Gonzalez v. InfoStream Group Inc.
Filing
109
MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 09/20/2015. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
EMMANUEL C. GONZALEZ,
Plaintiff,
Case No. 2:14-cv-906-JRG-RSP
v.
LEAD CASE
INFOSTREAM GROUP, INC. ET AL.,
Defendants.
MEMORANDUM OPINION AND ORDER
Before the Court is the opening claim construction brief of Emmanuel C. Gonzalez
(“Plaintiff”), Dkt. No. 94, filed on June 29, 2015,1 the response of Tagged, Inc. and New Life
Ventures, Inc. (“Defendants”), Dkt. No. 96, filed on July 14, 2015, and the reply of Plaintiff, Dkt.
No. 98, filed on July 22, 2015. The Court held a hearing on the issues of claim construction and
claim definiteness on August 18, 2015. Having considered the arguments and evidence presented by
the parties at the hearing and in their briefing, the Court issues this Order.
1
In this order, citations of the parties’ filings in this case are to the filing’s number in the docket
for the lead case (“Dkt. No.”) and pin cites are to the page numbers assigned through ECF.
1
Table of Contents
I.
BACKGROUND ............................................................................................................... 3
II.
LEGAL PRINCIPLES ..................................................................................................... 5
III.
CONSTRUCTION OF AGREED TERMS .................................................................... 9
IV.
CONSTRUCTION OF DISPUTED TERMS ................................................................. 9
A. “digital label” / “label” / “labels”...................................................................................... 10
B. “universally-agreed convention” / “agreed convention” .................................................. 19
C. “wherein each digital label uniquely refers to and represents a particular item of
qualitative information” / “wherein each digital label represents and comprises a
unique reference to a specific item of qualitative information” ....................................... 23
D. “search . . . for subscriber digital labels” / “search . . . based on the labels” .................... 25
E. “effective use of . . . digital labels” ................................................................................... 30
F. “search engine” / “internet search engine” ....................................................................... 31
G. “internet search engine or internet browser program or service” ..................................... 35
H. “stored websites” .............................................................................................................. 39
I. “Host Website’s computer” .............................................................................................. 41
V.
CONCLUSION ............................................................................................................... 43
2
I.
BACKGROUND
Plaintiff alleges infringement of five related U.S. Patents: No. 7,558,807 (the “’807
Patent”), No. 7,647,339 (the “’339 Patent”), No. 7,873,665 (the “’665 Patent”), No. 8,065,333
(the “’333 Patent”), and No. 8,296,325 (the “’325 Patent”) (collectively, the “Asserted
Patents”).2 The Asserted Patents are directed to methods and systems for labeling websites or a
website’s owner (the subscriber) with information about the website, the website’s owner, or the
website’s content.
The patents describe “digital labels” that can be used to improve the efficacy of Internet
searches over word-match or category-selection Internet searches. A label-based search is an
improvement over other Internet searches because a label-based search identifies qualities that
are associated with a particular website or subscriber, as opposed to simply identifying the words
in the content of a website or the category to which a website has been assigned. See, e.g., ’665
Patent col.7 ll.48–54, col.9 l.34 – col.10 l.3.3 The abstracts of the ’339 and ’807 Patents provide:
2
All of the Asserted Patents are related to a provisional application filed on October 4, 2000.
The Asserted Patents name a single inventor, Emmanuel C. Gonzalez. The ’339 Patent issued on
January 12, 2010 from an application filed on February 22, 2001. The ’807 Patent, issued on July
7, 2009 from an application filed on May 18, 2004. The ’807 Patent claims priority to the
application that issued as the ’339 Patent. The ’665 Patent issued on January 18, 2011 from an
application filed on November 23, 2009. The ’665 Patent issued from a continuation-in-part of
the application that issued as the ’339 Patent. The ’333 Patent issued on November 22, 2011
from an application filed on December 10, 2010. The ’333 Patent issued from a divisional of the
application that issued as the ’665 Patent. The ’325 Patent issued on October 23, 2012 from an
application filed on December 10, 2010. The ’325 Patent issued from a divisional of the
application that issued as the ’665 Patent. The Asserted Patents share a substantially identical
specification, other than the claim sets and matter added to the ’665 Patent that is also found in
the ’333 Patent and the ’325 Patent.
3
The parties represent that the disclosure of the ’665 Patent through column 19 line 22 is
substantially identical to the disclosures of the priority patent (the ’339 Patent) and the other
Asserted Patents. See Dkt. No. 94 at 4 n.1; Dkt. No. 96 at 8 n.5. As such, the Court follows the
parties’ convention; i.e., cites to the ’665 Patent indicate text that appears in all the patents unless
otherwise noted.
3
There is described a host website and method for digitally labeling websites or
subscribers with digital labels which represent characteristics and qualities of the
website. The digital labels are stored on host websites, each of which is directed
to a specific subject or activity. The host website can also provide digital labels
for storage in other host websites. The host website is provided with artificial
intelligence capabilities.
The abstracts of the ’665, ’333, and ’325 Patents provide:
A host website, method and system for digitally labelling websites or subscribers
with digital labels which represent characteristics or qualities of the website is
disclosed. Digital labels are stored on host websites, each of which is directed to a
specific subject or activity. The host website can also provide digital labels for
storage in other host websites. The host website is provided with artificial
intelligence capabilities. Methods and systems for asymmetric access in a host
website database are disclosed.
Claim 1 of the ’807 Patent and Claim 1 of the ’665 Patent, representative system and
method claims respectively, recite as follows:
’807 Patent
’665 Patent
4
II.
LEGAL PRINCIPLES
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start
by considering the intrinsic evidence. See id. at 1313; see also C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns
Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims
themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R.
Bard, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as
understood by one of ordinary skill in the art at the time of the invention in the context of the
entire patent. Phillips, 415 F.3d at 1312–13; accord Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
1361, 1368 (Fed. Cir. 2003).
The claims themselves provide substantial guidance in determining the meaning of
particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
can be very instructive. Id. Other asserted or unasserted claims can aid in determining the claim’s
meaning because claim terms are typically used consistently throughout the patent. Id.
Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
example, when a dependent claim adds a limitation to an independent claim, it is presumed that
the independent claim does not include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. at
1315 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc)). “[T]he specification ‘is always highly relevant to the claim construction analysis.
5
Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Id.
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); accord
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because
a patentee may define his own terms, give a claim term a different meaning than the term would
otherwise possess, or disclaim or disavow claim scope. Phillips, 415 F.3d at 1316. In these
situations, the inventor’s lexicography governs. Id. The specification may also resolve the
meaning of ambiguous claim terms “where the ordinary and accustomed meaning of the words
used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from
the words alone.” Teleflex, 299 F.3d at 1325. But, “[a]lthough the specification may aid the court
in interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.” Comark Commc’ns,
Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); accord Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patent applicant may also define a term in prosecuting the patent. Home
Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”). “[T]he prosecution
history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that
may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.”
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985).
Although extrinsic evidence can be useful, it is “less significant than the intrinsic record
in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
(citations and internal quotation marks omitted). Technical dictionaries and treatises may help a
6
court understand the underlying technology and the manner in which one skilled in the art might
use claim terms, but technical dictionaries and treatises may provide definitions that are too
broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly,
expert testimony may aid a court in understanding the underlying technology and determining
the particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
assertions as to a term’s definition are entirely unhelpful to a court. Id. Generally, extrinsic
evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id. The Supreme Court recently explained the role of extrinsic evidence in claim
construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art
during the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546
(1871) (a patent may be “so interspersed with technical terms and terms of art that
the testimony of scientific witnesses is indispensable to a correct understanding of
its meaning”). In cases where those subsidiary facts are in dispute, courts will
need to make subsidiary factual findings about that extrinsic evidence. These are
the “evidentiary underpinnings” of claim construction that we discussed in
Markman, and this subsidiary factfinding must be reviewed for clear error on
appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
The “determination of claim indefiniteness is a legal conclusion that is drawn from the
Court’s performance of its duty as the construer of patent claims.” Exxon Research & Eng’g Co.
v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Section 112 entails a “delicate balance”
between precision and uncertainty:
On the one hand, the definiteness requirement must take into account the inherent
limitations of language. Some modicum of uncertainty, the Court has recognized,
is the price of ensuring the appropriate incentives for innovation. . . . At the same
time, a patent must be precise enough to afford clear notice of what is claimed,
thereby apprising the public of what is still open to them. Otherwise there would
be a zone of uncertainty which enterprise and experimentation may enter only at
the risk of infringement claims. And absent a meaningful definiteness check, we
7
are told, patent applicants face powerful incentives to inject ambiguity into their
claims. . . . Eliminating that temptation is in order, and the patent drafter is in the
best position to resolve the ambiguity in patent claims.
Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128–29 (2014) (citations omitted).
Therefore, in order for a patent to be definite under § 112, ¶ 2,4 “a patent’s claims, viewed in
light of the specification and prosecution history, [are required to] inform those skilled in the art
about the scope of the invention with reasonable certainty.” Id. at 2129. The determination of
“definiteness is measured from the viewpoint of a person skilled in the art at the time the patent
was filed.” Id. at 2128 (emphasis in original, citations omitted). “The definiteness
requirement . . . mandates clarity, while recognizing that absolute precision is unattainable.” Id.
at 2129. This standard reflects rulings that have found that “the certainty which the law requires
in patents is not greater than is reasonable, having regard to their subject-matter.” Id. at 2129.
When a term of degree is used in a claim, “the court must determine whether the patent provides
some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d
1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is used
in a claim, “the court must determine whether the patent's specification supplies some standard
for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1351 (Fed. Cir. 2005); accord Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371
(Fed. Cir. 2014) (citing Datamize, 417 F.3d at 1351). “Whether a claim reasonably apprises
those skilled in the art of its scope is a question of law.” Microprocessor Enhancement Corp. v.
Texas Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008). As it is a challenge to the validity
of a patent, the failure of any claim in suit to comply with § 112 must be shown by clear and
convincing evidence. Nautilus, 134 S. Ct. at 2130 n.10.
4
As the Asserted Patents have an effective filing date earlier than Sept. 16, 2012, the pre-AIA
version of 35 U.S.C. § 112 governs the definiteness analysis here.
8
III.
CONSTRUCTION OF AGREED TERMS
The parties have agreed to the following constructions set forth in their Joint Claim
Construction Chart Pursuant to Patent Local Rule 4-5(d) (Dkt. No. 101):
Term5
“search engine’s own computer”
Agreed Construction
Plain and ordinary meaning (subject to
construction of “search engine”).
’339 Patent Claim 1
’333 Patent Claim 1
“providing the right of access to the search Plain and ordinary meaning (subject to
engine’s or Host Website’s computer”
construction of “search engine” and “Host
Website’s computer”).
’333 Patent Claim 1
Having reviewed the intrinsic and extrinsic evidence of record, the Court agrees with and
hereby adopts the parties’ agreed constructions.
IV.
CONSTRUCTION OF DISPUTED TERMS
Plaintiff submits that the person having ordinary skill in the art, from whose perspective
the claims are interpreted, is:
a person with an advanced college degree and some business experience. The
person would further possess at least a basic knowledge of Internet search
concepts, as well as at least some fundamental computer programming skills.
Dkt. No. 94 at 8 (citing Declaration of Ryan M. Garlick, Ph.D. (“Garlick Decl.”) ¶ 32 (Plaintiff’s
Ex. F, Dkt. No. 94-7 at 8)). Defendants do not oppose Plaintiff’s submission and have not
submitted a competing definition of the person of ordinary skill in the art. Accordingly, the Court
adopts Plaintiff’s proposal.
5
For all term charts in this order, the claims in which the term is found are listed with the term
but: (1) only the highest level term in each dependency chain is listed, and (2) only asserted
claims, as identified by Plaintiff in his opening brief (Dkt. No. 94 at 5), are listed.
9
A.
“digital label” / “label” / “labels”
Disputed Term
Plaintiff’s Proposed
Construction
“digital label”
“Symbols or designations in
electronic form representing
Plain and ordinary meaning.
qualitative or descriptive data
or characteristics”
’807 Patent Claims 1, 3
’665 Patent Claim 1, 55
’325 Patent Claim 7
Defendants’ Proposed
Construction
“label” / “labels”
“Symbols or designations in
electronic form representing
’665 Patent Claims 1, 55 qualitative or descriptive data Plain and ordinary meaning.
’333 Patent Claim 1
or characteristic”
’325 Patent Claim 7
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that the terms “label” and “digital label,” as used in the claims, have the
same meaning. Dkt. No. 94 at 19–21. Plaintiff submits that the terms were defined in the
Asserted Patents and prosecution history as “symbols” that “convey unambiguous qualitative
data about an item, its maker, or its owner, in digital form.” Id. at 9–10. Plaintiff argues that his
proposed construction captures this definition and that Defendants’ proposed construction
threatens to encompass prior art such as meta-tags that Plaintiff distinguished from his invention
during prosecution. Id. at 10–11.
In addition to the claims, Plaintiff cites the following intrinsic and extrinsic evidence in
support of his position. Intrinsic evidence: ’665 Patent col.3:13–41, col.4 ll.16–23, col.4 l.54 –
col.5 l.3, col.5 l.46 – col.6 l.9, col.7 l.47 – col.8 l.25, col.11 l.63 – col.12 l.26, col.12 ll.35–55,
col.15 ll.6–9; ’339 Patent File Wrapper December 29, 2003 Amendment (excerpt) (Plaintiff’s
Ex. J, Dkt. No. 94-11), November 9, 2007 Fax (excerpt) (Plaintiff’s Ex. M, Dkt. No. 94-14);
’807 Patent File Wrapper July 30, 2007 Amendment (excerpt) (Plaintiff’s Ex. I, Dkt. No. 94-10),
10
November 23, 2008 Appeal Brief (excerpts) (Plaintiff’s Exs. K and L, Dkt. Nos. 94-12 and 9413). Extrinsic evidence: Garlick Decl. (Plaintiff’s Ex. F, Dkt. No. 94-7).
Defendants, in response, partially agree with Plaintiff. Defendants agree that “labels” are
in electronic form because: (1) a “digital label” is “digital;” and (2) the other claim language
shows that the “label”/“labels” are in electronic form. Dkt. No. 96 at 12. But Defendants disagree
with the remainder of Plaintiff’s proposed construction. Defendants submit that “label” is an
ordinary English word that is used in the Asserted Patents according to its plain and ordinary
meaning. It does not have a special definition according to Defendants. Id. at 13.
Defendants argue that Plaintiff’s proposed construction improperly: (1) renders other
claim language superfluous, id. at 13–14; (2) excludes exemplary embodiments, specifically
“hybrid digital labels” and “quantitative” labels, id. at 14–15; and (3) ignores the fact that the
ordinary meaning of “label” is used in the Asserted Patents and the prosecution history, id. at 15–
16. In addition, Defendants argue that Plaintiff’s proposed constructions would render the claims
indefinite as it would be uncertain whether meta-tags would fall within the scope of the “label”
limitation. Id. at 17–19. Finally, Defendants argue that under the plain and ordinary meaning of
“label,” the claims are not limited to the “labels” which Plaintiff invented. That renders the
claims invalid. Id. at 19–20.
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’665 Patent col.4 ll.55–56; ’339 Patent File Wrapper
May 21, 2004 Response/Amendment (Defendants’ Ex. 11, Dkt. No. 96-12), November 9, 2007
Fax (Defendants’ Ex. 2, Dkt. No. 96-3); ’807 File Wrapper July 25, 2008 Response to Office
Action (Defendants’ Ex. 10, Dkt. No. 96-11), November 23, 2008 Appeal Brief (excerpt)
11
(Plaintiff’s Ex. K, Dkt. No. 94-12). Extrinsic evidence: Merriam-Webster Dictionary, “label”,
available at http://www.merriam-webster.com/dictionary/label.
Plaintiff replies that Defendants’ proposed construction does not account for the fact “that
the entirety of the intrinsic record is directed to describing the uniqueness and novelty of the
claimed ‘digital labels.’” Dkt. No. 98 at 3. First, with respect to superfluous claims language,
Plaintiff argues that his proposed construction does not conflict with other claim language and
that any redundant language would be minimal and not confusing. For example, Plaintiff argues
that the jury will understand the proposed construction of label and still understand that the label
can further represent a separately claimed label with specific qualitative or descriptive data or
characteristics. Id. at 3–4. Second, with respect to potentially excluded exemplary embodiments,
Plaintiff argues that the “hybrid digital label” is a combination of digital labels and the prior-art
word search. The claims, according to Plaintiff, are directed to the digital label portion of a
“hybrid digital label,” and are not directed to the prior-art word search portion of that label.
