Microsoft Corporation et al v. GeoTag Inc.

Filing 284

MEMORANDUM OPINION providing construction for the terms in dispute. The parties should confer and submit a proposed order, suitable for submission to a jury, adopting the forgoing constructions. Signed by Judge Richard G. Andrews on 5/3/2013. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

MICROSOFT CORPORATION and
GOGGLE INC.,
Plaintiffs,
C.A. 11-175-RGA

V.

GEOTAG, INC.,
Defendant.

CLAIM CONSTRUCTION

Arthur G. Connolly, III, Esq., Wilmington, Delaware; Michael J. Bettinger, Esq.
(argued), San Francisco, California; Attorneys for PlaintiffGoogle, Inc.
Arthur G. Connolly, III, Esq., Wilmington, Delaware; Grant E. Kinsel, Esq. (argued), Los
Angeles, California; Attorneys for Plaintiff Microsoft Corporation.
Sean T. O'Kelly, Esq., Wilmington, Delaware; James C. Hall, Esq. (argued), Andover,
Massachusetts; Attorneys for Defendant Geotag, Inc.

May]__, 2013
Wilmington, Delaware
1

This is a claim construction opinion. Plaintiffs Google Inc. and Microsoft Corporation
filed a declaratory action asserting non-infringement ofDefendant Geotag, Inc.'s U.S. Patent No.
5,930,474 ("'474 Patent"). The '474 Patent discloses computer software informational databases
integrated with search engine technology that allow users to find points of interest according to
desired geographic regions.
DISCUSSION

Claim construction is a question oflaw. Markman v. Westview Instruments, Inc., 52 F.3d
967, 977-78 (Fed. Cir. 1995), affd, 517 U.S. 370, 388-90 (1996). When construing the claims
of a patent, a court considers the literal language of the claim, the patent specification and the
prosecution history. Markman, 52 F.3d at 979. Ofthese sources, the specification is "always
highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best
guide to the meaning of a disputed term." Phillips v. A WH Corp., 415 F.3d 1303, 1312-17 (Fed.
Cir. 2005) (en bane) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). However, "[e]ven when the specification describes only a single embodiment, the claims
of the patent will not be read restrictively unless the patentee has demonstrated a clear intention
to limit the claim scope using 'words or expressions of manifest exclusion or restriction.' "

Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Telejlex, Inc.
v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)).
A court may consider extrinsic evidence, including expert and inventor testimony,
dictionaries, and learned treatises, in order to assist it in understanding the underlying
technology, the meaning of terms to one skilled in the art and how the invention works. Phillips,
2

415 F.3d at 1318-19; Markman, 52 F.3d at 979-80. However, extrinsic evidence is considered
less reliable and less useful in claim construction than the patent and its prosecution history.

Phillips, 415 F.3d at 1318-19 (discussing "flaws" inherent in extrinsic evidence and noting that
extrinsic evidence "is unlikely to result in a reliable interpretation of a patent claim scope unless
considered in the context of intrinsic evidence").
In addition to these fundamental claim construction principles, a court should also
interpret the language in a claim by applying the ordinary and accustomed meaning of the words
in the claim. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984). If the
patent inventor clearly supplies a different meaning, however, then the claim should be
interpreted according to the meaning supplied by the inventor. Markman, 52 F .3d at 980 (noting
that patentee is free to be his own lexicographer, but emphasizing that any special definitions
given to words must be clearly set forth in patent). If possible, claims should be construed to
uphold validity. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
The parties organize the disputed phrase terms into five groups: the "hierarchy" phrases,
the "dynamic replication" phrases, the "topics" phrases, the "entries" phrases, and the
"additional" phrases.

A.

The "Hierarchy" Phrases

The first group is referred to as the "hierarchy" phrases by the parties. The proposed
constructions for this group follows:

Microsoft
No separate

3

geographical areas''
(claims 1, 4, 20) 1

areas, ordered such that
broader general areas
encompass narrower
specific ones"

construction. See
construction for term #2

#2. "a database of
information organized
into a hierarchy of
geographical areas
wherein entries to each
one of said hierarchy of
geographical areas is
further organized into
topics"

Google focuses on the
separate terms in the
limitation and does not
construe this entire
term.

