful to this focus, ValueClick's 10 proposals mysteriously do not. Instead, ValueClick asks the Court to adopt claim 11 term meanings that are not only untethered to the patent specifications or file 12 histories, but that are instead grounded in questionable extrinsic evidence that often 13 conflicts with the intrinsic record. The improper techniques that ValueClick uses to 14 achieve this result can be grouped into three broad categories. 15

First, ValueClick repeatedly ignores the fundamental purpose of the

16 technology claimed in the patent ­ the creation of an individualized user experience. 17 For example, ValueClick's definition of "user" as a particular computer, rather than a 18 particular individual who uses that computer, vitiates this critical aspect of the 19 patents-in-suit. A user at an Internet café wants her experience tailored to her 20 personal psychographic profile, not to the forty users who preceded her on that 21 computer. Similarly, a given advertisement sponsor is interested in reaching a 22 particular individual who has certain interests and preferences, and composite data 23 relating to the last forty users of a given computer is of no use for such purposes. 24 Thus, the intrinsic record, the purpose of the invention, and common sense dictate 25 that RSI's proposed construction ­ that a "user" is an individual person, not a 26 computer ­ is the only correct one. 27
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Second, ValueClick cherry picks disclosures from the patent that support its

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1 position. In contrast, RSI's definitions track the claim terms as understood by one of 2 ordinary skill in the art when read in the context of the entire intrinsic record. For 3 example, RSI correctly defines "psychographic profile" to include content and format 4 preferences. As the patents state, "[p]references with respect to color schemes, text 5 size, shapes, and the like are recorded as part of the psychographic profile of a user." 6 (`396 col. 2:16-23). ValueClick simply ignores the repeated references in the patent 7 and the file history to format preferences being part of the psychographic profile, and 8 instead defines psychographic profile as including only content preferences by 9 offering up selective and misleading quotations from the specification. 10

Third, ValueClick brushes aside established Federal Circuit precedent on claim

11 construction. More specifically, ValueClick disregards or misapplies settled law on 12 the consideration of extrinsic evidence, the rules on claim differentiation, the 13 requirement that all claim terms must have meaning so as to not render a term 14 superfluous, and even the basic principle that claim terms must be construed as 15 understood by a person of ordinary skill in the art. 16

For all of these reasons, RSI respectfully submits that the Court should adopt

17 RSI's definitions, and reject ValueClick's flawed constructions in their entirety. 18 II. 19 20

VALUECLICK'S DESCRIPTION OF THE PATENTS-IN-SUIT IS INACCURATE AND MISLEADING In its Opening Claim Construction brief, ValueClick provides an extensive

21 discussion regarding the alleged invention and the manner in which the software 22 components of the alleged invention interact. VC Brief, at 1-6. ValueClick's 23 discussion, however, is selective, confusing, and potentially misleading. 24 Accordingly, RSI provides a brief recitation here of the operation of the key 25 components of the alleged invention, and then reveals the errors in ValueClick's 26 description of the technology. 27
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A.

Overview of the patents-in-suit
2

28

The alleged invention disclosed in the patents-in-suit is program 31 that resides
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1 in a single web server 27 connected to several servers and user computers in several 2 networks. (Fig. 1). As shown in Figure 2 of the patents-in-suit, Program 31 has four 3 components, each with a specific function: 4

1) an agate data assembly 71 (the function of which is to store various agate 2) a user profiling member 73 (the function of which is to record information

5 information for user viewing); 6 7 regarding each user, including user's identification, categories of interest to the user, 8 and the user's display preferences for each category); 9

3) an advertisement module (the function of which is to hold sponsor

10 information and their advertisements, with target audience profile indicated for each 11 advertisement); and 12

4) a program controller 79 (the function of which is to respond to commands

13 ­ e.g., log in and menu selection ­ transmitted over the Internet by an end user, and to 14 obtain the necessary information from 71, 73, and 75 to generate and display 15 appropriate screen views to the user). (`396, 4:39-55). 16

In the preferred embodiment, program 31 is implemented as an object oriented

17 program. A set of Objects provide the functional equivalent for each of the
1 18 components. When a user logs in for the first time, the program controller 79

19 assigns a unique "users computer ID," and also a user name and password, to the new 20 user. The program controller 79 also obtains initial agate information (e.g. a sports 21 score, or a weather report) from the agate data assembly 71 to display as part of the 22 Home Page to the new user. The assignment of an ID to the user enables user 23 profiling member 73 to begin tracking the new user's activity. (`396, 4:66-5:7). 24
1

25 the functional equivalent for each of the components. Specifically, the Agate Data

Figure 3 in the patents-in-suit discloses the names of the Objects that provide

26 Member 73 has a functional equivalent in Objects 37a-f, the Advertisement Module 75 27 functionally equivalent to Main Routine 39. (`396, 5:54-62). As explained in RSI's
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Assembly 71 finds its functional equivalent in Objects 35a-c, the User Profiling is functionally equivalent to Objects 33a-d, and the Program Controller 79 is

28 that the patent specification must disclose adequate corresponding structure.
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Opening Brief, and below, these descriptions do not satisfy the requirements of 112(6)

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1

As the user makes selections, the user profiling member 73 records the user's

2 activities and thus builds a psychographic profile of the user. (`396, 5:8-14). 3 Specifically, User Object 37a records the user provided name and password, while 4 User Interface Object 37c holds the user's "categories of interest" and "category 5 display," i.e., display or format preferences. (`396, 14:14-17). The Program 6 Controller 79 responds to the user's selections and viewing actions by using the agate 7 data assembly 71 to obtain and display the requested information. (`396, 5:8-12). 8

When the user logs in a second or subsequent time, the Program Controller 79

9 obtains user preference information from the records of the User Profiling Member 10 73. Then, the Program Controller uses agate information from agate data assembly 11 71 to generate a screen view formatted to the user's recorded preferences. (`396, 12 5:56-64). The Program Controller 79 also enables display of advertisements 13 customized to the user by obtaining presentation details from the user profiling 14 member 73 and content from the advertisement module 75. (`396, 5:19-25). 15 16

B.

