Masterobjects, Inc. v. Yahoo! Inc.

Filing 49

TENTATIVE RULINGS AND QUESTIONS RE CLAIM CONSTRUCTION. Signed by Judge Jeffrey S. White on July 19, 2012. (jswlc2, COURT STAFF) (Filed on 7/19/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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MASTEROBJECTS, INC.,

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For the Northern District of California

United States District Court

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Plaintiff,

No. C 11-02539 JSW

v.
YAHOO! INC.,

TENTATIVE RULINGS AND
QUESTIONS RE CLAIM
CONSTRUCTION

Defendant.
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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE TAKE

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NOTICE OF THE FOLLOWING TENTATIVE RULING AND QUESTIONS FOR THE

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HEARING SCHEDULED ON JULY 24, 2012, AT 1:30 p.m.:

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The Court has reviewed the parties’ briefs and, thus, does not wish to hear the parties

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reargue matters addressed in those pleadings. If the parties intend to rely on legal authorities

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not cited in their briefs, they are ORDERED to notify the Court and opposing counsel of these

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authorities reasonably in advance of the hearing and to make copies available at the hearing. If

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the parties submit such additional authorities, they are ORDERED to submit the citations to the

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authorities only, without argument or additional briefing. Cf. N.D. Civil Local Rule 7-3(d).

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The parties will be given the opportunity at oral argument to explain their reliance on such

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authority. The Court suggests that associates or of counsel attorneys who are working on this

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case be permitted to address some or all of the Court’s questions contained herein.

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The parties shall each have 60 minutes to present their respective arguments on claim
construction. The Court provides its tentative constructions of the disputed terms.

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The term “asynchronous connection” appears in Claims 1 and 18 of the ’326 Patent,

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“Asynchronous connection”

Claims 1 and 13 of the ’639 Patent, and Claim 1 of the ’529 Patent.

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MasterObjects argues that the term “asynchronous connection” must be construed to

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mean “A connection that allows one side of the communication to communicate at the same

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time the other side is also communicating within a session.” (Parties’ Joint Claim Construction

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and Pre-hearing Statement (“Statement”) at 2.) Yahoo!, on the other hand, argues that the term

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must be construed to mean “A connection that allows both the client and server to initiate

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communications at any moment in time.” (Id.)
It appears that MasterObjects argues the key dispute is whether the communications

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must be within a session (’529 Patent at 31:50-57) and Yahoo!’s primary contention is that

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either party may initiate the communications, i.e., the communications are both asynchronous

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and bi-directional (’326 Patent at 14:48-50). Can the Court resolve both disputes

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simultaneously, by incorporating both in its construction?

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The Court tentatively adopts the following construction: “A connection that allows one

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side of the communication to initiate communications at the same time as the other side at any

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moment in time within a session.”

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2. “Communication protocol”
The term “communication protocol” appears in Claims 1 and 18 of the ’326 Patent,
Claims 1 and 13 of the ’639 Patent, and Claims 1, 44, and 45 of the ’529 Patent.
MasterObjects argues that the term “communication protocol” must be construed to

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mean “A set of rules that enable computers to exchange messages with each other.” (Id. at 2.)

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Yahoo!, on the other hand, argues that the term must be construed to mean “A set of rules or

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standards designed to enable computers to connect with one another and to exchange

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information and that is optimized for sending single characters from a client to a server and lists

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of strings from the server to the client.” (Id.)

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The key dispute between the parties is whether the protocol must be optimized for
sending single characters from a client to a server and lists of strings from the server to the
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client. As disclosed in the specifications, the “invention” or “present invention,” and not

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merely a preferred embodiment, is defined as including “a Server, that handles requests for

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information from clients, and a communication protocol that is optimized for sending characters

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from a Client to the Server, and lists of strings from the Server to the Client.” (’326 Patent at

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14:14-18; ’529 Patent at 11:55-59; ’639 Patent at 13:58-62.)

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How does MasterObjects contend that the statements describing “the invention” or “the

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present invention,” and not a specific embodiment, do not limit the scope of the claim? See

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Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1353 (Fed. Cir. 2010) (holding that a

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reference to “‘the present invention’ strongly suggests that the claimed” invention is limited by

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the statement).
The Court tentatively adopts the following construction: “A set of rules that enable

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computers to exchange messages with each other and that is optimized for sending single

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characters from a client to a server and lists of strings from the server to the client.”

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3.

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The terms “content-based cache/query and result cache” appear in Claims 1, 44, and 45

“Content-based cache/query and result cache”

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of the ’529 Patent and Claims 1 and 13 of the ’639 Patent. The parties agree that the terms

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should be given the same construction.

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MasterObjects argues that the terms “content-based cache/query and result cache” must

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be construed to mean “A cache which stores previous queries and content or other information

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returned in response to previous queries.” (Id. at 2.) Yahoo!, on the other hand, argues that the

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term must be construed to mean “A persistent store of queries and corresponding result sets

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executed by a content engine for a specific content channel, thus improving performance on

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recurring queries and limiting the load imposed on content engines. Memory that stores an

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index file that aids in retrieval of queries and result sets, but does not store those queries and

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result sets, is not a cache.” (Id.)

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The key dispute between the parties is whether to import the language from the glossary

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and to import the purpose of the caching into the definition of the term (and the final sentence

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describing what a cache is not). There is no support for importing the purpose of the term (or
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what it is not), as the specific term at issue is defined. However, here, the patentee thus “acted

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as his own lexicographer,” and clearly and precisely “set forth a definition of the disputed claim

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term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,

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288 F.3d 1359, 1366 (Fed. Cir. 2002). Accordingly, the Court must defer to that definition.

