LBS Innovations, LLC v. Alfred Angelo, Inc. et al
Filing
46
MEMORANDUM OPINION AND ORDER - Signed by Judge Rodney Gilstrap on 6/19/2013. (ch, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
LBS INNOVATIONS LLC,
Plaintiff,
v.
BP AMERICA, INC., et al.,
Defendants.
LBS INNOVATIONS LLC,
Plaintiff,
v.
ALFRED ANGELO, INC., et al.,
Defendants.
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Civil Action No. 2:11-cv-00407-JRG
Jury Trial Demanded
Civil Action No. 2:12-cv-00735-JRG
Jury Trial Demanded
MEMORANDUM OPINION AND ORDER
Before the Court is Plaintiff LBS Innovations, LLC’s, Opening Markman Brief (Dkt.
No. 383). Also before the Court is the response of Defendants Choice Hotels International, Inc.,
Costco Wholesale Corporation, KeyCorp, Sally Beauty Supply LLC, Starbucks Corporation,
Target Corporation, The Kroger Co., U.S. Bancorp, Wells Fargo Bank, N.A., Chick-fil-A, Inc.,
Safeway Inc., True Value Company, Aldi Inc., Ben & Jerry’s Homemade Holdings, Inc.,
Denny’s, Inc. d/b/a Denny’s Restaurants, Inc., Jo-Ann Stores, Inc., Pilot Travel Centers LLC,
Randall’s Food & Drugs LP, Safeway, Inc. d/b/a Tom Thumb, The Cheesecake Factory
Restaurants, Inc., Barnes & Noble, Inc., Bed Bath & Beyond, Inc., Regions Financial
Corporation, SunTrust Banks, Inc., and Home Depot U.S.A., Inc. (Dkt. No. 387). Further before
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the Court is Plaintiff’s reply (Dkt. No. 390).
The Court held a claim construction hearing on June 6, 2013.
reasons, the Court adopts the constructions set forth below.
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For the following
TABLE OF CONTENTS
I.
BACKGROUND ................................................................................................................ 4
II.
LEGAL STANDARD......................................................................................................... 6
III.
CONSTRUCTION OF AGREED TERMS ...................................................................... 11
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................... 11
a.
b.
“a computer” and “said computer” ...................................................................... 18
c.
“data field” .......................................................................................................... 24
d.
“making apparent to the aural and tactile senses of the user” ............................. 30
e.
“transmittable”..................................................................................................... 35
f.
“converting said coordinates to an appropriately proportionate representation” 38
g.
“displaying” ......................................................................................................... 43
h.
“displaying …” step (Element “c” in claim 11) .................................................. 45
i.
V.
“timely situation information”............................................................................. 11
“whereby said user may quickly receive and display timely situation
information” ........................................................................................................ 47
CONCLUSION ................................................................................................................. 49
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I.
BACKGROUND
Plaintiff brings suit alleging infringement of United States Patent No. 6,091,956 (“the
‘956 Patent”) entitled “Situation Information System.” The application for the patent was filed
on June 12, 1997, and the ‘956 Patent was issued on July 18, 2000.
The ‘956 Patent generally describes a “wireless system for providing services and timecritical information about places and events to mobile computers and their users proximate to
their locations or potential destinations ….” ‘956 Patent at Abstract.1 The specification states
that “[i]nformation about places and their events, situation information, helps people to function
closer to their potential,” and that “[s]uch information resides available, but largely inaccessible
because it lies unindexed and distributed in a plethora of largely local repositories.” ‘956 Patent
at 2:57-61. Thus, the invention is directed to increasing “the availability, accessibility, and
timeliness of [information that specifically fits a person’s needs], about specific places, events,
and their details, called situations.” ‘956 Patent at 1:35-38.
In one embodiment, “the situation information system provides users with up-to-date
map-tracking information relating their location to events and situations as well as enabling them
to respond in a timely manner.” ‘956 Patent at 4:48-51. A user may choose to respond to such
1
The entire Abstract of the ‘956 Patent follows:
A wireless system for providing services and time-critical information about
places and events to mobile computers and their users proximate to their current
locations or potential destinations within enclosed areas, urban landscapes, and
open areas, including travel distances and transit times, entertainment, merchants'
messages, area attractions, communications, current locations of system users,
and traffic congestion information and user-generated information from bar-coded
objects and digital photographs of scenes and other materials. Included is a
combination low-radiation dosage-reception handset for wireless communications
which includes bar-code reader and digital camera peripheral devices for mobile
computers, a bracket for interfacing a mobile computer with radio to external
systems, and methods for improving the operations of computer reception, search,
and display of such information for the edification, efficiency, and enjoyment of
computer users.
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information “by visiting one or more of the events, avoiding them entirely, communicating them
to another person, rectifying them, or otherwise modifying plans and itineraries in light of such
events.” ‘956 Patent at 4:42-46. The specification additionally discloses that the system may
provide a user with “mappable information items, including map features … which may be
executably selected by a user to display additional information … by receiving new information
transmitted from the service provider.” ‘956 Patent at 21:55-62.
Plaintiff asserts Claim 11 against Defendants. It is a method claim for communicatively
executing one or more transmittable mappable hypertext items and is reproduced below:
A method of communicatively executing, including making
apparent to the aural and tactile senses of the user, one or more
transmittable mappable hypertext items representing people,
organisms, and objects, including buildings, roads, vehicles, and
signs, on a computer in a manner scalably representing
interrelationships of said objects, comprising the steps of:
a.
searching each of one or more unique mappable
information code sequences, each of which said code
sequences serving to uniquely represent one of said items
and copied from the memory of said computer or received
from an alternate source, for a field containing
geographical coordinates, said each of said code sequences
includes an item reference field, a name field, a location
field including said geographical coordinates, and a data
field,
b.
converting said coordinates to an appropriately
proportionate representation on said computer, and
c.
displaying selectably scalably said items on said computer
whereby said user may quickly receive and display timely
situation information mapped in the context of spatial
information, including appropriate to a geographical or
other area, in which said mappable hypertext items are
quickly received, mapped, and optionally executably
selected by said user to provide additional of said situation
information or received, stored, and transmitted by a
provider of said situation information.
Plaintiff previously asserted Claim 11 in the case of LBSI Innovations LLC v Aaron Bros.
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et al., No. 2:11-CV-00142 (“Aaron Bros.”). In Aaron Bros., Judge David Folsom construed the
following terms/phrases at issue in this case: (1) “including making apparent to the aural and
tactile senses of the user”; (2) “a computer” and “said computer”; (3) “timely situation
information”; (4) “displaying”; and (5) the “displaying …” step (Element “c”). See Aaron Bros.,
Dkt. No. 195. Judge Folsom’s claim construction order is attached to Plaintiff’s opening brief as
Exhibit B (Dkt. No. 383-2), and the claim construction briefs in that case are attached to
Plaintiff’s opening brief as Exhibits C-E (Dkt. Nos. 383-3, 383-4, 383-5).
II.
LEGAL STANDARD
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
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the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
customary meaning of a claim term “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 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill 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
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specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998):
Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of what the
inventors actually invented and intended to envelop with the claim.
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, 415 F.3d at 1316.
Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because the file
history, however, “represents an ongoing negotiation between the PTO and the applicant,” it may
lack the clarity of the specification and thus be less useful in claim construction proceedings. Id.
Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of
how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
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Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
Indefiniteness is a “legal conclusion that is drawn from the court’s performance of its
duty as the construer of patent claims.” Exxon Research & Eng’g Co. v. United States, 265 F.3d
1371, 1376 (Fed. Cir. 2001) (citation omitted). A finding of indefiniteness must overcome the
statutory presumption of validity. See 35 U.S.C. § 282. That is, the “standard [for finding
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indefiniteness] is met where an accused infringer shows by clear and convincing evidence that a
skilled artisan could not discern the boundaries of the claim based on the claim language, the
specification, and the prosecution history, as well as her knowledge of the relevant art area.”
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008).
In determining whether that standard is met, i.e., whether the
claims at issue are sufficiently precise to permit a potential
competitor to determine whether or not he is infringing, we have
not held that a claim is indefinite merely because it poses a
difficult issue of claim construction. We engage in claim
construction every day, and cases frequently present close
questions of claim construction on which expert witnesses, trial
courts, and even the judges of this court may disagree. Under a
broad concept of indefiniteness, all but the clearest claim
construction issues could be regarded as giving rise to invalidating
indefiniteness in the claims at issue. But we have not adopted that
approach to the law of indefiniteness. We have not insisted that
claims be plain on their face in order to avoid condemnation for
indefiniteness; rather, what we have asked is that the claims be
amenable to construction, however difficult that task may be. If a
claim is insolubly ambiguous, and no narrowing construction can
properly be adopted, we have held the claim indefinite. If the
meaning of the claim is discernible, even though the task may be
formidable and the conclusion may be one over which reasonable
persons will disagree, we have held the claim sufficiently clear to
avoid invalidity on indefiniteness grounds. . . . By finding claims
indefinite only if reasonable efforts at claim construction prove
futile, we accord respect to the statutory presumption of patent
validity . . . and we protect the inventive contribution of patentees,
even when the drafting of their patents has been less than ideal.
