Data Engine Technologies LLC v. Google Inc.
Filing
156
MEMORANDUM OPINION re claim construction. Signed by Judge Leonard P. Stark on 2/29/16. (ntl)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
DATA ENGINE TECHNOLOGIES LLC,
Plaintiff,
v.
GOOGLE INC.,
Defendant.
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C.A. No . 14-1115-LPS
Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, DE
Alisa A. Lipski, Amir H. Alavi, Benajmin Foster, Brian E. Simmons, Demetrios Anaipakos,
Jamie Aycock, Timothy C. Shelby, AHMAD , ZAVITSANOS , ANAIPAKOS, ALA VI &
MENSING PC, Houston, TX
Attorneys for Plaintiff.
Frederick L. Cottrell, III, Jason James Rawnsley, RICHARDS , LAYTON & FINGER, PA,
Wilmington, DE
Darcy. L. Jones, Heather S. Kim, Jeffrey J. Toney, John W. Downing, Jonathan K. Waldrop,
Marcus A. Barber, KASOWITZ, BENSON, TORRES & FRIEDMAN LLP, Redwood Shores,
CA
Rodney R. Miller, KASOWITZ, BENSON, TORRES & FRIEDMAN LLP, Atlanta, GA
Attorneys for Defendants.
MEMORANDUM OPINION
February 29, 2016
Wilmington, Delaware
Plaintiff Data Engine Technologies LLC ("Plaintiff') filed this patent infringement suit
against Defendant Google Inc. ("Defendant") on September 2, 2014. (D.I. 1) Pending is the
issue of claim construction for several disputed terms in four patents-in-suit: U.S. Patent No.
5,784,545 ("the '545 patent"), U.S. Patent No. 6,282,551 ("the '551 patent"), U.S. Patent No.
5,623,591 ("the '591 patent"), and U.S . Patent No. 5,303,146 ("the ' 146 patent"). 1
The ' 545 patent, entitled "System and Methods for Improved Spreadsheet Interface with
User-Familiar Objects," was filed on April 10, 1995 and issued on July 21 , 1998. The patent
generally discloses an electronic spreadsheet system that enables quick access to multiple
spreadsheet pages. (See ' 545 patent at Abstract) The '551 patent has the same title as the '545
patent and relates to the same general subject matter. (See '551 patent at Abstract) The patent
was filed on July 20, 1998 and issued on August 28, 2001. The '591 patent, entitled "System and
Methods for Building Spreadsheet Applications," was filed on September 10, 1993 and issued on
April 22, 1997. It discloses a system that enables developers to build interfaces and applications
for use in spreadsheet software. (See '591 patent at Abstract) Finally, the' 146 patent, entitled
"System and Methods for Improved Scenario Management in an Electronic Spreadsheet,"
discloses a "scenario manager" that allows users to track changes between different versions of a
spreadsheet. (See' 146 patent at Abstract) This patent was filed on March 11 , 1993 and issued
on April 12, 1994.
1
The patents can be found in the record at D.I. 53.
1
The parties initially completed claim construction briefing on December 17, 2015. 2 (D.I.
87, 89, 99, 103, 115, 116) The Court held a claim construction hearing on December 21 , 2015.
(D.I. 120) ("Tr.") In light of new positions Plaintiff offered for the first time at the hearing, the
Court permitted Google to file a follow-up letter brief, which it did on January 8, 2016. 3 (D.I.
