Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 68

REPLY to Response to 41 MOTION for Summary Judgment of Indefiniteness filed by GOOGLE, INC.. (Manning, Susan)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

SKYHOOK WIRELESS, INC.,
Plaintiff,
CIVIL ACTION
NO. 10-cv-11571-RWZ

v.
GOOGLE INC.,
Defendant.

GOOGLE INC.’S REPLY IN SUPPORT OF
MOTION FOR SUMMARY JUDGMENT OF INDEFINITENESS

A/74548396.4/3005005-0000352152

TABLE OF CONTENTS
Page
I.
II.
III.

IV.

INTRODUCTION ............................................................................................................. 1
INDEFINITENESS IS AN ISSUE OF LAW TO BE RESOLVED BY THE
COURT .............................................................................................................................. 2
THE PATENTS-IN-SUIT ARE INDEFINITE, AND THEREFORE INVALID............. 3
A.
The ‘988 and ‘694 Patents are Indefinite and Invalid Because They Claim
Both a Database and a Method of Updating It....................................................... 3
B.
“Reference symmetry” and “avoid[s] arterial bias” cannot be read out of
the claims ............................................................................................................... 6
C.
The “Reference Symmetry” Limitations are Unintelligible. (‘988 patent,
claim 1 and ‘694 patent, claim 1)........................................................................... 9
D.
“Avoid[s] Arterial Bias” (‘988 patent, claim 1 and ‘694 patent, claim 1).......... 10
E.
The “Logic” Terms are Means-Plus-Function Limitations that are
Indefinite for Failure to Disclose a Corresponding Structure (‘988 patent,
claims 1-3) ........................................................................................................... 12
F.
“Rules” and “Predefined Rules” in the ‘897 Patent are Indefinite ...................... 13
G.
The Requirement of the ‘245 Patent that the Algorithm be “Suited” to the
Number of Identified Wi-Fi Access Points Calls for an Entirely Subjective
Determination ...................................................................................................... 14
CONCLUSION................................................................................................................ 15

-iA/74548396.4/3005005-0000352152

TABLE OF AUTHORITIES
Page(s)
CASES
ABB Automation, Inc. v. Schlumberger Resource Management Services, Inc.,
2003 WL 1700013 (D. Del. Mar. 27, 2003) ............................................................................12
Abbott Labs. v. Sandoz, Inc.,
566 F.3d 1282 (Fed. Cir. 2009)..................................................................................................4
Am. Med. Sys., Inc. v. Biolitec, Inc.,
666 F. Supp. 2d 216 (D. Mass. 2009) ........................................................................................2
Amgen, Inc., v. F. Hoffmann-La Roche Ltd.,
581 F. Supp. 2d 160 (D. Mass. 2008) ........................................................................................9
Amgen Inc. v. Hoffman-LA Roche Ltd.,
580 F.3d 1340 (Fed. Cir. 2009)..................................................................................................4
Apex, Inc. v. Raritan Computer, Inc.,
325 F.3d 1364 (Fed. Cir. 2003)................................................................................................12
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1328 (Fed. Cir. 2008)................................................................................................13
Blackboard, Inc. v. Desire2Learn, Inc.,
574 F.3d 1371 (Fed. Cir. 2009)................................................................................................13
Datamize, LLC v. Plumtree Software, Inc.,
417 F.3d 1342 (Fed. Cir. 2005)............................................................................................9, 15
Exxon Research & Eng’g Co. v. United States,
265 F.3d 1371 (Fed. Cir. 2001)..................................................................................................2
Fujitsu Ltd. v. Tellabs Operations,
— F. Supp. 2d —, 2011 WL 1261111 (N.D. Ill. Mar. 31, 2011) ..............................................2
Halliburton Energy Services, Inc. v. M-I, LLC,
514 F.3d 1244 (Fed. Cir. 2008)..............................................................................10, 11, 14, 15
Hoffer v. Microsoft Corp.,
405 F.3d 1326 (Fed. Cir. 2005)..............................................................................................7, 8
Hybritech, Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367 (Fed. Cir. 1986)..................................................................................................9
- ii A/74548396.4/3005005-0000352152

TABLE OF AUTHORITIES
(continued)
Page(s)
IPXL Holdings, LLC v. Amazon.com, Inc.,
430 F.3d 1377 (Fed. Cir. 2005)..................................................................................................6
K-2 Corp. v. Salomon SA,
191 F.3d 1356 (Fed. Cir. 1999)..........................................................................................11, 14
Lucent Techs. v. Newbridge Networks Corp.,
168 F. Supp. 2d 181 (D. Del. 2001).......................................................................................2, 3
Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995)......................................................................................................2
Miles Labs., Inc. v. Shandon Inc.,
997 F.2d 870 (Fed. Cir. 1993)....................................................................................................9
Personalized Media Commc’ns, LLC v. Int’l. Trade Comm’n,
161 F.3d 696 (Fed. Cir. 1998)....................................................................................................2
Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306 (Fed. Cir. 2008)..................................................................................................2
Rembrandt Data Techs., LP v. AOL, LLC,
641 F.3d 1331 (Fed. Cir. 2011)..................................................................................................6
Shatterproof Glass Corp. v . Libby-Owens Ford Co.,
758 F.2d 613 (Fed. Cir. 2005)..................................................................................................11
Stamps.com Inc. v. Endicia, Inc.,
2011 WL 2417044 (Fed. Cir. June 15, 2011) ..........................................................................13
SuperGuide Corp. v. DirecTV Enters.,
358 F.3d 870 (Fed. Cir. 2004)..................................................................................................12
Texas Instruments v. U.S. Intern. Trade Com’n,
988 F. 2d 1165 (Fed. Cir. 2003).................................................................................................7
Young v. Lumenis, Inc.,
492 F.3d 1336 (Fed. Cir. 2007)................................................................................................11
STATUTES
35 U.S.C. §§ 102 and 103 ............................................................................................................4, 8
35 U.S.C. § 112....................................................................................................................5, 12, 13