Exxon, 265 F.3d at 1375 (citations and internal quotation marks omitted).
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
at *4 (E.D. Tex. June 21, 2006).
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III.
CONSTRUCTION OF AGREED TERMS
The Court hereby adopts the following agreed constructions:
Claim Term/Phrase
“optionally executably selected by said
user to provide additional of said
situation information”
Agreed Construction
“displayed in a manner that permits the user to
select the item so as to provide additional
situation information about the item”
“mappable hypertext items”
“text or one or more symbols, displayable on a
map, that can be selected to access additional
information”
“selectably scalably”
“capable of being chosen for adjustment in
size or detail”
IV.
CONSTRUCTION OF DISPUTED TERMS
The parties’ dispute focuses on the meaning and scope of nine terms/phrases in claim 11
of the ‘956 Patent.
a.
“timely situation information”
Disputed Claim Term
Plaintiff’s Proposed
Construction
“up-to-date information about
an event, or a condition,
occurring or about to occur at
a place”
“timely situation
information”
Defendants’ Proposed
Construction
“time-critical information
about an event, or a condition,
occurring or about to occur at a
place”
In Aaron Bros., Judge Folsom construed the disputed phrase “timely situation
information.”
Based on the previous construction, the parties here agree that the claimed
“situation information” should be construed as “information about an event, or a condition,
occurring or about to occur at a place.” The parties’ disagree on: (1) whether “timely” should be
construed as “up-to-date” versus “time-critical;” and (2) whether the agreed construction for
“situation information” covers information about a place, even if the information is not about
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any identifiable event or condition occurring or about to occur at the place.
Regarding the first issue related to “timely,” the Court agrees with Plaintiff that its
proposed construction of “up-to-date” is consistent with the intrinsic evidence. The Court
further notes that the “time-critical” aspect proposed by Defendants is captured by the agreed
construction for “situation information.”
See, e.g., Aaron Bros., Dkt. No. 195 at 19
(“Defendants’ proposal of ‘occurring or about to occur,’ however, comports with the timeliness
requirement consistently disclosed throughout the ‘956 Patent as well as in the disputed claim
term itself and should therefore be included in the Court’s construction.”).
Regarding the second issue, the Court agrees with Defendants that the “situation
information” is “information” about: (1) places; and (2) events or conditions associated with
those places. In other words, it is not merely information about a place (e.g., an address or
telephone number). Judge Folsom reached the same conclusion in Aaron Bros. See Aaron Bros.,
Dkt. No. 195 at 17. Accordingly, with this clarification for “situation information,” the Court
adopts Plaintiff’s construction because it is consistent with the intrinsic evidence.
i.
The Claim Language
The Court first turns to the language of the claims, as it provides “substantial guidance as
to the meaning of particular claim terms.” Phillips, 415 F.3d at 1313 (citing Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
information” appears one time in claim 11.
The phrase “timely situation
The Court finds that the phrase “situation
information” appears two other times in claim 11 and is meant to have the same meaning as it
does in the disputed phrase. Regarding the first issue related to “timely,” the Court finds
independent claim 14 recites “time-critical, location dependent, information” in the claim. ‘956
Patent at 32:36 (emphasis added). In contrast, claim 11 does not use the phrase “time-critical,”
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but instead uses “timely.” Thus, if the patentee had intended to draft the claim as “time-critical”
information he would have done so as he did in claim 14. CAE Screenplates Inc. v. Heinrich
Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any
evidence to the contrary, we must presume that the use of these different terms in the claims
connotes different meanings.”). Accordingly, the Court finds no reason to redraft “timely” as
“time-critical” as Defendants suggested.
The Court will now turn to the other intrinsic
evidence.
ii.
The Intrinsic Evidence
In addition to the claims, the other intrinsic evidence in this case supports Plaintiff’s
construction, but does not support its contention regarding the agreed construction for
“situation information.” Regarding the first issue related to “timely,” the defendants in Aaron
Bros. proposed that “timely” should be construed as “up-to date” and argued that “up-to-date”
information was not the same thing as “current” information (as proposed by plaintiff in Aaron
Bros.). Specifically, the defendants argued that the “claimed timely situation information has a
time-critical aspect to it that a user needs at the moment to respond to some event or condition
occurring or about to occur (e.g., an on-going sale at a store, upcoming traffic, etc . . .).” (Dkt.
No. 383-4 at 15.) While the court in Aaron Bros. was ultimately not asked to construe
“timely,” Judge Folsom noted that “up-to-date” would be the proper construction if “timely”
was disputed by the parties. See Aaron Bros., Dkt. No. 195 at 17-19. For the following
reasons, and for the reasons stated in Aaron Bros. as discussed below, the Court concludes that
“timely” should be construed as “up-to-date.”
First, “up-to-date” appears in the first paragraph of the Summary of the Invention
section of the specification:
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The Situation Information System relates to information
communications between sources of timely information and one
or more information users which also provide information to
other users. Broadly stated, situation information pertains to
information about events or conditions associated with places
which the mobile user may encounter or consider visiting. It
particularly includes events occurring or about to occur in a locus
accessible to the mobile user and to which the user may
arbitrarily choose to respond by visiting one or more of the
events, avoiding them entirely, communicating them to another
person, rectifying them, or otherwise modifying plans and
itineraries in light of such events. Sources of situation
information are databases of local information and information
from users themselves. Additionally, the situation information
system provides users with up-to-date map-tracking information
relating their location to events and situations as well as enabling
them to respond in a timely manner.
‘956 Patent at 4:33-51 (emphasis added). As Judge Folsom noted, the reference to “Situation
Information System” in all capitals, as well as the presence of this paragraph in a section titled
“Summary of the Invention,” weighs in favor of construing “timely” as “up-to-date.” See Aaron
Bros., Dkt. No. 195 at 18.
Likewise, the Background-General Discussion section discusses the need to provide
seniors and disabled persons with “ready access to timely, proximate information, i.e.,
information relevant to a user’s location such as local services information, such as
transportation-system routes and schedules identifying nearby stops.” ‘956 Patent at 1:45-54
(emphasis added). This section also discusses that “[t]imely and reproducible information about
situations involving criminal acts would serve to reduce their numbers by deterring the
perpetrators.” ‘956 Patent at 2:47-49 (emphasis added). It also states that “[w]ith better and more
timely information about traffic, … some traffic jams could be avoided.” ‘956 Patent at 2:38-40
(emphasis added).
The remainder of the specification is consistent with construing “timely” as “up-to-date.”
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For example, the ‘956 Patent contemplates that “timeliness” of information about a traffic jam or
a special offer at a store requires that information be conveyed to the user while the user can still
effectively act upon it. ‘956 Patent at 4:42-46, 7:33-36 (“special offers”), 13:29-38 (“short-term
offer of merchandise”), 16:27-31 (“current, short-term offers”), 19:33-37 (“[t]raffic
congestion”), Figure 2 (“1 hr. Special”), Figure 4 (same), and Figure 6 (“Road congestion”).
Defendants argue that “up-to-date,” as interpreted by Plaintiff, is too broad and
inconsistent with the specification because it provides no distinction between “situation
information” and “timely situation information.” In other words, Defendants argue that Plaintiff
is seeking to equate “up-to-date” information with information that is merely accurate, which
ignores the time-sensitive requirement.2 As discussed above, the Court agrees that there is a
time-sensitive requirement. However, the Court finds that this requirement is captured by the
agreed construction for “situation information,” which requires “information about an event, or a
condition, occurring or about to occur at a place.” While there are references to “time-critical”
situation information in the specification, there are a number of references to “situation
information,” without the “time-critical” phrasal adjective. See, e.g., ‘956 Patent at 4:33-46,
6:31-44. Accordingly, the Court construes “timely” as “up-to-date.”
Regarding the second issue, Plaintiff asserts that “there is nothing in the intrinsic record
or Judge Folsom’s claim construction ruling suggesting that ‘timely situation information’
cannot be ‘information about a place.’” (Dkt. No. 390 at 5.)
