Google Inc. v. Traffic Information LLC

Filing 52

Brief Plaintiff's Opening Claim Construction Brief. Filed by Google Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E part1, # 6 Exhibit E part 2, # 7 Exhibit E part 3, # 8 Exhibit E part 4, # 9 Exhibit E part 5, # 10 Exhibit F part 1, # 11 Exhibit F part 2, # 12 Exhibit G, # 13 Exhibit H) (Markley, Julia)

Google Inc. v. Traffic Information LLC

Doc. 52

Julia E. Markley, OSB No. 000791 [e-mail] PERKINS COIE LLP 1120 N.W. Couch Street, Tenth Floor Portland, OR 97209-4128 Telephone: [phone] Facsimile: 503.727.2222 Thomas H. Shunk (Ohio Bar No. 0025793) [e-mail] (admitted pro hac vice) Christina J. Moser (Ohio Bar No. 0074817) [e-mail] (admitted pro hac vice) BAKER & HOSTETLER LLP 3200 National City Center 1900 East Ninth Street Cleveland, Ohio 44114-3485 Telephone: [phone] Facsimile: 216.696.0740 Attorneys for Plaintiff

UNITED STATES DISTRICT COURT DISTRICT OF OREGON PORTLAND DIVISION GOOGLE INC., Plaintiff, v. TRAFFIC INFORMATION LLC, Defendant. Plaintiff Google Inc. ("Google") respectfully submits its Opening Claim Construction Brief herewith.

No. CV09-642-HU PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF By Plaintiff Google Inc.

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Dockets.Justia.com

Table of Contents I. II. Summary Of Argument ........................................................................................................... 1 Relevant Facts ......................................................................................................................... 2 A. Traffic's Claims Were Limited To The Display Of Pre-Existing Data ............................... 3 B. The Purpose For Traffic's Invention Is To Provide Data Relevant To Users Without Significant User Manipulation ............................................................................................. 5 III. Relevant Legal Standards ........................................................................................................ 7 A. Intrinsic Evidence Must Be The Primary Guide To Claim Construction ............................ 7 B. No Need To Construe All Terms Presented.........................................................................9 C. Indefinite Terms Must Be Identified As Such ................................................................... 10 D. The Court May Not "Re-Write" The Terms Of The Claims..............................................12 IV. Google's Requested Construction Of Terms And Phrases....................................................12 A. The Indefinite Terms..........................................................................................................14 1. 2. 3. 4. 1. a. b. "Said User" ................................................................................................................ 14 "Traffic Information" ................................................................................................ 16 "Less Than All Available Traffic Information" ........................................................ 18 "Representative Of"...................................................................................................19 "Traffic Monitor" ...................................................................................................... 22 A "Traffic Monitor" Is Not A "Mobile User Station"...............................................23 A "Traffic Monitor" Is A Stationary Device ............................................................. 24

B. Terms Relating To Devices Of The System.......................................................................22

c. A "Traffic Monitor" Measures Current Speed, Frequency, Or Flow Of Multiple Vehicles ............................................................................................................................. 25 2. a. b. c. 1. 2. "Mobile User Station" ............................................................................................... 27 A "Mobile User Station" Is Distinct From A "Traffic Monitor" .............................. 27 A "User" Is A Commuter Who Operates A "Mobile User Station" ......................... 28 "Traffic Information" Is "Displayed Graphically" On A "Mobile User Station" ..... 29 "Traffic Information" And "Traffic Information Representative Of Said Signals Transmitted By Said Traffic Monitors".....................................................................30 "Traffic Information Database" And "Traffic Information Database Containing Data Representative Of Traffic" ........................................................................................ 31
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C. "Traffic Information" Terms..............................................................................................30

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3. 4.

"Information Representative Of...Selected Portions Of Said Traffic Information Database"...................................................................................................................33 "Vehicular Movement" Is Movement Of Multiple Vehicles As Detected By Traffic Monitors.....................................................................................................................33 Google Will Argue Separately That The "Providing...In Response" Terms Improperly Claim Both A System And A Method, Rendering The Claims Indefinite ................................................................................................................................... 34 "In Response To A Request...Providing" ................................................................. 36 a. b. The Response Must Minimize Manipulation By The User ....................................... 36 The Response And The Request Must Occur Simultaneously..................................38

D. The "Providing...In Response" Terms .............................................................................. 34 1.

2.

E. Terms Needing No Construction........................................................................................39 V. Conclusion ............................................................................................................................. 41

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Table of Authorities Cases Acumed LLC v.Stryker Corp., 483 F.3d 800 (2007)......................................................................24 Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200 (Fed. Cir. 1991)............................................10 Aquatex v. Techniche Solutions, 419 F.3d 1374 (2005) ................................................................ 26 Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) .............................................................................. 10 Collegenet, Inc. v. XAP Corp., 2004 U.S. Dist. LEXIS 22370 (D. Or. October 29, 2004)...7, 9, 21 Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) ................................ 11 Davis-Lynch, Inc. v. Weatherford Int'l, Inc., 2009 U.S. Dist. LEXIS 33414 (E.D. Tex. Apr. 20, 2009)............................................................................................................................10 Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291 (Fed. Cir. 2005)..........................................................................................................................................11 Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) ........................................ 18 Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378 (Fed. Cir. 2009) ............................. 7 Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001)..........................15 Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313 (Fed. Cir. 2007) .......................................... 8 Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) ................................ 21, 35 Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010)....................................20 Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379 (Fed. Cir. 2008)........................12 Honeywell Intl. v. ITT Indus. 452 F.3d 1312 (Fed. Cir. 2006) ...................................................... 27 ICU Medical Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368 (Fed. Cir. 2009).....................25 Inpro II v. T-Mobile, 450 F.3d 1350 (2006) .................................................................................. 25 IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005)..................10, 11, 35 K-2 Corp. v. Salomon S.A., 191 F.3d 1356 (Fed. Cir. 1999).........................................................12 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) ................................................... 7, 8 Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340 (Fed. Cir. 2004)..............................................8

