eBay Inc. et al v. PartsRiver, Inc.

Filing 153

ORDER by Judge Claudia WilkenON CLAIM CONSTRUCTION AND GRANTING (94 in case 4:10-cv-04947-CW); (361 in case 4:11-cv-01548-CW); (57 in case 4:11-cv-01398-CW) MOTION FOR SUMMARY JUDGMENT. (ndr, COURT STAFF) (Filed on 5/21/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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EBAY INC.; and MICROSOFT
CORPORATION,

v.

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KELORA SYSTEMS, LLC,

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Defendant.
/

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United States District Court
For the Northern District of California

ORDER ON CLAIM
CONSTRUCTION AND
GRANTING MOTION
FOR SUMMARY
JUDGMENT
(Docket Nos. 94 in
10-4947, 57 in
11-1398 and 361 in
11-1548)

Plaintiffs,

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No. C 10-4947 CW

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CABELA’S INC.,
Plaintiff,

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No. C 11-1398 CW

v.

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KELORA SYSTEMS, LLC,

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Defendant.
/

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No. C 11-1548 CW

KELORA SYSTEMS, LLC,
Plaintiff,

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v.

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TARGET CORPORATION; AMAZON.COM,
INC.; DELL, INC.; OFFICE DEPOT,
INC.; NEWEGG INC.; COSTCO
WHOLESALE CORPORATION; HEWLETTPACKARD COMPANY; AUDIBLE, INC.;
and ZAPPOS.COM, INC.,

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Defendants.

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AND ALL RELATED COUNTERCLAIMS
/
Plaintiffs and Counterclaim-Defendants eBay, Inc., Microsoft
Corporation and Cabela’s Inc., Defendants and

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Counterclaim-Plaintiffs Target Corporation, Amazon.com, Inc.,

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Dell, Inc., Office Depot, Inc., Newegg, Inc., Costco Wholesale

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Corporation, Hewlett-Packard Company, Audible, Inc. and

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Zappos.com, Inc. (hereinafter, collectively referred to as

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Defendants) and Defendant/Counterclaim-Plaintiff and

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Plaintiff/Counter-claim Defendant Kelora Systems, LLC

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(hereinafter, Kelora) seek construction of terms and phrases used

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in Kelora’s U.S. Patent No. 6,275,821 (’821 patent).

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Defendants move for summary judgment of non-infringement and

In addition,

United States District Court
For the Northern District of California

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invalidity of the ’821 patent.

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Having considered the papers submitted by the parties and their

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oral arguments, the Court construes the terms and phrases as set

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forth below.

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summary judgment.

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Kelora opposes their motion.

In addition, the Court GRANTS Defendants’ motion for

BACKGROUND
Kelora Systems LLC is the current owner of the ’821 patent,

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which is entitled, “Method and System for Executing a Guided

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Parametric Search,” and claims a “process for identifying a single

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item from a family of items.”

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invention is intended “to provide a guided parametric search to

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isolate a subfamily of items within a family of items based on

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alternatives associated with each item.”

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patent specification describes two embodiments of the invention:

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(1) an embodiment that runs on a single, local computer, see id.

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at 5:50-18:9; and (2) an embodiment that runs over the Internet

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and requires a server and client computer, see id. at 18:10-

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19:34.

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electronic catalog, providing an electronic alternative to

’821 patent, Abstract.

Id.

The

at 3:36-39.

The

Over the Internet, “the invention . . . may be used as an

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updating and distributing product and/or service information.”

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Id. at 4:6-9.

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The ’821 patent is the continuation of U.S. Patent No. 5,983,

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219, which is itself a continuation of U.S. Patent No. 5,715,444

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(’444 patent).

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October 14, 1994.

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Summary J. (Mot.), Ex. 6.

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The application for the ’444 patent was filed on
Defs.’ Claim Construction Brief and Mot. for

A previous iteration of the ’821 patent was at issue in a
case previously before this Court, PartsRiver, Inc. v. Shopzilla,

United States District Court
For the Northern District of California

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Inc., Case No. 09-0811 (N.D. Cal.).

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previous owner of the ’821 patent, charged eBay and Microsoft with

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infringement.

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non-infringement and invalidity.

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and two of the patent were invalid based on the on-sale bar, 35

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U.S.C. § 102(b).

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had been the subject of a commercial offer for sale in March and

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April 1992 and that they were reduced to practice in a

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demonstration program, referred to as AMP Navigator, by April

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1992.

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judgment of invalidity to the Federal Circuit.

There, PartsRiver, the

eBay and Microsoft counterclaimed for judgment of
The Court held that claims two

In so holding, the Court found that those claims

On September 18, 2009, PartsRiver appealed the Court’s

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While litigation before this Court was ongoing in the

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Partsriver case, the U.S. Patent and Trademark Office (PTO) was

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conducting an ex parte reexamination of claims one and two.

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There, the patent examiner initially rejected claims one and two

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as being clearly anticipated by prior art.

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reconsideration of this conclusion, arguing the prior art did not

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teach the subject matter contained in claim one.

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examiner dismissed PartsRiver’s arguments, concluding that
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PartsRiver sought

The patent

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PartsRiver relied on features that did not appear in the language

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of the claims subject to reexamination.

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2009, PartsRiver appealed the patent examiner’s final rejection to

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the Board of Patent Appeals and Interferences (BPAI).

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On or about September 18,

During the pendency of its appeals to the Federal Circuit and

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the BPAI, PartsRiver proposed amending claim one and adding a

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ninth claim to the ’821 patent.

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one necessarily changed dependent claim two.

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deemed claim one, as amended, and new claim nine to be patentable.

PartsRiver’s amendments to claim
The patent examiner

United States District Court
For the Northern District of California

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Claims three and four were not re-examined.

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PartsRiver’s BPAI appeal was dismissed.

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certificate for the ’821 patent issued on November 2, 2010,

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PartsRiver filed a motion to dismiss its appeal of this Court’s

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judgment, which the Federal Circuit granted.

Thereafter,

After a reexamination

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In these related cases, Kelora, to whom Partsriver had

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transferred ownership of the ‘821 patent, and Defendants have

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filed various complaints and counter-complaints against each

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other, with Defendants seeking declarations of non-infringement,

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invalidity and/or intervening rights and Kelora alleging that

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Defendants have infringed the re-examined ’821 patent.

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asserts against Defendants two independent claims, claims one and

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nine, and three dependent claims, claims two through four.

Kelora

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Claims one through four of the re-examined patent ’821 are as

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follows, with additions to, and deletions from, the original claim

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one indicated in underlined text and brackets respectively:

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1.
A method for assisting a user in identifying a
subfamily of items within a family of items said method
performed with a server connected to a client computer
through a computer network, comprising the steps of:
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(a) providing a computer readable data file of
stored information representing at least one family of
items, said data file identifying at least one
alternative for each item,
(b)

reading said data file,

(c) displaying a feature screen indicating said
alternatives represented in the family,

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(d) accepting a first selection criteria of at
least one alternative,

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(e) determining a first subfamily of items wherein
each said item in the first subfamily satisfies said
first selection criteria,

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United States District Court
For the Northern District of California

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(f) determining available alternatives represented
in the first subfamily,

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(g) revising said feature screen to indicate the
available alternatives of the first subfamily,

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(h) accepting a second selection criteria
[comprising] from the client computer via said computer
network at said server wherein the second selection
criteria comprises a resubmission to the server of the
alternative or alternatives of the first selection
criteria plus at least one alternative selected from the
revised feature screen,

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(i) determining a second subfamily of items of the
family wherein each item in the second subfamily
satisfies said second selection criteria,
(j) determining available alternatives represented
in the second subfamily, and

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(k) revising said feature screen to indicate the
available alternatives of the second subfamily.

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2.
The method of claim 1 wherein each family has at
least one feature associated therewith and further
comprising the step of displaying at least one grouping
wherein each said grouping comprises one of said
features visually related to respective alternatives.