Further, during the claim
construction hearing in this case, Plaintiff argued that there is undue emphasis on “event” in the
parties’ proposed constructions and that an address can be a “condition.” Similarly, Plaintiff
2
During the claim construction hearing, Plaintiff stated that “timely” situation information was
not merely “accurate” information. However, as discussed in more detail, Plaintiff’s
interpretation of the scope of the claim equates “timely” information with “accurate”
information.
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argued in its brief that “there is no basis for Defendants’ asserted dichotomy between
‘information about an event, or a condition, occurring or about to occur’ and ‘information about
a place.’” (Dkt. No. 390 at 5.) In other words, as in Aaron Bros., it is Plaintiff’s position that
information about a place (e.g., an address or a telephone number) is enough to satisfy the claim
language. The Court disagrees.
First, similar to Judge Folsom’s conclusion, the Court finds that the patentee acted as
lexicographer by defining “situation information” in the Background-General Discussion
section. Specifically, the patentee defined “situation information” as “[i]nformation about
places and their events, situation information, helps people to function closer to their
potential.” ‘956 Patent at 2:57-59 (emphasis added); Phillips, 415 F.3d at 1316 (“[T]he
specification may reveal a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess. In such cases, the inventor’s lexicography
governs.”). Likewise, the Summary of the Invention discloses that “[b]roadly stated, situation
information pertains to information about events or conditions associated with places which
the mobile user may encounter or consider visiting.” ‘956 Patent at 4:37-40.
Moreover, in Aaron Bros., Judge Folsom rejected Plaintiff’s argument that “situation
information” may only include information about a place. During the Markman hearing, Judge
Folsom provided a tentative construction that Plaintiff argued was inadequate because it required
“situation information” to include information about events or conditions, and not merely
information about a place.3 Judge Folsom rejected this argument and construed “timely situation
3
For example, Plaintiff made the following arguments during the Aaron Bros. Markman hearing:
“So what’s missing we believe here is it should say: timely information about an
event, a place or a condition occurring about or about to occur at a place.” Dkt.
No. 387-6 at 3 (7:13-15) (emphasis added).
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information” to mean “timely information about an event, or a condition, occurring or about to
occur at a place.” See Aaron Bros., Dkt. No. 195 at 19.
Thus, to avoid ambiguity and resolve this claim construction dispute, the Court clarifies
that its construction for the phrase “situation information” requires “information” about: (1)
places; and (2) events or conditions associated with those places.4
iii.
Court’s Construction
In light of the claim language, the specification, and the prosecution history, the Court
construes “timely situation information” to mean “up-to-date information about an event,
or a condition, occurring or about to occur at a place.”
“So clearly the situational information is not limited to an event or a condition
occurring or about to occur at a place. I think place needs to be in there. . . . I
would be okay with, as I said, timely information about an event, place or a
condition occurring or about to occur at a place.” Id. at 6 (10:8-14) (emphasis
added).
4
The Court provides this clarification so that the parties are informed of the proper scope of the
asserted claim. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360
(Fed. Cir. 2008) (“When the parties raise an actual dispute regarding the proper scope of these
claims, the court, not the jury, must resolve that dispute.”). Contrary to Plaintiff’s suggestion,
this conclusion is based solely on the intrinsic evidence and not by reference to the accused
device. Neomagic Corp. v. Trident Microsystems, 287 F.3d 1062, 1074 (Fed. Cir. 2002) (“It is
well settled that claims may not be construed by reference to the accused device.”).
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b. “a computer” and “said computer”
Disputed Claim Term
Plaintiff’s Proposed
Construction
“one or more computers”
“at least one of the one or
more computers”
“a computer”
“said computer”
Defendants’ Proposed
Construction
No construction proposed
“the same computer that
performs the other steps
recited in the claim”
The parties agree that “a computer” in the preamble of claim 11 provides the antecedent
basis for the phrase “said computer” in the body of the claim. The parties dispute whether the
recited “said computer” requires at least one computer to perform each of the steps recited in the
claim, or if the steps can be performed by multiple computers. In Aaron Bros., Judge Folsom
determined that a single computer must perform the recited steps and construed “said computer”
as “the same computer that performs the other steps recited in the claim.” Plaintiff argues that
Judge Folsom erred by disregarding the well-established rule of construction that “an indefinite
article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’” Baldwin Graphic Sys., Inc. v. Sibert, Inc., 512
F.3d 1338, 1342 (Fed. Cir. 2008) (quoting KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351,
1356 (Fed. Cir. 2000)). Specifically, Plaintiff argues that Judge Folsom did not point to any
language of the claim, the specification, or the prosecution history necessitating a departure from
the rule.
The Court has reviewed the intrinsic evidence and finds that Defendants’ proposed
construction is consistent with the intrinsic evidence. Specifically, the Court finds that an
exception to the general rule is warranted because “the claim language and specification
indicate that ‘a’ means one and only one, [thus] it is appropriate to construe it as such even in
Page 18 of 50
the context of an open-ended ‘comprising’ claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed.
Cir. 2011). The Court first addresses the claim language.
i.
The Claim Language
The term “a computer” appears in the preamble of claim 11. The parties agree that it
provides the antecedent basis for the phrase “said computer” in the body of the claim. See, e.g.,
Energizer Holdings Inc. v. I.T.C., 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“The requirement of
antecedent basis is a rule of patent drafting, administered during patent examination.”) (citing
Manual of Patent Examining Procedure § 2173.05(e) (8th ed. rev. 2, May 2004)). A person of
ordinary skill in the art would therefore read “said computer” to refer to the same computer
recited in the preamble. Accordingly, no construction of “a computer” is necessary. However,
the Court will construe “said computer” in order to resolve the parties’ dispute.
The term “said computer” appears in each of the three recited method steps as follows:
11. A method of communicatively executing, … on a computer …,
comprising the steps of:
a.
searching each of one or more unique mappable
information code sequences,… copied from the memory of
said computer or received from an alternate source …
b.
converting said coordinates to an appropriately
proportionate representation on said computer, and
a.
displaying selectably scalably said items on said computer
whereby said user may quickly receive and display timely
situation information mapped in the context of spatial
information….
‘956 Patent at claim 11 (emphasis added). The Court further notes that claim 13, which depends
from claim 11, recites “whereby said user may choose representation by a unique icon on said
computer which can be made to execute on others of said computers.” ‘956 Patent at claim 13
(emphasis added).
Page 19 of 50
The Court finds that the preamble recites an intended use of the invention, which is to
make “apparent” mappable hypertext items to the user of a computer. In other words, the claim
is written in the context of a single user and it accomplishes its intended result by “displaying …
said items on said computer whereby said user may quickly receive and display timely situation
information.” ‘956 Patent at claim 11. Thus, a person of ordinary skill in the art would
understand that the recited searching, converting, and displaying steps occur on a single user’s
computer so that “said user may quickly receive” timely situation information.
With respect to the displaying step, for example, “said computer” recited in Element “c”
of the claims is referring to a single computer that displays information to a user. The Court
disagrees with Plaintiff’s argument that the “displaying” step can be distributed across multiple
computers simply because the single computer may “receive” information from an outside
source.
Regarding the searching step, element “a” recites that the “searching” of “code
sequences” are copied from “said computer or received [by said computer] from an alternate
source.” Again, this does not prevent a single computer from receiving information from an
alternate source, it only requires that a single computer must perform the “searching …” step as
recited in the claim. Finally, Element “b” recites that the coordinates are converted on “said
computer.” Taken in context with dependent claim 13, a person of ordinary skill in the art would
understand that claim 11 is referring to a single computer because claim 13 illustrates that when
the patentee intended more than one computer, he recited “computers” in the plural and referred
to these computers as “other” computers. Thus, the Court finds that the claim language as a
whole requires that at least one computer must perform each of the recited steps (i.e., the
“searching …” step, the “converting …” step, and the “displaying …” step).
To be clear, the Court’s construction does not modify the claim language and does not
Page 20 of 50
exclude a provider from receiving, storing, and providing situation information. Likewise, the
Court’s construction does not mean that a system that uses more than one computer
automatically falls outside the scope of the claim. Instead, it only means that at least one
computer must perform each of the recited steps of the method claim. See, e.g., FotoMedia
Techs., LLC v. AOL, LLC, 2009 U.S. Dist. LEXIS 62542, *22 (E.D. Tex. July 21, 2009) (“The
Court does not rule that there cannot be more than one server, each capable of performing all of
the recited steps, in the claimed system.”).
The remaining claims also confirm that the patentee was referring to a single computer in
claim 11. Similar to dependent claim 13, independent claims 1 and 8 use “computers” and
“users”/“customers” to indicate that these claims are referring to more than one computer and
more than one user/customer. In contrast, claim 11 recites “said computer” and “said user,”
indicating that the patentee intended that the same computer performs the steps recited in the
claim for “the user.” If the patentee intended for the claimed method to be performed by
multiple computers, then the patentee could have recited a first computer performing some of the
steps and a second computer performing other steps. In fact, this is what the patentee did in
claim 13 by referring to “other” computers.
