Timebase Pty Ltd v. Thomson Corporation, The

Filing 275

MEMORANDUM in Support re 273 MOTION TimeBase's Motion To Clarify The Claim Construction As It Relates to Summary Judgment filed by Timebase Pty Ltd. (Attachments: # 1 Attachment Filed in Error-Exhibit(s) A - part 1, # 2 Attachment Filed in Error-Exhibit(s) A - part 2)(Hosteny, Joseph) Modified text on 8/19/2011 (jz).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MINNESOTA

TIMEBASE PTY LTD.,
vs.

Plaintiff,

THE THOMSON CORPORATION,
WEST PUBLISHING CORPORATION,
and WEST SERVICES, INC.,
Defendants.

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Civil Action Nos. 07-cv-1687 (JNE/JJG)
TIMEBASE’S MEMORANDUM IN
SUPPORT OF ITS MOTION TO CLARIFY
THE CLAIM CONSTRUCTION AS IT
RELATES TO SUMMARY JUDGMENT

The summary judgment oral argument on August 11, 2011, included a

discussion of “each” and how that word bears upon infringement. Because of some
of the remarks at the oral argument, TimeBase now moves for clarification.

TimeBase noted during argument that its earlier claim construction briefs

expressed concern about the construction of "each." In those briefs, TimeBase said

that the proposed construction of "each" was acceptable, so long as the construction
was not abused:

TimeBase will agree to that definition if the Court wants to give any
instruction to the jury, so long as the jury is instructed that “each” does
not apply to additional elements. (TimeBase’s Opening Memo, pages
12‐13).

(Document 155, pages 9-10).

The construction of a claim limitation could mistakenly be expanded to things

outside the scope of the claim. (Document 142, page 12).

The additional elements outside the scope of the claims are any portions of

text-based data that are in excess of the number required by claim 1, which recites
“a plurality of portions of text-based data….” (Exhibit A to TimeBase’s Response to

Defendants’ Motion for Summary Judgment, ‘592 patent, column 155, lines 3-4). The
defendants have not disputed that “plurality” requires only two.

The Court’s claim construction of “each” relied upon a dictionary definition of

“each” that is consistent with the meaning of “plurality”:

Defendants’ construction is consistent with the ordinary meaning of
each: “[U]sed to refer to every one of two or more people or things,”
New Oxford American Dictionary 544 (Angus Stevenson & Christine A.
Lindberg eds., 4th ed. 2010).

(Document 219, page 23). “Two or more” presents alternatives, because of the use

of “or.” Thus, the Court’s definition of “each” is satisfied by two of something. That is
the same as a “plurality.” The Court's construction can be used, so long as it is not
misused to make the claim require more than a plurality.

The defendants are, however, misusing the construction. They seek to make a

term in the preamble – "system" – a claim limitation. They argue that every portion
in the "system" must be encoded with a linking means.

But the defendants cannot make "system" into a claim limitation. Their claim

construction briefs include no argument that the preamble is a limitation.

(Document nos. 139 and 154). The defendants therefore conceded that the

preambles are not limitations. Thus, a “system” (claim 1) and a “medium” (claim 20)
are not claim limitations. For that reason alone, the claims cannot be construed as
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the defendants wish. (This brief discusses claim 1, but the comments apply equally
to independent claim 20 of the '592 patent).

Even if the preambles were limitations, the result would be no different,

because the defendants' argument, that a system requires encoding of every portion
in the system, is contradicted by the '592 patent. The Abstract on the first page of
the ‘592 patent says the system includes a plurality:

The present invention relates to a method, apparatus and system
for publishing electronic information. The system includes a plurality
of predefined portions of data with each predefined portion being
encoded with at least one linking means. For each predefined portion,
each predefined portion is stored and, where such predefined portion
has been modified, each such modified predefined portion is stored.
Further, the system has a plurality of attributes. Each attribute is a
point on an axis of a multidimensional space for organizing the data.
The plurality of predefined portions of the data may be encoded using
Standard Generalized Markup Language (SGML) or XML.

(Exhibit A, ‘592 patent, first page).

The language quoted above says the system includes a “plurality.” The same

sentence says that each member of the plurality is encoded. Syntactically, the use of
“with each” can only refer to the plurality. The next sentence says that each is
stored. The next sentence says there is a plurality of attributes, terminology

consistent with a plurality of portions. The final sentence says that the plurality may
be encoded.

The specification’s Summary of the Invention is consistent with the Abstract.