"a database of records
primarily organized into
interrelated geographic
areas such that there are
parent geographic areas
and child geographic
areas, wherein the
records associated with
a geographic area are
further organized into
topics"
No separate
construction necessary.
See construction for
term# 2

(claim 1)
#3. "a database of
information organized
into a hierarchy of
geographical areas"
(claim 1)
#4. "said database of
information organized
into a predetermine [sic]
hierarchy of
geographical areas"
(claim 20)
#5. "hierarchy"
(claims 1, 5, 20)
#6. "hierarchically
organized"
(claim 32)
#7. "narrower
geographical area"
(claim 1)

No need to separately
construe. See term # 1

No need to separately
construe. See term # 1,
term # 16 for "topics,"
and term # 17 for
"wherein said topics are
hierarchically
organized"

No separate
construction necessary.
See construction for
term #2, term #16 for
"topics" and term # 17
for "wherein said topics
are hierarchically
organized."
"a geographic area in
the database which is a
child of the broader
geographic area"

"a geographic area in
the database
encompassed by a
broader geographic area
in the database"

related information or
data, ordered from
broader general
categories to narrower
specific ones"
No need to separately
construe; see
constructions for #3 and
#19

"a collection of
interrelated information
or data organized such
that a computer program
can quickly retrieve
selected information or
data, ordered from
broader geographical
categories to narrower
geographical
categories"
"an arrangement of
related information or
data, ordered from
broader general
categories to narrower
specific ones"
(same as #1, 17)
No need to construe.
Plain and ordinary
mearung

#8. "geographical area
of relatively smaller
expanse"
(claim 20)
#9. "broader

"a geographic area in

"a _geogt"aphic area in

1

No need to construe.

Claim term# 1 also appears in independent claim 26. It is not clear to the Court whether independent claim 26 is
being asserted. It is referenced by the parties in connection with term #21, but it is not referenced in a number of
places where it might be expected to be referenced.

4

geographical area"
(claims 1, 31)
#I 0. "geographical area
of relatively larger
expanse"

the database that
encompasses one or
more narrower
geographic areas in the
database"

the database which is a
parent of one or more
narrower geographic
areas"

Plain and ordinary
mearung

(claim 20)

This group concerns the organization of the "hierarchy of geographical areas" of the
database. The phrase appears in claim 1 as follows: "a database of information organized into a
hierarchy of geographical areas wherein entries to each one of said hierarchy of geographical
areas is further organized into topics." As an initial matter, the Court agrees with Microsoft's
proposal that this group of terms should be construed as a single phrase, as opposed to breaking
down the construction into multiple component phrases. The parties do agree that the "hierarchy
of geographical areas" is comprised of an organization of broader geographic areas and related
narrower geographic areas. They do not agree as to how the broader and narrower geographic
areas are arranged in relation to one another. Google argues that the broader geographic areas
should be understood to "encompass" the narrower geographic areas. Microsoft argues that the
broader geographic areas and the narrower geographic areas are organized according to a
"parent-child" relationship. Geotag argues that both of those constructions are wrongful
attempts to employ the specification to limit the claims, and argues that the hierarchy is simply
"ordered from broader general categories to narrower specific ones."
Google relies on the specification in support of its argument that the broader geographic
regions necessarily "encompass" the narrower geographic regions. It refers to the following
quotation in support: "Each of the geographical levels above the lowest level encompasses a
plurality of lower level geographical areas." '474 Patent, col. 3 11. 22-24. Google argues that
5

this portion of the specification demonstrates the full scope of the invention, as the very function
of the hierarchy requires the broader geographic area to completely encompass a narrower area.
The Court is not convinced by this argument. Google relies on a few sparse statements in the
specification in support of its construction, and Google does not provide any persuasive
reasoning as to why the claimed invention hinges on broader areas "encompassing" narrower
areas. This understanding of the claim term is bolstered by a comparison of the claims. In Claim
1, the word "encompass" is not used to describe the relationship between the broader and
narrower areas. In contrast, dependent Claim 5 does use "encompass" to describe these
relationships. "There is presumed to be a difference in meaning and scope when different words
or phrases are used in separate claims." Tandon Corp. v. US. lnt'l Trade Comm 'n, 831 F.2d
1017, 1023 (Fed. Cir. 1987). Although there are other differences between these two claims than
the presence of"encompass" in dependent Claim 5, the presumption is this difference was
intentional. For these reasons, the Court rejects Google's construction.
Microsoft's proposal to construe the phrases according to the "parent-child
relationship," on the other hand, explains a necessary aspect of the claims. During claim
construction, the Court must look to see "whether the specification refers to a limitation only as a
part ofless than all possible embodiments or whether the specification read as a whole suggests
that the very character of the invention requires the limitation be a part of every embodiment."
Alloc, Inc. v.lnt'l Trade Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003).
Claim 1 requires "entries" associated with "broader geographical areas" to be
"dynamically replicated" to "narrower geographical areas." The "dynamic replication" phrases
are the second group of disputed terms and are not construed in this section, but that group's
meaning has ramifications for the "hierarchy" phrases' construction. Both Geotag and Google
6