- iii A/74548396.4/3005005-0000352152

TABLE OF AUTHORITIES
(continued)
Page(s)
OTHER AUTHORITIES
3 Donald S. Chisum, Chisum On Patents, § 8.05[3] (2011)............................................................4
3 Donald S. Chisum, Chisum on Patents, § 8.03[7] (2011).............................................................2
Manual of Patent Examination Procedure § 2173.05(p)(I).............................................................5

- iv A/74548396.4/3005005-0000352152

I.

INTRODUCTION
Skyhook’s patents describe at length how the inventors identified a problem they called

“arterial bias” in prior art data collection methods, and how they believed this problem led to a
less accurate Wi-Fi based location system. The patents-in-suit also describe the inventors’
solution to the “arterial bias” problem: planning a systematic route through the target area
according to the Chinese Postman algorithm, and following this route while scanning for Wi-Fi
access points. This, according to the specification, allowed them to create “reference symmetry,”
and “avoid arterial bias.” As Google has shown, however, the claim language is flawed and
irreconcilable with these teachings. In response, Skyhook would have the Court simply delete the
“avoid[s] arterial bias” and provide “reference symmetry” limitations from the ‘988 and ‘694
patents. Skyhook Opp. at 18-19 n.10 (arguing that these limitations “do not create any additional
limitations in the claims and bear no weight in an infringement analysis”). But to “avoid arterial
bias” and provide “reference symmetry” was the point of the invention. In effort to rescue the
‘988 and ‘694 patents from indefiniteness, Skyhook would cut the heart out of them.
Skyhook’s argument that arterial bias and reference symmetry are superfluous in light of
the “recording multiple readings of the Wi-Fi access point at different locations around the Wi-Fi
access point” requirement, and its newfound assertion that the same requirement is a product-byprocess limitation, see Skyhook Opp. at 12, are clear admissions that the patents are
fundamentally about the particular methodology used for driving the target area while collecting
information about Wi-Fi access points. This supports Google’s readings of the “target area,”
“arterial bias,” and Location Terms. Skyhook cannot avoid the intrinsic evidence.
As to several other terms, Skyhook’s approach is to argue that the patents do not have to
be clear because the person of ordinary skill in the art would just know what to do, and just know
where to draw the line around what is or is not claimed. As Google shows below, this is
implausible, and in fact the claims are indefinite.

A/74548396.4/3005005-0000352152

II.

INDEFINITENESS IS AN ISSUE OF LAW TO BE RESOLVED BY THE COURT
There are no genuine issues of material fact that preclude this Court from ruling on

Google’s Motion for Summary Judgment of Indefiniteness. Definiteness is an issue of law that
can and should be resolved by the Court. Personalized Media Commc’ns, LLC v. Int’l. Trade
Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998). “[T]he same principles that generally govern claim
construction are applicable to determining whether allegedly indefinite claim language is subject
to construction.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008).
Skyhook argues that the differing views of Dr. Anthony S. Acampora and Skyhook’s
own expert, Dr. David Kotz, as to whether and how a person of ordinary skill would understand
the claims raises a genuine issue of material fact that precludes summary judgment of
indefiniteness. Opp. Br. at 2. Not so. “When legal experts offer their conflicting views of how
the patent should be construed, or where the legal expert’s view of how the patent should be
construed conflicts with the patent document itself, such conflict does not create a question of
fact[.]” Markman v. Westview Instruments, Inc., 52 F.3d 967, 983 (Fed. Cir. 1995). In Exxon
Research, for example, the Federal Circuit held that conflicting expert opinions as to the
understanding of a person of ordinary skill in the art did not create a genuine issue of material
fact. Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1376 (Fed. Cir. 2001); see
also Fujitsu Ltd. v. Tellabs Operations, — F. Supp. 2d —, 2011 WL 1261111, at *10 (N.D. Ill.
Mar. 31, 2011) (“factual questions purportedly raised by extrinsic evidence presented to the court
do not prelude summary judgment of indefiniteness”); Am. Med. Sys., Inc. v. Biolitec, Inc., 666
F. Supp. 2d 216, 223 (D. Mass. 2009) (“[C]ourts commonly rule on any asserted claim
indefiniteness when they construe patent claims.”) (citation omitted); 3 Donald S. Chisum,
Chisum on Patents, § 8.03[7] (2011) (“Federal Circuit decisions after Exxon Research recited
that definiteness as a ground for invaliding a patent claim is a legal conclusion. This makes a
definiteness challenge amenable to resolution on summary judgment.”). Although a court may
submit the underlying facts to a jury for an advisory verdict, that does not change Federal Circuit
precedent holding that indefiniteness is an issue of law. See Lucent Techs. v. Newbridge

