Overture Services, Inc. v. Google Inc.

Filing 115

CLAIM CONSTRUCTION STATEMENT Google's Responsive Claim Construction Brief (Redacted Version) filed by Google Inc., Daralyn J. Durie. (Durie, Daralyn) (Filed on 1/30/2004)

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Overture Services, Inc. v. Google Inc. Doc. 115 Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 1 of 30 1 KEKER & V AN NEST, LLP JOHN W. KEKER - #49092 DARAL YN J. DURIE - #169825 CHRISTINE P. SUN - #218701 3 RA VIND S. GREWAL - #220543 710 Sansome Street San Francisco , CA 94111- 1704 Telephone: (415) 391-5400 Facsimile: (415) 397-7188 Attorneys for Defendant and Counterclaimant GOOGLE INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION OVERTURE SERVICES, INc. Plaintiff and Counterdefendant Case No. C 02- 01991 JSW (EDL) GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF (REDACTED VERSION) Tutorial: Hearing: Courtroom: Judge: 2004 2:00 p. 2004 2:00 p. , 17th Floor Hon. Jeffrey S. White March 10 March 24 GOOGLE INc., Defendant and Counterc1aimant. 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Dockets.Justia.com ............................................................................................................................. .... ......................~.... ...................... .................. .......... . Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 2 of 30 T ABLE OF CONTENTS Page TABLE OF AUTHORITIES ......................................................................................................... iii INTRODUCTION ................................................................................................................... II. BACKGROUND ........................................................................................................... .......... Overview of the ' 361 Patent ..............................,............................................................. Overview of Google AdWords Select................. ............................... ............................. III. LEGAL STANDARD .............................................................................................................. Claim Interpretation Requires a Review of the Intrinsic Evidence ................................ Dictionary Definitions, Although Often Useful, Are Never Alone Determinative................................................................................................................... IV. ARGUMENT................... ............... ................................... .......................... A. "search listing" and "search result list" A "search listing" is an entry in (or intended to be in) a search result list............................................................................................................................. Google s construction of "search result list" is consistent with the ordinary meaning of the claim terms, as used in the specification .......................... A "search result" is something obtained in response to a search submitted by a consumer using an Internet search engine............................... A "list" is a series of entries, arranged one after the other............................. 1 0 (modifiable) bid amount" ............................................................................................. A bid amount is the amount a successful bidder will pay...................................... Both the ordinary meaning and the specification confirm that "bid amount" is the amount the advertiser will pay............................................... 1 1 The prosecution history confirms the meaning of "bid amount ................... 12 Overture has confirmed that "bid amount" refers to the actual price that will be paid..................................................................................... The extrinsic evidence supports Google s construction ........ Modifiable " means the bid amount can be changed by the web site promoter .....................................................,.......................... ................................. a modifiable bid amount that is independent afother components of the search listing 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) " ........................................................................................................................... " .............................................................................................................. " ..................................................................................................... .............. ......................................................... ............. .. Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 3 of 30 TABLE OF CONTENTS continued) Page D. The Ordering Limitations............................................................................................... The dictionary definitions fail to resolve all ambiguities about the definitions of the ordering terms................................................ .......................... .. Overture s definitions would render the claims invalid as being indefinite to the extent they seek to broaden the scope of these terms beyond strict ordering ............................................................................................ The specification supports Google s constructions ............................................... in response to database G. "deducted from an account" H. "account record" .............. .......................................................... .................................. .. from a/the searcher CONCLUSION ...................................................................................................................... 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 1 K Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 4 of 30 T ABLE OF AUTHORITIES FEDERAL CASES Page(s) All Dental Prodx, LLC v. Advantage Dental Products, Inc. 309 F . 3d 774 (Fed. Cir. 2002) .... .............................................................................................. . Athletic Alternatives, Inc v. Prince Manufacturing, Inc. 73 F. 3d 1573 (Fed. Cir. 1998) .................................................................................................... Augustine Medical, Inc. v. Gaymar Industrial, Inc. 181 F. 3d 1291 (Fed. Cir. 1999) ................................................................................................... Brookhill- Wilk 1 , LLC v. Intuitive Surgical, Inc. 334 F. 3d 1294 (Fed. Cir. 2003) ................................................................................................ .18 Combined System, Inc. v. Defense Tech. Corp. of America 350 F. 3d 1207 (Fed. Cir. 2003) ................................................................................................... Deering Precision Instruments, LL C. v. Vector Distributing System 347 F.3d 1314 (Fed. Cir. 2003) ................................................................................................. Elkay Manufacturing Co. v. Ebco Manufacturing Co. 192 F . 3d 973 (Fed. Cir. 1999) ....... 4 Ferguson Beauregard/Logic Controls v. Mega Systems, LLC 350 F. 3d 1327 (Fed. Cir. 2003) ...................................... Guttman , Inc. v. Kopykake Enterprises, Inc. 302 F. 3d 1352 (Fed. Cir. 2002) ................................................................................................... 17 Kemode Manufacturing Co. v. United States 347 F . 2d 315 (Ct. Cl. 1965) ..................... 19 20 raft Foods, Inc. v. International Trading Co. 203 F. 3d 1362 (Fed. Cir. 2000) ................................................................................................. Kumar v. Ovonic Battery Co. 351 F. 3d 1364 (Fed. Cir. 2003) ................................................................................................... 