agree that "dynamic replication" must be construed to mean "automatic inheritance." The Court
adopts this construction in Part B of this opinion infra.
"Automatic inheritance" requires that "hierarchy" be construed according to the "parentchild relationship." The specification describes the function of"automatic inheritance" as
follows:
These values are the parentage name keys related to the current entry, and provide
the key to displaying related entries to the internet user, and are automatically
inherited from the parent entry. These reference values are used to retrace the
path back through the geographic hierarchy when the user wishes to return to a
related (e.g., parent) location display screen.
'474 Patent, col. 19ll. 33-38. "Automatic inheritance" as described here is strictly dependent on
the existence of"parentage name keys" and a "parent entry." They are the "reference values"
that allow retracing through the hierarchy when the user returns to the related location display
screen. Although the specification's use of"(e.g., parent)" would seem to indicate that the
"parent-child" relationship is merely exemplary, there is no indication elsewhere as to how
"automatic inheritance" would function without the "parent-child relationship." Because neither
"automatic inheritance" nor "dynamically replicated" are terms with a plain and ordinary
meaning, the Court can only construe their meaning and function according to what is disclosed
in the patent. There is nothing in the patent indicating how these functions would occur absent a
"parent-child" hierarchy.
The necessity of the "parent-child relationship" to "automatic inheritance" is again
demonstrated below:
The data contained within the geographic database 210 also includes reference
field 1305 which include a reference city, reference region, reference state,
province or territory, reference country, reference continent, and reference world
values. These values are the parentage name keys related to the current entry, and
7

provide the key to displaying related entries to the internet users, and are
automatically inherited from the parent entry.
Id. at col. 19ll. 29-39. The "parentage name keys" are necessary to displaying "related entries to

the internet users." They are "automatically inherited from the parent entry." To further
demonstrate the necessity of the "parent-child relationship" to "automatic inheritance," the patent
teaches the importance of"label fields" to the invention. See id. at col. 19ll. 45-63. When a
user selects a certain geographic region, all corresponding "parent entries" are taken from the
"label field" and displayed to the user. !d. at col. 19 ll. 52-57. The patent then specifically
teaches that the label field is "automatically inherited" from the "parent entry," and warns that
the values within the parent label field should not be changed. !d. at col. 19 ll. 61-63. The most
reasonable interpretation of the admonition to leave the label field unchanged is to preserve the
function of"automatic inheritance." It is language of restriction that strongly demonstrates that
"automatic inheritance" requires the "parent-child relationship." There is no clue within the
specification as to how "automatic inheritance" would possibly function in any other context.
This understanding is bolstered by the file history. While "unilateral statements by an
examiner do not give rise to a clear disavowal of claim scope by an applicant, it does not
necessarily follow that such statements are not pertinent to construing claim terms." Salazar v.
Proctor & Gamble Co., 414 F.3d 1342, 1347 (Fed. Cir. 2007). The file history includes the

examiner's "Search Request Form." (D.I. 174, Exh. D at 91). Within this form, the examiner
noted that "dynamic replication= automatic inheritance = parent-child = inheriting attributes."
(!d.). 2 While only "dynamically replicat[ e]" actually appears within the claims, the notations

indicate that "dynamic replication," "automatic inheritance,'' and the "parent-child relationship"

2
The examiner categorized these terms as "synonyms." Although they do not all literally have the same meaning
and are thus not true synonyms, the examiner clearly viewed these terms as interrelated.

8

are at the very least closely interrelated. This is not an example of adopting unilateral examiner
statements as disclaimer, but is an example of using the file history to understand the contours of
the invention. For all these reasons, the Court determines that the "hierarchy of geographical
areas" is organized according to the "parent-child relationship."
There is a second dispute regarding the "hierarchy" phrases. Microsoft argues that
phrases should be construed with the primacy of the geographical as opposed to topical
information of the hierarchy in mind. 3 It points to claim 1, which states, "a database of
information organized into a hierarchy of geographical areas wherein entries ... [are] further
organized into topics." There is no reason to insert "primarily" into the construction. The
claim's use of the word "further" shows that the database is organized into a hierarchy of
geographical areas, and also organized into topics, but does not imply any additional limitation.
"Primarily" is not a synonym for "further." Moreover, it is not at all clear what "primarily"
would mean in this context.
The parties also propose the construction of the following related terms: "narrower
geographical areas," "geographical area of relatively smaller expanse," "broader geographical
areas," and "geographical area of relatively larger expanse." The Court agrees with Geotag that
these terms should be construed according to their plain and ordinary meaning. They are easily
understandable and neither Microsoft nor Google demonstrate that the meanings differ from the
plain and ordinary meaning.
The Court's claim construction chart for this group of terms follows. 4

3

Microsoft proposes, "a database of records primarily organized into interrelated geographic areas ... ''
The Court has renumbered the terms consistent with its decision to construe longer phrases as a single term when
possible.