121) Thereafter, on February 17, 2016, Defendant submitted a supplemental letter containing
excerpts from a deposition oflstvan Cseri, the sole inventor of the ' 591 patent. (D.I. 149) On
February 23 , 2016, Plaintiff submitted a supplemental letter responding to the deposition
excerpts. (D .I. 151 )4
2
Plaintiff s original position for most of the disputed terms was that no construction is
necessary. (See D.I. 89) Based on an initial review, the Court ordered Plaintiff to provide a
construction for these terms and allowed Defendant to respond to these constructions in a
supplemental brief. (D.I. 113) While the discussion below primarily considers Plaintiffs
alternative proposed constructions, Plaintiffs preference for most of the terms remains that no
construction is necessary. (See Tr. at 42)
3
At the hearing, Plaintiff made arguments that relate to litigation between Plaintiff and
IBM. (See Tr. at 116, 121-22) Because these arguments are based on documents that were not
fully disclosed to Defendant, the Court will not consider them. (See id. at 122) (explaining that
document upon which Plaintiff relied was "marked confidential by IBM" and so could not be
shared with Defendant)
4
While the Court has considered this evidence, an inventor' s opinion generally is not
entitled to much (if any) weight in the claim construction process. See Howmedica Osteonics
Corp. v. Wright Med. Tech., 540 F.3d 1337, 1347 (Fed. Cir. 2008) (explaining "it is not unusual
for there to be a significant difference between what an inventor thinks his patented invention is
and what the ultimate scope of the claims is after allowance" and holding that "inventor
testimony as to the inventor' s subjective intent is irrelevant to the issue of claim construction");
see also Andrulis Pharm. Corp. v. Celgene Corp., 2015 WL 3978578, at *5 (D. Del. June 26,
2015) (describing inventor' s testimony, taken 15 years after patent issued, as "useless"). While
an inventor' s testimony "may be pertinent as a form of expert testimony," Howmedica Osteonics
Corp. , 540 F.3d at 1347 n.5 , neither party in this case is offering Cseri ' s testimony for that
purpose.
As in Andrulis, the inventor testimony offered here was taken many years after the patent
was filed. Indeed, at the time of the his deposition, Cseri testified that he was no longer even
2
I.
LEGAL ST AND ARDS
Claim construction is a question oflaw. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135
S. Ct. 831, 837 (2015) (citing Markman v. Westview Instruments, Inc. , 517 U.S. 370, 388-91
(1996)) . "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) (internal quotation marks omitted). "[T]here is no magic formula or catechism
for conducting claim construction." Id. at 1324. Instead, the court is free to attach appropriate
weight to sources "in light of the statutes and policies that inform patent law." Id.
"[T]he words of a claim are generally given their ordinary and customary meaning . .. .
[This is] the meaning that the term would have to a person of ordinary skill in the art in question
at the time of the invention, i.e. , as of the effective filing date of the patent application." Id. at
1312-13 (internal citations and quotation marks omitted). " [T]he ordinary meaning of a claim
term is its meaning to the ordinary artisan after reading the entire patent." Id. at 1321 (internal
quotation marks omitted). The patent 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." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
While "the claims themselves provide substantial guidance as to the meaning of particular
claim terms," the context of the surrounding words of the claim also must be considered.
familiar with the patent. (See D.I. 151 Ex. A at 10) ("To be honest, I completely forgot about this
patent .. . before I saw it yesterday.") Consequently, the Court did not give much weight to the
deposition. Nevertheless, the Court notes that the testimony supports the Court' s constructions
for the "linking" claim term and does not clearly contradict the Court' s constructions for any of
the other terms. (See D.I. 151 Ex. A at 12) (explaining that changes are propagated
"automatically," consistent with Court' s construction of "linking" term)
3
Phillips, 415 F.3d at 1314. Furthermore, " [o]ther claims of the patent in question, both asserted
and unasserted, can also be valuable sources of enlightenment . .. [b ]ecause claim terms are
normally used consistently throughout the patent .. . ." Id. (internal citation omitted).
It is likewise true that " [d]ifferences among claims can also be a useful guide .. .. For
example, the 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." Id. at 131415 (internal citation omitted).
It is also possible that "the specification may reveal a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise possess. In such cases, the
inventor' s lexicography governs." Id. at 1316.
It bears emphasis that " [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
intent to limit the claim scope using words or expressions of manifest exclusion or restriction."
Liebel-Flarsheim Co. v. M edrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (internal quotation
marks omitted).
In addition to the specification, a court "should also consider the patent' s prosecution
history, if it is in evidence." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U. S. 370 (1996). The prosecution history, which is "intrinsic evidence,"
"consists of the complete record of the proceedings before the PTO [Patent and Trademark
Office] and includes the prior art cited during the examination of the patent." Phillips, 415 F.3d
at 1317. " [T]he prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention and whether the inventor limited the
4
invention in the course of prosecution, making the claim scope narrower than it would otherwise
be." Id.