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Morton Int'l. Inc. v. Cardinal Chem. Co., 5 F.3d 1464 (Fed. Cir. 1993) ...................................... 11 Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190 (Fed. Cir. 1999)..........................................................................................................................................11 Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) ................................... 15 O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008).................10 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ............................................................. 7, 8 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed.Cir.2001) ........................................................................................................................... 25 Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165 (Fed. Cir. 1993) ................... 12 U.S. Surgical v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir. 1997) ...................................................... 9 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)............................................8 Statutes 35 U.S.C. § 112, ¶ 2.................................................................................................................10, 35

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I.

Summary Of Argument Despite its name, Traffic Information, LLC ("Traffic") invented neither a system for

collecting real-time traffic signals, nor a system for disseminating that data, nor a mobile user station for use by commuters, as its own admissions within the specification of its patents reveal. At best, Traffic claimed to have invented only the idea of displaying "traffic information" on a map on a mobile user station, where the "traffic information" and the map were collected and disseminated utilizing pre-existing technology.1 Even when properly narrowed to the true focus of the invention, Traffic's patents are indefinite in describing what specific "information" is intended for display, nor do they enable the reader to determine how that information is to be derived or "represented." Though the specification provides a few examples of what might be displayed and what ought not be displayed, any reader, including someone of ordinary skill in the art, is left to guess at the scope of the phrase "traffic information." Traffic's claims should be declared indefinite (and, in a later hearing on dispositive motions, invalid for lack of enablement), or alternatively limited to what is depicted by way of example, as no definitions can be derived from the intrinsic evidence to give the claims the necessary precision. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) ["...the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms."]

1

Even this combination of pre-existing information and architecture was known at the time of the filing of the Traffic applications, as Google will demonstrate at the appropriate time for dispositive motions. 1 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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In order to gloss over the claims' deficiencies, it is expected that Traffic will suggest claim term definitions that introduce indefiniteness into the claims, and that effectively "read out" or ignore phrases, such as "information representative of...," a practice that this Court has elsewhere rejected.2 Traffic's suggested definitions take the scope of the claims well beyond the narrow scope dictated by the Examiner's reasons for allowance of the claims. In contrast, Google offers constructions of the terms at issue based on the words of the intrinsic evidence ­ the specification and the prosecution history ­ which provide the only clues to interpreting the claims. In those instances where the boundaries for the scope of the claims simply cannot be resolved, Google has identified the terms that make the claims insolubly indefinite. II. Relevant Facts Traffic alleges that Google's software product "Google Maps for Mobile" ("GMM")3 infringes U.S. Patents 6,785,606 and 6,466,862 (the "Traffic Patents," referred to individually herein by the final three numbers of the patents).4 The Traffic Patents are part of a larger family of fourteen related United States patent applications, originating from three provisional patent applications filed in 1999 and 2000.5 The text of the two patents ­ the "specification" ­ is identical; only the claims of the two patents

2

Collegenet, Inc. v. XAP Corp., 2004 U.S. Dist. LEXIS 22370, at *13 (D. Or. October 29, 2004) ["It is also improper to eliminate, ignore, or `read out' a claim limitation from a claim in order to extend a patent to subject matter disclosed, but not claimed."] 3 GMM is software which can be utilized on cell phones and similar devices in order to display maps on the cell phone for various purposes. 4 The `862 and `606 Patents accompany this Brief as EXHIBITS B and C, respectively. The complete prosecution histories ­ containing the correspondence between the Patent Office and the applicant ­ accompany this Brief as EXHIBITS E and F. 5 A chart depicting the family of related applications accompanies this Brief as EXHIBIT H. 2 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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differ. Throughout this Brief, references to the specification of the patents will be to the earlier of the two ­ the `862 Patent. A. Traffic's Claims Were Limited To The Display Of Pre-Existing Data

Both patents are entitled "System For Providing Traffic Information," and have identical Abstracts describing the claimed invention in general terms: A system for providing traffic information to a plurality of mobile users connected to a network. The system comprises a plurality of traffic monitors, each comprising at least a traffic detector and a transmitter, the traffic detector generating a signal in response to vehicular traffic and the transmitter transmitting the signal. A receiver receives the signals from the traffic monitors. A computer system is connected to the receiver and is further connected to the network. The computer system in response to a request signal received from one of the users transmits in response thereto information representative of the signals transmitted by the traffic monitoring units. Alternative systems for gathering traffic information are disclosed.6 In essence, the patent claims a system in which traffic monitors generate signals from vehicular traffic and those signals are transmitted ultimately to mobile users to be displayed graphically with a map on a "mobile user station." Claim 1 of the `862 Patent is representative of the claims at issue in this case: 1. A system for providing traffic information to a plurality of mobile users connected to a network, comprising: (a) a plurality of traffic monitors, each said traffic monitor comprising at least a detector and a transmitter, said detector providing a signal including data representative of vehicular movement and said transmitter transmitting said signals; (b) a receiver, remotely located from said transmitter, that receives said signals transmitted by said traffic monitors; and (c) a computer system interconnected with said receiver and said network; (d) a mobile user station connected to a global positioning system receiver, a display, and a communicating device; and (e) said computer system, in response to a request for traffic information from one of said mobile user stations, providing in response thereto to said one of said mobile user stations traffic information representative of said signals transmitted by said traffic monitors; (f) wherein said traffic information transmitted by said computer system is displayed graphically
6