-2A/74548396.4/3005005-0000352152

Networks Corp., 168 F. Supp. 2d 181, 244 (D. Del. 2001) (reviewing jury’s verdict on
indefiniteness de novo when considering defendant’s motion for judgment as a matter of law).
In any case, Dr. Kotz’s testimony contradicted his declaration in numerous respects. Even
to the extent he and Dr. Acampora disagree—and as shown below they agree on a great deal—
their differing views do not preclude the Court from ruling on indefiniteness as a matter of law.1
III.

THE PATENTS-IN-SUIT ARE INDEFINITE, AND THEREFORE INVALID
A.

The ‘988 and ‘694 Patents are Indefinite and Invalid Because They Claim
Both a Database and a Method of Updating It.

In its Opposition, Skyhook argues for the first time that the ‘988 and ‘694 patents are
product-by-process claims in which the claimed product is defined by the method of making it.
Skyhook Opp. at 12-13. This argument is in stark contrast to Skyhook’s previous claim that the
“recording multiple readings…” limitation was merely “a description of the position
information,” Skyhook Br. at 21, and its efforts to de-emphasize the data collection
methodology, see, e.g., id. at 6. In light of Skyhook’s assertion that the ‘988 and ‘694 patents
recite product-by-process limitations, its arguments that Google is reading in limitations from the
specification simply fall away. Even under Skyhook’s own reading of the patents, the
methodology of traversing the target area to record access point information is a defining aspect
of the claimed invention.
1

In addition to the flaws discussed below, Dr. Kotz’s testimony should be given little, if any,
weight because it is part of an obvious scramble by Skyhook to put its pre-existing legal
arguments into the mouth of an expert and thereby create a “fact” issue. Dr. Kotz had no role
whatsoever in formulating Skyhook’s claim constructions, including those on which he opines,
as he was not retained until well after Skyhook filed its opening claim construction brief.
Declaration of Catherine R. Murphy in Support of Google Inc.’s Reply In Support of Motion For
Summary Judgment Of Indefiniteness (“Second Murphy Decl.”), Ex. A at 40:9-11. He spent no
more than twenty, and perhaps as few as ten, hours total reviewing the four patents-in-suit,
reviewing Google’s and Skyhook’s opening claim construction papers, reviewing Dr.
Acampora’s declaration, discussing the case with counsel (he never spoke to the inventors or
anyone other than counsel), and editing his declaration. Id. at 33:1-34:18, 43:17-25. Dr. Kotz has
never separately reviewed the prosecution histories of the patents-in-suit, nor has he seen any of
the evidence submitted as exhibits in support of Google’s or Skyhook’s opening papers. Id. at
31:17-32:17, 44:8-45:20 Dr. Kotz’s only personal experience with Wi-Fi location is his
supervision of a single paper, on which a post-doctoral student and an undergraduate student are
the primary authors. Id. at 51:17-52:4, 56:13-57:7.

-3A/74548396.4/3005005-0000352152

Skyhook’s own expert recognizes this. Dr. Kotz testified, “I think the invention describes
a planned, structured method of collecting the information, such as driving all the streets and in
an effort to observe as many access points as possible from as many sides as possible.” Second
Murphy Declaration, Ex. B at 6:24-7:3; see also id. at 7:18:18:2, 23:22-24:3 (“Q. [W]hen you
say perform the invention, what exactly do you mean by that? A. I would mean collecting the
scanning data using some kind of a planned route that covers all of the streets or substantially all
the streets so that you can obtain a better sample of the access point and locations.”).
Should the Court determine that the ‘988 and ‘694 patents in fact recite product-byprocess claims, this will have several consequences for claim construction, infringement, and
invalidity.2 A product-by-process claim is a claim for a product, albeit one defined by the process
of making it. Amgen Inc. v. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009) (“[A]
product-by-process claim is not infringed by a product made by a process other than the one
recited in the claim.”). Such a claim is limited to the claimed process; in other words, to show
infringement a patentee must prove both that the product is the same as the one claimed, and that
it was produced using the process set out in the claims. Abbott Labs. v. Sandoz, Inc., 566 F.3d
1282, 1293 (Fed. Cir. 2009) (“process terms in product-by-process claims serve as limitations in
determining infringement”) (quotation and citation omitted).
Here, claim 1 in each of the ‘988 and ‘694 patents recite, and Skyhook emphasizes, that
the “calculated position information is obtained from recording multiple readings of the Wi-Fi
access point at different locations around the Wi-Fi access point.” But the common specification

2

As to invalidity under 35 U.S.C. §§ 102 and 103, product-by-process claims are valid only to
the extent the resulting product is novel and non-obvious. See 3 Donald S. Chisum, Chisum On
Patents, § 8.05[3] (2011) (“Even though a product may be claimed in terms of the process of
making it, the product still must be new in structural terms in order to meet the novelty
requirement.”) (citing cases). It is not enough to sustain a claim that the process of making it be
novel. See, e.g., Amgen, 580 F.3d at 1369-70 (“In determining validity of a product-by-process
claim, the focus is on the product and not on the process of making it. That is because of the ...
long-standing rule that an old product is not patentable even if it is made by a new process. As a
result, a product-by-process claim can be anticipated by a prior art product that does not adhere
to the claim’s process limitation.”).

