JobDiva, Inc. v. Monster Worldwide, Inc..
Filing
174
OPINION AND ORDER: The attached document sets forth the Court's determinations regarding each of the terms as to which construction has been sought. (Signed by Judge Katherine B. Forrest on 10/3/2014) (jp)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
DOC#:
DATE FILED:
~T 0 3 2014
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JOBDIVA, INC.,
Plaintiff,
13-cv-8229 (KBF)
OPINION & ORDER
-v-
MONSTER WORLDWIDE, INC.,
Defendant.
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KATHERINE B. FORREST, District Judge:
On November 18, 2013, JobDiva, Inc. ("JobDiva") sued Monster Worldwide,
Inc. ("Monster") for patent infringement. JobDiva's claims relate to four patents:
1.
U.S. Patent No. 7,711,573 (the "'573 Patent"), titled "Resume
Management and Recruitment Workflow System and Method," issued
on May 4, 2010;
2,
U.S. Patent No. 8,234,221 (the "'221 Patent"), titled "Recruitment
Vendor Management System and Method," issued on July 31, 2012;
3.
U.S. Patent No. 8,280,823 (the "'823 Patent"), titled "Recruitment
Management and Recruitment Workflow System and Method," issued
on October 2, 2012; and
4.
U.S. Patent No. 8,463,715 (the "'715 Patent"), titled "Resume
Management and Recruitment Workflow System and Method," issued
on June 11, 2013.
Each of these patents relates to an invention to make the process of providing
access to searching resumes easier and more accurate.
On January 9, 2014, Monster counterclaimed for declarations of noninfringement and invalidity with regard to each of JobDiva’s patents, and for
infringement with regard to its own U.S. Patent No. 5,832,497 (the “‘497 Patent”),
titled “Electronic Automated Information Exchange and Management System,”
issued on November 3, 1998. Monster’s patent seeks provide a system to manage
the exchange of information through two databases, particularly in the employment
setting. It seeks to permit on-line storing and access to a jobs database through a
search engine and to manage job applications and submissions of resumes.
Before the Court is the parties’ request for claim construction with regard to
the following terms in JobDiva’s Patents1:
A. “using a computer to improve a precision ratio when searching a resume
database,” as used in JobDiva’s ‘573 and ‘823 Patents;
B. “each occurrence of the phrase” / “each occurrence of the . . . phrase,” as
used in JobDiva’s ‘573, ‘823, ‘715, and ‘221 Patents;
The parties’ Joint Claim Construction and Prehearing Statement listed additional terms as in
dispute. During a conference call and then by letter dated July 29, 2014, JobDiva notified the Court
that it was withdrawing certain claims, thereby obviating the need for the Court to construe certain
terms. (ECF No. 121.) At the Markman hearing, counsel stated that the parties had reached
agreement on the term “resume.” (See 7/11/14 Tr. at 58, ECF No. 112.)
Certain other terms are very similar to those construed in this decision and thus are not
explicitly addressed. These terms, all of which appear in JobDiva’s ‘823 Patent, are:
1. “means for receiving search criteria”;
2. “means for sending the result set in a response to the request”;
3. “means for sending a request to search the resume database”;
4. “means for sending search criteria”; and
5. “means for receiving a result set in response to a database query to the resume database”.
If the parties would like additional guidance as to these terms, they should so inform the Court.
Finally, the Court notes that several terms had multiple entries in the parties’ Joint Claim
Construction and Prehearing Statement. The Court has interpreted each such term consistently
across all claims. If the parties require additional, claim-specific guidance as to particular terms,
they should so inform the Court.
1
2
C. “required term of experience,” as used in JobDiva’s ‘573, ‘823, ‘715, and
‘221 Patents;
D. terms referring to satisfying the “job description” or “search criteria,”
namely:
a. “when the parsed resume satisfies the job description,” as used in
JobDiva’s ‘573 Patent;
b. “parsed resume . . . satisfying the search criteria,” as used in
JobDiva’s ‘823 Patent;
c. “matching resume that satisfies the job description,” as used in
JobDiva’s ‘221 Patent; and
d. “skill or experience-related phrase includes said at least one
required skill or experience-related phrase, or at least one implying
phrase for said at least one required skill or experience-related
phrase, that satisfies the job description,” as used in JobDiva’s ‘715
Patent;
E. “means for receiving a result set in response to the database query,” as
used in JobDiva’s ‘573, ‘823, and ‘715 Patents;
F. “means for sending a database query to the resume database,” as used in
JobDiva’s ‘573, ‘823, and ‘715 Patents;
G. “graphical user interface, comprising a first display region . . .; and a
second display region,” as used in JobDiva’s ‘221 Patent; and
H. “personal and business-related characteristics that the candidate believes
to be relevant to a prospective employer,” as used in JobDiva’s ‘221
Patent.
(See Joint Claim Construction and Prehearing Statement, ECF No. 34.)
3
With respect to Monster’s Patent, the parties have requested that the Court
construe the following term2:
I. “iterative database query engine,” as used in Monster’s ‘497 Patent.
(See Joint Claim Construction and Prehearing Statement for Monster Countercl.,
ECF No. 36.)
The Court held a Markman hearing over two days on July 11, 2014 and
August 1, 2014.3 At that hearing, experts for both sides testified and were subject
to cross-examination.
JobDiva proffered the report and testimony of two experts: Michael
Mitzenmacher, Ph.D., for the disputed terms appearing in JobDiva’s ‘573, ‘715,
‘823, and ‘221 Patents, and Nathaniel Polish, Ph.D, with regard to the disputed
term in Monster’s ‘497 Patent. Monster also proffered the report and testimony of
two experts: Jaime G. Carbonell, Ph.D., with regard to the disputed terms in
JobDiva’s ‘573, ‘715, ‘823, and ‘221 Patents, and James Allan, Ph.D., with regard to
the disputed term in Monster’s ‘497 Patent.
While Markman decisions are considered questions of law (as discussed
below), see Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995), aff’d, 517 U.S. 370 (1996); Lighting Ballast Control LLC v. Philips Elecs. N.
Am. Corp., 744 F.3d 1272, 1284 (Fed. Cir. 2014) (en banc), it is impossible to ignore
The parties have reached agreement regarding the term “means for relating a record of said first
database to a record of said second database,” as used in Monster’s ‘497 Patent. (See Monster’s
Reply Claim Construction Brief (“Monster Reply”) at 10, ECF No. 70.)
3 In advance of, and following the Markman hearing, the parties submitted extensive briefing in
support of their respective positions. The briefing continued in bits and pieces until September 15,
2014. (See ECF No. 159.)
2
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that when witnesses are examined and then cross-examined before the Court on
their respective views as to how one of ordinary skill in the art at the time would
understand the intrinsic evidence, the Court does and must assess the demeanor
and weigh the credibility of those witnesses in determining which view to follow.
The Court is not itself one of ordinary skill in the art in this or most cases.
Accordingly, the Court cannot posit its own view.
Here, the parties’ expert witnesses offered conflicting interpretations of terms
based on their reading of intrinsic evidence from the perspective of one of ordinary
skill in the art. The Court had to, and did, assess the strengths and weaknesses of
those interpretations and, in doing so, weighed the evidence. There is no other way
to describe this process—there are sometimes, and were here, plain factual aspects
to claim construction. Thus, where indicated, the Court’s determinations regarding
the appropriate construction are mixed questions of law and fact.
The Court found a significant difference between the demeanor and
credibility of Mitzenmacher and Carbonell. Mitzenmacher was argumentative and
at times evasive. The Court was not left with the impression that his views were to
be given great weight. In contrast, Carbonell was highly credible and informative.
He was forthcoming and clear. The Court is entirely comfortable placing great
weight on his views.4
Mitzenmacher and Carbonell disagreed regarding the level of training and experience one skilled in
the art would have needed to have had in 1995. (Compare Declaration of Michael Mitzenmacher,
Ph.D. in Support of JobDiva’s Opening Claim Construction Brief (“Mitzenmacher Decl.”) ¶ 9, ECF
No. 42, with Declaration of Jeffrey T. Fisher in Support of Monster’s Responsive Claim Construction
Brief (“Fisher Decl.”) Ex. 3 (“Carbonell Decl.”) ¶ 17, ECF No. 62.) The Court notes that
Mitzenmacher ignores that while converting a resume to XML format may not require experience in
4
5
The parties’ experts regarding the ‘497 Patent, Polish and Allan, both seemed
credible, though Allan provided significantly more detail than Polish did. As a
result, the Court bases its determinations on the weight it gives to the support
Polish and Allan presented in their declarations and at the live evidentiary hearing,
as well as on the additional evidence in the record with regard to the disputed term
in the ‘497 Patent.
Set forth below are the Court’s determinations regarding each of the terms as
to which construction has been sought.
I.
THE PATENTS
JobDiva’s ‘573, ‘823, and ‘715 Patents share a common specification (the “‘573
Specification” or the “Specification”). The ‘823 and ‘715 Patents are divisional
patents from the application underlying the ‘573 Patent. The ‘221 Patent issued
from a continuation-in-part application that has substantial overlap with the
specification shared by JobDiva’s other Patents here at issue.
Resume searching has been in existence for as long as employers have been
receiving and reviewing multiple resumes for employment positions. Manual
search was the initial method. With the advent of computers, electronic systems
were able to improve upon the manual process, resulting in increased speed and
improved accuracy.
natural language processing, “parsing” the resume into searchable phrases does, particularly given
that JobDiva’s invention anticipates the use of synonyms and alternative phrasing. (See, e.g.,
Compl. Ex. A, Col. 2, lines 62-65 (“The search should identify any resume that includes the sought
after qualification or requirement and should also interpret synonymous or alternative terms to be
equivalent to the sought after qualification or requirement.”).)
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There were, however, certain limitations in prior electronic systems—
limitations which both Monster and JobDiva sought to address in their patents.
JobDiva’s ‘573 Patent describes the invention as a computer system and method for
managing access to a resume database.
The ‘573 Specification describes certain limitations of prior resume-searching
systems, including text-based searching, which did not account for alternative
terminology or the length and duration of experience. As a result, the prior systems
retrieved a large number of what the Specification refers to as “irrelevant resumes.”
(Compl. Ex. A, Col. 2, line 4.) “[T]he precision ratio of prior systems has been
extremely low. For certain technical jobs and jobs that require more than minimal
experience, the precision ratio can be under 5% and at times even below 1%.” (Id.
Ex. A, Col. 2, lines 9-13.) To address this issue, certain systems required candidates
“to input the duration of experience that they have in a skill or experience-related
phrase.” (Id. Ex. A, Col. 2, lines 17-18.) The Specification describes three principal
disadvantages of these systems: they prolonged the set-up process (id. Ex. A, Col. 2,
lines 28-38), they were not dynamic (id. Ex. A, Col. 2, lines 39-47), and they utilized
the processor-intensive operation of tallying the duration of experience for a skill or
experience-related phrase at search time (id. Ex. A, Col. 2, lines 48-56).
JobDiva’s invention was designed to provide tools to reduce the number of
resumes returned from searches “by identifying a set of candidates who can possibly
satisfy the qualifications and requirements sought by a hiring manager.” (Id. Ex. A,
Col. 2, lines 60-62.) The invention seeks to provide a method of identifying “most
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resumes that can possibly include the sought after qualification or requirement” (id.
Ex. A, Cols. 2-3, lines 66-1) and “avoid identifying resumes that cannot possibly
include the sought after qualification or requirement” (id. Ex. A, Col. 3, lines 1-2).
The system or method involves receiving a resume that includes at least one
skill or experience-related phrase; storing the resume in a resume database; parsing
the resume into searchable segments; computing a term of experience for each skill
or experience-related phrase; and storing a parsed resume in the resume database
(which involves, inter alia, converting the natural-language resume into XML
format). (Id. Ex. A, Col. 3, lines 11-17, 35-39.) Because resumes typically contain
date ranges on a job-by-job basis, and each job typically requires employees to
practice more than one skill, a candidate’s term of experience for a particular skill is
referred to as a “maximum duration.” (See, e.g., Compl. Ex. A, Col. 25, lines 42-46
(“[T]he maximum possible duration . . . of experience of an experience-related
phrase is the total duration of all the jobs during which the experience-related
phrase appeared in [the resume].”).) A hiring manager can query the resume
database to receive resumes matching his or her search criteria, including a skill or
experience-related phrase and a required minimum duration of experience. (Id. Ex.
A, Col. 5, lines 14-18.) That is, the hiring manager can search for only those
candidates with particular skills and experience level in those skills.
The figures in the ‘573 specification provide further description of the
invention. Figure 2 shows a recruiter and candidate on opposite sides of a network
that feeds into a common “resume management and recruitment workflow system.”
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Figure 4 illustrates a process of converting a natural-language resume into an XML
file that then resides in the memory of a database. Figure 5 shows a number of
tables flowing out of the database: (1) a candidate table, containing, inter alia, work
experience data; (2) a mapping table, containing boxes for “phrase,” “related broad
phrases,” and “related narrow phrases”; (3) a job table, containing information
regarding, inter alia, job requirements; (4) an XML table, containing searchable
data extrapolated from the resume as laid out in Figure 4; and (5) a resume table,
containing the text of the resume and accompanying documents.
Figure 9 shows an exemplar search process. A search is “receive[d],”
“including skills or experience related phrases and a duration of experience for
each.” Further in the process, the Figure states: “in a split-screen, view the
candidate attributes and resumes of each candidate in the list of candidates
meeting the search criteria.”5
Monster’s ‘497 Patent is a computer-implemented system for posting and
searching job advertisements online. It provides a platform for both employers
posting job positions and individuals searching for jobs. It also manages the
applications for such jobs and submission of resumes, application letters, and other
relevant documents. (Monster Worldwide’s Answer and Counterclaims Ex. A (“‘497
Patent”), Col. 1, lines 7-18, ECF No. 19.) The invention allows the database to be
While there are certain differences between the specification of the ‘573 Patent and that of the
continuation-in-part ‘221 Patent, the broad outlines described above are essentially consistent
between the two.
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updated to relate candidates to jobs—that is, to reflect that a candidate has applied
for a particular position. Figure 1 shows a schematic of the system.
II.
