Masterobjects, Inc. v. eBay, Inc.

Filing 51

CLAIM CONSTRUCTION ORDER. Signed by Magistrate Judge Jacqueline Scott Corley on 3/28/2013. (ahm, COURT STAFF) (Filed on 3/28/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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Northern District of California

United States District Court

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MASTEROBJECTS, INC.,

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Plaintiff,

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Case No.: 3:12-cv-680 JSC
CLAIM CONSTRUCTION ORDER

v.

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EBAY, INC.,

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Defendant.

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In this patent infringement action Plaintiff MasterObjects, Inc. alleges Defendant eBay
Inc. infringes U.S. Patent 8,112,529, “System and Method for Asychronous Client Server
Session Communication,” (the “‘529 Patent”) and U.S. Patent Nos. 8,060,639, “System and
Method for Utilizing Asynchronous Client Server Communication Objects (the “‘639
Patent”). The parties have asked the Court to construe eight disputed claim terms. 1 The
primary legal issues presented by the parties’ dispute are when a court may read a limitation
from the specification or, more precisely, from a preferred embodiment, into a claim and
when a claim may be limited by statements made during the prosecution history.

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The parties have consented to the jurisdiction of a United States Magistrate Judge pursuant
to 28 U.S.C. § 636(c).

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THE PATENTS-IN-SUIT

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This lawsuit involves computer-aided search queries. The ‘529 Patent relates to a

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“session-based bi-directional multi-tier client-server asynchronous search and retrieval system

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and retrieval system.” See ‘539 Patent Col. 1:17-20. The ‘639 Patent, a related patent,

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describes an asynchronous information search and retrieval system to be utilized for

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“interactive database searching, data entry, online purchasing, and other applications.” See

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‘639 Patent Col.1:38-40. The goal of the inventions is to provide instant search results

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character by character as the user types a query.
LEGAL STANDARDS

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“It is a bedrock principle of patent law that the claims of a patent define the invention

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United States District Court

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to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,

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1312 (Fed. Cir. 2005) (internal quotation marks and citations omitted). Generally, claim

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terms are given the ordinary and customary meaning that would be ascribed to them by a

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person of ordinary skill in the field of the invention. Id. at 1312–13; see also Rexnord Corp.

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v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[U]nless compelled to do otherwise,

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a court will give a claim term the full range of its ordinary meaning as understood by an

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artisan of ordinary skill”).

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The most “significant source of the legally operative meaning of disputed claim

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language” is the intrinsic evidence of record, that is, the claims, the specification and the

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prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.

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1996). This is because “the person of ordinary skill in the art is deemed to read the claim

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term not only in the context of the particular claim in which the disputed term appears, but in

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the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. Thus,

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“[t]he inventor’s words that are used to describe the invention—the inventor’s

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lexicography—must be understood and interpreted by the court as they would be understood

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and interpreted by a person in that field of technology.” Multiform Desiccants, Inc. v.

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Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also ACTV, Inc. v. Walt Disney Co.,

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346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also

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must be considered in determining the ordinary and customary meaning of those terms”). In

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some cases, the specification may reveal a “special definition” given by the inventor that

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differs from the meaning the term might otherwise possess. Phillips, 1415 F.3d at 1316. In

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such instances, “the inventor’s lexicography governs.” Id. Similarly, a specification may

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reveal “an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id.

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While claims are to be construed in light of the specification, courts must be careful

example, if a patent specification describes only a single embodiment of a claimed invention

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that does not mean the claims of the patent necessarily must be construed as limited to that

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embodiment. Id. Rather, the purpose of the specification “is to teach and enable those of

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not to read limitations from the specification into the claim. Phillips, 415 F.3d at 1323. For

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skill in the art to make and use the invention” and often the best way to do so is to provide an

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example. Id. However, the court “cannot look at the ordinary meaning of the term. . . in a

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vacuum. Rather, [it] must look at the ordinary meaning in the context of the written

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description and the prosecution history.” Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313,

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1319 (Fed. Cir. 2005). Further, arguments and amendments made during patent prosecution

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limit the interpretation of claim terms to exclude constructions that were disclaimed to obtain

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allowance of a claim. Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576

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(Fed. Cir. 1995).
CONSTRUCTION OF CLAIM TERMS

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The parties jointly submitted eight claim terms for construction consistent with Patent

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Local Rule 4-3 and the Court’s Case Management Order. The parties have grouped the eight

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terms within five separate categories. The disputes present two principal legal questions: (1)

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when should a limitation found in the specification be read into the claims, and (2) when do

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statements made during the prosecution history limit the construction of the claims. The

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Court will explore these questions further in the context of the discussion of the specific claim

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construction disputes. After considering the parties’ briefing, the oral and written arguments

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presented at the Markman hearing, and for the reasons explained below, the disputed terms

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are construed as follows.

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A. Communication Protocol Terms

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1. “Asynchronous connection”

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Claims

Claim Term

MasterObjects’ Proposed
Construction

eBay’s Proposed
Construction

ʼ529:1
ʼ639: 1, 13

“asynchronous connection”

A connection that allows
one side of the
communication to
communicate at the same
time the other side is also
communicating within a
session.

A connection that allows
one side of the
communication to initiate
communications at the
same time as the other side
at any moment in time
within a session.