22 Markman v. Westview Instrs. , Inc. 52 F. 3d 967 (Fed. Cir. 1995), affd, 517 U. S. 370 (1996) .......................................................... North America Vaccine, Inc. v. American Cyanamid Co. 7 F. 3d 1571 (Fed. Cir. 1994) ..................................................................................................... Pitney Bowes, Inc. v. Hewlett-Packard Co. 182 F. 3d 1298 (Fed. Cir. 1999) ................................................................................................. 26 Renishaw PLC v. Marposs SpA 158 F. 3d 1243 (Fed. Cir. 1998) , III GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 56 SciMed Life System v. Advanced Cardiovascular System, Inc. 242 F. 3d 1337 (Fed. Cir. 2001) ............................................................................................. , 20 325441. ....... ............. .................................................................. ...... ...... . ........................ ................. ............. ...................................... ...... ....... ........................... ............................ Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 5 of 30 TABLE OF AUTHORITIES Page(s) Packing, Inc. Seattle Box Co. v. Industrial Crating 731 F. 2d 818 (Fed. Cir. 1984) .................................................................................................. .19 Texas Digital Systems, Inc. v. Telegenix, Inc. 308 F. 3d 1193 (Fed. Cir. 2002) ........................................................................................ , 6, 19 Vitronics Corp. v. Conceptronic, Inc. 90 F . 3d 1576 (Fed. Cir. .1996) Engineering, Inc. Vivid Techs. , Inc. v. American Sci. 200 F. 3d 795 (Fed. Cir. 1999) ..................................................................................................... FEDERAL STATUTES 35 U. S . c. 37 C.F .R. 9 112 , ~ 2........................................... ............ 9 1. 1 04( e)...................... 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 6 of 30 INTRODUCTION Overture s Opening Brief demonstrates a slavish devotion to selected dictionary definitions , while ignoring that such definitions are only one part of the claim construction inquiry. Overture s failure to address the intrinsic evidence leads to two fundamental problems. First Overture frequently proposes that the Court simply replace each of the disputed words with synonyms found in dictionaries. These purported definitions may be unobjectionable in the abstract , but they fail to shed any light on the crucial interpretive disputes that must be resolved in order for the court (or a jury) to address the ultimate issues of invalidity and non-infringement. Second by ignoring its own description ofthe purported invention, Overture seeks to enlarge the scope of some of the patent' s claim terms in ways that are fundamentally inconsistent with the stated purpose of the invention. But for other claim terms, Overture proposes narrow definitions that are informed by the patent specification. Overture thus fails to follow the "predictable claim construction analysis (that) is essential to the patent system. Athletic Alternatives, Inc v. Prince Mfg., Inc. 73 F. 3d 1573 , 1581 (Fed. Cir. 1998). II. BACKGROUND Overview of the ' 361 Patent The ' 361 patent claims a purportedly novel method of doing what search engines are supposed to do - "prioritize results in accordance with consumers' preferences. " 2:66-67. According to the ' 361 inventors, pre-existing search engines that relied on relevance algorithms were ill-equipped to achieve their goals and often provided random or irrelevant search results. See 2:48-67. At the same time, the ' 361 patent specification posits that traditional Internet See advertisement methods were ineffective. 3: 16-41 (criticizing prior art "banner advertisements , including keyword-targeted advertisements). The ' 361 inventors propose a single solution to both these problems: "(W)eb site promoters should be able to control their placement in search result listings so that their listings are prominent in searches that are relevant 1 Unless as Overture otherwise indicated, all citations herein are to the ' 361 patent, a copy of which appears Markman Exh. 1. Citations in the form are to the column and line numbers indicated , respe~tively. Unless otherwise indicated citations to number2d exhibits refer to Exhibits to the concurrently filed Declaration of Ravind S. Grewal, while c;itations to lettered exhibits refer to Exhibits to the Declaration of Christine P. Sun, filed under seal concurrently GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. g., Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 7 of 30 to the content of their web site." 3:51- 54. In doing so, the ' 361 patent describes a shift in the paradigm of searching for information on the Internet from one that is information-based to one that is commerce-based. Indeed, the 361 patent states that the "search engine functionality of the Internet needs to be focused in a new direction to facilitate an on-line marketplace. " 3:54- 56. Consistent with this commercial marketplace approach, the ' 361 patent describes the people conducting the searches as consumers " rather than as "users. See, e. 2:33; 2:40; 2:63; 2:66; 3:8; 3: 11; 3:28; 3:49; 3:56; 3:59. And it describes the authors of the web sites listed in the search results as "web site promoters " and "advertisers" rather than information providers. 3:20- 22; 3:33-34; 3:48; 3:51; 3:57-58; 3:65. In short, See, e. 2:38-39; 2:59-60; the ' 361 patent envisions a world where the searcher is a "consumer" looking for commercial information whose ordering is influenced by an advertiser, rather than a "user" looking for non-commercial information whose ordering is influenced by mathematical algorithms. The abstract succinctly describes the claimed invention: Advertisers submit "search listings " having a description, at least one search term, and a bid amount. See Abstract. Advertisers bid on search terms "through a continuous online competitive bidding process. Abstract; see also 5:1-5. "A higher bid. . . will result in a higher rank value and a more advantageous placement." Abstract. Despite the relative youth of both the Internet and the search engine industry, the basic concept of allowing web site promoters to control their placement did not originate with the ' 361 inventors. The inventors concede that others had previously used keywords to target advertisements , such as "banner" ads that appear above or alongside the search results, to search terms on search engines. 3:28- 30; see also Fig. 7 (showing "At Hand" banner ad at top of web page). Moreover, Open Text had previously sold placement in search engine results. Exh. 1 at OVG 1371 (ofrecord). 2 The pricing model chosen by the inventors - cost-per- click rather than herewith. 2 Articles cited during the prosecution of a patent application are intrinsic evidence. Ovonic Battery Co. Kumar v. 351 F. 3d 1364 , 1368 (Fed. Cir. 2003) (citing cases). In this brief, Google will include "of record" parenthetical references when citing articles that were cited during prosecution. The first four pages of the ' 361 patent list articles and patents that were cited during 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 8 of 30 per- impression pricing, see, e. 5:22- 27 - was also someone else s idea; Proctor & Gamble had See bargained for cost-per-click advertisements on Yahoo! as early as 1996. Exh. 2 at OVG 1216 (of record). Finally, others had sold advertisement placements through auctions before. See Exh. 3 at OVG 1124 (of record) (citing articles from 1997 that described advertising auctions). The ' 361 patent is thus not entitled to the broad construction that would attend a pioneer patent in the field. See Augustine Med. , Inc. v. Gaymar Indus. , Inc. 181 F.3d 1291 , 1301 (Fed. Cir. 1999) ("non-pioneers. . . must craft narrow claims to evade the strictures of a crowded art field" Overview of Google AdWords Select Google is one of the most popular search engines on the Internet. Hundreds of millions of users visit Google because of its uncanny ability to rank search results using a complicated and proprietary algorithm that includes Google s "PageRank" technology. 