-4A/74548396.4/3005005-0000352152

is clear that it is raw scan data—not the “calculated position information” derived from it—that
“is obtained from recording multiple readings.” Declaration of Susan Baker Manning (“Manning
Decl.”) (Dkt. 45), Ex. C at 10:8-36, 12:29-13:30. The ‘988 and ‘694 patent claims at most
describe part of the process of obtaining the underlying raw scan data; nothing in the claims
describes the complete process of actually creating the “calculated position information” from
that raw data. If the Court determines that the ‘988 and ‘694 patents are product-by-process
claims, the inventors’ clear failure to set out any complete process by which the “calculated
position information” could be “obtained” is another, separately sufficient reason to find the
claims indefinite and invalid. Application of Moore, 439 F.2d 1232, 1234 (C.C.P.A. 1971) (“‘We
view the claims before us as drawn too incomplete and therefore indefinite product-by-process
claims…. It is our view that the omission from the claims of process parameters, requisite to
yield the desired [product], renders the claims indefinite.’”) (quoting underlying PTO Board of
Appeals decision, which it reversed on other grounds).
That aside, if the Court determines that claim 1 in each of the ‘988 and ‘694 patents is a
product-by-process claim, that does not resolve the question of whether the claims as a whole
violate the prohibition on mixed apparatus and method limitations. A product-by-process claim,
like any other, is subject to the prohibition on mixing apparatus and method limitations. Manual
of Patent Examination Procedure § 2173.05(p)(I) (“A claim to a device, apparatus, manufacture,
or composition of matter may contain a reference to the process in which it is intended to be used
without being objectionable under 35 U.S.C. 112, second paragraph, so long as it is clear that
the claim is directed to the product and not the process.”) (emphasis added). Here, the
methodology in the claims is not just employed in the process of initially creating the database;
rather, the methodology must be employed over time to update the database.
Both the ‘988 and ‘694 patents require an ongoing correspondence between the database
and the target area such that the database has calculated locations for “substantially all Wi-Fi
access points in the target area.” Skyhook is wrong when it contends that whether the database
includes “substantially all Wi-Fi access points in the target area” need only be assessed “at the
-5A/74548396.4/3005005-0000352152

time the database was created.” Skyhook Opp. Br. at 25. Skyhook tellingly cites no law or
evidence, and its position is belied by the patents themselves. The patents recognize that the
number of Wi-Fi access points in the target area changes over time, and that the correspondence
between the database and the target area is to be maintained over time. Manning Decl., Ex. C at
3:3-6 (identifying old data as a problem in prior art databases, and stating, “The age of the access
point location is important since over time access points can be moved or taken offline.”), 5:3741 (database updated using “newly-discovered position information”), 12:21-28 (newer data
given greater weight than older data), 12:29-38 (describing updating of database), 13:26-30
(calculated location information to be stored along with a timestamp “to indicate freshness”).
The claim language is consistent with these teachings as it creates a present tense association
between “substantially all Wi-Fi access points” and the “target area,” indicating on-going
correspondence whenever infringement is to be measured. Also consistent is the ‘988 patent’s
requirement of “logic to add records to the database for newly-discovered Wi-Fi access points”
as well as logic to recalculate the positions of previously detected Wi-Fi access points based on
new scan data. Id. at claim 1. Because the ‘988 and ‘694 patents require the use of the claimed
method to update the database over time, they are invalid under § 112, ¶ 2. IPXL Holdings, LLC
v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); Rembrandt Data Techs., LP v. AOL,
LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011); see also Google Br. at 10-12; Google Opp. at 4-6.
B.

“Reference symmetry” and “avoid[s] arterial bias” cannot be read out of the
claims.

Skyhook argues for the first time in a footnote that the “reference symmetry” and
“avoid[s] arterial bias” limitations do no work. Skyhook Opp. at 18-19 n.10. So long as the other
limitations of the claim are met, the argument goes, “you will necessarily ‘avoid arterial bias’
and create ‘reference symmetry’” and the limitations can simply be read out of the claims. Id.
Although Skyhook is wrong, the argument is yet another admission that the routing method used
to collect scan data is central to the claimed invention. See Google Br. at 23-30 (discussing
“target area,” “arterial bias,” and the Location Terms).