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United States District Court

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Claim 1 of the ‘529 claims:
1. A system for retrieval at a client system of content from a server system,
comprising:
a communication protocol that enables an asynchronous connection over a
network between a client system and a server system, and allows the client
system to send via the network, and within a session between the client system
and the server system, a lengthening string composed of a plurality of
consecutively input characters, to query the server system for string-based
content, while asynchronously receiving consecutive responses from the server
system as the characters are being input;
‘529 Patent Col. 31:50-58 (emphasis added).

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The ‘639, Claims 1 and 13, similarly claim:
1. A system for enabling searches of content at a server, comprising:
....
a communication protocol which enables an asynchronous connection between
the clients and the server, and allows each client to communicate, under control of
a user and as part of a session, a plurality of consecutive query strings to query the
server for content; and
‘639 Patent Col. 41:2-10, Col. 42:23-28 (emphasis added).
The parties dispute the meaning of “asynchronous connection.” They agree that such a
connection must allow one side of the communication to communicate with the other side at
the same time, that is, like telephones rather than walkie talkies. They disagree, however, as
to whether an asynchronous connection must allow the server as well as the user to “initiate”
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a communication during a particular session. In other words, whether during any particular

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session the server sends the user updated search responses without awaiting further input (or

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characters) from the user. eBay contends that the claims demand that the server be able to

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initiate such communications while MasterObjects contend they do not.

claims does not require the server to initiate a communication. For example, Claim 1 of the

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‘529 describes the client sending the server a lengthening string of characters and the client

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then receiving responses from the server; it does not require the server to initiate any

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communication. ‘529 Patent Col. 31:52-58. Claims 1 and 13 of the ‘639 similarly describe

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the client sending communications to the server, and the server returning or responding to

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eBay agrees that the ordinary meaning of “asynchronous connection” as used in the

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communications from the client. ‘639 Patent Col. 41:23-24, Col. 42:51-52. In other words,

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the server is always receiving and responding, but never initiating.

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eBay nonetheless argues that the specification teaches one skilled in the art that the

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server must also be able to initiate a communication during a session. In support of its

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construction it relies on a paragraph from the “detailed description” in the specification:

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The system is bi-directional and asynchronous, in that both the Client and the
Server can initiate communications at any moment in time. The functionality of
the system is such that it can run in parallel with the normal operation of clients.
Tasks that clients execute on the system are non-blocking, and clients may
resume normal operation while the system is performing those tasks. For
example, a communication initiated by the Client may be a single character that
is sent to the Server, that responds by returning appropriate data. An example of
a communication initiated by the Server is updating the information provided to
the client. Because the system is session-based it can keep track of database
information that has been sent to the Client. As information changes in the
database, the Server sends an updated version of that information to the Client.

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‘529 Patent Col. 12:22-36 (emphasis added); ‘639 Patent Col. 14:25-39. eBay contends that
this paragraph unambiguously describes the claimed invention, and, in particular, describes
the invention as being asynchronous “in that” or “meaning that” the server (as well as the
client) “can initiate communications at any moment time.” According to eBay, this
specification excerpt is a classic example of an inventor acting as his own lexicographer; one
skilled in the art would read this definition of asynchronous communication as requiring the
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server to be able to initiate communications. See Phillips, 415 F.3d at 1316 (“the

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specification may reveal a special definition given to a claim term by the patentee that differs

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from the meaning it would otherwise possess. In such cases, the inventor’s lexiography

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governs”). MasterObjects retorts that this specification language is merely describing the

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preferred embodiment; eBay is improperly asking the Court to confine the claims to the

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preferred embodiment. See Phillips, 415 F.3d at 1323 (“although the specification often

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describes very specific embodiments of the invention, we have repeatedly warned against

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confining the claims to those embodiments”); see also Abbott Laboratories v. Sandoz, Inc.,

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566 F.3d 1282, 1288 (Fed. Cir. 2009) (“[w]hen consulting the specification to clarify the

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meaning of claim terms, courts must take care not to import limitations into the claims from

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the specification”).

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“[T]he distinction between using the specification to interpret the meaning of a claim

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and importing limitations from the specification into the claim can be a difficult one to apply

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in practice.” Phillips, 415 F.3d at 1323. After reviewing all of the intrinsic evidence, the

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Court concludes that here eBay is seeking to import a limitation from a specific embodiment

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into the claims.

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The specific language upon which eBay relies appears in the “DETAILED

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DESCRIPTION” and follows a paragraph which announces that the description that follows

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is of a preferred embodiment:

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In the detailed description below, embodiments of the present invention are
described with reference to a particular embodiment named QuestObjects,
created by the MasterObjects company. QuestObjects provides a system and
method for managing client input, server queries, server responses and client
output. . . . It will be evidence that the technology described herein may be
utilized in other embodiments, and with other systems, in addition to the
QuestOjects system.

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‘639 Patent Col. 6:18-29; ‘529 Patent Col. 9:49-52; see also ‘529 Patent Col. 7:6-15 (“In the

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detailed description below, the present invention is described with reference to a particular

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embodiment named QuestObjects”). Further, at the end of the detailed description, the

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inventor explains again:

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The foregoing description of preferred embodiments of the present invention has
been provided for the purposes of illustration and description. It is not intended
to be exhaustive or to limit the invention to the precise forms disclosed.
Obviously, many modifications and variations will be apparent to the
practitioner skilled in the art. The embodiments were chosen and described in
order to best explain the principles of the invention and its practical application,
thereby enabling others skilled in the art to understand the invention for various
embodiments and with various modifications that are suited to the particular use
contemplated.