`862 Patent, page one.
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on said display; and (g) wherein said computer system has a map database, and said computer system, in response to said request for information, transmits map information representative of a portion of said map database, and said map information representative of said map database is displayed graphically together with said traffic information.7 The patents neither define "traffic information"8 nor do they claim to have invented new methods of obtaining or creating "traffic information." In the "Background Of The Invention" section of the specification, the patents specifically discuss several preexisting patents, all of which are described as "methods (or systems) of providing traffic information."9 The Examiner's statement of reasons for allowance in the `862 Patent's prosecution history cites as key prior art U.S. Patent No. 5,812,069 to Albrecht and U.S. Patent No. 5,959,577 to Fan, the former being directed to a "Method and system for forecasting traffic flows" and the latter to a "Method and structure for distribution of travel information using network."10 In light of these two items of prior art, the Examiner based his allowance of the claims on the inclusion of element (g) of Claim 1 and element (d) of Claim 21, both of which are directed to displaying a

7 8

`862 Patent, 22:34-65. The closest the specification comes to describing specifically what is meant by "traffic information" appears at `862 Patent, 1:14-16: "Commuters have a need for information relating to the congestion and traffic which they may encounter on a commute over a road, highway, or a freeway." While the specification later discusses examples of vehicular speed, direction and "flow," these parameters are set out as examples, not as definition of the information to be provided. 9 The prior art is discussed generally at `862 Patent, 1:10 ­ 4:27. The references are described generally as "prior art methods of providing traffic information to commuters" at 1:18-20. 10 See the May 20, 2002, Notice of Allowance in the prosecution history of the `862 Patent, EXHIBIT E hereto, at page 261. It is noted that the Examiner transposed two digits of the Albrecht patent number and omitted the identifying number of the Fan patent, but the reference to these two patents is clear, given the earlier rejection of most of the requested claims as unpatentable over Albrecht in view of Fan, in the Office Action of August 24, 2001, EXHIBIT E at page 224. 4 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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map overlaid with "traffic information" on a mobile user station.11 The `606 Patent was allowed for similar reasons.12 In light of the importance of the technique for display of "traffic information" to the patentability of the claims at issue, the patents' failure to describe precisely what that information consists of ­ and what display might be "representative of" that information ­ is fatal. The absence of a clear description of the scope of the information to be provided to the mobile user stations renders the claim terms containing that phrase, and the claims themselves, indefinite. If the Court is nevertheless of the view that the terms are sufficiently definite to permit them to be construed, then the "traffic information" terms must be limited to the specific information that is described by example in the specification ­ information that is capable of detection and transmission by the traffic monitors as data signals. Having failed to describe precise parameters for its invention at the time of patenting, Defendant should not now be permitted to expand those indefinite parameters without bound. B. The Purpose For Traffic's Invention Is To Provide Data Relevant To Users Without Significant User Manipulation

In discussing the deficiencies of prior art methods of getting traffic information to commuters ­ radio reports, television broadcasts, and websites accessible by computer13 ­
11 12

EXHIBIT E, at page 262, the Notice of Allowance of May 20, 2002. The prosecution history for the `606 Patent, EXHIBIT F hereto, lacks a detailed statement regarding the reasons for allowance, explaining simply that "In light of the terminal disclaimer, claims 39-61 are found to be allowable." EXHIBIT F at page 125. The terminal disclaimer was filed by the applicant to avoid a rejection for "double patenting" ­ essentially an admission that the invention of the `606 Patent is the same as that described in the `862 Patent. EXHIBIT F, pgs. 101-102 and 107. 13 These three prior art methods are set out in the "Background Of The Invention" at `862 Patent 1:21 ­ 2:7. 5 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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Traffic made it clear that its invention was intended to achieve at least two important results: timely, current information about traffic, and ease of use by an individual engaged in driving a vehicle. Applicant described radio broadcasts of traffic news as "usually intermittent in nature,"14 pointing out that television broadcasts "provide[] little useful information to a commuter...[because] by the time a commuter actually gets into his vehicle and enters a potentially congested area, the traffic may have changed." As for traffic information provided through a web site, applicant noted that "a commuter who is actively driving cannot operate a computer and drive at the same time."15 Applicant described the prior art invention of U.S. 5,982,298 to Lappenbusch as "unfortunately...complicated to operate and requires significant user interaction."16 Summing up the advantages of the invention, applicant explained, "What is desired, therefore, is a system for providing traffic information which allows a commuter to obtain information at any time desired by the commuter...that provides information that is particularly relevant to the commuter, and that provides the information in an easily understood format that may be easily utilized by a commuter while driving."17 Immediacy and currency of the information, and ease of access to the information by a commuter actively engaged in driving a vehicle, are therefore key advantages claimed for the system, and any interpretation of the claims must take account of those advantages.

14 15 16 17

`862 Patent, 1:24-25. `862 Patent, 2:1-3. `862 Patent, 3:7-10. `862 Patent, 4:18-27.
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III.