-6A/74548396.4/3005005-0000352152

The “avoid[s] arterial bias” and “reference symmetry” requirements are limiting for two
reasons. First, they are separate requirements, central to the invention as presented to the PTO.
Having obtained the patent on the strength of these requirements, Skyhook cannot now excise
them from the patents. Skyhook analogies the “so that” language to a “whereby” clause, which
courts regard as non-limiting if it merely “states the result of the patented process. However,
when the ‘whereby’ clause states a condition that is material to patentability, it cannot be ignored
in order to change the substance of the invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326,
1329 (Fed. Cir. 2005). The Hoffer court held that a “whereby” clause was limiting because it set
forth an “element [that] is described in the specification and prosecution history as an integral
part of the invention.” Id. at 1330. In contrast, “[a] ‘whereby’ clause that merely states the result
of the limitations in the claim adds nothing to the patentability or substance of the claim.” Texas
Instruments v. U.S. Intern. Trade Com’n, 988 F. 2d 1165, 1172 (Fed. Cir. 2003).
Here, the avoidance of arterial bias and provision of reference symmetry were
fundamental to what the inventors were trying to achieve. See, e.g., Manning Decl., Ex. C. at
Abstract, 7:52-8:59, 9:48-10:4, Figs. 3-6, 11. The prosecution histories of the ‘988 and ‘694
patents confirm the importance of these limitations to the claimed inventions. Both applications
were originally rejected as unpatentable, and both issued only after the applicants amended the
limitations that set out the required methodology for traversing the target area, and specified the
avoidance of arterial bias and reference symmetry requirements. Id., Ex. G at GSHFED183 id.,
Ex. H at GSHFED297; see also generally Google Br. at 7-8, 28-30 (discussing prosecution
history).3 In amending the ‘988 patent claims, the applicants argued that their invention was
patentable because: “[B]y performing a planned audit, and avoiding arterial bias, applicants at
least achieve more complete information about access points in the target area, higher quality

3

Dr. Kotz opined that the scope of the amended claims as issued is the same as the claims as
unamended claims as filed—at least under Skyhook’s constructions. Second Murphy Decl., Ex.
A at 138:13-144:3. This casts doubt not only on Skyhook’s claim constructions, but more
broadly on the validity of the patents-in-suit under 35 U.S.C. §§ 102 and 103.

-7A/74548396.4/3005005-0000352152

estimates of access point locations, and reference symmetry.” GSHFED189; see also
GSHFED187-89. Having obtained the ‘988 and ‘694 patents by arguing that collecting data in a
specific way that avoided arterial bias and provided reference symmetry made the claims
patentable, Skyhook cannot now jettison those very limitations. Hoffer, 405 F.3d at 1329.
Second, a database in which the calculated location information was derived from scan
data “obtained from recording multiple readings of the Wi-Fi access point[s] at different
locations around the Wi-Fi access point[s]” can suffer from arterial bias and fail to provide
reference symmetry—even as Skyhook would read the relevant terms. Acampora Decl. ¶¶ 73-77
and 81-83; Second Murphy Decl., Ex. A at 124:16-128:25, 152:4-156:9. As Google has
previously shown, under Skyhook’s erroneous interpretation of the claims the calculated
locations could be based on any data “obtained from recording multiple readings of the Wi-Fi
access point at different locations around the Wi-Fi access point.” Google Opp. at 18-21. This
would include data obtained from the Random Method—the very method that the inventors
criticized as flawed because it resulted in arterial bias and lacked reference symmetry.
Dr. Kotz notably disagrees with Skyhook on the importance of the “avoid[s] arterial bias”
and “reference symmetry” limitations; he testified that the limitations are, in fact, critical to the
analysis. See, e.g., Second Murphy Decl., Ex. B at 7:18-18:2 (“Q. [C]an you practice the claimed
invention of the 988 patent, Claim 1, without planning a route? [objection] A. I’m finding it
difficult to think of any way you could accomplish this without planning the route because,
otherwise, you wouldn’t be able to say things like so that the multiple readings have reference
symmetry and so that the calculated position avoids arterial bias.”).4 Dr. Kotz in particular
testified that he was unable to draw a line between what would constitute “recording multiple
readings of the Wi-Fi access point at different locations around the Wi-Fi access point” and what

4

In addition to showing that the “arterial bias” and “reference symmetry” limitations are critical
to any analysis, this testimony weighs in favor of Google’s proposed constructions of the
Location Terms, and its alternative proposals for the “recording” terms, all of which include
concrete criteria by which the “recording multiple readings …” limitation might be judged.

-8A/74548396.4/3005005-0000352152

would not. Id., Ex. A at 121:22-124:15, 125:20-128:14, and 126:3-4 (“aroundness, if you will, is
maybe a matter of degree”). If even Skyhook’s expert cannot determine what is “recording
multiple readings of the Wi-Fi access point at different locations around the Wi-Fi access point”
as claimed, it cannot be that of reference symmetry and the avoidance of arterial bias are the
necessary result of that unknown and unknowable method. The limitations are not superfluous.
C.