ValueClick's Erroneous Description of the Technology

ValueClick's description of the system disclosed in the patents-in-suit contains

17 two critical errors, both of which contribute to its incorrect claim term definitions. 18 The first of these is ValueClick's suggestion that it is the "categories of interest" data 19 field found within User Interface Object 37c that constitutes the "psychographic 20 profile" referenced in all of the asserted claims. See VC Brief, at 2. ValueClick's 21 argument in this regard is misleading at best. 22

As an initial matter, the patent does not state that the psychographic profile is

23 held entirely within one of the several disclosed User Objects (i.e., Objects 37a-f in 24 Figure 3). Accordingly, ValueClick's assertion that Object 37c is where the entirety 25 of the psychographic profile can be found is a claim without any basis. Moreover, 26 even if Object 37c could, in fact, be said to hold the entire psychographic profile, 27 ValueClick offers no explanation as to why it selectively focuses its attention on the
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1 specification makes abundantly clear that Object 37c ­ in addition to holding a given 2 users "categories of interest" ­ also holds the closely-related data field of "category 3 display" (i.e., the user's display format preferences). See Fig. 3D; (`396, 17:1-5). 4 Thus, to the extent that Object 37c can be said to hold the psychographic profile, the 5 profile includes both "categories of interest" and "display" preferences. 6

ValueClick's second mischaracterization pertains to the Ad Series Object 33c

7 and Ad Object 33d. According to ValueClick: 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
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Ad Series Object 33c (the one said to hold the "psychographic profile" for the ad, 12:27-32) does not contain any data about "display characteristics" and "graphic references" of the ad (e.g. color, format, location on the page, etc.). A different object holds those ­ "Ad Object 33d," depicted in Fig. 5D. VC Brief, at 5. ValueClick's bold statement that the Ad Series Object 33c is "said to hold the `psychographic profile' for the ad" is demonstrably false, as even a cursory review of the cited passage reveals. What the text actually says is that, "In a preferred embodiment, the sponsor specifies in Ad Series Object 33c the required and/or preferred psychographic and/or demographic criteria and relative importance (e.g., weight) with respect to each criterion." See `396, 12:27-31 (emphasis added). These "psychographic criteria" are used to determine the ideal audience for a given ad, and they represent an entirely different concept than the "psychographic profile" called out in the asserted claims. ValueClick's attempt to conflate the two represents little more than a diversionary sleight of hand. The balance of the ValueClick quote set forth above is no less inaccurate. While ValueClick suggests that the terms "display characteristics" and "graphic references" as used in connection with Ad Object 33d refers to "color, format, location on the page, etc.," the specification again tells a very different story. In particular, the patent makes clear that these terms relate to the "daily start time" and
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1 "daily end time" for displaying the ad, and to the graphical or multimedia portions of 2 the advertisement. See Fig. 5; `396 12:48-52. Thus, here again, ValueClick seeks 3 refuge in misdirection in an attempt to change the substance of the patent disclosure. 4 III. 5 6 7 8

VALUECLICK'S CLAIM CONSTRUCTION METHODOLOGY IS FLAWED A. Claim Terms Are Given Their Ordinary Meaning As Understood By The Person Of Ordinary Skill In The Art In The Context Of The Entire Patent

ValueClick makes three fundamental mistakes in arguing what it believes First, ValueClick's expert, Peter Kent, employs a flawed methodology for

9 constitutes the "ordinary meaning" of each claim term. 10 11 several claim terms, by looking for a "special meaning" for the term rather than the 12 "ordinary meaning" as understood by the person of ordinary skill in the art at the time 13 of filing of the patents-in-suit. "[T]he words of a claim `are generally given their 14 ordinary and customary meaning,'" not any special meaning. Phillips v. AWH Corp., 15 415 F.3d 1303, 1312 (Fed. Cir. 2005). For example, Mr. Kent avers that the term 16 "computer apparatus" has no "special meaning" to persons of skill in the art. Then, 17 based on this perceived lack of "special meaning," Mr. Kent argues that the "ordinary 18 meaning" ­ which in many cases is the dictionary definition of ValueClick's choice ­ 19 should be adopted. This flawed approach, by itself, renders Mr. Kent's opinion on 20 such claim terms irrelevant and of no weight. 21

Second, Mr. Kent repeatedly refers to what a lay person or a "person of skill"

22 in the art would understand a particular term to mean. Yet, terms must be understood 23 from the perspective of a person of ordinary skill in the art ­ not one of extraordinary 24 skill in the art, not one of below ordinary skill in the art, and not a lay person. "[T]he 25 ordinary and customary meaning of a claim term is the meaning that the term would 26 have to a person of ordinary skill in the art in question." Phillips, 415 F. 3d at 1313. 27 This Court should reject Mr. Kent's opinion based on such flawed methodology.
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Finally, ValueClick posits that the "ordinary meaning" of a term can simply be
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1 found in dictionary definitions (even, remarkably, those that post-date the filing of 2 the patents-in-suit by several years). This is incorrect. The "ordinary meaning" 3 cannot simply be gleaned from Wikipedia, Dictionary.com, or the American Heritage 4 Dictionary. See VC Brief, at 12. Rather, in defining the ordinary meaning of a term, 5 "the person of ordinary skill in the art is deemed to read the claim term not only in 6 the context of the particular claim in which the disputed term appears, but in the 7 context of the entire patent, including the specification." Phillips, 415 F.3d at 1313
2 8 (emphasis added).