In some cases, "the district court will need to look beyond the patent' s intrinsic evidence
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period." Teva , 135 S. Ct. at
841 . Extrinsic evidence "consists of all evidence external to the patent and prosecution history,
including expert and inventor testimony, dictionaries, and learned treatises." Markman , 52 F.3d
at 980. For instance, expert testimony can be useful "to ensure that the court' s understanding of
the technical aspects of the patent is consistent with that of a person of skill in the art, or to
establish that a particular term in the patent or the prior art has a particular meaning in the
pertinent field." Id. Nonetheless, courts must not lose sight of the fact that "expert reports and
testimony [are] generated at the time of and for the purpose of litigation and thus can suffer from
bias that is not present in intrinsic evidence." Id. Overall, while extrinsic evidence "may be
useful" to the court, it is "less reliable" than intrinsic evidence, and its consideration "is unlikely
to result in a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence." Id. at 1318-19. Where the intrinsic record unambiguously describes the
scope of the patented invention, reliance on any extrinsic evidence is improper. See Pitney
Bowes, Inc. v. Hewlett-Packard Co. , 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90
F.3d at 1583).
Finally, "[t]he construction that stays true to the claim language and most naturally aligns
with the patent' s description of the invention will be, in the end, the correct construction."
Renishaw PLC v. Marposs Societa ' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows
5
that "a claim interpretation that would exclude the inventor's device is rarely the correct
interpretation." Osram GmbHv. Int '! Trade Comm 'n, 505 F.3d 1351 , 1358 (Fed. Cir. 2007)
(quoting Modine Mfg. Co. v. United States Int '! Trade Comm 'n, 75 F.3d 1545, 1550 (Fed. Cir.
1996)).
II.
PERSON OF ORDINARY SKILL IN THE ART
The parties do not agree on who a person of ordinary skill in the art ("POSA") would be
in the context of the patents-in-suit. Plaintiff contends that a POSA is:
a person with at least a bachelor's degree in computer
science, electrical or computer engineering, or a related
technical field, 2-4 years of work experience, and some
experience with user interface design and implementation.
This person would also have extensive experience in
working with spreadsheet applications. Additional work
experience could offset less educational experience, or
additional education could offset less work experience.
(D.I. 89 at 1) Defendant, by contrast, argues that a POSA "would have had an undergraduate
degree in Computer Science, or equivalent course work, and two or more years' experience
working as a programmer or software user interface designer with general familiarity with
databases and/or spreadsheet-style applications." (D.I. 87 at 1)
The Court agrees with Plaintiff. While the parties ' proposals are similar, there is one
notable difference. Whereas Plaintiffs proposed POSA has extensive experience with
spreadsheet applications, Defendant's proposed POSA has general familiarity with database
and/or spreadsheet-style applications. Because the patents-in-suit each relate to spreadsheet
applications, and because it is not clear what constitutes a "spreadsheet-style application," the
6
Court adopts Plaintiffs proposal for the POSA. 5
III.
DISPUTED TERMS
A.
"single disk file"
(' 545 patent claims 1 and 35)
Plaintifrs Proposal
"single electronic file"
Defendant's Proposal
"stored in a file on a single physical disk"
Court's Construction
"single electronic file"
Defendant's proposed construction requires that a file be stored on a single physical disk,
and would exclude files that are saved across multiple drives or devices. The Court agrees with
Plaintiff that storing a file on a single physical disk is not a requirement of the claims.
The intrinsic evidence supports Plaintiffs position. The phrase "disk file" appears in the
patent as an independent term. The specification states, for instance, that the name of a notebook
"is displayed in the titlebar ... and is used as the name for the corresponding disk file. " (' 545
patent at 15 :50-51) (emphasis added) The fact that "disk file" is used as a stand-alone phrase
while "single disk" is not supports Plaintiffs construction.