Relevant Legal Standards This Court is undoubtedly familiar with the general principles of claim construction. See,

Collegenet, Inc. v. XAP Corp., 2004 U.S. Dist. LEXIS 22370 (D. Or. October 29, 2004). The following discussion highlights principles of claim construction of particular relevance to the terms presented in this matter. A. Intrinsic Evidence Must Be The Primary Guide To Claim Construction

It is the sole province of this Court to determine the meaning of phrases contained in the claims at issue, preparatory to the jury's comparing the claims to the accused devices or methods sold or used by the defendant. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). The purpose of claim construction is to determine the meaning and scope of the patent claims that the plaintiff alleges have been infringed. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378, 1381 (Fed. Cir. 2009) In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) the Federal Circuit, sitting en banc, set out several key principles to be followed when construing claims. First, "the claims of a patent define the invention to which the patentee is entitled the right to exclude." Id.at 1312 (internal citation omitted). Further, the words used in a claim are generally given their ordinary and customary meaning, which "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1312-13.

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In construing the claims, the Court should consider, and rely primarily upon, the intrinsic evidence of record: the patent itself, including the claims, the specification, and the prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see also Markman, 52 F.3d at 979. The specification is highly relevant to claim construction, particularly when it contains special or novel definitions of claim terms, i.e., when the patentee has chosen to be his own lexicographer, see Vitronics Corp., 90 F.3d at 1582. Indeed, "the specification is `the single best guide to the meaning of a disputed term'." Phillips, at1321. A patent applicant's statements to the examiner at the Patent Office to obtain a patent (the "prosecution history") are relevant to determining whether the applicant limited the invention in any way in order to secure allowance of the claims. Phillips, 415 F.3d at 1317. Thus, one purpose of consulting the prosecution history ­ another form of "intrinsic evidence" ­ is to exclude any scope that the applicants disclaimed in order to obtain a patent. Id. Moreover, courts should not "construe the claims to cover subject matter broader than that which the patentee itself regarded as comprising its inventions and represented to the [Patent Office]." Microsoft Corp. v. Multi-Tech Sys., 357 F.3d 1340, 1349 (Fed. Cir. 2004). A disclaimer made during prosecution applies regardless of whether the Patent Office relied on it. Id. at 1349-50. And when a later-filed application claims priority to an earlier-filed application (often referred to as a "parent application"), any disclaimer made during prosecution of the earlier-filed application applies equally to the later-filed application. See Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1317-18 (Fed. Cir. 2007). While "extrinsic" evidence may be considered by the Court, it does not have the same weight normally given to intrinsic evidence, as this Court has previously explained:

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Finally, intrinsic evidence is unambiguous, it is improper for the court to rely on extrinsic evidence to contradict the meaning of the claims. See Pitney Bowes, Inc., v. Hewlett-Packard Co., 182 F.3d 1298, 1308-9 (Fed. Cir. 1999). If, after considering the intrinsic evidence, a claim term is ambiguous, a court may look to extrinsic evidence to assist in determining the meaning or scope of terms in a claim. Vitronics, 90 F.3d at 1584. Extrinsic evidence includes expert testimony, inventor testimony, and technical treatises or articles. Id. Extrinsic evidence cannot, however, alter the clear meaning of a claim arising from the patent or prosecution history. Id. Collegenet, Inc., at *14. B. No Need To Construe All Terms Presented

This Court has previously remarked that it is not necessary to construe every term that may be presented to the Court by the parties: While claim terms "must be construed as they would be understood by a person of ordinary skill in the art to which the invention pertains," and thus, "what the claim terms would mean to laymen is irrelevant[,]" Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1149 (Fed. Cir. 2004), if a person of ordinary skill, in the art would understand the term in its ordinary, everyday sense, there is no need to construe the term. E.g., Biotec Biologische Naturverpackungen GmbH v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (district court did not err when it declined to construe "melting" when the meaning of "melting" did not depart from its ordinary meaning or otherwise require construction); Applera Corp. v. Micromass UK Ltd., 186 F. Supp. 2d 487, 524, 526 (D. Del. 2002) (court declined to construe terms "maintain," "maintaining, "and a "whereby" clause because they were clear on their face and the meaning was "self-evident"); Zip Dee, Inc. v. Dometic Corp., 63 F. Supp. 2d 868, 872 (N.D. Ill. 1998) (rejecting defendant's "artificial construct" of the term "tension" because no construction beyond the "ordinary English language meaning of the term" was required and thus, the patent's "references to tension'" [would] go to the jury without the interposition of any judicial gloss."). Collegenet, at *38-*39. As the Federal Circuit made clear in U.S. Surgical v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997), claim construction is "a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use
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in the determination of infringement. It is not an obligatory exercise in redundancy." Definition of claim terms that are not truly at issue between the parties or have acquired no special meaning is mere wasted effort, and can only serve to confuse the jury by adding language for their consideration. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)[" We, however, recognize that district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."]; Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) ["These are not technical terms of art, and do not require elaborate interpretation."]; Davis-Lynch, Inc. v. Weatherford Int'l, Inc., 2009 U.S. Dist. LEXIS 33414 (E.D. Tex. Apr. 20, 2009)["The Court finds that the term `affixed' is readily understandable for a jury and thus no construction is necessary."] In the present case, the Court will see that Traffic has requested a construction for a number of common English terms that have not been used in a special way by the patentee and the meaning of which should be clear to any jury without further definition by the Court. In these cases, the Court is asked to decline further interpretation of the term. C. Indefinite Terms Must Be Identified As Such