The patentee consistently used the plural
“computers” when referring to more than one computer in the claims. Accordingly, the claim
language is consistent with a construction that requires at least one computer to perform each of
the three steps recited in the claim. The Court will now turn to the other intrinsic evidence.
ii.
The Intrinsic Evidence
The other intrinsic evidence in this case, specifically the specification, supports the
adoption of Defendants’ construction.
Contrary to Plaintiff’s argument, Defendants’
construction does not exclude the preferred embodiment consisting of “at least one mobile
Page 21 of 50
computer” performing the recited steps. Similarly, Defendants’ construction does not exclude
the exemplary embodiments illustrated in Figures 1 and 5. Instead, it requires that “at least one”
mobile computer perform the steps recited in claim 11. This is consistent with the specification
and the description of Figures 1 and 5. In describing Figure 1, the specifications states:
FIG. 1 antennas 14a through 14c are shown receiving information
16a, 16b, and 16c as well as 16d, 16e, and 16f from mobile
computers 18b and 18c, respectively, to provide services from the
service provider including finding the locations of the
aforementioned mobile computers and receive information
requests. In addition, antenna 14b is shown transmitting and
receiving information 15a to and from mobile computer 18a.
11:49-56 (emphasis added). Thus, the specification teaches that at least one computer transmits
and receives.
Additionally, when referring to more than a single computer, the specification uses the
plural “computers.” When referring to a single computer, the specification uses the singular
“computer.” Thus, as described in the specification, Defendants’ construction does not exclude
the exemplary embodiment of Figure 1. There can be transmission and receiving to and from a
single mobile computer (18a), or there can be transmission and receiving from multiple mobile
computers (18b and 18c). Claim 11 only requires that at least one computer performs the steps
recited in the claim. This analysis is equally applicable to the description of Figure 5. In other
words, Defendants’ proposed construction does not exclude “distributed information systems” or
a “computer network” having more than one computer. It only requires that at least one
computer performs the steps recited in claim 11.
Finally, Plaintiff argues that the flow charts shown in Figures 13 and 14 disclose that the
service provider’s computer as well as the user’s computer must both participate in the claimed
method. The specification provides a flowchart for a “SERVICE PROVIDER COMPUTER
Page 22 of 50
CONTROL PROGRAM” and a flowchart for a “USER’S COMPUTER CONTROL
PROGRAM,” but this does not change the analysis because claim 11 is recited from the
perspective of a single user’s computer. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529
F.3d 1364, 1373 (Fed. Cir. 2008) (“[T]he mere fact that there is an alternative embodiment
disclosed in the [asserted] patent that is not encompassed by [the] court’s claim construction
does not outweigh the language of the claim, especially when the court’s construction is
supported by the intrinsic evidence.”).
In contrast, there are other independent claims that are recited from the perspective of the
service provider. See, e.g., ‘956 Patent at claim 8 (“c. transmitting one or more said offers
including by visual, aural, and other data types and other pertinent information, severally to said
subset of said mobile computers with radios according to said customers’ selections…”). In fact,
Figure 14 indicates that that the steps of receiving situation information, searching and filtering
through that information, as well as displaying mapped locations to the user, occur on a single
user’s computer. ‘956 Patent at 23:64-24:63.
Accordingly, the Court concludes that
Defendants’ construction is consistent with the intrinsic evidence.
iii.
Court’s Construction
In light of the intrinsic evidence, the Court adopts Defendants’ proposed construction
and construes “said computer” to mean “the same computer that performs the other steps
recited in the claim.” The parties agree that “a computer” provides the antecedent basis for
the phrase “said computer” in the body of the claim. Accordingly, having construed “said
computer,” the Court concludes that “a computer” is unambiguous, is easily understandable by
a jury, and requires no construction.
Page 23 of 50
c. “data field”
Disputed Claim Term
Plaintiff’s Proposed
Construction
No construction is necessary.
“data field”
Defendants’ Proposed
Construction
“a field which (1) provides
information as to whether the
item is capable of display in a
pop-up menu, (2) indicates
whether or not the item
should be displayed, and (3)
indicates whether the item, if
displayed, should be
executably selectable by the
user”
The parties dispute whether the claimed “data field” should be limited to the embodiment
disclosed in the specification. Defendants contend that it should be limited to the disclosed
embodiment. Specifically, Defendants argue that “data [type] field” is an obvious drafting error
that should be corrected by the Court. Plaintiff responds that Defendants’ construction does not
construe the claim term “field,” but impermissibly reads numerous additional limitations into the
claim term “data.” The Court disagrees with Plaintiff and finds that the patentee intended to
limit claim 11 to the embodiment disclosed in the specification. However, the Court does not
adopt Defendants’ construction and is not persuaded that it needs to correct a “typo” to construe
the disputed phrase. Instead, the Court provides a construction that is consistent with the claim
language, the specification, and the prosecution history as understood by a person of ordinary
skill in the art. Phillips, 415 F.3d at 1312-13 (stating that the claim terms should be construed in
accordance with their “ordinary and customary meaning” as understood by “a person of ordinary
skill in the art in question at the time of invention”).
i.
The Claim Language
The phrase “data field” appears only one time in claim 11. Specifically, “data field” is
Page 24 of 50
included in Element “a,” which recites four fields of data that make up the “mappable
information code sequence”:
searching each of one or more unique mappable information code
sequences, . . . said each of said code sequences includes an item
reference field, a name field, a location field including said
geographical coordinates, and a data field;
‘956 Patent at Claim 11. As discussed in more detail below, the first three fields recited in the
claim language match the first three elements described in the specification.5 ‘956 Patent at
21:51-22:35. Likewise, the fourth field recited as a “data field,” matches the fourth element
described in the specification as a “data type.” Id. The Court also finds that the phrase “data
field” does not appear in any other claim or anywhere in the specification. Thus, a person of
ordinary skill in the art would understand that the plain language of the claimed “data field” is
referring to embodiment disclosed in the specification that describes four data fields. Phillips,
415 F.3d at 1313 (“Importantly, the person of ordinary skill 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.”).
Indeed, Defendants have a
meritorious argument that the claim is indefinite unless limited to the disclosed embodiment.
Energizer, 435 F.3d at 1370 (“Claim definiteness is analyzed ‘not in a vacuum, but always in
light of the teachings of the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.’”) (quoting In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971)). The Court will now turn to the other intrinsic
evidence.
5
The “name” field in the claim corresponds to the “identifier” element described in the
specification. ‘956 Patent at 22:10-12 (“Element identifier 29b provides the mapped item’s
name ….”).
Page 25 of 50
ii.
Th Intrinsic Evidence
he
Having revie
H
ewed the cla languag specifica
aim
ge,
ation, and pr
rosecution h
history, the C
Court
finds tha a person of ordinary sk in the art would unde
at
f
kill
t
erstand that the patentee intended to limit
e
the claim “data fi
med
ield” to the embodimen disclosed in the speci
nt
ification. A
Alloc, Inc. v. Int'l
.
Trade Co
omm., 342 F.3d 1361, 1370 (Fed. Cir. 2003) (“ [W]here the specificatio makes cle at
F
C
e
on
ear
various points that th claimed invention is narrower th the claim language m
p
he
i
han
m
might imply it is
y,
entirely permissible and proper to limit the claims.”). As discus
r
e
ssed above, the specific
cation
s
ific element that make up a map
ts
e
ppable inform
mation code sequence. For
e
describes four speci
example, Figure 12 is “a diagr
ram of the mappable h
hypertext co sequenc for displa
ode
ce
aying
rapidly mappable an executably selectable information individuall called ma
m
nd
y
n,
ly
appable hype
ertext
items, to a mobile device for display.” ‘95 Patent at 11:23-26. The figure depicts the four
o
d
d
56
t
e
e
elements contained in the sequen
s
nce:
As shown above, the fou element in the code sequence is the “data t
A
urth
e
s
type” field.6 The
relevant disclosure describing th mappable hypertext c
d
he
e
code sequenc likewise identifies a data
ces
e
type fiel as the fo
ld
ourth eleme
ent.