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3.
The method according to claim 2 and further
comprising the step of: providing an interactive pointer
and displaying information specific to one of said
features upon a user initiated signal when said pointer
is pointing to a feature caption on said feature screen.
4.
The method according to claim 2 wherein at least
one said grouping is hidden from view if all said
respective alternatives are not available.
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Mot., Ex. 2, at 20:5-20, and Ex. 3, at 1:26-2:7.

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claim nine reads as follows,

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United States District Court
For the Northern District of California

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The text of new

9.
A method for assisting a user in identifying a
subfamily of items within a family of items, the method
comprising the following steps which are performed with
a server connected to a computer network:
(a) providing a computer readable data file of
stored information representing at least one family of
items, said data file identifying at least one
alternative for each item,
(b)

reading said data file,

(c) displaying a feature screen indicating said
alternatives represented in the family, wherein data is
output to a client computer via said computer network,
(d) receiving and accepting a first selection
criteria of at least one alternative from said client
computer, said first selection criteria being received
by said server from said client computer via said
computer network,
(e) determining a first subfamily of items wherein
each said item in the first subfamily satisfies said
first selection criteria,
(f) determining available alternatives represented
in the first subfamily,
(g) revising said data for said feature screen to
indicate the available alternatives of the first
subfamily and outputting said revised data for said
feature screen to said client computer via said computer
network,
(h) receiving and accepting a second selection
criteria from the client computer via said computer
network at said server wherein the second selection
criteria comprises (1) a resubmission by the client
computer of the alternative or alternatives of the first
selection criteria along with (2) at least one
alternative selected from the revised feature screen,
(i) determining a second subfamily of items of the
family wherein each item in the second subfamily
satisfies said second criteria,
(j) determining available alternatives represented
in the second subfamily, and

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(k) revising said data for said feature screen to
indicate the available alternatives of the second
subfamily and outputting said revised data for said
feature screen to said client computer via said computer
network.

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Mot., Ex. 3, at 2:8-50.
Defendants now move for summary judgment of non-infringement

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and invalidity of the ’821 patent based on obviousness and
broadening during re-examination.1
DISCUSSION

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United States District Court
For the Northern District of California

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I.

Claim Construction
A.

Legal Standard

The construction of a patent is a matter of law for the
Court.
(1996).

Markman v. Westview Instruments, Inc., 517 U.S. 370, 372
“It is a ‘bedrock principle’ of patent law that 'the

claims of a patent define the invention to which the patentee is
entitled the right to exclude.’”

Phillips v. AWH Corp., 415 F.3d

1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)).

Accordingly, in construing disputed terms, the

Court first looks to the words of the claims.

Vitronics Corp. v.

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

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After the hearing on claim construction and Defendants’
motion for summary judgment, the Court invited the parties to
submit supplemental briefs and additional expert reports on a
limited issue. Defendants argue that, in its supplemental brief
and expert reports, Kelora has included arguments and evidence
that go far beyond the subject matter that the Court gave it leave
to address, and requests that the Court decline to consider this
information. The Court has reviewed Kelora’s supplemental
submissions and finds that they do exceed the scope of the Court’s
prior order. However, the Court OVERRULES Defendants’ objection
as moot, because the Court has considered the arguments and
evidence that exceed the scope and has found that they do not
change the result of this Order.
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Generally, the Court ascribes the words of a claim their ordinary

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and customary meaning.

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“the ordinary and customary meaning of a claim term is the meaning

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that the term would have to a person of ordinary skill in the art

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in question at the time of the invention, i.e., as of the

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effective filing date of the patent application.”

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F.3d at 1313.

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assist in determining the meaning of a claim term.

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“Because claim terms are normally used consistently throughout the

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United States District Court
For the Northern District of California

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patent, the usage of a term in one claim can often illuminate the

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meaning of the same term in other claims.”

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Id.

The Federal Circuit instructs that

Phillips, 415

Other claims of the patent in question can also
Id. at 1314.

Id.

The Federal Circuit also instructs that claims “must be read

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in view of the specification, of which they are a part.”

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1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967,

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979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996)).

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specification must contain a description of the invention that is

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clear and complete enough to enable those of ordinary skill in the

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art to make and use it, and thus the specification is “always

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highly relevant” to the Court's claim construction analysis.

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Vitronics, 90 F.3d at 1582.

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dispositive; it is the single best guide to the meaning of a

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disputed term.”

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that the patentee has given a special definition to a claim term

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that differs from its ordinary meaning; in such cases, “the

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inventor’s lexicography controls.”

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The specification also may reveal the patentee’s intentional

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disclaimer or disavowal of claim scope.

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well, the inventor has dictated the correct claim scope, and the

Id.

Id. at

The

“Usually, [the specification] is

In some cases, the specification may reveal

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Phillips, 415 F.3d at 1316.

“In that instance as

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inventor’s intention, as expressed in the specification, is

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regarded as dispositive.”

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the preferred embodiment described in the specification.

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Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed.

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Cir. 1985) (en banc, plurality opinion).

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Id.

However, claims are not limited to
See SRI

In addition to reviewing the specification, the Court

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considers the patent’s prosecution history.

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980.

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often inform the meaning of the claim language by demonstrating

Markman, 52 F.3d at

The prosecution history is intrinsic evidence that “can

United States District Court
For the Northern District of California

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how the inventor understood the invention and whether the inventor

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limited the invention in the course of prosecution, making the

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claim scope narrower than it would otherwise be.”

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F.3d at 1317 (citing Vitronics, 90 F.3d at 1582-83); see also

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Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005)

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(“The purpose of consulting the prosecution history in construing

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a claim is to exclude any interpretation that was disclaimed

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during prosecution.”) (internal quotations omitted).

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Court may find that the inventor “disclaimed protection during

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prosecution only if the allegedly disclaiming statements

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constitute ‘a clear and unmistakable surrender of subject

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matter.’”

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Cir. 2009) (quoting Bayer AG v. Elan Pharm. Research Corp., 212

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F.3d 1241, 1251 (Fed. Cir. 2000)).

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Phillips, 415

However, the

Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1342 (Fed.

While emphasizing the importance of intrinsic evidence in

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claim construction, the Federal Circuit has authorized courts to

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rely on extrinsic evidence, which consists of “all evidence

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external to the patent and prosecution history, including expert

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and inventor testimony, dictionaries, and learned treatises.”
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Phillips, 415 F.3d at 1317 (quoting Markman, 52 F.3d at 980).

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Although extrinsic evidence may be useful to the Court, it is less

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significant than intrinsic evidence in determining the legally

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operative meaning of claim language.

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18; see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858,

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862 (Fed. Cir. 2004).

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to lead to a reliable interpretation of claim language unless

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considered in the context of the intrinsic evidence.

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415 F.3d at 1319.

Phillips, 415 F.3d at 1317-

Furthermore, extrinsic evidence is unlikely

Phillips,

United States District Court
For the Northern District of California

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B.

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The parties dispute the meaning of more than a dozen words or

Discussion

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phrases in claims one through four and nine of the amended patent

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and one in the original claim one.

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appear in other places in the patent as well.

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The disputed terms and phrases

Because the Court grants Defendants’ motion for summary

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judgment, the Court need not construe disputed terms beyond the

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extent necessary for resolution of this motion.

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1.

“User”

In their motion, Defendants argue that the word “user” means

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“a person using a computer.”2

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challenge this construction or propose an alternative.

Mot. at 55.

Kelora does not

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2

Throughout their motion, Defendants cite a table that they
include as Exhibit 1 to their motion. This table has
“[a]dditional evidence in support of Defendants’ proposed
construction[s],” which they do not include or discuss in their
brief “[d]ue to space limitations.” Mot. at 37, n.23. Kelora
challenges the consideration of this table, arguing that
Defendants “merely seek to circumvent the already extended page
limit for Defendants’ brief” by including a table with “arguments
not deemed worthy of discussion in Defendants’ Motion.” Opp. at
60. The Court SUSTAINS Kelora’s objection and declines to
consider Defendants’ Exhibit 1.
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Accordingly, the Court adopts Defendants’ proposed construction

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and construes “user” to mean a “person using a computer.”