4 The search results produced by Google s search engine have been lauded for their objectivity, since Google is one of the few companies that does not allow commercial considerations to affect the ranking of its search results. See o:::: http://www. rankforsaies. comlgoogie-page-rank. html ~ (noting that "no one can buy a higher PageRank" Google also shows advertisements on the search results page in an effort to earn revenue in much the same way that the ' 361 patent describes the prior art "traditional" search engines as showing advertisements on search results pages see 3:28-30. These advertisements are not search results, just as the "banner" advertisements in prior art search engines were not search results. These banner advertisements instead appear on the same page as but to the right of search results, in small boxes that are clearly labeled ' sponsored links' to distinguish the advertisements from the search results themselves. See o:::: http://www. searchenginewatch. coml ~rosecution. The meaning of a claim term does not depend on the method or device accused of infringement. Eng g, Inc. 200 F. 3d 795 803 (Fed. Cir. 1999). See Vivid Techs. , Inc. v. American Sci. However , because claim construction is for "resolution of disputed meanings see id. (quotation marks and citation omitted), some familiarity with AdWords Select may be useful in order to allow the Court better to understand the areas of dispute. See o:::: Id. http://www. google. comltechnology/index. html ~ (describing PageRank). GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 9 of 30 searchday/article. phpI215930 1 .5 In February 2002 , Google introduced an advertising service, AdWords Select ("A WS" see id. which Overture accuses of infringing the ' 361 patent. "AdWords advertisements appear on search result pages when a query matches the keywords purchased by advertisers. Id. Unlike the objective Google search results, the placement of A WS advertisements is based on a variety of factors including the advertisement's click- through rate, the amount the advertiser is willing to pay per click, and geographic targeting. A WS also incorporates a feature called the AdWords Discounter. /d. The AdWords Discounter "monitors all bids placed for keywords constantly on the lookout for changes. If a competitor s bid drops on a keyword, the discounter automatically lowers your bid. . . . Id. III. LEGAL STANDARD Claim Interpretation Requires a Review of the Intrinsic Evidence Overture repeatedly cites Texas Digital Systems, Inc. v. Telegenix, Inc. 308 F. 3d 1193 (Fed. Cir. 2002), in support of its assertion that claim terms ought to be construed based on their dictionary definitions. But Texas Digital cautions that one must also consult the intrinsic evidence: By examining relevant dictionaries, encyclopedias, and treatises to ascertain possible meanings that would have been attributed to the words of the claims by those skilled in the art and by further utilizing the intrinsic record to select from those possible meanings the one or ones most consistent with the use of the words by the inventor the full breadth of the limitations intended by the inventor will be more accurately determined and the improper importation of unintended limitations from the written description into the claims will be more easily avoided. 308 F. 3d at 1205 (emphasis added). Texas Digital' recitation that the specification must be construed in defining disputed claim terms is nothing new. As succinctly stated in Markman v. Westview Instrs. , Inc. 52 F. aff' 517 US. 370 (1996), " (c)laims must be read in view 967 979 (Fed. Cir. 1995) (en banc), of the specification, of which they are a part. " And in fact, subsequent cases make clear that the specification "is the single best guide to the meaning of a disputed term. Kopykake Enters. , Inc. 302 F. 3d 5 SearchEngineWatch. 1352 , Guttman , Inc. v. 1360 (Fed. Cir. 2002) (quotation marks and citation com is a site that is well known as a source of independent analysis in the 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 10 of 30 omitted); SciMed Life Sys. v. Advanced Cardiovascular Sys. , Inc. 242 F. 3d 1337 , 1343 (Fed. Cir. 2001) (specification s description of the "present invention" is "strong evidence" regarding the scope of the claim). As recently as two months ago , the Federal Circuit warned district courts not to "read some isolated statements (regarding dictionaries) in certain recent opinions too rigidly and in isolation from the entire body of our claim construction jurisprudence. Sys. , Inc. v. Defense Tech. Corp. of Am. 350 F.3d 1207 , 1215 (Fed. Cir. 2003). Combined There are, of course, limits on how the specification may be used. The specification may be used in the claim construction process to define the words that actually appear in the claims. See Renishaw PLC v. Marposs SpA 158 F.3d 1243 , 1248 (Fed. Cir. 1998) (" (A) party wishing to use statements in the written description to confine or otherwise affect a patent' s scope must, at the very least, point to a term or terms in the claim with which to draw in those statements. Thus if the specification clarifies the meaning of a claim term, courts are entitled to rely upon the context provided by the specification to define the scope ofthe claims. See id. at 1251- (construing "when" narrowly in light of the specification). In contrast, the specification may not be used to import limitations into the claims when the proposed limitations are divorced from the claim terms. See id. at 1248. Overture itself relies on the specification to define claim terms , when that approach works in its favor. For example, Overture s construction of "bid amount" is stated in terms of a click." Notably, this conclusion finds no support in the language of the claims, considered in isolation. Nor is it derived from dictionary definitions. Instead, the only way one knows that a bid amount is measured on a cost-per-click basis is the specification s repeated and consistent explanation that the invention is based on a cost-per-click pricing model. Google agrees that the Court can construe "bid amounts" to be limited to cost-per-click bids. But doing so requires Overture (and the Court) to adopt a consistent methodology in construing the other disputed terms and phrases. Dictionary Definitions, Although Often Useful, Are Never Alone Determinative The Court should reject dictionary definitions that "hav(e) no relation to the claimed Internet search industry. 