The sp
pecification states that “FIG. 12 shows mapp
pable
hypertex code 29 co
xt
onsisting of element item reference 2 identifie 29b, locat
e
m
29a,
er
tion 29c, and data
d
type 29d ‘956 Pate at 21:51-54; see also id. at 22:15
d.”
ent
o
5-30. Thus, the Court fi
inds that a person
of ordina skill in th art would recognize that claim 11 is directed to the embo
ary
he
d
t
1
odiment disc
closed
6
The fi three fiel recited in the claim language ma
irst
lds
n
l
atch the first three fields described i the
t
s
in
specifica
ation. The item referen and the location f
nce
e
fields in the claim lang
e
guage match the
h
specifica
ation exactly. Further, th “name” field in the cl
he
fi
laim corresp
ponds to the “identifier” field
”
described in the spe
d
ecification. ‘956 Patent at 22:10-12 (“Element identifier 2 provide the
‘
2
t
29b
es
mapped item’s name ….”).
i
Pa 26 of 50
age
in the specification.
Indeed, the only data field disclosed in the specification is in connection with the
mappable hypertext code sequences. Outside of this context, the phrase “data field” does not
appear anywhere in the specification. Plaintiff argues that this proves nothing and the term has a
plain and ordinary meaning to one of ordinary skill in the art. However, Plaintiff fails to provide
any suggestion of how one of ordinary skill in the art would interpret this term in light of the
teachings of the prior art and the disclosure of the ‘956 Patent. Rather, one of ordinary skill in
the art would understand that the claimed “data field” is referring to the disclosed embodiment
given the important role this element serves in the claimed “mappable hypertext items.”
Specifically, this field indicates whether and how a mappable item should be displayed on the
map, and whether and how the item should be made selectable to allow a user to access
additional information. The specification describes this element as follows:
Element data type 29d provides information as to whether the
item's symbol, icon, or name is capable of being included with
other items in a executably selectable menu which appears to pop
up, that is, to quickly graphically appear adjacent to the icon or text
item which was executably selected by the user, on the user's
computer display, whether it is to be included in the map displayed
on user's computer, and, if displayed, whether the item's symbol,
which may be a standard display symbol which is resident in
memory, including storage, on user's device, or the item name can
be subsequently selected by a user to automatically provide
additional information about the item, such as by enlarging the
detail, called zooming in, or, for example, as hypertext, in which
the item name or symbol can be selected or clicked on by a user to
provide additional information.
‘956 Patent at 22:15-30 (emphasis added). Given that this element is one of the four major
elements of the “mappable hypertext code 29,” a person of ordinary skill in the art would
understand that the patentee intended to limit the claimed “data field” to this disclosed
embodiment. Thus, a person of ordinary skill in the art would understand that the claimed “data
Page 27 of 50
field” is an element that provides (1) inform
a
t
s:
mation as to w
whether the i
item’s symb icon, or n
bol,
name
is capable of being in
ncluded with other items in a execut
h
s
tably selecta
able menu th appears o the
hat
on
user’s co
omputer disp
play; and (2) information as to whe
)
ether the item is to be in
m
ncluded in a map
displayed on the use compute and, if di
d
er’s
er,
isplayed, wh
hether the it
tem’s symbo icon, or n
ol,
name
can be su
ubsequently selected to provide additional inform
p
mation about the item.
t
Additionally, the prosecu
A
ution history confirms th the patent intended to limit clai 11
hat
tee
d
im
to the em
mbodiment disclosed in the specifica
d
t
ation. Claim 11 issued fr
m
from what wa initially fil as
as
led
claim 17 which dep
7,
pended upon original ind
n
dependent cl
laim 16. In the first o
n
office action the
n,
Examine stated that the subject matter of cla 17 woul be allowa
er
t
aim
ld
able, but obje
ected to the c
claim
for depen
nding from a rejected ba claim (cla 16) as st
ase
aim
tated below:
Dkt. No. 387-11 at 8. Origina claim 17 recited the four fields contained in the mapp
.
al
s
pable
informati code seq
ion
quence:
Pa 28 of 50
age
Dkt. No. 387-10 at 5. As illustrated above, the fourth field recited in the original claim language
was a “data type field” as described in the specification.
In response to the office action, the patentee rewrote claim 17 as an independent claim—
application claim 35. (Dkt. No. 387-12 at 7-8.) The applicant’s remarks did not indicate that any
substantive change to the claim was intended via the amendment. Id. at 28 (“Old claim 17 is
combined with old independent claim 16 and rewritten (as mentioned above) as independent
claim 35.”). Likewise, the Examiner’s reasons for allowing claim 35 indicates that he was
operating under his previous statement for why the claim would be allowable. See Dkt. 387-13 at
8-9 (“[C]laim 35 contains the allowable subject matter of previous claim 16.”). Given this, the
Court finds that the prosecution history indicates that a person of ordinary skill in the art would
understand that the patentee intended to limit claim 11 to the embodiment described in the
specification. Accordingly, the Court provides a construction of “data field” that is consistent
with the claim language, the specification, and the prosecution history.
iii.
Court’s Construction
In light of the claim language, the specification, and the prosecution history, the Court
construes “data field” to mean “a field that provides: (1) information as to whether the
item’s symbol, icon, or name is capable of being included with other items in an executably
selectable menu that appears on the user’s computer display; and (2) information as to
whether the item is to be included in a map displayed on the user’s computer, and, if
displayed, whether the item’s symbol, icon, or name can be subsequently selected to
provide additional information about the item.”
Page 29 of 50
d. “making apparent to the aural and tactile senses of the user”
Disputed Claim Term
“making apparent to the aural
and tactile senses of the user”
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“conveying to the user through
No construction necessary.
This phrase in the preamble is aural and tactile outputs”
not a limitation
The phrase “making apparent to the aural and tactile senses of the user” appears in the
preamble of claim 11. Like the parties in Aaron Bros., the parties dispute whether this preamble
phrase should be construed as a required claim limitation. The Federal Circuit has stated that
there is no “litmus test [that] defines when a preamble limits claim scope.” Catalina Mktg.
Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). For example, the
“preamble limits the invention if it recites essential structure or steps, or if it is necessary to
give life, meaning, and vitality to the claim,” but “is not limiting where a patentee defines a
structurally complete invention in the claim body and uses the preamble only to state a purpose
or intended use for the invention.” Id. (citation and internal quotation marks omitted). In other
words, whether to treat a preamble as a claim limitation must be “determined on the facts of each
case in light of the claim as a whole and the invention described in the patent.” Storage Tech.
Corp. v. Cisco Sys., 329 F.3d 823, 831 (Fed. Cir. 2003).
Defendants contend that the entire preamble should be construed as limiting because it
provides antecedent basis for several claim terms, including “said user,” “said computer,” and
“said items.”7 Defendants also argue that the disputed phrase is limiting because it provides
7
The entire preamble for claim 11 follows:
A method of communicatively executing, including making apparent to the aural
and tactile senses of the user, one or more transmittable mappable hypertext items
representing people, organisms, and objects, including buildings, roads, vehicles,
and signs, on a computer in a manner scalably representing interrelationships of
Page 30 of 50
“additional … steps underscored as important by the specification.” Catalina, 289 F.3d at 808.
Finally, Defendants note that the Examiner’s Notice of Allowability cited the disputed phrase.
(Dkt. No. 387-15 at 4.) Plaintiff responds that Judge Folsom addressed this issue in the Aaron
Bros. Claim Construction Order and found that the language is not a limitation but merely a
statement of purpose or intended use for the invention. Having reviewed the intrinsic evidence,
the Court concludes that the preamble phrase does not limit the scope of claim 11.
i.
The Claim Language
The phrase “including making apparent to the aural and tactile senses of the user” appears
in the preamble of claim 11. The Court finds that the words “aural” and “tactile senses” only
appear in the preamble and are not referenced or recited in the body of claim 11. This is in
contrast to independent claims 1 and 8, which recite “audible, visual, and tactile execution” and
“visual, aural, and other data types” in the body of the claim, and not in the preamble. This
contradicts Defendants’ argument that the Examiner understood that the disputed phrase was a
required limitation. As indicated by these claims, the Examiner did not require “aural” or
“tactile” in the body of all of the independent claims. Moreover, this language is not included in
independent claim 14, further supporting the conclusion that it is not a requirement of the
invention, but instead is only one embodiment described in the specification. Laitram Corp. v.
Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988) (“References to a preferred
embodiment, such as those often present in a specification, are not claim limitations.”).
The Court also notes that the term “user” in the disputed phrase is preceded by the
definite article “the,” not the indefinite article “a.” In contrast, the term “computer” is preceded
with the indefinite article “a.” The parties agree that the preamble provides antecedent basis for
said objects, comprising the steps of …
Page 31 of 50
“said computer.” This is not true for “said user,” because the preamble uses the definite article
“the.” Thus, Defendants’ argument that the preamble provides antecedent basis for “said user”
is not consistent with the claim language.