In defending its proposed construction, Defendant points to parts of the specification
indicating that the "single disk file" is stored in the "mass storage" of the file system. (DJ. 87 at
15) In making this argument, Defendant appears to argue that the claims should be limited to the
disclosed single-disk implementation. This would improperly import limitations from the patent
5
The parties agree that the outcome for all but one of the disputed terms - "storing said
first and second pages of the plurality of cell matrices such that they appear to the user as being
stored within a single file" in the '5 51 patent - would be the same regardless of how the Court
defines the POSA. (See Tr. at 124-25, 127-28) In fact, the Court has found that none of the
claim construction disputes hinge on the difference between the parties' proposed POSA
definitions.
7
specification into the patent claims. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
Inc., 242 F.3d 1337, 1339 (Fed. Cir. 2001 ). The portion of the patent that refers to "mass
storage" explicitly indicates that the invention is not limited to the implementation described in
the specification and that the invention "is not limited to any ... particular [computer]
environment." ('545 patent at 6:1 -12) Further, even if a mass storage system were required,
Defendant has failed to show that a "mass storage" system must necessarily be located on a
single disk. Defendant's extrinsic evidence does not support such a conclusion. By contrast,
Plaintiff s expert shows how a person of ordinary skill in the art at the time the patent was filed
would have been able to design a mass storage system that could save a single file across several
physical disks. (See D.I. 104 at 2-3)
B.
"storing said first and second pages of the plurality of cell matrices such that
they appear to the user as being stored within a single file"
(' 551 patent claim 1)
Plaintifrs Proposal
"storing said first and second pages of the
plurality of cell matrices such that they are
accessible by a single file name"
Defendant's Proposal
Indefinite
Court's Construction
"storing said first and second pages of the
plurality of cell matrices such that they are
accessible by a single file name"
Defendant contends that this term is indefinite because "appears to the user" depends on
"the unrestrained opinion of a particular individual." (D.I. 87 at 17) The Court disagrees.
Indefiniteness is a question oflaw. See Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1378 (Fed. Cir. 1999). The facts underlying an indefiniteness determination must be
proved by clear and convincing evidence. See Young v. Lumenis, Inc., 492 F.3d 1336, 1347 (Fed.
8
Cir. 2007); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 n.10 (2014).
While questions of appearance can sometimes involve subjective determinations, see
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350-51 (Fed. Cir. 2005) (finding
"aesthetically pleasing" indefinite), here they do not. Whether two pages "appear" to be stored in
a single file implicates an objective inquiry. As Plaintiff's counsel put it at the hearing, " [i]t
describes what user sees versus what might be happening behind the scenes, how the computer
actually processes the information." (Tr. at 115)
Having considered both sides' expert submissions (D .I. 88 at 4; D .I. 104 at 3), the Court
concludes that Defendants have failed to meet their burden to prove indefiniteness by clear and
convincing evidence. The Court adopts Plaintiff's proposed construction, which is supported by
the intrinsic evidence.
C.
"linking"
(' 591 patent claims 1, 3, 13)
Plaintifrs Proposal
"establishing a relationship"
Defendant's Proposal
"bidirectionally linking a property of a cell to
a property of a user interface object such that
when one object's property is changed, the
other's property will be updated
automatically"
Court's Construction
No construction necessary
Prior to the hearing, it appeared the parties may have disagreed as to whether all of the
claims implicated by this dispute necessarily require a bilateral connection between two
connected objects and automatic updating. (See D.I. 89 at 13; D.I. 99 at 17) At the hearing, it
became clear that the parties agree that with respect to the method of the three claims implicated
by this dispute, the linking must be bidirectional and automatic. (See Tr. at 71 , 75) To the extent
9
there remains a dispute, the Court agrees with Defendant that after a link is established, any
changes to one object are automatically propagated to the other. (D.I. 121 at 5) Having made
this determination, the Court does not believe that construction of "linking" is necessary.
D.
