Vasudevan Software, Inc. v. MicroStrategy, Inc.
Filing
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CLAIM CONSTRUCTION CLARIFICATION ORDER. Signed by Judge Richard Seeborg on 9/19/13. (cl, COURT STAFF) (Filed on 9/19/2013)
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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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SAN FRANCISCO DIVISION
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Plaintiff,
CLAIM CONSTRUCTION
CLARIFICATION ORDER
v.
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For the Northern District of California
United States District Court
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MICROSTRATEGY INC.,
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No. C 11-06637 RS
No. C 11-06638 RS
VASUDEVAN SOFTWARE, INC.,
Defendant.
____________________________________/
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VASUDEVAN SOFTWARE, INC.,
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Plaintiff,
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v.
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TIBCO SOFTWARE INC.,
Defendant.
____________________________________/
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I. INTRODUCTION
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Plaintiff Vasudevan Software Inc. (“VSi”) alleges that the software products of defendants
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MicroStrategy, Inc. and TIBCO Software, Inc. infringe its U.S. Patent Number 7,167,864 (’864
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patent), and that MicroStrategy additionally infringes VSi’s U.S. Patent Numbers 6,877,006 (’006
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patent), 7,720,861 (’861 patent), and 8,082,268 (’268 patent).1 Pursuant to Markman v. Westview
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Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996), and
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Three of those patents were construed in part in a previous action by VSi against defendants IBM
and Oracle. See Vasudevan Software, Inc. v. Int’l Bus. Mach. Corp., No. C 09-5897, 2011 WL
196884 at *1 (N.D. Cal. Jan. 20, 2011) (claim construction order).
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Patent Local Rule 4-3, three terms found in the claims of the patents were construed in a September
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19, 2012 order (Claim Construction Order). As the litigation progressed, a dispute between the
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parties has emerged over the proper understanding of the construction of the term “disparate []
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databases” as “databases having an absence of compatible keys or record identifier columns of
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similar value or format in the schemas or structures that would otherwise enable linking data.”2 The
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parties, recognizing that further clarification on the meaning of this term is necessary to resolve
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various pending motions for summary judgment of non-infringement and to exclude technical
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experts, request additional guidance from the Court.3 For the reasons set forth below, the
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clarification advanced by MicroStrategy will be adopted.
II. BACKGROUND
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For the Northern District of California
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The patents in suit relate to business intelligence software technology, and specifically, an
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alleged invention for dynamically creating, updating, and securing an online analytical processing
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(“OLAP”) cube. All of the asserted patents claim priority to a provisional application filed on July
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19, 2000 (the provisional application). That application originally claimed the ability to integrate
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data from multiple “digital databases.” In July of 2003, the PTO rejected that application’s pending
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claims in light of U.S. Patent No. 6,516,324 (Jones). In response, Mark Vasudevan, named inventor
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of each patent-in-suit, filed an amended application narrowing his claims to recite accessing only
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“disparate digital databases.” The PTO subsequently allowed the revised application to issue as the
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’864 patent. During claim construction, VSi proposed that “disparate [] databases” be construed as
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“incompatible databases having different schemas.” That construction was rejected in favor of a
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construction nearly identical to that proposed by defendants. The legal standards applicable to the
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The claim term appears in claims 1 and 2 of the ’006 patent, claims 1 through 4 of the ’861 patent,
and claims 1, 4, 26, and 29 of the ’864 patent.
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VSi also contends that “incompatible databases of different types” means something different than
the Court’s construction of “disparate [] databases.” This argument is foreclosed, however, by the
Claim Construction Order, which “disregarded” defendants’ claim differentiation theory that
“incompatible” meant something other than “disparate.” See Claim Construction Order at 5, n.5.
During claim construction, VSi succeeded in having its position adopted. It is estopped from now
arguing to the contrary.
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consideration of the parties’ request for clarification follow those set forth in the initial Claim
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Construction Order.
III. DISCUSSION
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Adopted Construction
VSi’s Interpretation
MicroStrategy’s
TIBCO’s
Interpretation
Interpretation
databases having an databases having an
databases having an
databases having an
absence of compatible absence of compatible absence of compatible absence of compatible
keys or record
keys OR an absence
keys AND an absence keys
identifier columns of of record identifier
of record identifier
similar value or
columns of similar
columns of similar
format in the schemas value OR an absence
value AND an
or structures that
of record identifier
absence of record
would otherwise
columns of similar
identifier columns of
enable linking data
format in the schemas similar format in the
or structures that
schemas or structures
would otherwise
that would otherwise
enable linking data
enable linking data
The parties debate the appropriate scope of the limitation “disparate [] databases.” VSi reads
the adopted construction in the disjunctive, arguing that a product allowing an OLAP cube to be
assembled from databases lacking any one of the features identified potentially infringes its patents.