LEGAL STANDARDS FOR CLAIM CONSTRUCTION
As stated above, claim construction is generally a question of law for the
Court. See Markman, 52 F.3d at 979. Determining the meaning of terms within a
claim assists the fact finder in making subsequent and ultimate decisions as to
whether an invention has in fact been infringed, or is in fact valid. From time to
time, the Court’s determination of disputed factual issues is necessary to the
determination of the appropriate construction of a term. See Markman v. Westview
Instruments, Inc., 517 U.S. 370, 389 (1996) (“[C]redibility judgments have to be
made about the experts who testify in patent cases, and in theory there could be a
case in which a simple credibility judgment would suffice to choose between experts
whose testimony was equally consistent with a patent’s internal logic.”); Dow
Corning Wright Corp. v. Osteonics Corp., 939 F. Supp. 65, 68 (D. Mass. 1996)
(“Although [plaintiff] contends that certain credibility questions . . . remain,
Markman seems to place such determinations, insofar as they relate to claim
construction, entirely within the province of the trial judge.”). Resolution of some
factual disputes cannot wait until trial. The purpose of claim construction is to
define terms so that, inter alia, the jury may be properly instructed. See Sulzer
Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) (“[T]he trial court
in a patent case must at minimum take steps to assure that the jury understands
that it is not free to consider its own meanings for disputed claim terms and that
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the district court’s claim construction, determined as a matter of law, is adopted
and applied by the jury in its deliberation of the facts.”). If there are disputed
factual issues the resolution of which is required for claim construction, a court
should hold an evidentiary hearing during which each side has an opportunity to
present evidence and to examine and cross-examine witnesses. The Court held such
an evidentiary hearing here.
For instance, in construing the meaning of a term, the issue is not what that
term would mean to an average layperson, but what that term would have meant to
one “of ordinary skill in the art in question at the time of the invention, i.e., as of
the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc) (citations omitted). A determination as to the
type and level of skill of one of ordinary skill in the art is a factual determination.
See Buzzelli v. Minn. Mining & Mfg. Co., 480 F.2d 541, 542 (6th Cir. 1973)
(explaining that ascertaining “the level of ordinary skill in the art during the
questioned period” is a “factual inquir[y]”). If two experts qualified to present the
view of one of ordinary skill in the art differ in their views (which is frequently the
case and is here), the Court’s choice between the two views is a factual
determination. See Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329,
333 n.7 (D. Del. 1995) (“When two experts testify differently as to the meaning of a
technical term, and the court embraces the view of one, the other, or neither while
construing a patent claim as a matter of law, the court has engaged in weighing
evidence and making credibility determinations. If those possessed of a higher
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commission wish to rely on a cold written record and engage in de novo review of all
claim constructions, that is their privilege. But when the Federal Circuit Court of
Appeals states that the trial court does not do something that the trial court does
and must do to perform the judicial function, that court knowingly enters a land of
sophistry and fiction.”).
Although terms are generally construed as they would be understood by one
of ordinary skill in the art, it is possible for a patentee to have set forth a particular
and different meaning for a term within a claim; in such a case, the lexicography of
the patentee governs. See, e.g., Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d
784, 789 (Fed. Cir. 2010); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570,
1578 (Fed. Cir. 1995) (“The terms in a claim . . . are not given their ordinary
meaning to one of skill in the art when it appears from the patent and file history
that the terms were used differently by the applicant.”).
A.
Evidence Used in Claim Construction
A court may use intrinsic—and, if necessary, extrinsic—evidence in
construing claims. See Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d
1364, 1368 (Fed. Cir. 2005) (instructing courts to look to intrinsic evidence first).
Intrinsic evidence includes the claims and the specification in the patent
itself, as well as the patent’s prosecution history. “Foremost among the tools of
claim construction is of course the claim language itself, but other portions of the
intrinsic evidence are clearly relevant, including the patent specification and
prosecution history.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309
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F.3d 774, 780 (Fed. Cir. 2002); see also Phillips, 415 F.3d at 1312 (“It is a ‘bedrock
principle’ of patent law that ‘the claims of a patent define the invention to which the
patentee is entitled the right to exclude.’” (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The specification
is the “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)) (internal quotation mark omitted); see also On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331, 1338, 1340 (Fed. Cir. 2006) (“[T]he scope and
outer boundary of claims is set by the patentee’s description of his invention,” id. at
1338, and “the claims cannot be of broader scope than the invention that is set forth
in the specification,” id. at 1340). However, although specifications contain one or
more examples of the embodiment of an invention, they need not contain every
possible embodiment. Therefore, courts should not read into the claims limitations
based on the embodiments in the specification. See Phillips, 415 F.3d at 1323; see
also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371-72 (Fed. Cir. 2008)
(“[The defendant] argues that a patent can never be literally infringed by
embodiments that did not exist at the time of filing. Our case law allows for afterarising technology to be captured within the literal scope of valid claims that are
drafted broadly enough.”). In patents with multiple claims using similar terms,
such terms should be construed consistently across claims. Southwall Techs., Inc.,
54 F.3d at 1579 (“[C]laim terms must be interpreted consistently.”).
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Intrinsic evidence must be read from the perspective of one skilled in the art.
One skilled in the art is “deemed to read the claim term not only in the context of
the particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Phillips, 415 F.3d at 1313. In many
patent cases, the parties proffer expert statements (in the form of reports) and
testimony (either live or by deposition) as to how one of ordinary skill in the art
would interpret a claim or specification. In effect, a form of what is typically
considered extrinsic evidence is utilized to enable interpretation of the intrinsic
evidence. If, as part of an evidentiary hearing in which the experts are exposed to
cross-examination—i.e., they are not merely providing a “tutorial” not subject to
cross-examination (which can have no true evidentiary value)—the experts do not
agree, then the Court’s determination regarding which of the competing
interpretations is correct constitutes a factual finding. Thus, factual findings may
be part of claim construction even when the Court’s determination is based solely on
intrinsic evidence.
Several aspects of the patent prosecution history can be of significant use
during claim construction. Statements the patentee may have made in connection
with patent prosecution are binding if used to obtain patentability. See Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002) (“[T]he prosecution
history (or the file wrapper) limits the interpretation of claims so as to exclude any
interpretation that may have been disclaimed or disavowed during prosecution in
order to obtain claim allowance.” (quoting Standard Oil Co. v. Am. Cyanamid Co.,
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774 F.2d 448, 452 (Fed. Cir. 1985)) (internal quotation marks omitted)); see also
Kripplez v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012) (“A patentee’s
statements during reexamination can be considered during claim construction, in
keeping with the doctrine of prosecution disclaimer.”). The prosecution history
provides evidence of how the patentee understood and explained his invention to
the patent office.6 Phillips, 415 F.3d at 1317.
In connection with patents that are part of an extended family of patents, a
patentee’s disclaimers made during prosecution are relevant with regard to both the
patent at issue and related or “sibling” patents. See Microsoft Corp., v. Multi-Tech
Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004). Statements made by a patentee
during prosecution prevent claim terms from becoming ever-changing as the need
and situation changes. See Southwall Techs., 54 F.3d at 1578 (“A patentee may not
proffer an interpretation for the purposes of litigation that would alter the
indisputable public record consisting of the claims, the specification and the
prosecution history, and treat the claims as a ‘nose of wax.’”).7
Parties do not always agree, as is the case here, that a particular claim
requires construction. There are numerous instances in which one party asserts
that the plain and ordinary meaning informs one of ordinary skill in the art of all
In addition, the patent examiner is considered to be one of ordinary skill in the art. See St. Clair
Intellectual Prop. Consultants, Inc. v. Canon Inc., 412 F. App’x 270, 276 (Fed. Cir. 2011); In re Lee,
277 F.3d 1338, 1345 (Fed. Cir. 2002). Statements made by the examiner regarding how he or she
understands a certain term are thus intrinsic evidence to which the Court may refer when
construing terms.
7 If necessary, courts may refer to extrinsic evidence during claim construction. Phillips, 415 F.3d at
1317. Dictionaries used by one of ordinary skill in the art, treatises, and expert testimony are all
routine forms of extrinsic evidence. See id.
6
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that he or she needs to know, while an opposing party strongly disputes that
position. In such cases, the Court ordinarily should construe the claim. “A
determination that a claim term ‘needs no construction’ or has the ‘plain and
ordinary meaning’ may be inadequate when . . . reliance on a term’s ‘ordinary’
meaning does not resolve the parties’ dispute. . . . In this case, . . . claim
construction requires the court to determine what claim scope is appropriate in the
context of the patents-in-suit.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351, 1361 (Fed. Cir. 2008).
B.
The Preamble of a Patent
Generally, a preamble does not limit a claim. Am. Med. Sys., Inc. v. Biolitec,
Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). Under certain circumstances, however,
preambles are deemed limitations. See Hearing Components, Inc. v. Shure Inc.,
600 F.3d 1357, 1366 (Fed. Cir. 2010) (“A preamble to a claim may or may not be
limiting, depending on the circumstances.”), abrogated on other grounds by
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014); Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“Whether to
treat a preamble as a limitation is a determination ‘resolved only on review of the
entire[ ] . . . patent to gain an understanding of what the inventors actually
invented and intended to encompass by the claim.’” (quoting Corning Glass Works
v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989))). “No litmus
test defines when a preamble limits claim scope.” Catalina, 289 F.3d at 808 (citing
Corning Glass, 868 F.2d at 1257). Generally, a preamble limits an invention when
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it recites essential structure or steps, or when it gives “life, meaning, and vitality” to
a claim. Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999)) (internal quotation mark omitted); see also NTP, Inc. v.
Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005) (“When limitations
in the body of the claim rely upon and derive antecedent basis from the preamble,
then the preamble may act as a necessary component of the claimed invention.”
(quoting Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)));
Pitney Bowes, 182 F.3d at 1305.
In addition, clear reliance on a preamble during patent prosecution
transforms the preamble into a claim limitation. See Hearing Components, 600
F.3d at 1366; Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003);
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002); Catalina, 289
F.3d at 808; Interwoven, Inc. v. Vertical Computer Sys., Inc., No. CV 10-04645 RS,
2014 WL 490996, at *3 (N.D. Cal. Feb. 4, 2014). By contrast, a preamble phrase is
not a claim limitation if the applicant did not rely on it to define the invention or to
distinguish the prior art, and the phrase is not necessary to understanding the
claim body. See Catalina, 289 F.3d at 810. Preambles merely describing the use of
an invention generally do not limit claims. Id. at 809. This is because an inventor
is entitled to the benefit of all of the uses to which his or her invention may be put.
Id.
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C.
Claims
The Patent Act provides that a “specification shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter which
the inventor or a joint inventor regards as his invention.” 35 U.S.C. § 112(b).
1.
Means-plus-function claims
Section 112(f) of the Patent Act provides for means-plus-function claims: “An
element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure . . . in support
thereof, and such claim shall be construed to cover the corresponding structure . . .
described in the specification and equivalents thereof.” Id. § 112(f); see also Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir.
2003).
“Claims written in means-plus-function form are interpreted to cover the
structure set forth in the specification and its equivalents.” Kahn v. G.M. Corp.,
135 F.3d 1472, 1476 (Fed. Cir. 1998). However, in order to get the benefit of an
invention which covers equivalents, the applicant must disclose a structure that
performs that function. See Med. Instrumentation, 344 F.3d at 1210-11 (“If the
specification is not clear as to the structure that the patentee intends to correspond
to the claimed function, then the patentee has not paid [the price of a means-plusfunction claim] but is rather attempting to claim in functional terms unbounded by
any reference to structure in the specification.” Id. at 1211.). For means-plusfunction claims involving data processing performed by a general purpose computer,
18
the structure must be an outline of an algorithm or its equivalent, teaching how to
implement the function. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008). One skilled in the art understands the
“structure” of computer software through “an outline of an algorithm, a flowchart,
or a specific set of instructions or rules.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286,
1298 (Fed. Cir. 2014); see also id. at 1299 (“Structure may also be provided by
describing the claim limitation’s operation, such as its input, output, or
connections.”).
2.
Indefiniteness
“[A] patent’s claims, viewed in light of the specification and prosecution
history, [must] inform those skilled in the art about the scope of the invention with
reasonable certainty.” Nautilus, 134 S. Ct. at 2129; see also Interval Licensing LLC
v. AOL, Inc., No. 2013-1282, 2014 WL 4435871, at *5 (Fed. Cir. Sept. 10, 2014)
(“Although absolute or mathematical precision is not required, it is not enough, as
some of the language in our prior cases may have suggested, to identify ‘some
standard for measuring the scope of the phrase.’”).
This requirement is referred to as “definiteness.” It embodies the important
function of “appris[ing] the public of what is still open to them.” Id. (quoting
Markman, 517 U.S. at 373) (internal quotation marks omitted). The requirement
that a claim be precise enough to afford clear notice of what is claimed thereby
eliminates the temptation to later inject ambiguity into the scope of a patent. Id.
(“[A]bsent a meaningful definiteness check, . . . patent applicants face powerful
19
incentives to inject ambiguity into their claims.”). A claim which fails to meet the
“reasonable certainty” requirement is indefinite, id., and thus not entitled to patent
protection, see United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 233 (1942)
(“To sustain claims so indefinite as not to give the notice required by the statute
would be in direct contravention of the public interest which Congress therein
recognized and sought to protect.”).
Patents entitle the holder to a presumption of validity of its claims. See 35
U.S.C. § 282 (“A patent shall be presumed valid.”). As a result, a party seeking to
have a claim declared “indefinite” must present clear and convincing evidence.
Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (“To
the extent there are any factual findings upon which a trial court’s indefiniteness
conclusion depends, they must be proven by the challenger by clear and convincing
evidence.”).
III.
THE COURT’S CLAIM CONSTRUCTION
A.
“using a computer to improve a precision ratio when searching a
resume database”
The term “using a computer to improve a precision ratio when searching a
resume database” appears in the preambles of claims in the ‘573 and ‘823 Patents.8
Monster argues that it is both a claim limitation and indefinite. JobDiva argues
that it is neither.
The application for the ‘573 Patent was filed in 2003, and the ‘573 Patent issued on May 4, 2010;
the application for the ‘823 Patent was filed in 2010, and the ‘823 Patent was issued on October 2,
2012.
8
20
The preamble of claim 1 in the ‘573 Patent states as follows:
A system for using a computer to improve a precision ratio when
searching a resume database, comprising: . . .
(Compl. Ex. A, Col. 36, lines 39-40.)9
JobDiva concedes that the term “computer” is a claim limitation, but asserts
that the remainder of the preamble, namely “improve a precision ratio when
searching a resume database,” is not. However, to the extent the Court finds it is a
limitation, JobDiva proposes the following construction:
achieve a precision ratio greater than 5%, where the precision ratio is
the number of documents retrieved that satisfy any of the search
criteria to the total number of documents retrieved.
(Joint Claim Construction and Prehearing Statement at 6.) Monster takes the
position that the entire preamble is a claim limitation, and that it is also indefinite.
However, it, too, proposes a construction should the Court find that it is not
indefinite:
Increase[e] the ratio of the number of relevant documents retrieved to
the total number of documents retrieved when performing a search of a
resume database based on a specified minimum duration of experience
for a required skill or experience-related phrase.
(Id.)
