Web Tracking Solutions, Inc. et al v. Google, Inc.

Filing 61

NOTICE by Google, Inc. (April 29, 2010 Claim Construction Presentation) (Curran, Patrick)

Claim Construction Hearing

Web Tracking Solutions, LLC and Daniel Wexler v. Google Inc.
Claim Construction Presentation of Defendant Google Inc.
U.S. District Court for the Eastern District of New York Case No. 1:08cv03139(RRM)(RER) April 29, 2010
1

'409 Patent: Background 409

2

The '409 Patent

3

Summary of the '409 Patent The patent was filed in October 1996. The patent contains eleven claims:
Three independent claims (1, 7, and 9) Eight dependent claims (26, 8, 1011)

Plaintiffs are currently asserting every claim in the '409 patent.

4

Summary of the '409 Patent
The patent illustrates the interaction between these parties.

5

Summary of the '409 Patent
In Claim 1, the accounting service is represented as the "fourth Web site."
Party Accounting Service Reference in Claim Fourth Web Site

6

Summary of the '409 Patent
In Claim 1, the advertiser is represented as the "third Web site."
Party Accounting Service Reference in Claim Fourth Web Site

Advertiser

Third Web Site

7

Summary of the '409 Patent
In Claim 1, the two publishers are represented as the "first Web site" and the "second Web site."
Party Accounting Service Reference in Claim Fourth Web Site

Advertiser

Third Web Site

First Web Site Publishers Second Web Site

8

The '409 Patent Used Existing Technologies
The '409 Patent did not disclose any new technology. It used existing technologies to carry out a "new " business method. For example, before the '409 Patent, the Internet had already been invented and was already widely used.

'409 Patent, Col. 1, Ln. 913

9

The '409 Patent Used Existing Technologies
Network protocols, Web server software, and details about network connections were already wellknown before the patent.

'409 Patent, Col. 3, Ln. 1521

10

The '409 Patent Used Existing Technologies
Internet advertising was already widespread when the patent was filed.

'409 Patent, Col. 1, Ln. 1420

11

The '409 Patent Used Existing Technologies
Before the '409 Patent, advertisers and publishers already knew how to track "clicks" on Internet advertisements.

'409 Patent, Col. 2, Ln. 718
12

The '409 Patent Used Existing Technologies
The only change between the prior art and the patent is the use of a "third party" to track clicks.

13

The '409 Patent Used Existing Technologies
WTS admits that before the patent, publishers were using redirect response messages to count clicks.

WTS Technology Tutorial Ex. A, at 28
14

The '409 Patent Used Existing Technologies
WTS admits that the patent uses redirect response messages in the same manner as the prior art.

WTS Technology Tutorial Ex. A, at 29
15

The '409 Patent Used Existing Technologies
The technical steps in the prior art and in the patent are identical.

16

The Sole Point of Novelty Alleged in the '409 Patent Is a Business Method

'409 Patent, Abstract

'409 Patent, Col. 2, Ln. 3135

17

The Sole Point of Novelty Alleged in the '409 Patent Is a Business Method
The patentability of business methods is currently under review by the United States Supreme Court in Bilski v. Kappos, No. 08964 (argued November 9, 2009).

18

Claim Claim Construction Guidelines

19

Law of Claim Construction
"Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Phillips v. AWH Corp.,
415 F.3d 1303, 1314 (Fed. Cir. 2005) (internal citations omitted)

20

Claims of a Patent Define the Invention
It is undisputed that "it is a `bedrock principle' of patent law that the claims of a patent define the invention [and] the words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotes omitted)(See Pl. Opp. Br. at 1)

"[T]he `ordinary meaning ' of a claim term is its meaning to the ordinary artisan after reading the entire patent." Phillips v. AWH Corp.,
at 415 F.3d at 1321 (Fed. Cir. 2005)

21

Intrinsic Evidence: The Specification Is the `Single Best Guide' to a Claim's Meaning
"[T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (internal citations omitted)

" The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history." Id.