The “Reference Symmetry” Limitations are Unintelligible. (‘988 patent,
claim 1 and ‘694 patent, claim 1)

Skyhook essentially concedes that the claims do not apprise one of skill in the art of the
difference between a situation with reference symmetry and a non-infringing one. Rather,
Skyhook’s argument is that the ‘988 and ‘694 patents need not do so because the reference
symmetry limitation is as clear as it can be. Skyhook Opp. at 15-18. Skyhook’s argument is
contrary to Federal Circuit precedent, and unsupported by the patents.
The Federal Circuit has stated, “if the claims, read in light of the specification, reasonably
apprise those skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits, the courts can demand no more[.]”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citation
and quotation omitted). Skyhook ignores the notice requirement. Skyhook Opp. at 15 (quoting
Hybritech in part). Nothing in Hybritech, or any other case5, justifies Skyhook’s abandonment of
the definiteness requirement. Claims must always give notice of the scope of the patent
monopoly. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
In any case, it is not correct that the claims are as clear as possible. The patents-in-suit
include teachings about reference symmetry; the claims are indefinite because those teachings
cannot be reconciled with what the claims say. Skyhook’s claim that “reference symmetry” in
the claims refers to the distribution of Wi-Fi access points around the user device, is
5

See Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (reciting rule, but no
analysis of the level of precision required in light of the subject matter); Amgen, Inc., v. F.
Hoffmann-La Roche Ltd., 581 F. Supp. 2d 160, 199 (D. Mass. 2008) (finding the claims definite
based on the particular evidence presented).

-9A/74548396.4/3005005-0000352152

fundamentally at odds with the requirement of claim 1 of the ‘988 patent that the raw scan data
“have reference symmetry relative to other Wi-Fi access points in the target area,” and in the
‘694 patent “the database records” themselves “provide reference symmetry”—with no
indication at all of a reference point. See Google Br. at 12-14; Google Opp. at 6-9. Skyhook
makes no effort to reconcile the teachings of the specification with the claim language; it merely
argues that its (incorrect) reading of the specification should trump what the claims actually say.
Skyhook’s other primary argument is that Figures 5 and 6 give examples of when
reference symmetry is present and when it is not, and that Figure 4 (“Chinese postman routing”)
shows better reference symmetry around a hypothetical user than does Figure 3 (“Example
scanning scenario showing arterial bias”). Skyhook Br. at 16-17. But that is not enough. These
examples at the extremes do not give a person of skill in the art any information about where to
draw the line between that which infringes and that which does not. When given less stark
examples, Dr. Kotz often simply could not determine whether “reference symmetry” was present
or not. Second Murphy Decl., Ex. A at 152:4-156:9 and 164:6-173:8 (discussing id. Exs. D & E);
see also Acampora Decl. ¶¶ 70-77; Halliburton Energy Services, Inc. v. M-I, LLC, 514 F.3d
1244, 1251 (Fed. Cir. 2008) (“Even if a claim term’s definition can be reduced to words, the
claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope.”).
D.

“Avoid[s] Arterial Bias” (‘988 patent, claim 1 and ‘694 patent, claim 1)

The phrase “avoid[s] arterial bias” is indefinite if viewed as a term of degree because
under such a reading it is impossible for a person of skill in the art to know where to draw the
line. As Skyhook points out, Figure 3 in both patents discloses an example showing arterial bias,
while Figure 4 shows data gathering using Chinese Postman routing that presumably “avoid[s]
arterial bias.” However, the question is not whether a person of skill in the art can recognize the
extremes; the question is whether a person of ordinary skill in the art can know the difference
between what does and what does not “avoid arterial bias” Halliburton, 514 F.3d at 1251. The
specification gives no information whatsoever about where to draw the line; only the claims
- 10 A/74548396.4/3005005-0000352152

address how much arterial bias may be present and they say that it must be “avoid[ed].” Unless
the claims are understood to require the elimination of arterial bias, they are indefinite.
Skyhook argues that any reduction—even a de minimus reduction—in the amount of
arterial bias constitutes “avoid[ance of] arterial bias” within the meaning of the claims. That is
contrary to the same extrinsic evidence Skyhook relies upon, which equates avoid with
“eliminate,” and to the specification, which also speaks of “avoid[ing]” arterial bias. See Google
Br. at 14-15; Google Opp. at 10-11. Moreover, Plaintiff’s proffered standard—“when the
claimed technique is practiced, arterial bias is reduced compared to when the claimed technique
is not practiced”—is unworkable, and essentially collapses into itself because there is no baseline
for the amount of arterial bias present when “the claimed technique” is used versus when it is
not. As even Skyhook’s expert admits, the amount of arterial bias varies when using the prior art
Random Method of data collection. Second Murphy Decl., Ex. A at 128:15-21 (arterial bias
varies in prior art collection methods); see also Google Br. at 19-20.
Shatterproof Glass Corp. v . Libby-Owens Ford Co., 758 F.2d 613 (Fed. Cir. 2005), and
Young v. Lumenis, Inc., 492 F.3d 1336 (Fed. Cir. 2007), do not aid Skyhook. Although those
cases recognize that the level of precision necessary may vary, they do not justify Skyhook’s
construction. The inventors could have claimed that the method of traversing the target area
“reduces arterial bias,” but they did not. So too could they have omitted any reference to
“avoid[s] arterial bias” and simply claimed the Chinese Postman routing technique. But they did
require that arterial bias be “avoid[ed].” Skyhook’ inventors should be held to their own
description of the invention. K-2 Corp. v. Salomon SA, 191 F.3d 1356, 1364 (Fed. Cir. 1999)
(“Courts do not rewrite claims; instead, we give effect to the terms chosen by the patentee.”).
E.