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2.

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“Server”

Defendants contend that the word “server” need not be

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construed.

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throughout the claims refers to a “web server.”

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that the word “server” was limited to a “web server” during the

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prosecution history of the ’821 patent to distinguish it from

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prior art.

Kelora states that the word “server” as used
Kelora argues

Defendants reply that Kelora’s proposed construction

United States District Court
For the Northern District of California

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is incorrect, and that the cited pages from the prosecution

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history do not constitute a “clear and unmistakable waiver of

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subject matter.”

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The portions of the prosecution history cited by Kelora do

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not constitute a clear and unmistakeable waiver of subject matter.

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Kelora relies on a response sent by the patentee to the

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Commissioner for Patents, requesting reconsideration of the

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rejection of the original claims one and two.

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Defendants, the claims addressed at the time did not include the

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words “server,” and the letter did not propose any amendments to

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the claims.

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patentee used the word “webserver” in paragraphs that were

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intended to provide an example of how the patented method

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addressed a problem that servers faced.

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concrete example may be helpful here.

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.”).

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with no qualification, as the more general term.

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typical client server applications, the server establishes a

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separate session with each user . . .”).

Reexam. Ex. 5, at 2-5.

As noted by

In the discussion, the

See id. at 10 (“A

Assume a webserver

. .

In fact, the surrounding sentences use the word “server,”

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See id. (“In

There is no language

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that provides a clear and unmistakable waiver of subject matter

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related to any server that is not a web server.

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Accordingly, the Court declines to construe the word server
to be limited to a web server.

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3.

“With a server”

Kelora argues in an indirect manner that the phrase “with a

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server” should be construed to mean “by a server.”

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that the use of this phrase in the preamble means that all of the

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steps in claims one and nine require no action by any entity other

Kelora states

United States District Court
For the Northern District of California

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than a server, specifically, no action by a client computer, and

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that the “server performs each step.”

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Defendants respond that this construction is incorrect, because

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the plain terms of the preamble allow some of the steps to be

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performed by a client computer as long as it is connected with the

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server when the step is performed.

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See Opp. at 47, 48.

As Defendants point out, this Court has already found that

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the steps in the claims do require some action by a client

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computer.

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in step (h) of amended claim one and claim nine, tasks are divided

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between the client computer and the server, and that “the client

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computer combines ‘the alternative or alternatives of the first

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selection criteria plus at least one alternative selected from the

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revised feature screen,’ which, together, constitute the ‘second

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selection criteria.’”

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Plaintiffs’ Motion for Summary Judgment and Consolidating Cases,

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Docket No. 70 in Case No. 10-4947, at 7-8.

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In the Order of May 9, 2011, the Court recognized that,

Order Granting in Part and Denying in Part

Further, the clear terms of the specification support
Defendants’ interpretation.

The specification describes, for
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example, that the client computer, and not the server, performs

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the step of “displaying.”

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See below, section I.B.4, “Displaying.”

Accordingly, the Court declines to construe the phrase “with

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a server” to mean “by a server.”

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construed.

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4.

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The phrase need not be

“Displaying”

Defendants propose that the word “displaying” should be

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construed as “showing on the display device of the user’s

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computer.”

Kelora contends that the word should be construed as

United States District Court
For the Northern District of California

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“the action of sending a page to a display surface or device for

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viewing.”

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Defendants’ proposed construction is more consistent with the

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claim language.

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from step (c) of claim one, which did not change during

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re-examination, only by the addition of “wherein data is output to

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a client computer via said computer network.”

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this clause means that “displaying” must include the concept of

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outputting.

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this already, the additional phrase in claim nine would be

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superfluous, and step (c) in each claim would have the same

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meaning.

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meaning to all terms of the claim is preferred over one that does

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not.”

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(Fed. Cir. 2005).

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additional phrase meaningful and allows step (c) to be

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differentiated between the two claims.

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Step (c) of the newly added claim nine differs

Kelora argues that

However, if “displaying” were construed to include

Both parties point out, “A claim construction that gives

Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372
Defendants’ proposed construction renders this

Kelora also argues that Defendants’ construction disregards
language from the preamble of claims one and nine, which states
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that the steps are “performed with a server connected [. . .] to a

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computer network.”

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the steps are all performed by the server.

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specification makes clear that the display step is performed by “a

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client,” in conjunction with a server sending data to the client,

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and not by the server alone.

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However, the preamble does not specify that
Instead, the

In arguing that “displaying” is defined in part as “sending,”

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Kelora states that “the specification describes the act of

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‘displaying’ by the server in the Internet embodiments,” and “that

United States District Court
For the Northern District of California

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the client then merely reflects what the server sends it.”

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at 50 (citing Mot., Ex. 2, 18:48-54, 61-63).

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inaccurately describes the contents of the specification.

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Instead, the specification clearly distinguishes between “sending”

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and “displaying,” and states that the server computer performs the

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former and the client computer performs the latter.

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18:49, 61-63 (“the server sends a feature screen status . . . The

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client receives the feature screen status and displays the feature

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screen accordingly.”).

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non-interchangeable manner, and the division of roles is

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reiterated, elsewhere in the specification.

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(“The server sends the feature screen status . . . to the client.

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The client receives the feature screen status and displays the

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updated feature screen.”).

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that the client refers to the user’s computer.

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18:12-13 (distinguishing between the server computer and the

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client computer); 18:45 (“a user on the client”); 18:64 (“The user

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on the client”).

Opp.

However, this

See Ex. 2,

These two words are consistently used in a

See id. at 19:6-10

The specification also makes clear
See, e.g., id. at

Thus, Kelora’s proposed construction is not

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consistent with the language of the specification, while

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Defendants’ proposal is.

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Defendants’ proposed construction is also consistent with the

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prosecution history of the ’821 patent.

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that, during the re-examination process, the patentees proposed a

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new claim one in which the step of “displaying” was replaced with

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a step of “outputting data for a feature screen.”

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(citing ’821 Reexam., Ex. 8 at 5).

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“displaying” language in the final amendment, which demonstrates

Defendants point out

Mot. at 48

They later reverted to the

United States District Court
For the Northern District of California

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that the patentees deliberately chose not to use the word

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“outputting.”

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addition of the phrase “wherein data is output to” supports its

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construction, which is unavailing for the reasons addressed above.

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Id.

In response, Kelora argues only that the

Finally, the inventor testimony offered is also consistent

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with Defendants’ position that “displaying” refers to the browser

16

“showing,” as distinguished from the server “sending.”

17

at 51 (quoting deposition testimony of inventor Sherif Danish that

18

“it is a function of the server to determine what is this feature

19

screen and send it to the browser, and the browser will interpret

20

it and visualize it for the user” and “the browser can only

21

display what it receives”); Mot. at 48 (inventor Mr. Danish

22

agreeing that “the browser process[es] HTML code that it receives

23

from the server,” formats it, and then “displays it on the

24

screen,” and that “the display is . . . a display that happens on

25

the user of the--on the browser of the client”).

26
27

See Opp.

Thus, the Court construes the word “displaying” to mean
“showing on the display device of the user’s computer.”

28
15

1
2

5.

“Resubmission”

Kelora contends that the phrase “resubmission to the server,”

3

which appears in claim one and nine, does not need to be

4

construed.

5

construed in claim one, but not in claim nine, where it is

6

followed by the phrase “by said client computer.”

7

propose that the phrase in claim one should be construed as

8

“resubmission by said client computer to the server.”

9

responds with two arguments: that Defendants’ construction

Defendants argue that this phrase does need to be

Defendants

Kelora

United States District Court
For the Northern District of California

10

improperly changes a noun to a verb requiring action, and that

11

requiring this action to be done by the client computer violates

12

the limitation of the preamble that the steps are to be “performed

13

with a server.”