22

Claims Are Appropriately Limited to the Only Disclosed Embodiment in the Patent
" The district court correctly observed that the only host interface described in the specification is a direct parallel bus interface.... Although claims need not be limited to the preferred embodiment when the invention is more broadly described, neither do the claims enlarge what is patented beyond what the inventor has described as his invention." Inpro II Licensing, S.A.R.L. v. TMobile, Inc.,
450 F.3d 1350, 135457 (Fed. Cir. 2006)

" The specification shows only a structure whereby the restriction ring is `part of ' the cover, in permanent attachment. This is not simply the preferred embodiment; it is the only embodiment." Toro Co. v. White Consol. Indus., Inc.,
199 F.3d 1295, 1301 (Fed. Cir. 1999)

" The only embodiment described in the '669 patent specification is the characterbased protocol, and the claims were correctly interpreted as limited thereto." Wang Labs., Inc. v. Am. Online, Inc.,
197 F.3d 1377, 138283 (Fed. Cir. 1999)

23

The Inventor May Limit Scope of Claim During Prosecution

"[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 invention in the course of prosecution, making the claim scope narrower than it would otherwise be."
Phillips v. AWH Corp.,
415 F.3d 1303, 1317 (Fed. Cir. 2005) (internal citations omitted)

24

Characterization of the "Present Invention" Limits the Claim Terms

"When a patent thus describes the features of the `present invention' as a whole, this description limits the scope of the invention."
Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1308 (Fed. Cir. 2007)

25

Characterization of the "Present Invention" Limits the Claim Terms
The Federal Circuit routinely holds that claim terms are limited by the patentee's characterization of the "present invention." Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (construing a term to include fuel filter because "[o]n at least four occasions, the written description refers to the fuel filter as `this invention' or `the present invention'"). SciMed Life Sys. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001) ("[T]he characterization of the coaxial configuration as part of the `present invention' is strong evidence that the claims should not be read to encompass the opposite structure.").
26

Patentee Cannot Reclaim Subject Matter Given Up to Obtain the Patent Claims
" The doctrine of prosecution disclaimer is well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution." Omega Eng'g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003)

"A patentee may not state during prosecution that the claims do not cover a particular device and then change position and later sue a party who makes that same device for infringement. The prosecution history constitutes a public record of the patentee's representations concerning the scope and the meaning of the claims, and competitors are entitled to rely on those representations when ascertaining the degree of lawful conduct." Springs Window Fashions LP v. Novo Indus., L.P.,
323 F.3d 989, 995 (Fed. Cir. 2003) (internal citations omitted)
27

Extrinsic Evidence: Dictionaries and Expert Testimony Are of Secondary Importance

"[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language."
Phillips v. AWH Corp.,
415 F.3d 1303, 1317 (Fed. Cir. 2005) (internal citations omitted)

28

Extrinsic Evidence Is Less Reliable, Less Relevant, and Subject to Bias
"[E]xtrinsic evidence by definition is not part of the patent and does not have the specification's virtue of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning. Second, while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent." Phillips v. AWH Corp.,
415 F.3d 1303, 1318 (Fed. Cir. 2005) (internal citations omitted) (emphasis added)

29

Plaintiffs Assert Improper Claim Construction Standards
Plaintiffs employ a claim construction methodology that the Federal Circuit has rejected Plaintiffs cite a broad dictionary definition of a claim term, conclude that the specification contains no express disavowal of that definition, and then asserts that the broad dictionary definition is the correct construction The Federal Circuit emphatically rejected this approach in its en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005)

30

Phillips Rejected Texas Digital
"While the [Texas Digital] court noted that the specification must be consulted in every case, it suggested a methodology for claim interpretation in which the specification should be consulted only after a determination is made, whether based on a dictionary, treatise, or other source, as to the ordinary meaning or meanings of the claim term in dispute. Even then, recourse to the specification is limited to determining whether the specification excludes one of the meanings derived from the dictionary, whether the presumption in favor of the dictionary definition of the claim term has been overcome by an `explicit definition of the term different from its ordinary meaning,' or whether the inventor `has disavowed or disclaimed scope of coverage by using words or expressing a manifest exclusion or restriction, representing a clear disavowal of claim scope.'"

Phillips v. AWH Corp.,
415 F.3d at 1320 (Fed. Cir. 2005)
31

Phillips Rejected Texas Digital

"In effect, the Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal.... That approach, in our view, improperly restricts the role of the specification in claim construction." Phillips v. AWH Corp.,
415 F.3d at 1320 (Fed. Cir. 2005)

32

Phillips Rejected Heavy Reliance on Dictionaries, Divorced From Intrinsic Evidence
" The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the `ordinary meaning ' of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on its dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the claim term in the abstract, out of its particular context, which is the specification." Phillips v. AWH Corp.,
415 F.3d at 1321 (Fed. Cir. 2005)