9 10

B.

The Court Should Construe All The Claim Terms At Issue

ValueClick argues that the terms identified by RSI, which are listed in Section

11 VI of its brief, do not require construction by the Court. Specifically, ValueClick 12 contends that the Court should give these terms to the jury without first construing 13 them because the term "is clear to a layperson, and takes on its ordinary meaning." 14 VC Brief, at 20. 15

ValueClick's reasoning is flawed for the following reasons. First, ordinary

16 meaning is determined from the perspective of a person of ordinary skill in the art at 17 the time the patent was filed, not from the perspective of a lay juror sitting at trial. 18 For this reason, a juror is least qualified to determine the correct "ordinary meaning" 19 of a term. Second, claim construction is the province of the judge, not the jury. 20 21 22 23 24 25 26 27
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Courts have pointed out that Wikipedia is a highly questionable source of evidence. See, e.g., Campbell v. Sec'y of Health & Human Servs., 69 Fed. Cl. 775, 781 (2006)("The articles that the Special Master culled from the Internet do not - at least on their face - remotely meet this reliability requirement. . . . A review of the Wikipedia website reveals a pervasive and, for our purposes, disturbing series of disclaimers, among them, that: (i) any given Wikipedia article `may be, at any given moment, in a bad state: for example it could be in the middle of a large edit or it could have been recently vandalized;' (ii) Wikipedia articles are `also subject to remarkable oversights and omissions;' (iii) `Wikipedia articles (or series of related articles) are liable to be incomplete in ways that would be less usual in a more tightly controlled reference work;' (iv) `another problem with a lot of content on Wikipedia is that many contributors do not cite their sources, something that makes it hard for the reader to judge the credibility of what is written;' and (v) `many articles commence their lives as partisan drafts' and may be `caught up in a heavily unbalanced viewpoint.'").
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1 Markman. Third, it is to resolve exactly this type of dispute -- a differing 2 interpretation of what "ordinary meaning" is -- that the Court must construe claim 3 terms. 4

The cases cited by ValueClick do not say otherwise. See VC Brief, at 20. In

5 W.E. Hall Co., Inc. v. Atlanta Corrugating, LLC, the parties did not dispute the 6 meaning of the term "single piece," but did dispute the term "single piece 7 construction." The Court found no need to construe the former term, but it did 8 ultimately construe the latter. 370 F.3d 1343, 1350 (Fed. Cir. 2004). And in 9 Hastings v. United States, 78 Fed. Cl. 729, 731 (2007), a non-precedential Federal 10 Claims Court case, the Court summarily declined to adopt the parties' proposed 11 definition for the disputed term "more easily penetrated" as "easier to pass into or 12 through" ­ a definition that was clearly little more than a rewrite of the original term 13 itself. Here, unlike W.E. Hall, there is an actual dispute between the parties over the 14 correct interpretation of certain terms. And unlike Hastings, RSI seeks definitions 15 that are not just slightly different articulations of the terms themselves, but that are 16 instead accurate definitions that accurately capture what is disclosed by the patent 17 when examined from the perspective of a person of ordinary skill in the art. 18 Accordingly, the cases cited by ValueClick are inapposite. 19 IV. 20 21

VALUECLICK'S DEFINITIONS ARE INCONSISTENT WITH THE PATENT SPECIFICATION AND FILE HISTORY To avoid repetition of arguments, RSI will only address arguments that were

22 not previously addressed in RSI's Opening Brief. To the extent the definition of a 23 particular term is not addressed in this responsive brief, RSI respectfully directs the 24 Court's attention to its Opening brief and the attached opening declaration of RSI's 25 expert, Kendyl Roman. 26 27
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1 2 3

A.

Non-112(6) claim elements 1. user [all asserted claims]

RSI proposes that "user" should be defined as: "A uniquely identifiable

4 individual person, as distinct from the digital processor he/she is using, who interacts 5 with a network client program (e.g., web browser)." 6

ValueClick argues that a user is anyone who views screens on a computer, and

7 that a computer ID is one way of identifying a user. VC Brief, at 21-22. 8 ValueClick's attempt to equate a user with a computer, however, runs afoul of the 9 very essence of the patent. Because there can be many users of a single computer, 10 tracking activity on a given machine is likely to be of little value. Whether one 11 considers a user sitting at an Internet café, a family of six that shares a single home 12 computer, or college dorm residents who access a single computer room, in each of 13 these circumstances, all of the relevant players want and need to have the individual 14 person who is sitting at the terminal at a given moment in time uniquely identifiable. 15 The individual user herself wants her experience to be tailored to her personal 16 psychographic profile, not to the countless other individuals who preceded her in 17 using that computer. The advertiser wants to target his ad properly to the individual 18 sitting before the computer screen right now, not to some unknown "composite" 19 person whose content and display preferences consist of the aggregated preferences 20 of every individual who ever sat at that computer in the past. See `396, 33:43. And 21 the website publisher wants to keep both the individual user and the advertiser happy, 22 by ensuring that the content and display are optimally configured for that individual 23 user's preferences. This ability to provide an individualized experience for each 24 unique user is precisely the benefit touted in the patents-in-suit as being offered by
3 25 the alleged invention. Accordingly, any definition of "user" that eviscerates the