"displaying said user interface object with a value of said value property
corresponding to the value of said value property of the given cell object"
('591 patent claim 1)
Plaintifrs Proposal
"displaying said user interface object such
that a change in the cell value is reflected in
the user interface object"
Defendant's Proposal
"automatically updating the value of the value
property of said user interface object when the
value of the value property of the
corresponding cell is changed"
Court's Construction
"displaying said user interface object such
that a change in the cell value is reflected in
the user interface object"
The parties do not appear to have a material dispute with respect to this claim term. The
only potentially material difference between the two proposed constructions is the inclusion of
the word "automatic." But, as Plaintiff observes, the requirement that the cell value is
automatically updated is adequately captured by a later limitation in the term explaining that the
system "propagate[s] the change to the given cell object." (See D.I. 89 at 15; see also '591 patent
at 85:18-23) Accordingly, the Court adopts Plaintiffs proposed construction.
10
E.
"end-user input"
('591 patent claims 1, 3, 13 , 15)
Plaintifrs Proposal
"input by a person who is running a custom
application operative in an electronic
spreadsheet to perform tasks"
Defendant's Proposal
"input by a person who runs a completed
application to perform tasks"
Court's Construction
"input by a person who runs a completed
application to perform tasks"
Both parties agree that "end-user input" refers to input by a user running an application
created according to the '591 patent. (See D.I. 99 at 20; D.I. 103 at 9) The parties' disagreement
centers on which proposed construction provides the most clarity. Defendant's construction
appears to come directly from the specification, which states that end-user "refers to the person
who runs a completed application .. . to perform tasks." ('591 patent at 25:59-26:53) Because
this language is clear and succinct, and is supported by the specification, the Court adopts
Defendant' s proposed construction.
11
F.
"in response to ... user input, generating a user interface object"; "receiving
first user input for generating a user interface control of a plurality of
different types for receiving end-user input"
('591 patent claims 1, 3, 13)
Plaintiff's Proposal
"generating a user interface object of a
predefined type distinct from cell objects in
response to a user selecting a user interface
object type"/"receiving user input selecting a
user interface control type"
Defendant's Proposal
"generating a user interface object of a
predefined type distinct from cell objects in
response to a user selecting a user interface
object type in a graphical user
interface"/"receiving user input selecting a
user interface control type in a graphical user
interface"
Court's Construction
"generating a user interface object of a
predefined type distinct from cell objects in
response to a user selecting a user interface
object type"/"receiving user input selecting a
user interface control type"
The dispute arising from these claim terms is whether the terms require the use of a
graphical user interface ("GUI"). (See D.l. 103 at 10 (recounting and agreeing with Defendant' s
articulation of dispute)) Defendant argues that a GUI is required, while Plaintiff argues that it is
not. Defendant relies primarily on parts of the specification indicating that "the present
invention" and "the system of the present invention" use GUls. (See D.l. 87 at 21 ) In response,
Plaintiff argues that the specification only references GUls when describing preferred
embodiments of the invention. (See D.I. 89 at 18-19) In Plaintiffs view, the invention may
have, but need not require a GUI. (See id. ) The Court agrees with Plaintiff and will adopt
Plaintiffs proposed construction.
12
A court may depart from the ordinary meaning of a claim term in only two circumstances.
See Pacing Techs. , LLC v. Garmin Int'!, Inc., 778 F.3d 1021 , 1024 (Fed. Cir. 2015). First, a
patentee may "act as a lexicographer" by assigning his own definition to a patent claim term. See
id. Second, a patentee may intentionally disclaim, or "disavow," claim scope. See id. A
disclaimer or disavowal requires "words or expressions of manifest exclusion or restriction."
Hill-Rom Services, Inc. v. Stryker Corp. , 755 F.3d 1367, 1372 (Fed. Cir. 2014) (quoting
Liebel-Flarsheim Co. v. Medrad, Inc. , 358 F.3d 898, 904 (Fed. Cir.2004)). A disclaimer or
disavowal may be implicit, but only if it is "so clear that it equates to an explicit one." Thorner
v. Sony Computer Entm 't Am. LLC, 669 F.3d 1362, 1368 (Fed. Cir. 2012). "The standards for
finding lexicography and disavowal are exacting." Pacing Techs., 778 F .3d at 1024 (internal
quotation marks omitted).