There are two nearly identical preambles at issue: “A system for using a computer to improve a
precision ratio when searching a resume database, comprising:” (appearing in Claims 1, 203, 255,
and 466 of the ‘573 Patent and in Claims 1, 110, 133, and 239 of the ‘823 Patent) and “A method for
using a computer to improve a precision ratio when searching a resume database, comprising:”
(appearing in Claims 76 and 333 of the ‘573 Patent and in Claims 44, 175, and 217 of the ‘823
Patent). The difference between the two versions of the preamble (“system” versus “method”) is
insignificant.
9
21
1.
Claim limitation
Monster argues that the context in which the preamble appears and the
Patent’s prosecution history show that the preamble is a claim limitation.
According to Monster, the preamble gives “life and vitality” to the claims, contains
an antecedent basis for terms in the claims, and was relied upon to overcome
patentability rejections.
The Court agrees that the entire preamble is a claim limitation. The Court’s
determination in this regard is a mixed one of law and fact. It is based on the
Court’s assessment of the evidence—including the competing expert testimony—
regarding how one of ordinary skill in the art would understand the claims, the
Specification, and the prosecution history.
The prosecution history provides the most significant evidence that the
preamble is a claim limitation. The applicant clearly relied on the preamble
language for patentability of independent claims 1, 76, 203, 255, 333, and 466 of the
‘573 Patent, and independent claims 1, 44, 110, 133, 175, 217, and 239 of the ‘823
Patent. “Clear reliance” on the preamble during prosecution results in estoppel and
renders the preamble a claim limitation. See, e.g., Catalina, 289 F.3d at 808;
Cruciferous Sprout Litig., 301 F.3d at 1347.
There is no dispute that during the prosecution of the ‘573 Patent, the
applicant received a § 101 rejection on the basis that independent claims 1, 76, 255,
and 333 failed the machine-or-transformation test. (Fisher Decl. Ex. 4 at
JD00002970.) See In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc) (“[T]he
22
use of a specific machine or transformation of an article must impose meaningful
limits on the claim’s scope to impart patent-eligibility.”).10 There is also no dispute
that shortly after receiving this rejection, the applicant amended the preamble to all
‘573 Patent claims at issue to include the entire phrase “for using a computer to
improve a precision ratio when searching.” (See Fisher Decl. Ex. 4 at JD00003003.)
Nothing in the prosecution history indicates that the patent examiner found that
one portion of the amendment (namely, the term “computer”) was all that was
necessary to overcome the rejection.
In its response to the § 101 rejection, the applicant stated that it amended its
independent claims “to identify the apparatus that accomplishes the limitations of
the claims.” (Id. Ex. 4 at JD00003162 (“Since the limitations of independent claims
1, 76, 255, and 333, as amended, identify the apparatus that accomplishes the
limitations of the claims, the presently claimed invention meets the machine-ortransformation test.”).)
Shortly after the Markman hearing, Monster deposed the patent attorney
who prosecuted the patents in suit, Kenneth Waskiewicz, Esq. JobDiva has
designated Waskiewicz as its corporate representative on the topic of prosecution of
the same patents. Notably, Waskiewicz refused to state why the preamble was
amended; he and JobDiva’s attorneys (who represented him at the deposition)
asserted that the reason was privileged. (Waskiewicz Dep. 62:06-12, 64:15-65:06,
The machine-or-transformation test requires that an applicant show that an invention is tied to a
particular machine or that it transforms an article. See Bilski, 545 F.3d at 961.
10
23
Aug. 22, 2014, ECF No. 145-1.) Because JobDiva did not allow Monster to examine
Waskiewicz on the purpose of the amendment, the Court must ignore counsel’s
representation that “the purpose of the amendment was to identify a particular
machine, i.e., a computer” (JobDiva’s Letter at 2, ECF No. 131), that is, that the
“improve a precision ratio” language was unnecessary to overcome the patentability
rejection. Otherwise, counsel would obtain the benefit of an assertion on behalf of
its client when the opposing party is unable to test that assertion—a classic
sword/shield issue. In any event, cloaking the reason in privilege undermines the
credibility of counsel’s explanation.
Separately, claim 1 of the ‘823 Patent11 was rejected during prosecution
under § 102 as anticipated by prior art, specifically the Kurzius reference. (See
Fisher Decl. Ex. 5 at JD00003903.) In response to the § 102 rejection, the applicant
amended the preamble to the claim to include the phrase “using a computer to
improve a precision ratio.” (Id. Ex. 5 at JD00003985.) Waskiewicz admitted that
the applicant made this amendment at least in part to overcome the § 102 rejection:
Q: So the amendment to the preamble of claim 521 . . . was made in
part to address the section 102 rejection and perhaps for a variety of
other reasons; is that correct?
A: The rejection, as I said, the rejection—as I stated and as you stated,
it was made in part to address the 102 rejections. It may have also
included other reasons that are just a general practice type of reason
why you would make a change to an amendment.
(Waskiewicz Dep. 84:06-18.)
11
Claim 1 of the ‘823 Patent was claim 521 in the application. (See Waskiewicz Dep. 82:5-8.)
24
JobDiva argues that to the extent any language in the preamble constitutes a
limitation, it is only the phrase “for using a computer” and not “to improve a
precision ratio”—that, in short, the preamble must be examined in pieces and not as
a whole. (7/11/14 Tr. at 13, ECF No. 112.) According to JobDiva, addressing the
machine-or-transformation test required only reference to the apparatus, and
inclusion of the phrase “improve a precision ratio” was therefore entirely
unnecessary. This is inconsistent with the testimony of Waskiewicz that the entire
preamble had to be considered as a whole, and that no word was more important
than any other. (See Waskiewicz Dep. 57:10-58:01.) Waskiewicz also testified that
the amendment was the reason that the examiner removed his § 101 rejection of the
‘573 claims. (Waskiewicz Dep. 77:23-78:06.)
As a matter of law, having relied upon the breadth of the language to
overcome patentability issues, JobDiva is estopped from arguing that it is not
limiting. See Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361-62 (Fed. Cir. 2005)
(“[T]here is no principle of patent law that the scope of a surrender of subject matter
during prosecution is limited to what is absolutely necessary to avoid a prior art
reference that was the basis for an examiner’s rejection. To the contrary, it
frequently happens that patentees surrender more through amendment than may
have been absolutely necessary to avoid particular prior art. In such cases, we have
held the patentees to the scope of what they ultimately claim, and we have not
allowed them to assert that claims should be interpreted as if they had surrendered
only what they had to.”). In the absence of such reliance, the Court might have had
25
to determine whether the phrase “to improve a precision ratio” refers solely to the
use of a patent, and not to structure, or whether it was necessary to meet the
machine-or-transformation test. See Innova/Pure Water, 381 F.3d at 1118
(“Language in a preamble” is not limiting “where it merely recites a purpose or
intended use of the invention.”). But JobDiva’s reliance has rendered such a
determination unnecessary.
JobDiva cites Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x
23 (Fed. Cir. 2012), and STX, LLC v. Brine, Inc., 211 F.3d 588 (Fed. Cir. 2000), as
supportive of its position that “to improve a precision ratio” does not constitute a
limitation. Neither case is helpful. Both incorporate the proposition that an
amendment to a preamble for patentability transforms it into a claim limitation. In
Textron, “[t]here was no express statement in the amendment or elsewhere that the
term ‘replacement’ was added to overcome the rejection by limiting the invention to
replacement parts only.” 498 F. App’x at 29. And in STX, the Federal Circuit found
that a preamble phrase was not a claim limitation because the patent examiner
continued to object to the claim after the amendment to the preamble, indicating
that the amendment was not necessary to secure the patent. See 211 F.3d at 591
(“[T]he patent examiner’s rejection of the claim for obviousness even after the
preamble language was added, suggests that the phrase was not essential in
distinguishing it over the prior art, and was not decisive in securing allowance of
the claim during prosecution.”).
26
The prosecution history here presents facts similar to those in Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir. 2003). There, the applicants
amended a preamble in response to the patent examiner’s rejection of the claims as
anticipated by a prior art reference, and then used the amendment to distinguish
the reference. Id. at 1370. The Federal Circuit agreed with the district court’s
conclusion that the preamble amendment was limiting because it was “clearly
essential for procuring the patent.” Id.
Monster argues that there is no case law support for the separation of certain
language in a preamble as limiting from other language as not. This is incorrect.
In certain cases, courts have implicitly found a portion of a preamble to be limiting.
See, e.g., Interwoven, 2014 WL 490996, at *3. While the Federal Circuit has not
directly spoken on the issue, there is no legal principle requiring that a preamble—
which, like much language in a patent, can have many parts and subparts—be
construed as an undifferentiated whole. Claim construction often requires parsing
language into separate pieces.
JobDiva argues that even if the preamble were a limitation with regard to
the ‘573 Patent, it is not with regard to the ‘823 Patent. This is incorrect. First, as
a matter of law, given that this language was added to make the ‘573 Patent claims
patentable, the same amendment in the ‘823 Patent must also be construed as a
limitation. See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).
In addition, while JobDiva may now take the position that the preambles to ‘823
claims “were not amended during prosecution to overcome any rejection of those
27
claims,” (JobDiva’s Corrected Opening Claim Construction Brief (“JobDiva Br.”) at 4
n.4, ECF No. 44), the preambles were in fact amended following a § 102 rejection,
and Waskiewicz testified that the amendment was made at least in part to
overcome that rejection. (See Fisher Decl. Ex. 5 at JD00003903, JD00003985;
Waskiewicz Dep. 84:06-18.)
Finally, the preamble provides the antecedent basis for the terms “computer”
and “resume database” in the claims. This also renders the preamble a claim
limitation. Catalina, 289 F.3d at 808 (“[D]ependence on a particular disputed
preamble phrase for antecedent basis may limit claim scope.”). All aspects of
JobDiva’s invention are defined with reference to the apparatus, namely the
computer. And the references are not to any computer, but rather to a computer
used to improve a precision ratio.
The evidence amply demonstrates that the applicant directly relied on the
entire amendment to the preamble during prosecution. The evidence also amply
demonstrates that the preamble as amended gives life and purpose to the claims,
and provides the antecedent basis for terms in the claims. This renders the
preamble limiting. See Hearing Components, 600 F.3d at 1366; Catalina, 289 F.3d
at 808; NTP, 418 F.3d at 1306. The preamble provides the core focus of the
invention—the principle around which all steps revolve: to allow better searching
than that allowed by the prior art, specifically as to obtaining resumes with
particular skills and experience levels. Without this defining characteristic, the
invention is moribund—without life or vitality.
28
2.
Indefiniteness
Defining “improve a precision ratio when searching a resume database”
would be unnecessary if the term were not a claim limitation. However, given that
this Court has found that the entire preamble is limiting, the Court must address
the next question: is it indefinite? The answer to this question has tremendous
importance to JobDiva’s ability to enforce the ‘573 and ‘823 Patents: if the preamble
limits each of the claims, and the preamble is indefinite, then all of the claims
which contain the preamble are also indefinite. See Noah Sys., Inc. v. Intuit Inc.,
675 F.3d 1302, 1319 (Fed. Cir. 2012) (“[T]he limitation is indefinite. All of the
asserted claims contain this limitation; the asserted claims are, therefore, invalid as
indefinite.”).
For the reasons set forth below, the Court finds that the term “improve a
precision ratio when searching a resume database” is indefinite. The Court’s
finding is based on clear and convincing evidence in the record.
Monster argues that the phrase “to improve a precision ratio” has the
following defects: (1) the term “precision ratio” can only be defined with reference to
“relevant” results—a subjective term; (2) the term “improve” is without a defined
baseline or benchmark; and (3) there is no guidance as to how to test for “precision
ratio.” Monster argues that JobDiva has not pointed to any intrinsic or extrinsic
evidence that sufficiently addresses these issues. The Court agrees.
The Court is guided in this inquiry by the legal standard set forth in
Nautilus: whether the claims allow one skilled in the art to determine the scope
29
with “reasonable certainty.” Nautilus, 134 S. Ct. at 2129. The Court applies that
standard to the facts as the Court determines them. Put simply, the Court first
must try to construe the term as it would any other; in this regard, it may make
both legal and factual determinations as to how one skilled in the art at the time
would understand the term. See Markman, 517 U.S. at 389. If, in undertaking this
process, the Court cannot construe the term, then the Court must assess whether
there is clear and convincing evidence of indefiniteness. The parties here propose
conflicting expert opinions on whether and how the term may be construed. As with
other terms as to which the parties posit competing interpretations, the Court’s
choice between these expert opinions constitutes a factual determination. Based
upon the Court’s construction of certain terms, its subsequent determination of
indefiniteness is a matter of law.
The parties agree that, in the context of the invention, “precision ratio” refers
to the number of “relevant” documents retrieved in a search divided by the total
number of documents retrieved. (See Mitzenmacher Decl. ¶ 12, ECF No. 42;
Supplemental Declaration of Michael Mitzenmacher, Ph.D. (“Mitzenmacher Suppl.
Decl.”) ¶ 12, ECF No. 73; Carbonell Decl. ¶ 29, ECF No. 62.) Several aspects of that
definition inject ambiguity into the term.
a.
Determining relevance
Determining the “precision ratio” for an invention necessarily precedes
assessing “improvement” in such ratio. The parties disagree as to how one is to
determine when a document is “relevant.” JobDiva argues that “relevance” is
30
objectively determined; Monster argues that the determination is subjective (or, if
objective, the criteria on which it is based are ambiguous).
Mitzenmacher argues that “[p]eople of ordinary skill in the art have long
used the precision ratio as an objective standard to measure the performance of
searches. Relevance is not merely defined by a subjective user’s preferences.”
(Mitzenmacher Suppl. Decl. ¶ 9.) These two sentences refer to two different points.
The first sentence asserts that precision ratios, once computed, can be objectively
compared. The “objectivity” of comparing numbers is apparent; this is not in
dispute. The next sentence—which asserts that a determination of relevance for
purposes of calculating the numerator of a precision ratio is not subjective—does
not necessarily follow. When Mitzenmacher opines that “determining the precision
ratio for a particular search is straightforward” (Mitzenmacher Suppl. Decl. ¶ 12),
he assumes that the determination of relevance is straightforward, such that the
calculation entails no more than simple arithmetic.
Mitzenmacher’s position that a relevant document may be objectively
identified is based on a definition of a “relevant document” as “one that meets any of
the search criteria.” (Mitzenmacher Decl. ¶ 13 (emphasis added).) 12 He asserts
that “[w]hile a document that includes all of the terms is more relevant than a
Mitzenmacher testified that a rule would be needed to determine relevance; and that JobDiva
specified the rule of relevance as “any.” (See 8/1/14 Tr. at 187, ECF No. 135.) Mitzenmacher’s
reference to a “rule” set forth in the Patent is without support—no such “rule” is set forth in the
Patent. He also agreed that to have experience level defined as total or “general” experience in the
workplace, for any and all skills, another rule would be necessary. (Id.)