14

First, Kelora’s argument that Defendants’ construction

15

improperly changes a noun to a verb is unpersuasive.

16

correct that the word “resubmission” is a noun; however, contrary

17

to Kelora’s contentions, nouns can describe actions and not all

18

words that describe actions are verbs.

19

New International Dictionary 1545 (Philip Babcok Gove ed., 1993)

20

(defining a noun as “a word that is the name of a subject of

21

discourse (as a person, animal, plant, place, thing, substance,

22

quality, idea, action, or state)”); Merriam-Webster Dictionary

23

(May 18, 2012, 2:04 p.m.), http://www.merriam-

24

webster.com/dictionary/noun (defining a noun as “any member of a

25

class of words that typically can be combined with determiners to

26

serve as the subject of a verb, can be interpreted as singular or

27

plural, can be replaced with a pronoun, and refer to an entity,

28

quality, state, action, or concept”).
16

Kelora is

See, e.g., Webster’s Third

Resubmission is such a

1

noun.

2

1937 (“resubmission” is a noun defined as “an act of

3

resubmitting”).

See Webster’s Third New International Dictionary, above, at

4

As Defendants point out, the plain text of the claim and the

5

specification demonstrate that the resubmission is something that

6

the client computer sends to the server.

7

step of “accepting a second selection criteria from said client

8

computer . . . wherein the second selection criteria comprises a

9

resubmission to the server . . .”

The claim describes a

Mot., Ex. 3 at 1:46-50.

The

United States District Court
For the Northern District of California

10

specification explains that the user on the client computer “makes

11

selections,” and the client computer “initiates a search with the

12

modified selection criteria” and “sends to the server, the

13

ScreenNum value . . . and the modified selection criteria.”

14

Ex. 3 at 18:64-19:2.

15

and “executes the search operation.”

16

resubmission is sent from the client computer to the server is

17

also supported by the re-examination history: when allowing the

18

re-examined claims, the Examiner stated that “when the client

19

computer of claims 1 or 9 submits a second query, it transmits

20

both the previous and current selection criteria together.”

21

Reexam., Ex. 16 at 3.

Mot.,

In turn, the “server receives” these items
Id. at 19:3-5.

That the

’821

22

Kelora responds that this construction would “render

23

superfluous” the limitation in the preamble that the steps are

24

performed “with a server.”

25

actions between the server and client computer does not render

26

“with a server” superfluous; the client computer must send the

27

resubmission to the server, as is evident from the claims

28

themselves.

Opp. at 12.

17

However, allocating

1

Accordingly, the Court construes the phrase “resubmission to

2

the server” to mean “resubmission by said client computer to the

3

server.”

4 II.

Motion for Summary Judgment

5

A.

6

Summary judgment is properly granted when no genuine and

Legal Standard

7

disputed issues of material fact remain, and when, viewing the

8

evidence most favorably to the non-moving party, the movant is

9

clearly entitled to prevail as a matter of law.

Federal Rule

United States District Court
For the Northern District of California

10

Civil Procedure 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23

11

(1986); Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89

12

(9th Cir. 1987).

13

The moving party bears the burden of showing that there is no

14

material factual dispute.

15

true the opposing party’s evidence, if supported by affidavits or

16

other evidentiary material.

17

815 F.2d at 1289.

18

in favor of the party against whom summary judgment is sought.

19

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,

20

587 (1986); Intel Corp. v. Hartford Accident & Indem. Co., 952

21

F.2d 1551, 1558 (9th Cir. 1991).

22

Therefore, the court must regard as

Celotex, 477 U.S. at 324; Eisenberg,

The court must draw all reasonable inferences

Material facts which would preclude entry of summary judgment

23

are those which, under applicable substantive law, may affect the

24

outcome of the case.

The substantive law will identify which

25

facts are material.

Anderson v. Liberty Lobby, Inc., 477 U.S.

26

242, 248 (1986).

27
28
18

1

Where the moving party does not bear the burden of proof on

2

an issue at trial, the moving party may discharge its burden of

3

production by either of two methods:

4

7

The moving party may produce evidence negating
an essential element of the nonmoving party’s
case, or, after suitable discovery, the moving
party may show that the nonmoving party does not
have enough evidence of an essential element of
its claim or defense to carry its ultimate
burden of persuasion at trial.

8

Nissan Fire & Marine Ins. Co., Ltd., v. Fritz Cos., Inc., 210 F.3d

9

1099, 1106 (9th Cir. 2000).

5
6

United States District Court
For the Northern District of California

10

If the moving party discharges its burden by showing an

11

absence of evidence to support an essential element of a claim or

12

defense, it is not required to produce evidence showing the

13

absence of a material fact on such issues, or to support its

14

motion with evidence negating the non-moving party’s claim.

15

see also Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 885 (1990);

16

Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir. 1991).

17

the moving party shows an absence of evidence to support the non-

18

moving party’s case, the burden then shifts to the non-moving

19

party to produce “specific evidence, through affidavits or

20

admissible discovery material, to show that the dispute exists.”

21

Bhan, 929 F.2d at 1409.

22

Id.;

If

If the moving party discharges its burden by negating an

23

essential element of the non-moving party’s claim or defense, it

24

must produce affirmative evidence of such negation.

25

F.3d at 1105.

26

burden then shifts to the non-moving party to produce specific

27

evidence to show that a dispute of material fact exists.

Nissan, 210

If the moving party produces such evidence, the

28
19

Id.

1

If the moving party does not meet its initial burden of

2

production by either method, the non-moving party is under no

3

obligation to offer any evidence in support of its opposition.

4

Id.

5

ultimate burden of persuasion at trial.

6

This is true even though the non-moving party bears the
Id. at 1107.

Where the moving party bears the burden of proof on an issue

7

at trial, it must, in order to discharge its burden of showing

8

that no genuine issue of material fact remains, make a prima facie

9

showing in support of its position on that issue.

UA Local 343 v.

United States District Court
For the Northern District of California

10

Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir. 1994).

11

is, the moving party must present evidence that, if uncontroverted

12

at trial, would entitle it to prevail on that issue.

13

also Int’l Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1264-

14

65 (5th Cir. 1991).

15

must set forth specific facts controverting the moving party’s

16

prima facie case.

17

party’s “burden of contradicting [the moving party’s] evidence is

18

not negligible.”

19

because resolution of the relevant issue is “highly fact

20

specific.”

That

Id.; see

Once it has done so, the non-moving party

UA Local 343, 48 F.3d at 1471.

Id.

The non-moving

This standard does not change merely

Id.

21

B.

22

Under 35 U.S.C. § 103(a), a patent is invalid “if the

23

differences between the subject matter sought to be patented and

24

the prior art are such that the subject matter as a whole would

25

have been obvious at the time the invention was made to a person

26

having ordinary skill in the art to which said subject matter

27

pertains.”

28

the predictable use of prior art elements according to their

Summary Judgment of Invalidity due to Obviousness

To avoid being obvious, a patent must be “more than

20

1

established functions.”

2

398, 417 (2007).

3

considered as a whole and the claims must be considered in their

4

entirety.”

5

(Fed. Cir. 1998).

6

KSR Int’l Co. v. Teleflex Inc., 550 U.S.

To determine obviousness, “the invention must be

Kahn v. General Motors Corp., 135 F.3d 1472, 1479

“Although the ultimate determination of obviousness under

7

§ 103 is a question of law, it is based on several underlying

8

factual findings, including (1) the scope and content of the prior

9

art; (2) the level of ordinary skill in the pertinent art; (3) the

United States District Court
For the Northern District of California

10

differences between the claimed invention and the prior art; and

11

(4) evidence of secondary factors, such as commercial success,

12

long-felt need, and the failure of others.”

13

Inc. v. Becton, 653 F.3d 1296, 1310 (Fed. Cir. 2011) (citing

14

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

15

the content of the prior art, the scope of the patent claim, and

16

the level of ordinary skill in the art are not in material

17

dispute, and the obviousness of the claim is apparent in light of

18

these factors, summary judgment is appropriate.”