4

9

Term Phrase
# 1. "a database of information organized into
a hierarchy of geographical areas wherein
entries to each one of said geographical areas is
further organized into topics"

Court's Construction
"a database of information organized into
interrelated geographic areas such that there
are parent geographic areas and child
geographic areas, wherein the records
associated with a geographic area are further
organized into topics"

# 2. "narrower geographical area"

Plain and ordinary meaning

#3. "geographical area of relatively smaller
expanse"
#4. "broader geographical area"

Plain and ordinary meaning

#5. "geographical area of relatively larger
expanse."

Plain and ordinary meaning.

B.

Plain and ordinary meaning

The "Dynamic Replication" Phrases

The second group of terms is referred to as the "Dynamic Replication" phrases. The
Court agrees with Google's suggestion that the terms should be construed as a single phrase
when possible. The parties' proposed constructions follow:

Term
# 11. (collectively)
"dynamically
replicating"
"dynamically
replicating"
(claims 1, 20, 31)
#12. (collectively)
"replicated"
"replicating"
(claims 1, 20, 31)
#13. "dynamically
replicating an entry

Go ogle
"automatically
inheriting at the time
of a search"

No need to
separately construe;
see constructions
for term # 11 :
"dynamically
replicating" I
"dynamically
replicated"
Incapable ofbeing
construed because

Microsoft
Incapable ofbeing
construed because
term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description
Incapable ofbeing
construed because
term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description
Incapable ofbeing
construed because
10

Geotag
"automatically
copying or inheriting,
at the time needed
rather than at a time
decided or established
in advance"
"copied or inherited"
and "copying or
inheriting"

"automatically
copy:mg or

from broader
geographical area into
said geographical
search area"

term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description

term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description

Incapable ofbeing
construed because
term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description

Incapable ofbeing
construed because
term or phrase is part
of a claim limitation
which is indefinite
and/or lacks written
description

(claim 31)

#14. "wherein within
said hierarchy of
geographical areas at
least one of said
entries associated with
a broader
geographical area is
dynamically
replicated into at least
one narrower
geographical area"
(claim 1)
#15. "wherein at least
one of said entries in
said geographical area
of relatively larger
expanse is
dynamically
replicated into at least
one of said
geographical areas of
smaller expanse"
(claim 20)

11

inheriting, at the
time needed rather
than at a time
decided or
established in
advance, at least a
piece of data
contained in a
database that is
associated with a
broader
geographical area
into an area from
which topical
information can be
accessed that is a
subset of that
broader
geographical area"
"wherein within the
hierarchy of
geographical areas, at
the time needed rather
than at a time
established in
advance, at least a
piece of data in a
database associated
with a broader
geographical area is
automatically copied
or inherited into at
least one narrower
geographical area"

"Dynamically replicated" is used in claim 1 as follows:" ... a geographical search area
wherein within said hierarchy of geographical areas at least one of said entries associated with a
broader geographical area is dynamically replicated into at least one narrower geographical
area ... "
Microsoft argues that "dynamically replicated" is indefinite. Geotag argues that the term
is not indefinite and should be construed as "automatically copying or inheriting, at the time
needed rather than at a time decided or established in advance." Google argues that the term is
not indefinite in isolation and should be construed as "automatically inheriting at the time of the
search." Google also argues, however, that "dynamically replicated" is indefinite when used
within the context of the patent's claims.
The Court begins with Microsoft's indefiniteness argument. A patent specification must
"conclude with one or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention." 35 U.S.C. § 112, ~ 2. The purpose of the
definiteness requirement is to "ensure that the claims delineate the scope of the invention using
language that adequately notifies the public of the patentee's right to exclude." Datamize v.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). Claims are considered indefinite

when they are not amenable to construction or are insolubly ambiguous. "Thus, the definiteness
of claim terms depends on whether those terms can be given any reasonable meaning." !d.
Indefiniteness requires a determination of whether those skilled in the art would understand what
is claimed. "In the face of an allegation of indefiniteness, general principles of claim
construction apply." Id. at 1348. In that regard, claim construction involves consideration of
primarily the intrinsic evidence, viz., the claim language, the specification, and the prosecution
history. Phillips, 415 F.3d at 1303.
12

"Dynamically replicating" has no plain and ordinary meaning within the art of computer
science. Therefore, the Court must consider the term's usage within the claim, specification and
file history to gain guidance as to what the inventor intended this term to mean. The crux of
Microsoft's indefiniteness argument is that "dynamic replication" is a function of the search
engine, yet Google and Geotag rely on "automatic inheritance" to construe the term, despite the
fact that "automatic inheritance" is a function of the database. Thus, "automatic inheritance" is
an improper construction of"dynamic replication," and because there are no plausible alternative
constructions, the term is indefinite. 5
The relevant element of claim 1 follows:
a search engine in communication with said database, said search engine
configured to search geographically and topically, said search engine further
configured to select one of said hierarchy of geographical areas prior to selection
of a topic so as to provide a geographical search area wherein within said
hierarchy of geographical areas at least one of said entries associated with a
broader geographical area is dynamically replicated into at least one narrower
geographical area, said search engine further configured to search said topics
within said selected geographical search area.