12
31
document that includes only one term out of many, they are both relevant.”
(Mitzenmacher Suppl. Decl. ¶ 9.)13
Mitzenmacher’s proposed definition of relevance is overly broad.14 Suppose a
hiring manager seeks candidates with five years of experience in the Java
programming language who speak fluent Mandarin, have at least a college degree,
and are available to work on the West Coast. According to Mitzenmacher, a resume
of someone with two months of Java experience who speaks only Latvian, is selfeducated, and can work only in Florida would be “relevant.” The resume of a cook
who speaks fluent Mandarin but had never programmed in Java (or any other
language) would also be “relevant.” And so would the resume of an elementary
school teacher who speaks only English but is looking for a position in San
Francisco. This plainly makes no sense. Nor is it consistent with the invention
described in the Specification and in the claims. The invention seeks to improve the
accuracy of the resume-searching process, not to broaden it so far beyond reasonable
boundaries that a hiring manager is inundated with far more irrelevant resumes
than prior art systems likely would have returned.
Mitzenmacher also testified that he considered there to be degrees of relevance. (Tr. at 188-89.)
This, according to Mitzenmacher, allows the broadest definition of relevance—“any” search criteria
met—to exist without foreclosing a desire for additional relevance (before, for instance, giving a
resume to a CEO). (See Tr. at 173.) Carbonell disagrees.
Carbonell testified credibly (and was cross-examined on his expertise on this particular
point) that to calculate a precision ratio one needs a binary definition of relevance and that “degrees
of relevance” is a different issue and not pertinent to the establishment of the precision ratio. (Tr. at
196.)
14 Mitzenmacher’s definition also conflicts with the Specification which, when describing problems
with precision ratios in the prior art, specifically ties a skill to a duration of experience. (See Compl.
Ex. A, Col. 2, lines 4-8 (“To narrow the output to a short list, these systems require a further manual
review tallying the maximum possible duration of experience for each required skill or experiencerelated phrase”).)
13
32
This Court disagrees with Mitzenmacher’s definition of relevance. If a
“relevant” resume refers to any resume satisfying at least one search criterion, then
the precision ratio for the invention would not be just “improved” at some level over
5%, but would always be 100%. This is inconsistent with the Specification, which
discusses improvement over precision ratios at the level of 5% or 1%, but not 100%
precision. (See Compl. Ex. A, Col. 2, lines 10-13 (“For certain technical jobs and jobs
that require more than minimal experience, the precision ratio can be under 5% and
at times even below 1%.”).) Assuming prior art references, whether manual or
electronic, could at least match a resume to one search term in a query, they, too,
would have 100% precision (and no need for a ratio) under this broad definition of
relevance. The concept of “improved” relevance would then be meaningless.
JobDiva, through Mitzenmacher, responds that search engines routinely
return irrelevant documents. (Mitzenmacher Suppl. Decl. ¶ 10.) For example,
searching for “JobDiva” in Google returns a host of (subjectively) irrelevant
documents with the words “job” and “diva.” (Id.) There is no evidence in the record,
however, that the “hits” returned by a general search engine share the same type of
“relevance” as the resumes returned with the anticipated improved accuracy of the
invention.
Finally, JobDiva points to several cases in which lower courts have not found
the terms using the word “relevant” to be indefinite. See British Telecomms. PLC v.
Google Inc., No. 11-1249-LPS, 2013 WL 4787350, at *3-4 (D. Del. Sept. 9, 2013); I/P
Engine, Inc. v. AOL, Inc., 874 F. Supp. 2d 510, 518-19 (E.D. Va. 2012). The fact
33
that a term has been used in the context of a different invention and was not found
to be indefinite does not resolve the issue before the Court. The Court is required
to, and does, review each term at issue in the context of the specific claim in which
it appears, the Specification as understood by one of ordinary skill in the art at the
time, and the prosecution history. Each of these sources may assist in resolving or
revealing ambiguity; prior cases construing unrelated patents may not.
Carbonell disagrees with Mitzenmacher’s view that one of ordinary skill in
the art at the time understood there to be a single standard definition of relevance.
The Court credits his well-supported opinions in this regard.15 Carbonell opines
that “the word ‘relevant’ has a special meaning in the art of the patents-in-suit,
referring to what the person conducting the search would subjectively select if
conducting a manual search.” (Carbonell Decl. ¶ 32 (emphasis added).) He cites to
a number of articles supporting his view that “relevance” is a subjective
determination to one skilled in the art. (Id. ¶ 33.) The Court’s review of these
materials confirms Carbonell’s view.
b.
Benchmark to measure improvement
The public has a right to understand the metes and bounds of the inventions
set forth in the ‘573 and ‘823 Patents, and to understand what can be done to avoid
infringement.
Moreover, both Carbonell and Mitzenmacher agree that what is “relevant” in fact changes from
one query to the next. (Carbonell Decl. ¶ 34 (“Relevance changes from one query to the next.”);
Mitzenmacher Suppl. Decl. ¶ 12 (“[The precision] ratio, by definition, will not be the same for every
search.”).)
15
34
Whether the preamble is indefinite depends on whether one of ordinary skill
in the art would understand with reasonable certainty what the term “improve a
precision ratio” means. See Nautilus, 134 S. Ct. at 2129. In this regard, one must
understand with reasonable certainty what level of “improvement” and over what is
within the scope of the Patents. To measure improvement, one must first define the
benchmark or baseline against which the improvement is to be measured. Once the
baseline is defined, “improvement” is assessed as a (positive) change over that
baseline. Specification of the baseline is important to a potential infringer: if the
baseline is specified by the performance of program X, then anyone practicing the
invention using a program Y whose performance is inferior to that of X is not
infringing.
Mitzenmacher opines that “with regard to the term ‘improving,’ the JobDiva
Patents are concerned with improvements over prior art systems.” (Mitzenmacher
Decl. ¶ 14.) As an initial matter, Mitzenmacher does not point to a particular prior
art system or method against which improvement may be assessed. (Recall that the
preamble begins, “A system . . .” or “A method . . .” “using a computer to improve a
precision ratio.”) If the baseline is a specified system, then one can refer to that
system’s performance as a benchmark. If the baseline consists of a specified method
of resume searching available in the prior art, using specified queries, then one can
refer to that method and queries to measure improvement. According to Carbonell,
the choice of the system or method matters because precision ratios in the prior art
vary widely. (Carbonell Decl. ¶ 20.) Carbonell credibly testified that the word
35
“improve” does not have any special meaning to one skilled in the art. (See id. ¶
19.) Without some additional guidance, a person of ordinary skill in the art would
not have known how to measure “improvement” (id. ¶ 21), and thus could not have
known whether he or she was infringing the Patents.
Mitzenmacher opines that “improving” simply means achieving any precision
ratio greater than 5%, because the Specification refers to precision ratios in the
prior as “under 5% and at time even below 1%.” (Mitzenmacher Decl. ¶ 14; see also
Compl. Ex. A, Col. 2, lines 10-13.) However, at the Markman hearing,
Mitzenmacher could not support the 5% or even 1% as a baseline. He testified:
The way [the applicant] described it in the patent, he didn’t say exactly
5 percent or exactly 1 percent. We can go back to the wording. It was
that somewhere as low as 5 percent or even lower, under 1 percent, I
believe. I don’t denote anything interesting by these round numbers.
He has given sort of an area under which the performance would be,
and he hasn’t suggested that these are specific numbers.
(8/1/14 Tr. at 183, ECF No. 135.) Waskiewicz similarly testified that to “improve a
precision ratio” was not a number and not a definite number. (See Waskiewicz Dep.
44:8-13.)
JobDiva argues that the term “improve” (and similar terms) are not always
indefinite and points to a number of cases in which courts have construed such
terms. See Invitrogen, 424 F.3d at 1383 (“Because this court construed the phrase
‘improved competence’ . . . such that one skilled in the art would understand the
bounds of the claim, this court detects no unacceptable indefiniteness in that
language in this appeal.”); Exxon Research and Eng’g Co. v. U.S., 265 F.3d 1371,
1377 (Fed. Cir. 2001) (“We disagree with the court’s conclusion as to the
36
indefiniteness of the phrase ‘to increase substantially.’ The specification makes it
reasonably clear that the patentee intended to use the subtraction method in
calculating relative productivity. As noted above, the specification recites that
catalyst productivity can ‘more preferably’ be increased by as much as 75%.”),
abrogated by Nautilus, 134 S. Ct. 2120; Alberta Telecomm. Research Ctr. v. AT & T
Corp., Nos. 09-3883 (PGS), 10-1132 (PGS), 2012 WL 3990540, at *6 (D.N.J. Sept. 10,
2012) (“The Court finds that ‘increases and optimizes demand served’ is not
indefinite when considered in the greater context of the specification and the
claims.”). That “improve” or any term has not been found indefinite as a matter of
law is unsurprising. Each term must be read in the context of the claims and
specification of the patent in which it appears, by one of ordinary skill in the
particular art. The question is whether the metes and bounds of the invention
under consideration, not of some other invention, are defined to a degree of
reasonable certainty.
c.
Testing for improvement of a precision ratio
The next issue is how to test improvement in the precision ratio. A testing
method is necessary to enable one practicing in the area of the invention to
determine whether he or she is infringing the patent. In the absence of a testing
method, there is no objective way for one to understand the scope of JobDiva’s
exclusive rights. In many contexts, there are standard tests known to people of
ordinary skill in the art. Not so here.
37
The intrinsic record provides no assistance. This is unsurprising in light of
Waskiewicz’s testimony. As the individual who prosecuted JobDiva’s Patents and
wrote the Specification, Waskiewicz testified that he was unaware of any tests that
had actually been conducted to generate the 5% and 1% precision ratios stated in
the Specification. (Waskiewicz Dep. 35:8-37:8.) In short, there is no evidence in the
record that those levels were not simply plucked out of thin air.
The difficulties which inhere without some testing method are evident.
Mitzenmacher effectively conceded at the Markman hearing that a precision ratio
cannot be calculated on a system-wide basis; it is a well-defined concept only at the
query level. (8/1/14 Tr. at 190 (“When you talk about the precision ratio of a system,
that is not a well-defined term.”).) The experts agree that precision ratios vary from
query to query. (Carbonell Decl. ¶ 34 (“Relevance changes from one query to the
next.”); Mitzenmacher Suppl. Decl. ¶ 12 (“[The precision] ratio, by definition, will
not be the same for every search.”); see also 8/1/14 Tr. at 176, 178, 179, 184.)
Mitzenmacher testified at the Markman hearing that “[p]recision depends on the
search that you do. One could, if one wanted, generally artificially create some sort
of test. If one wanted to say, look, I can come up with an example that would give
100 percent or 10 percent or whatever number you wanted, one could generally
construct inputs to do that.” (8/1/14 Tr. at 176.) The lack of such a test, with
specified inputs, renders the term “improve a precision ratio” indefinite.
Carbonell describes the importance of testing. He states that “[s]ystematic
tests are designed for each specific kind of database, domain of application and
38
specific set of queries involved in the search.” (Carbonell Decl. ¶ 21.) Thus, testing
the precision ratio of a resume database is different from testing the precision ratio
of a newspaper archive. (Id.) Carbonell states that “to [his] knowledge, no
systematic test for resume searching was published or publicly known at the time of
the invention.” (Id. ¶ 23.) According to Carbonell, the lack of a benchmark against
which to measure improvement and the lack of a specified testing method render it
impossible for one skilled in the art to understand whether he or she had in fact
“improved” the precision ratio of JobDiva’s invention. (Id. ¶ 24.)
Carbonell testified at the Markman hearing that when precision ratios are
calculated or tested, it is based on a consensus by experts in the field as to the
proper manner of measurement. (See 8/1/14 Tr. at 193.) The experts (here, human
resource managers or the equivalent) would determine an appropriate standard
using a large number of queries over a large set of different databases. (Id.) He
testified credibly that “someone of ordinary skill in the art would not be able to
establish the precision ratio of a system in a resume search without large-scale
experimentation.” (Id. at 195.)
The absence of some way to determine a precision ratio of a resume-search
technology dooms the claims. The law is clear that claim language that would lead
those skilled in the art to perform different tests and get different results is
indefinite. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1341 (Fed. Cir. 2003) (“[T]he patent failed to identify a single standard by which the
‘difference’ could be measured.”); Sandvik Intellectual Prop. AB v. Kennametal, Inc.,
39
No. 10-cv-654, 2012 U.S. Dist. LEXIS 102733, at *66-85 (W.D. Pa. Feb. 16, 2012) (no
guidance in the specification as to how to test “(hkl) reflection,” nor for which of two
ways should be used to measure “standard intensity”).
3.
Claim Construction
If this Court were to determine that while the preamble is limiting, it is not
indefinite, the Court would turn to its proper construction. JobDiva’s proposed
construction cannot work because it suffers from the very same infirmities
described above with regard to the 5% benchmark. Apart from that, the parties’
proposed constructions differ based on JobDiva’s view (seen also in the context of
other terms) that satisfying “any” search criteria is all that is required for
relevance, and Monster’s view that relevance must include meeting at least the skill
and duration of experience criteria.
Monster’s construction is specifically supported by the Specification.16 (See
Compl. Ex. A, Col. 2, lines 4-8 (criticizing the prior art systems for requiring “a
further manual review tallying the maximum possible duration of experience for
each required skill or experience-related phrase”).) Should the term “improve a
precision ratio when searching a resume database” require construction, this Court
agrees with Monster’s proposed construction. The Court’s rationale in this regard is
similar to that set forth with regard to terms C and D below. The invention is
plainly about enabling electronic searches on a candidate’s skill and experience
The Court understands it need not choose only between the parties’ competing constructions; it
may find another more appropriate.
16
40
level for a sought skill. As discussed below, the Specification repeatedly describes
the invention in just those terms.
B.
“each occurrence of the phrase” / “each occurrence of the . . . phrase”
Claim 1 of the ‘573 Patent states, in relevant part:
wherein the term of experience for each said at least one skill or
experience-related phrase is a summation of the term of experience for
each occurrence of the phrase associated with a different
experience range;
(Compl. Ex. A, Col. 36, lines 55-59 (emphasis added).)
JobDiva’s proposed construction of this term, which appears in all four of its
Patents, is “each instance where the skill or experience-related phrase occurs in the
resume.” Monster proposes “each instance where the same phrase appears in the
resume.”