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‘529 Patent Col. 31:33-45 (emphasis added), ‘639 Patent Col. 40:56-67. eBay’s

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emphasis on Figure 4 is further evidence that the “initiate communication” function is

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one possible embodiment of the patents rather than a limitation on the claims. The

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specification explains that Figure 4 “shows a sequence diagram illustrating the use of a

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system in accordance with an embodiment of the invention.” ‘529 Patent Col. 7:63-64

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(emphasis added); see also ‘529 Patent Col. 18:16-19 (“Fig. 4 shows a simplified event

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lifecycle illustrating what happens in a QuestObjects system using an auto-complete

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Service”).

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That the language upon which eBay focuses refers to the QuestObjects embodiment is
further demonstrated by the use of capitalization. The inventor capitalizes Server and Client
to signal that the discussion is referring to the server and client as utilized in the QuestObjects
embodiment rather than server and client in the claims. Moreover, other parts of the
specification are consistent with the “initiation” or “pushing” of communications from the
server being one application or embodiment of the invention, but not a limitation. For
example, near the beginning of the detailed description, the specification includes the
following paragraph:
The present invention is useful for an extremely wide variety of applications. It
offers a standardized way to access server data that allows immediate userfriendly data feedback based on user input. Data can also be presented to a
client without user input, i.e. the data is automatically ‘pushed’ to the client.
This enables a client component to display the data immediately or to transmit it
to another software program to be handled as required.

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‘529 Patent Col. 8:47-54; see also ‘639 Patent Col. 5:20-24. This discussion demonstrates

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that one embodiment of the invention is to have the data pushed, not that the claims require

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the initiation of communications by the server. The summary includes a similar paragraph

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disclosing that the invention “may be incorporated in a variety of embodiments to suit a

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correspondingly wide variety of applications,” including an application in which “data are

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automatically pushed to the client.” ‘529 Patent Col. 6:3-11.

district court for importing a limitation from the preferred embodiment described in the

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specification to the claim term “baffles.” While the claims did not limit “baffles” to the

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function of deflecting projectile, the specification contained several references to baffles

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Phillips is instructive. There an en banc panel of the Federal Circuit reversed the

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serving that function. Id. at 1325. The court held that “baffles” was nonetheless not limited

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to that function:

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[t]he fact that patent asserts that an invention achieves several objectives does
not require that each of the claims be construed as limited to structures that are
capable of achieving all of the objectives. Although deflecting projectiles is one
of the advantages of the baffles of the ‘798 patent, the patent does not require
that the inward extending structures always be capable of performing that
function.

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Id. at 1327. The same result applies here. Although the specification, and, in particular, the

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detailed description, asserts that one objective of the ‘529 and ‘639 Patents is to permit an

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application in which the server initiates communications with the client, the patents do not

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require that the software always be capable of performing that function.

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The cases upon which eBay relies are distinguishable. In Boss Control Inc. v.

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Bombardier Inc., 410 F.3d 1372 (Fed. Cir. 2005), the “Background” and “Summary of the

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Invention” sections of the specification gave the term “interrupt” a special meaning by

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distinguishing the patent from the prior art. Id. at 1377. The court went on to explain that the

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preferred embodiments are consistent with the more detailed description of “interrupt” in the

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Background and Summary sections and thus the court was not improperly limiting the claims

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to the preferred embodiments. Id. at 1377-78. Here, in contrast, eBay does not argue that in

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the background or summary sections of the specification MasterObjects distinguished the

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prior art in a manner that supports eBay’s special definition of asynchronous communication;

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instead, eBay is simply arguing for a construction that confines the claims to a preferred

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embodiment. This the Court cannot do. See MySpace, Inc. v. GraphOn Corp., 672 F.3d

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1250, 1255 (Fed. Cir. 2012) (“limitations from parts of the written description, such as the

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details of the preferred embodiment, cannot be read into the claims absent a clear intention by

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the patentee to do so”).

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MasterObjects did not limit the meaning of “asynchronous connection” to connections

the patents. “[W]here the patentee has unequivocally disavowed a certain meaning to obtain

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his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning

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that allow both the client and the server to initiate communications during the prosecution of

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of the claim congruent with the scope of the surrender.” Omega Eng’g, Inc. v. Raytek Corp.,

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334 F.3d 1314, 1324 (Fed. Cir. 2003). The “doctrine does not apply where the alleged

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disavowal is ambiguous; the disavowal must be both clear and unmistakable to one of

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ordinary skill in the art.” Elbex Video, Ltd. v. Sensormatic Electronics Corp., 508 F.3d 1366,

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1371 (Fed. Cir. 2007) (internal quotation marks and citation omitted0.

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The Court does not find an unambiguous disavowal in the prosecution history

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highlighted by eBay. In distinguishing the prior non-asynchronous art, MasterObjects

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described its invention as a

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a communication protocol that provides an asynchronous session-based
connection between a client and a server. As part of a session, the client can
send a plurality of consecutively input strings to query the server for content. A
client object transmits to a server object a plurality of consecutive queries,
within the same session, to retrieve content from the server system. Each
consecutive query either lengthens or shortens the query string by one or more
characters, to form an increasingly focused query string by one or more
characters, to form an increasingly focused query string for retrieving content
from the server system. (For example, the query string can be lengthened by an
additional character). A server object records, during the same session, each of
the plurality of queries. As the search string is being lengthened or shortened,
the server object automatically matches the focused query string against the
content of the server system, and returns increasingly relevant content
information to the client for immediate use by the client system. Applicant
respectfully submits that these features are not disclosed by the cited references.