33

Problem With Plaintiffs' Claim Construction Approach

" The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive."
Phillips v. AWH Corp.,
415 F.3d at 1321 (Fed. Cir. 2005)

34

Plaintiffs Assert Improper Claim Construction Standards
Plaintiffs also assert that the prosecution history must contain "clear and express disavowal" in order to be relevant for interpretation of claims This is contrary to the law
­ The prosecution history should be considered because it can "inform the meaning of the claim language by demonstrating how the inventor understood the invention." Phillips v. AWH Corp.,
415 F.3d at 1317 (Fed. Cir. 2005) (citation and quotations omitted)

­ "[A] court should also consider the patent 's prosecution history," which can "inform the meaning of the claim by demonstrating how the inventor understood the invention" and aid the court in excluding "any interpretation that was disclaimed during prosecution." Id.
35

The Inventor's Statements Against Interest Are Relevant to Claim Construction
It is not proper to rely on selfserving testimony by an inventor during claim construction
­ Bell & Howell Document Mgmt. Prods. Co. v. Altek Sys. 132 F.3d 701, 706 (Fed. Cir. 1997) (selfserving inventor testimony is dangerous because it may be an "after thefact attempt to state what should have been part " of the patent application)

Here, however, Mr. Wexler 's testimony contains statements against interest and is therefore relevant
­ Evans Med. Ltd. v. American CynamidCo., 11 F.Supp.2d 338, 350 (S.D.N.Y. 1998), aff'd 215 F.3d 1347 (Fed. Cir. 1999) (allowing defendant to use inventor 's deposition testimony where it was a "clear " and "positive" statement "that the position advanced by defendants as to the meaning of...the claims of his patents is absolutely correct, and that the construction for which plaintiffs contend is plainly wrong.") BristolMyers Squibb Co. v. Teva Pharmaceuticals USA, Inc., 288 F. Supp. 2d 562, 586 (S.D.N.Y. 2003) (" Testimony against a patentee's own interest, however, is perhaps the `most persuasive extrinsic evidence.'")

­

36

Disputed Disputed Terms in the '409 Patent

37

Summary of the Issues
1) The thirdparty accounting service must be an unbiased source of statistics (i.e., its revenues do not depend on its accounting figures). 2) The browser must obtain the "first uniform resource locator " from the publisher 's Web site. 3) The accounting service redirects the user 's Web browser to the advertiser 's Web site. 4) A "banner " ad is an image ad, not a text ad.
38

How "Independent" Is the Accounting Service?

39

The Accounting Service Must Be Financially Independent

Google's and WTS's constructions use similar language, but they have markedly different meanings. Google position: the accounting service is financially independent WTS position: the accounting service is separately owned and operated
40

The Accounting Service Must Be Financially Independent
WTS agrees that the accounting service must be a "thirdparty" that is "independent."

Google's Construction
Fourth Web site: A Web site owned and operated independently from the first, second, and third Web sites, and that performs the function of an unbiased third party accounting and statistical service

Plaintiffs' Construction
Fourth Web site: A Web site that is owned and operated by an entity that is independent from the entity(s) that own and operate the first, second, and third Web sites, and that performs the function of a thirdparty accounting and statistical service

41

According to the Specification, the Accounting Service Must Be Financially Independent
The patent specification expressly requires a "third party" accounting service.

'409 Patent

42

According to the Specification, the Accounting Service Must Be Financially Independent
The patent admits that advertisers and publishers already knew how to track "clicks" by October 1996. The supposed invention was a method for "unbiased" accounting ­ i.e., accounting by a party with no financial interest in the statistics.

'409 Patent, Col. 2, Ln. 718

43

According to the Specification, the Accounting Service Must Be Financially Independent
The patent states that it addresses the need for an "unbiased" source of statistical and accounting information.

'409 Patent, Col. 2, Ln. 3135

44

According to the Prosecution History, the Accounting Service Must Be Financially Independent
Mr. Wexler filed his patent application on October 11, 1996. The Patent Office rejected all claims in that application on July 13, 1998. The patent examiner found that the claims were "clearly anticipated by any single one" of several prior art references that disclosed a "third party which logs specific data concerning the path which a user took to get to that location, and a redirection operation which sends the user to their preferred location based on the advertisement which they `clicked' in the first place."
Office action dated July 13, 1998 at 3 (WTS000040)

45

According to the Prosecution History, the Accounting Service Must Be Financially Independent
On November 18, 1998, Mr. Wexler argued that the prior art did not disclose an "independent " accounting site.