According to JobDiva, to the extent that in Monster’s construction, “same
phrase” means the same thing as “phrase,” it is redundant; and to the extent it is
not redundant, Monster is attempting to rewrite the claim. At the Markman
hearing, the parties agreed that there essentially is no difference between the
parties’ constructions and took this claim off the table until further notice to the
Court. (See 7/11/14 Tr. at 72-73.)
C.
“required term of experience”
Claim 1 of the ‘573 Patent states, in relevant part:
send a database query to the resume database, the database query
including a job description that includes at least one job requirement,
each said at least one job requirement including a required skill or
experience-related phrase, and a required term of experience;
41
(Compl. Ex. A, Col. 37, lines 2-6 (emphasis added).)
Monster proposes the phrase be construed as the “specified minimum
duration of experience for a required skill or experience-related phrase.”17
JobDiva argues that the term “required term of experience” as used in this
portion of the claim, should be given its plain and ordinary meaning. (See
Mitzenmacher Decl. ¶ 20.) If the Court determines that construction is needed,
JobDiva’s proposed construction is “a minimum duration experience.” JobDiva’s
position is that the term “required term of experience” need not pertain to a
required skill; rather, “it can be more general, for example the total duration of
experience in the workforce.”18 (JobDiva’s Reply Claim Construction Brief for the
JobDiva Patents (“JobDiva Reply”) at 3, ECF No. 72.)
The Court agrees with Monster’s proposal based on the Court’s determination
of how one of ordinary skill in the art at the time would construe the claim language
in light of the Specification. The parties’ experts disagree as to how one of ordinary
skill in the art at the time would construe this term; the Court’s determination is
based, in part, on a factual finding that one expert’s view should be credited over
another’s.
JobDiva’s position lacks real support in the intrinsic evidence. The invention
is concerned with enabling prospective employers to search for candidates with
particular skills at defined experience levels. This feature is what distinguishes
Monster’s proposed construction of the term as it appears in the ‘221 Patent is “specified minimum
duration of experience.”
18 JobDiva did concede at the Markman hearing that a query requires both experiential and
temporal components. (See 7/11/14 Tr. at 61-62.)
17
42
JobDiva’s invention from the prior art systems and methods, which “require[d] a
further manual review tallying the maximum possible duration of experience for
each required skill or experience-related phrase.” (Compl. Ex. A, Col. 2, lines 4-8.)
The Specification criticizes this defect of the prior art, and then articulates a “need”
for a system that can “accommodate requiring a candidate to possess the
qualification or requirement for a specified minimum period of time” (id. Ex. A, Col.
3, lines 5-7). According to the Specification, JobDiva’s invention “addresses this
need.” (Id. Ex. A, Col. 3, line 7.)
The Specification provides numerous examples of the meaning of the term “a
required term of experience,” such as “a minimum two years of experience in the
Java programming language.” (Id. Ex. A, Col. 27, lines 36-37.) Each time the
Specification mentions a minimum duration of experience, it makes clear that the
minimum duration of experience is for a required skill or experience-related phrase.
(See, e.g., id.; id. Ex. A, Col. 8, lines 17-20 (“Each requirement includes at least one
required skill or experience-related phrase and a required minimum duration of
experience associated with the skill or experience-related phrase.” (emphasis
added)); id. Ex. A, Col. 11, lines 4-8; id. Ex. A, Col. 11, lines 59-65; id. Ex. A, Col. 13,
lines 18-24; id. Ex. A, Col. 24, lines 41-46; id. Ex. A, Col. 26, lines 20-24; id. Ex. A,
Col. 27, lines 30-33; id. Ex. A, Col. 28, lines 35-40; id. Ex. A, Col. 29, lines 18-24; see
also Carbonell Decl. ¶ 45.)
To suggest that a “minimum duration of experience” may refer to total
experience in the workforce—and not be tied to any particular skill or experience43
related phrase—guts the point of the invention. The Specification does not describe
searches based on total workforce experience, and there is no support in the
intrinsic evidence that the invention seeks to improve searches on what essentially
amounts to a proxy for age. The invention was created to increase the speed and
accuracy of searches for candidates with experience in specified skills, not to enable
searches based on skill and age. If a hiring manager seeks to hire a candidate with
a minimum of five years of experience in the Java programming language, he
should not, if the invention is working properly, receive the resume of a candidate
who has worked as a fisherman for forty years and decided to try out computer
programming. It also does not make much sense to use the word “minimum” if the
quantity sought is “total.”
As support for its position, JobDiva points to several places in the
Specification.19 The first describes the “resume generator program.” (See Compl.
Ex. A, Cols. 20-21, lines 64-45.) JobDiva points out that the resume generator
program produces a resume summary that includes the total duration of a
candidate’s work experience, and that it derives that total duration from the output
of the resume parser program. (See id. Ex. A, Col. 21, lines 11-13, 25-29.)
According to JobDiva, this means that a parsed resume either contains a field with
the total workforce experience, or that information can be derived from the parsed
resume—in either case the total work experience can be searched upon. (See
JobDiva refers to these portions repeatedly to support its position on various claim terms. The
Court refers back to this portion of the Opinion when that occurs.
19
44
Mitzenmacher Suppl. Decl. ¶ 17.) This argument is inapposite. The resume
generator program is an entirely separate aspect of the invention, unrelated to
parsing the resume or storing its contents. That a separate, unrelated program is
able to “derive” the total duration of a candidate’s work experience for its own
purposes does not mean that the resume database is structured to use as one of its
core query fields a candidate’s total duration of experience.20
JobDiva’s second reference is to the part of the Specification that describes
Figure 9. JobDiva argues that this part of the Specification describes an
embodiment in which a search can be performed only on a required skill (without
specifying any term of experience). The Specification states: “Recruiter 120a enters
a list of all the skill or experience-related phrases sought in candidate 110a (step
905).” (Compl. Ex. A, Col. 30, lines 31-32.) The description continues:
Furthermore, recruiter 120(a) may provide a required minimum
length of experience for any of the skill or experience-related phrases
that comprise the search, whether the phrases are those originally
required or their alternatives as stated by recruiter 120(a).
(Id. Ex. A, Col. 31, lines 3-7 (emphasis added).) JobDiva argues that the word
“may” indicates that including a required term of experience in a search query is
optional.
Moreover, if the invention were such that the database could be queried, at the prospective
employer’s option, for either the total duration of work experience or the term of experience in a
particular skill, then it must allow the prospective employer to indicate his choice in some way in the
query. But the claims and the Specification make no mention of such a feature; there is no
suggestion, for example, that a query can include a variable indicating whether the prospective
employer wants to search for a candidate’s total duration of experience or only experience in a
particular skill.
20
45
At the outset, this interpretation is inconsistent with JobDiva’s
acknowledgement at the Markman hearing that the asserted claims require
searching a resume database using a required skill and a required term of
experience (not just one or the other). (See 7/11/14 Tr. at 61-62.) More importantly,
when read in the context of Figure 9, the passage on which JobDiva relies actually
undercuts JobDiva’s position—it describes a search based on skills and years of
experience for those skills. “[S]tep 905” of Figure 9 explicitly associates skills and
experience-related phrases with durations of experience for such skills or
experience-related phrases (not for total workforce experience). The step instructs:
“receive a search including skills or experience related phrases and a duration of
experience for each” (emphasis added). JobDiva’s reliance on the word “may” in the
Specification is misplaced: in context, “may” means that the “required minimum
length of experience” may be for either the “originally required” skills or their
stated “alternatives.”21 In any event, even if “may” is interpreted to mean that the
recruiter has the option to (but does not have to) provide a required minimum
length of experience, it is not clear how that advances JobDiva’s argument that
such a required minimum length of experience need not be linked to a particular
skill or experience-related phrase.
JobDiva also refers to a passage in the section in the Specification entitled
“Features and Advantages.” (Compl. Ex. A, Col. 5, lines 14-18.) The passage states:
The word “may” may also be used simply because the Specification is describing what the
invention enables recruiters to do.
21
46
The resume management and recruitment workflow system allows a hiring
manager or recruiting representative to search a resume database for a
candidate having a specific skill or experience-related phrase at a required
minimum duration of experience.
(Id. (emphasis added).) JobDiva asserts that the word “allows” suggests
optionality—that a hiring manager is permitted but not required to search for a
skill-plus-required experience level. In the context of the claims and the
Specification, “allows” means no more than “enables.” It is suggestive of what the
invention enables, versus, for instance, prior art.
The prosecution history also undercuts JobDiva’s construction. In
distinguishing the ‘823 claims from the Kurzius reference following a § 102
rejection, the applicant made clear that the term of experience was for a skill or
experience-related phrase:
In the Kurzius system, . . . the candidate may use a . . . form to specify
a level of expertise associated with a particular skill keyword. In
contrast to Kurzius, independent claims . . . as amended, further recite
that each skill or experience-related phrase has “an experience
range determined by examining a use of the skill or experience-related
phrase in the resume, and a term of experience based on the
experience range” where the parsed resume includes “the term of
experience for each said at least one skill or experience-related
phrase” located in the resume. In further contrast to Kurzius,
independent claims . . . as amended, further recite that the term of
experience for each skill or experience-related phrase is “a summation
of the term of experience, or a portion of the term of experience, for
each occurrence of the phrase associated with a different experience
range.”
(Fisher Decl. Ex. 5 at JD00003978 (emphasis added).)
JobDiva argues that, in making this prosecution-history argument, Monster
conflates resume parsing (in which a term of experience is computed for each skill
47
or experience-related phrase) and resume searching. JobDiva acknowledges that in
order to search, a resume first must be broken into its constituent elements—a
process generally referred to as “parsing.” (See 7/11/14 Tr. at 12 (“You do parse. . . .
Then you can run searches.”).) However, according to JobDiva, “[s]imply because a
resume may be parsed to enable searching by a required term of experience for a
required skill, it does not mean that the claims require such searching.” (JobDiva
Reply at 2.) This position is untenable. The point of parsing is to enable searching
on that which has been parsed, and one cannot search for information that has not
been parsed and stored. While it may be correct that not all information parsed
must be searched, the one is nonetheless required for the other. As Monster’s
counsel argued at the Markman hearing, “You have to search the database that you
have created.” (7/11/14 Tr. at 79.)
Throughout the Specification and the claims, the invention is described in
sequential steps: (1) receiving a resume, (2) parsing into skills, (3) computing the
number of years the candidate has in each skill, (3) storing that information in a
database, and (4) allowing potential employers to search for candidates meeting job
requirements for skills at particular experience levels. The claims repeatedly link
duration to specific skills or experience-related phrases. Consider Claim 1 of the
‘573 Patent for example:
compute a term of experience for each said at least one skill or
experience-related phrase . . .
wherein the term of experience for each said at least one skill or
experience-related phrase is a summation of the term of experience
for each occurrence of the phrase . . .
48
[and]
create a parsed resume . . . including . . . the term of experience
computed for each said at least one skill or experience-related
phrase, and a relationship between the term of experience and
each said at least one skill or experience-related phrase . . .
(Compl. Ex. A, Col. 36, lines 39-67 (emphases added).) It is clear that what is
parsed and stored, and therefore what can be searched, are terms of experience for
particular skills, not any overall workforce experience. Indeed, in response to a
question by the Court at the Markman hearing as to whether the claims recite
parsing or storing candidates’ total years of experience in the workplace, JobDiva at
first conceded that they do not.22 (7/11/14 Tr. at 70 (“I don’t have a cite for you right
now.”).)
JobDiva also argues that whatever the construction might be for the ‘573
Patent, that construction does not apply to the ‘823 Patent because different patents
use this term differently. In the ‘823 Patent, the phrase “required term of
experience” appears only in dependent, and not independent claims. According to
JobDiva, Monster’s construction seeks to import this phrase into the independent
claims. This position is incorrect. The Specification is shared by these two patents,
and nothing in the claim language suggests a different meaning for this term in one
patent versus the other.
JobDiva’s counsel later pointed to the fact that the “resume generator” derives “total duration of
experience.” (7/11/14 Tr. at 81-82). As discussed above, this argument does not advance JobDiva’s
position.
22
49
In addition, JobDiva points to the fact that the ‘221 Patent uses the
connection “for” rather than “and”: “said at least one job requirement comprising a
required skill or experience-related phrase and a required term of experience for the
required skill or experience-related phrase.” (Compl. Ex. B, Col. 24, lines 6-9
(emphasis added).) According to JobDiva, the use of the word “for” in the ‘221
Patent reflects an affirmative intent to link “required term of experience” with “skill
or experience-related phrase,” suggesting that the other Patents are not so limited.
The Court disagrees. As used in the Patents, the words “for” and “and” both act as
grammatical connections between the skill and the term of experience.
The Court credits Carbonell’s reading of the claims the Specification from the
perspective of one skilled in the art. Carbonell states that Monster’s proposed
construction is supported by the context of the surrounding claim language.
(Carbonell Decl. ¶ 48.) He then recites the claim language and the near-by
connections between “required term of experience” and a skill or experience-related
phrase. (See id.) Carbonell also states that the common specification “consistently
clarifies that the minimum duration of experience is for a required skill or
experience-related phrase.” (Id. ¶ 45; see also id. ¶ 46-47.) He explains how the
invention works from the perspective of one skilled in the art: if a resume reflects
that a candidate worked with the Java programming language for a total of three
years, JobDiva’s system would create a parsed resume having (1) something
representing the Java programming language as a skill or experience-related
phrase, (2) information corresponding to three years of experience, and (3) a way to
50
reconstruct that the skill and the experience duration are related to one another.
(Id. ¶ 51.) JobDiva’s construction, according to which “required term of experience”
is untethered to any particular skill, such as Java programming, does not make
sense to Carbonell because it “creat[es] a mismatch between the types of
information stored in the resume database and what one tries to search for in that
database.” (Id.) The Court agrees.
Accordingly, the Court agrees with Monster’s proposed construction of
“required term of experience.” It would make no sense to have a generalized
reference to a “term of experience” without specifying to what that term relates. It
is a term of experience of “what”? It cannot be that the term of experience could
refer to something outside of the claim and undefined. The answer is at hand—
indeed it is peppered repeatedly throughout the patent: it is a term of experience in
a skill or experience-related phrase.
D.
Satisfying the Job Description or Search Criteria
Claim 1 of the ‘573 Patent states, in relevant part:
receive a result set in response to the database query, wherein the
result set includes the resume when the parsed resume satisfies
the job description.
(Compl. Ex. A, Col. 37, lines 7-9 (emphasis added).)
Claim 1 of the ‘823 Patent states, in relevant part:
wherein each matching resume is one of said at least one resume
having the parsed resume associated with the matching resume
satisfying the search criteria.
(Id. Ex. C, Col. 37, lines 1-3 (emphases added).)
51
Claim 1 of the ‘221 Patent states, in relevant part:
a second display region including a matching resume that satisfies
the job description.