Plaintiff also argues that “quantitative” labels are encompassed under the proposed construction
as representing “descriptive data.” Id. at 4–5. Third, with respect to “label” being used according
to its common meaning to describe the prior art, such use is distinct from the use of “label” to
describe the claimed digital labels. Id. at 5–6. Finally, with respect to whether the claims are
indefinite under the proposed construction, they are not—meta-tags are not within the meaning
of “digital label” because they are not symbolic. Id. at 6. Plaintiff cites further intrinsic evidence
to support his position: ’665 Patent col.6 ll.28–32, 60–64; ’339 Patent File Wrapper May 21,
2004 Response/Amendment (Defendants’ Ex. 11, Dkt. No. 96-12).
12
Analysis
The parties agree that the “labels” in the claimed invention are electronic, whether
inherently or in the context of the entire claim, and therefore all claimed “labels” are “digital
labels.” The parties dispute (1) whether “labels” are necessarily symbolic, and (2) whether
“labels” are necessarily limited to representing qualitative or descriptive data or characteristics.
The Court is not convinced that the claim terms are understandable without construction. Nor is
the Court convinced that Plaintiff’s proposed construction properly captures the scope of these
terms.
As stated in the Asserted Patents, Plaintiff, the sole inventor of the Asserted Patents,
believed that Internet content, specifically websites, could not be identified in a search except by
inspection of their content. ’665 Patent col.1 ll.31–44. Thus, he noted, searches at the time of
invention connected content publishers with their audience (surfers) by searching the Internet
content for words or phrases that matched the words or phrases in a surfer’s query (the “word
match” searches). Id. at col.1 ll.33–59. Plaintiff noted shortcomings in these word-match
searches, namely that they “only give clues as to a site’s nature, not unambiguous information
about a site or its publisher. As a result, searches generally yield[ed] a large number of matches,
most of which [did] not answer the surfer’s needs.” Id. at col.1 ll.59–62 (emphasis added). And
Plaintiff noted the way in which the industry dealt with these shortcomings: it used humans to
manually assemble sites according to categories to create listings similar to “Yellow Pages”
listings. Id. at col.2 ll.11–24.
The inventor criticized these prior-art approaches and proposed a different solution: label
the websites and use the labels, not the content, to identify websites relevant to the surfer’s
query. Id. at col.1 l.59 – col.3 l.57. In explaining the invention, Plaintiff likened the state of the
13
art of the Internet to an unorganized library in which a reader located information in a book by
reading all of the books in the library. He explained that his invention improved the Internet by
organizing it in a way akin to organizing the books in the library by category and then searching
for information in the books by reference to information about the books codified on index cards:
There is provided a Host Website system and method in which subscribers label
their own products and services and in which similarly labelled objects and
services are stored in common locations with hierarchical multi-parameter labels.
The system includes Internet-related data-gathering, labelling, storing and
searching methods. The system and method can best be appreciated by metaphor:
consider the Internet as a library whose books (websites) are not only scattered at
random but also indistinguishable from each other except upon actually being
opened. Internet portals are like librarians who are resigned to the fact that the
books (websites) are in disarray, but purport to help readers by speed-reading. The
present invention creates order in the library by establishing discrete sections
where books (websites) can be organized by category, and by codifying
information about each book (website) on index cards so that readers can more
easily identify the books (websites) they need.
Id. at col.2 ll.51–67. The “labels” of the Asserted Patents are akin to the index cards of the
metaphorical library.
The labels are described as “evidencing [] identified qualitative characteristics” of the
website or the labelling-service subscriber that are identified in response to a series of questions
posed “with a view to determining qualitative characteristics.” Id. at col.3 ll.12–33 (stating an
example of labeling: “If A [e.g., subscriber clicked a box saying it offers scholarships for
minorities], then B [instruction to computer to write an appropriate code, e.g., ‘mnsch’, and
associate it with this listing]”).
The Asserted Patents define the “labels” of the invention:
As discussed above, subscribers label their websites and the labels are digitized. A
“label” is something which identifies contents, or provides information about
the subscriber or his website. Generally, the labels are multi-parameter digital
labels. That is, a plurality of labels, each one conveying unambiguous qualitative
data about an item, its maker, or its owner, in digital form are created. This
permits an item to be identified by computers according to the presence, absence,
14
or configuration of the labels. An example of two-parameter labelling is to label a
list of people. In computer field “A”, place a “0” or a “1” to indicate if a person is
male or female, respectively. In field “B”, place a 0 to indicate a college graduate,
and a blank (null entry) otherwise. Should one want to identify males who are not
college graduates, the computer would search Field A for 0s, and Field B for null
entries. The conjunction of the two sets would yield the desired list of males.
Id. at col.4 l.54 – col.5 l.3 (emphasis added). That is, the “labels” of the invention convey
“unambiguous qualitative data about an item, its maker, or its owner.”
With reference to the library metaphor, the “labels” serve as index cards to Internet
content in that they contain information about websites that allows one to identify a desired
website without examining the content of the website:
At any [time after creation of the labels], any subscriber could be searched for
through the Host Website on the basis of any configuration of digital labels, e.g.,
state-sponsored universities in California which offer minority-eligible
scholarships. To perform this search, a Host Website computer would scan its
database for listings which have the “mnsch” label as well as the particular labels
for the other characteristics of being a school, more precisely a university, statesponsored, in California.
Searches within a Host Website, with a defined scope, can therefore be more
precise and direct than is possible under any currently-used search method on the
Internet. Most important, from the viewpoint of the subscriber, the multiparameter digital labelling and the Host Website together provide assurance that it
will be found by its target audience—not the case for most websites today. For
example, a hypothetical Chinese restaurant, if it had a website, would be unlikely
to be found through a portal unless one knew its exact name; whereas if it were
listed on a hypothetical Host Website on New York City, it would surely be found
by many persons under varying circumstances and search parameters. Moreover,
when found through a Host Website, a website would be in a high-relevance list
and on the first few pages of hits, not the case with portal search results, in which
the valid answers if any are often hidden in a sea of irrelevance.
Id. at col.3 ll.34–57.
The Court does not understand Plaintiff’s proposed construction of “label” to clarify the
meaning of the term. The Asserted Patents make clear that a label is a symbol because the label
is symbolic of a qualitative characteristic about the subject being labeled. See, e.g., id. at col.4
ll.16–23 (contrasting labels as “symbols” with word-matches “which are mere character-strings
15
of unknown significance”), col.7 ll.48–54 (contrasting labels as “symbols” from “[w]ordmatching and category-listing activities [that] are not symbolic in structure”). It is not clear how
a “symbol” is distinct from a “designation” under Plaintiff’s construction. Nor is it clear how
qualitative data is distinct from qualitative characteristics, or how a qualitative characteristic is
distinct from a descriptive characteristic. Plaintiff’s construction fails to account for the
unambiguous nature of the label, i.e., the nature of the particular quality associated with the label
is unambiguous.
The “symbolic” nature of labels does not exclude “hybrid digital labels” from the scope
of the claims. The “hybrid digital label” denotes a particular characteristic of the subject because
it is symbolic of qualitative data pertaining to the subject and also includes a particular instance
of that characteristic. As explained in the Asserted Patents, “[a] hybrid digital label is one in
which the field is unambiguously digitally defined as a certain kind of field, but the subscriber
entry in the field is a character string.” Id. at col.6 ll.33–34. The patents provide an illustrative
example in which the field (i.e., characteristic of the subject) is “wine merchant stock list” and
the entry is a particular wine carried by the subject wine merchant. Id. at col.6 ll.35–64. Thus, the
hybrid digital label is a hybrid of the digital label (symbolic of a characteristic of the wine
merchant, its stock list) and textual content (the name of the stocked wines set forth in text). The
Asserted Patents explain this in contrast to the name of particular wine appearing haphazardly in
Internet content, in which the appearance of the name has no meaningful significance until read
in context of the website in which it appears. See id. at col.6 ll.46–60.
The Court does not understand “qualitative data” as used in the Asserted Patents to
exclude numerical, or “quantitative,” information as Defendants propose. Dkt. No. 96 at 15.
What Defendants characterize as “quantitative” characteristics, and conclude are not
16
“qualitative” characteristics, namely height, weight, age, sales, profits, and number of
employees, are simply qualities of a subject entity that may be expressed numerically and that
can be used to identify the subject. The patent sets forth examples of “qualitative characteristics”
that expressly include numerical data that can be used to identify a particular subject:
In the process of creating its listing online, each subscriber is asked questions by
the Host Website computer, with a view to determining qualitative characteristics,
such as: general nature (e.g., school); more specific nature (e.g., university); an
enumeration of its activities, services, or products (e.g., medicine, law, business,
etc.); its price range or an indicator thereof (e.g., state-sponsored); its
headquarters and/or operating location(s) (e.g., Los Angeles, Santa Barbara, etc.);
its payment and credit practices (e.g. scholarship for minorities); and similar data
depending on the nature of the subscriber.