Amendment dated November 18, 1998 at 5 (WTS000050)

These arguments characterized "the present invention."
46

According to the Prosecution History, the Accounting Service Must Be Financially Independent
Mr. Wexler argued that the prior art only disclosed financially interested accounting ­ not financially independent accounting.

Amendment dated November 18, 1998 at 6 (WTS000051)

The "present invention" was a financially independent accounting service.
47

According to the Prosecution History, the Accounting Service Must Be Financially Independent
Mr. Wexler compared his financially independent accounting service to the Nielsen Ratings Company.

Amendment dated November 18, 1998 at 67 (WTS00005152)

Mr. Wexler characterized this financiallyindependent accounting service as "the present invention."
48

According to the Prosecution History, the Accounting Service Must Be Financially Independent
On February 9, 1999, the Patent Office rejected the claims for a second time. On April 9, 1999, Mr. Wexler meet with the patent examiner to object to the examiner 's characterization of the claims and the prior art. On May 3, 1999, Mr. Wexler submitted a second amendment and a summary of the April 9 meeting.

Amendment dated May 3, 1999, at 2 (WTS000068)
49

According to the Prosecution History, the Accounting Service Must Be Financially Independent
Mr. Wexler again emphasized that the "present invention" was a financially independent accounting service.

Amendment dated May 3, 1999, at 4 (WTS000071)

50

Characterizations of the "Present Invention" Limit the Claim Terms
"When a patent thus describes the features of the `present invention' as a whole, this description limits the scope of the invention." Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1308 (Fed. Cir. 2007)

"[C]haracterization...as part of the `present invention' is strong evidence that the claims should not be read to encompass the opposite structure." SciMed Life Sys. v. Advanced Cardiovascular Sys., Inc.,
242 F.3d 1337, 1343 (Fed. Cir. 2001)

51

Statements Made During Prosecution Limit the Scope of the Claims
"[B]y distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover." Ekchian v. Home Depot, Inc.,
104 F.3d 1299, 1304 (Fed. Cir. 1997)

"Claims should not be construed one way in order to obtain their allowance and in a different way against accused infringers." Computer Docking Station Corp. v. Dell, Inc.,
519 F.3d 1366, 1374 (Fed. Cir. 2008)

52

Mr. Wexler Admits Google's Construction Is Correct
Mr. Wexler confirmed during his deposition that his alleged invention was an independent, unbiased thirdparty service with no financial interest in the statistics it would collect. Q. Right. For example, you wanted to make sure that the numbers ­ the clickthrough numbers were as accurate as possible, correct? A. Yes. Q. And one way to do that was to make sure that parties that had an interest in the number being higher, for example, like the advertiser, were not actually doing the tracking; is that right? A. Yes. * * * Q. But, on the other hand, it is like having an independent accounting firm or the Nielsen ratings, you want to make sure that it is an unbiased source, so that not even an issue; is that fair? A. Yes.
Wexler Deposition, 15:415, 17:49
53

Mr. Wexler Admits Google's Construction Is Correct
In his deposition, Mr. Wexler admitted that the thirdparty accounting site he considered his invention was not paid based on the number of clicks it recorded: Q. And just as Nielsen presumably didn't have a financial interest in the data that it was reporting, neither did your thirdparty site? A. My company was not, you know, paid by the click and we had no motivation to report things that wouldn't be true.
Wexler Deposition, 287:918 (objection omitted)

54

Mr. Wexler Admits Google's Construction Is Correct
Mr. Wexler also admitted that "thirdparty" accounting requires an unbiased, trusted source of statistical information: Q. When you use the term "third party," what are you referring to? A. In my opinion, a third party is a party who is believable by two sides, who has credibility, and is trusted, basically they have confidence, party A and party B has confidence in party C that they are going to be truthful and give accurate statistics.
Wexler Deposition, 8:259:11 (objection omitted)

55

Mr. Wexler Admits Google's Construction Is Correct
Mr. Wexler 's statements against interest are relevant to claim construction.
­ Evans Med. Ltd. v. American CynamidCo., 11 F.Supp.2d 338, 350 (S.D.N.Y. 1998), aff'd 215 F.3d 1347 (Fed. Cir. 1999) (allowing defendant to use inventor 's deposition testimony where it was a "clear " and "positive" statement "that the position advanced by defendants as to the meaning of...the claims of his patents is absolutely correct, and that the construction for which plaintiffs contend is plainly wrong.") ­ BristolMyers Squibb Co. v. Teva Pharmaceuticals USA, Inc., 288 F. Supp. 2d 562, 586 (S.D.N.Y. 2003) (" Testimony against a patentee's own interest, however, is perhaps the `most persuasive extrinsic evidence.'")