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The Court tentatively adopts one of the following two constructions:

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“A persistent store of queries and corresponding result sets executed by a content engine

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Because the Court finds this definition includes terms which lack specific definition and
takes from the claim language (’529 Patent at 31:59-61), the Court may adopt the following
construction:

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for a specific content channel.”

“A persistent store of queries and corresponding result sets executed by the system.”

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What is MasterObjects’ best argument that either such construction is improper?

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4.

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The terms “unified query and result cache/unified query cache” appear in Claims 1 and

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“Unified query and result cache/unified query cache”

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MasterObjects argues that the terms “unified query and result cache/unified query

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cache” must be construed to mean “A cache for a plurality of clients which stores previous

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queries or content or other information returned to the previous inquiries.” (Statement at 3.)

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Yahoo!, on the other hand, argues that the term must be construed to mean “A persistent store

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of queries and corresponding result sets, common to all users, executed by a content engine for

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a specific content channel, thus improving performance on recurring queries and limiting the

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load imposed on content engines. Memory that stores an index file that aids in retrieval of

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queries and result sets, but does not store those queries and result sets, is not a cache.” (Id.)

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The key dispute between the parties – one not resolved by the previous construction – is

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the construction of “unified” to mean either common “for a plurality of clients” or “common to

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all users.”

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What is the material dispute between the parties? Is the dispute between some users and
all users? How does MasterObjects’ proposed construction not make the remaining portion of
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the term duplicative or merely surplusage? Is the term defined in the glossary section or what

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precedes that section in the patent? Is there a difference between these two sections of the

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patent?

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The Court tentatively adopts the following construction: “A persistent store of queries

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and corresponding result sets, common to all users, executed by the system [OR by a content

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engine for a specific content channel].”

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5.

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The term “content source(s)” appears in Claim 1 of the ’326 Patent and Claims 1, 44,

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and 45 of the ’529 Patent.
MasterObjects argues that the term “content source(s)” must be construed to mean “A

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“Content source(s)”

server computer that provides information.” (Statement at 3.) Yahoo!, on the other hand,

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argues that the term must be construed to mean “A server computer that provides data to a third-

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party application that is capable of performing string-based queries and returning string-

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formatted answers to the system by accessing its own database or by querying other information

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systems.” (Id.)

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The key dispute between the parties is whether to import the limitation from the glossary

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definitions to include the content engine definition, which requires that it makes its data

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available through a third-party application that is capable of processing string-based queries and

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returning string-formatted answers. The glossary in the ’326 Patent defines “content source” to

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be “A server computer that provides the data that is accessed by the [specific embodiment]

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system.” However, Yahoo! has picked up the next sentence in the glossary stating that “The

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content source makes its data available through a content engine.” (’326 Patent at 10:23-26.)

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The explanation of the working of the specific embodiment within the system does not

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necessarily form part of the definition of the system’s parts and Yahoo!’s proposed construction

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does not adopt all of the language from the glossary, only a selected portion. Accordingly, the

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Court is persuaded that the first sentence of the glossary definition suffices.

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The Court tentatively adopts the following construction: “A server computer that
provides the data that is accessed by the system.”
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What are the parties’ responses to that proposed construction?

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The terms “session/user session” appear in Claims 1 and 18 of the ’326 Patent and

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“Session/user session”

Claims 1 and 13 of the ’639 Patent.

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MasterObjects argues that the terms “session/user session” must be construed to mean

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“A related set of communications between a client and a server as the user enters a particular

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search query by entering consecutive characters.” (Statement at 3-4.) Yahoo!, on the other

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hand, argues that the term must be construed to mean “A state maintained between a client and

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a single server in which the server recognizes when subsequent requests originate from the
same user such that information about the user’s past queries is required to process the current

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request.” (Id.)

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The Court tentatively adopts the following construction: “A relationship maintained

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between a client and a server in which the server recognizes when the user enters a particular

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search query by entering consecutive characters.”

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What are the parties’ responses to that proposed construction?

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The term “increasingly appropriate content or search criteria” appears in Claim 18 of

Claims of Indefiniteness

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the ’326 Patent and Claims 44 and 45 of the ’529 Patent. The term “increasingly relevant

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content” appears in Claims 1 and 18 of the ’326 Patent and Claims 1 and 13 of the ’639 Patent.

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MasterObjects argues these terms should be given its plain meaning. Yahoo!, on the other

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hand, argues that the terms are not amenable to construction and the claims containing them are

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invalid as indefinite.

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Why should the Court address the question of indefiniteness at the Markman proceeding

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and not at summary judgment? See, e.g., Intergraph Hardware Techs. Co. v. Toshiba Corp.,

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508 F. Supp. 2d 752, 773 n.3 (N.D. Cal. 2007) (“[The] indefiniteness argument is inappropriate

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at the claim construction stage.”); Pharmastem Therapeutics, Inc. v. Viacell, Inc., 2003 WL

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124149, at *1 n.1 (D. Del. Jan. 13, 2003) (“[T]he court will not address the defendants’

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indefiniteness argument at [the Markman stage].”).
IT IS SO ORDERED.

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Dated: July 19, 2012
JEFFREY S. WHITE
UNITED STATES DISTRICT JUDGE

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For the Northern District of California

United States District Court

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