The Summary does not require “all” or “every.” The Summary says that what must
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be encoded are only those portions that are part of the plurality of predefined
portions:

In accordance with a first aspect of the invention, there is
provided a system for publishing electronic information, comprising:

a plurality of predefined portions of data with each predefined
portion being encoded with at least one linking means, and, for each
predefined portion, the each predefined portion is stored and, where
such predefined portion has been modified, each such modified
predefined portion is stored; and

a plurality of attributes, each attribute being a point on an axis of
a multidimensional space for organising the data.
In accordance with a second aspect of the invention, there is
provided a recording medium for publishing electronic information,
comprising:

a plurality of predefined portions of data with each predefined
portion being encoded with at least one linking means, and, for each
predefined portion, the each predefined portion is stored and, where
such predefined portion has been modified, each such modified
predefined portion is stored; and

a plurality of attributes, each attribute being a point on an axis of
a multidimensional space for organising the data.
In accordance with a third aspect of the invention, there is
provided a method for publishing electronic information, comprising:

providing a plurality of predefined portions of data with each
predefined portion being encoded with at least one linking means, and,
for each predefined portion, the each predefined portion is stored and,
where such predefined portion has been modified, each such modified
predefined portion is stored; and
providing a plurality of attributes, each attribute being a point
on an axis of a multidimensional space for organising the data.

(Exhibit A, ‘592 patent, column 3, lines 44-67 and column 4, lines 1-13).
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Therefore, even if “system” had been construed to be part of the invention,

further construing “system” to refer to all portions in a system or every portion in a
system contradicts the specification. The defendants' argument is without merit.

The Court's construction of "portion" supports TimeBase's argument here.

According to the Court’s construction, a portion is “a part of the text-based data to

be published.” (Document 219, page 29). Thus, a portion is text-based data. Claim 1
has antecedent bases for the recitations of portions of text-based data:
1.

A computer-implemented system for publishing an electronic
publication using text-based data, comprising:

a plurality of predefined portions of text-based data with each
predefined portion being stored;
at least one predefined portion being modified and stored;

a plurality of linking means of a markup language, each
predefined portion of said text-based data and said at least one
modified predefined portion of text-based data being encoded with at
least one linking means; and

a plurality of attributes, each attribute being a point on an axis of
a multidimensional space for organising said plurality of predefined
portions and said at least one modified predefined portion of said textbased data.

“[S]aid text-based data” in the third limitation refers to its antecedent in the first

limitation, that is, “text-based data” in the “plurality of predefined portions of text-

based data.” The references to portions after the “plurality of predefined portions of
text based data” are consistent: (1) at least one predefined portion;” (2) “each

predefined portion of said text-based data;” (3) “said at least one modified portion
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of said text-based data,” and (4) “said plurality of predefined portions….” The claim
repeatedly recites pluralities, and the first limitation – not the preamble – is the
antecedent.
too:

The defendants’ argument would create major inconsistencies in the claims,
• There are only a “plurality of attributes.” Thus, if all portions in a
system were a limitation, the attribute limitation would be
inconsistent, because not every portion could have an attribute.
• If all portions in a system were a limitation in this claim, not
every portion could be encoded, because the claim requires only a
“plurality of linking means.” Again, there would be an inconsistency in
the claim. There would have to be linking means for all portions,
otherwise all the portions in the system could not be encoded.
• If all portions in a system were a limitation in this claim, not all
of them could be organized. As the claim says, only a plurality need be
organized.

As the defendants would have it, claim 1 would require that every one of the

millions of portions of text-based data in the Westlaw system must be encoded with
a linking means. But claim 1 requires only a plurality (two) of linking means, and
only a plurality (two) of attributes. With the defendants’ construction, claim 1 is

rendered nonsensical: The latter three limitations of the claim, reciting pluralities,
would be inconsistent with the first limitation, as that limitation is interpreted by

the defendants. If interpreted as the defendants wish, it would be impossible to have
millions of encoded portions with only two linking means and only two attributes. It
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would be impossible to organize more than two of the required millions of portions
in multidimensional space.

Claims are invalid if they do not comply with § 112. The defendants’

argument would likely render claim 1 indefinite or not enabled. Such an argument

requires clear and convincing evidence, because each claim of a patent is presumed
to be valid. 35 U.S.C. § 282. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1347-48 (Fed. Cir. 2005) held:

In this regard it is important to note that an issued patent is
entitled to a statutory presumption of validity. See 35 U.S.C. § 282
(2000). “By finding claims indefinite only if reasonable efforts at claim
construction prove futile, we accord respect to the statutory
presumption of validity and we protect the inventive contribution of
patentees, even when the drafting of their patents has been less than
ideal.” Exxon Research & Engineering, 265 F.3d at 1375 (citation
omitted). In this way we also follow the requirement that clear and
convincing evidence be shown to invalidate a patent. See Budde v.
Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).