The Host Website computer poses questions automatically, takes account of
previous answers, and avoids asking inapplicable questions. When the datagathering sequence is concluded (a process of about 10 minutes), it converts the
answers into a plurality of digital labels evidencing each of the identified
qualitative characteristics. This can be effected with almost any programming
language capable of handling instructions in the form “If A [e.g., subscriber
clicked a box saying it offers scholarships for minorities], then B [instruction to
computer to write an appropriate code, e.g., “mnsch”, and associate it with this
listing].
’665 Patent col.3 ll.13–33 (emphasis added); see also, ’339 File Wrapper November 9, 2007 Fax
at 4 (“qualitative data” means “data that can be used to differentiate one website from another in
a meaningful way”) (Defendants’ Ex. 2, Dkt. No. 96-3 at 5).)
Finally, the Court expressly rejects Defendants’ invalidity arguments based on 35 U.S.C.
§ 112, ¶ 2. First, the Court rejects Defendants’ argument based on Allen Eng’g Corp. v. Bartell
Indus., 299 F.3d 1336 (Fed. Cir. 2002). In Allen, the Federal Circuit held that certain claims were
invalid because the patent’s description of the invention was contrary to the plain and
unambiguous meaning of the language in the claims. The patent described the invention as
essentially having two features that could not pivot perpendicularly to each other, yet the claims
described two features that could only pivot perpendicularly to each other. Id. at 1349. Unlike the
17
patent in Allen, the Asserted Patents do not include a definition of the invention in the
description that is contrary to the language of the claims with respect to “label” and “digital
label.”
Second, the Court rejects the argument that any claims are indefinite because Defendants
do not understand how a meta-tag is not a “label” or a “digital label” under Plaintiff’s proposed
constructions. The Court declines to consider whether a meta-tag qualifies as a label at this stage
of the case and whether that determination is dispositive of the validity of any claim. The Court
does, however, note that the prosecution history of record does not rise to the level of disclaimer
of meta-tags; rather, meta-tags were characterized as failing to clearly carry meaning about the
website. See ’807 File Wrapper July 25, 2008 Response at 7 (Defendants’ Ex. 10, Dkt. No. 96-12
at 8); ’339 File Wrapper November 9, 2007 Fax at 1 (Defendants’ Ex. 2 , Dkt. No. 96-3 at 2).
The meanings of “label” and “digital label” are not ambiguous. As the Federal Circuit
stated in Phillips:
While we have acknowledged the maxim that claims should be construed to
preserve their validity, we have not applied that principle broadly, and we have
certainly not endorsed a regime in which validity analysis is a regular component
of claim construction. Instead, we have limited the maxim to cases in which the
court concludes, after applying all the available tools of claim construction, that
the claim is still ambiguous.
415 F.3d at 1327 (citations and quotation marks omitted). Here, as in Phillips, the requested
validity analysis is inappropriate.
Accordingly, the Court construes “label” and “digital label” as follows:
“label” means “something symbolic of unambiguous qualitative data about an
item, its maker, or its owner”; and
“digital label” means “something symbolic of unambiguous qualitative data about
an item, its maker, or its owner, in digital form.”
18
B.
“universally-agreed convention” / “agreed convention”
Disputed Term
“universally-agreed
convention”
’339 Patent Claim 1
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Defendants’ Proposed
Construction
Alternative: “Set of rules Indefinite.
governing mutual users in the
creation and encoding of data.”
“agreed convention”
Plain and ordinary meaning.
Alternative: “Set of rules Indefinite.
governing mutual users in the
creation and encoding of data.”
’333 Patent Claim 1
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that “agreed convention” and “universally-agreed convention” are
variations of the same term and carry the same meaning. Plaintiff submits that an “agreed
convention” is a set of rules that governs the production of digital labels. Dkt. No. 94 at 17–18,
25. Plaintiff further submits that “agreed” and “universally agreed” mean that all digital labels
are produced using the same common set of rules. Id. at 18–19, 25–26.
In addition to the claims, Plaintiff cites the following intrinsic and extrinsic evidence to
support his position. Intrinsic evidence: ’665 Patent col.2:28–33, col.5 ll.63–65, col.14 ll.47–53;
’339 Patent File Wrapper November 9, 2007 Fax (excerpt) (Plaintiff’s Ex. M, Dkt. No. 94-14);
’325 Patent File Wrapper October 25, 2011 Amendment (excerpt) (Plaintiff’s Ex. Q, Dkt. No.
94-18). Extrinsic evidence: Garlick Decl. (Plaintiff’s Ex. F, Dkt. No. 94-7).
Defendants respond that “agreed convention” and “universally-agreed convention” must
mean something different than simply “convention” since all words in a claim should be given
19
effect. Dkt. No. 96 at 29. And Defendants further respond that the Asserted Patents provide no
guidance as to how a convention becomes an “agreed convention” or a “universally-agreed
convention.” Therefore, the meaning of these terms and how they differ from each other is
uncertain, which renders the claims indefinite. Id. at 30–31. In addition to the claims, Defendants
cite the following intrinsic evidence to support their position: ’339 Patent File Wrapper
November 9, 2007 Fax (Defendants’ Ex. 2, Dkt. No. 96-3).
Plaintiff replies that in order for a convention to be a convention, it must be agreed upon
and used in the same manner by participants to the convention. Dkt. No. 98 at 10. He further
replies that from the perspective of one of skill in the art in the pertinent field, the terms refer to
rules governing mutual users in the creation and encoding of data. The users must agree to and
abide by the convention to use the digital label methodology. Id.
Analysis
The parties agree on the meaning of convention but dispute whether “agreed” and
“universally-agreed” add anything to the meaning of “convention.” The parties further dispute
whether it is reasonably certain to one of skill in the art what those phrases add. The claim terms
at issue are used in the context of the convention by which the data about the labeled website is
“created and encoded.” ’339 Patent Claim 1 (“creating and encoding data about the searchable
content of a website . . . according to a universally-agreed convention”); ’333 Patent Claim 1
(“creating and encoding data on the searchable content of a website . . . according to an agreed
convention”). The Court is not persuaded that these claim terms are indefinite.
At the onset, the Court rejects Defendants’ contention that the terms “convention,”
“agreed convention,” and “universally-agreed convention” must have different meanings. See,
e.g., Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380–81 (Fed. Cir. 2006)
20
(“claim drafters can also use different terms to define the exact same subject matter”); Pickholtz
v. Rainbow Techs., Inc., 284 F.3d 1365, 1373 (Fed. Cir. 2002) (construing “computer” and
“computer system” to mean the same thing because “the patent in this case provides no
indication that the two terms mean different things”).
The descriptions in the Asserted Patents do not mention an “agreed convention” or a
“universally-agreed convention.” The only mention of these terms in the prosecution history of
record states that the data about a website reflected in the labels would be “encoded according to
an agreed convention” or “encode[d] according to a convention to structure the organization of
data.” See ’339 Patent File Wrapper November 9, 2008 Fax at 1 (“encoded according to an
agreed convention”) (Defendants’ Ex. 2, Dkt. No. 96-3 at 2); ’325 File Wrapper October 25,
2011 Amendment at 6 (“encoding according to a universally established convention”) (Plaintiff’s
Ex. Q, Dkt. No. 94-18 at 2).
Plaintiff’s expert opines that from the perspective of one of ordinary skill in the art, a
convention is an “accepted set of rules.” The “agreed convention” is merely “an adopted set of
rules governing the creation and encoding of data,” and the use of “universally-agreed
convention” means that “all labels and data are created and encoded using the same common set
of rules.” Garlick Decl. ¶¶ 51–54, 69–71.
While the Asserted Patents do not expressly mention “agreed convention” or
“universally-agreed convention,” they do provide guidance on “agreement” in the context of
using and creating digital labels. This guidance supports Plaintiff’s contention that a convention
is agreed to by those who use it.
For instance, the patents explain that “[b]y establishing an agreed context for interaction
between publishers and users, Host Websites greatly facilitate the [search] process.” ’665 Patent
21
col.12 l.56 – col.13 l.49. The Patents describe the Host Website as a “system . . . in which
subscribers label their own products and services and in which similarly labelled objects and
services are stored in common locations with hierarchical multi-parameter labels.” Id. at col.2
ll.51–54. The patents further note that,
In accordance with one feature of the present invention, a specialized DigitalLabel Website (Host Website) is established, with the principal purpose of
creating and domiciling multi-parameter digital labels. Alternatively, several Host
Websites could be established, one for each specified subject. Owners of websites
(subscribers) would be free to select which of these, or how many of these, to be
digitally labelled on. The advantage of this approach is that in each distinct such
Host Website there could be a common context for publishers and users, and each
subject's idiosyncrasies could be taken into account. This would simplify both the
process of creating labels and of searching.