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(Dkt. No. 43-7, p. 11-12.) This distinction in no way supports eBay’s assertion that the

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inventor limited an asynchronous connection to a communication initiated by the client or the

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server.

“advantage” of the session-based asynchronous nature of the invention is that “both the client

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and the server can initiate communications at any moment in time” such that the server “can

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automatically send updated results to the client, without the client user having to click

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‘submit.’” Id. at 12. The inventor is not distinguishing the prior art on the ground that with

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the invention the server can initiate communication with the client; rather, the inventor is

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explaining that as a result of the distinguishing feature of the invention—an asynchronous

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In the paragraph that follows the above paragraph, the inventor explains that an

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session-based system—the invention can have the server initiate communications. Thus, this

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prosecution history is consistent with the specification’s description of having the server

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initiate a communication as one possible application of the invention rather than a limitation.

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It therefore does not narrow the ordinary meaning of asynchronous connection.

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As the ordinary meaning of the language of the claims at issue to one skilled in the art

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does not include the limitation that the server initiate communications with the client, and as

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the specification demonstrates that having the server initiate communications with the client

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is one function that can be enabled with the invention but not a necessary function, and as the

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patentee did not narrow “asynchronous connection” during prosecution to require that the

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server initiate communications with the client, the Court adopts the following construction for

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asynchronous connection: “a connection that allows one side of the communication to

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communicate at the same time the other side is also communicating within a session.”

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//

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2.

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“Communication Protocol”

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Claims

Claim Term

MasterObjects’ Proposed
Construction

eBay’s Proposed
Construction

ʼ529: 1, 44
ʼ639: 1, 13

“communication protocol”

A set of rules that enable
computers to exchange
messages with each other.

A set of rules that enable
computers to exchange
messages with each other
and that is optimized for
sending single characters
from a client to a server
and lists of strings from the
server to the client.

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Here, again, the parties’ dispute focuses on the inclusion of an additional limitation
from the specification; namely, “optimized for sending single characters from a client to a
server.” And, once again, eBay does not contend that the additional limitation is derived from
the ordinary meaning to one skilled in the art of the claims’ language; instead, it again
anchors its construction to a definition it claims is found in the specification. In particular,
eBay relies on the following specification language: “[t]he invention includes a Server that

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handles requests for information from clients, and a communication protocol that is optimized

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for sending characters from a Client to the Server, and lists of strings from the Server to the

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Client.” ‘639 Patent Col. 13:58-62; ‘529 Patent Col. 11:55-59. This dispute, as with the

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dispute over the construction of asynchronous connection, is whether this description is

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referring solely to a preferred embodiment or more broadly to the patented inventions.

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The sentence upon which eBay relies is found in the following paragraph of the ‘539:

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The present invention provides a system that allows clients or client applications
to asynchronously retrieve database information from a remote server of [sic]
server application. The terms “client” and “server” are used herein to reflect a
specific embodiment of the invention although it will be evidence to one skilled
in the art that the invention may be equally used with any implementation that
requires communication between a first process or application and a second
process or application, regardless of whether these processes comprise a typical
client-server set up or not. The invention includes a Server, that handles
requests for information from clients, and a communication protocol that is
optimized for sending single characters from a Client to a Server, and lists
strings from the Server to the Client. In one embodiment, as the Server receives
a single character from the Client, it immediately analyzes the lengthening string
of characters and, based on that analysis, returns database information to the

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Client in the form of a list of strings. Clients are not restricted to programs with
a user interface. Generally, any process or mechanism that can send characters
and receive string lists can be considered a client of the system. For example, in
an industrial or power supply setting, the control system of a power plant could
send sensor readings to the system, and in return receive lists of actions to be
taken, based on those sensor readings.

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‘529 Patent Col. 11:46-12:2 (emphasis added). The ‘639 Patent paragraph is nearly identical,

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except that the first sentence reads: “Embodiments of the present invention provide a system

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and a method that allows clients or client applications to asynchronously retrieve database

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information from a remote server or server application.” ‘639 Patent Col. 13:48-14:5. eBay

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relies on the use of the term “the invention” to support the conclusion that the inventor clearly

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intended to limit the claims, that is, “the invention,” to a communication protocol that is

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optimized for sending single characters. The Court disagrees.

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While the inventor’s use of “the invention” in the specification often evidences an

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intent to limit the claims to the description of “the invention,” see Trading Technologies Int’l,

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Inc. v. eSpeed, Inc., 595 F.3d 1340, 1353 (Fed. Cir. 2010); Honeywell Int’l, Inc. v. ITT Indus.,

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452 F.3d 1312, 1318 (Fed. Cir. 2006), it is not always dispositive. The Federal Circuit has

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found that the use of “this invention” is not so limiting “where the references to a certain

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limitation as being the ‘invention’ are not uniform, or where other portions of the intrinsic

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evidence do not support applying the limitation to the entire patent.” See Absolute Software,

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Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed. Cir. 2011) (citing cases). It is not so

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limiting here.