26 primary purpose of the alleged invention itself cannot possibly be correct. 27
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"To that end, for each user the present invention program 31 creates a user 28 profile from the agate information viewing habits of the user. The system then
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(Footnote Continued)

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1

Moreover, ValueClick's proposal that psychographic profile can be a profile of

2 a group of users is simply a linguistic ploy to shift the focus of "user" from an 3 individual to a computer. In the internet café example, ValueClick's definition 4 would sweep in the "group" of users who had used the internet café since the 5 computer was first put in use. Likewise, ValueClick's definition would sweep in the 6 entire family who uses one home computer as the "group" whose psychological 7 profile is important. But that result would not be faithful to the alleged invention: the 8 ability to tailor content and advertisements to an individual user's preferences ­ e.g., 9 the specific preferences of a 12 year old boy, a teenage daughter, a husband who is a 10 sports fan, and a wife who is a stock broker, all of which are likely to be very
4 11 different from one another.

12

Furthermore, the only system disclosed in the patent itself includes a

13 mechanism for customization at the individual user level, namely the use of a 14 particular user login (`735, 5:16-20). ValueClick, however, argues that "logging in is 15 optional, since the user may obtain a user ID and password `at the user's 16 convenience.'" VC Brief, at 21-22. Once again, however, ValueClick selectively 17 misreads the patent specification. The complete quote from the cited passages states 18 "Program controller 79 also obtains user identification information from the user to 19 assign a user name and password at the user's convenience." (`396, 5:5-7). Thus, the 20 phrase "at the user's convenience" does not refer to optional logging in, but rather to 21 the assignment of a username and password when a user logs in for the first time. As 22 described by the specification, logging in to the claimed system is mandatory in order 23 for it to function properly. (`396, 4:56-5:7; Roman Decl. ¶¶ 32-33). ValueClick 24 25 generates a custom Home Page, including a user's preferred (content and presentation) 26 program 31 displays the customized Home Page for that user instead of the initial 27
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agate information. On subsequent visits to program 31 (as a Website) by the user,

Home 4Page." `396, 4:21-29. (emphasis added). ValueClick's "group of users" definition is also severely undercut by the fact that nowhere in the patents is a user's psychographic profile referred to in the plural, 28 i.e., a "users' profile."
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1 additionally argues that because a computer ID may be used in the process of 2 identifying a user, ValueClick's construction that a user is not uniquely identifiable is 3 correct. VC Brief, at 22. ValueClick here again mischaracterizes the patent 4 disclosure and reaches the wrong conclusion. The specification states that in addition 5 to computer ID, the program also uses a username and password to identify the user 6 ­ thus making clear that the alleged invention necessarily has the ability to identify a 7 unique individual. (`396, 4:66-5:7; Roman Decl. ¶¶ 38-39). 8

Finally, giving "user" the definition mandated by both its ordinary meaning

9 and its use in the context of the specification does not impermissibly limit the claim 10 to an embodiment, but rather gives the claims a scope that is commensurate with 11 what the inventor stated, in his application, is his alleged invention. Phillips, 415 12 F.3d at 1316 ("Ultimately, the interpretation to be given a term can only be 13 determined and confirmed with a full understanding of what the inventors actually 14 invented and intended to envelop with the claim. The construction that stays true to 15 the claim language and most naturally aligns with the patent's description of the 16 invention, will be, in the end, the correct construction.") (internal quotation omitted). 17 In sum, the Court should adopt RSI's definition of user. 18 19

2.

Psychographic profile of a (each) user [all asserted claims]5

RSI proposes that the Court construe this term to mean: "Presentation format

20 preferences and content preferences of a uniquely identifiable individual person (i.e., 21 the user), based on that person's responses to prompts regarding that person's 22 preferences and lifestyle and modified by that person's viewing and selection 23 history." 24

ValueClick counters that psychographic profile includes only "content

25 preferences" and does not include "format preferences." In support of its position, 26 ValueClick sets forth several arguments, each of which is discussed below in turn. 27
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RSI will note in square brackets beside each term the asserted patent claims in 28 which that term appears.
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1 2

a.

Claim Language Supports RSI's Definition

ValueClick first argues that the `396 and `735 patent claims support its

3 construction, making a number of flawed attempts at claim differentiation. For 4 example, pointing to unasserted claim 3 of the `735 patent, ValueClick contends that 5 the term "psychographic profile" in the base claim 1 of the `735 patent must 6 necessarily be limited to include only a user's content preferences, and to exclude the 7 user's format preferences. VC Brief, at 12. A closer review, however, demonstrates 8 that this is incorrect. 9 10 11 12 13 14 15 16

Claim 3 of the `735 Patent provides: A computer program as claimed in claim 1 wherein: the user profiling member records format preferences of users with respect to presentation of certain agate information, the format preferences including color schemes, text size and shapes; and in response, the data assembly provides agate information for display to a user (a) in a manner customized according to the format preferences of the user and (b) having contents corresponding to the psychographic profile of the user.