Moreover, the scope of the claim is “reasonably ascertainable by those skilled in the art”
without reading this preamble phrase as a claimed limitation. Bose Corp. v. JBL, Inc., 274 F.3d
1354, 1359 (Fed. Cir. 2001); Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116
(Fed. Cir. 1987) (finding that lack of antecedent basis for “said collar” did not render claim
indefinite where “specification shows only one collar and in only one place”). A person of
ordinary skill in the art would understand that “said user” is referring to the user of “said
computer” recited in the body of the claim language. Accordingly, the Court concludes that the
plain language of the claim does not require reading this preamble phrase as a required
limitation. The Court will now turn to the other intrinsic evidence.
ii.
The Intrinsic Evidence
In addition to the claims, the other intrinsic evidence in this case, specifically the
specification and prosecution history, supports the Court’s conclusion that the plain language
of the claim does not require reading this preamble phrase as a required claim limitation.
Defendants argue that the disputed phrase is limiting because it provides “additional… steps
underscored as important by the specification.”
Catalina, 289 F.3d at 808.
Specifically,
Defendants argue that aural and tactile outputs are recognized as important aspects of the
purported invention throughout the specification.
Defendants cite to four portions of the
specification to support their argument. (Dkt. No. 387 at 26-27.)
The Court disagrees with Defendants’ conclusion and finds that each reference to “aural”
and “tactile” is in the context of a particular embodiment and should not be imported into the
Page 32 of 50
claim. For example, the statement that “[c]ertain information device users, … may require
alternatively conveyed information, such as that which is verbally or tactilely conveyed from an
appropriately configured device,” discloses a particular embodiment and is not describing the
invention as a whole. ‘956 Patent at13:16-20 (emphasis added); see also id. at 16:5-10.
Likewise, the disclosure of the capability to present information as “tactile and aural as well as
visual” pertains to “[o]ne such transceiver of subject invention,” not necessarily all devices. ‘956
Patent at 5:48-52 (emphasis added).
Moreover, the Court disagrees with Defendants’ contention that if the preamble is not a
limitation, the remaining claim limitations would not be suitable for making information
apparent to a user. The items are made “apparent” to the user by “displaying … said items on
said computer” as recited in the body of the claim. In other words, the preamble does not recite
“essential structure or steps” and is not “necessary to give life, meaning, and vitality to the
claim.” Catalina, 289 F.3d at 808. Instead, the patentee in this case defined “a structurally
complete invention in the claim body and uses the preamble only to state a purpose or intended
use for the invention.” Id.; Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279,
1288-1289 (Fed. Cir. 2008) (“Thus, in general, the purpose of a claim preamble is to give
context for what is being described in the body of the claim; if it is reasonably susceptible to
being construed to be merely duplicative of the limitations in the body of the claim (and was not
clearly added to overcome a rejection), we do not construe it to be a separate limitation.”).
Finally, the Court disagrees that the prosecution history confirms that the disputed phrase
is necessary to give life and meaning to claim 11. Claim 11 issued from what was initially filed
as claim 17, which depended upon original independent claim 16. The Examiner explicitly
stated that the subject matter of claim 17 would be allowable, if rewritten to include all of the
Page 33 of 50
limitation of the bas claim 16. (Dkt. No. 387-11 at 8.) As shown below, neith original c
ns
se
her
claim
16 nor or
riginal claim 17 containe the phras “including making app
m
ed
se
g
parent to the aural and tactile
e
senses of the user”:
f
Dkt. No. 387-10 at 5. Moreover Defendants have not cit to a singl statement by the patent or
5
r,
s
ted
le
tee
the Exam
miner that dis
scusses any of the preamb language with regard to a rejectio amendme or
o
ble
e
d
on,
ent,
the prior art. Instead the Examin stated tha claim 11 w
d,
ner
at
would be allo
owable if it w rewritten as a
was
n
tion of origin claims 16 and 17. On “clear rel
nal
6
nly
liance on the preamble d
e
during prosec
cution
combinat
Pa 34 of 50
age
to distinguish the claimed invention over prior art transforms the preamble into a claim
limitation…[w]ithout such reliance, however, the preamble is generally not limiting…” Catalina,
289 F.3d at 808-809 (citation omitted). The mention of the term at issue together with other
limitations of the claim in the Notice of Allowability is not enough to rebut the general principle
that the preamble is not a limitation.
Defendants have failed to establish a “clear and
unmistakable” disclaimer of claim scope. Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314,
1325-26 (Fed. Cir. 2003). Accordingly, the Court concludes that the claim language, the
specification, and the prosecution history support the conclusion that the preamble phrase does
not limit the scope of claim 11.
iii.
Court’s Construction
In light of the claim language, the specification, and the prosecution history, the Court
concludes that the phrase “including making apparent to the aural and tactile senses of the
user” does not limit the scope of claim 11.
e. “transmittable”
Disputed Claim Term
Plaintiff’s Proposed
Construction
“capable of being
communicated between
computers over a network”
“transmittable”
Defendants’ Proposed
Construction
No need to construe; plain
and ordinary meaning (i.e.,
“capable of being
transmitted”).
The parties’ dispute is focused on whether the term “transmittable,” which appears only
in the preamble of claim 11, should be construed. Defendants contend that “transmittable” is a
commonly understood word and should be given its plain and ordinary meaning. Plaintiff
contends that “transmittable mappable hypertext items” provides that antecedent basis for the
term “mappable hypertext items” used in the body of the claim. Defendants respond that
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Plaintiff’s construction rewrites the claim language and has no basis in the claims or
specification.
The Court agrees that “transmittable mappable hypertext items” provides
antecedent basis for “said items” and “said mappable hypertext items” appearing in the body of
the claim. However, the Court concludes that a construction is not necessary and that the
disputed term will be given its plain meaning to one of ordinary skill in the art.
i.
The Claim Language
The term “transmittable” appears only in the preamble of claim 11. Specifically, the
preamble of claim 11 recites “one or more transmittable mappable hypertext items representing
people, organisms, and objects, including buildings, roads, vehicles, and signs.”
Having
reviewed the claims, the Court concludes that one of ordinary skill in the art would understand
that “one or more transmittable mappable hypertext items” provides antecedent basis for “said
items” and “said mappable hypertext items” appearing in the body of the claim. The Court,
however, finds that the term “transmittable” does not add anything to “said items” or “said
mappable hypertext items” that is not already recited in the body of the claim. For example, the
claim recites that “said mappable hypertext items are quickly received, mapped, and optionally
executably selected by said user.” Before an item can be received, it must be transmitted.
Moreover, the Court finds that the term does not appear in any of the other claims and does not
appear anywhere in the specification.
The Court also notes the parties have agreed that “mappable hypertext items” means “text
or one or more symbols, displayable on a map, that can be selected to access additional
information.”8 Thus, the parties agree that “said mappable hypertext items” have been received
by the computer and displayed to the user. This agreed construction does not require that the
8
This is the same construction that the parties agreed to in Aaron Bros. See Aaron Bros., Dkt.
No. 195 at 14.
Page 36 of 50
“mappable hypertext items” are “communicated between computers over a network,” as
proposed by Plaintiff. Accordingly, the Court concludes that Plaintiff’s construction rewrites the
claim language to include words that are unnecessary. Specifically, the words “network” and
“computer over a network” fail to appear in claim 11. This is in contrast to claim 5, which
recites “whereby said mobile computers can communicate with other systems including
antennas, peripheral devices, and networks by means of wired connections.” Thus, the plain
language of the claim does not support construing “transmittable” as “communicated between
computers over a network.” The Court will now turn to the other intrinsic evidence.
ii.
The Intrinsic Evidence
In addition to the claims, the specification supports the Court’s conclusion that a
construction is not required.
Plaintiff contends that the patent teaches that the situation
information system “generally transmit and receive information.” ‘956 Patent at 11:47-48.
Plaintiff points to Figures 1, 5, 13, and 14, and the respective descriptions, as examples of where
the service provider’s computer as well as the user’s computer transmit and receive information.
(Dkt. No. 383 at 18-19.) The Court agrees that the specification provides a number of examples
where data is transmitted and received by a user’s computer. But here, as it relates to “said
computer,” claim 11 is drafted from the perspective of a single computer. In other words it
recites that a single computer performs the “searching …”, “converting …”, and “displaying …”
steps. Thus, the scope of claim 11 captures one aspect of the embodiments disclosed in the
specification. Kara Tech. Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1347-48 (Fed. Cir. 2009) (“It
is the claims that define the metes and bounds of the patentee’s invention” and “[t]he claims, not
specification embodiments, define the scope of patent protection.”) (citation omitted).