In particular, the Federal Circuit has found disclaimers of a feature where the patentee
unmistakably defined the invention in a way that excluded that feature by prefacing a particular
embodiment with language such as "the present invention requires," "the present invention is,"
"the present invention includes," or "all embodiments of the present invention are." Regents of
Univ. ofMinn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'!, Inc. v.
ITT Indus., Inc., 452 F.3d 1312, 1316-19 (Fed. Cir. 2006); SciMed Life Systems, Inc. v.
Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001). Similarly,
when a patent's specification makes clear that a particular feature is necessary or very important
to the invention, the patentee may have disclaimed embodiments of the invention that omit the
feature. See Andersen Corp v. Fiber Composites, LLC, 674 F.3d 1361 , 1367 (Fed. Cir. 2007).
Additionally, a patentee disclaims patent scope if the patentee "repeatedly disparages an
13
embodiment" of an invention, or when the content of the specification makes clear that that
feature cannot be part of the claimed invention. See Chicago Bd. Options Exch. , Inc. v. Int 'l Sec.
Exch. , LLC, 677 F.3d 1361 , 1372 (Fed. Cir. 2012) (patentee' s "repeated derogatory statements"
constitute disavowal); Safe TCare Mf Inc. v. TeleMade, Inc., 497 F.3d 1262, 1269-70 (Fed.
g.,
Cir. 2007); SciMed, 242 F.3d at 1342-45.
Here, the claim language refers broadly to a "user interface object." It does not further
define or describe the term. Notably, then, the claim does not contain language requiring a
graphical user interface. Nor does the specification of the ' 591 patent provide a definition for the
term "user interface object." Even Defendant does not contend that the patentee here was acting
as its own lexicographer.
Defendant does, however, contend that there is a disclaimer or disavowal, but the Court
disagrees. Defendant points to parts of the specification indicating that "the system of the present
invention" uses a GUI (D.I. 87 at 21-23), and emphasizes that " [t]he ' 591 patent consistently
explains that a user generates user interface objects for applications by selecting them from a
graphical user interface such as a toolbar" (id. at 23 ).6 Exemplary language, without more, does
not constitute a disclaimer. None of the statements in the patent are of a type that have been
found to be a disclaimer (i.e., "the present invention is" or "all embodiments of the present
6
As further examples, the specification discloses that " [s]preadsheet applications of the
present invention employ dialog boxes for displaying information and receiving user input" (' 591
patent at 29:3-5), "the system of the present invention includes a dialog window tool bar" (id. col.
29:31-38), and "notebook pages may be copied or moved using the drag-and-drop editing
techniques of the present invention" (id. at 12:19-21 ). There is also a toolbox or dialog box in
each of the most pertinent disclosed embodiments and examples. (See, e.g., ' 591 patent at Figs.
5B-7H, 1lA, 1 lF-1 lH, l lJ, 12A-15, 25 :59-33:45, 35:4-52, 39:40-52, 41 :29-34, 42:45-59, 44:5045:39)
14
invention are").7 Defendant has not identified any part of the specification demonstrating (either
implicitly or explicitly) that the invention must use a GUI, that a GUI is very important to
practicing the invention, or that the invention cannot be practiced without a GUI. Nor, finally,
has Defendant identified any language disparaging interfaces without a GUI. At bottom, the
specification does not make clear that the invention requires a GUI.
Accordingly, the Court will not deviate from the plain and ordinary meaning of the
disputed term, a meaning captured by Plaintiff's proposed construction.
G.
"specifying a base set of information cells"/"base version"
(' 146 patent claim 1)
Plaintifrs Proposal
"determining a reference set of information
cells"
Defendant's Proposal
"user selecting a set of cells in an open
notebook as a base set from which user
defined scenarios are created"
Court's Construction
"determining a reference set of information
cells"
The essence of this dispute is whether the set of cells used to form the "base version" of
data must be chosen by the user, as argued by Defendant, or whether the base set can be
determined automatically by the software system, as Plaintiff counters. The Court agrees with
Plaintiff.