56

WTS Admits Google's Construction Is Correct
WTS admits the "focus" of the "independent third party " is the "perception" of bias created "because the amount of money paid by the advertiser to the publisher is dependent on the accounting statistics collected."

WTS Markman Br. at 18

Accordingly, the third party in the '409 patent cannot receive money that is dependant on the accounting statistics collected.
57

WTS Admits Google's Construction Is Correct
WTS admits that the third party accounting service must also be "trustworthy" and "reliable."

WTS Markman Br. at 18

Plainly, a biased third party would not be considered trustworthy or reliable.
58

WTS Admits Google's Construction Is Correct

WTS Technology Tutorial Ex. A, at 6

WTS admits there is "inherent distrust " when financiallyinterested parties are "doing the counting."
59

WTS Admits Google's Construction Is Correct
WTS even claims that the primary difference between Google's construction and WTS's construction ­ the word "unbiased" ­ would be "redundant."

WTS Markman Br. at 19

If merely "redundant," then the claim should be construed to clearly exclude third parties whose revenue depends upon the statistics they collect.
60

WTS Is Trying to Avoid the Issue of Financial Bias
In light of these admissions, why is this term still disputed? WTS apparently plans to argue to the jury that a financiallybiased accounting service is covered by the claims. In its response brief, WTS contends that an accounting service not owned by the publisher or the advertiser meets the "fourth Web site" limitation even if its revenues depend on the number of clickthroughs recorded.
WTS Response Br. at 3
61

WTS Is Trying to Avoid the Issue of Financial Bias
But the unbiased thirdparty accounting service is the entire invention ­ everything else was already disclosed in the prior art.

62

WTS Is Trying to Avoid the Issue of Financial Bias
In a footnote, WTS's response brief concedes that the claims require more than separate ownership.

WTS Response Br. at 7 n.5

But WTS does not explain what, other than ownership, it would require. WTS tries to appear in line with the prosecution history ­ but actually is at odds with that record.
63

WTS Is Trying to Avoid the Issue of Financial Bias
WTS's opening brief selectively parses and quotes the prosecution history to support their construction (WTS Br. at 1516).

64

WTS Is Trying to Avoid the Issue of Financial Bias
But Mr. Wexler argued that the "present invention" ­ the independent thirdparty accounting service ­ was different than the prior art because it was financially independent.

WTS000051

WTS cannot rewrite history to erase the allegedly novel aspect of the patent.
65

WTS Is Trying to Avoid the Issue of Financial Bias
WTS's response brief only addresses these statements concerning the Nielsen ratings company in a footnote.

WTS Response Br. at 5 n.4

To the contrary, Mr. Wexler 's statements to the Patent Office directly addressed payment methods.

Amendment dated November 18, 1998 at 67 (WTS00005152)
66

The Claims Require More Than an Agreement Between the Publisher and Advertiser
According to WTS, any accounting service that the publisher and the advertiser agree to use is unbiased.

WTS Response Br. at 8

67

The Claims Require More Than an Agreement Between the Publisher and Advertiser
But in the prior art, the publisher and advertiser agreed upon a party to provide accounting statistics.
This agreement did not express a belief that the party keeping the statistics was credible and trustworthy. WTS admits that this agreement actually came with "inherent distrust."
WTS Response Br. at 3

Contrary to WTS's argument, an agreement to use a financiallyinterested party for the accounting is an agreement not to use the patent.
68

How Is the "First Uniform Resource Locator " Obtained?

69

The First URL Is Downloaded From The First Web Site
The dispute relates to the "first uniform resource locator " ­ i.e., the target address of the advertisement ­ mentioned in Claim 1.

'409 Patent, Col. 6, Ln. 3039
70

The First URL Is Downloaded From The First Web Site
Google's Construction
The first uniform resource locator is part of the Web page generated by the first Web site and downloaded from the first Web site to the first user 's Web browser.

Plaintiffs' Construction
The first uniform resource locator is acquired as a result of interaction between the first user 's Web browser and the first Web site (for example, as a result of downloading a Web page from the first Web site or as a result of clicking on a link or an advertisement on the first publisher 's Web page as displayed in the first user 's browser).