17 The base claim 1 does state that the "user profiling member" records a variety of 18 information, and thereby "enables creation of a psychographic profile." The first 19 element of claim 3 then simply states that the "format preferences" that the "user 20 profiling member" records must include particular types of format preferences not 21 required by claim 1 ­ namely "color schemes, text size and shapes." Thus, there is 22 nothing about the first element of claim 3 that suggests that format preferences are 23 not included in the definition of "psychographic profile." Instead, it supports the 24 opposite, by providing further limitations about those format preferences. 25

The second element of claim 3 simply states how agate information is

26 displayed to a user. It says nothing about whether display preferences are, or are not, 27 contained within the "psychographic profile" of the claim. Other claims, however,
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28 answer this question definitively. Claim 16 of the `735 Patent provides:
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1 2 3

The method of claim 15 wherein: said composing includes selecting content and formatting layout of content according to the determined psychographic profile.

4 As should be apparent, this claim requires selecting both content and formatting 5 layout "according to the determined psychographic profile," which can only mean 6 that the "psychographic profile" contains information both about content preferences 7 and format layout preferences. Thus, while claim 3 may be agnostic about whether 8 format preferences are included in "psychographic profile," claim 16 decidedly 9 answers that question in the affirmative. The Court should accordingly adopt RSI's 10 definition of "psychographic profile" as including both the user's content preferences 11 and the user's format preferences. 12 13

b.

ValueClick's Reliance on the Specification is Unavailing

ValueClick once again resorts to incomplete citations to and misleading

14 characterizations of the specification in order to support its position regarding the 15 proper definition of the term "psychographic profile." The Court should reject 16 ValueClick's arguments in their entirety. 17

First, ValueClick provides a lengthy quote in its brief from column 2 of the

18 `396 patent, underlining words and phrases that it believes supports its position. See 19 VC Brief, at 14 (citing `396, col. 2:3-15). Yet, a mere three lines later in the 20 specification ­ at column 2, line 18 ­ is a quote that inescapably demonstrates the 21 lack of merit in ValueClick's position. Remarkably, ValueClick stops its block quote 22 before reaching this critical passage, which states as follows: 23 24 25 26

Further the tracking and profiling member records presentation (format) preferences of the users based on user viewing activity. Preferences with respect to color schemes, text size, shapes, and the like are recorded as part of the psychographic profile of a user. (`396, 2:18-23) (emphasis added).

27 As the emphasized text makes abundantly clear, preferences regarding format (e.g.,
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28 color schemes, text size, shapes) are, in fact, part of the psychographic profile.
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1 ValueClick's attempt to selectively quote around this key section of the patent must 2 fail, and its definition should accordingly be rejected in its entirety. 3

Second, as discussed above, ValueClick attempts to rewrite the patent by

4 incorrectly describing: (a) Ad Series Object 33c as holding the "psychographic 5 profile," but lacking "any display or format of the given ad;" and (b) a different ad 6 object, Ad Object 33d, as holding an indication of display or format of the given ad. 7 Based on these erroneous characterizations, ValueClick concludes that psychographic 8 profile does not include format preferences. VC Brief, at 15. 9

As explained above, Ad Series Object 33c holds sponsor specified

10 psychographic/demographic criteria, not the psychographic profile. See `396, 12:2311 33. In other words, the "psychographic criteria" in Ad Series Object 33c (used to 12 identify the ideal audience for an ad) is not in any way pertinent to the generation of a 13 "psychographic profile" of a user. And although it is true that Ad Object 33d holds 14 "display characteristics" and "graphic references," See Fig. 5D, these terms pertain to 15 the "daily start time" and "daily end time" for displaying the ad, and to the graphical 16 or multimedia portions of the advertisement, respectively. (`396, 12:48-52). They do 17 not, as ValueClick brazenly asserts, refer to "color, format, location on the page." 18 Accordingly, this Court should reject ValueClick's argument that anything pertaining 19 to the discussion of Ad Objects indicates that the term "psychographic profile" does 20 not include format preferences. 21 22

c.

Prosecution History also buttresses RSI's definition

ValueClick's attempt to draw support from the prosecution history is equally

23 unavailing. ValueClick argues that the prosecution history supports its definition of 24 psychographic profile as not including format preferences, because ValueClick's 25 definition matches that of the prior art patent Wilkins, and the patentee "never 26 indicated that his definition of psychographic profile was any different from that used 27 by Wilkins." VC Brief, at 15.
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28

ValueClick is in error. The patentee clearly differentiated the psychographic
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1 profile disclosed in Wilkins from that disclosed in the patents-in-suit. In response to 2 Office Action rejecting all claims as anticipated by prior art reference, the applicant 3 stated: 4 5 6 7 8 9 10

Preferences with respect to color schemes, text size, shapes and the like are recorded as part of the psychographic profile of a user. In turn, the psychographic profile defined and generated by the tracking and profiling member enables the data assembly to customize future presentation (format) of agate information, per user, for display to the user." `396 F.H., RSI00001189 (emphasis added). Further, the examiner stated as his reason for allowance: "each user profile

11 providing an indication of categories of interest to the user and display preferences 12 for each category," which reason was not objected to by the applicant. `396 F.H., 13 RSI00001194 (emphasis added). 14

In sum, the prosecution history also contradicts ValueClick's definition, but d. ValueClick's Reliance on Dictionary Definitions Is Misplaced