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First, as the Court discussed with respect to asynchronous connection, the inventor

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expressly explained that the “detailed description” that follows the specification is “an

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embodiment of the present invention” referred to as QuestObjects. See ‘529 Patent Col. 9:49-

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56, ‘639 Patent Col. 6:18-21. Further, at the end of the detailed description the inventor

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disclaimed that “[t]he foregoing description of the present invention has been provided for

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purposes of illustration and description. It is not intended to be exhaustive or to limit the

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invention to the precise forms disclosed.” ‘639 Patent Col. 40:56-59, ‘529 Patent Col. 31:33-

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45. This expressed disclaimer indicates that the inventor’s use of “present invention” was, in

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fact, referring to an embodiment of the present invention (the QuestObjects embodiment)

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rather than what is claimed.

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eBay’s reliance on Wireless Agents LLC v. Sony Ericsson Mobile Communications AB,

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189 Fed. Appx. 965, 967 (Fed. Cir. 2006), for its argument that the disclaimer is meaningless

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is unavailing. In Wireless Agents the ordinary meaning of the disputed term was not readily

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apparent from the face of the claim and there was no common dictionary definition of the

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term. Id. Here, in contrast, “asynchronous connection” has an ordinary meaning to one

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skilled in the art. eBay wants the Court to deviate from that ordinary meaning on the ground

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that the patentee acted as its own lexicographer in the specification, even though the patentee

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expressly disclaimed such an intention. eBay does not cite any authority for that legal

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proposition.

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Second, the sentence immediately preceding the sentence upon which eBay rests its

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entire construction instructs that “the terms ‘client’ and ‘server’ are used herein to reflect a

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specific embodiment of the invention.” ‘529 Patent Col. 11:48-50; ‘639 Patent Col. 13:51-58.

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In the next sentence, the sentence with the “optimizing single character” language, server and

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client are capitalized to further indicate that the inventor is describing a specific embodiment

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rather than the limitations of the claimed inventions.

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Third, eBay does not identify any other language in the patent or anything in the

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prosecution history that suggests that the written description’s one reference to optimizing

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single characters is a limitation of the claims.

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Finally, eBay’s construction is inconsistent with the ordinary meaning of the claims.

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At oral argument eBay opined that “optimized” means that the client can send single

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characters to the server and the server then relates each sent single character to the previously

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sent single characters and responds with a list of relevant responses. (Dkt. No. 50 at 55:1-

25

57:13.) In other words, the communication protocol must be able to “glue” individually sent

26

characters together at the server. The claims, however, require the client system “to send via

27

the network . . . a lengthening string composed of a plurality of consecutively input

28

characters.” ‘529 Patent Col. 31:52-54; id. Col. 39:31-38 (“a communication protocol” which

13

1

allows the client “to send, as part of the same session, a plurality of queries from a user to

2

query the server for content, wherein each one of the plurality of queries are consecutive and

3

together form an increasingly focused query string”); ‘639 Patent, Col. 41:33-36 (“while the

4

increasingly lengthening query string is being entered by the user at the input field at the

5

client”). The client system is not sending a “lengthening string” if it is only sending one

6

character at time. The server may be creating a lengthening string when it relates the single

7

characters to each other, but the client system is not sending a lengthening string. Thus,

8

eBay’s proposed construction contradicts the claims’ language.
For all of these reasons the Court concludes that the specification does not clearly

9

Northern District of California

indicate an intention to limit “communication protocol” to a protocol that is optimized for

11
United States District Court

10

sending single characters. The Court thus adopts the following construction for

12

“communication protocol: “A set of rules that enable computers to exchange messages with

13

each other.”
B. The Cache Terms

14

1. Content-based cache/query and result cache

15
16
Claims

Claim Term

MasterObjects’ Proposed
Construction

eBay’s Proposed
Construction

18

ʼ529 Patent Claims: 1, 44

19

ʼ639 Patent Claims: 1, 13;

“content-based cache/query
and result cache”

A cache which stores
previous queries and
content or other
information returned in
response to the previous
queries.

A persistent store of
queries and corresponding
result sets executed by a
content engine for a
specific content channel.

17

20
21

Claim 1 of the ‘529 Patent comprises “a content-based cache, at the server system,

22

which stores previous queries and corresponding result sets previously executed by the

23

system, and which includes within its result sets content or other information previously

24

retrieved from the server system or one more content sources in response to the previous

25

queries.” ‘529 Patent Col. 31:59-64, Col. 44:22-27; see also ‘639 Patent Col. 41:11-13 (“a

26

query and result cache that stores one or more query strings previously communicated from

27

the clients, or content results previously returned from the server”). The parties agree that the

28

terms “content-based cache,” “query cache,” and “result cache” have the same meaning.
14

1

eBay’s proposed construction includes a limitation not found in the ordinary meaning

2

of the claims; namely, that the content-based cache is executed by a “content engine for a

3

specific content channel.” It takes its proposed construction directly from the glossary section

4

of the ‘529 Patent specification. The glossary defines “content-based Cache” as “a persistent

5

store of Queries and corresponding Result Sets executed by a Content Engine for a specific

6

Content Channel.” ‘529 Patent Col. 10:17-19. Once again eBay is arguing that the patentee

7

operated as its own lexicographer and that the Court must apply the definition of content-

8

based cache set forth in the glossary.