7
The Court does not find another statement in the specification - "The system of the
present invention includes a dialog window toolbar" (' 591 patent at 29:31-38) - as meeting the
"exacting" standard for a disavowal. It is difficult to conclude that the patentee clearly limited
the scope of its claimed invention to embodiments with "dialog window toolbars" when the
patent's claims require only "a user interface object." Moreover, the specification contains
reference to a "user interface," indicating again that the patent is not limited solely to graphical
user interfaces. (See ' 591 patent at 6:48-65 ("The system receives user commands and data
through user interface."); see also id. at Fig. lB)
15
Plaintiffs construction is supported by the doctrine of claim differentiation. Each claim
in a patent constitutes a different invention. As such, there is a presumption that "each claim in a
patent has a different scope." See Versa Corp. v. Ag-Bag Int'l Ltd. , 392 F.3d 1325, 1330 (Fed.
Cir. 2004). In the ' 146 patent, step (a) of claim 1 involves "specifying a base set of information
cells for the system to track changes." (' 146 patent at 14:6-7) Claim 2 depends from claim 1 and
further describes step (a).8 The only difference between claim 1 and claim 2 is that claim 2
incorporates user preference; that is, in claim 2 the base set of information is determined in
accordance with what "the user desires. " (Id. at 14:18) As the Federal Circuit explained in
Phillips, "the 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." 415 F.3d at
1315 . The fact that claim 2 incorporates a limitation relating to user preference, thus, gives rise
to a presumption that claim 1 does not contain such a limitation. Defendant has not overcome
this presumption.
Plaintiffs construction is also supported by the specification, which states that the base
set may be determined automatically:
At step 501 , the user specifies a capture area . . . . In a preferred
embodiment, a capture area may be selected from a notebook,
page, or block, with a default value of page. Alternatively, the
system may automatically determine the capture area, for example,
from a bounding box which includes all cells changed by the user.
('146 patent at 12:52-60) (emphasis added)
8
Claim 2 states: "The method of claim 1, wherein step (a) comprises: selecting a capture
area comprising information cells which the system is to automatically track; and capturing as the
base set information in the capture area which the user desires to serve as a reference against
which new versions are compared."
16
Defendant also contends that its construction is supported by the PTO ' s Notice of
Allowability. (See D.I. 99 at 6-7) The PTO ' s statement, however, does not address the disputed
issue. Instead, the notice states that "[t]he Examiner considers the recited system and method of
modeling user-defined information in a data model spreadsheet .. . to be novel and unobvious"
and that "the recited method of selecting a capture area ... is also .. . novel and nonobvious."
(DETFHOOOOl 12) These remarks do not indicate whether the selection of the base set is
automatic. Hence, Defendant' s argument is unavailing.
H.
"new version"/"different versions"
(' 146 patent claims 1 and 13)
Plaintiffs Proposal
"new variation"/"different variation"
Defendant's Proposal
"new user defined scenario made by
modifying the base version"/ "user defined
scenario made by modifying the base version"
Court's Construction
No construction necessary
Defendant contends that "the user, and not the system, creates and defines new or
different versions" and that "all versions other than the base version are created by modifying the
base version." (D.I. 87 at 13) The Court agrees with Plaintiff that user action is not always
required to satisfy this claim limitation.
The claim language does not include a limitation requiring that users create new versions.
Notably, the method described in claim 1 describes actions, but does not define actors. That is,
the method involves "specifying a base set," "creating a new version," and "automatically
determining cells ... which have changed." (' 146 patent at 14:6-13) These phrases do not
necessarily require user action.
The Court' s construction is also supported by the doctrine of claim differentiation. See
17
Phillips, 415 F .3d at 1315. Claim 16 of the ' 146 patent depends from claim 1 and relates to
"new version[ s] created by the user." (' 146 patent at 15: 15-16) (emphasis added) The fact that
no other claim in the patent includes a "created by the user" limitation, and that there does not
appear to be any other difference between claim 16 and claim 15 (from which claim 16 also
depends) suggests that the limitation is not present in the other claims.