71

According to the Plain Claim Language, the First URL Is Downloaded From the First Web Site

'409 Patent, Col. 6, Ln. 3039

72

The First URL Is Downloaded From the First Web Site
The "starting point for any claim construction must be the claims themselves." Pitney Bowes, Inc. v. HewlettPackard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999)

"[C]ourts may not redraft claims," as this would "interfere with the function of claims in putting competitors on notice of the scope of the claimed invention." Lucent Tech. Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215 (Fed. Cir. 2008)

"Where the plain import of the language is clear, the court will not engage in speculative interpretation." AngeloMongiello's Children, LLC v. Pizza Hut, Inc.,
70 F.Supp.2d 196, 203 (E.D.N.Y. 1999)

73

According to the Specification, the First URL Is Downloaded From the First Web Site
The specification says that when the user requests the publisher 's Web site, the user 's Web browser downloads the publisher 's Web page.

'409 Patent, Col. 4, Ln. 2836

74

According to the Specification, the First URL Is Downloaded From the First Web Site
This download process is illustrated in Figure 2.

75

According to the Specification, the First URL Is Downloaded From the First Web Site
The specification states that this Web page, downloaded from the first Web site, "includes the URL."

'409 Patent, Col. 4, Ln. 4753

76

Plaintiffs Rewrite the Claim Language
The claim says the first URL comes "from the first Web site." Plaintiffs say the first URL may come "from any source, including a Web site other than the publisher 's Web site."
WTS Br. at 21

77

WTS Ignores the Patent Specification
WTS claims that " There is no explicit teaching that the hypertext source file that is downloaded to the user 's browser must include the actual advertisement or URL."
WTS Response Br. at 16

To the contrary, the specification expressly says the HTML file "includes the URL pointing to the third party site 13."
'409 Patent, Col. 4, Ln. 5253

No other method of URL delivery is disclosed.

78

WTS Ignores the Prosecution History
In the initial patent application, Claim 1 only required a "download request signal' that was "ultimately intended for the advertiser 's Web site"
Application Filed October 11, 1996 (WTS000027)

After the claim was rejected, Mr. Wexler narrowed the claim to require a "first uniform resource locator " that was "obtained by the first user 's Web browser from the first Web site"
Amendment Dated November 18, 1998 (WTS000046)

79

WTS Ignores the Prosecution History
WTS says this amendment was only for "clarity," not to limit the claim.

WTS Response Br. at 18
80

WTS Ignores the Prosecution History
But the prosecution history says this amendment was made "to clarify the distinction between the present invention and the prior art."

Amendment Dated November 18, 1998 (WTS000050)

This is the definition of a narrowing amendment.
81

WTS Improperly Relies on Extrinsic Evidence
WTS ignores the intrinsic evidence. Instead, it focuses on two dictionary definitions from 1989 for the words "obtain" and "download."

WTS Br. Ex. C

82

WTS Improperly Relies on Extrinsic Evidence

These definitions are irrelevant. The specification explains how the URL is obtained. Extrinsic evidence cannot overcome that intrinsic evidence. Philips,
415 F.3d at 131819

83

WTS Improperly Relies on Extrinsic Evidence
WTS's dictionary definitions are outdated. They date from 1989, but the patent was filed in 1996. According to the patent, Internetrelated concepts were relatively unknown before 1991.

'409 Patent, Col. 1, Ln. 913

84

How the Accounting Service Redirects the User 's Web Browser to the Advertiser

85

The Redirect Message Is the Response Message Sent on Receipt of the Click
The dispute relates to two terms in two claims that describe how the accounting service redirects the user 's Web browser to the advertiser 's Web site.

'409 Patent, Col. 9, Ln. 325

'409 Patent, Col. 6, Ln. 3059

86

The Redirect Message Is the Response Message Sent on Receipt of the Click
Google's Construction
Redirecting to the third Web site as the response to the first browser 's request containing the first uniform resource locator Transmitting, as the response to the first browser 's request that contains the first uniform resource locator, a second uniform resource locator to the first browser

Plaintiffs' Construction
Either needs no construction, or should be construed according to the plain and ordinary meaning of claim language subject to the term "redirecting " Needs no construction, and if it is to be construed, should be construed as its "plain and ordinary meaning "

87

The Patent Specification Supports Google
The patent incorporates various standard protocols for network communication. These protocols were known to those of skill in the art.

'409 Patent, Col. 3, Ln. 1222
88

The Patent Specification Supports Google
These protocols include the Hypertext Transfer Protocol (HTTP), the computer language underlying the Internet.