9

The glossary, however, describes the QuestObjects system, the preferred embodiment

Northern District of California

of the invention. ‘529 Patent Col. 9:49-56. eBay’s contention that “[n]othing in the glossary

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United States District Court

10

for the Patent limits the defined terms to preferred embodiments” is belied by the language of

12

the paragraph which precedes the glossary: “[o]ther terms used to describe the QuestObjects

13

system in detail can be found in the glossary below.” ‘529 Patent Col. 9:55-56. The glossary

14

is unambiguously describing the preferred embodiment; indeed, the glossary includes terms

15

such as “content engine” which are not even used in the claims, further demonstrating that the

16

patentee is using the glossary in connection with the preferred embodiment.

17

The Federal Circuit has repeatedly cautioned courts against reading limitations into the

18

claims based on the preferred embodiment: “although the specification often describes very

19

specific embodiments of the invention, we have repeatedly warned against confining the

20

claims to those embodiments.” Phillips, 415 F.3d at 1323. The court has also “expressly

21

rejected the contention that if a patent describes only a single embodiment, the claims of the

22

patent must be construed as being limited to that embodiment.” Liebel–Flarsheim Co. v.

23

Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); see also MySpace, Inc. v. GraphOn Corp.,

24

672 F.3d 1250, 1255 (Fed. Cir. 2012) (“limitations from parts of the written description, such

25

as the details of the preferred embodiment, cannot be read into the claims absent a clear

26

intention by the patentee to do so”).

27

The Court is mindful of this caution and declines to limit the construction of the

28

disputed terms to a definition which the patentee clearly used to describe one particular

15

1

embodiment. MasterObjects’ proposed construction is taken, at least in part, directly from the

2

language of the claim itself and is thus more availing; however, MasterObjects’ proposed

3

language omits considerable detail from the claim language and replaces the term

4

“corresponding results set” with a broader term: “content.” Although the content may be part

5

of the corresponding results set, the term should be construed in accordance with the plain

6

language of the claim which speaks in terms of “previous queries and corresponding result

7

sets” which includes “content” and “other information,” but is not so limited.
Accordingly, the Court finds that the terms “content-based cache/query and result

8
9
10

cache” should be construed as follows: “A cache which stores previous queries and
corresponding result sets or other information retrieved in response to previous queries.”
C. Content Source

Northern District of California

United States District Court

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12
13
14

Claims

Claim Term

ʼ529: 1 2

“content source(s)”

MasterObjects’ Proposed
Construction
A server computer that
provides information.

15
16

eBay’s Proposed
Construction
A data source on a server
computer that performs
string-based queries and
provides data to the
system.

Claim 1 of the ‘529 Patent recites a server system comprising

17

a content-based cache, at the server system, which stores previous queries and
corresponding result sets previously executed by the system, and which includes
within its result sets content or other information previously retrieved from the
server system or one or more content sources in response to the previous
queries.

18
19
20
21

MasterObjects contends that its proposed definition is a simple and common-sense

22

construction for the term “content source.” eBay counters that Court should again look to the

23

glossary, and, in particular, the definition of “content source” in the glossary of the ‘639

24

Patent. The ‘639 glossary —the same glossary which by its terms states that it is defining the

25

2

26
27
28

Although the Joint Claim Construction Statement (Dkt. No. 33) and MasterObjects Opening
Claim Construction Brief (Dkt. No. 37) only identify this term in relation to Claim 1 of the
‘529 Patent, eBay’s Responsive Claim Construction Brief (Dkt. No. 43) also lists Claims 44
and 45 of the ‘529 Patent and Claims 1 and 13 of the ‘639 Patent. For purposes of this Order,
the Court construes the term as used in Claim 1 of the ‘529 Patent in accordance with the Joint
Claims Construction Statement.
16

1

QuestObjects embodiment (‘639 Patent Col. 6:25-27)—defines “content source” as “[a]

2

server computer that provides the data that is accessed by the QuestObjects system. The

3

content source makes its data available through a content engine.” ‘639 Patent Col.10:22-25.

4

eBay then looks to the definition of “content engine” in the ‘639 Patent glossary and imports

5

that definition into its proposed construction of “content source” in the ‘529 Patent. “Content

6

engine” in the ‘639 Patent is defined as “a third-party application that runs on the content

7

source that is capable of performing string-based queries and returning string formatted

8

answers to the QuestObjects system.” ‘639 Patent Col. 10:13-15. The glossary to the ‘529

9

Patent also includes a definition of content engine, although it is different from that in the

Northern District of California

‘639 Patent: “[a] dynamic data source that provides data to a Content Channel by accessing

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United States District Court

10

its own database or by querying other information systems.” Compare ‘529 Patent Col.

12

10:24-26. with ‘639 Patent Col. 10:12-15.

13

The Court is unpersuaded by eBay’s argument. First, as with cache-based content,

14

eBay’s construction imports a specific limitation from a glossary which is expressly limited to

15

the preferred embodiment. Second, the ‘529 Patent—the patent in which the disputed claim

16

appears—does not define content source; eBay is seeking the definition used for a preferred

17

embodiment in a patent that was filed after the ‘529 Patent (although it issued first). eBay

18

does not cite any case that suggests the Court can take a definition related to a preferred

19

embodiment in a later-filed patent and then import that limitation into the parent patent.