Id. at col.5 ll.19–30. Thus, agreement to the common context is through use of the Host Website
by the users and publishers.
The Asserted Patents contemplate agreement through use. Therefore a convention
becomes “agreed” or “universally-agreed” when the participants adhere to its rules during use.
This comports with Dr. Garlick’s unrebutted opinion that to one of skill in the art, data is created
or encoded according to an “agreed convention” or a “universally agreed convention” when it is
created or encoded using the same common set of rules.
Defendants have not established by clear and convincing evidence that either
“universally-agreed convention” or “agreed convention” render the claims indefinite.
Accordingly, the Court rejects Defendants’ indefiniteness argument and determines that the
terms have their plain and ordinary meaning without need for further construction.
22
C.
“wherein each digital label uniquely refers to and represents a particular
item of qualitative information” / “wherein each digital label represents and
comprises a unique reference to a specific item of qualitative information”
Disputed Term
Plaintiff’s Proposed
Construction
“wherein each digital label
uniquely refers to and
represents a particular item Plain and ordinary meaning.
of qualitative information”
Indefinite.
’665 Patent Claim 1
“wherein each digital label
represents and comprises a
unique reference to a
specific item of qualitative Plain and ordinary meaning.
information”
Defendants’ Proposed
Construction
Indefinite.
’665 Patent Claim 55
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that the “unique” language indicates that a particular label refers to only
a single parameter of the claims’ “multi-parameter qualitative data.” Dkt. No. 94 at 33. In
addition to the claims, Plaintiff cites the following extrinsic evidence to support his position:
Garlick Decl. (Plaintiff’s Ex. F, Dkt. No. 94-7).
Defendants respond that for the claims which require multi-parameter digital labels, the
multi-parameter digital labels necessarily represent more than a single item of qualitative
information. Therefore, according to Defendants, the claims are indefinite because they require
the digital label to simultaneously represent more than a single item of information and only a
single item of “unique” information. Dkt. No. 96 at 32. In addition to the claims, Defendants cite
23
the following intrinsic evidence to support their position: ’665 Patent fig.2; ’339 Patent File
Wrapper November 9, 2007 Fax (Defendants’ Ex. 2, Dkt. No. 96-3).
Plaintiff replies that a “multi-parameter digital label” is a plurality of labels with each
label representing a single item of data. A “multi-parameter digital label” is not a unitary digital
label that represents multiple items. Dkt. No. 98 at 10–11. Plaintiff cites further intrinsic
evidence to support his position: ’665 Patent col.4 l.55 – col.5 l.2, col.12 ll.35–49.
Analysis
The Asserted Patents define a “multi-parameter digital label” as a plurality of
independent labels: “[g]enerally, the labels are multi-parameter digital labels. That is, a
plurality of labels, each one conveying unambiguous qualitative data about an item, its maker,
or its owner, in digital form.” ’665 Patent col.4 ll.57–60 (emphasis added). Thus, the “multiparameter digital labels” of the claims refers to the “plurality of digital labels for each said
website or internet posting” or “plurality of digital labels for each element of the content” recited
in the claims. There is nothing inconsistent about a multi-parameter digital label comprising a
plurality of individual digital labels, each of which uniquely refers to a specific item of
information.
Defendants have not proven by clear and convincing evidence that the “uniquely refers
to” or “unique reference to” language renders the claims indefinite. Accordingly, the Court
rejects Defendants’ indefiniteness argument and determines that the terms have their plain and
ordinary meaning without need for further construction.
24
D.
“search . . . for subscriber digital labels” / “search . . . based on the labels”
Disputed Term
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“searches based on the “Dynamically filter digital
labels [. . . for stored labels
according
to
websites]”
configurations in accordance Plain and ordinary meaning.
with the unique desires of the
’339 Patent Claim 1
person directing the search”
“search said subscriber
database for subscriber
digital labels [identifying
subscriber qualities]”
’807 Patent Claim 1
“searches
[and
record
retrievals] based on the
labels [. . . for said websites
or records]”
’333 Patent Claim 1
“Dynamically filter digital
labels
according
to
configurations in accordance Plain and ordinary meaning.
with the unique desires of the
person directing the search”
“Dynamically filter digital
labels
according
to
configurations in accordance Plain and ordinary meaning.
with the unique desires of the
person directing the search”
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that “search . . . based on the labels” expresses the same concept as
“search . . . for subscriber digital labels.” Plaintiff further submits his proposed construction
captures the concept that the claimed search is not simply a word search or categorical listing.
Dkt. No. 94 at 11, 15–16. Plaintiff argues that the Asserted Patents describe the claimed search
as a user-defined multi-parameter search utilizing the digital labels to locate content based on the
qualitative characteristics of the content. Id. at 12–13. And Plaintiff argues that the claimed
search was explained during prosecution as one that manipulates the digital labels to locate
content having the requested characteristics represented by the digital labels. Id. at 13–14. He
25
further argues that the Asserted Patents describe embodiments in which an artificial intelligence
is used to improve the search and requires that the digital labels be manipulatable. Id. at 14.
In addition to the claims, Plaintiff cites the following intrinsic and extrinsic evidence to
support his position. Intrinsic evidence: ’665 Patent col.2 ll.4–8, 34–42, col.3 ll.34–57, col.3
l.62 – col.5 l.15, col.5 ll.34–36, col.7 l.28 – col.10 l.3, col.13 l.65 – col.14 l.19, col.15 ll.6–9,
col.22 l.60 to col.23 l.3; ’339 Patent File Wrapper April 26, 2004 Amendment (excerpt)
(Plaintiff’s Ex. H, Dkt. No. 94-9), November 9, 2007 Fax (excerpt) (Plaintiff’s Ex. M, Dkt. No.
94-14), January 6, 2009 Appeal Brief (excerpt) (Plaintiff’s Ex. P, Dkt. No. 94-17); ’807 Patent
File Wrapper July 30, 2007 Amendment (excerpt) (Plaintiff’s Ex. I, Dkt. No. 94-10), November
23, 2008 Appeal Brief (excerpt) (Plaintiff’s Ex. K, Dkt. No. 94-12). Extrinsic evidence: Garlick
Decl. (Plaintiff’s Ex. F, Dkt. No. 94-7); Douglas A. Downing et al., Dictionary of Computer and
Internet Terms (7th ed. 2000) (Plaintiff’s Ex. N, Dkt. No. 94-15); Bryan Pfaffenberger,
Webster’s New World Dictionary of Computer Terms (8th ed. 2000) (Plaintiff’s Ex. O, Dkt. No.
94-16).
Defendants respond that “search,” as used in the Asserted Patents, is an ordinary and
familiar English word. Defendants also respond that the claimed “searches” are “based on” or
“for” the labels, as expressed apart from the term “search.” Dkt. No. 96 at 20. Defendants argue
that “search” is not specially defined in the intrinsic record but is instead used according to its
ordinary meaning to describe both the prior art and the claimed invention. Id. at 21. According to
Defendants, the Asserted Patents do not distinguish the claimed search from the prior art on how
the search is performed, but on what is searched, i.e., the digital labels. Id. at 21–22. And
Defendants further argue that the artificial-intelligence searches described in the Asserted Patents
are not the subject of the claims which are directed to the searches “for” or “based on” the labels.
26
Id. at 23. Finally, Defendants argue that Plaintiff’s proposed construction would render the
claims indefinite because (1) it is unclear what makes a desire “unique” and (2) whether a
configuration is “in accordance” with a desire is a subjective determination without any objective
standard by which to make the determination. Id. at 24.
In addition to the claims, Defendants cite the following intrinsic and extrinsic evidence to
support their position. Intrinsic evidence: ’665 Patent col.3 ll.37–41, col.5 ll.16–17, col.7 ll.57–
58, col.7 l.62 – col.8 l.25, col.8 ll.26–32, col.13 ll.35–37. Extrinsic evidence: Merriam-Webster
Dictionary, “Search”, available at http://www.merriam-webster.com/ dictionary/search.
Plaintiff replies that the Asserted Patents define the claimed “search” by explaining how
searches are performed in the digital-label database. Dkt. No. 98 at 6–7. Plaintiff further replies
that the claims are not indefinite under his proposed construction because the phrase “in
accordance with the unique desires of the person directing the search” simply means that the
search is customized by the user selecting which labels to include in the search. Plaintiff cites
further intrinsic evidence to support his position: ’665 Patent col.6 ll.6–9.