The Court does not agree that "dynamically replicated" is solely a function of the search
engine. Rather, the element claims "a search engine in communication with said database." This
element thus speaks to both the search engine and the database. The "dynamically replicating"
occurs "within" the hierarchy of geographical areas: "wherein within said hierarchy of
geographical areas at least one of[the] entries .. .is dynamically replicated[.]" As the hierarchy
of geographical areas is indisputably the substance of the database, "dynamic replication" is a

5

Although the Court will construe the term, the Court is not definitively rejecting any indefiniteness arguments.

13

function of the database. 6 Although it is true that an "entry" is only "dynamically replicated" in
response to the search engine, that does not require it to be a function only of the search engine.
This makes sense, as the specification shows that the invention depends on interaction between
the search engine and the database ofhierarchically organized information. See '474 Patent at
col. 3 11. 1-14. The claim describes search engine functions within the context ofthe search
engine's interrelationship with the database and the database's own function. If "dynamically
replicated" is a function of the database, as I believe it is, then "automatic inheritance" is not an
incompatible construction. The specification is replete with examples of automatic inheritance
occurring within the database. 7 The file history further makes clear that the examiner equated
automatic inheritance with dynamically replicating. (See D.I. 174, Exh. D at 91). The Court
thus construes "dynamically replicated" as involving "automatic inheritance."
Although Geotag and Google agree that "automatic inheritance" is an appropriate part of
the construction, they disagree as to other limitations. Geotag argues that "dynamically
replicating" should be construed as "automatically copying or inheriting." Google argues that
"copying" is nowhere to be found in the specification or claims and limits its construction to
"automatically inheriting." Geotag does not point to any intrinsic evidence justifying the
inclusion of the "copying" limitation. Further "copying" is a well-known term used in the art of
computer science, and if the patentee had intended his invention to be understood as having this

6

A previous element of Claim 1 states, "a database of information organized into a hierarchy of geographical
areas[.]"
7

These examples include Figure 13 and relevant lines col. 1911. 16-63, as well as Figure 16 and relevant lines col.
23 11. 30-39 and col. 23 11. 48-51.

14

function he could have easily done so by using this word somewhere in the patent. 8 The Court
thus agrees with Google that "copying" is not a valid construction of "replicating."
The parties also differ as to the temporal limitation of"dynamically replicating." Geotag
argues that it occurs "at the time needed, rather than at a time decided or established in advance."
Google argues that it occurs "at the time of the search." 9 Claim 1 clearly states that an entry is
"dynamically replicated" within the database in connection with a search. There is no indication
in the record of any other moment where the function would occur or be needed. For this reason,
the Court adopts "at the time of the search" as the temporal limitation.
The Court's constructions for the "dynamic replication" group of terms follow:
Term Phrase
# 6. "dynamically replicating"
(claim 1, 20, 31)

Court's Construction
"automatically inheriting at the time of a
search"

# 7. "dynamically replicating an entry from
broader geographical area into said
geographical area."
(claim 31)
#8. "wherein within said hierarchy of
geographical areas at least one of said entries
associated with a broader geographical area is
dynamically replicated into at least one
narrower geographical area"
(claim 1)

"automatically inheriting, at the time of a
search, a record from the broader geographic
area into said geographic search area"

#9. "wherein at least one of said entries in said
geographical area of relative! y larger expanse
is dynamically replicated into at least one of
said geographical areas of smaller expanse"

"wherein at least one of said records in said
geographic area of relatively larger expanse is
automatically inherited at the time of the
search into at least one of said geographic areas
of smaller expanse."

"wherein within the hierarchy of geographic
areas at least one of said records associated
with a broader geographic area is automatically
inherited into at least one narrower geographic
area at the time of the search"

8

"Replicate" was not a term of art in the relevant field. If the inventors meant "copy," there is no obvious reason
why they could not have said so.
9
Geotag has not explained how its proposal differs from that of Google. Indeed, Geotag appears to acknowledge
that Google's proposal is on the right track, although arguing that it is too precise. (D.I. 281 at 93).

15

I (claim 20)

C.

The "Topics" Phrases

The third group of phrases is referred to as the "topics" phrases by the parties. The
parties' proposed constructions follow:
Term
#16. "topics"
(claims 1, 15, 16,
18, 20, 31, 34, 35,
36, 37)
#17: "wherein said
topics are
hierarchically
organized"
(claims 16, 35)

Google
"grouping of goods
or services"

Microsoft
"grouping of goods or
services"

Geotag
No need to construe.
Plain and ordinary
mearnng.