20

Third, nothing in the language of the claims, elsewhere in the specification, or the prosecution

21

history, compels eBay’s construction and, in particular, the limitation that the content source

22

itself perform string-based queries.

23

eBay’s assertion that identical terms in related patents must mean the same thing is

24

unhelpful. The first question is whether the terms as defined in the glossary of either patent

25

are merely describing a preferred embodiment or are limiting the ordinary meaning of the

26

patents’ claims. The express language of the specification indicates that the glossary is

27

merely defining the preferred embodiment. Further, that “content engine” does not appear in

28

any of the claims is further evidence that the glossary is defining the preferred embodiment

17

1

rather than also defining the claims. The differing definitions of “content engine” in the

2

specifications of the ‘529 and ‘639 are also consistent with the glossary terms being limited to

3

the QuestObjects embodiment.
In sum, Claim 1 of the ‘529 Patent includes multiple references to “content sources”

4
5

which supply content or information in response to queries as does the server system. See

6

‘529 Patent Col. 31:60-64, Col. 32:17-23. Given the absence of any language suggesting a

7

“string-based queries” limitation, the Court does not see a basis to include one. Accordingly,

8

“content source” is construed as “a data source on a server computer that provides data to the

9

system.”
D. Session

10

Northern District of California

United States District Court

11
12
13

Claims

Claim Term

ʼ639: 1, 13
ʼ529: 1, 44

“session”

14
15

MasterObjects’ Proposed
Construction
A related set of
communications between a
client and a server as the
user enters a particular
search query by entering
consecutive characters.

16
17
18

eBay’s Proposed
Construction
A state maintained between
a client and 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 request.

The asserted claims require an asynchronous connection between a client and a server

19

which allows the client to send queries to the server “within a session” or “as part of a

20

session.” eBay’s proposed construction is not based on the ordinary meaning of “session” to

21

one skilled in the art. Nor does eBay contend that “session” as used in the asserted claims is

22

ambiguous. Instead, as with the other disputes, eBay argues that in the specification the

23

patentee gave “session” a special meaning which confines the claims. In particular, eBay’s

24

proposed construction of “session” requires that a “state” be “maintained” between a client

25

and a “single server.” Further, data from the user’s past queries is “required” to process the

26

user’s current request.

27

eBay relies on the following specification statement: “In accordance with one

28

embodiment of the invention the system is session-based, in that the server knows or
18

1

recognizes when subsequent requests originate at the same Client. Thus, in responding to a

2

character the Server receives from a Client it can use the history of data that has been sent to

3

and from the current user.” ‘529 Patent Col. 12:9-14. Here, the patentee expressly states that

4

it is describing an embodiment; it is not specially defining the claims. The Court cannot find

5

from this language a clear intent by the patentee to read these limitations into the claims. See

6

MySpace, Inc., 672 F.3d at 1255. Moreover, this language does not require information

7

about a user’s past queries, as does eBay’s proposed construction; the patentee merely states

8

that in one embodiment the server can use the history of data previously sent. Indeed, the

9

summary of the invention expressly states that “no history of use needs to be built on the

Northern District of California

client before data is available.” ‘529 Patent Col. 6:61-62. Nor does the specification limit

11
United States District Court

10

“session” to a single server. The asserted claims of the ‘529 Patent, in fact, discuss a session

12

between a client “system” and a server “system.” See, e.g., ‘529 Patent Col. 31:53-54.
Next, eBay contends that the prosecution history mandates its proposed limitations.

13
14

eBay argues that in distinguishing Purcell, MasterObjects disclaimed the possibility of using

15

multiple servers within a session. The Court disagrees. MasterObjects distinguished Purcell

16

on the ground that it lacked an asynchronous connection:
Applicant respectfully submits that Purcell does not disclose a session-based
environment, wherein a communication protocol provides an asynchronous
session-based connection between the client system and the server system, and
allows the client to send, as part of a session between that client system and that
server system, a plurality of consecutively input strings to query the server
system for content. Instead, Purcell appears to disclose a traditional
synchronous means of requesting information, and not one that uses a session,
as presently defined.

17
18
19
20
21
22
23

Dkt. No. 45-1 at 14 (emphasis in original). MasterObjects further stated that “Purcell

24

does not teach that an increasingly focused query string may be applied to a server.”

25

Id. MasterObjects never clearly and unmistakably disavowed using more than one

26

server within a session in distinguishing Purcell. See Elbex Video Ltd., 508 F.3d at

27

1371.

28

19

1

The Court similarly finds that MasterObjects did not clearly and unmistakably

2

define “session” as requiring data from a user’s past queries in order to process a

3

current request in the course of distinguishing Spaey. It did distinguish Spaey as being

4
5
6
7
8
9
10

Northern District of California

United States District Court

11

session-less, that is, there is no back and forth between the user and the server such that
the server asynchronously returns the increasingly matching results while the user is
inputting additional characters. (Dkt. No. 43-10 at 14-15.) And in doing so
MasterObjects noted that Spaey does not require information about past requests to
process the current request. But that is far from unequivocally stating that “session” as
used in the patents-in-suit requires information about past requests to process current
requests. See Omega Eng’g, Inc., 334 F.3d at 1324.
The Court is also not persuaded that in describing the advantages of the invention

12

MasterObjects limited “session” to communication between a single client and a single

13

server. MasterObjects did explain that the server’s ability to use the history of data

14

previously sent by the client is an advantage (Dkt. No. 45-1 at 12), but such explanation is

15

entirely consistent with the specification’s description of such function as an embodiment of

16

the invention. The invention claimed can be applied to have such functionality, but it is not

17

required by the claims.