'409 Patent, Col. 5, Ln. 1323

89

The Patent Specification Supports Google
The specification references HTTP redirect response messages.

'409 Patent, Col. 5, Ln. 1323

90

The Patent Specification Supports Google

The HTTP protocol includes several different types of redirect response messages: 301 redirect response 302 redirect response 303 redirect response 307 redirect response
See HTTP1.1 Specification, www.w3.org /Protocols/rfc2616/rfc2616.html

91

According to the Patent Figures, the Redirect Message Is the Response Message Sent on Receipt of the Click
All HTTP messages occur in "requestresponse" pairs. The "request " message and the "response" message are two halves of a single exchange.

"requestresponse" pairings
92

WTS Admits HTTP Is a "RequestResponse" Language
"[T]he HTTP protocol is an example of a clientserver protocol, in which the client (the Web browser) sends requests to the server (the Web server), which responds to client requests."
WTS Tutorial at 11

"[T]he Web browser and Web server communicate in the HTTP protocol through multiple request and response messages."
WTS Tutorial at 15

"[T]he HTTP protocol [] utilizes a requestresponse pairing format."
WTS Response Br. at 19

" There is no dispute that the HTTP protocol utilizes requestresponse pairings."
WTS Response Br. at 20

93

The Redirect Message Is the Response Message Sent on Receipt of the Click
One of ordinary skill would read the words "request " and "response" in the claims to mean the paired "request " and "response" messages discussed in the specification. "[A]bsent some particular reason to do otherwise, the claim terms must be interpreted as would one of ordinary skill in the art." Medrad, Inc. v. MRI Devices Corp.,
401 F.3d 1313, 1319 (Fed. Cir. 2005)

94

WTS's Argument That the Redirect Response Is Not Paired to the Request for the First URL Is Meritless
WTS argues for a very broad construction of this term, under the guise of "plain and ordinary meaning."

WTS Br. at 25

WTS's proposed construction places no limits on the meaning of the term. Any process can qualify, as long as the user ends up at the advertiser 's Web site.
95

WTS's Claim Differentiation Arguments Are Factually Incorrect

According to WTS, the differences between Claim 1 and Claim 5 support their construction under the doctrine of claim differentiation. WTS confuses two separate issues:
The type of redirect response messages The number of redirect response messages

96

WTS's Claim Differentiation Arguments Are Factually Incorrect
The HTTP protocol includes multiple different redirect response message types: 301 redirect response 302 redirect response 303 redirect response 307 redirect response Claim 1 can be any type of redirect response: 301, 302, 303, 307, or some other nonHTTP redirect response message. Claim 5 must be a 302 redirect response.
97

WTS's Claim Differentiation Arguments Are Factually Incorrect
Nothing in Claim 5 addresses the number of redirect messages. Claim 5 picks a type of redirect response message ­ the 302 redirect response message type Claim 5 does not say that there can be "multiple intermediate redirects"
WTS Br. at 28

With respect to the number of redirect messages used, Claim 1 and Claim 5 have the same scope. In both, there is only a single redirect in response to the receipt of the first uniform resource locator.
98

The Patent Does Not Contemplate "Intermediate Redirects"
WTS claims that "Google's construction would thereby preclude embodiments of the claimed invention whereby, upon receipt of the URL, the third party site issues intermediate redirects before redirecting the user 's browser to the advertiser 's Web site."
WTS Response Br. at 20

But WTS cites no such embodiments.

99

The Patent Does Not Contemplate "Intermediate Redirects"
In fact, there is only one embodiment, with one redirect.

Redirect Response 15b
100

The Patent Does Not Contemplate "Intermediate Redirects"
The portion of the specification WTS cites (Response Br. at 21) addresses logging ­ not intermediate redirects.

'409 Patent, Col. 4, Ln. 5867

101

The Patent Does Not Contemplate "Intermediate Redirects"
In its response brief, WTS points to the word "comprising " to support its construction. (WTS Response Br. at 22.) "Comprising " claims cover methods that perform all claimed steps, and also perform additional steps. The word "comprising " does not alter the elements already in the claim. If claim elements are not satisfied, "comprising " language is irrelevant. Spectrum Int 'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 137980 (Fed. Cir. 1998) (affirming summary judgment of non infringement; "`[c]omprising ' is not a weasel word with which to abrogate claim limitations").
102

The Patent Does Not Contemplate "Intermediate Redirects"
The concept of intermediate redirects is inconsistent with the agreed construction of "redirecting."
Redirecting: "transferring or pointing from one place to another, for example from one Web site to another Web site or from one node to another node."