See also, S3 Inc. v. nVidia Corp., 259 F.3d 1364, 1367 (Fed. Cir.
2001). (“The claims as granted are accompanied by a presumption of
validity based on compliance with, inter alia, § 112 ¶2. Budde v. HarleyDavidson, Inc., 250 F.3d 1369, 1376, 58 USPQ2d 1801, 1806 (Fed.Cir.
2001).”).

The defendants’ argument -- that every one of the millions of portions in their

system must be encoded with a linking means -- would destroy a claim that the

experts in the Patent Office have twice reviewed and twice allowed. The defendants
told this Court to rely upon the reexaminations by the Patent Office, because of its

expertise. (See pages 1 and 2 of TimeBase’s Memorandum in Support of its Motion

for Summary Judgment of No Invalidity, document 246). The defendants should be
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held to their reliance on the examiners, who twice approved the claims of the ‘592
patent.

The defendants' contention is at odds with "comprising" in claim 1. Claim 1 is

written in open-ended form. “Comprising” in its preamble means that additional

structure, in addition to that recited in the claim, is permitted. Cias, Inc. v. Alliance

Gaming Corp., 504 F.3d 1356, 1359-61 (Fed. Cir. 2007) (“comprising” is open-ended
and means including but not limited to). The additional structure is irrelevant to
infringement. Id. The phrase “consisting of” is different; it is restrictive, meaning
that the invention includes only what is recited in the claim. Id.

Novartis Vaccines and Diagnostics, Inc. v. Wyeth, 2011 U.S. Dist. Lexis 45643

(E.D. Tex. April 26, 2011) faced a claim construction issue that is instructive here.

We first describe the case in some detail before showing how its reasoning applies.
The claim in Novartis was from its ‘620 patent, for a recombinant protein to

treat hemophilia. The preamble of the claim recited in part:

74. A host cell comprising nucleic acid for expression of a
recombinant protein . . . .
Claim 74 went on to recite in part:

wherein said recombinant protein consists of a first amino
acid sequence which consists of an amino acid sequence having at
least 90% sequence identity with the contiguous amino acid sequence
of amino acids 1 to 740 . . . .
and a second amino acid sequence which consists of an
amino acid sequence having at least 90% sequence identity with the
contiguous amino acid sequence of amino acids 1649 to 2332 . . . .
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2011 U.S. Dist. Lexis 45643, *4 (emphasis added). The claim recites “said”

recombinant protein consisting of two amino acids, each of which consists of

something distinct from the other amino acid. Note that "recombinant protein"

appears in the preamble, and "said recombinant protein" appears in a limitation.
Thus, a phrase in Novartis' preamble is a limitation, unlike "system" in the '592
patent.

Wyeth argued that the restrictive language “consists of” meant that the host

cell had to contain two, and only two, amino acids. Id., *17-18.
The court rejected Wyeth’s contention:

As with the previous claim term, Wyeth seeks to improperly add
a limitation to the claim language. The claim language of claim 74
clearly calls out a "host cell comprising . . . a recombinant protein" and
"wherein said recombinant protein consists of . . ." '620 Patent, 59:6660-2 (emphasis added). Therefore, the "comprising" phrase is used in
connection with the "host cell" and the "consists of" phrase is used with
respect to the "recombinant protein." Wyeth is correct that the
"consists of" phrase is a closed-ended transitional phrase and that
excludes any elements, steps, or ingredients not specified in the claim.
However, Wyeth's construction seeks to limit the "host cell," which is
modified by the "comprising" transitional phrase, exclusively to the
two amino acid sequences called out in the claim. Instead, it is only the
"recombinant protein," which is modified by the "consists of"
transitional phrase, that should be limited to the two amino acid
sequences. Wyeth's construction replaces "comprising" (which follows
the "host cell" in the claim language) with "consisting of." That is
improper. Because of the "comprising" language, the "host cell" is not
limited to only the recombinant protein containing the two amino acid
sequences.

Id., *19-20.