The claims of a patent must particularly point out and distinctly claim the subject matter that the patent applicant considers to be the invention. 35 U.S.C. § 112, ¶ 2. A claim does not meet this standard, and is thus considered indefinite, "if it does not reasonably apprise those skilled in the art of its scope." IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005), quoting Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1217 (Fed. Cir. 1991). The purpose of this requirement is to ensure that the claims put the public on notice of the explicit boundaries of the applicant's right to exclude others from practicing the 10 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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applicant's invention. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)[phrase in question was "aesthetically pleasing"]. The words of the claim must be "sufficiently precise to permit a potential competitor to determine whether or not he is infringing." Morton Int'l. Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). As with other aspects of claim construction, a determination of indefiniteness is a question of law for the Court. IPXL Holdings, 430 F.3d at 1380; see also Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005) ["A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims."]. Further, an indefinite claim is invalid. See, e.g., IPXL Holdings, 430 F.3d at 1384 [at issue was claim language describing both a system and a method for operating the system].18 A claim can also be considered indefinite if it recites both a "system" and a "method for using the system." In such a case, it is unclear whether the infringement occurs when the system is created or when a user utilizes the system in the way described in the claim. In IPXL, the federal circuit found just such a situation in claim 25 of the patent at issue in that case, where a system was claimed, but steps for using the system were also set out as required elements of the claim. Id., at1384. A similar difficulty exists with regard to the claims of the patents in suit, as discussed briefly below. Since this variety of indefiniteness does not turn on the definition of a
18

As a consequence of these principles, summary judgment of invalidity is proper with respect to any claim found to be indefinite as a result of claim construction. Claims dependent from that claim would also be subject to summary judgment of invalidity. See, e.g., Datamize, 417 F.3d at 1356; see also Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1198 (Fed. Cir. 1999) (finding dependent claims invalid because they depended on a claim that was invalid under 35 U.S.C. § 112). Rather than submit a motion for summary judgment simultaneously with this Opening Brief on Claim Construction, Google will await the Court's ruling on all requested terms, reserving the right thereafter ­ and based upon the ruling ­ to seek summary judgment regarding any claim for which terms have been found to be indefinite. 11 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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particular term, however, Google will provide a full exposition of that argument in a motion for summary judgment, confining the present Brief to a discussion of disputed claim term meanings. D. The Court May Not "Re-Write" The Terms Of The Claims

In the face of indefinite terms or embodiments described in the specification that do not seem to be covered by the language of the claims the Court may not "re-write" the claims for Traffic. "Courts cannot rewrite claim language." Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008). It is up to the applicant to choose the words used in claiming its invention, and the Court simply gives effect to those terms. K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999). This rule applies even when the claim as construed would not include illustrated embodiments contained in the specification. Helmsderfer, supra. "[C]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth." Tex. Instruments, Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). IV. Google's Requested Construction Of Terms And Phrases Google requests that the claim terms at issue in this matter be construed in the manner set out in EXHIBIT A hereto,19 a chart that includes Google's requests both for the terms it originally designated for construction and also for the additional terms designated by Traffic. For purposes of clarity in this Brief, Google has divided the terms into groups, as set out below. Some of the terms designated by Traffic are shorter portions of phrases designated by Google; in

19

EXHIBIT A is a simplified chart derived from the Joint Claim Construction Chart submitted earlier by the parties. The Joint Claim Construction Chart is provided as EXHIBIT D. 12 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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such instances, Google asks that the shorter phrases be construed only in context, as part of the larger phrase indicated. The Indefinite Terms o said user o less than all available traffic information o traffic information o traffic information representative of said signals transmitted by said traffic monitors o information representative of . . . selected portions of said traffic information database o data representative of traffic Terms Relating To Devices Of The System o traffic monitors o mobile user station o said user o displayed graphically "Traffic Information" Terms o traffic information representative of said signals transmitted by said traffic monitors o data representative of traffic o information representative of . . . selected portions of said traffic information database o traffic information o traffic information database o vehicular movement

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The "Providing...In Response" Terms o in response thereto [to a request] providing to said one of said mobile user stations o providing in response thereto o providing to said one of said mobile user stations o in response to

Terms Needing No Construction o computer system o interconnected o map database A. The Indefinite Terms

Certain claim terms at issue are insolubly indefinite, making it impossible for the Court to arrive at an appropriate definition of the terms for the jury. Google asks that the terms discussed in this section be declared indefinite and that no definition be given for them by the Court. Later in this Brief, Google provides a preferred definition for the terms arguendo, should the Court determine that the terms are definite, but by doing so Google does not waive its primary position that no definition of the terms based on the intrinsic evidence is possible. 1. "Said User"

Claim 9 of the `862 Patent is dependent upon claim 1, and adds the limitation, "...wherein said user provides latitude and longitude information to said computer system." Claim 1, however, does not mention the word "user" and therefore provides no antecedent basis for the phrase "said user" in claim 9. A term lacking an antecedent basis is indefinite "where