19

427.

20

Retractable Techs.,

“Where . . .

KSR, 550 U.S. at

The Court is not required to accept blindly conclusory

21

assertions made by the parties’ experts.

22

Court rejected the approach that the patentee can necessarily

23

create a material question of fact by proffering a conclusory

24

expert affidavit.

25

court understood the Graham approach to exclude the possibility of

26

summary judgment when an expert provides a conclusory affidavit

27

addressing the question of obviousness, it misunderstood the role

28

expert testimony plays in the analysis.”).

In KSR, the Supreme

See 127 S. Ct. at 1745 (“To the extent the

21

Thus, when considering

1

summary judgment on the question of obviousness, “the district

2

court can and should take into account expert testimony, which may

3

resolve or keep open certain questions of fact,” but expert

4

testimony is not the end of discussion, because “[t]he ultimate

5

judgment of obviousness is a legal determination.”

6

Id.

Defendants contend that the re-examined ’821 patent is
obvious, based on a combination of the AMP Navigator program,

8

which this Court found was prior art for the original ’821 patent,

9

with other prior art.

10
United States District Court
For the Northern District of California

7

1.

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

The hypothetical person of ordinary skill in the
art

The parties agree that “a low level of skill in the art” is
the appropriate standard to use.

While Defendants define this as

“a person with a moderate level of computer science experience
acquired through either formal or informal training,” Mot. at 29,
n.18, Kelora defines it as someone with “2-3 years of experience
or education with computer programming and familiarity with
standards that had been established at the time,” Opp. at 20.

The

difference between these two definitions, if any, is not material
to the resolution of this motion.

Thus, the Court adopts Kelora’s

proposed definition for the purposes of this order.
In its supplemental opposition, Kelora refers to anecdotal
evidence from one of its experts about her first-hand experience
reviewing solutions generated by computer science and engineering
students in response to an assignment to adapt a computer
application with search capability to a networked application.
Kelora argues that, because none of these students adapted the
application to the Web or to use resubmission, such steps were not
22

1

obvious to a person of ordinary skill in the art.

2

expert also refers to the fact that the inventors themselves were

3

unfamiliar with web servers until the second quarter of 1994 and

4

could not have adapted the invention to the Web before that time.

5

However, this evidence is not determinative.

6

obviousness is determined entirely with reference to a

7

hypothetical ‘person having ordinary skill in the art.’”

8

Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).

9

Thus, the actual skills displayed or solutions derived by any

Kelora’s other

“The issue of

Std. Oil

United States District Court
For the Northern District of California

10

particular person or people are irrelevant to the inquiry.

11

e.g., id. (stating that, because the focus is on a hypothetical

12

person, the “actual inventor’s skill is irrelevant to the

13

inquiry”).

14

in the art, the fact that the students did not choose to go beyond

15

the basic requirements of a school assignment to adapt their

16

applications to the Web or use resubmission does not establish or

17

suggest that they lacked the skills to do so with the appropriate

18

motivation.

19

had access to all prior art references at the time, or that they

20

viewed the collective teachings of the prior art “as a whole,” as

21

is presumed of the hypothetical person of ordinary skill.

22

Std. Oil, 774 F.2d at 454; In re Gorman, 933 F.2d 982, 986 (Fed.

23

Cir. 1991).

24
25

See,

Further, even if the students were of ordinary skill

2.

Similarly, there is no showing that these students

See

The scope and content of the prior art

Prior art refers to “knowledge that is available, including

26

what would be obvious from it, at a given time, to a person of

27

ordinary skill in an art.”

28

Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984).

Kimberly-Clark Corp. v. Johnson &

23

Under section 103,

1

the relevant content for the obviousness analysis is what was in

2

the prior art “at the time of the invention was made.”

3

§ 103.

4
5

a.

35 U.S.C.

The time of invention

For consideration of obviousness, the relevant prior “art

6

must have existed as of the date of invention, presumed to be the

7

filing date of the application until an earlier date is proved.”

8

Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443,

9

449 (Fed. Cir. 1986).

See also 35 U.S.C. § 103(a) (stating that

United States District Court
For the Northern District of California

10

the relevant consideration is what “would have been obvious at the

11

time the invention was made”).

12

the relevant application filing date was August 14, 1994.

13

e.g., Mot. at 19 n.6; Opp. at 22.

14

The parties do not dispute that
See,

See also Defs.’ Exs. 2, 6.

Kelora, however, argues that there is a material dispute of

15

fact as to whether the date of invention was during or before the

16

second quarter of 1994.

17

cites its interrogatory responses, in which it states that the

18

inventors, Kris Kimbrough and Mr. Danish, conceived of the

19

Internet embodiment after taking a class on web servers that Mr.

20

Danish learned of through a listserve that he joined in or before

21

April 1994, and that the only witnesses to the conception were the

22

two inventors.

23

Decl. ¶ 1 (Mr. Danish is a managing member of Kelora).

24

basis, Kelora argues that, because one of the claimed pieces of

25

prior art, a message posted to the WWW-Talk listserve by Nick

See Opp. at 22, 24.

In support, Kelora

Id. (citing Mot., Ex. 15, at 5-6); see also Danish

26
27
28
24

On that

1

Arnett,3 bears the date of May 16, 1994, there is a genuine issue

2

of material fact as to whether the Arnett prior art was known to

3

others or publicly available as a printed publication before the

4

date of invention.

5

Id.

However, inventor testimony alone is insufficient to

6

establish a conception date.

7

party seeks to prove conception via the oral testimony of a

8

putative inventor, the party must proffer evidence corroborating

9

that testimony.”

“It is well established that when a

P&G v. Teva Pharms. USA, Inc., 566 F.3d 989, 999

United States District Court
For the Northern District of California

10

(Fed. Cir. 2009) (quoting Shu-Hui Chen v. Bouchard, 347 F.3d 1299,

11

1309 (Fed. Cir. 2003)).

12

Micro Int’l Ltd., 2010 U.S. Dist. LEXIS 13106, at *27 (N.D. Cal.)

13

(“in addition to providing the testimony of the inventor, whose

14

credibility can be judged by a jury, a patentee must offer

15

independent corroborating evidence to establish a priority date

16

earlier than the application filing date”).

17

consist of testimony of a witness, other than an inventor, to the

18

actual reduction to practice or it may consist of evidence of

19

surrounding facts and circumstances independent of information

20

received from the inventor.’”

See also Monolithic Power Sys. v. O2

“Such evidence ‘may

Hahn v. Wong, 892 F.2d 1028, 1032-

21
22
23
3

24
25
26
27
28

Kelora objects to paragraphs four through ten of the
declaration of Nick Arnett as hearsay and without foundation.
Kelora does not object to the admissibility of Exhibit A to the
declaration, which contains the message posted by Mr. Arnett. Mr.
Arnett attests that the statements in the declaration are based on
his personal knowledge; many of the statements within the
challenged paragraphs describe his own activities, including
comments that he made and messages that he received. Thus, to
extent that the Court relies upon the Arnett declaration, Kelora’s
objection is OVERRULED.
25

1

1033 (Fed. Cir. 1989) (quoting Reese v. Hurst, 661 F.2d 1222, 1225

2

(C.C.P.A. 1981)) (emphasis added).

3

Kelora has pointed only to the inventors’ own statements to

4

establish a conception date earlier than the application filing

5

date, which is insufficient to support that finding as a matter of

6

law.

7

conception date is October 14, 1994, the application filing date

8

of the ’444 patent, or that Arnett is prior art.

9

United States District Court
For the Northern District of California

10

Therefore, there is no material dispute of facts that

b.

AMP Navigator as prior art

Kelora also contests Defendants’ use of the AMP Navigator

11

demonstration program as prior art.

12

make no showing that the AMP Navigator program represents an on-

13

sale bar to the re-examined claims or that it anticipates the re-

14

examined claims by itself.

15

claims one and two of the original ’821 patent were invalid “due

16

to the on-sale bar because they were the subject of a commercial

17

offer for sale of an invention that was reduced to practice before

18

October 14, 1993.”