Finally, while the specification describes tools that enable users to create, save, and name
scenarios, the specification does not contain any language that limits the invention to these types
of scenarios. (See id. at 7 :65-68) (explaining that invention "allow[s} a user at any time to name
and save scenario variations") (emphasis added)
In challenging these conclusions, Defendant contends that the patentee disclaimed
scenarios that are not defined by the user. 9 But Defendant points to no language in the patent
meeting the "exacting" standard of "words of manifest restriction or exclusion." Instead,
Defendant relies on the following statement:
[T]he present invention provides a more powerful and interactive
approach to scenario analysis in the form of a Scenario Manager.
The manager automatically tracks value changes as one enters new
data sets, with the added ability to allow a user at any time to name
and save scenario variations in report form.
(' 146 patent at 7 :62-68) This reference to user participation as an "added ability" is not
tantamount to a clear exclusion of embodiments that do not require new versions to be specified
9
Defendant also contends that the preamble ("In an electronic spreadsheet system for
modeling user-specified information in a data model comprising a plurality of information cells,
a method for automatically tracking different versions of the data model, the method comprising .
. . .") is limiting, as it provides an antecedent basis for certain claim terms ("data model"
"different versions") and was relied on during the prosecution. See Catalina Mktg. Int 'l, Inc. v.
Coolsvaings.com, Inc., 289 F.3d 801 , 808 (Fed. Cir. 2002). The Court does not agree.
18
by the user. The Court is similarly unpersuaded by Defendants' arguments about Figures SA and
SB. While these figures may "describe" and "summarize" the invention, there is no clear
indication that they are intended to limit the invention. 10 (See ' 146 patent at 12:S 1-S2, 13: 18-21 )
I.
"maintaining the new version by storing additional information for only
those portions determined to have changed"
(' 146 patent claim 26)
Plaintifrs Proposal
"maintaining the new variation by storing
additional information for only those portions
determined to have changed"
Defendant's Proposal
"maintaining the new version by storing only
portions of the new version which have
changed when compared against the base
version"
Court's Construction
"maintaining the new variation by storing
additional information for only those portions
determined to have changed"
The parties disagree about whether the invention disclosed in claim 26 considers changes
only with respect to the "base version," or whether the invention can consider changes with
respect to any previous version. The Court agrees with Plaintiff and concludes that the patent
does not require that changes be tracked only against the base version.
Defendant identifies numerous portions of the specification that reference the "base
version" when describing how the invention tracks changes. (See D.I. 99 at 10) These are
references to preferred embodiments of the invention. When describing the change-tracking
10
In its supplemental letter brief, Defendant also argued that its construction was
supported by the title of the ' 146 patent. (See D.I. 121at3) Generally, claim limitations are not
found in a patent' s title. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1312
("[I] f we do not read limitations into the claims from the specification that are not found in the
claims themselves, then we certainly will not read limitations into the claims from the patent
title.").
19
functionality, the specification indicates that its description merely "summarizes" the invention.
(' 146 patent at 12:SO-S2) The specification later adds that "there is no intent to limit the
invention" to the particular embodiments disclosed in the specification. (Id. at 13 :S7-61 ; see also
id. at 13:61-67) The Court perceives no basis to limit the claims to the preferred embodiments.
Finally, Defendant again argues for a disclaimer. Again the Court concludes that
Defendant has failed to meet the "exacting" standard to support such a conclusion. None of the
statements in the specification clearly state that the invention compares changes only against the
base version. See Biogen Idec, Inc., 713 F.3d at 109S. Defendant points to Figure SB as support
for its disclaimer - but then acknowledges that Figure SB is not entirely consistent with its
position. (See ' 146 patent at Fig. SB) (showing Scenario 3 failing to store at least one change
from base version); see also D.I. 121 at 3 (Defendant: "With respect to scenario 3 [in Figure SB],
the values in this scenario are inconsistent with what the patent teaches to one skilled in the art ..
. .")) At minimum there is ambiguity as to whether the patentee intentionally disclaimed
embodiments that are not limited tracking changes against the base version.
IV.
CONCLUSION
An appropriate Order follows.
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