Additionally, claim 11 does not discuss a network and there is no reason to redraft the
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claim to include “communicated between computers over a network” because of a single word in
the preamble. This is not to suggest that a system or a computer that communicates via a
network falls outside the scope of the claim, it only means that at least one computer must meet
each element of claim 11 as it relates to “said computer.” Indeed, the specification states that
“the preferred embodiment … consists of at least one mobile computer with multiple
transmitters and receivers.” ‘956 Patent at 5:12-14 (emphasis added).
iii.
Court’s Construction
In light of the intrinsic evidence, the Court concludes that “transmittable” is
unambiguous, is easily understandable by a jury, and requires no construction. Therefore, the
term “transmittable” will be given its plain meaning to one of ordinary skill in the art.
f.
“converting said coordinates to an appropriately proportionate
representation”
Disputed Claim Term
“converting said coordinates
to an appropriately
proportionate representation”
Plaintiff’s Proposed
Construction
No construction is necessary.
Alternatively, “converting the
coordinates into an
appropriately proportionate
representation of the
coordinates.”
Defendants’ Proposed
Construction
“converting an item’s
coordinates to an
appropriately scaled
representation of the item”
The parties dispute whether the claimed coordinates are converted “into an appropriately
proportionate representation of the coordinates,” or whether the claimed coordinates are converted
into “an appropriately scaled representation of the item.” Plaintiff contends that the disputed
phrase does not require construction, or alternatively the phrase should be construed to mean
“converting the coordinates into an appropriately proportionate representation of the
coordinates.” Plaintiff argues that a person of ordinary skill in the art would understand that the
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claimed coordinates refer to a point on a map. Thus, Plaintiff contends that the claim requires
converting the geographic coordinates to an appropriately proportionate representation of the
geographic coordinates, by displaying a mappable hypertext item at the point associated with the
geographic coordinates.
Defendants respond that “converting” does not mean “displaying,” and Plaintiff’s
construction reads the “converting …” step out of the claim because the “displaying …” step
already requires displaying the mappable hypertext item on a map. Defendants also argue that
Plaintiff’s interpretation of its proposed construction completely disregards the “appropriately
proportionate” language in the claim. Plaintiff argues that Defendants’ construction improperly
and unnecessarily replaces the well-understood claim term “proportionate” with the word
“scaled,” which does nothing to further the purpose of claim construction and deviates from the
express language of the claim.
The Court finds that both proposed constructions fail to properly define the scope of the
claim and neither construction would provide meaningful guidance to a jury. On its face,
Plaintiff’s alternative construction is ambiguous because it is not clear what it means to convert
coordinates into a representation of the coordinates. Similarly, Defendants’ construction does
not provide any guidance on what it means to convert coordinates into a representation of an
item. It is clear from the intrinsic evidence that the coordinates are not the item, but instead are
associated with an item to provide the geographical location of the item. Accordingly, the Court
provides a construction that is consistent with the intrinsic evidence.
i.
The Claim Language
The phrase “converting said coordinates to an appropriately proportionate representation”
appears in Element “b” of claim 11. The Court concludes that the term “said coordinates” finds
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its antecedent basis in the first step of the claim: “searching each of one or more unique
mappable information code sequences … for a field containing geographic coordinate, said each
of said code sequences includes … a location field including said geographical coordinates.”
Thus, as the parties agree, a person of ordinary skill in the art would understand that “said
coordinates” refers to the geographical coordinates contained in the location field of a mappable
information code sequence. Further, the “searching …” step states that each code sequence
serves “to uniquely represent one of [the mappable hypertext] items.” Thus, the plain language
of the claim requires that the geographical coordinates are associated with a particular mappable
hypertext item.
Element “b” of claim 11 also recites that the coordinates are converted to an
“appropriately proportionate representation.” Defendants contend that the term “proportionate”
means “having the correct relationship in size, quantity, or degree to something else.” Dkt. No.
387-16 at 6; see also Dkt. No. 387-17 at 5 (defining “proportionate” as “proportional” and thus
“corresponding in size, degree, or intensity”).
consistent with the intrinsic evidence.
The Court finds that these definitions are
Thus, in the context of the ‘956 Patent, the term
“proportionate” indicates that the claimed representation should have a size, quantity, or degree
that is scaled (i.e., “appropriate”) in relation to something else.
Finally, the third step in Claim 11 is consistent with the Court’s construction. See
Phillips, 415 F.3d at 1314 (“[C]laims themselves provide substantial guidance as to the meaning
of particular claim terms”). The third step in Claim 11 requires “displaying selectably scalably
said items ….” The parties agree that “selectably scalably” means “capable of being chosen for
adjustment in size or detail.” The third step also recites that the information is “mapped in the
context of spatial information, including appropriate to a geographical or other area.” Thus, the
Page 40 of 50
third step uses the geographical coordinates associated with the item to generate a representation
of the item that is capable of being mapped and appropriately scaled in size or detail (i.e.,
“appropriately proportionate”).
Accordingly, Defendants’ concern with reading out the
“displaying …” step of claim 11 is not an issue under the Court’s construction because the
coordinates must first be provided so that the method can determine an appropriately scaled
representation of the item before it is actually displayed. The Court will now turn to the other
intrinsic evidence.
ii.
The Intrinsic Evidence
The other intrinsic evidence indicates that the disputed “converting …” step is referring
to providing the geographical coordinates associated with an item so that an appropriately scaled
representation of the item is capable of being shown on a display. As discussed above, claim 11
recites the embodiment disclosed in the specification related to mappable hypertext code 29.
Regarding this code, the specification states:
A computer memory organized to include mappable hypertext
code sequence 29 in FIG. 12 provides for rapid display of
mappable information items, including map features, information
sources, names, menus, and lists, certain of which may be
executably selected by a user in order to display additional
information related to any of such items, called a hypertext
element, by receiving new information transmitted from the
service provider. Additionally, code 29 provides for graphically
displaying on the user’s display symbols and text appropriately
relating to the items and in a manner which shows each item in a
measurably appropriate relation to other such items of
geographical features shown on the display in an information
sequence of data elements.
…
Element location 29c provides the item’s geographical location, in
longitude and latitude or in reference to a given feature which the
element location provides.
‘956 Patent at 21:55-22:15 (emphasis added). Thus, the Court disagrees with Defendants that
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the claimed “coordinates” are “converted to an appropriately scaled representation of the item.”
Instead, the Court finds that the coordinates are associated with an item and are used to generate
an appropriately scaled representation of the item, which is then capable of being shown on a
display. Indeed, the specification teaches that the mappable hypertext items are displayed to
scale on the map:
All the aforementioned items are displayed according to their
geographic locations in the scale of the area to be viewed on the
display, which area to be viewed is selectable and may be zoomed
in or out, for example, along with the user’s location symbol.
‘956 Patent at 22:51-55. One of ordinary skill in the art would understand that the “unique
mappable information code sequences,” which includes the “geographic coordinates” associated
with an item, enable the code to determine “a measurably appropriate relation to other such
items of geographical features shown on the display.” ‘956 Patent at 21:65-67. In other words,
the “coordinates” are neither converted “into an appropriately proportionate representation of the
coordinates” as Plaintiff contends, nor converted into “an appropriately scaled representation of
the item” as Defendants contend. Instead, the coordinates are associated with an item and used
to generate an appropriately scaled representation of the item, which is capable of being
displayed.
iii.
Court’s Construction
In light of the intrinsic evidence, the Court construes “converting said coordinates to
an appropriately proportionate representation” to mean “using the geographical
coordinates associated with the item to generate an appropriately scaled representation of
the item, which is capable of being displayed.”
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g. “displaying”
Disputed Claim Term
Plaintiff’s Proposed
Construction
“causing to appear”
“displaying”
Defendants’ Proposed
Construction
No need to construe; plain
and ordinary meaning.
The parties dispute whether the term “displaying” should be construed by the Court.
Plaintiff contends that Judge Folsom construed the term “displaying” in the third step of Claim
11 as “causing to appear.” See Aaron Bros., Dkt. No. 195 at 21. Defendants respond that Judge
Folsom did not construe the term “displaying” as “causing to appear,” but instead construed
“displaying” as “said computer causing to appear.” Id. (emphasis added). Defendants further
argue that Judge Folsom included the “said computer” language to resolve the “apparent dispute
about who or what ‘do[es] the displaying.’” Id. The Court agrees with Defendants on this point.
Notwithstanding, Defendants contend that the term “displaying” need not be construed in this
case because any dispute as to which computer performs the displaying step will be resolved
more directly by the Court’s construction of “said computer.” Defendants also contend that the
term “displaying” would be readily understood by the jury without construction. As in Aaron
Bros., the Court finds that the parties have a dispute over the proper scope of the claim language
that must be resolved by the Court. O2 Micro, 521 F.3d at 1362-63.
i.