Analysis
The parties dispute whether the Asserted Patents define “search” or use its plain and
ordinary meaning. The Court is not persuaded that the Asserted Patents redefine “search” as
Plaintiff proposes or that his proposed constructions clarify the scope of the claim. Rather, these
“search” terms have a readily accessible plain and ordinary meaning: a search “based on” or
“for” a label is simply a search for relevant information sources that utilizes labels rather than
other information like content. As explained above in the discussion on “labels”/“digital labels,”
the labels act like a library index card which allows a user to search for and locate relevant
information sources without directly searching the sources.
27
The Asserted Patents use the term “search” generically to refer to both the label-based
search and the prior-art search approaches. See, e.g., ’665 Patent col.1 ll.13–17 (“The present
invention relates to data-gathering and digital labelling methods for websites, and the structure
and operating processes of a specialized Host Website whose function is to maintain a library of
website digital labels and to use these labels to assist in Internet searches.”), col.3 ll.42–44
(“Searches within a Host Website, with a defined scope, can therefore be more precise and direct
than is possible under any currently-used search method on the Internet.”), col.4 ll.16–19 (“All
existing search technologies on the Internet are based on word-matches or ‘keywords’, which are
mere character-strings of unknown significance.”). Thus, while the Plaintiff disparaged the priorart search, the term “search” is used in the patent according to its broad plain and ordinary
meaning to refer to multiple different search approaches. The use of “search” in the patents does
not justify Plaintiff’s proposed constructions. See Thorner v. Sony Computer Entm’t Am., LLC,
669 F.3d 1362, 1367 (Fed. Cir. 2012) (“The patentee is free to choose a broad term and expect to
obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the
term or disavows its full scope.”).
And while a label-based search may proceed as Plaintiff proposes, it is not clear that any
label-based search necessarily proceeds in such a fashion. For example, with respect to the
exemplary digital-label based search for a particular class of university, the patents provide:
The Host Website computer poses questions automatically, takes account of
previous answers, and avoids asking inapplicable questions. When the datagathering sequence is concluded (a process of about 10 minutes), it converts the
answers into a plurality of digital labels evidencing each of the identified
qualitative characteristics. This can be effected with almost any programming
language capable of handling instructions in the form “If A [e.g., subscriber
clicked a box saying it offers scholarships for minorities], then B [instruction to
computer to write an appropriate code, e.g., “mnsch”, and associate it with this
listing].
28
At any later time, any subscriber could be searched for through the Host Website
on the basis of any configuration of digital labels, e.g., state-sponsored
universities in California which offer minority-eligible scholarships. To perform
this search, a Host Website computer would scan its database for listings which
have the “mnsch” label as well as the particular labels for the other
characteristics of being a school, more precisely a university, state-sponsored,
in California.
Id. at col.3 ll.22–41 (emphasis added). It is not clear that a “scan” to identify relevant labels is
limited to, or even encompassed by, Plaintiff’s proposal. The described “scan” search suggests
that the search locates a subscriber (or its website) by finding those subscribers (or websites)
having the appropriate labels without searching the subscriber content. The search uses the labels
as an “index card” to the subscriber content to identify content or subscribers that have the
particular qualitative characteristics represented by the labels. See id. at col.2 ll.51–67, col.3
ll.13–41. This is what the Court understands to be the plain and ordinary meaning of “search . . .
for subscriber digital labels” and “search . . . based on the labels.”
Further, the search embodiment described with reference to Figures 6a and 6b does not
appear to be coextensive with Plaintiff’s proposed construction. Aspects of that embodiment may
actually be excluded from the claims under Plaintiff’s proposal. For example, it appears that
Plaintiff’s proposed construction would not be satisfied if the “Wordlinks” searches described in
the ’665 Patent at column 13 lines 4 through 22 failed to produce a result and therefore no
“filtering” of the digital labels was possible. Yet the described search clearly contemplates that
the Worldlink search for, or based on, the labels may proceed yet fail to produce a result that
would allow filtering. In that case, the exemplary embodiment would resort to the prior-art
content search. ’665 Patent col.13 ll.35–40. “A construction that excludes a preferred
embodiment is rarely, if ever, correct.” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 865
(Fed. Cir. 2004).
29
Accordingly, the Court rejects Plaintiff’s proposed construction as improperly limiting
and determines that the terms have their plain and ordinary meaning without need for further
construction.
E.
“effective use of . . . digital labels”
Disputed Term
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“effective use of these Plain and ordinary meaning.
multi-parameter
digital
Alternative: “the digital labels
labels”
and the means for their
is
used
’665 Patent Claims 1, 55 manipulation
Indefinite.
effectively.”
Defendants identified only the
sub-part “effective use” as the
phrase in need of construction.
The Parties’ Positions
Plaintiff submits that words of the term are readily understood and are used according to
their plain and ordinary meaning. Dkt. No. 94 at 16–17. In addition to the claims, Plaintiff cites
the following intrinsic and extrinsic evidence to support his position. Intrinsic evidence: ’665
Patent col.2 ll.5–7, 30–39, col.3 ll.42–48. Extrinsic evidence: Garlick Decl. (Plaintiff’s Ex. F,
Dkt. No. 94-7).
Defendants respond that the claims are indefinite because (1) whether a use is “effective”
is subjective and (2) the Asserted Patents provide no guidance on whether effectiveness is
determined from the perspective of the website owner or of the searcher. Dkt. No. 96 at 26–28.
In addition to the claims, Defendants cite the following intrinsic evidence to support their
position: ’665 Patent col.1 ll.49–50, 61–62, col.2 ll.34–41; ’339 Patent File Wrapper November
9, 2007 Fax (Defendants’ Ex. 2, Dkt. No. 96-3).
30
Plaintiff replies that the claims themselves provide the criterion for whether a use of the
digital labels is “effective,” namely that the results returned from the search match the
parameters stipulated by the searching entity. Dkt. No. 98 at 9.
Analysis
The Court is not persuaded that one of skill in the art would fail to understand with
reasonable certainty whether a use of multi-parameter digital labels is “effective.” The term
“effective” is used in the Asserted Patents according to its ordinary and customary meaning to
denote that something objectively achieves a particular effect, and not as a subjective term as
Defendants posit. See, e.g., ’665 Patent col.10 ll.50–54 (“an effective system for discriminating
among websites” based on a publisher’s labeling), col.13 ll.50–52 (describing prior-art Internet
portals posing “effective, if unintended, barrier to entry”). And the Court agrees with Plaintiff
that based on the entirety of the claim language, the effect achieved by use of the labels is a
match between parameters stipulated in the search and the parameters represented by the labels.
See ’665 Patent Claims 1 and 55.
Defendants have not established by clear and convincing evidence that “effective use
of . . . digital labels” renders the claims indefinite. Accordingly, the Court rejects Defendants’
indefiniteness argument and determines that the term has its plain and ordinary meaning
without need for further construction.
F.
“search engine” / “internet search engine”
Disputed Term
Plaintiff’s Proposed
Construction
“search engine”
“Software for facilitating the
identification and retrieval of
Plain and ordinary meaning.
web content based upon digital
labels.”
’339 Patent Claim 1
’333 Patent Claim 1
’325 Patent Claim 7
31
Defendants’ Proposed
Construction
Disputed Term
“internet search engine”
’325 Patent Claim 7
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“Software for facilitating the
identification and retrieval of
Plain and ordinary meaning.
web content based upon digital
labels via the Internet.”
Because the parties’ arguments and proposed constructions with respect to these terms
are related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits that the Asserted Patents: (1) distinguished the claimed search engine
from the prior-art word-match/category-list search engines; (2) disparaged the prior-art searchengine approach; (3) defined the claimed search engine as “specially tailored to retrieve content
based upon the digital labels;” and (4) established through the prosecution history that the
claimed search engine is different from the prior-art search engine in that it is “specially
configured to retrieve web content based upon the digital labels.” Dkt. No. 94 at 22–23, 27–28.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support his position. Intrinsic evidence: ’665 Patent col.1 ll.53–57, col.2 ll.12–32,
col.3 ll.42–57, col.5 ll.4–15, col.6 ll.6–21, col.7 ll.28–29, 48–54, col.9 l.62 – col.10 l.3, col.13
ll.58–62, col.13 l.66 – col.14 l.8; ’339 Patent File Wrapper November 9, 2007 Fax (excerpt)
(Plaintiff’s Ex. M, Dkt. No. 94-14). Extrinsic evidence: Garlick Decl. (Plaintiff’s Ex. F, Dkt.
No. 94-7); Douglas A. Downing et al., Dictionary of Computer and Internet Terms (7th ed.