(Id. Ex. B, Col. 24, lines 10-11 (emphasis added).)
Claim 1 of the ‘715 Patent states, in relevant part:
wherein said at least one skill or experience-related phrase includes
said at least one required skill or experience-related phrase, or at
least one implying phrase for said at least one required skill or
experience-related phrase, that satisfies the job description,
(Id. Ex. D, Col. 37, lines 9-14 (emphases added).)
The parties differ as to the construction of the bolded portions. Because their
positions turn on common issues, the Court deals with them as a group.
JobDiva asserts that no construction is necessary for these terms. If the
Court determines that construction is necessary, JobDiva proposes the following:
First term: “when the parsed resume meets any of the job requirements in
the job description”
Second term: “parsed resume that meets any of the search criteria”
Third term: “a resume that meets any of the job requirements”
Fourth term: “skill or experience-related phrase includes said at least one
required skill or experience-related phrase, or at least one implying phrase
for said at least one required skill or experience-related phrase, that meets
the job description”
Monster proposes the following constructions:
First term: “when (1) at least one skill or experience-related phrase in the
parsed resume matches the required skill or experience-related phrase of the
job description; and (2) the term of experience for the skill or experience-
52
related phrase that matches the required skill or experience-related phrase
satisfies a specified minimum duration of experience”23
Second term: “parsed resume that includes a specified minimum duration of
experience for a required skill or experience-related phrase”
Third term: “a resume for which: (1) at least one ‘skill or experience-related
phrase’ in the resume matches a ‘searchable phrase’ of the job
description; and wherein (2) the ‘term of experience’ for the ‘skill or
experience-related phrase’ that matches the ‘required skill or
experience-related phrase’ satisfies the ‘required term of experience’
[i.e. the specified minimum duration of experience]”
Fourth term: “skill or experience-related phrase includes said at least one
required skill or experience-related phrase, or at least one implying phrase
for said at least one required skill or experience-related phrase, accompanied
by a term of experience for it that meets the job description” (emphasis
added)24
The heart of the dispute between the parties is whether a job description (or
search criteria) is “satisfied” by a resume meeting any of the job requirements, or
whether satisfaction narrower than that—and occurs when there is not only a skill
match, but also a match in required minimum duration of experience. The Court’s
example above bears repeating here. Imagine a job description states that a
company seeks to hire candidates with five years of experience in Java who are
college educated, speak fluent Mandarin, and are available to work on the West
Coast. Does a resume of someone with two months of Java experience who speaks
This is Monster’s proposed construction of the term as it appears in claims 1, 76, and 203 of the
‘573 Patent. Monster’s proposed construction of the term as it appears in claims 255, 333, and 466 of
the ‘573 patent is as follows: “when (1) at least one searchable phrase in the parsed resume matches
the required skill or experience-related phrase of the job description; and (2) the term of experience
for the searchable phrase that matches the required skill or experience-related phrase satisfies a
specified minimum duration of experience.”
24 This proposed construction appears in Monster’s Response Claim Construction Brief (“Monster
Resp. Br.”). (Monster Resp. Br. at 10, ECF No. 57.)
23
53
only Latvian, is self-educated, and can only work in Florida “satisfy” this job
description? Surely not. This example shows that “satisfying” a job description
requires more than matching any one aspect of the job description.
JobDiva argues that nothing in the claim language indicates a special
definition of the phrase “satisfies the job description” and that, in particular, there
is no requirement that “satisfy” as used in the asserted claims requires any
matching of a required duration of experience. To support its position, JobDiva
points to the following passage in the Specification:
The candidates in this short list will have the required skill or
experience-related phrases at possibly the required duration of
experience as long as the resume contains job narratives that contain
the skill or experience-related phrase, and the duration of various jobs
held by the candidate.
(Compl. Ex. A, Col. 5, lines 21-24 (emphasis added).) JobDiva seizes on the word
“possibly” to argue that a successful resume—one that satisfies the job description—
might or might not reflect any particular duration of experience for a skill. This
misinterprets the plain meaning of “possibly” in the context of the intrinsic
evidence. The word “possibly” merely highlights the distinction between the
contents of a resume and the actual experience of a job candidate in a particular
skill. The resume parser calculates a projected—not precise—duration of
experience for each skill based on the date ranges provided in the resume. For
example, Candidate X who worked as a computer programmer for two years might
have used Java during the first year and C++ during the second. Such a candidate
54
would have only one year of actual experience with each language, but the parser
would not know that, and would record two years’ experience for both languages.
Thus, when a prospective employer seeking candidates with at least two years of
experience in Java runs a query, Candidate X’s resume would be returned as
“possibly” satisfying the job description; upon further review or inquiry, the
employer would see that it does not in fact. That is what “possibly” means—it does
not mean more, and it should not be read to eviscerate the point of the invention.
(See id. Ex. A, Col. 5, lines 8-13 (referring to the term of experience for a skill or
experience-related phrase as “the maximum possible duration of experience”).)
JobDiva also argues that Monster’s construction contradicts claim 1 of the
‘715 Patent, which states, in relevant part:
wherein said at least one skill or experience-related phrase includes
said at least one required skill or experience-related phrase, or at least
one implying phrase for said at least one required skill or experiencerelated phrase, that satisfies the job description,
(Compl. Ex. D, Col. 37, lines 9-14.) JobDiva argues that this language expressly
indicates that a skill match alone is enough to “satisfy” a job description that
requires a skill and a term of experience. The Court disagrees. The claim explicitly
defines a “job description” as comprising “at least one job requirement including a
required skill or experience-related phrase and a required term of experience.” (Id.
Ex. D, Col. 36, lines 45-47.) Thus, to satisfy even a single requirement of a job
description requires a match in both skill or experience-related phrase and the
associated required term of experience.
55
JobDiva also argues that Monster’s proposed construction reads out two
embodiments: (1) an embodiment that, according to JobDiva, allows for searching
based on total workforce experience, referring (once again) to the resume generator
program, which “produces a resume summary that includes the total duration of
work experience of candidate 110a” (Compl. Ex. A, Col. 21, lines 11-13), and (2) an
embodiment in which, according to JobDiva, a search can be performed on only a
required skill (searching by a term of experience is optional), referring to the
Specification’s description of Figure 9 (id. Ex. A, Col. 31, lines 3-7). For the reasons
described with respect to term C above, these arguments are inapposite. There is
no necessary connection between the resume generator program and a search
return generated after a query of an already parsed resume. And the word “may,”
when read in conjunction with Figure 9, does not suggest that including a term of
experience in a search query is optional.
Monster supports its position with intrinsic evidence. Monster points out
that in each of the variations of the wording, there is a consistent use of a singular
term: satisfying “the job description” (claims 1 of the ‘573, ‘221, and ‘715 Patents),
and “satisfying the search criteria” (claim 1 of the ‘823 Patent.) According to
Monster, the phrase “job description” is shorthand for a set of requirements
consisting of a required skill or experience-related phrase and a specified minimum
duration of experience for such skill or experience-related phrase. The use of the
singular article “the” indicates a specific job description—that is, the one entered by
the hiring manager. Accordingly, whatever criteria the hiring manager has entered
56
constitute “the” job description—and that job description is what the parsed resume
must satisfy. (There is nothing which suggests that the resume generator program
has anything to do with establishing the criteria in the job description.)
In addition, the creation of a job description is described in the Specification
itself. That description is clear that the hiring manager must enter at least one
skill or experience-related phrase and a minimum duration of experience:
Recruiter 120a determines a set of requirements and searches resume
management and recruitment workflow system 140 for any resume
that matches the set of requirements. Each requirement
includes at least one required skill or experience-related
phrase and a required minimum duration of experience
associated with the skill or experience-related phrase. The
phrase ‘matches the set of requirements’ indicates that the resume
includes each experience-related phrase in the set of requirements and
that the maximum possible duration of experience for each experiencerelated phrase exceeds the required minimum duration of experience
defined by the hiring manager 130a.
(Compl. Ex. A, Col. 8, lines 14-25 (emphasis added).) Monster also points to the
following portion of the ‘221 Specification:
To satisfy the job description, the matching resume includes the
required skill or experience-related phrase for each job requirement,
and the term of experience for the required skill or experience-related
phrase in the resume is greater than or equal to the required term of
experience.
(Compl. Ex. B, Col. 4, lines 26-31 (emphasis added).)
The Court agrees with Monster’s proposed construction. To satisfy that job
description requires having a match in both a specified skill or experience-related
phrase and the required term of experience for such skill or experience-related
phrase.
57
E.
“means for receiving a result set in response to the database query”
Claim 466 of the ‘573 Patent states, in relevant part:
means for receiving a result set in response to the database
query, wherein the result set includes the resume when the parsed
resume satisfies the job description.
(Compl. Ex. A, Col. 78, lines 44-46 (emphasis added).)
Both parties agree that this is a means-plus-function claim, and both agree
that the function is “receiving a result set in response to the database query.”
However, the parties disagree as to the means or structure required to achieve that
function.
JobDiva asserts that the “means for receiving a result set in response to the
database query” should be construed as having the structure of “a computer
programmed with the portion of user interface program 310 or resume searching
program 315 that receives the results of the resume database search as described in
the Specification at 12:55-13:12 and 18:48-20:63.” (Mitzenmacher Decl. ¶ 37.)
According to Mitzenmacher, “[t]he specification discloses that for any search query
run by the resume searching program, the search results are submitted back to the
resume searching program and then displayed on the user interface.” (Id.)
Mitzenmacher opines that “the form of the query is irrelevant to the means by
which that a result set is received in response to that query.” (Id. ¶ 38.)
Monster’s proposed structure is “an algorithm that requires receiving a result
set in response to a query based on a specified minimum duration of experience for
a required skill or experience-related phrase.”
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The essential dispute between the parties is, then, yet again, whether a
“specified minimum duration of experience” is an implicit part of the term. It is.
The “means” here is a structure; the issue is whether a structure may be designed
without particular reference to the form of query. The Court cannot determine this
structural issue in the abstract—it must, and does, refer to the experts whom the
parties have proffered. The experts differ as to this technical issue. The Court
agrees with Carbonell, whom the Court found credible and well informed.
Carbonell was quite clear that the form of query sent (at least skill-plus-experience
level) informs the results received, and that, as a structural matter, the algorithm
must anticipate the form of the result.
JobDiva argues that there is no basis in the language of the claims or the
Specification to require a particular type of response from the database, namely a
result set with resumes that contain a required minimum duration of experience.
Mitzenmacher states, “[T]here is nothing in the claim language that requires a
specific form of query, and the form of the query is irrelevant to the means by which
. . . a result set is received in response to that query.” (Mitzenmacher Decl. ¶ 38.)
According to JobDiva, the structure is sufficiently set out in the user interface
program 310 and the resume-searching program in 315. JobDiva also points to
embodiments which it argues do not require a term of experience to be searched
(Compl. Ex. A, Col. 30, lines 31-37, 50-54; id. Ex. A, Col. 31, lines 3-5) as support.
JobDiva’s position incorrectly reads the Patent. The Patent anticipates queries of a
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specific type (skill-plus-experience level) and results which satisfy those queries—
that is, candidates with the skills-plus-experience level.
Carbonell, from the perspective of one of ordinary skill in the art at the time,
states credibly that “at the time of the invention, [one skilled in the art] would have
known that storing information in a database means that the information would be
stored in one or more ‘tables.’” (Carbonell Decl. ¶ 57.) And there are many possible
structures for a table storing resume information. (Id. ¶ 57.) Carbonell opines that
Monster’s construction identifies the algorithm’s requirement. (Id. ¶ 62.) Put
another way, the algorithm is not just any algorithm—it must be designed to
receive the type of result set being returned. According to Carbonell, the types of
information returned certainly impact the structure. A structure needs to be
properly designed to account for expected fields. He notes also that a portion of the
Specification to which JobDiva refers in fact supports his opinion: “[r]esume 115a
meets the input criteria if the rounded-up required duration of each required
experience-related phrase or its stated alternative in the job criteria is less than the
maximum-total-duration tag of the experience-related phrase or its alternative in
resume 115a.” (Id. (emphases added).) That is, the input criteria include a skillplus-experience level; and returned results include skill-plus-maximum-totalduration tag. Thus, the expected query and expected form of result contain
expected types of content.
Carbonell states that a structure corresponding with the “means for receiving
a result set in response to the database query” includes an “algorithm that requires
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receiving a result set in response to a query based on a specified minimum duration
of experience for a required skill or experience-related phrase.” (Id.) Carbonell,
who speaks from the perspective of one skilled in the art, and whom the Court
found credible and reliable, states that “this algorithm would be necessary to
perform the function of ‘receiving a result set in response to the database query’ in
the context of the claims in which this term appears.” (Id.)
The Court’s determination is, therefore, that the term should be construed as
Monster proposes.25 This determination is, as set forth above, necessarily a mixed
question of law and fact.
F.
“means for sending a database query to the resume database”
Claim 466 of the ‘573 Patent states, in relevant part:
means for sending a database query to the resume database,
the database query including a job description that includes at least
one job requirement.
(Compl. Ex. A, Col. 78, lines 38-40 (emphasis added).)
Both parties agree that claim 466 is also a means-plus-function claim. They
agree that the function is “sending a database query to the resume database.”
However, as with term E, they differ as to structure needed to accomplish that
JobDiva argues that inclusion of the duration requirement by Monster effectively rewrites the
claim to add the following language at the end: “and the term of experience for the skill or
experience-related phrase that matches the required skill or experience-related phrase satisfies a
specified minimum duration of experience.” This is incorrect. The only reason Monster proposes the
wording is that the parties disagree as to whether the concepts are already embedded in the claim.
The Court finds that they are implicitly embedded. However, to eliminate doubt, this additional
wording makes clear that which is already implied.
25
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function and whether the structure must be based on a specified minimum duration
of experience for a particular skill.
The arguments here are variations on those already discussed in term E.
JobDiva asserts that this phrase should be construed as having a structure defined
as “a computer programmed with the portion of resume searching program 315 that
queries the database as described in the Specification at 18:48-20:63.”
Mitzenmacher states that “the resume searching program receives as input the
search criteria that was entered into the data entry program.” (Mitzenmacher Decl.
¶ 44.)
JobDiva again points to passages in the Specification that allegedly contain
embodiments do not require that a term of experience be searched. Specifically,
JobDiva points to the Specification at 30:31-37; 30:50-54; and 31:3-5. (Compl. Ex. A,
Col. 30, lines 31-37, 50-54; id. Ex. A, Col. 31, lines 3-5.) The first two passages refer
to a search by a recruiter based on a skill or experience-related phrase; the third
passage begins “furthermore” and states that a recruiter “may” provide a required
minimum length of experience for any skill or experience-related phrases (Compl.