"related goods or
services, ordered such
that broader general
goods or services
encompass narrower
specific ones"

"interrelated goods or
services such that there
are parent goods and
services and child
goods and services"

"an arrangement of
related information or
data, ordered from
broader general
categories to narrower
specific ones"
(same as# I, 5, 6)

"Topics" appears throughout the claims. It is used, for example, as follows in claim 1: "a
database of information organized into a hierarchy of geographical areas wherein entries
corresponding to each one of said hierarchy of geographical areas is further organized into
topics[.]" Geotag argues that "topic" deserves its plain and ordinary meaning, whereas
Microsoft and Google argue that "topic" should be construed as "a grouping of goods or
services."
Geotag rightly points out that "topic" is used broadly within the specification: " .... the
topic list presented to the user includes a list of topics such as business services, entertainment,

16

news, consumer goods, historic sites, etc." '474 Patent, col. 911. 28-30. "Topics" are further
listed within Figure 10 as including "Beaches & Harbors." These descriptions within the
specification clash with Microsoft and Google' s proposed construction, as the Defendants would
limit "topics" to "a grouping of goods and services." A beach, however, is not sensibly
described as a good or a service. Further, the patent specifically mentions that "topics" are not
so limited: "goods, services, or other topics, (i.e., final destinations)." Id. at col. 15 1. 58. There
are plainly "other topics" besides "goods and services."
The patent clearly envisions a broader scope for "topics" than the construction offered by
Microsoft and Google. Microsoft and Google argue that adopting the plain and ordinary
meaning would create an inappropriately broad construction, but they fail to offer any principled
basis to narrow the term. They offer no construction accounting for the full scope of the term
envisioned by the specification. "Topics" is not a technical term. It is a broad term. Google
argues that the plain and ordinary meaning is inapposite because a dictionary defines a "topic" as
"the subject of conversation or discussion: to provide a topic for discussion." (D.I. 174, Exh. J at
459). To the contrary, this indicates the extremely broad nature of the word topic, as virtually
any subject is amenable to conversation. According to Merriam-Webster, synonyms for "topic"

°

include "content," "subject," and "matter." 1 For this reason, the Court construes "topics"
according to its plain and ordinary meaning.
The Court's constructions follow:

Term Phrase
# 10. "topics"

Court's Construction
Plain and ordinary meaning.

(claims 1, 15, 16, 18, 20, 31, 34, 35, 36, 37)
10

http://www.merriam-webster.com/dictionary/topic

17

# 11. "wherein said topics are hierarchically
organized"

"wherein the topics are further organized such
that there are parent topics and child topics."

(claims 16, 35)

D.

The "Entries" Phrases

The fourth group of term phrases is referred to as the "entries phrases." The parties'
proposed constructions follow:
Term
#18: (collectively)
"entry"
"entries"
(claims 1, 17, 18, 20,
24,31,36)
#19: "entries
corresponding to
each one of said
hierarchy of
geographical areas
is further organized
into topics"

Goo_gle
"a record in the
database"

Microsoft
"a record in the
database"

No separate
construction
necessary. See
construction for
term #2: "a
database of
information
organized into a
hierarchy of
geographical areas
wherein entries
corresponding to
each one of said
hierarchy of
geographical areas

(Claim 1)
#20: "entries
corresponding to
each of said
hierarchy of
geographical area is
further organized
into topics"
(Claim 20)

"No need to
separately construe;
see constructions
for terms# 18, 1,
and 16: "entries,"
"hierarchy of
geographical areas,"
and "topics"

#21 : "entries
corresponding to
18

Geotag
"data contained in a
database"

"data in the database
associated with a
geographic area in the
hierarchy of
geographical areas is
further organized to
permit selected data to
be retrieved into
topics"

each of said
geographical areas
is further organized
into topics"

is further organized
into topics."

(Claim 26)

#22: "organizing said
entries corresponding
to said plurality of
geographical areas into
one or more topics"

No need to separately
construe; see
constructions for terms
# 18, 1, and 16.

No separate
construction necessary.
See construction for
term#2.