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such basis is not otherwise present by implication or the meaning is not reasonably ascertainable." Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008), quoting Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Claim 1, in fact, specifically refers to a "mobile user station," not a "user." The distinction is significant, as claim 9 refers to the user providing latitude and longitude information to the computer system of the claim. Claim 9's reference to a "user" suggests that a human being using the system provides the latitude and longitude information. Had claim 9 instead referred to the information being provided by a "mobile user station," the implication would be that the device itself automatically provided the latitude and longitude information, presumably relying on its connection to a global positioning system. Therefore, claim 9 contains a term that is subject to at least two possible interpretations ­ one that "user" really means "mobile user station" ­ a device ­ and the other that "user" means a human being operating a mobile user station. Traffic may argue that this is a mere typographical error, but the Patent Act provides a means for patent holders to seek corrections of this type from the U.S. Patent and Trademark Office, See, 35 U.S.C. § 254 or § 255 (the former for errors by the Office, the latter for those made by the applicant). A district court may only correct a patent if "(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification; and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)

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There is an insoluble ambiguity regarding the meaning of "said user" caused by the lack of an antecedent basis for that term, which requires the Court to declare the term, and therefore Claim 9 of the `862 Patent, indefinite. 2. "Traffic Information"

"Traffic," though broad in its ordinary meaning20 is a common English word undoubtedly familiar to a typical jury member. "Traffic information," however, is indefinite as used in the patent, because the specification teaches that some types of information about traffic ought to be displayed, yet teaches that other types of information about traffic are preferably not displayed. As no explanation is ever provided regarding which types of "information" about "traffic" are intended to be within the scope of the claims, a person of ordinary skill in the art reading the patent would be at a loss to know the scope of that claim term. The specification describes the collection of signals from traffic monitors, and the transmittal of that signal data to a computer system. The signal data is utilized to provide "traffic information" to a mobile user station. In claim 1 of the `862 Patent, the signal of the monitor "include[es] data representative of vehicular movement."21 Thereafter, the "computer system...provid[es]...traffic information representative of said signals."22 Thus, in claim 1, the "traffic information" must be representative of the signal, and the signal must be representative of vehicular movement. Claim 22 of the `606 Patent utilizes the same limitations.23

20

See, WEBSTER'S DICTIONARY OF THE ENGLISH LANGUAGE (Delair Pub'g Co., Inc. 1984); WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE (MerriamWebster, Inc. 1986), EXHIBIT G accompanying this brief. 21 `862 Patent, 22:39-40. 22 `862 Patent, 22:52-54. 23 `606 Patent, 24:41-42, 51-52. 16 - PLAINTIFF'S OPENING CLAIM CONSTRUCTION BRIEF
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In claim 21 of the `862 Patent, no "monitors" are mentioned, but the claim requires that a database exist containing "data representative of traffic."24 Thereafter, the "computer system...provid[es]...information representative of ...selected portions of said traffic information database."25 Thus, in claim 21, the "information" provided to the mobile user station must be representative of a portion of the database, and the database must contain information representative of traffic. The specification makes it clear that not all signal data is useful, and it describes several examples of data (e.g., commuters located at stop signs, at the side of the road, at underpasses and overpasses, or on unknown streets, and data from handheld computing devices) that should be "screened" and not used for analyzing or describing traffic (i.e., not constituting "traffic information").26 Further, the applicant teaches away from representations of information that merely display "traffic flow relative to a single, fixed value" as being unhelpful in judging actual vehicular speed in comparison to posted speed limits.27 However, the patent specification provides no general description of any meaningful limits on kinds of "traffic information" intended for display on user stations, therefore failing to put the public on notice of the explicit boundaries of the applicant's right to exclude others from practicing the applicant's invention. Thus, the reader of the specification is left to speculate what sort of data about traffic is useful, and intended to be part of the invention (i.e., actual "traffic information"), and what sort is not useful, and is meant to be screened from further analysis. Because a reader cannot

24 25 26 27

`862 Patent, 24:26. `862 Patent, 24:33-35. `862 Patent, 20:1 ­ 21:42. `862 Patent, 21:43-52.
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determine the scope of the term "traffic information" from the text of the specification, the term is indefinite. 3. "Less Than All Available Traffic Information"

Claim 22 of the `606 Patent requires that "less than all available traffic information is displayed" by the mobile user station. The previous section mentioned that the specification disparages certain types of information as unhelpful in judging actual speed of multiple vehicles traveling along a road.28 However, the specification does not describe what amount of traffic information "less than all available" is included within the scope of this claim. "Less than all available" is a term of degree used to describe the boundaries of the claim, but no standard for measuring the appropriate degree of traffic information to be provided is given in the specification. The Federal Circuit has explained that, [w]hen a "word of degree" is used, the court must determine whether the patent provides "some standard for measuring that degree." Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). In the present case, however, no measure is provided to the reader by the specification to determine what portions of the collected traffic information should be provided, or what amount "less than all available" is sufficient to practice the invention. The Court should hold claim 22 of the `606 Patent invalid based upon the indefiniteness of the phrase "less than all available traffic information."

28

`862 Patent, 21:43-52.
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4.