Ex. A, Col. 31, lines 3-5). JobDiva’s position here is consistent with its position
elsewhere: that the query need not have both a skill and an experience level for that
skill; it can have the former without the latter. For all of the reasons already set
forth above, and as additionally discussed below, this is unduly broad and
ultimately incorrect.
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Similar to its position with respect to term E, Monster proposes the structure
as “an algorithm that requires a query based on a specified minimum duration of
experience for a required skill or experience-related phrase.”
Monster argues that—as with receiving the query results—the algorithm for
the search must account for queries necessarily based on a minimum duration of
experience for each skill. Carbonell, from the perspective of one skilled in the art at
the time, describes the algorithm requirement. (Carbonell Decl. ¶ 61.) He also
refers to a portion of the Specification to which JobDiva cites— namely the
statement “[r]esume 115a meets the input criteria if the rounded-up required
duration of each required experience-related phrase or its stated alternative in the
job criteria is less than the maximum-duration tag of the experience-related phrase
or its alternative in the resume 115a”—as supportive of Monster’s construction.
(Id.) Similar to his statement with regard to term E, he states that this algorithm
would be necessary to perform the required function, because the claims require
that the “database” store a term of experience for a skill or experience-related
phrase. (Id.)
Here, again, the Court is choosing between two experts who opine differently
as to how one of ordinary skill in the art would understand this term. Carbonell’s
explanation was credible, consistent, and supported by the Specification.
Mitzenmacher’s was not. The Court agrees with Monster’s proposed construction
and its determination is a mixed question of law and fact.
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G.
“graphical user interface, comprising a first display region . . .; and a
second display region”
Claim 1 of the ‘221 Patent states, in relevant part:
a graphical user interface, comprising:
a first display region including a job description that includes at least
one job requirement, each said at least one job requirement comprising
a required skill or experience-related phrase and a required term of
experience for the required skill or experience-related phrase; and a
second display region including a matching resume that satisfies
the job description.
(Compl. Ex. B, Col. 24, lines 4-11 (emphasis added).)
JobDiva proposes the following construction: “graphical user interface
comprising a first region . . . and a second region displayed on a screen at the same
time.”
According to JobDiva, its construction is consistent with the Specification
which refers to a split-screen view: “a split-screen view of a single frame comprising
multiple portions. All portions are contained in a single frame that has common
windowing characteristics.” (Id. Ex. B, Col. 23, lines 22-27.) Mitzenmacher states
that the ‘221 Specification does not disclose an embodiment “where only one region
is displayed at a time” (Mitzenmacher Decl. ¶ 65), and that when a screen is
available but hidden, it is not “displaying information” (Mitzenmacher Suppl. Decl.
¶ 56). JobDiva argues that Monster’s proposal does not meet each of the claim
terms—because not all of the required information would be displayed at the same
time.
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In contrast, Monster proposes the following construction: “graphical user
interface, comprising a first display region . . .; and a second display region, which
may but need not be displayed simultaneously with said first display region.”
The difference between the two proposed constructions relates to whether the
two graphical interface regions must be displayed at the same time—that is,
whether a split-screen view in a single frame is required (as opposed to simply
allowed). JobDiva says “yes” and Monster says “no.”
The Court agrees with JobDiva’s proposed construction. That construction
comports with the plain reading of the claims and Specification. As an initial
matter, the term “region” suggests area; the reference to one region and then
another region suggests two areas on a single monitor. This is consistent with a
split-screen view and simultaneous display and inconsistent with Monster’s
construction. Monster’s construction reads out the word “region” altogether,
focusing solely on display.
H.
“personal and business-related characteristics that the candidate
believes to be relevant to a prospective employer.”
Claim 1 of the ‘221 Patent states, in relevant part:
wherein each resume conveys personal and business-related
characteristics that the candidate believes to be relevant to the
prospective employer,
(Compl. Ex. A, Col. 24, lines 25-27.)
JobDiva asserts that no construction is necessary, but that if the Court
disagrees, proposes “personal and professional information that the candidate
included in his or her resume” (emphasis added). Mitzenmacher states that this
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term would be readily understood by one of ordinary skill in the art. (Mitzenmacher
Decl. ¶ 68.) Mitzenmacher’s view is, however, without experiential basis. The skills
of one of ordinary skill in the art at the time, described by Mitzenmacher (id. ¶ 9),
do not include any particular skill in human resources or resume analysis—and
there is nothing about this phrase that is directly related to “computer science” or
“computer systems and data processing.” (See id.) The Court therefore gives no
weight to Mitzenmacher’s view on this term.
According to JobDiva’s brief, if a candidate places information on his or her
resume, the candidate is expressing a belief that a potential employer may find such
information relevant. (JobDiva Br. at 22-23.) According to JobDiva, this is
supported by the Specification which states, “The resume is a mechanism to convey
personal and business-related characteristics that the candidate believes to be
relevant to a prospective employer.” (Compl. Ex. B, Col. 1, lines 39-41.) Notably,
directly after the disputed portion of the claim is a portion referencing the
requirement that each resume must include at least one skill or experience-related
phrase and an experience range for such. (See id. Ex. B, Col. 24, lines 28-31.)
Monster asserts that this phrase is indefinite and no construction is possible.
According to Monster, the phrase is material because it was added during
prosecution of a parent application to overcome a prior art reference. (See Monster
Resp. Br. at 25; Fisher Decl. Ex. B at MONJD082452-56.) The phrase is used twice
in the Specification for the ‘221 Patent: “wherein each resume summarizes a
candidate’s career and qualifications” in 24:23-24, contrasts with “wherein each
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resume conveys personal and business-related characteristics that the candidate
believes to be relevant to a prospective employer.” Monster argues that there must
be a difference between these two clauses.
In addition, Monster argues that it is impossible for a third party to
understand the scope of the patent’s claims when he or she is required to refer to
the subjective belief of a candidate.
The Court disagrees. The invention is not concerned with the particular
content of any resume beyond certain broad fields of information that the method or
system can then parse. Its inclusion of at least one skill or experience-related
phrase and duration of experience captures the essential required information;
additional information is not required. Whether a candidate includes on his or her
resume that he or she enjoys cooking or hot air balloons is irrelevant to the scope of
the Patent, but is potentially useful information. Searches return resumes; a
returned resume may include a variety of information against which a search is not
run. The Court therefore agrees with JobDiva’s proposed construction.
I.
“iterative database query engine” (Monster’s ‘497 Patent)
The parties have agreed that the construction of the term “iterative database
query engine” is the most significant to resolution of the case. The term at issue
appears in claim 1 of the ‘497 Patent which states, in relevant part:
An iterative database query engine, connected to said memory,
said engine configured to permit an initial search and at least
one subsequent search where said subsequent search operates
on the results of said first search and any previous search . . .
(‘497 Patent, Col. 7, lines 38-42.)
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Monster asserts that no construction is necessary—that the plain and
ordinary meaning to one skilled in the art is sufficient. However, if construction is
needed, an acceptable one is “software that allows searches on a database to narrow
or broaden the set of results returned to better match what a user intended to find.”
(Monster’s Opening Claim Construction Brief (“Monster Br.”) at 8, ECF No. 39
(emphasis added); see also Monster Reply at 4 n.1.)
At the Markman hearing, Monster’s expert on the ‘497 Patent, Allan,
testified that the term referred to “software for accessing a database that provides
iterative querying capability.” (8/1/14 Tr. at 134.) He also opined that “iterative
querying” would have been readily understood by one of ordinary skill in the art
during the relevant time period as searching toward a goal “by making searches on
a database to narrow or broaden the set of results returned to better match what
the user intended to find.” (Id.) In response to a question from the Court, he
testified that the concept of “broadening” required that the subsequent (broader)
query be run against either the entire database or at least a larger set of data than
that against which the previous query was run. (Id. at 143.)
According to Allan, the iterative querying process does not require the
database on which the engine operates to change for each successive search. (Id. at
134.) Put another way, Allan does not view the claim as requiring that each
sequential operation operate on the results of the previous operation. (Id. at 13435.) The key words in the asserted claim are, then, “permit” and “operates on the
results.” In fact, the engine might operate on the entire database each time it runs
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a query (or it might not). (Id. at 135.) According to Allan, since iterative querying
capability is central, and iterative querying anticipates multiple questions leading
the user toward (not away from) a desired result, it cannot require that only a
limiting database be searched.
JobDiva proposes that this phrase be construed as: “A database query engine
that performs a successive series of sequential operations in which each operation
operates only on the results of the previous operation, resulting in a changing
database for each of those successive operations.” (Joint Claim Construction and
Prehearing Statement for Monster Counterclaim at 4, ECF No. 36.) According to
JobDiva, any iterative queries operate only on the sub-database consisting of
previous results.
The parties’ positions are diametrically opposed. From Monster’s
perspective, the querying process—that is, successive searches run by a human
working toward a goal—is the key to the meaning of the term. JobDiva’s position is,
effectively, that the “iterative” or successive action is that of the search engine and
not the human researcher. It is the engine, according to JobDiva, which on each
successive search only searches only against the universe of results returned from a
previous search, not the entire database.
Examples may be useful to illustrate the parties’ positions. Monster’s
position is that, for instance, a hiring manager may initiate a narrow search looking
for a candidate with the following characteristics: five years of experience in Java
programming, speaks fluent Mandarin, has at least a college degree, and will work
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on the West Coast. If the results returned are five resumes and the hiring manager
wants more, he or she could then conduct a successive, or iterative search,
referencing his or her prior search results when doing so. A second, broader search
might be “three years of Java programming experience, conversant in Mandarin, no
college degree required, will work on the West Coast.” According to Monster, this
broader but successive search generally would be run against the entire resume
database and could well result in more than five resumes. It would, however, have
been a search constructed with reference to the results of the prior search. Not so
according to JobDiva. JobDiva’s position is that the invention only allows each and
any successive search to search on the dataset corresponding to the results of the
preceding search. Thus, the successive search, while seeming broader, would return
only five resumes. By definition, since each of the five previously returned resumes
meets the criteria, there would be no change in returned results. According to
JobDiva, this immediately apparent limitation of the invention is a result of narrow
claim language.
Another example: Monster’s position allows a hiring manager to run a
successive narrower search, such as by increasing the minimum required duration
of experience from five to seven years and keeping all other criteria the same.
According to Monster, the search could run against the entire database but would
only ultimately return a subset of the five resumes previously returned. An
embodiment of the Patent could include a search against only the five previous
resumes (i.e., the previous result set), but that embodiment is only one manner of
70
conducting the desired successive search. JobDiva’s position is that the successive
search must run against the prior dataset of five resumes.
As another example of the difference between the parties’ positions, consider
the following: According to Monster, if an initial narrow search returns no results,
then a successive search to broaden it would “depend” on the prior results (i.e., the
user runs the successive search because the initial search returned zero), but would
search the entire database. JobDiva’s construction does not allow for this search to
be an “iterative” search. JobDiva’s position is that if zero results were returned,
then the user would need to initiate a new, broader search but could not conduct an
“iterative” broader search and hope for any results greater than zero.
Yet another example highlights additional differences: If an initial broad
search (e.g., “applicants with five or more years of experience as a lawyer”) returns
too many results, according to JobDiva, a successive search to narrow the result set
(e.g., “five years of experience as a lawyer practicing in the area of patent
litigation”), must only run against the set of previously returned results. If the
successive search were worded instead as “five years of experience in patent
litigation,” according to JobDiva, this would also necessarily search only the
previously returned universe of lawyers. According to Monster, the search could
run against the entire database, resulting in a different set of results altogether
insofar as the terms “lawyer” and “litigation” are not equivalent. For instance, a
paralegal might have five years of experience in patent litigation and therefore
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meet the criteria in the second search but not the first. JobDiva’s construction
would foreclose this possibility; Monster’s would not.
The construction of this term, therefore, requires the Court to determine
whether broadening searches could (not necessarily have to) run against the entire
or larger database. Put another way, is Monster limited to a construction in which
the searched dataset is no broader than the previous dataset—or do its claims allow
for or permit an expansion of the searched dataset in successive searches?
The intrinsic evidence supports a construction which permits an iterative
search to run against the full (or a broader) dataset. The Specification provides for
greater breadth than JobDiva allows.
The “Summary of the Invention” posits a number of broad objects of the
invention, including: “It is a further object of the invention to provide a computer
implemented system to assist human resource functions. . . . It is a further object of
the invention to provide an iterative job search engine. . . . It is a further object of
the invention to provide an on-line job and resume search engine.” (‘497 Patent,
Col. 1, lines 54-65.) The breadth of these objects supports Monster’s position.
The system is described as consisting of two interacting databases: a resume
base and a job base. (‘497 Patent, Col. 2, lines 2-4.) “The system will also include
an iterative search engine which handles queries to the resume base and job base.”
(‘497 Patent, Col. 4, lines 6-8.) The iterative search engine may be implemented
through “commercially available database management systems. Other
conventional search and query capabilities may also be used to search the
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database.” (‘497 Patent, Col. 4, lines 11-14.) Importantly, the reference to
conventional search and query capabilities points one to what was known to one of
skill in the art, not a sui generis variation.
The system also provides for pre-programmed but automated querying:
“[T]he system may be configured to periodically query the resume base for resume
records which are related to job records, and, therefore, constitute applications for
specific job postings.” (‘497 Patent, Col. 5, lines 7-10.) This suggests that a human
resources person might want to periodically check on “what’s new.” This entails
iterative querying specifically not against the prior dataset but against new data
entered. This embodiment would be foreclosed by JobDiva’s construction.
Further, the description of the querying process supports Monster’s position.
The iterative search engine may be invoked by either an applicant-user or by an
employer-user. (‘497 Patent, Col. 6, lines 1-4.) “When the iterative search engine is
invoked to search the job base, a number of scroll bar type menus may be presented
to a user. The scroll bar menus can correspond to the various search parameters
and pieces of a job record. The menu presents predetermined options corresponding
to the available entries for the various fields. The user then selects query entries
from the options presented.” (‘497 Patent, Col. 6, lines 4-11.) Fields that are not
limited to predetermined entries may be queried using key words. (‘497 Patent, Col.
6, lines 11-13.) If the search returns a plurality of records, “additional iterations of
the search may be executed.” (‘497 Patent, Col. 6, lines 15-16.) The scroll bars are
then represented to the user; upon re-presentment, rather than displaying the
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entire universe of available entries for each field, only the entries corresponding to
records of entries selected in the previous iteration are displayed. (‘497 Patent, Col.
6, lines 16-21.) The user can then further narrow the selection and submit
additional iterative queries. (‘497 Patent, Col. 6, lines 21-22.)