19

Dist. LEXIS 74433 (N.D. Cal.).

20

one and two of the original ’821 patent were in fact valid or

21

dispute Defendants’ argument that it would be barred from doing so

22

as the successor-in-interest to PartsRiver, Inc.

23

Kelora argues that Defendants

This Court has already found that

PartsRiver, Inc. v. Shopzilla, Inc., 2009 U.S.
Kelora does not argue that claims

The Federal Circuit has clearly stated, “Prior art under the

24

§ 102(b) on-sale bar is also prior art for the purposes of

25

obviousness under § 103.”

26

1337, 1344 (Fed. Cir. 2007).

27

Pharms., Inc., 336 F.3d 1322, 1327 (Fed. Cir. 2003).

28

argues that this is improper “bootstrapping” on the prior finding

Dippin’ Dots, Inc. v. Mosey, 476 F.3d
See also TorPharm Inc. v. Ranbaxy

26

While Kelora

1

of invalidity, the courts have repeatedly recognized that “Section

2

102(b) may create a bar to patentability . . . in conjunction with

3

[§ 103], if the claimed invention would have been obvious from the

4

on-sale device in conjunction with the prior art.”

5

v. United States ITC, 958 F.2d 1066, 1071 (Fed. Cir. 1992).

6

also TorPharm, 336 F.3d at 1327-1328 (describing “the § 102(b)/103

7

bar”); Pfaff v. Wells Elecs., 124 F.3d 1429, 1436 (Fed. Cir.

8

1997), aff’d 525 U.S. 55 (1998) (same).

9

LaBounty Mfg.
See

Kelora contends that “the law does not permit the AMP

United States District Court
For the Northern District of California

10

Navigator to be combined with other art that is created after the

11

offer for sale . . . to show obviousness.”

12

(emphasis omitted).

13

support of the proposition that the Court should ignore the clear

14

statutory language of § 103(a) that the prior art relevant to

15

obviousness is that which existed “at the time the invention was

16

made.”

17

consists of those sources that are otherwise “prior art for

18

purposes of Section 103 . . . plus those sources enumerated in

19

Section 102(b) with effective dates more than one year before the

20

applicant’s filing date.”

21

§ 5.03[2][b], at 5-133-134 (2012) (emphasis in original).

22

also Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 2010 U.S.

23

Dist. LEXIS 56752, at *10-11 (E.D. Mich.).

24

Sur-reply at 4

However, Kelora cites no legal authority in

For the purposes of obviousness, the relevant prior art

2 Donald S. Chisum, Chisum on Patents
See

In opposing Defendants’ obviousness arguments, Kelora focuses

25

on the source code of the AMP Navigator demonstration program and

26

argues that a person of ordinary skill in the art would not have

27

been able to transform that source code into a client server

28

arrangement.

However, these arguments are irrelevant.
27

The prior

1

invalidity finding placed the claimed features that were the

2

subject of the offer for sale--claims one and two of the original

3

’821 patent--into the prior art for the obviousness inquiry, along

4

with the specific reduction-to-practice and unclaimed limitations

5

that were contained in the AMP Navigator demonstration program.

6

See Pfaff v. Wells Elecs., 525 U.S. 55, 60 (1998) (stating that,

7

in summarizing the lower court’s obviousness inquiry, “[g]iven the

8

[lower] court’s § 102(b) holding, the prior art included [the

9

patent’s] first four claims”).

See also Lockwood v. American

United States District Court
For the Northern District of California

10

Airlines, 107 F.3d 1565, 1570 (Fed. Cir. 1997) (“it is the claims

11

that define a patented invention. . . . [the] public use of the

12

high-level aspects of the SABRE system was enough to place the

13

claimed features of the ’359 patent in the public’s possession”).

14

This Court has already determined that the AMP Navigator

15

demonstration program constituted a reduction to practice of the

16

original claims and thus that all elements of the local embodiment

17

of the original claims were obvious.

18

to re-litigate each of these, as Kelora urges, and AMP Navigator

19

is prior art citable against the patent claims for obviousness

20

purposes.

21

the current claims by showing that they would have been obvious

22

from the combination of AMP Navigator, including the concept of

23

parametric search, with other prior art, including the Arnett and

24

Suzuki prior art.

Defendants are not required

Accordingly, Defendants may prove the obviousness of

25

Defendants contend that the only differences between the

26

original and re-examined claims are the requirement of the client-

27

server arrangement and the resubmission requirement for iterative

28

searching, and that each of these elements was taught in the prior
28

1

art.

2

expert witness, Mr. Gafford, also identifies these as the two

3

specific items that the AMP Navigator prior art does not teach,

4

and which are contained in the re-examined ’821 patent.

5

Gafford Decl. ¶¶ 34-39.

6

same).

See Mot. at 17; Reply at 9-10.

7
8
9

c.

In his declaration, Kelora’s

See

See also Sur-reply at 3 (recognizing the

Client-server arrangements

Defendants argue that client-server arrangements were
well-known and obvious, and rely on a number of prior art examples

United States District Court
For the Northern District of California

10

to demonstrate this.

11

server” system is not taught in the prior art, but does not

12

dispute that a “client-server” system was taught.

13

Kelora responds primarily that a client-“web

Kelora argues that the AMP Navigator prior art “teaches away”

14

from a web server arrangement, because the code for the AMP

15

Navigator demonstration program does not have this functionality

16

itself and cannot be altered to include it.

17

and Mr. Gafford do not dispute that the Suzuki4 reference and AMP

18

Navigator together teach the combination of the local search

19

process contained in the original claim one with the use of a

20

database on a remote server, even though Suzuki does not use the

Nonetheless, Kelora

21
22
4

23
24
25
26
27
28

The Suzuki reference is to a patent published by the Japan
Patent Office on January 5, 1989, entitled “File Searching
Method.” Leventhal Decl., Ex. 2 at 321. Kelora objects to the
English translation of the reference. The translation is
accompanied by the declaration of Takeo Ohashi, who declares under
penalty of perjury that he has “competent knowledge of the
Japanese and English languages” and that the “translation is an
accurate representation of” the original Japanese patent. Id. at
340. Defendants have laid a proper foundation for the admission
of the translated reference. See 28 U.S.C. § 1746; Federal Rules
of Evidence 604, 702, 901. Accordingly, Kelora’s objection is
OVERRULED.
29

1

words “client” and “server.”

2

Decl. ¶ 43 (recognizing that “combining Suzuki with the AMP

3

Navigator demonstration program would have been expected by a

4

person of ordinary skill in the art as of October 14, 1994, to

5

have resulted, and would have resulted, in a system with the

6

logical model of the AMP Navigator demonstration program, . . .

7

coupled with a remote database”).

8
9

See Opp. at 32; see also Gafford

Further, Defendants offer substantial evidence, uncontested
by Kelora, that such an arrangement was common knowledge in the

United States District Court
For the Northern District of California

10

art prior to the time of invention and would have been obvious to

11

try.

12

examination of the grandparent patent to the patent-in-suit, when

13

the Examiner considered a claim dependent on the claim from which

14

the original claim one is derived and which is nearly identical to

15

the original claim one.

16

7 ¶ 28).

17

which added a client server arrangement, stating that “client

18

server systems are well known in the art and it would have been

19

obvious to one of ordinary skill in the DP art at the time of the

20

applicant’s invention to provide the invention also on a client

21

server system as that would provide a wider range of utilization.”

22

’444 Prosecution, No. 7 ¶ 28.

23

1385, 1390 (C.C.P.A. 1969) (noting that a patent examiner may

24

properly rely on “common knowledge and common sense of the person

25

of ordinary skill in the art” in making conclusions regarding

26

obviousness).

27

irrelevant as to whether one would be motivated to combine the

28

present claim with a client server arrangement, but does not

Defendants cite statements from the Examiner during the

Mot. at 21 (citing ’444 Prosecution, No.