Thus, VSi contends that databases are disparate if they have an absence of compatible keys, or if
they have an absence of record identifier columns of similar value, or if they have an absence of
record identifier columns of similar format in the schemas or structures that would otherwise enable
linking data. MicroStrategy interprets the construction conjunctively. Under this reading, disparate
databases are only those that have an absence of compatible keys and an absence of record identifier
columns of similar value and an absence of record identifier columns of similar format in the
schemas or structures that would otherwise enable linking data. TIBCO takes a somewhat different
tack by arguing that databases are disparate if and only if they have an absence of compatible keys,
with the presence or absence in such disparate databases of record identifier columns of similar
value or format in the schemas or structures that would otherwise enable linking data not affecting
their disparate nature.
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The construction about which the parties now seek clarification is nearly identical to that
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proposed by defendants during claim construction. VSi’s proposed construction of “disparate []
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databases” as “incompatible databases having different schemas” was rejected in favor of
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defendants’ proposed construction for a number of reasons. Most importantly, defendants’
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proposed construction was based on a statement made by VSi during prosecution of the ’006 patent.
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The PTO initially rejected VSi’s claims as obvious in light of prior art Jones, which, it noted,
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teaches a method of “accessing with a computer a plurality of digital databases,” wherein “the
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plurality of databases are incompatible to each other.” (Exh. A to Pak Decl. in Supp. of Defs.’
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Claim Constr. Br. at VSI0000239, 242). VSi responded by adding the limitation “disparate” to
“digital databases” and arguing that the prior art “access[ed] only one singular database – the
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multidimensional database – not a plurality of disparate databases,” as in the ’006 application.
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(Exh. 21 to Enger Decl. in Supp. of VSi’s Claim Constr. Br. at VSI0000267). As VSi went on to
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explain to the PTO:
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The disparate nature of the above databases refers to the absence of compatible keys
or record identifier (ID) columns of similar value or format in the schemas or
structures of the database that would otherwise enable linking data within the
constituent databases. An example of such a common key is a social security number
…. In embodiments of Applicant’s invention, such a common key is not necessary.
The disparate nature extends, for example, to the type of database (Oracle, IBM DB2,
Microsoft SQL Server of Object Databases) and the structure, schema, and nature of
the databases (i.e., type of the data fields in various tables of the constituent
databases).
(Id. at VSI0000265) (emphasis in italics added, underline in original).
Given the Federal Circuit’s guidance that patentees should be “bound by representations and
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actions that were taken in order to obtain the patent,” the Claim Construction Order adpoted
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defendants’ position that VSi should be bound by its representation to the PTO, which VSi had
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again embraced during the prosecution of the ’861 patent, in order to distinguish prior art Jones.
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Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011) (citations omitted);
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see also Claim Construction Order (citing Springs Window Fashions LP v. Novo Indus., L.P., 323
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F.3d 989, 995 (Fed. Cir. 2003) (“The public notice function of a patent and its prosecution history
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requires that a patentee be held to what he declares during the prosecution of his patent. A patentee
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may not state during prosecution that the claims do not cover a particular device and then change
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position and later sue a party who makes that same device for infringement”). Before the PTO, VSi
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had “clearly set forth a definition of the disputed term” and that definition, supported by the
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prosecution history, was adopted during claim construction. Typhoon Touch, 659 F.3d at 1382
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(citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
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VSi now argues for a broad interpretation of the construction of the term “disparate []
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databases” previously adopted, such that the absence of any one of the three specified elements
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would be sufficient to render a database disparate. Once again, an examination of the prosecution
history of the patents-in-suit indicates that VSi took a position before the PTO in order to
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distinguish its patent over prior art Jones contrary to the one it now advances. When VSi amended
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its claims to cover only “disparate digital databases” instead of “digital databases” in order to
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thereby overcome prior art Jones, VSi told the PTO, that “the component databases in Jones et al.
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rely on common keys that relate the data between the different tables and databases,” whereas “[i]n
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embodiments of Applicant’s invention, such a common key value is not necessary.” (Exh. 21 to
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Enger Decl. in Supp. of VSi’s Claim Constr. Br. at VSI0000266, VSI0000265) (underline in
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original). This is a clear representation to the PTO that an absence of compatible keys is necessary
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to render a database disparate such that it is distinguishable from the prior art.
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The interpretation of the construed term that VSi now champions would allow “disparate []
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databases” to encompass those with common keys, as long as they had an absence of either record
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identifier columns of similar value or an absence of record identifier columns of similar format in
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the schemas or structures that would otherwise enable linking data. Such an interpretation is
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inconsistent with VSi’s earlier representation to the PTO that its invention is patentable because,
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unlike Jones, it allows data from databases lacking common key values to be related. While
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precedent sets a fairly high bar for disavowal during prosecution, requiring “a clear and
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unmistakable disavowal of scope,” here that requirement is met. Purdue Pharm. L.P. v. Endo
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Pharms. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006).