Nothing in the Specification limits the dataset against which a successive
search can be run. The only narrowed options to which the Specification refers
relate to allowing and enabling a universe of scroll bars from which the user can
then make selections. Put another way, if a user selected “High-Tech” from the
scroll bar menu of industries, upon re-presentment, he or she could see “High-Tech”
already in front him or her, thus saving a certain amount of time necessary to sort
through scroll bar menus. This efficiently allows a successive search to use (or
operate on) a prior search, but nothing in the Specification suggests that the user
could not return to the full scroll bar menu and obtain the broader universe if
desired. Also, the Specification specifically provides for keyword searching.
Nothing prevents a broadening rather than narrowing of keywords.
JobDiva points to the portion of the Specification set out above as supporting
only narrowing rather than broadening iterations. This is an unduly circumscribed
reading of the Patent. As discussed above, the narrowing relates to scroll menus,
not the dataset against which searches are conducted. In any event, the language is
descriptive of only one embodiment. The law does not limit Monster to only those
embodiments referenced in the Patent. See Hill-Rom Servs., Inc. v. Stryker Corp.,
755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in view of the
74
specification, of which they are a part, we do not read limitations from the
embodiments in the specification into the claims.”).
JobDiva also refers to the prosecution history of the ‘497 Patent as requiring
iterative searches cannot be run against broadening datasets. According to
JobDiva, Monster made representations to the Patent Office to which it should be
bound. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir.
2011) (“The patentee is bound by representations made and actions that were taken
in order to obtain the patent.”); Gillespie v. Dywidag Sys. Int’l, USA, 501 F.3d 1285,
1291 (Fed. Cir. 2007) (“The patentee is held to what he declares during the
prosecution of his patent.”).
In particular, JobDiva refers to various places in the prosecution history in
which the applicant defined the word “iterative” as successive. (See, e.g.,
Declaration of Jeremy D. Wilson in Support of JobDiva’s Response to Monster’s
Opening Claim Construction Brief (“Wilson Decl.”) Ex. A at MONJD075218, ECF
No. 56-1.) In context, these references all follow the phrase “through common
industry usage.” (See, e.g., id.) Neither expert disputes that “iterative” means
“successive,” or that one of ordinary skill in the art would understand “iterative” to
mean “successive.” The dispute is, rather, the database against which the
successive search is run.
In this regard, JobDiva cites prosecution history from 1997 and 1998, in
which the applicant attempted to overcome a § 102 rejection as anticipated by
Cummings and a § 103 rejection as obvious based on Clark. (See Wilson Decl. Ex. A
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at MONJD075218-19, MONJD075239-40, MONJD075271.) The first two of these
reference are generally the same.
For instance, in connection with trying to overcome a § 102 objection based on
the Cummings reference, the applicant stated:
While the existence of a database query engine might be inferred from the
Cummings reference, he does not state that such engine uses an iterative
process, nor does he imply that anywhere in the reference. Through common
industry usage, the term ‘iterative’ denotes a successive series of sequential
operations in which each operation operates only on the results of the
previous operation, resulting in a changing database for each of those
successive operations.
(Wilson Decl. Ex. A at MONJD075218 (emphases added).) The key phrase,
according to JobDiva, is the reference to operating “only on” the results of the
previous operation, resulting in a “changing database.” As an initial matter, the
distinction between Cummings and claim 1 of the ‘497 invention is the use of a
search engine configured to allow an “iterative process.” Nothing in this language
suggests that the distinction is, instead, a unidirectional iterative process of neverbroadening searches. Nothing in the ‘497 Specification suggests lexicography
regarding “iterative” unique to the Patent.
The January 16, 1998 reference to Clark in connection with the § 103
rejection uses different language:
Clark does describe a system which makes multiple passes through the
database using different search criteria each time. However, each one of
these passes operates on the entire database, not on the results of a previous
pass. By operating on the same entire database every time, Clark actually
teaches away from this iterative process. Unlike Clark, Applicant’s iterative
approach permits each successive pass to operate on a smaller set of data
than the previous pass.
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(See Wilson Decl. Ex. A at MONJD075271 (emphases added).) According to
JobDiva, this statement binds the applicant evermore to iterative searching against
an ever-smaller dataset. This reads limitations into the language which do not
exist. Instead, this statement suggests that the search is permitted to run against a
smaller database on each successive search, but that it is not required to do so.
Consider an initial search which returns “zero” results. Running a successive
search against a “zero” result set makes no sense but would be all that JobDiva’s
reading allows. This would undermine the very concept of an iterative search.
JobDiva cites a rejection by the PTO on the basis that an iterative database
query engine was disclosed in the prior art, namely in the Parrish et al. reference.
(See Wilson Decl. Ex. A at MONJD075279-80.) This acknowledges that the
applicant was simply referring to routine industry usage of the term “iterative”—
not some unique definition. (Otherwise, prior art referencing standard “iterative”
usage would not have created an issue.) JobDiva concedes that the amendment
Monster made to overcome this rejection was not some change in the definition of
“iterative,” but rather an addition of the term “wherein the job records each contain
a plurality of job records each having a plurality of search key fields.” (Wilson Decl.
Ex. A at MONJD075289-90.) In May of 1988, in reliance on this amendment, the
claim was allowed. (Wilson Decl. Ex. A at MONJD075295.)
Monster points to negotiations between the applicant and the PTO regarding
patentability. In particular, Monster points to further communications between the
applicant and patent examiner as to the meaning of the word “iterative.” In a
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separate office action submission in August of 1997, the applicant changed its
description of “iterative database query engine” from “operates only on” prior
results to “operates on” prior results. (See Wilson Decl. Ex. A at MONJD075239.)
Monster argues that this difference is a substantial one and confirms the breadth of
its claim. Then, in September of 1997, the PTO stated, “Because the term iterative
could also denote the act of execution on one or more statement of instructions
repeatedly, the specification needs to state what exactly is meant by the term
iterative.” (Wilson Decl. Ex. A at MONJD075258.) In the January 1998
amendment, the applicant responded that the main issue in the rejection was the
definition of the word “iterative,” and that “in the interest of expediting prosecution,
claim 1 has been modified to more fully describe the iterative function.” (Wilson
Decl. Ex. A at MONJD075270.) The applicant further stated, “As amended, claim 1
requires that the iterative database query engine can perform two or more
sequential searches, with each search operating on the results of a previous search
(except for the initial search, of course, for which there are no previous results on
which to operate).” (Wilson Decl. Ex. A at MONJD075270-71.)
A September 1997 statement by the examiner acknowledges that the issue
with the “iterative” search engine was that “iterative” was a broad term. (See
Declaration of Robert L. Masterson in Support of Monster’s Opening Claim
Construction Brief (“Masterson Decl.”) Ex. 9 at 12, ECF No. 40-20.) In particular,
the term “could also denote the act of execution on one or more statement of
instructions repeatedly.” (Id.) In this context, the applicant’s subsequent
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amendment—of sequential searches operating on the results of a previous search—
is concerned with the instructions issued by the user, not the dataset. This is
consistent with the description in the Specification focused on efficient use of the
scroll bar. (‘497 Patent, Col. 6, lines 17-22.) Claim 1 itself, as amended, states, in
relevant part: “an iterative database query engine connected to said memory, said
engine configured to permit an initial search and at least one subsequent search
where said subsequent search operates on the results of said first search and any
previous search.” (‘497 Patent, Col. 7, lines 38-42.)
Monster argues that the context provided by reading the entire prosecution
history shows that the statements in the April 1997 Office Action do not meet the
Federal Circuit’s standard for a clear and unmistakable disclaimer. Ecolab, Inc. v.
FMC Corp., 569 F.3d 1335, 1343 (Fed. Cir. 2009) (“[W]hen [the inventor’s]
statements are considered in the context of the prosecution history as a whole, they
simply are not clear and unmistakable enough to invoke the doctrine of prosecution
history disclaimer.”); see also Phillips, 415 F.3d at 1317 (“[B]ecause the prosecution
history represents an ongoing negotiation between the PTO and the applicant,
rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.”). The Court
agrees. Moreover, the final amendment and approval demonstrate that the size of
the database was not relied upon by the PTO for patentability—the records
containing a plurality of search key fields was.
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How, then, is the Court to decide between the parties’ divergent positions?
The key is how one of ordinary skill in the art at the time (1995) defined an
“iterative database query engine.” The parties’ experts differ on this point. The
Court heard the testimony and cross-examination of the experts and has weighed
the evidence in this regard. The Court determines that Allan more accurately
presents the view of one of ordinary skill in the art at the time.
Allan testified consistently and credibly that one of ordinary skill in the art
at the time of the patent application would have understood an iterative querying
database query engine as software for accessing a database that provides iterative
querying, and that a user could search on a database to narrow or broaden the set of
search results to better match was the user intended to find. (See 8/1/14 Tr. at 134;
Masterson Decl. Ex. 2 (“Allan Decl.”) ¶ 29, ECF No. 40-2.) JobDiva criticizes Allan’s
opinions as based on extrinsic and not intrinsic evidence (see, e.g., 8/1/14 Tr. at
135)—and argues that the intrinsic evidence is sufficiently clear that it is
unnecessary (and therefore inappropriate) to refer to extrinsic evidence.
Allan testified that, based on his experience, one of ordinary skill in the art
would understand iterative database query engine to permit successive searches.
That opinion enables the Court to assess the intrinsic evidence from the perspective
of one of ordinary skill in the art. The Court views Polish’s opinions on this issue
similarly: how he, as one of ordinary skill in the art at the time, would understand
the term. The articles Allan references to support his view are often categorized as
extrinsic evidence. However, they are supportive of the basis for his opinion in this
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contested setting. The articles, however characterized, are properly considered as
part of claim construction. The articles provide additional support for Allan’s
position on a disputed issue.
Among the articles Allan cites is a 1991 publication by Christopher Owens
entitled, “A Proposal for Qualitative Relevance Feedback in Biomedical Information
Retrieval.” (Allan Decl. ¶ 33.) In that article, Owens states: “A key feature of
online searching is that searches performed by librarians and experienced searchers
tend to be iterative: The user makes an initial query, and the system returns some
documents. Generally the user can examine the returned documents and
reformulate the query to broaden, narrow, or shift the search.” (Id.) In another
1991 article, this one entitled “Improving the Retrieval of Information from
External Sources,” Susan T. Dumais wrote: “With increases in computer speed,
interactive or iterative searchers are common, and users can reformulate queries in
light of the system’s response to previous queries.” (Id. ¶ 34.) A 1989 article by
Charles R. Hildreth, entitled “Intelligent Interfaces and Retrieval Methods,” states
that “[r]elevance feedback may lead to a refinement or expansion of the user’s query
and ‘fuel’ the system for even better performance.” (Id. ¶ 38.) Other scholarly
works to which Allan refers make similar points. (See id. at ¶¶ 39-46.) The
references stand as the sole source apart from the testimony of the experts and
statements made in the prosecution history as to the meaning of the term
“iterative.” They confirm that Monster’s position—of “iterative” as “successive”—is
correct. They also confirm that “successive” simply means “following” or “next,” and
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does not impose any constraints on the size of the database searched. Nothing in
any of the references precludes broadening iterative searching.
JobDiva proffered the testimony of Nathaniel Polish, Ph.D., in support of its
construction of this term. The Court found Polish not as well informed as Allan.
Polish lacked specific and credible support for his position. Polish testified that he
had not looked for any scientific literature to support his view on this term. (8/1/14
Tr. at 148 (“I haven’t looked for any scientific literature to support that, no.”).) In
response to the Court’s question whether there was anything to which he could
point as an example of the type of iterative database query engine he opined was
reflected in the ‘497 Patent, Polish responded, “I haven’t cited to anything or found
anything in particular.” (8/1/14 Tr. at 150.)
On balance, the Court was persuaded by the combination of evidence
presented on this term by Monster. Notably, JobDiva previously has conceded that
iterative search engines were “well-known in the art going as far back as 1968, and
were routinely used to retrieve information from a computer system comprising
multiple databases.” (Masterson Decl. Ex. 4 at 11, ECF No. 40-15.)
Polish opines that one skilled in the art in 1995 would have understood that a
subsequent search of an iterative database query engine operated only on the
results of the previous operation. (See Declaration of Nathaniel Polish, Ph.D., in
Support of JobDiva’s Response to Monster’s Opening Claim Construction Brief
(“Polish Decl.” ¶¶ 14-15, ECF No 55.) According to Polish, iterative database query
engines were well known in 1995 for having advantages when searching over large
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data sets. (Id. ¶ 15.) Because computers were slower than today, repeated
searching absorbed processor resources and time. (Id.) Successively narrow
searches thus could enable subsequent searches to proceed faster and more
efficiently. (Id.) Polish does not, however, cite any publications which support his
view. He conceded at the Markman hearing that he was relying on his reading of
the prosecution history of the ‘497 Patent, not on the state of the art at the time of
the invention apart from the Patent. (See 8/1/14 Tr. at 147-48.) He also refers to
the same portions of the Specification to which JobDiva referred and which are
discussed above.
He testified that Allan was positing a scenario of multiple new queries—not
an iterative query process. (8/1/14 Tr. at 150.) The infirmity of Polish’s position
was revealed in his response to a question posed by the Court. The Court asked
Polish whether, according to his understanding of the Patent, a first search which
requested resumes where the candidate had experience in “Java” could be followed
by a subsequent search asking for candidates with experience in “Java or C++” as
well as “Java and C++”—the former search being a broadening search and the latter
a narrowing search. (See 8/1/14 Tr. at 156-57.) Polish reads the claim language to
allow only the narrowing search. (Id.) There is nothing in the text of the
Specification, however, which supports the view that an iterative database query
engine cannot support an “or” subsequent search just as well as it can support an
“and” subsequent search. Similarly, the Specification does allow a subsequent
narrowing search (the “and” search in the Java/C++ example above) to run against
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the entire database or against the previously returned results. In short, JobDiva's
interpretation would result in an invention that was a lemon ab initio: a search
engine that could not perform an effective search if effective search required a
broader search than the previous one.
Finally, the Specification is agnostic as to which terms are entered in a
search field-and does not require successively narrowing searches. ('497 Patent,
Col. 6, lines 11-12 ("[F]ields which are not limited to predetermined entries may be
queried using a key word or literal string inquiry.").) There is, in short, nothing
which constrains successive searches to terms or language which lead to a narrower
search. It would be contrary to the state of the art at the time of the invention to
have had designed a search capability that was inherently incapable of returning a
set of relevant results simply because the second search had to "operate on" the
results of the first.
Accordingly, the Court finds that Monster's proposed construction is
appropriate. As this determination required the Court to weigh conflicting expert
testimony, its determination is a mixed question of law and fact.
SO ORDERED.
Dated:
New York, New York
October 3 , 2014
KATHERINE B. FORREST
United States District Judge
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