"Representative Of"

Three terms in dispute between the parties employ the phrase "representative of": "traffic information representative of said signals transmitted by said traffic monitors," "information representative of . . . selected portions of said traffic information database," and "data representative of traffic." The ambiguity arises from the use of the word "representative" in each instance. Applicant could have expressed these limitations without any reference to the word, for example claiming an invention where, in response to a request for traffic information, the computer system provides "data from said signals transmitted by said traffic monitors." In such an instance, an accused infringer could determine whether that element of the claim was practiced by the accused system by inquiring whether signal data from traffic monitors was being transmitted to mobile user stations. The present formulation of the claims, however, blurs the description of what precisely is provided to the mobile user station by requiring only that whatever is provided be "representative of" the data contained in the signals. This ambiguity renders invalid the collection and presentation steps that were used by the applicant to distinguish the claimed invention over the prior art. After discussing various prior art methods of providing traffic information to drivers, applicant asserts in the specification, "While all of the above systems provide some degree of traffic information for a commuter, nevertheless the above systems do not provide an efficient method of collecting and presenting objective traffic information to a commuter."29 Thus, the specific method of collecting, processing and presenting traffic information was identified by the

29

`862 Patent, 4:15-18.
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applicant as a key aspect of the invention, yet the rest of the written description provides no instruction regarding how the raw signal data is to be manipulated or processed to "represent" current traffic, other than by way of a few examples. There is also ambiguity as to whether the invention includes the display of raw data signals from the traffic monitors. The specification suggests that the "raw" signal from a monitor is not itself "representative of traffic" by explicitly distinguishing between the two types of data: The computer system 40 either sends the raw traffic data requested by the user, or sends a signal representative of the map and/or traffic database which may be used by the user station 52 to represent the map and traffic information on the display 54.30 The distinction made here suggests that "representative of" requires some processing of the raw signal data, yet the written description offers no explanation of the standards by which the processed data is judged to be useful. The Federal Circuit has explained that, [t]he purpose of the definiteness requirement is to ensure that "the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee's right to exclude." Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1339 (Fed. Cir. 2003) (quotation marks omitted). Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1367 (Fed. Cir. 2010). In the present instance, it is not possible to determine what information provided by a computer system is "representative of traffic" as required by the claims, because no method is described for creating useful representations ­ only examples of unhelpful representations are provided. It is expected that Traffic will take the position that "traffic information representative of said signals transmitted by said traffic monitors" and "data representative of traffic" each simply
30

`862 Patent, 15:42-46.
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means "traffic information." Traffic argues that "information representative of...selected portions of said traffic information database" means "certain data from the traffic information database."31 In each case, Traffic simply "reads out" of the claim the "representative of..." language that is problematic. This Court, however, has cautioned against any construction that gives no weight to claim language: It is also improper to eliminate, ignore, or "read out" a claim limitation from a claim in order to extend a patent to subject matter disclosed, but not claimed. See, e.g., Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572, 1582-83 (Fed. Cir. 1996) (court cannot read a limitation out of a claim); see also Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562 (Fed. Cir. 1991) (patentee cannot be allowed to expressly state throughout specification and claims that his invention includes a limitation and then be allowed to avoid that claim limitation in infringement suit by pointing to one part of specification stating an alternative lacking the specification). Collegenet, at *12 - *13. Traffic's suggestion that the Court simply ignore the "representative of" language in the claims is itself evidence that this phrase inserts a problematic ambiguity into the language of the claims. The Court should conclude that the claims containing these phrases are indefinite in violation of 35 U.S.C. § 112, ¶ 2.32 One of the "representative of..." phrases for construction has the additional modifier that the "information" is "representative of...selected portions of said traffic information database." The phrase is indefinite as the specification fails to identify who or what "selects" portions of the

31 32

See Exhibit A. Later in this Brief Google proposes constructions for all the phrases argued in the present section to be indefinite. Google presents the alternative constructions only for the situation in which the Court concludes that the phrases are definite, and does not, by presenting those constructions, waive its argument regarding definiteness. Indeed, as the Federal Circuit has held, "The fact that [applicant]I can articulate a definition supported by the specification, however, does not end the inquiry. Even if a claim term's definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope." Halliburton, at 1251.
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database and how that information is selected. For example, the phrase might require that the user of the mobile user station select the portion of the database to be displayed, or that the computer system performs the selection automatically. Traffic argues that "selected portions" simply means "certain data," ignoring the question of who selects or what data is selected. Such a definition would "read out" the term "selected," essentially requiring only that "portions" of the database be provided to the mobile user station. As with Traffic's effort to ignore the phrase "representative of," the Court should refuse Traffic's efforts now to rewrite claim language that is ambiguous. B. Terms Relating To Devices Of The System 1. "Traffic Monitor"

"Traffic monitor" should be construed as "a stationary device capable of determining the current speed, frequency, or flow of multiple vehicles traveling along a road." Google anticipates that Traffic Information will advocate a construction that includes "any device" used to measure vehicular movement ­ presumably including stationary as well as mobile devices ­ so that it can argue regarding infringement that a mobile phone is both a "traffic monitor" and a "mobile user station." Such a construction would impermissibly broaden the scope of the claims and render meaningless the distinction made by the patentee between the two distinct devices described in the patent as being capable of measuring vehicular movement ­ "traffic monitors" and "mobile user stations."

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a.