(Claim 31)

"organizing data
contained in the
database corresponding
to one or more
geographical areas to
further permit selected
data to be retrieved
into one or more
topics'"

"Entries" and "entry" are used throughout the claims, including as follows in claim 1: "a
database of information organized into a hierarchy of geographical areas wherein entries
corresponding to each one of said hierarchy of geographical areas is further organized into
topics." Geotag proposes that "entries" should be broadly construed as "data." Google and
Microsoft propose that "entries" are more properly understood to be "records."
The dispute between the parties hinges on whether the patent requires "entries" to contain
distinct and independently accessible named fields. If so, then the Court should adopt Microsoft
and Google's construction, as the patent defines "record" as having "one or more fields wherein
each field is given a name so that the field is independently accessible." '474 Patent, col. 27ll.
3-9. "Data," on the other hand, is a broader term. It is not defined in the patent, but it is well
known to mean stored information in essentially any form. There is no requirement that "data"
contain individual fields, although it is not excluded from having fields, either. In other words,
all "records" are a form of"data," but not all "data" types are "records."
19

Microsoft and Google argue that "entries" must be construed as "records" because the
invention requires each "entry" to be organized by informational fields. They argue that the
patent uses "entries" and "records" interchangeably. They cite passages of the specification
where "entries" are described as having fields, including the following:
Sample entries to the yellow pages database 245 are included as Table 9. An
expiration date field 1700 includes the date or dates that this listing expires, while
a name field 1705 includes, in text form, the name to be shown on the listing.
Address and city fields 1710, 1715, respectively show the street address to be
shown on the listing and the city name. In addition, a state field 1720 as well as a
zip code field 1725, respectively, include the state name and the postal or zip code
of the listing.
Id. at col. 24ll. 30-39. This indeed states that "entries" have fields, at least in some

embodiments. There is, however, further evidence that the patentee used these terms
synonymously. The specification refers to Table 7 as a representation of the "entries" within the
geography database. 11 Each one of the "entries," however, is labeled as a "Record" within the
table itself. See id. at cols. 31-36. 12 They all have fields. See id. "Entries" again are said to
contain fields during the discussion ofthe California "entry." Id. at col. 19 ll. 53-63. TableTs
California "entry" is entitled "SPT Record" and has the same fields as discussed in column 19,
suggesting the interchangeability of the term "entry" and "record."
An even more persuasive reason to construe "entries" as "records" is to maintain fidelity
with the disclosed functions of the claimed invention. As discussed infra, claim 1 states that the
"entries" are "dynamically replicated," i.e., "automatically inherited," between broader and
narrower geographical areas. For "automatic inheritance" to occur, a "parent entry" and a "child
entry" must be present. The "parent entry" further contains a "label field" which must not be
11

"Sample entries for the geography database 210 are included in Table 7." '474 Patent, col. 18 11. 62-63.

12
For example, Table 7lists various "entries" labeled, "Continent Record," "Country Record," "SPT Record,"
"Region Record," etc.

20

changed, lest the "automatic inheritance" function be disrupted. See '474 Patent col. 1911. 5263. "Automatic inheritance" is not a term with a well-known meaning in the art, and there is no
indication in the specification as to how the function would occur absent "entries" with "label
fields." It follows that all "entries" have "fields," and therefore "entries" should be construed as
"records."
Geotag argues that the following lines from the specification demonstrate an "entry"
without fields: "Normally, when the Dbview parameter is specified as 'CITY,' the displayed
entry will simply be the city name designated as the NameKey parameter." Id. at col. 12 ll. 3-5.
Geotag argues that because the specification does not specifically refer to the field of the
"displayed entry," it cannot be a "record." The Court disagrees. First, these lines merely
describe the aspect of an "entry" that is "displayed" to the user. The fact that the city name is the
only user visible component does not necessarily imply that there is not more to the "entry" as it
exists hidden from sight in the database. Second, the lines mention the "NameKey parameter" of
the "entry." Table 7 shows that the "NameKey parameter" is a field within each listed "entry."
Elsewhere in the specification, the description explicitly mentions the function of the
"Name Key field" in a similar (if not the same) context ofGeotag's citation, using "records" in
place of "entries" to describe the files within the database:
Thus, if a user wishes to search for a given file (specified by the Name Key
parameter), then only those files within the subdivision of the geographic database
210 defined by Dbview will be searched. For example, ifthe parameter Dbview
is specified as "city," this will cause the search engine to search those records
having the designated folder name beneath the city level of the geographic
hierarchy so that only points of interest having the given folder name will be
searched.
Id. at col. 11 ll. 56-64. The "Name Key parameter" specifies the "given file" (i.e., "entry")

within the database to be accessed by the user's search. This indicates that the "Name Key
21

parameter" is a field within the "entry." Thus, Geotag has not referenced any "entry" that does
not rely on the presence of fields to perform the function of an entry.
It is thus apparent that the claimed invention can only function where its "entries" have

"fields." To put it another way, the patentee did not disclose any information allowing an
individual skilled in the art to understand this invention without employing "entries" with fields.
Geotag argues that the various ways within which "entries" is used within the specification
justify a broad construction, but it fails to locate any example contradicting the idea that all
"entries" need a field.
Geotag further makes a claim differentiation argument. The four independent claims all
use the term "entries." See '4 74 Patent, claims 1, 20, 26, and 31. There are four corresponding
dependent claims that claim "entries" comprised of"data records," arguably indicating that there
are differences between these terms. See '474 Patent, claims 18, 24, 27, 36. "[T]he presence of
a dependent claim that adds a particular limitation gives rise to a presumption that the limitation
in question is not present in the independent claim." Phillips, 415 F.3d at 1315. The claim
differentiation argument here is a weak one, as the dependent claims do not merely claim
"entries" comprised of "data records," which would give rise to a strong presumption of different
meanings. Instead, the dependent claims add "data records" with additional narrowing
limitations not found in the independent claims. 13 For this reason, Geotag's claim differentiation
argument is not persuasive.