The Examiner rejected as obvious the dependent claim,

See also In re Bozek, 416 F.2d

Kelora responds only that this statement is

30

1

dispute this as evidence that client server systems were well-

2

known in the art prior to the invention of the disputed claims.

3

Opp. at 37.

4

Defendants also offer PC Magazine’s 1993 book, Guide to

5

Client/Server Databases, which explains the concept of client-

6

server database arrangements and various benefits associated with

7

such systems.

8

development of the World Wide Web as an example of a client-server

9

arrangement, which consisted of a server and client-side browser

They also provide references to Tim Berners-Lee’s

United States District Court
For the Northern District of California

10

and which was available in 1992 and earlier.

11

Jason Ng’s GSQL program, which taught the use of remote databases

12

on a web server.

13

references teach client-server arrangements, including client-web

14

server arrangements, Kelora contends only that these references do

15

not teach resubmission.

Defendants also cite

Rather than disputing that these prior art

16

Accordingly, the Court finds that client-server systems were

17

known at the time of invention to people of ordinary skill in the

18

art, were obvious to try and were taught by prior art.

19

d.

Resubmission

20

Similarly, the Court concludes that resubmission of all

21

search terms was a method taught by the prior art to resolve the

22

problem of statelessness.

23

“A ‘stateless’ server does not remember previous requests

24

from a user.”

25

of the server, each request is treated independently and is

26

unrelated to any other.

27

search criteria to a stateless server, the server conducts a

28

search, returns the search results to the user, and then ‘forgets’

Larson II Decl. ¶ 26.

Id.

Thus, from the perspective

“For example, if a user submits

31

1

both the search and the results.”

2

the Web is a stateless protocol.

3

at 1.

4

ordinary skill in the art knew of the Web’s use of stateless

5

servers.

6

Id.

The HTTP protocol used on

See, e.g., Leventhal Decl. Ex. 8

Defendants offer evidence to support that persons of

Larson II Decl. ¶ 35.

Such a design had critical advantages over a stateful server,

7

such as to reduce the amount of disk storage and memory space

8

required and to simplify crash recovery.

9

reexamination of the ’821 patent, the inventors themselves

Id. at ¶ 29.

During the

United States District Court
For the Northern District of California

10

acknowledged disadvantages of stateful servers on the World Wide

11

Web.

12

identify and track individual sessions with each such user in

13

order to know what criteria the user previously searched in

14

earlier search iterations, there is clearly a tremendous overhead

15

load on the webserver to service such individual search

16

sessions.”).

17

See ’821 Reexam. Ex. 5 at 10 (“If the webserver has to

As previously stated, the Arnett reference consists of a

18

message written by Mr. Arnett in May 1994 on the WWW-Talk

19

listserve.

20

for discussion by active implementers of particular systems or

21

protocols.”

22

venues for discussion of WWW implementation issues.”

23

message, Arnett remarks in part,

24
25
26
27
28

“At the time of the invention, listserves were a venue

Larson II Decl.

“WWW-Talk was one of the primary
Id.

In the

I’m working on an application that would take advantage
of this sort of capability, but I don’t think it
requires abandonment of statelessness. My experience so
far tells me that when the user wants to perform
multiple queries and transfers, it’s because they are
somehow related to one another. I’m attacking the
problem by passing parameters, which are kept by the
*browser* and re-sent. I see the need for improvement
of the browsers’ ability to keep track of queries and
32

1

such, based on interaction, rather than a need to change
the servers’ capabilities in that area. . . .

2

At first glance, you’d think that that would require the
server to record the state of the outline, but the
people who’ve done it actually just create a document
that contains a list of parameters describing the
outline’s state, then pass those parameters back to the
server on each subsequent query. . . .

3
4
5

There’s no reason that the subsequent query can’t pass
back to the server a set of parameters that describes
the previous search results, to which new narrowing or
widening parameters can be added.

6
7

Arnett Declaration, Ex. A at 1-2.

9

expert, Dr. Larson, supports that this constitutes resubmission.

10
United States District Court
For the Northern District of California

8

Kelora responds that Arnett does not teach resubmission for

Defendants contend, and their

11

several reasons.

12

different approaches to keeping previous search results, only one

13

of which is resubmission of the original search terms along with

14

the new search terms and that this would not have been the single

15

solution necessarily chosen by a person of ordinary skill in the

16

art.

17

teach away.”

18

Kelora concedes that Arnett discloses that “a client can resend

19

certain parameters,” admitting that Arnett describes a

20

resubmission by a client.

21

“teaches away” from resubmission by a server.

22

This argument is premised on Kelora’s argument for a construction

23

that limits “resubmission” to something that a server does.

24

Because the Court has already declined to adopt this construction,

25

Kelora’s argument is unavailing.

26

Kelora argues that Arnett teaches several

However, “mere disclosure of alternative designs does not
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Kelora asserts instead that Arnett
Sur-reply at 6.

Kelora also contends that there may have been solutions to

27

the problem of statelessness that would not have involved

28

resubmission.

See, e.g., Gafford II Decl. ¶ 15.
33

However, the

1

fact that there are multiple solutions, only one of which was

2

resubmission, does not mean resubmission was not obvious to try.

3

As the Supreme Court recognized in KSR, “When there is a design

4

need or market pressure to solve a problem and if there are a

5

finite number of identified, predictable solutions to a problem, a

6

person of ordinary skill has good reason to pursue the known

7

options within his or her technical grasp.”

8
9

550 U.S. at 421.

Kelora finally argues that, even though Arnett suggests that
the client resubmit all earlier parameters in a successive search,

United States District Court
For the Northern District of California

10

the discussion in Arnett is not clear and at a high level of

11

abstraction, without specific guidance as to how a person of

12

ordinary skill at that time would be able to perform a

13

resubmission.

14

as the specification of the ’821 patent itself does regarding how

15

resubmission is performed.

16

explains that, when a user makes a first selection,

17
18
19
20
21
22
23

However, Arnett provides the same level of detail

As background, the specification

the server 125 sends a feature screen status 127 to the
client 126. The feature screen status 127 comprises a
feature screen code, ScreenNum 102 in a preferred
embodiment, all features 5 appropriate to the feature
screen 9 specified in ScreenNum 102, all available
alternatives 7, all unavailable alternatives 8, and the
selection criteria 14. . . . It is apparent, therefore,
that the server 125 sends all of the information
necessary to define the current subfamily 2 to the
client 126. The information, therefore need not be
retained in memory on the server 125. This particular
feature renders it particularly appropriate for an
Internet environment.

24

Mot., Ex. 2, at 18:49-61.

25

specification goes onto state that the user may then select a

26

further criteria, “generating a selection criteria 14 different

27

from that which was set [sic] to it.

28

search with the modified selection criteria 14.

See also ’821 Reexam. Ex. 5 at 10.

34

The

The client 126 initiates a
The client 126

1

sends to the server 125, the ScreenNum 102 value sent to it by the

2

server, and the modified selection criteria,” the resubmission,

3

which the server then uses to execute the search.

4

18:64-19:5.

5

Arnett reference.

6

patentee’s arguments where the “patent itself does not disclose

7

the level of detail that [the patentee] would have us require of

8

the prior art”).

9

explain how to perform resubmission implies that persons of

Mot., Ex. 2, at

This is a level of detail analogous to that in the
Lockwood, 107 F.3d at 1570 (rejecting

Further, the fact that the patent did not

United States District Court
For the Northern District of California

10

ordinary skill in the art would know how to do so.

11

Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534 (Fed. Cir.

12

1987) (“A patent need not teach, and preferably omits, what is

13

well known in the art.”).

14

See Spectra-

Defendants’ expert provides evidence that a person of

15

ordinary skill in the art at the time of the invention would have

16

been able to implement resubmission in a web server arrangement,

17

through one of several known design methods.

18

¶¶ 44-50.

19

argue only that a person of ordinary skill would not have been

20

able to implement resubmission with the source code of the AMP

21

Navigator demonstration program.