18

While neither the specification nor the prosecution history requires the limitations

19

urged by eBay, they do emphasize the relationship between the client and server and the

20

server’s reliance on a content-based cache (i.e., prior search history) to provide responses.

21

See e.g., ‘639 Patent Col. 41:23-31 (“wherein the server receives the plurality of queries from

22

the requesting client” and “automatically matches the increasingly lengthening query string

23

against the content of the query and result cache”); ‘639 Patent Col. 42:26-32 (“allows each

24

client to communicate…as part of session, a plurality of consecutive query strings to query

25

the server for content; and providing access to a query and result cache that stores one or

26

more query strings previously communicated from the clients, or content results previously

27

returned from the server”); ‘529 Patent Col. 32:17-22 (“the server object in response to

28

receiving each of the corresponding consecutive queries…automatically uses the lengthening

20

1

string to query and retrieve content information from the content-based cache at the server

2

system or from one of more content sources”); id. Col. 39:45-47 (similarly compares the

3

query string to the content-based cache); id. Col. 40:13-15 (same).
MasterObjects’ proposed construction, “a related set of communications between a

4
5

client and a server as the user enters a particular search query by entering consecutive

6

characters,” captures this back and forth between the client and server, but it omits a crucial

7

component of a session; namely, that of the relationship between the server and the client. A

8

session is not just about the communications—the framework of the communications is a

9

crucial component.

Northern District of California

Accordingly, the Court finds that the construction of “session” tentatively proposed by

11
United States District Court

10

Judge White in MasterObjects v. Yahoo!, No. 11-cv-2539-JSW (N.D. Cal. Jul, 19, 2012, Dkt.

12

No. 49) strikes the proper balance. The Court construes “session” as “a relationship

13

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

14

a particular search query by entering consecutive characters.”
E. Server and Client Object

15
16
17
18

Claims

Claim Term

ʼ529: 1

“server object”

ʼ529: 1, 9

“client object”

19
20
21

MasterObjects’ Proposed
Construction
A software component or
function located on a
server.

A software component or
function located on a client.

22
23

eBay’s Proposed
Construction
A computer program
module executing on the
server that maintains the
state between the client and
the server.
A computer program
module executing on the
client that maintains the
state between the client and
the server.

The fundamental difference in the parties’ constructions of these terms is eBay’s

24

inclusion of the requirement that the computer program “maintains the state between the

25

client and the server.” eBay contends, once again, that the patentee acted as its own

26

lexicographer and that this construction is supported by the specification references to the

27

“server object” and “client object” synchronizing the data at the client with the data at the

28

server. See ‘529 Patent Col. 8:36-41 (“[t]he present invention provides a standardized way to

21

server system”). However, the only reference to either “maintains” or “state” is found in the

3

description of the preferred embodiment. Specifically, the written description states in the

4

middle of a long paragraph: “In accordance with the invention, any event or change that

5

happens in either [Client Quester or Sever Quester] is automatically duplicated to the other so

6

that their states are always equal.” ‘529 Patent Col. 13:31-33. The context of this sentence,

7

however, demonstrates that “in accordance with the invention” refers to the QuestObjects

8

preferred embodiment and not the invention claimed. See, e.g., ‘529 Patent Col. 11:48-50

9

(“The terms ‘client’ and ‘server’ are used herein to reflect a specific embodiment of the

10

invention”). As explained above, the inventor’s use of the term “the invention” does not

11
Northern District of California

immediately synchronize the data entered or displayed on a client system with the data on a

2

United States District Court

1

necessarily mean he was describing the patented invention as opposed to an embodiment. See

12

Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed. Cir. 2011).
Masterobjects’ proposed construction is also flawed as it omits any language that

13
14

addresses the relationship between the “server object” and the “client object.” The claims

15

themselves plainly refer to the two in relation to the other. See, e.g., ‘529 Patent Col. 31:65-

16

67 (“a client object…while each of the consecutive additional characters are being received as

17

input, transmits via the network to a server object at the server system on or more

18

corresponding consecutive queries, within the session between the client system and the

19

server system, to retrieve content from the server system”); id. Col. 32:13-16 (“a server

20

object, in communication with the server system, and with the client object”).
Accordingly, the Court adopts the following construction for the term “server object:”

21
22

“A software component or function located on a server performing in a relationship with a

23

client object.” The construction of a “client object” mirrors this language: “A software

24

component or function located on a client performing in a relationship with a server object.”

25

//

26

//

27

//

28

//

22

CONCLUSION

1
2

The Court construes the disputed claim terms of the patents-in-suit as set forth above.

3

The Court will hold a further case management conference on Thursday, May 2, 2013 at 1:30

4

p.m. in Courtroom F, 450 Golden Gate Avenue, San Francisco, California.

5
6
7
8

IT IS SO ORDERED.
Dated: March 28, 2013
_________________________________
JACQUELINE SCOTT CORLEY
UNITED STATES MAGISTRATE JUDGE

9
10

Northern District of California

United States District Court

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