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The host cell in Novartis is analogous to the system in the preamble of claim 1

of the ‘592 patent. The two amino acids consisting of specific things are analogous to
the plurality of predefined portions of text-based data, though “consisting of” is

more restrictive in meaning than “plurality.” Here is a diagram comparing the two
situations:

The system recited in the ‘592 claim 1 preamble cannot be confined to

predefined portions of text-based data where every one of the portions in the

system is encoded with a linking means. “Comprises” means that the system may

include more, that is, portions which have no linking means whatsoever. Otherwise,
the scope of claim 1 of the ‘592 would be contorted into the same meaning that

Wyeth sought for the meaning of claim 74 in Novartis. “Comprising” with its openended meaning would be amputated from Claim 1 of the ‘592 patent. The system
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would have to “consist of” only predefined portions of text-based data, every one of
them being encoded with a linking means.

In fact, claim 1 of the ‘592 uses “plurality,” not “consisting of.” There is,

therefore, even less reason to artificially confine the system, and more reason to
give weight to “comprising” in the preamble of claim 1.

The defendants misstate the law. The defendants’ hearing slide show quotes

page 1332 of Bowers v. Baystate Technologies, Inc., 320 F.3d 1317, 1332 (Fed. Cir.

2003): “To read Bowers statements too strictly would exclude from claim scope the
preferred embodiment of the ‘514 patent—a disfavored result.” But the defendants
did not include the Court's language preceding this conclusion. Here is the
defendants’ quote in context:

During reexamination, Mr. Bowers noted that each group of the
Keymaster template did not correspond to a main-menu item. With
respect to those groups that did correspond to main-menu items, Mr.
Bowers argued that those did not satisfy claim paragraphs c and d. Mr.
Bowers thus admitted that a set of Keymaster template groups satisfy
claim paragraph b, but he then distinguished them in view of
paragraphs c and d. Specifically, Mr. Bowers stated: "Each of the groups
of the Keymaster template does not correspond to one selectable item
of the main menu of the Cadkey system." Baystate would read this
statement to mean that the claim's reference to a "plurality" of
groups on the template encompasses all groups on the template.
In other words, Baystate reads "each" in several of Bowers'
statement to mean "all." The claim, however, uses the term
"plurality," meaning "comprising, or consisting of more than one."
The Oxford English Dictionary (2d ed. 1989). Thus, Bowers'
references to "each" refers to the "at least two groups" required
by the claims. To read Bowers statements too strictly would exclude
from claim scope the preferred embodiment of the '514 patent--a
disfavored result.
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Bowers, 320 F.3d at 1332 (emphasis added). The defendants have not fairly cited
Bowers. It squarely supports TimeBase.

The defendants cited the wrong patent in ResQNet.com, Inc. v. Lansa, Inc., 346

F.3d 1374 (Fed. Cir. 2003). They rely on the ‘961 patent in that case, which does not
use “plurality.” TimeBase pointed to the other patent (the ‘608) in ResQNet, which
does recite a plurality. The defendants ignored the ‘608 patent, probably because

the CAFC said “This difference [between the two patents] is significant.” The CAFC

ruled that “each of a plurality of fields” means “each of at least two fields.” ResQNet,
346 F.3d at 1382. The defendants’ own case puts their claim construction and
summary judgment argument in the dustbin.

The defendants cited Board of Regents of the Univ. of Tex. Sys.v. BENQ Am.

Corp., 533 F.3d 1362 (Fed. Cir. 2008), but that case relied on a specific estoppel in
the prosecution history. Id., at 533 F.3d 1369-70 . The defendants cited Lucent

Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008). But that case did

not involve use of “plurality” in the claim limitation in dispute, and the decision also

relies upon prosecution history estoppel. Id., 525 F.3d at 1213 and 1217-18. There is
no prosecution history estoppel here.

The defendants cite Mangosoft, Inc. v. Oracle Corp., 2004 WL 2193614 (D.N.H.

2004), but that decision said that “not all computers on a particular network must
participate in the system described in the ‘371 patent.” Id., at *6.
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The defendants cite In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009). Skvorecz

applied for reissue of his claim 1. Id., 580 F.3d at 1265. The proposed reissue claim
recites "a first rim" and "at least two wire legs" Id. Each wire leg must have "two

upright sections." Id. The claim subsequently recites "a plurality of offsets located
either in said upright sections of said wire legs or in said first rim." Id. (Emphasis
added).

The "at least two wire legs" is the antecedent for "said wire legs." The "first

rim" is the antecedent for "said first rim." The "two upright sections" is the

antecedent for "said upright sections." The defendants ignore the antecedent

relationship between two claim limitations in Skvorecz. His preamble ("A wire

chafing stand comprising….") is not a limitation. The defendants likewise ignore the
antecedent relationships between claim limitations in claim 1 of the '592. Instead,

the defendants seek to make "each" in '592 claim 1 refer to the preamble, which is
not a limitation, and therefore not an antecedent. Skvorecz supports TimeBase.