13

For example, dependent claim 18 adds to independent claim I the following limitation, "wherein said
entries comprises a plurality of data records wherein each of said data records is associated with at least one of said
topics and at least one of said geographical areas." The requirement that each "entry" is associated with at least one
topic and one geographical area is not found within independent claim 1, meaning there is no presumption that "data
records" are narrower than "entries." Dependent claim 24 adds a functionally similar limitation to independent
claim 20.

22

For all these reasons, the Court adopts Microsoft and Google' s proposed constructions,
construing "entries" as "records."
Term Phrase
# 12. (collectively)

Court's Construction
"a record in a database"

"entry"
"entries"
(claims 1, 17, 18, 20, 14, 31, 36)

E.

Additional Terms and Phrases

There are nine additional terms and phrases. Microsoft and Google propose that all of
these phrases be construed according to their plain and ordinary meaning. Geotag disagrees,
proposing instead specific constructions for each phrase. Geotag does not, however, argue that
any of the phrases are used within the patent in a manner inconsistent with the plain and ordinary
meaning. Instead, Geotag argues that its proposals should be adopted because they are consistent
with an Eastern District ofTexas opinion construing the '474 Patent. In those cases, however,
none of the parties proposed plain and ordinary meaning constructions. See Geomas (Jnt'l) Ltd.

v. Idearc Media Services-W, Inc., 2008 WL 4966933, *5-17 (E.D. Tex. 2008). 14 Thus, the

Further, dependent claim 27 adds to independent claim 26 the following limitation, "wherein said entries
comprise data records wherein said data records are associated with said topics and wherein said data records
contain information about institutions or enterprises." The narrowing of"entries" to "contain information about
institutions or enterprises" is not present in independent claim 26, defeating the presumption that "entries" is
necessarily different from "data records.'' Dependent claim 36 adds a functionally similar limitation to independent
claim 31.
14
The '474 Patent was also construed more recently in GeoTag, Inc. v. Frontier Commc'ns Corp., 2013 WL
693852 (E.D. Tex. Feb. 26, 2013). Claim construction is reviewed without deference by the Court of Appeals.
There is no reason for one trial court to pay any deference to another trial court's construction of the same patent.
First, if the parties are different, as they are here, they may offer different constructions than what were proposed in
the other cases. Courts generally will pick a construction of one party of the other. The parties in the first case may
have proposed different constructions, and the first court may pick the better option. When the second or third court
is presented with a new option, it may be that newer options are better still. Second, even when the same options are

23

Eastern District of Texas cannot be said to have rejected the plain and ordinary meaning of these
terms. Because Geotag does not proffer any argument that these terms are used in a manner
distinct from their plain and ordinary meaning, the Court construes them according to their plain
and ordinary meaning as written below:

Term phrase
# 13. "database"

Court's Construction
Plain and ordinary meaning

(claims 1, 20, 31)
# 14. "on-line information"

Plain and ordinary meaning

(claims 1, 3 1)
# 15. "organizing a database of on-line
information into a plurality of geographic
areas"

Plain and ordinary meaning

(claim 31)
# 16. "organizer"

Plain and ordinary meaning

(claim 1)
# 17. "search engine"

Plain and ordinary meaning

(claims 1, 15, 20, 31, 34, 37)
# 18. "virtual geographic environment"

Plain and ordinary meaning

(claim 4)
# 19. "said search engine further configured to
select one of said hierarchy of geographical
areas prior to selection of a topic so as to
provide a geographical search area"
(claim 1)
# 20. "said search engine further configured to
select at least one geographical area in said
hierarchy of geographical areas so as to define
a geographical search area"

Plain and ordinary meaning

Plain and ordinary meaning

presented in the later cases, the evidence offered in support will likely be different. Different factual presentations
can lead to varying results.
Throughout the briefing, Geotag relies upon the earlier Geomas constructions. But since Microsoft and
Google propose constructions that were not considered in the other cases, the other cases are not as persuasive as
they might be to resolving the claim disputes here.

24

(claim 20)
# 21. "directing a search engine executing in a
computer to select one or more of said
geographical areas so as to select a
geographical search area"

Plain and ordinary meaning

(claim 31)

The parties should confer and submit a proposed order, suitable for submission to a jury,
adopting the foregoing constructions.

25