A "Traffic Monitor" Is Not A "Mobile User Station"

The key to understanding the meaning of `"traffic monitors" is the distinction drawn between "mobile user stations" and "traffic monitors" in the patents. The `862 Patent claims, in Claim 1, a system for providing traffic information that is comprised of a network of traffic monitors as well as a mobile user station that receives and displays the traffic information transmitted by the traffic monitors.33 So does Claim 22 of the `606 Patent.34 By contrast, Claim 21 of the `862 Patent claims a system that employs signals received from "a plurality of mobile user stations," but that claim element does not include traffic monitors. The patentee left "traffic monitors" out of Claim 21 for a reason. The specification notes: "Thus, the system may provide traffic information without the use of [traffic] monitors 20 at all, relying solely on information derived from the mobile user stations 52."35 Clearly, the same device cannot be both a traffic monitor and a mobile user station. A significant portion of the specification is dedicated to explaining that the mobile user stations are not traffic monitors: Alternatively, where the number of users is sufficiently large, the traffic monitors 20 may no longer be necessary, because the users themselves through mobile user stations 52 and GPS receivers 62 provide enough traffic information to generate useful displays of traffic information. Thus, the system may provide traffic information without the use of monitors 20 at all, relying solely on information derived from the mobile user stations 52. . . . Thus, the combination of the mobile user station 52, GPS receiver and transmitting and receiving units 64 provides an especially advantageous method for collecting traffic information. . . . In addition, the system has a significant cost advantage in that it is not necessary to install traffic monitors 20, or at least the number of traffic monitors 20 that are necessary can be substantially reduced. . . . Furthermore, the system is low maintenance, since there are no traffic monitors 20 to maintain. The system is also particularly robust, in that if a particular mobile user station 52 malfunctions,
33 34 35

`862 Patent, 22:52-55. `606 Patent, 24:51-53. `862 Patent, 13:19-21 (emphasis added).
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traffic information can still be collected for all locations based on data reported by other mobile users. In contrast, if a stationary sensor 20 fails, no data can be collected from that location. Thus, the collection of traffic data from a plurality of mobile user stations 52 to create a traffic information database provides surprising advantages and a superior system for providing traffic information.36 In patent claims, different words are presumed to have different meanings. Acumed LLC v.Stryker Corp., 483 F.3d 800, 807 (2007). Google's proposed construction gives meaning to both "traffic monitor" and "mobile user station" consistent with the intrinsic evidence of the specification and the claims. b. A "Traffic Monitor" Is A Stationary Device

The specification depicts a traffic monitor only as a stationary device that measures the current speed, frequency, or flow of multiple vehicles traveling along a road. The Summary of the Invention states: "The traffic information database may be derived from information obtained from stationary traffic monitors, mobile user stations, or a combination thereof."37 Figures 1, 2, 7, and 11 of both the `862 Patent and the `606 Patent show only stationary devices when referencing traffic monitors (depicted as item 20). In fact, the patents describe a system that combines signals from mobile user stations as advantageous because it provides superior information "than that collected by stationary sensors" such as the detectors in traffic monitors, and more cost advantageous because "it is not necessary to install traffic monitors 20" for example, on every road.38 Moreover, the system based on mobile user stations is superior because "if a stationary sensor 20 fails, no data can be collected from that location."39

36 37 38 39

`862 patent, 13:14-57 (emphasis added). `862 Patent, 5:16-18 (emphasis added). `862 Patent, 13:33-44 (emphasis added). `862 Patent, 13:52-53 (emphasis added).
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Traffic ignores the specification and seeks to extend the scope of the claim far beyond what is supported by the specification so that it can argue that a mobile phone can be both a "traffic monitor" and a "mobile user station." While "claims need not be limited to the preferred embodiment when the invention is more broadly described, `neither do the claims enlarge what is patented beyond what the inventor has described as the invention.'" Inpro II v. T-Mobile, 450 F.3d 1350, 1355 (2006) ["district court correctly observed that the only host interface described in the specification is a direct parallel bus interface"]; SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.Cir.2001) [claim scope limited where written description enabled only catheters with coaxial lumens]; ICU Medical Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1375-76 (Fed. Cir. 2009) [construing "spike" to require pointed spike where "[t]he specification never suggests that the spike can be anything other than pointed" and "every embodiment in the specification ... uses a spike to pierce the seal"]. Traffic is not entitled to a broad claim meaning divorced from the context of the specification. The Court should not construe claims to cover subject matter broader than what a patentee describes in its specification, which reveals what the patentee regarded as comprising its invention. c. A "Traffic Monitor" Measures Current Speed, Frequency, Or Flow Of Multiple Vehicles

The word "traffic" has many general definitions that are applicable in a variety of contexts. In the context of vehicular traffic, however, the common understanding of "traffic" contains two basic features ­ traffic is a measure of multiple vehicles traveling along a road. [A single vehicle in isolation cannot constitute "traffic."] These defining features are consistent

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with the standard dictionary definition of "traffic,"40 as well as the patent. Figures 1, 7, 811, 13, 14, and 15 of the `862 Patent and the `606 Patent all show multiple vehicles traveling along a road. Because the patents show only the movement of multiple vehicles along a road, those terms referencing "traffic" must be construed consistently and within the bounds disclosed by the patent. Aquatex v. Techniche Solutions, 419 F.3d 1374 (2005); Inpro II, 450 F.3d at 1355; SciMed Life Sys., 242 F.3d at 1341; ICU Medical Inc., 558 F.3d at 1375-76. . In the Detailed Description of the Preferred Embodiments, the specification explains that "the traffic monitors 20 measure traffic information by detecting the speed (velocity) or frequency of vehicles traveling along the road (freeway or highway) 12."41 The specification further describes that "The traffic monitors 20 detect or otherwise sense traffic to provide traffic information. The traffic monitors 20 may detect or otherwise calculate vehicle speed, average vehicle speed, traffic flow, vehicle frequency, or other data representative of the traffic."42 The specification repeatedly refers to multiple vehicles being measured for speed, frequency and flow: "[f]or example, the detector 22 could measure the average speed of the veh