2000) (Plaintiff’s Ex. N, Dkt. No. 94-15); Bryan Pfaffenberger, Webster’s New World Dictionary
of Computer Terms (8th ed. 2000) (Plaintiff’s Ex. O, Dkt. No. 94-16).
Defendants respond that “search engine” does not need to be construed, and that
Plaintiff’s proposed construction improperly introduces a “digital label” limitation into “search
engine.” Dkt. No. 96 at 25. Defendants argue that because the “digital label” limitation of
32
Plaintiff’s proposed construction is separately recited in many of the claims, the claimed “search
engine” does not inherently include such limitation. Id. at 25–26.
Plaintiff replies that the plain meaning of “search engine,” at the time of the invention,
would encompass the prior-art word-search-based engines but not the claimed digital-labelsearched-based engine. Therefore, according to Plaintiff, it would be improper to construe
“search engine” according to its plain and ordinary meaning. Dkt. No. 98 at 8.
Analysis
The Court is neither persuaded that a “search engine” inherently requires a search based
on digital labels, nor persuaded that the plain and ordinary meaning of “search engine” is limited
to the word-search or category-tree search engines of the prior art. Rather, the term “search
engine” has a broad plain and ordinary meaning that encompasses systems based on various
search-methodologies.
The Asserted Patents use the term “search engine” to refer to the prior art systems which
are expressly described as not based on digital labels. See, e.g., ’665 Patent col.1 ll.53–61
(describing a word-match search engine), col.4 ll.4–6 (noting the limits of a conventional search
engine), col.5 ll.4–7 (noting the advantages of label-based systems over “search engines or
systems that merely list sites under various categories”). Thus, the use of “search engine” in the
patents does not justify, or allow, Plaintiff’s proposed construction. See Thorner v. Sony
Computer Entm't Am., LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) (“The patentee is free to
choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless
the patentee explicitly redefines the term or disavows its full scope.”).
But the plain and ordinary meaning of “search engine” is not limited to a system relying
on a word-based or category-based search. See, e.g., Douglas A. Downing et al., Dictionary of
33
Computer and Internet Terms at 431 (7th ed. 2000) (“search engine” is “a computer program that
searches through large amounts of text or other data” (emphasis added))(Plaintiff’s Ex. N, Dkt.
No. 94-15 at 5); Bryan Pfaffenberger, Webster’s New World Dictionary of Computer Terms at
478 (8th ed. 2000) (“search engine” is “any program that locates needed information in a
database”) (Plaintiff’s Ex. O, Dkt. No. 94-16). The extrinsic evidence suggests that a “search
engine” is any program that searches for information, regardless of the form of the information—
it is not limited to word-based or category-based search methods.
Accordingly, the Court construes “search engine” and “internet search engine” as
follows:
“search engine” means “a computer program that searches through text or other
data”; and
“internet search engine” means “a computer program that searches through text or
other data on or through the Internet.”
34
G.
“internet search engine or internet browser program or service”
Disputed Term
Plaintiff’s Proposed
Defendants’ Proposed
Construction
Construction
“internet search engine or The term “Internet search
internet browser program or engine” means: “Software for
service”
facilitating the identification
and retrieval of web content
’325 Patent Claim 7
based upon digital labels via
the Internet.”
The term “Internet browser
program” means: “Software
that enables a user to navigate
Indefinite.
the Internet based upon digital
labels.”
The term “Internet browser
service” means: “Software that
performs
ancillary
or
background routines to a
browser program (e.g., a plugin or web agent) based upon
digital labels.”
The Parties’ Positions
Plaintiff resubmits it positions and arguments for “internet search engine” and submits
that (1) “internet browser program or service” means “internet browser program or internet
browser service,” and (2) “internet browser program” and “internet browser service” should be
construed according to their ordinary technical meanings as tailored to the digital-label
environment as described and claimed in the Asserted Patents. Dkt. No. 94 at 32–33.
In addition to the claims, Plaintiff cites the following intrinsic and extrinsic evidence to
support his position. Intrinsic evidence: ’325 Patent col.10 ll.35–42; ’339 Patent File Wrapper
November 9, 2007 Fax (excerpt) (Plaintiff’s Ex. M, Dkt. No. 94-14). Extrinsic evidence:
Garlick Decl. (Plaintiff’s Ex. F, Dkt. No. 94-7); Douglas A. Downing et al., Dictionary of
Computer and Internet Terms (7th ed. 2000) (Plaintiff’s Ex. N, Dkt. No. 94-15); Bryan
35
Pfaffenberger, Webster’s New World Dictionary of Computer Terms (8th ed. 2000) (Plaintiff’s
Ex. O, Dkt. No. 94-16).
Defendants respond that when “or” is used in a patent-claim list each member of the list
is exclusive of the other members. Defendants assert that when a claim describes an invention
using the phrases “internet search engine,” “internet browser program,” and “internet browser
service” linked by “or,” the invention does not encompass a convention that is promulgated by
both a “search engine” and a “browser program.” According to Defendants, the claim is
indefinite because Plaintiff did not invent such a system. Dkt. No. 96 at 34.
Analysis
The parties dispute whether “or” in the claim term necessarily means that the items in the
list are mutually exclusive. In this case, an exclusive “or” may render the claims indefinite. The
Court determines that Defendants have not proven the claims indefinite by clear and convincing
evidence.
The Court is not convinced that “or” in the term necessarily means that “internet search
engine,” “internet browser program,” and “internet browser service” are mutually exclusive
alternatives. It is not clear that the cases that Defendants cite dictate this result. In Kustom
Signals, Inc. v. Applied Concepts, Inc., the Federal Circuit construed “or” in a process list to
denote a mutually exclusive list based on the presence of the words “either” and “or.” 264 F.3d
1326, 1329 (Fed. Cir. 2001). In Schumer v. Laboratory Computer Systems, Inc., the issue before
the court was whether each item in a process list joined by “or” must be present—i.e., whether
“or” meant “and.” 308 F.3d 1304, 1311 (Fed. Cir. 2002). Schumer did not hold that “or” denoted
a mutually exclusive list, but rather that infringement occurs if “any one of the [process list] is
performed.” Id. at 1312.
36
Courts have noted that “or” may be used to denote an inclusive list—it is not restricted,
as Defendants posit, to denoting an exclusive list. See, e.g., Allstate Ins. Co. v. Plambeck, 66 F.
Supp. 3d 782, 788 (N.D. Tex. 2014) (“The ordinary meaning of ‘or,’ as used disjunctively, is not
to indicate an exclusive alternative—that is, one or the other but not both. At least, that is not the
only ordinary usage of the word ‘or.’ Rather, the word ‘or’ can be used in both an ‘inclusive’
sense (‘A or B [or both]’) and an ‘exclusive’ sense (‘A or B [but not both]’).” (quoting Shaw v.
Nat’l Union Fire Ins. Co. of Pittsburgh, Pa., 605 F.3d 1250, 1254 n.8 (11th Cir. 2010))); B50.com, LLC v. InfoSync Servs., LLC, No. 3:10-cv-1994, 2014 U.S. Dist. LEXIS 9403, at *20–
*22 (N.D. Tex. Jan. 27, 2014) (“Authorities agree that or has an inclusive sense as well as an
exclusive sense. . . . Although ‘or’ is used in both senses in common usage, the meaning of or is
usually inclusive.” (quoting Bryan A. Garner, Garner’s Dictionary of Legal Usage 639 (3d ed.
2011) (emphasis in original, quotation and modification marks omitted)); DietGoal Innovations
LLC v. Chipotle Mexican Grill, Inc., 2:12-cv-764, 2015 U.S. Dist. LEXIS 3629, at *10 (E.D.
Tex. Jan. 13, 2015) (Bryson, J.) (“It is well recognized that the word ‘or’ can be used in either an
inclusive or an exclusive sense, depending on context.”). Indeed the Federal Circuit has held that,
depending on the context, the word “or” can be either conjunctive or disjunctive. See, e.g.,
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 680 (Fed. Cir. 2015) (“The
conjunctive interpretation is also consistent with proper grammar, where the phrase ‘not A, B, or
C’ means ‘not A, not B, and not C.’”). Lower courts have also construed “or” in a list of items in
a patent claim to be inclusive. See, e.g., B-50.com, LLC, 2014 U.S. Dist. LEXIS 9403, at *21–
*23 (construing “enables the restaurant-industry user to view or obtain the generated custom
report using the Internet” to encompass, but not require, both viewing and obtaining
(modification marks omitted)).
37
The claim at issue here, Claim 7 of the ’325 Patent, recites a step of “encoding personal
preference digital labels” and a step of “conforming the encoding to a convention promulgated
by an internet search engine or internet browser program or service.” ’325 Patent col.24 ll.26–33.