The “Logic” Terms are Means-Plus-Function Limitations that are Indefinite
for Failure to Disclose a Corresponding Structure (‘988 patent, claims 1-3).

Skyhook makes a number of flawed arguments in support of its assertion that the “logic”
terms are not subject to 35 U.S.C. § 112, ¶ 6. First, Skyhook argues the “logic” terms must recite
sufficient structure because both Google and Dr. Acampora have previously, and in unrelated

- 11 A/74548396.4/3005005-0000352152

contexts, used the word “logic” to convey structure.6 Because “logic” may relate to a structure in
one context does not mean the word “logic” always implies structure. Skyhook recognized as
much in its Opening Claim Construction Brief. Skyhook Br. at 28 (citing Wiley Electrical and
Electronics Dictionary (2004), which defines “logic” as both “functions performed by a
computer” (a functional definition) and “circuits in a computer” (a structural one)).
Skyhook’s argument that “‘logic’ in the context of computers has a meaning that is
clearly structural,” Skyhook Opp. at 4, is likewise misplaced. This assertion is directly contrary
to the court’s decision in ABB Automation, Inc. v. Schlumberger Resource Management Services,
Inc., 2003 WL 1700013, at *1 (D. Del. Mar. 27, 2003), which held each of the “logic” claims
that related “to a processor programmed to perform a specific function” were subject to meansplus-function analysis.7 Moreover, Skyhook’s reliance on SuperGuide Corp. v. DirecTV Enters.,
358 F.3d 870, 895 (Fed. Cir. 2004), is inapposite, as the patent there disclosed “nonvolatile
memory,” a well known structure; the ‘988 patent discloses no analogous structure.
The “logic” terms fail to satisfy the requirements of § 112, ¶ 6 as the specification does
not disclose any specific formula, algorithm, code, or other structure capable of performing the
recited function. See Google Br. at 19-21; Acampora Decl. at 35-49 (detailing failure to disclose
a corresponding structure); Kotz Decl. ¶¶ 62-85 (no contention that specific steps are disclosed);
Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008)
(patentee was required “to at least disclose the algorithm that transforms the general purpose
microprocessor to a special purpose computer programmed to perform the disclosed algorithm.”)
6

Skyhook relies on an out-of-context snippet from Dr. Acampora’s testimony in its effort to
discredit him. Skyhook Opp. at 7. Dr. Acampora testified he has computer programming
experience over several decades, and also supervises students engaged in computer
programming. Second Murphy Decl., Ex. C at 69:10-71:5. Dr. Kotz similarly distinguished his
work as a researcher from more practical tasks, and noted that he would have difficulty writing
the code necessary to run, for example, a device driver. Id., Ex. A at 102:12-103:2.
7
Contrary to Skyhook’s assertion, ABB Automation has not been “effectively overruled.”
Skyhook Opp. at 5. In Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364, 1373 (Fed. Cir.
2003), the Federal Circuit held that “circuit . . . connotes some structure,” and not that “logic,”
by itself, connotes sufficient structure to avoid the requirements of § 112, ¶ 6.

- 12 A/74548396.4/3005005-0000352152

(quotation omitted). Skyhook’s own expert conceded that an algorithm is analogous to the steps
of a recipe, Second Murphy Decl., Ex. B at 46:1-16, and no such steps are disclosed in the ‘988
patent. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“A
patentee cannot avoid providing specificity as to structure simply because someone of ordinary
skill in the art would be able to devise a means to perform the claimed function.”). Instead of
providing the requisite specifics, the patent generally describes some of the characteristics and
functions of the relevant algorithms. Acampora Decl. ¶¶ 87-122. This is insufficient under § 112,
¶ 6. Aristocrat Techs., 521 F.3d at 1336 (the specification must disclose either an algorithm to
perform the claimed function or “a detailed explanation” of how to “the claimed device would
perform the claimed function”); Stamps.com Inc. v. Endicia, Inc., 2011 WL 2417044, at *13
(Fed. Cir. June 15, 2011) (finding claim indefinite as specification failed to disclose “actual
algorithms necessary to calculate the transaction value”).
F.

“Rules” and “Predefined Rules” in the ‘897 Patent are Indefinite.

Skyhook’s position on the “rules” and “predefined rules” limitations in the ‘897 patent
continues to shift. Having first proposed to define “predefined rules” as “predefined rules,”
Murphy Decl., Ex. A at 14, but then suggesting a different definition in its papers, Skyhook Br.
at 35, Skyhook takes yet a third position in its Opposition. Recognizing that its limitless
construction is unsupportable given the written description and enablement requirements of
§ 112, Skyhook now argues for the first time that “rules” and “predefined rules” should not be
understood to have their ordinary meaning. Skyhook Opp. at 11; Kotz Decl. ¶ 91.
Rather, Skyhook now argues, the rules must be “based on” something about the recorded
location information. That is not what the claims say. Claim 1 requires only that “the recorded
location information for each of the observed WiFi access points” be used “in conjunction with
predefined rules to determine whether an observed WiFi access point should be included or
excluded from a set of WiFi access points.” Manning Decl., Ex. F, claim 1 (emphasis added).
The plain meaning of the language does not require that the “predefined rules” use some
characteristic of the recorded location information as the basis for determining which observed
- 13 A/74548396.4/3005005-0000352152