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) ," Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 11 of 30 invention. Texas Digital 308 F. 3d at 1203. Instead, the Court should look for the definition Id. that is "is most consistent with the use of the words by the inventor. Only if there are multiple definitions that are "most consistent" with the usage in the specification should the claims be construed to encompass all of those meanings. See id.; see also id. at 1205 (claim most construction requires selecting from ordinary meanings "the one or ones consistent with the use of the words by the inventor" (emphasis added)). (I)fthe inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction " the inventor s description of his invention will control. Id. at 1204. Even where there is no expression of "manifest" exclusion, if the specification "uses the words in a manner clearly inconsistent with. . . a dictionary definition that definition should be rejected. /d. Thus the construction that stays true to the claim language and most naturally aligns with the patent' s description of the invention will be, in the end , the correct construction. Renishaw PLC, 158 F. 3d at 1250. IV. ARGUMENT search listing" and "search result list" Google has defined the term "search listing" as "an entry that is or is intended to be in a search result list " and the term "search result list" as a series of such entries arranged one after the other (i. e. a "list,, 6 Overture has recently revised its definitions ofthese terms , purportedly to "moot" some of Google s objections and to "clarify" its proposals.? Overture has , for example , revised "search listing" in response to Google s argument that requiring the inclusion of "at least one search term" was neither supported by the specification nor internally consistent. Overture has also made clear that a search listing may be "paid or unpaid." As to the other term 6 The precise definitions proposed by the parties for these and other disputed claim terms are set forth in the Joint Claim Construction Statement, which was filed on June 24, 2003 and 2004. Exh. 4. See vurportudlyOvertureby Overture by months to contemplate Google s objections, as set forth in Altho egh revised has had many letter on January 20 Google s responsive claim construction brief filed in August 2003 , Overture only informed Google that it desired to revise its constructions 10 days ago and provided no argument in favor of its new constructions. Because Google will not have had the opportunity to address Overture s fully briefed arguments in Google s one claim construction brief, Google requested that O"erture stipulate to Google s filing of a sur-reply of no more than 5 pages, limited to these two searGh terms. Request for Misc. Administrative Relief, p. 1 (concurrently filed with this See brief). Overture refused to stipulate, despite its inability to explain why it would be prejudiced GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 12 of 30 Overture has apparently conceded that a "search result list" is an listings " rather than merely a set. ordered series of "search Although Overture s concessions have partially eliminated Google s concerns, they have not completely resolved the disputes between the parties. A "search listing" is an entry in (or intended to be in) a search result list The parties dispute whether a search listing must be a "collection of information " as Overture urges , or may be simply understood as an "entry" in a search result list 8 The Court term should reject Overture s proposed construction as inconsistent with the plain meaning ofthe as well as the specification. While it may be correct that a search listing will in practice almost always be a collection of information " such as the s~ch term, web site description, URL, and bid amount Overture s attempt to import the requirement that a search listing must contain multiple bits of information should be rejected. The ' 361 patent does not purport to have invented the concept of a "search listing," only a method for ordering search listings in a search result list. See 2:33- (prior art search engines "enable consumers to search the Internet for a listing of web sites based on a specific topic, product, or service of interest"); 3:51-54 ("Ideally, web site promoters should be able to control their placement in search result listings so that their listings are prominent in searches that are relevant to the content oftheir web site. ). In early prior art bid- for- placement systems , a search listing may have included only the URL of the advertiser s web site, which Overture would presumably argue is not a "collection of information." Overture s proposed construction of "search listing" should be rejected as artificially narrower than its ordinary meanmg. The specification also confirms that a "search listing" may be simply understood as an entry in (or intended to be in) a search result list, and places no limitation on the kinds or amount of information that must be included in a "listing by a sur-reply. 8 Overture s Opening Brief emphasizes that search listings exist independent of whether they are included in a search result list. See, e. Opening Brf. at 8:9- 11. This is not disputed. Google See id. a search result list" (emphasis definition includes entries that are "in (or intended to be in) added). Thus, c..search listing can exist even before it is included in a search result - and , indeed even if it is never included in a search result list. Overture also contends that Google asserts that a search result list must be displayed. Google s definition, however, does not anywhere use the GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 13 of 30 The web site description 354 is a short textual description (preferably less than 190 characters) of the content of the advertiser s web site and the advertiser entry in a search result list. The displayed as part of may also contain a title 360 of the web site that may be displayed as the hyperlinked heading to the advertiser entry in a search result list. may be search listing 344 see also 12:56- 62 (emphases added); 13: 1-2. Thus , consistent with its ordinary meaning and Google s definition, the specification permits but does not require that a search listing be a collection of information. Google s construction of "search result list" is consistent with the ordinary meaning of the claim terms, as used in the specification A "search result" is something obtained in response to a search submitted by a consumer using an Internet search engine The parties also dispute whether the search result list must be responsive to the searcher inquiry. Google contends that the search result list must be in fulfillment of the consumer request for information, whereas Overture s proposed construction includes no analogous limitation. Overture latest definition of " search result" - "search listings. . . obtained as a consequence of the examination of data" - is unhelpful. Substituting Overture s definition of search listing" in its definition of "search result list" yields the following definition: a "search result list" is "a series of (a collection of information that can be included in a search result list and which may be paid or unpaid) that is obtained as a consequence of the examination of data. In short, Overture s definition is circular: it has defined "search result list" in terms of search listing, and "search listing" in terms of a search result list. Moreover , Overture s latest definition is overbroad and inconsistent with the specification. As illustrated in Figure 7 of the ' 361 patent, a search results page includes many things besides the search results. For example, it may contain the GoTo.com logo; the banner word "display. 9 This dispute is relevant to infringement because the list generated by A WS is not in response to the search request and therefore is not a "search result list." Instead, a searcher using Google site requests and receives a list generated by a Google "web search" server - that is, search listings from Google s neutral and unpaid database of web sites, ordered using Google PageRank algorithm. The searcher also receives a list of advertisements displayed next to the PageRank results, which is not the information that the searcher has requested. In fact, those advertisements are no more "search results" than the advertisements that are distinguished from search results in the ' 361 patent. 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) g., Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 14 of 30 advertisement at the top of the page; the search box; the "Find It!" button; etc. None of those can reasonably be called a "search result " and yet each is "obtained as a consequence of the examination of data." Since not everything on a search result page is a "search result " any definition of "search result" must help differentiate a search result from the non-search result content that may appear on the page. The term "search result" is best understood in reference to the concept of "search." A search" happens when a user is looking for a particular piece or type of information and a search result" is the information provided in response to that search. 