The Asserted Patents separately describe personal preference digital labels as being stored in
various ways, for example, in computer files, browser files, and in the website. Id. at col.9 l.66 –
col.10 l.48. The Asserted Patents contemplate controlling access to websites based on the digital
labels through a variety of mechanisms such as specially designed browsers and filters. Id.
Nothing in the claim or specification and drawings indicates that the personal preference digital
labels must conform solely to a single convention in order to effectively discriminate based on
the labels. As such, the Court does not read in such a limitation.
Further, even if the “or” denoted an exclusive list, the Court rejects Defendants’
argument based on Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002). In Allen,
the Federal Circuit held that certain claims were invalid because the patent’s description of the
invention was contrary to the plain and unambiguous language of the claims. The patent
described the invention as essentially having two features that could not pivot perpendicularly to
each other, yet the claims described two features that could only pivot perpendicularly to each
other. Id. at 1349. Unlike the patent in Allen, the Asserted Patents do not include a definition of
the invention in the description that is contrary to an interpretation of “or” as exclusive with
respect to whether the encoding convention of the claim is promulgated by only one of an
“internet search engine,” “internet browser program,” or an “internet browser service.”
Defendants have not established by clear and convincing evidence that “internet search
engine or internet browser program or service” renders the claims indefinite. Accordingly, the
38
Court rejects Defendants’ indefiniteness argument and determines that the term has its inclusive
plain and ordinary meaning.
H.
“stored websites”
Disputed Term
“stored websites”
’339 Patent Claim 1
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Defendants’ Proposed
Construction
Alternative: “a website stored
within a computer system
accessible to the search
Indefinite.
engine.”
A “website” is: “a file or
related group of files available
on the Internet.”
The Parties’ Positions
Plaintiff submits that the plain meaning of “stored websites,” when read in the context of
the claims, means that the websites are stored on a computer system, and that computer system is
accessible to the search engine. Dkt. No. 94 at 24–25. In addition to the claims themselves,
Plaintiff cites the following extrinsic evidence to support his position: Garlick Decl. (Plaintiff’s
Ex. F, Dkt. No. 94-7); Douglas A. Downing et al., Dictionary of Computer and Internet Terms
(7th ed. 2000) (Plaintiff’s Ex. N, Dkt. No. 94-15). Defendants respond that there is no antecedent
basis for “stored websites,” therefore, the claims are indefinite. Dkt. No. 96 at 33.
Analysis
The dispute here is whether “stored websites” in the last clause of Claim 1 of the ’339
Patent (reproduced below and annotated by the Court) requires an antecedent basis for the claims
to be definite. The Court is not persuaded that Defendants have proven by clear and convincing
evidence that any claim is indefinite because of the “stored websites” term.
39
Defendants’ indefiniteness argument fails for lack of a valid premise. Their argument is
entirely premised on the contention that “stored website” is not understandable because the term
lacks an antecedent basis. This contention is false on its
’339 Patent
face. Claim elements and steps are always introduced
for the first time in the claim without an antecedent
basis in the claim. The claim language at issue, “stored
websites,” is not preceded by a definite article such as
“the” or “said.” As such, the indication is that “stored
websites” was introduced for the first time in the final
clause of the claim. And the indefinite articles that are typically used to introduce a new element,
“a” or “an,” are not appropriate as “stored websites” is plural. As such, there is no lack of
antecedent basis because there is no antecedent reference.
There can be no real dispute over whether a website is “stored.” The claims do not
require that websites be stored in any particular fashion or in any particular memory—only that
they be stored. Because the claim is entirely silent on the issue, the Court rejects Defendants’
contention that the search engine of the claim does not store websites. Whether the search engine
does or does not store websites is irrelevant so long as the websites are stored. The Court also
rejects Plaintiff’s position that the websites must be stored on a computer system accessible to
the search engine, again because the claim is silent on that issue. In the context of the claim
language, it is clear that the claimed method provides public access to a mechanism to search for
stored websites based on the labels. So the stored websites are identified by or through the labels.
But it is not clear to the Court that the stored websites must be accessible to the search engine.
The websites need only be identifiable by “searches based on the labels.”
40
Defendants have not proven by clear and convincing evidence that the “stored websites”
language renders the claims indefinite. Accordingly, the Court rejects Defendants’ indefiniteness
argument and determines that the term has its plain and ordinary meaning without need for
further construction.
I.
“Host Website’s computer”
Disputed Term
“Host Website’s computer”
’333 Patent Claim 1
Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Defendants’ Proposed
Construction
Alternative: “a computer Indefinite.
system on which a Host
Website platform is running.”
The Parties’ Positions
Plaintiff submits that the term “Host Website” refers to “a website for creating and
storing digital labels” as expressly defined in the Asserted Patents and “Host Website’s
computer” carries its plain and ordinary meaning. Dkt. No. 94 at 30–31. In addition to the claims
themselves, Plaintiff cites the following intrinsic and extrinsic evidence to support his position.
Intrinsic evidence: ’665 Patent col.3 ll.1–7, col.5 ll.19–22, 58–60, col.10 l.55 – col.11 l.12,
col.15 ll.6–9, 36–47, col.16 ll.6–14, col.17 ll.42–47; ’339 Filer Wrapper October 25, 2004
Amendment (excerpt) (Plaintiff’s Ex. S, Dkt. No. 94-20). Extrinsic evidence: Garlick Decl.
(Plaintiff’s Ex. F, Dkt. No. 94-7).
Defendants respond that “Host Website’s computer” appears to be an erroneous addition
to the claim and has no antecedent basis, and therefore the claims are indefinite. Dkt. No. 96 at
33–34. Plaintiff replies that the claim includes an obvious clerical error and that “or Host
Website” should be read into the claim immediately following the first recitation of “search
engine.” Dkt. No. 98 at 11.
41
Analysis
The parties appear to agree that there is an error in Claim 1 of the ’333 Patent but they
disagree as to the nature of the error. Defendants argue that “Host Website’s” was erroneously
included in the claim, Dkt. No. 96 at 33–34, whereas Plaintiff argues that “Host Website” was
erroneously omitted from the claim, Dkt. No. 98 at 11. Based on the record, the Court determines
that “Host Website” was erroneously omitted, that the nature of the error is not subject to
reasonable debate, and the Court has authority to correct the error to clarify that “Host Website’s
computer” has an antecedent basis and therefore the claim is not indefinite.
The Court may correct an obvious error in
’333 Patent
claim language in a patent infringement suit when
“(1) the correction is not subject to reasonable debate
based on consideration of the claim language and the
specification and (2) the prosecution history does not
suggest a different interpretation of the claims.” CBT
Flint Partners, LLC v. Return Path, Inc., 654 F.3d
1353, 1358 (Fed. Cir. 2011). In the claims of the ’333
Patent that depend from Claim 1 and reference a
“search engine,” the claims universally reference
“search engine” in conjunction with “Host Website”
(Claims 1 through 3 are reproduced here and annotated by the Court). See ’333 Patent col.23
ll.47–48, 50, 52, 59–60, col.24 ll.14–15, 24–25, col.26 ll.12–13. Thus, it is apparent from the
face of the patent that the first recital of “search engine” erroneously omitted “or Host
42
Website’s” and the Court construes the claims to include “or Host Website’s” inserted into Claim
1 at column 23 line 37 after “search engine’s” and before “own computer.”
Defendants have not proven by clear and convincing evidence that the “Host Website’s
computer” language renders the claims indefinite. Accordingly, the Court rejects Defendants’
indefiniteness argument and determines that the term has its plain and ordinary meaning and
Claim 1 of the ’333 Patent is corrected (in underline) as follows:
1. A method of labelling at least one of Internet websites and records accessible through
the Internet, comprising:
creating and encoding of data on the searchable content of the website or accessible
record according to an agreed convention, so as to produce a plurality of labels for
each website or record, or each of the plurality of websites or records, each label
representing a particular item of said data;
incorporating the created labels in a file resident on the website or record;
copying and storing the labels on a search engine’s or Host Website’s own computer;
providing the right of access to the search engine’s or Host Website’s computer
through the Internet for purposes of editing the records; and
.
V.
facilitating searches and record retrievals based on the labels, by a plurality of
authorized parties each with defined and limited scope or nature of access, for
said websites or records.
CONCLUSION
The Court adopts the above constructions set forth in this opinion for the agreed and
disputed terms of the Asserted Patents. 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.
SIGNED this 3rd day of January, 2012.
SIGNED this 20th day of September, 2015.
43
____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?