The claim language expressly requires a redirect from "the fourth Web site" to "the third Web site in response to the receipt of the first uniform resource locator."

To permit multiple, undisclosed "intermediate redirects" would rewrite the claim language.
103

How "Banner" Advertising Is Different Than Other Advertising

104

Banner Advertisements Are Image Advertisements

Google's Construction
An area of a Web page used to display logos or other graphical images

Plaintiffs' Construction
An area of a Web page that can be used to display logos, advertisements, or other content to potentially entice a user to obtain further information pertaining to the banner or to connect to an advertiser 's Web site

105

According to the Specification, Banner Advertisements Are Image Advertisements
The specification repeatedly and consistently describes a "banner " as an area used to display graphics, such as a company's logo.

'409 Patent, Col. 1, Ln. 4951

'409 Patent, Col. 3, Ln. 5458
106

According to Claim Differentiation Principles, Banner Advertisements Are Image Advertisements

'409 Patent, Claim 1

'409 Patent, Claim 2
107

According to Claim Differentiation Principles, Banner Advertisements Are Image Advertisements

"Banner " narrows Claims 1, 7, and 9 by limiting them to image advertisements.
"[D]ependent claims are presumed to be of narrower scope than the independent claims from which they depend."
AK Stell Corp. v. Sollac and Ugine,
344 F.3d 1234, 1242 (Fed. Cir. 2003)

108

WTS's Definition Is Inconsistent With Claim Differentiation Principles
WTS's construction of "banner " captures any online advertising, and does not limit Claim 1, Claim 7, or Claim 9 in any way. This violates the claim differentiation principles WTS itself asks this Court to apply.
" The principle of claim differentiation...provides that a dependent claim further limits the claim scope of the independent claim from which it depends. The claim scope of the independent claim, therefore, is necessarily broader than the scope of the dependent claim that directly or indirectly depends from the independent claim. Acumed LLC v. Stryker Corp.,
483 F.3d 800, 806 (Fed. Cir. 2007); (WTS Br. at 27)

109

WTS's Construction Would Lead to Absurd Results

Google explained in its opening brief that WTS's construction would cover the text of a news story:
The text of the story is "content " displayed on the newspaper 's Web page, and the text could "potentially entice" the reader to "obtain further information pertaining to the [text]."
Google Br. at 35

WTS does not dispute this fact in their response brief.

110

According to the Ordinary Meaning, Banner Advertisements Are Image Advertisements
In 1996, and through at least 2001, "banner " referred to image advertisements ­ not other nongraphical types of advertising.

The Computer Glossary: The Complete Illustrated Dictionary (9th Ed. 2001) at 26

111

According to Mr. Wexler's Testimony, Banner Advertisements Are Image Advertisements
Mr. Wexler admitted that he understood "banner " to mean "image" in 1996. Q. And what 's a banner? A. In my understanding? Q. Yes. A. My understanding of the banner was the graphic, the JIF file, that was part of the advertisement.
Ex. C, Wexler Dep. Tr. 242:22243:3

112

The Inventor's Statements Against Interest Are Relevant to Claim Construction
Mr. Wexler 's testimony contains statements against interest and is therefore relevant
­ Evans Med. Ltd. v. American CynamidCo., 11 F.Supp.2d 338, 350 (S.D.N.Y. 1998), aff'd 215 F.3d 1347 (Fed. Cir. 1999) (allowing defendant to use inventor 's deposition testimony where it was a "clear " and "positive" statement "that the position advanced by defendants as to the meaning of...the claims of his patents is absolutely correct, and that the construction for which plaintiffs contend is plainly wrong.") ­ BristolMyers Squibb Co. v. Teva Pharmaceuticals USA, Inc., 288 F. Supp. 2d 562, 586 (S.D.N.Y. 2003) (" Testimony against a patentee's own interest, however, is perhaps the `most persuasive extrinsic evidence.'")
113

The Inventor's Statements Regarding Ordinary Meaning Are Relevant to Claim Construction
In claim construction, "the focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean." Markman v. Westview Instruments, Inc.,
52 F.3d 967, 986 (Fed. Cir. 1995)

Unless WTS contends Mr. Wexler lacks ordinary skill in the art, WTS admits that one of ordinary skill in the art at the time of the invention would have understood "banner " to mean a "graphic."

114