access points to include or exclude in the set of access points used to calculate the user device
location. K-2 Corp., 191 F.3d at 1364. To the contrary, the plain meaning of the language gives
no criteria whatsoever for that determination. Unless any and every possible decisional criteria is
a “rule” within the meaning of the ‘897 patent—a proposition Skyhook expressly denies—then it
is simply anyone’s guess what is or is not covered by the ‘897 patent. “Rules and “predefined
rules” are indefinite because they do not apprise a person of skill in the art of the scope of the
‘897 patent claims. The ‘897 patent is therefore invalid. Halliburton, 514 F.3d at 1251.
G.

The Requirement of the ‘245 Patent that the Algorithm be “Suited” to the
Number of Identified Wi-Fi Access Points Calls for an Entirely Subjective
Determination.

In an effort to save the ‘245 from indefiniteness, Skyhook contends that it “would be
readily apparent” to a person of skill in the art “[w]hether a given algorithm is suited for a given
number of access points.” Skyhook Opp. at 10. As with “arterial bias” and “reference
symmetry,” here too Skyhook attempts to distance itself from the ostensible point of novelty that
the Examiner relied upon in allowing the claims to issue. Manning Decl., Ex. I at GSHFED89.
Skyhook’s implausible assertion that a person of skill in the art would just simply know whether
any given algorithm would or would not be “suited” to a particular number of access points does
not mean the ‘245 patent is definite. It does, however, mean that the claims of the ‘245 patent
were at least obvious, and should never have issued.
As to the specific indefiniteness issue before the Court, Skyhook concedes that there is no
information in the patent that would inform the suitability determination. Skyhook Opp. at 11 n.8
(arguing that the patent need not teach “how the number of access points impacts what algorithm
is appropriate,” what the possible algorithms are, or identify any algorithm as suited or not suited
because these things “would be readily apparent to an ordinary artisan”); see also Second
Murphy Decl., Ex. A at 187:25-190:3 (the ‘245 patent does not provide any criteria for
suitability). Under Skyhook’s reading, it is entirely up to the person of skill to figure out what
algorithm, of all possible algorithms, is “suited” to a particular number of Wi-Fi access points

- 14 A/74548396.4/3005005-0000352152

and why it is suited. See Datamize, 417 F.3d at 1351 (specification must give “some standard”);
Halliburton, 514 F.3d at 1251 (claim must give “meaningfully precise” notice of its scope).
Skyhook nevertheless argues that “suited” is not subjective because the person of skill
can tell “[w]hich algorithm produces better location.” Skyhook Opp. at 10 (citing no evidence).
It is not so simple. First, as Dr. Kotz testified, suitability is often “a matter of degree,” Second
Murphy Decl., Ex. A at 195:17-21, and, there are numerous factors that a person of skill in the
art would need to consider and balance, id. 193:8-194:1. That balancing act necessarily depends
on subjective judgment calls. Second, the claim requires that the chosen algorithm be “suited to
the number of Wi-Fi access points,” not that it produce “better location.” The problem with
“suited” is that there is no criteria in the claims or specification by which suitability might be
judged, a flaw Dr. Kotz acknowledges. Second Murphy Decl., Ex. A at 187:20-191:1. Skyhook
would assume, rather than prove, that suitability depends on producing “better location.” In fact,
there could be any number of reasons why a particular algorithm might or might not be “suited”
to a number of access points, including faster processing time, ease of implementation, more
accurate location calculations, or simply the preferences of the system designer. The ‘245 patent
provides no insight whatsoever. Id.; Acampora Decl. ¶ 123.
IV.

CONCLUSION
Google respectfully requests entry of an order declaring the patents-in-suit indefinite and

invalid.

- 15 A/74548396.4/3005005-0000352152

Dated: October 18, 2011

Respectfully Submitted,
Google Inc.,
By its attorneys,
/s/ Susan Baker Manning
Jonathan M. Albano, BBO #013850
[e-mail]
BINGHAM McCUTCHEN LLP
One Federal Street
Boston, MA 02110-1726, U.S.A.
617.951.8000

Susan Baker Manning (pro hac vice)
[e-mail]
Robert C. Bertin (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
2020 K Street, NW
Washington, DC 20006-1806
202.373.6000
William F. Abrams (pro hac vice)
[e-mail]
BINGHAM McCUTCHEN LLP
1900 University Avenue
East Palo Alto, CA 94303-2223
650.849.4400

- 16 A/74548396.4/3005005-0000352152

CERTIFICATE OF SERVICE

I hereby certify that Google Inc.’s Reply In Support Of Motion For Summary
Judgment Of Indefiniteness filed through the ECF system will be sent electronically to the
registered participants as identified on the Notice of Electronic Filing (NEF) and paper
copies will be sent to those indicated as non-registered participants via U.S. Mail on October
18, 2011.
/s/ Susan Baker Manning
Susan Baker Manning

A/74548396.4/3005005-0000352152