10 2:32- 35 ("search services enable consumers to search the Internet for a listing of web sites based on a specific topic , product, or service of interest"). The entire ' 361 patent is devoted to a methodology for conducting user-requested searches so as to increase the relevance to the searcher of the results of his or her searches. See 3:54-58. Consistent with that purpose, the ' 361 specification result) repeatedly demonstrates that the term "search result" refers to the outcome (i. search requested by a user. of a Fig. 7 and See, e. 2:42- 46; 4:60-64; 9:42-45; So a "search 10:16-21; 13:13- 16; accompanying description at 17:53-61. resuW' is the information provided response to the searcher s query, not other information that may also be included on the. results page such as banner or tile advertisements. Indeed , the specification specifically excludes banner advertisements from the scope of the term "search result. Compare 3:16- 17 (prior art relies on "current paradigms for generating with , e. web site traffic, such as banner advertising should be able to control their placement in 3:51-54 ("Ideally, web site promoters search result listings. . . . ) (emphasis added). See Keyword triggered banner advertisements are also excluded. 3:28-30 (prior art targets banners to search terms). Because Overture s proposed definition would encompass within the same banners that are explicitly distinguished from search results in the specification, it cannot be correct. The extrinsic evidence confirms that search results consist of the information the searcher The title of the patent refers to a "search result list" as being generated by a "search engilie. Internet search engines represent one solution - well known at the time the application was fiJed - to allow Internet users to find information they are looking for among the "seemingly limitless GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 10 325441. -.Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 15 of 30 is seeking and exclude other information such as banner or tile advertisements that may appear on the same page as search results. REDACTED A "list" is a series of entries, arranged one after the other By its revisions, Overture appears to have conceded that a " list" an ordered is , as Google proposes series of entries, and not merely a "set" of search listings. To the extent that Overture does not agree that the claim language requires that the entries (i. e. the search listings) be arranged in an order, the Court should reject Overture s definition in favor of Google , which is consistent with the ordinary meaning of the word "list." Google s definition is also consistent with the language of the claims, each of which indicates that a "list" is what one gets after placing search listings in an order. 13 The context supplied by the patent specification also supports Google s definition. The specification consistently uses the term "search result list" to refer to an ordered set of search listings. See Abstract (advertisers can "influence a position for a search listing within search result list number of web pages" available on the World Wide Web. 2:26-35. 11 This distinction is important, because Google s A WS takes a different approach. Instead of next to search including advertisers ' listings in search results, A WS places advertisements results. "The main difference between the two programs is the way in which their ads are listed - Google s are highlighted alongside the regular Google search results, and Overture s appear AS regular search results." Exh. 5 at GOG 32243 (capitalized emphasis in the original). 12 American Heritage defines a "list" as "a series of names, words, or other items written printed , or imagined one after the other(. )" Exh. 6 at 1021. The New Oxford Dictionary of English similarly defines a list as "a number of connected items or names written or printed consecutively, typically one below the other(.)" Exh. 7 at 1076. 13 23: 1112 (claim 1 ordering the identified search listings into a search result list"); 24: 1 (claim 11 , same); 24:27- 28 (claim 13 , same); 25:33- 35 (claim 14 the search result list arranged in an order determined using the bid amounts ); 27:2-3 (claim 30 the search result list arranged in an order corresponding to the bid amounts ); 28:50-51 (claim 52 , same). 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 16 of 30 because position is determined by "rank " which is in turn determined by the "bid amounts" of the search listings); 4:3-4 ("The higher an advertiser s position on a search result list, the higher likelihood of a ' referral"' ); 5: 11- 12 (invention allows advertisers "to pinpoint the placement of their web site description within the search results (modifiable) bid amount" A bid amount is the amount a successful bidder will pay The parties dispute whether "bid amount" means the amount that an advertiser will actually pay if the user clicks on an advertisement (Google s position) or whether it means the maximum amount the advertiser is willing to pay if a user clicks on an advertisement (Overture position). This is significant because A WS advertisers set a maximum bid, but the bid amount they actually pay depends on a variety of other factors and is therefore not independent of other components of the search listing as required by all of the claims. Both the ordinary meaning and the specification confirm that "bid amount" pay is the amount the advertiser will The dictionary definitions cited by the parties overwhelmingly favor Google. For example , Random House defines bid, in its verb form, to mean "to offer (a certain sum) as the price one will payor charge: They bid $25 000 and got the contract. Exh. 8 at 204 (Random House s italics). 14 If a collector sends an buyer to aSotheby s auction with instructions to bid no more than $10 million for a Picasso, and the buyer submits a winning bid of $5 million, no one would argue that the collector s "bid amount" was $10 million rather than $5 million. The patent specification unequivocally demonstrates that the "bid amount" is the amount an advertiser will pay. In particular, the specification defines the cost of a search listing as the bid amount multiplied by the number of click-throughs: The system calculates the projections based on a cost projection algorithm. . . using (any of) a number of different algorithms known in the art. However since the cost See also Exh. 9 at 136 (bid (again in the verb form) means "to offer (a certain sum) as the price or fee that one will payor accept"); Exh. 10 at 111 (bid is "a statement of what one will give or take for something ); Exh. 11 at 170 (bid means "an offer of a price 15 Overture argues that Google s definition is contrary to the ordinary meaning of "bid " in which only the winning bidder pays the amount bid. Opening Brf. at 14:5- 11. Google, however, has defined "bid amount" to mean the amount the advertiser will pay upon a triggering event. If that triggering event (a click-through) occurs , the advertiser necessarily has "won " and thus "will" pay the bid amount. 14 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 17 of 30 of a search listing is calculated by multiplying the bid amount by the total number of clicks received by the search listing at that bid amount during a specified time period every cost projection algorithm must generally determine an estimated number of clicks per month (or other specified time period) for a search listing. 21 :4- 13 (emphasis added). If the bid amount were anything other than the actual cost per click will (i. not , the amount the advertiser pay for each click-through), the cost of a search listing would only be the bid amount multiplied by the number of clicks. Thus, the italicized assertion is true if Google s proposed construction is correct. 