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VSi next points to its statement to the PTO that “[t]he disparate nature extends, for example,
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to the type of database (Oracle, IBM DB2, Microsoft SQL Server of Object Databases) and the
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structure, schema, and nature of the databases (i.e., type of the data fields in various tables of the
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constituent databases)” to argue that “an absence of record identifier columns of similar format in
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the schemas or structures that would otherwise enable linking data” alone, such as occurs when two
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databases are made by different manufacturers (for example, an Oracle and IBM database) should
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be sufficient to render databases disparate. (Id. at VSI0000265) (emphasis in italics added,
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underline in original). As noted in the Claim Construction Order, “the trouble with VSi’s position is
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that [MicroStrategy]’s construction is not necessarily inconsistent with the distinction drawn
between databases supplied by different vendors – as VSi’s own statements to the PTO make quite
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clear.” Claim Construction Order at 7. Under MicroStrategy’s interpretation of the construction,
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databases from different vendors may be disparate as long as they have an absence of compatible
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keys, and an absence of record identifier columns of similar value, as neither side has suggested that
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they have identical record identifiers or formats within the structures or schemas organizing the
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data. VSi’s interpretation, by contrast, would automatically render databases from different vendors
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disparate even if they had compatible keys, a position inconsistent with the statements it made to the
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PTO in order to distinguish its patent applications over Jones.
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The interpretation advanced by defendant TIBCO, however, goes too far in that, while it
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recognizes the necessity for “disparate [] databases” to have an absence of compatible keys, it would
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render the rest of the already-adopted construction of that term mere surplusage. During claim
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construction, TIBCO never argued that an absence of compatible keys alone would render databases
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disparate. Instead, it joined MicroStrategy in arguing that “disparate [] databases” are “databases
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having an absence of compatible keys or record identifier (ID) columns of similar value or format in
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the schemas or structures of the database that would otherwise enable linking data within the
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constituent databases.” The interpretation put forth by TIBCO essentially asks the Court not to
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clarify an already-adopted construction, but to reopen claim construction entirely, disregard its
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earlier claim construction position, and embrace a new construction inconsistent with the plain
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language of both the Claim Construction Order and VSi’s statements to the PTO during the
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prosecution of its patents.
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VSi contends that the MicroStrategy’s interpretation similarly strays from the plain language
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of the claim construction because it substitutes the word “or” for “and.” The Federal Circuit has
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indicated “[t]he proper approach is to construe the claim language using standardized dictionary
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definitions [where] the claims have no specialized meaning.” Schumer v. Laboratory Computer
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Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002). Consistent with that approach, the Federal Circuit
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has “consistently interpreted the word ‘or’ to mean that the items in the sequence are alternatives to
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each other.” Id. Accordingly, the Federal Circuit has held, for example, that a district court erred in
construing claim language stating “one of the following elements is different . . . : location of the
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point of origin, or angle of rotation, or scale” to mean that the system in question must be capable of
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translating all three of the listed elements, as opposed to translating “one of the following.” Id. VSi
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warns that to adopt MicroStrategy’s interpretation would be to commit similar error.
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Yet, MicroStrategy’s interpretation is not necessarily at war with the plain language of the
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claim term as previously construed, albeit for an initially counterintuitive reason. As MicroStrategy
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points out, a basic rule of logic known as De Morgan’s law holds that the statement not (p or q) is
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equivalent to the statement (not p) and (not q) and, as a logical corollary, the statement not (p and q)
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is the same as (not p) or (not q). In this way, “a disjunction may be converted into a conjunction
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and a conjunction may be converted into a disjunction if (1) the quality (i.e., either affirmative or
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negative) of the conjunction or disjunction is changed.” See John P. Finan, Lawgical:
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Jurisprudential and Logical Considerations 15 Akron L. Rev. 675, 684 (1981) (discussing the use of
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De Morgan’s law to interpret the Uniform Commercial Code and other statutory language). For
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example, Article II, Section 1 of the United States Constitution establishes that in order to be
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eligible to hold the office of President of the United States, a person must be a natural born citizen
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of this country and thirty five years old. Another way to state this same proposition is, in order to
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be eligible to hold the office of President, you must not be foreign born or under the age of thirty
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five. Similarly, consistent with common English usage and syntax, the construction of the claim
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term “disparate [] databases” written as an absence of (A or B or C) is the same as an (absence of
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A) and an (absence of B) and an (absence of C). The basis for the clarification adopted by this
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order is grounded in the prosecution history of the patents-in-suit as opposed to grammatical rules.
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It is, nonetheless, instructive to note that the interpretation offered by MicroStrategy is consistent
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with the construction adopted in the Claim Construction Order, in light of the logical meaning of
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language as discussed above.
IV. CONCLUSION
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keys or record identifier columns of similar value or format in the schemas or structures that would
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otherwise enable linking data” is clarified to read “databases having an absence of compatible keys
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The construction of “Disparate [] databases” as “databases having an absence of compatible
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United States District Court
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and an absence of record identifier columns of similar value and an absence of record identifier
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columns of similar format in the schemas or structures that would otherwise enable linking data.”
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IT IS SO ORDERED.
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Dated: 9/19/13
RICHARD SEEBORG
UNITED STATES DISTRICT JUDGE
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