22

dispute of material fact, as already addressed.

See Larson II Decl.

Kelora and its expert do not dispute this fact, and

This argument does not raise a

23

Thus, Defendants have demonstrated that the Arnett reference

24

taught a person of ordinary skill at the time of the invention of

25

the re-examined ’821 claims that resubmission was one available

26

approach to address the issue of statelessness and that it was

27

within the technical grasp of such a hypothetical person.

28
35

1
2

e.

Motivation to combine prior art references

“Generally, a party seeking to invalidate a patent as obvious

3

must demonstrate by clear and convincing evidence that a skilled

4

artisan would have had reason to combine the teaching of the prior

5

art references to achieve the claimed invention, and that the

6

skilled artisan would have had a reasonable expectation of success

7

from doing so.”

8

Release Capsule Patent Litig., 2012 U.S. App. LEXIS 7571, at *10

9

(Fed. Cir.) (internal citations omitted).

In re Cyclobenzaprine Hydrochloride Extended-

In KSR, the Supreme

United States District Court
For the Northern District of California

10

Court emphasized that this is to be a “flexible inquiry” in which

11

a court should “take account of ‘the inferences and creative

12

steps,’ or even routine steps, that an inventor would employ.”

13

Ball Aerosol & Spec. Container v. Ltd. Brands, 555 F.3d 984, 993

14

(Fed. Cir. 2009).

15

Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (noting the obviousness

16

inquiry may “include recourse to logic, judgment, and common sense

17

available to the person of ordinary skill that do not necessarily

18

require explication in any reference or expert opinion”).

19

See also Perfect Web Techs., Inc. v. InfoUSA,

Defendants offer evidence that one of ordinary skill in the

20

art would have been motivated to combine the teachings of AMP

21

Navigator with a client-server arrangement.

22

¶¶ 32-33.

23

opinion of the patent examiner.

24

Kelora does not offer any evidence creating a material dispute of

25

fact as to this point.

26

that a person of ordinary skill would not have reason to combine

27

the Suzuki client-server arrangement with AMP Navigator, he states

28

that this is because Suzuki teaches nothing not already contained

See Larson II Decl.

As previously noted, this is further supported by the
See ’444 Prosecution, No. 7 ¶ 28.

While Kelora’s expert, Mr. Gafford, opines

36

1

in AMP Navigator, “other than, possibly, a remote database.”

2

Gafford Decl. ¶ 43.

3

person of ordinary skill in the art would be motivated to combine

4

these.

5

ordinary skill in the art would be expected to achieve “a system

6

with the logical model of the AMP Navigator demonstration program,

7

. . . coupled with a remote database.”

8
9

He offers no evidence to dispute that a

He further concedes that, combining the two, one of

Id.

Defendants also offer evidence that persons of ordinary skill
in the art would have been motivated to adapt a client-server

United States District Court
For the Northern District of California

10

arrangement to the Internet.

11

expert does not challenge this basic motivation.

12

Decl. ¶ 47 (“Motivation to adapt applications, in general, to the

13

web, is not contested.”).

14

Larson II Decl. ¶ 36.

Kelora’s

See Gafford

Finally, as discussed above, the Arnett reference describes

15

the concept of resubmission as being a potential solution for the

16

then-known problem of statelessness with web server protocols, and

17

thus provides motivation to combine resubmission with a client-web

18

server arrangement.

19

ordinary skill in the art would have expected to achieve success

20

in doing so.

21

Kelora’s arguments against these findings.

22

Further, as previously found, a person of

The Court has already addressed and rejected

Accordingly, the Court finds that there are no genuine issues

23

of materially disputed facts as to whether there was a motivation

24

to combine the various teachings.

25
26
27
28

f.

Cumulative to references before the
Examiner

Kelora argues that Defendants’ proffered prior art references
are cumulative to those before the Patent Examiner and that this
37

1

Court should defer to the Examiner’s decision to grant the

2

reexamination certificate over those teachings.

3

The Court declines to do so because, as Defendants pointed

4

out at the hearing and in their renewed motion, the primary prior

5

art references relied on by this Court were either not submitted,

6

or not explained, to the Examiner.

7

given to the Examiner.

8

not before the Examiner, because re-examinations are limited to

9

prior art patents or printed publications, and not public use or

The Arnett reference was not

Further, the AMP Navigator prior art was

United States District Court
For the Northern District of California

10

sale.

11

Suzuki reference was before the Examiner, it was not discussed or

12

addressed by the patentees, and “the requisite degree of

13

consideration to be given to such information will be normally

14

limited by the degree to which the party filing the information

15

citation has explained the content and relevance of the

16

information.”

17
18

See Manual of Patent Examining Procedure § 2258.

3.

While the

Id. § 2256.
Secondary considerations of obviousness

Kelora argues that evidence of the commercial success of the

19

claimed invention precludes summary judgment.

20

may be relevant “to the overall obviousness determination, . . . a

21

nexus must exist between the commercial success and the claimed

22

invention.”

23

(Fed. Cir. 2011) (internal citations omitted).

24

success is due to an element in the prior art, no nexus exists.”

25

Id. (citations omitted).

26

declaration of Mr. Danish, discussing the commercial success of

27

the “guided parametric search technology” in the ’821 patent.

28

Danish Decl. ¶¶ 2-10.

While such evidence

Tokai Corp. v. Easton Enters., 632 F.3d 1358, 1369
“If commercial

Kelora points specifically to the

However, that feature was part of the
38

1

original patent which was previously put into the public domain

2

through Mr. Danish’s offer for sale.

3

that suggests commercial success due to elements not in the prior

4

art.

5

Kelora points to no evidence

Further, even if Kelora had offered evidence of a nexus, such

6

evidence would be insufficient to overcome the strong showing of

7

obviousness made here.

8

Deck Co., 596 F.3d 1334, 1339 (Fed. Cir. 2010) (“a highly

9

successful product alone would not overcome the strong showing of

United States District Court
For the Northern District of California

10

obviousness”).

11
12

See Media Techs. Licensing, LLC v. Upper

4.

The dependent claims

For the foregoing reasons, the Court finds that there is no

13

material dispute of fact that claims one and nine are invalid due

14

to obviousness.

15

the modifications of dependent claims two, three and four are also

16

obvious.

17

dependent claims only to the extent that it disputes the

18

obviousness of the re-examined claims one and nine.

19

the Court has found that claims one and nine are obvious, there is

20

also no material dispute of fact that the dependent claims are

21

obvious as well.

22
23
24
25
26
27
28

C.

Defendants make additional arguments as to why

However, Kelora disputes the obviousness of the

Thus, because

Summary Judgment of Non-Infringement and of Invalidity
on other grounds

Because the Court has concluded that claims one through four
and nine are invalid due to obviousness, the remainder of
Defendants’ motion, to the extent it seeks summary judgment of
invalidity on other grounds and of non-infringement, is moot.
See, e.g., Princeton Biochems., Inc. v. Beckman Coulter, Inc., 411
39

1

F.3d 1332, 1339-40 (Fed. Cir. 2005)(“Because claim 32 is invalid

2

for obviousness, this court need not reach the issues of prior

3

invention and infringement.”); Richdel, Inc., v. Sunspool Corp.,

4

714 F.2d 1573, 1580 (Fed. Cir. 1983)(“The claim being invalid,

5

there is nothing to be infringed.”).

6

reach Defendants’ other arguments.

Thus, the Court does not

7

CONCLUSION

8

For the reasons set forth above, the Court construes the

9

disputed claim language in the manner explained and GRANTS

United States District Court
For the Northern District of California

10

Defendants’ motion for summary judgment of invalidity (Docket Nos.

11

94 in 10-4947, 57 in 11-1398 and 361 in 11-1548).

12

enter judgment and close the file.

13

costs from Kelora.

14

The Clerk shall

Defendants shall recover their

IT IS SO ORDERED.

15
16
17

Dated: 5/21/2012

CLAUDIA WILKEN
United States District Judge

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