16 Because Overture s proposed construction for this term is at odds with the patent specification, it cannot be adopted as a matter of law. Vitronics Corp. v. Conceptronic, Inc. 90 F. 3d 1576, 1583 (Fed. Cir. 1996) ("A patentee may not proffer an interpretation for the purposes if litigation that would alter the indisputable public records consisting of the claims, the specification and the prosecution history and treat the claims as a ' nose of wax. ) (citation and quotation marks omitted). The prosecution history confirms the meaning of "bid amount" Overture and its attorneys have on several occasions confirmed that "bid amount" means the amount an advertiser actually pays for a click. First, for example, in the Examiner s reasons for allowance filed at the conclusion of the prosecution of the ' 361 patent application, the Examiner stated that "the bid amount correspond( s) to a money amount that is deducted from an account. . . upon receipt of a retrieval request for the network location. " Exh. 13 at 3. Overture See did not file a response or otherwise take exception to this assertion, as it was entitled to do. 37 c.F. R. 9 1.104( e). By failing to respond, Overture acquiesced in the Examiner 16 actually The ' 361 specification also consistently uses "bid amount" to mean the amount the advertiser 5:23-26 (advertiser s bid is " will willing to pay. pay, rather than an amount it is money amount the advertiser will pay. . . each time a searcher clicks on the advertiser hyperlinked listing" (emphasis added)); 9:46-49 (bid amount is "a money amount that deducted from the account of the advertiser for each time the advertiser s web site is accessed via a hyperlink on the search result list page" (emphasis added)). Moreover , the appendix to the patent application see 1 :8- , includes a file that defines bids " as "the price you agree to pay per click-through for each search term. See Exh. 12 at 2; . REDACTED. ~. Overture s citation to a different see also, Exh. 9 ("the bid price is Markman statement in the appendix is not to the contrary. See Overture the amount you re willing to pay ). In Overture s original system, the amount an advertiser was charged per click was always the same as the amount that the advertiser told the system it would be "wil1ing" to pay. However, as the rest of the evidence makes clear, although the bid amount in the original Overture system happened to be the same as the amount the advertiser indicated it was willing to pay, the thing that made that amount the "bid amount" was the fact that the 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) -Case 3:02-cv-01991-JSW Document 115 . -. Filed 01/30/2004 Page 18 of 30 understanding. See Elkay Mfg. Co. v. Ebco Mfg. Co. 192 F. 3d 973 , 979 (Fed. Cir. 1999). REDACTED Overture has confirmed that "bid amount" refers to the actual price that will be paid In a patent application that is "related" to the ' 361 patent application, Overture was faced with the need separately to describe the minimum, maximum, and actual cost per click. Exh. 14 ~~ 35-40. Overture chose to call the actual cost per click the "bid amount." /d. ~ 35. The related application describes an embodiment in which the minimum, maximum, and actual cost per click are all distinct parameters. Id. ~~ 35-40. The advertiser chooses a "bid Id. cap, " which is "the maximum dollar amount at which a bid may be set by the system. ~ 40. The system then sets " (b )id amounts" that are "less than or equal to the bid cap. however , will "never be lower than the minimum bid of $0. 05. described the advertiser actual cost Id. Id. The bid In this application, Overture cap as the "bid amount " and the on the advertiser s cost the "bid advertiser cap. " In short, until it decided to sue Google, Overture understood "bid amount" to was in fact charged that amount per click. Darren J. Davis, the first-named inventor on the ' 361 patent, is listed ('.5 a co- inventor on this application , ar.d it is being prosecuted by attorneys at Brinks Hofer, the same firm that prosecuted the ' 361 patent application. Exh. 14 (face page). 17 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 19 of 30 mean the actual cost per click. Overture should not be allowed to switch course now to satisfy the exigencies of the current litigation. The extrinsic evidence supports Google s construction The extrinsic evidence offers still further support for Google s definition of "bid amount." When Overture introduced a Google-style bidding mechanism (in which advertisers can set a ceiling on a cost per click rather than directly setting the actual cost per click), it implicitly adopted Google s proposed definition of "bid amount" both in naming and describing that new system. The summer after Google introduced A WS, Overture added a new feature to its system, called "Auto Bidding," that borrowed heavily from the A WS bidding system. See Exh. 15 at GOG 32256. In A WS, the advertiser sets a maximum cost per click, and the system discounts the actual cost (i. e. the amount the advertiser will pay) as much as possible without sacrificing positional ranking. Exh. 16 at GOG 32255 (A WS includes "an automatic discounter which lowers your bid amount every time there s a gap ); Exh. 5 at GOG 32244 (A WS automatically keeps your bid one penny ahead of the competition, up to your stated maximum amount" Overture s Auto Bidding feature was immediately recognized as being similar to A WS. Id. at GOG 32245 ("Overture has taken the hint and has implemented a similar tool , referred to One industry report described Overture as its ' Auto Bidding ' tool"). s Auto Bidding system like this: This new system is similar to the way bidding works on eBay. When you bid on The actual bid is the most eBay. . . you put in the most you re willing to pay. If someone bids higher than your revealed necessary to be the leader in the auction. to maintain your winning position. Ebay will continue bid your bid is adjusted doing that until someone bids higher than the highest bid you ve put in. (Ebay calls this proxy bidding. Exh. 15 at GOG 32256 (emphases added). This explanation equates the "actual bid" with the amount one will pay, distinct from the "maximum bid. See also Exh. 18 at GOG 32231 (when eBay online auction system - which was already quite popular at the time the ' 361 patent application was filed - is one of the best known examples of an Internet system in which the will bear) willing to bear) and the actual cost (i. e. the cost one maximum cost (i. e. the C0st one is are distinct. And, consistent with Google s proposed construction, eBay calls a buyer maximum cost the "maximum bid " and the buyer s actual cost (assuming the buyer wins the GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 18 The 325441. ," ---...---'---Document 115 Filed 01/30/2004 ," Case 3:02-cv-01991-JSW Page 20 of 30 using Auto Bidding, "(t)he max bid is not always the actual bid price 3i REDACTED See also Exh. 18 at GOG 32231 (explanation, by a third party, that "Auto Bidding will change your bid price for you automatically up to a Max Bid amount you have selected" REDACTED Modifiable " means the bid amount can be changed by the web site promoter The parties agree that "modifiable" includes the concept of "changeable." contends this refers to the Google advertiser control over its bid amount, while Overture argues that it merely means that the bid amount can be changed - by anyone. The context provided by the specification , however, makes clear that the claims are referring to changes under the control of the advertiser. That context demonstrates that the purpose of the claimed invention is to allow advertisers precisely to control placement of their advertisements, which can be achieved only if changes to bid amounts are controlled by the advertisers. As the inventors explain Ideally, web site promoters should be able to control their placement. . . ." 