The defendants do not have one case holding that a plurality recited in a claim

limitation necessarily includes everything in a system recited only in a preamble.

A question arises whether a court can modify its claim construction. We do

not have a transcript of the hearing, but the Court may have indicated that it did not
have the ability to modify its construction, at least absent a motion by TimeBase. A

court may indeed modify its claim construction. Pressure Products Medical Supplies,
Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010) (“As this court has
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recognized, ‘district courts may engage in a rolling claim construction, in which the

court revisits and alters its interpretation of the claim terms as its understanding of
the technology evolves.’”)(quoting Pfizer, Inc. v. Teva Pharms., USA, Inc., 429 F.3d

1364, 1377 (Fed. Cir. 2005)); see also Utah Med. Prods., Inc. v. Graphic Controls Corp.,
350 F.3d 1376, 1381-82 (Fed. Cir. 2003) (holding that the district court did not err
in amending its claim construction during oral arguments for pretrial motions
nearly two years after the original construction). A court may also reserve

construction until after evidence is heard. Johns Hopkins Univ. v. CellPro, Inc., 152
F.3d 1342, 1349 (Fed. Cir. 1998).

To remove any doubt, TimeBase moves that the Court modify its claim

constructions to accord with those set forth in TimeBase's claim construction briefs,
documents 142 and 155.

A linking means should be construed to include code as well as markup. To

the extent the construction excludes anything but markup, the construction conflicts
with claims such as claim 9 (“wherein said linking means is a code or markup”),

claim 10 (“wherein said at least one linking means comprises an identification code
for said predefined portion”). See claim 27 as well. Its reference to “wherein said

linking means comprises any piece of information additional to the body of the
text-based data” is broader than just markup. See pages 30 and 31 of TimeBase’s
Response to Defendants’ Motion for Summary Judgment.
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The defendants propose that any linking means must appear in blue

underlined text within the window containing the block of text. That is incorrect.

Claim 1 says "encoded with," not "encoded in," or "encoded within." Claims 8, 27 and
47 refer to "said linking means comprising information additional to the body of the
text-based data." (Exhibit A, col. 155, ll. 37-39, col. 156, ll. 49-51, and col. 158, ll. 1214).

TimeBase referred at the hearing to claim 8 and to the specification to the

effect that markup need not be in the text itself. Rather, the markup can be separate,
stored in its own field in a database, away from the field containing the text. The
specification reference is at column 14, lines 23-50 of Exhibit A, the ‘592 patent:
A relational database consisting of records consisting of fields
can be created with one and only one record per suitable piece or block
of text where the actual text of each suitable piece or block of text is the
content of one field of the above record and where each item of the
markup is assigned its own field in the above record.
For example, a version of Section 6 of the Income Tax
Assessment Act (ITAA) 1936 may be stored as a record in the above
relational database. The first field of that record contains the actual
text of that version of Section 6. The next field identifies it as Section 6
of the ITAA, the next field gives the date this version came into being,
the next field contains the section of the amending act that created this
particular version, the next field contains the day this version became
superseded, another field contains the subject(s) this version
addresses, another field contains the case(s) that have addressed this
version of section 6 and so on. Storing the data in this way allows
multidimensional database techniques to be applied to the data.

Databases are recited in claims 11, 12, 30, 31, 50 and 51. of the '592 patent (Exhibit
A, col. 155, ll. 47-52, col. 156, ll. 62-64, and col. 158, ll. 22-27). In claims 11, 30, and
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50, the "said plurality of predefined portions of said text-based data" is in a "first

database." The attributes are in a different "second data base." The markup does not
have to be in the portion. They can even be in separate databases.

TimeBase therefore moves that the Court adopt the constructions proposed

by TimeBase or, at a minimum, clarify its constructions of “each” and “linking
means” as follows:

Each: Applies only to the plurality of predefined portions of text-based data,

not to every portion in the system as a whole, or to all portions in the system.
Linking means: Includes code as well as markup.

August 18, 2011

/s/ Joseph N. Hosteny
Joseph N. Hosteny
Arthur A. Gasey
Robert A. Conley
Niro, Haller & Niro
181 West Madison Street, Suite 4600
Chicago, IL 60602
Telephone: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]
Email: [e-mail]
Michael R. Cunningham
Attorney No. 20424
Gray, Plant, Mooty,
500 IDS Center
80 South Eighth Street
Minneapolis, MN 55402

Telephone: [phone]
Fax: [phone]
Email: [e-mail]
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