15 supports RSI's definition. 16 17 18 19 20 21 22 23 24 25 26 27
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ValueClick cites Wikipedia, Dictionary.com and the American Heritage Dictionary as support for the "ordinary meaning" of the term. VC Brief, at 12-13. ValueClick's reliance on extrinsic evidence is entirely unwarranted, since the intrinsic evidence provides unambiguous meaning to the phrase "psychographic profile of a (each) user." See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[If] an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term . . . it is improper to rely on extrinsic evidence."). In any event, ValueClick's reliance on Wikipedia and Dictionary.com is gravely misplaced. Wikipedia and Dictionary.com are unreliable sources, because anyone can edit the content of these online sources. Moreover, there is absolutely no
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1 evidence that either the Wikipedia or Dictionary.com definitions were available at the 2 time of filing of the patents-in-suit in 1996, and that is the only appropriate time 3 period from which extrinsic evidence ­ if any can be properly relied upon at all ­ 4 may be used. For all these reasons, the Court should not consider ValueClick's 5 extrinsic evidence in construing this term. 6

In sum, the Court should accept RSI's definition of "psychographic profile of a

7 (each) user" as: "Presentation format preferences and content preferences of a 8 uniquely identifiable individual person (i.e., the user), based on that person's 9 responses to prompts regarding that person's preferences and lifestyle and modified 10 by that person's viewing and selection history." 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27
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3.

agate information / agate data [all asserted claims] AND advertisement [`396:5, 7; `735:5, 8, and 18]

The parties agree that the definition of agate information must include "Timesensitive reference information that is not read linearly," but apparently disagree about whether there is any distinction between "agate information" and "sponsor provided advertisements." Because the patentee chose to carve out "sponsor provided advertisements" from the scope of agate information, See RSI's Opening Brief, RSI's definition provides further clarification that agate information is "distinct from sponsor provided advertisements." For the same reason, RSI proposes that "advertisement" in the context of the patents-in-suit be construed as "Sponsor provided advertisement, distinct from agate data." ValueClick, on the other hand, seeks to blur the distinction between two, perhaps hoping to sow confusion where none should exist. The portion of the specification that ValueClick cites in support of its position that no distinction should be drawn between these concepts ­ i.e., "advertisements . . . which may be integrated into the agate data" at `396, 7:30-31 (VC Brief, at 17) - actually reinforces RSI's point that advertisements and agate are distinct terms. Roman Decl. ¶ 72. Time and again, the patentee draws a distinction in the specification between sponsor-provide advertisements, on the one hand, and
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1 the agate data to be displayed on the other. RSI's definition of "advertisement" 2 merely seeks to capture the line drawn by the patentee, so that the jury will 3 understand how and where the two terms differ from one another. 4

ValueClick attacks RSI's definition of "agate information" on the grounds that

5 RSI seeks an "infringement comparison, not a construction" and that this is 6 "improper at this stage." VC Brief, at 16. ValueClick also argues that "RSI 7 construction overlooks that an advertisement is a type of agate information." VC 8 Brief, at 26. Both of these arguments are unfounded. 9

First of all, RSI's definition is merely seeking clarity regarding the boundary

10 between two claim terms ­ a boundary that the patentee himself created and repeated. 11 This is the very purpose of the claim construction process, and ValueClick's assertion 12 that this is somehow "improper" at this stage is utterly baseless. Second, RSI's 13 position does not in any way overlook the fact that a classified advertisement can be a 14 type of agate data. As disclosed in the patents, the patentee expressly included 15 "classified advertisements" in his definition of agate, but chose to carve out sponsor 16 provided advertisements from agate data. RSI's definition remains faithful to this 17 patent disclosure. 18

Finally, ValueClick disputes RSI's definition on the grounds that it is

19 "circular," i.e., the definition includes the term being defined ("advertisement"). VC 20 Brief, at 26. This borders on the frivolous. The parties are not disputing what the 21 term "advertisement" means in general, but rather how the patent uses this term. 22 When read in the context of the patent, the term "advertisement" means a particular 23 type of advertisement, which is captured by RSI's construction. 24

By contrast, ValueClick's construction of "advertisement" ignores the patent

25 disclosure, instead relying completely on dictionary evidence. ValueClick's 26 definition should be rejected and RSI's definition adopted. 27
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4.

screen view [`735:1, 5, 8, 15 and 18]
17

28

RSI proposes that this term be construed as the "Entire page displayed on an
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1 end user's network client program (e.g., web browser)." 2

Both parties agree that a screen view is a page. The dispute is whether "screen

3 view" means the entire page as RSI proposes, or some fragment of a page, per 4 ValueClick. ValueClick argues that the "intrinsic record does not support" RSI's 5 construction, "which is itself unclear insofar as an `entire page' is a concept foreign 6 to the intrinsic record." VC Brief, at 18. 7

ValueClick is simply wrong. The specification consistently explains that in

8 generating a page, the program queries Page Display Objects 35a, b, and c. See, e.g., 9 `396, 14:53-57. Page Display Object 35a holds agate or other data. Page Display 10 Object 35c provides the outline for screen views, such as a home page, and a 11 financial page. Page Display Object 35a cross-references with User Object 37c 12 which holds the category and display preferences of the user. Thus, in putting 13 together a page, the program does not simply query 35c for a page outline and 14 display the outline to the user, or only query 35b and display only agate data, without 15 the outline to the user. Instead, the specification discloses that the entire page-- 16 outline and agate data customized to the user's psychographic profile ­ is displayed 17 as the screen view to the user. Roman Decl. ¶¶ 54-58. 18