3 :51- 52. To do this, one should provide an "on-line marketplace( in which) companies selling products, services, or information bid in an open auction environment for positions on a search result list. . . . " 3:62- 64. In the claimed invention The bidding process occurs when an advertiser enters a new bid. . . . Preferably, the promoter s bid is then processed in real time. " describe the act of the advertiser 5:62-65. The inventors ' failure to entering a new bid as merely preferable - in contrast with realSee Deering time processing, which is expressly identified as preferable - is illuminating. Precision Instruments, LL.C v. Vector Distrib. Sys. 347 F. 3d 1314 1323- 24 (Fed. Cir. 2003) auction) the "bid" or the "current bid. 325441. See Exh. 17 at GOG 32225. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) ," Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 21 of 30 (rejecting the plaintiffs construction where two meanings were possible and the specification included no disclosure suggesting the plaintiff s construction). In sum, the ordinary meaning of the claim terms, supported by and consistent with the 361 specification as well as other intrinsic and extrinsic evidence, makes clear .that the "bid amount" is the actual amount paid by an advertiser for a click and that "modifiable bid amount" means a bid amount that can be changed by the advertiser. a modifiable bid amount that is independent of other components of the search listing Overture s proposed construction of "independent of' is a non- definition; it provides no more clarity on this issue than does the phrase to be construed. In contrast, Google s definition clarifies that other components of the search listing have no effect on the bid amount. Google s definition best captures the invention described by the inventors. According to the inventors, one problem with prior search systems was that their ranking of search listings was based on "multiple criteria such as keyword density and keyword location " which could yield random and even irrelevant" results. 2:52-55. The specification establishes that the disclosed invention represents a clean break from the prior art, which relied on multiple criteria derived from the websites themselves, in favor of a market-based approach that looks to the amount each advertiser will pay for a click-through. As explained in the ' 361 abstract A higher bid by a network information provider will result in . . . more advantageous placement." Abstract (emphasis added). This point is confirmed in the summary of the invention. 5:35-37 ("The higher the bid, the more advantageous the placement"). Although the inventors often preface statements with the word "preferably," which appears in the specification no less than forty-nine times , the foregoing statement is offered without reservation. Google s definition correctly highlights that the bid amount must be freely determinable by the advertiser - unconstrained by other factors, such as keyword density, or algorithmic 19 Overture changeable be changed 20 is the amount an advertiser is s definitions are also internally inconsistent. According to Overture, a "bid amount" willing to pay, while "modifiable" means that the bid amount is willing to pay cannot That makes no sense. The amount an advertiser is by anyone. by someone other than the advel tiser. See, e. Exh. 19 at 970 (equating "independent" with "unconstrained" see also id. (independent means "not influenced or controlled by others " or "not influenced by the thought GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. "" Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 22 of 30 determinations of the relevance of a web site to a search term. Were this not the case, the "free market" bidding system advocated by the inventors would, in fact, be saddled with the same problems for which they criticize prior art search systems. 21 That is , if one s bid amount is constrained or affected by the popularity of one s search listing, that is not the "open auction" the specification speaks of. 3 :63- 64. If an advertiser s ability to choose a bid amount is constrained by other aspects of its listing, it cannot "pinpoint" its placement. 5: 11. If the bid amount is itself a function, even in part, of factors such as keyword density, then the inventors' criticisms of the prior art also apply to the system itself. REDACTED The Ordering Limitations For each of the three ordering limitations ("in accordance with determined using," and corresponding to ), the parties' central dispute is the same: Does a search listing order that does not match the bid amount order fall within the scope of the claims? The dictionary definitions fail to resolve all ambiguities about the definitions of the ordering terms As is true for most of its claim construction arguments, Overture s support for its constructions of the ordering limitations comes primarily from a rote stringing together of dictionary definitions of single words considered in isolation. The fundamental problem with a or action of others. 21 Articles ); Exh. 20 at 686. about Overture s system, submitted during prosecution of the ' 361 patent application confirm that the "bid amount" must be free from constraint by other aspects of the search listing. Exh. 21 at OVG 1222 (of record) (Overture s system is different because "it ranks Web sites See based on how much the sites are willing to pay. . . rather than based on keyword density or some other mathematical formula ); Exh. 22 at OVG 1226 (of record) (bid amount is determined by (s)upply and demand"); Exh. 23 at OVG 1232 (of record) (Overture s bids are based on "the free market"); Exh. 24 at OVG 1366 (of record) ("Those willing to pay more can appear higher GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. ," ," "" Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 23 of 30 blind reliance on dictionary definitions is that the words at issue are often susceptible to widely varying meanings, depending on the context in which they are used. Take as an example the phrase "black sheep. " If one were to take the definitions of "black" and " sheep " separately, the phrase would literally mean a very dark farm animal. While such a definition would make sense in the sentence sentence There are black sheep in the pasture " it would be totally off the mark in the Andy is the black sheep ofthe family. Here , both Overture s and Google s proposed definitions find support in the dictionaries cited by the parties. For " accordance " the dictionaries cited by the parties variously use the words "agreement conformity, " or "harmony" to define this word. Google has selected conformance " as the word best suited to define "accordance " in the context of the ' 361 patent while Overture points to "agreement." For "determined " the parties again look to different parts of the cited dictionary definitions. Google borrows from definitions that use the word establish " while Overture looks to the word "ascertain. ,,22 For " corresponding, " Google relies on definitions that require conformity, while Overture asserts that mere similarity suffices. But when viewed in the context of the invention described by the inventors in the specification , only Google s position - that the order of the search listings must match the bid amounts - gives the correct meaning to the terms. See Brookhill- Wilk 1 , LLC v. Intuitive Surgical, Inc. 334 F. 3d 1294 , 1300 (Fed. Cir. 2003) ("the correct meaning of a word or phrase is Indeed, informed only by considering the surrounding text."). as explained below, Overture purely dictionary-derived constructions are so vague as to render the terms meaningless and ultimately, invalid for indefiniteness. Overture s definitions would render the claims invalid as being indefinite to the extent they seek to broaden the scope of these terms beyond strict ordering Overture s proposed definitions for "corresponding to" and "determined using" should be in the search results. 