The Claim Language
The term “displaying” appears in Element “c” of claim 11 in the phrase “displaying
selectably scalably said items on said computer.” Element “c” also recites “whereby said user
may quickly receive and display timely situation information.” It is clear from the claim
language that the items and information are displayed to a user on the computer. The Court will
now turn to the other intrinsic evidence.
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ii.
The Intrinsic Evidence
In addition to the claims, the specification supports the Court’s construction that
“displaying” means “said computer causing to appear.”
For example, the specification
discloses “graphically displaying on the user’s display symbols and text appropriately relating
to the [mappable hypertext] items.” ‘956 Patent at 21:63-64 (emphasis added). Further, the
Summary of the Invention discloses that “it is desirable that the form factor of the situation
information device provide a usefully large display or graphical display unit (GDU).” ‘956
Patent at 5:48-50. Similarly, in one embodiment “a menu of available lists are caused to
appear on [a] device display…” ‘956 Patent at 25:18-21 (emphasis added).
In another
embodiment, when “the user’s location … approaches within a selectable distance …
proximate station banner … appears on display 4a …” shown in Figure 2. ‘956 Patent at
13:30-33. The inventor uses similar descriptions to teach other embodiments. See, e.g., ‘956
Patent at 16:30, 19:28-30, 22:18-22. Accordingly, the Court’s construction is consistent with
the embodiments disclosed in the specification.
iii.
Court’s Construction
In light of the intrinsic evidence, the Court construes “displaying” to mean “said
computer causing to appear.”
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h. “displaying …” step (Element “c” in claim 11)
Disputed Claim Term
“displaying selectably
scalably said items on said
computer whereby said user
may quickly receive and
display timely situation
information mapped in the
context of spatial
information, including
appropriate to a geographical
or other area, in which said
mappable hypertext items are
quickly received, mapped,
and optionally executably
selected by said user to
provide additional of said
situation information or
received, stored, and
transmitted by a provider of
said situation information”
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“Displaying selectably scalably No need to construe entire
said items on said computer,
step.
whereby said user may,
quickly, receive and display
See proposed constructions
timely situation information
for “timely situation
mapped in the context of
information” and “whereby
spatial information, including
said user may quickly
spatial information appropriate receive and display timely
to a geographical or other area, situation information.”
and whereby said mappable
hypertext items are, quickly,
either:
(1) received, mapped, and
optionally executably selected
by said user to provide
additional of said situation
information; or
(2) received by a provider of
said situation information,
stored by a provider of said
situation information, and
transmitted by a provider of
said situation information.
The parties’ dispute whether the entire “displaying …” step (Element “c” in claim 11)
should be construed. Defendants contend that construing the entre “displaying …” step is
unnecessary given that the disputed aspects of the construction will be resolved through
construction of the constituent terms. Specifically, Defendants note that the “displaying …” step
includes the disputed terms “displaying,” “timely situation information,” and “whereby said user
may quickly receive and display timely situation information,” as well as “selectably scalably,” a
phrase that the parties have an agreed upon construction.
Plaintiff contends that in the Aaron Bros. case, Judge Folsom addressed several claim
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construction and indefiniteness arguments made by the defendants relating to the “displaying
…” step. See Aaron Bros., Dkt. No. 195 at 24-34. Plaintiff argues that the Court should adopt
Judge Folsom’s comprehensive construction to avoid leaving the jury with a fragmented
construction of various terms of this step. Plaintiff further argues that Defendants do not provide
any reasoned basis for refusing to provide the jury with Judge Folsom’s helpful and
comprehensive construction of this entire step. The Court agrees with Plaintiff and finds that
Judge Folsom’s thorough analysis of the “displaying …” step would be helpful to a jury and is
not diminished just because it includes term that are otherwise disputed by the parties. The
Court further clarifies Judge Folsom’s construction by numbering the individual steps.
Accordingly, for the reasons stated in the Aaron Bros., the Court construes Element “c” of
claim 11 as follows:
(1) displaying selectably scalably said items on said computer,
(2) whereby said user may, quickly, receive and display timely
situation information mapped in the context of spatial
information, including spatial information appropriate to a
geographical or other area,
and
(3) whereby said mappable hypertext items are, quickly, either:
(a) received, mapped, and optionally executably selected by
said user to provide additional of said situation
information; or
(b) received by a provider of said situation information, stored
by a provider of said situation information, and
transmitted by a provider of said situation information.”
Page 46 of 50
i. “whereby said user may quickly receive and display timely situation
information”
Disputed Claim Term
“whereby said user may
quickly receive and display
timely situation information”
Plaintiff’s Proposed
Construction
This term does not need
construction beyond
construction of the phrase
“displaying selectably
scalably said items on said
computer whereby said user
may quickly receive and
display timely situation
information mapped in the
context of spatial
information…” previously
construed by the Court
Defendants’ Proposed
Construction
“whereby the user receives
and displays timely
situation information
quickly enough to be able to
take advantage of the
information, such as while
the user is still proximate to
a relevant location or has
not yet reached the
location,” otherwise
indefinite.
The parties’ dispute whether the Court should construe the phrase “whereby said user
may quickly receive and display timely situation information” in light of the Court’s
construction for “timely situation information” and the “displaying …” step. Plaintiff contends
that there is no need to construe this language separately from the construction of the “displaying
…” step and the construction of “timely situation information.”
Plaintiff also argues that
Defendants’ construction reads a limitation into the claim language that is not supported in the
intrinsic evidence.
Defendants respond that their construction is based on Judge Folsom’s explanation of the
claim language, and that the construction would be helpful to the jury in determining if an
accused product enables a user to receive and display timely situation information quickly
enough to fall within the scope of the claims. In the alternative, Defendants contend that the
disputed phrase is indefinite. The Court agrees with Plaintiff. Judge Folsom found that “the
constituent term ‘timely situation information’ [as well as the Court’s construction for the
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“displaying …” step] enables a finder of fact to objectively evaluate the constituent term
‘quickly.’” See Aaron Bros., Dkt. No. 195 at 29. Accordingly, the Court concludes that no
construction is necessary and that the phrase is not indefinite.
i.
The Claim Language
The term “whereby said user may quickly receive and display timely situation
information” appears in Element “c” of claim 11. As discussed above, the Court has construed
the entire Element “c.” Moreover, the Court has construed “displaying,” “said computer,” and
“timely situation information.”9
Likewise, the parties have agreed to constructions for
“selectably scalably,” “mappable hypertext items,” and “optionally executably selected by said
user to provide additional of said situation information,” which all appear in Element “c.” When
Element “c” and the disputed phrase is read in light of the Court’s constructions and the parties’
agreed upon constructions, the Court concludes that a finder of fact will be able to objectively
evaluate the constituent term “quickly.” Thus, further construction of the disputed phrase is not
required.
The Court also finds that Defendants have failed to provide justifications for adding
further limitations to the claim language. Although Defendants proposed construction is based
on Judge Folsom’s explanation of the claim language, Defendants fail to recognize that Judge
Folsom did not find that his explanation was required for the construction of Element “c.”
Instead, Judge Folsom concluded that “the constituent term ‘timely situation information’
enables a finder of fact to objectively evaluate the constituent term ‘quickly.’” See Aaron Bros.,
Dkt. No. 195 at 29. The Court agrees with Judge Folsom’s analysis and concludes that the
disputed phrase does not need construction in light of the other disputed terms/phrases construed
9
“[T]imely situation information” is the last phrase appearing in the disputed phrase at issue.
Page 48 of 50
by the Court, as well as the terms/phrases agreed upon by the parties that are nested within
Element “c.”
Finally, the Court finds that Defendants’ proposed construction is circular because it
includes “quickly,” the very term that Defendants contend renders the disputed phrase indefinite.
It is disingenuous to argue that a phrase is indefinite because it includes “quickly,” while at the
same time including the alleged indefinite term in the proposed construction. Accordingly,
Defendants have failed to justify adding further limitations to the claim language.
ii.
Court’s Construction
In light of the constructions for the other disputed and agreed upon terms/phrases, the
Court finds that the phrase “whereby said user may quickly receive and display timely
situation information” requires no additional construction. Additionally, for the reasons stated
in the Aaron Bros., the Court finds that the phrase is not indefinite. See Aaron Bros., Dkt. No.
195 at 24-34.
V.
CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patent-in-suit. The parties are ORDERED that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are
ORDERED to refrain from mentioning any portion of this opinion, other than the actual
definitions adopted by the Court, in the presence of the jury.
Any reference to claim
construction proceedings is limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
by the parties. As a part of such mediation, each party shall appear by counsel and by at least
Page 49 of 50
.
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 19th day of June, 2013.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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