In contrast, ValueClick points to little support for its construction. The only

19 intrinsic evidence ValueClick cites for its construction is the patent disclosure that 20 "the term `page' is used synonymously with screen view." VC Brief, at 18 (citing 21 `735, 20:64-65). This disclosure, however, supports RSI's proposal. A page means 22 an entire page, not part of a page. Similarly, a screen view means the entire page, not 23 part of the page. 24

The only other support that ValueClick points to is alleged expert opinion

25 testimony that a "screen view was known to encompass (potentially) less than the 26 complete viewable portion of a web page." VC Brief, at 18-19. Yet, there is 27 absolutely no support for this proposition in the patent or prosecution history.
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See

28 Phillips, 415 F.3d at 1318 ("conclusory, unsupported assertions by experts as to the
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1 definition of a claim term are not useful to a court. Similarly, a court should discount 2 any expert testimony `that is clearly at odds with the claim construction mandated by 3 the claims themselves, the written description, and the prosecution history, in other 4 words, with the written record of the patent.'"). Accordingly, the Court should reject 5 ValueClick's definition and adopt RSI's construction. 6 7

5.

demographic profile [no asserted claims]

The Court should not construe this term since it is not in any of the asserted

8 claims, and construing it is akin to offering an advisory opinion. According to 9 ValueClick, the Court should construe the term because it is included in RSI's 10 definition of target profile. See VC Brief, at 20. This argument has no merit. If the 11 Court were to follow ValueClick's logic, this Court would be buried under an endless 12 task of defining all of the definitions. ValueClick also argues that it will be helpful 13 for the jury to have "demographic profile" in mind while it considers issues related to 14 psychographic profile. VC Brief, at 20. Again, to the extent it will be helpful to 15 provide context to the patents-in-suit, RSI's definitions provide that context by giving 16 a clear definition for the relevant claim terms in dispute. 17

ValueClick further argues that construction of the term would be relevant,

18 insofar as ValueClick decides to assert additional claims later. VC Brief, at 20. The 19 same thing could be said of any term in any unasserted claims at any time during a 20 patent case. ValueClick should be in a position to assess from publicly available 21 information and documents produced by RSI whether it has sufficient basis to assert 22 infringement of the remaining claims. Because ValueClick has chosen not to assert 23 claims containing the term "demographic profile," ValueClick should not be 24 permitted to seek an "advisory" construction of this claim term. 25 26

6.

"computer apparatus" [`396:1, 5, 8; and `735:14]

RSI proposes that "computer apparatus" should be construed as: "A computer

27 program (i.e., set of statements or computer instructions) and the server hardware at a
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28 single network site for running or executing it, the server hardware distinct and
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1 separate from end user digital processors." 2

RSI's definition focuses on the simple fact that the patent discloses that the

3 invention is a program operating at a single network site. By contrast, ValueClick's 4 expansive definition, "a computer, or a multiplicity of computers, connected on a 5 network such as the Internet" literally includes any computer or computers connected 6 to the Internet. See VC Brief, at 20. As support for the multiplicity concept, 7 ValueClick cites to the `396 specification at 3:54-67. The specification, however, 8 supports RSI's position. The specification discloses several "loosely coupled" 9 networks of computers, with each network including several "loosely coupled" 10 personal computers and a single server, and the invention is described as "software 11 program 31 operated on and connected through a server 27 to the Internet for 12 communication among the various networks." Thus, the specification suggests a 13 computer apparatus is a server at a single network site that is connected to other 14 networks--a concept that is captured by RSI's definition. See Roman Response ¶¶ 15 25-27. 16

ValueClick further argues that RSI's construction has limitations that find no

17 support in the intrinsic record. VC Brief, at 21. ValueClick is wrong. RSI's 18 construction takes into account the patentee's choice to include in his claims 19 references to more than one type of computer, but to only claim one of them. For 20 example, claim 1 of the `396 patent uses two different terms to describe a computer-21 "computer apparatus" and "digital processor." The digital processor must be 22 different from the computer apparatus; for otherwise, the term "digital processor" 23 would be rendered superfluous. See, e.g., Ethicon Endo-Surgery v. United States 24 Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) ("If the terms `pusher assembly' 25 and `pusher bar' described a single element, one would expect the claim to 26 consistently refer to this element as either a `pusher bar' or a `pusher assembly,' but 27 not both, especially not within the same clause. Therefore, in our view, the plain
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28 meaning of the claim will not bear a reading that `pusher assembly' and `pusher bar'
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1 are synonyms."). RSI's construction captures this self-engineered limitation chosen 2 by the patentee. In contrast, ValueClick's definition ignores the distinctions drawn 3 by the patentee, instead proposing a broad definition that could include "digital 4 processor" and "multiplicity of computers." RSI's proper construction should be 5 adopted. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23

7.