22 Overture argues that Google s definition improperly replaces "using" with "by. " The requirement of strict ordering, however, derives from the word "determined" itself, which Google defines as "established. " When an appellate court instructs that an issue be "determined using" a three-part test, surely it does not contemplate that the trial court might consider the three prongs 0fthat test, but then conclude that some fourth factor (n.::ver mentioned by the appellate court) outweighs the result compelled by the first three. There may be other possible definitions for "determined using," when it is considered in isolation, but Google s definition is the one that GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. ," Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 24 of 30 rejected as rendering the claims invalid for indefiniteness under 35 US.c. 9 112 , ~ 2. "The primary purpose of the definiteness requirement is to. . . give notice to the public of the extent of the legal protection afforded by the patent. . . . All Dental Prodx, LLC v. Advantage Dental Prods. , Inc. 309 F. 3d 774, 779 (Fed. Cir. 2002). Claims are indefinite if they are not stated with sufficient clarity that the metes and bounds thereof can be determined. Kemode Mfg. Co. v. United States 347 F.2d 315 , 319 (Ct. Cl. 1965). Although limitations may sometimes be defined using words of degree (such as "about" or "substantially ) that do not convey numerical specificity, " d)efiniteness problems often arise when words of degree are used in a claim. Seattle Box Co. v. Industrial Crating Packing, Inc. 731 F.2d 818 , 826 (Fed. Cir. 1984). In that event, the Court must "determine whether the patent' s specification provides some standard for measuring that degree. /d. Overture s definitions of "corresponding to" and "determined using" flunk this test. Both definitions seek to expand the ordering of search listings beyond strict ordering. According to Overture corresponding to" only requires that the order of the search listings must be " similar to that of the bid amounts. And "determined using" only requires that the order of the search listings is "ascertained by an analysis that utilizes" the bid amounts. Neither the specification nor Overture s Opening Brief explains what either of these definitions means, or how much ordering is enough. Those proposed definitions therefore fail to provide the standard required by Seattle Box for measuring degree and do not provide the threshold clarity required by paragraph 2 of section 112 to place the public on notice about the metes and bounds of the invention. The specification supports Google s constructions As the Federal Circuit recently explained Words often have different meanings to different people and in different contexts accounting for the multiple ordinary meanings found in dictionaries. Dictionary definitions , while reflective of the ordinary meanings of words, do not always associate those meanings with context. . . . The words used in the claims must be considered in context and are examined through the viewing glass of a person skilled is most consistent with the use of the words by the inventor. 23 It Texas Digital 308 F. 3d at 1203. appears that Overture is conceding that "in accordance with" means that the search listings must be in the same order as the bid amounts. If so, the parties are in substantive agreement though they disagree over the language that best expresses this meaning. However, if Overture is advocating some broader meaning for "in accordance with " then the indefiniteness arguments stated above apply with equal force to its definition for "in accordance with. 325441. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 25 of 30 in the art. Ferguson Beauregard/Logic Controls v. Mega Systems, LLC, 2003). 350 F. 3d 1327 , 1339 (Fed. Cir. Again and again, the specification explains that the order of the search listings must conform to the order of the bid amounts, as proposed by Google s definitions. The summary of invention could not be more clear: in the search result list that The higher the bid, the more advantageous the placement is generated when the bidded search term is entered by a searcher using the search The search result list is arranged in order of decreasing bid amount with engine. the search listing corresponding to the highest bids displayed first to the searcher. 5:35- 40 (emphasis added); 24 see also 9:42 ("higher bids receive more advantageous placement" ). 25 Moreover , the only way to achieve the stated purpose of the invention is to arrange the order of the search listings in the same order as their bid amounts. This is the only way to ensure that the advertiser can "control" (3:51), "easily predict" (5:7), and "pinpoint" (5:11) the placement of its search listing. Any other ordering scheme would be inconsistent with the ' 361 abstract' s bold assertion that "(a) higher bid by a network information provider will result in a higher rank value and a more advantageous placement." Abstract (emphasis added). The abstract states that it describes the "present invention" itself id. rather than a preferred embodiment. SciMed 242 F. 3d at 1343 (specification s description of the "present invention" is strong evidence" for purposes of claim construction). The only passage from the specification upon which Overture relies states When an Internet user enters the search terms in a search engine query, the search engine will generate a search result list with the web site promoter 24 s position influenced by one or more parameters Notably, the quoted text does not purport to describe a " preferred" embodiment, in contrast to 5:40-42 with 5:35-40; compare also 9:42-45 with 9:45-49. Compare the very next sentence. 25 Again sentence is described as applying to a "preferred embodiment " but the , the following explanation of the method of ordering is not so limited. 9:45- 49. 26 The Federal Circuit requires district courts to walk a fine line in construing claims , reading the specification to understand and breathe life into claim terms but not importing new limitations from the specification into the claims. Overture would have the Court avoid reading the specification at all to avoii improper importation oflimitations. This is error. Sioilarly, it would be error to read every nuance of the specification into the claims. Google s claim interpretation takes a middle ground. Google looks to the specification to see how the inventors contemplated using bid amounts to determIne the ordering of search results. GOOGLE' S RESPONSIVE CLAIM CONSTRUCTION BRIEF CASE NO. C 02-01991 JSW (EDL) 325441. Case 3:02-cv-01991-JSW Document 115 Filed 01/30/2004 Page 26 of 30 defined by the promoter." 4:60- 64 (Overture s emphasis). But Google s definition does not preclude reliance on multiple factors. So long as an ordering algorithm never results in an order that was contrary to the order of the bid amounts, it can rely on many factors. For example, one might order search listings first by bid amounts and use time of submission to resolve situations where two advertisements have identical bid amounts. Multi-factor ordering schemes of this sort - in which the resulting orders are always consistent with the order demanded by one primary factor - are commonplace (e. , alphabetical ordering, which examines initially only the first letter in each word and considers second and subsequent letters only in the event of a "tie" that results when two words begin with the same letter) and are described in the specification and the claims. See, e. 18 :23- 26 (describing a preferred embodiment where, in the event of a bidding see also tie , the search listing for which the bid was first received is placed first); 26:8- 18 (claim 19) (cl

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