"a computer program embodied on a computer readable medium" [`735:1, 5, and 8]

This term should be construed as: "Set of statements (computer instructions) stored on a single piece of storage material for execution on the hardware of a server at a single network site, the server hardware distinct and separate from the end user digital processors." ValueClick proposes a broad definition: "the physical manifestation of a computer algorithm (or set of algorithms), without limitation as to the form on which it might reside." VC Brief, at 21. ValueClick argues that this definition "recognizes that object-oriented programs (like the ones described in the Gerace patents) were known to be an aggregation of multiple self-contained subprograms." Id. VC's argument is nonsensical. The objects in an object oriented program are not "selfcontained subprograms." Rather, the objects are all compiled together into a single, interdependent computer program. Roman Responsive Decl. ¶ 29. ValueClick also contends that RSI's definition adds unrecited limitations that find no support in intrinsic record. VC Brief, at 21. As explained previously in RSI's Opening Brief, RSI's construction is fully supported by intrinsic record. For all these

reasons, this Court should accept RSI's proposed construction. 8. "Physical Activity" [all asserted claims] AND "User Response" [all asserted claims] 24
25

RSI proposes that "physical activity" means "Inputs (mouse and keyboard) to

26 the user's computer," and that "user response" means "Information provided by a 27 user in response to a prompt for the user's presentation format preferences and
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28 content preferences."

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1

RSI's definitions take into consideration the basic canon of claim construction

2 that two separate terms must each have separate meaning. Bancorp Servs., L.L.C. v. 3 Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir. 2004) ("the use of [two] terms 4 in close proximity in the same claim gives rise to an inference that a different 5 meaning should be assigned to each"). Accordingly, "Physical Activity" and "User 6 Response" must have different meanings since both terms are found in the same 7 claim. For example, claim 1 of the `396 patent provides that a computer apparatus 8 (or program) records both "physical activity" and "user response" to create a 9 psychographic profile. If "physical activity" means mouse clicks and keyboard 10 inputs, then "user response" must mean something more. See, e.g., Primos, Inc. v. 11 Hunter's Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006) ("the terms `engaging' 12 and `sealing' are both expressly recited in the claim and therefore `engaging' cannot 13 mean the same thing as `sealing'; if it did, one of the terms would be superfluous."). 14 The only logical thing it could mean, as supported by the intrinsic evidence, is 15 information provided by a user in response to a prompt for the user's preferences. 16 See RSI's Opening Brief. By contrast, ValueClick's identical definitions for these 17 terms renders one of the terms superfluous, thereby violating a basic canon of claim 18 construction that each term must have a separate meaning. 19

Regarding the term "physical activity," ValueClick argues that input cannot be

20 limited to mouse and keyboard inputs. VC Brief, at 23. ValueClick , however, 21 points to no support in the patent for any other kind of input. Thus, when the claim 22 term is read in the context of the specification, physical activity should be limited to 23 mouse and keyboard input, as RSI proposes. Phillips, 415 F.3d at 1315 ("the best 24 source for understanding a technical term is the specification from which it arose, 25 informed, as needed by the prosecution history." (internal quotations omitted). 26 27
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9.

target profile of desired users to whom to display the advertisement / target audience profile of each advertisement [`396:5, 7; `735:5, and 8]
22

28

This term should be construed as: "Information associated with each
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1 advertisement that identifies the characteristics of the audience to whom the 2 advertiser wants the advertisement displayed, distinct from demographic or 3 psychographic profile of a user." RSI's construction properly captures the fact that 4 "target profile" is distinct from a psychographic or a demographic profile. If this 5 were not the case, claim 6 of the `396 patent, which discloses target profile, 6 psychographic profile and demographic profile would be nonsensical--the term 7 "target profile" would be rendered superfluous by "psychographic profile." 8

ValueClick, nonetheless, argues that claim 6 indicates that the target profile

9 can include demographic or psychographic profiles of desired users for a given ad. 10 VC Brief, at 25. However, ValueClick's proposal would convert the "can" to 11 "must," making the pertinent terms refer to precisely the same thing. In other words, 12 a "target profile" will be the same thing as a "demographic" and/or "psychographic 13 profile" of a user, if ValueClick's definition were adopted. 14

In any event, the claim language of, for example, unasserted claim 6 of the

15 `396 patent, requires that the target profile be "substantially matching" with the 16 psychographic profile or demographic profile in order to serve an ad. As such, the 17 target profile must be a different component. Otherwise, the claim would be calling 18 for the target profile to be compared to itself. For all these reasons, ValueClick's 19 definition equating "target profile" with a "demographic and/or psychographic 20 profile" of a user should be rejected and RSI's definition adopted. 21 22 23 24

B.

112(6) claim terms 1. RSI's Position that the 112(6) Elements Disclose Insufficient Structure is correct and appropriate at this stage

The parties do not dispute that means-plus-function terms at issue in this case

25 are computer implemented or that the corresponding structure is an algorithm. See 26 Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005). The dispute 27 arises over whether the specification discloses adequate corresponding structure. RSI
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28 believes that no algorithm is disclosed, thus rendering the claims fatally indefinite
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1 and thus, invalid. ValueClick argues otherwise. 2

It is well-established law that the algorithm must be disclosed in the

3 specification, not in sources outside of the specification, such as the knowledge of a 4 person of ordinary skill in the art. See 35 U.S.C. 112, 6 (means-plus-function "claim 5 shall be construed to cover the corresponding structure, material, or acts described in 6 the specification and equivalents thereof.") (emphasis added). Whether the 7 specification adequately discloses that corresponding structure must be measured 8 from the knowledge of the person of ordinary skill in the art. Med. Instrumentation 9 and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). 10 However, this does not relieve the patentee of the duty of fully describing the 11 corresponding structure. The testimony of one skilled in the art as to what the 12 structure could be cannot be substituted for the "total absence of structure from the 13 specification." Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., 412 F.3d 14 1291, 1302 (Fed. Cir. 2005). 15

Thus, the proper question is whether "one of skill in the art would have

16 understood that [patent] disclosure to encompass software for [the disclose