SFA Systems LLC v. Amazon.Com, Inc., et al

Filing 401

MEMORANDUM OPINION AND ORDER. The Court interprets the claim language in this case in the manner set forth above. Further, the Court hereby DENIES Defendants Amazon, Inc., et al.'s Motion for Partial Summary Judgment of Indefiniteness 338 . Signed by Judge Leonard Davis on 04/11/13. (mll, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
SFA SYSTEMS, LLC,
Plaintiff,
v.
1-800-Flowers.com, Inc., et al.,
Defendants.

SFA SYSTEMS, LLC,
Plaintiff,
v.
Amazon.com, Inc., et al.,
Defendants.

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CASE NO. 6:09-cv-340-LED
JURY TRIAL DEMANDED

CASE NO. 6:11-cv-052-LED
JURY TRIAL DEMANDED

MEMORANDUM OPINION AND ORDER
This Memorandum Opinion construes U.S. Patent No. 6,067,525 (the “‘525 Patent”) and
U.S. Patent No. 7,941,341 (the “‘341 Patent”). Also before the Court are Defendants’ Motions
for Summary Judgment of Invalidity for Indefiniteness (Case No. 6:11cv52, Docket No. 338 and
Case No. 6:09cv340, Docket No. 433). For the reasons discussed below, the Court DENIES
Defendants’ motions.
BACKGROUND
The ‘525 Patent has a long history before the Court as Plaintiff SFA Systems, LLC
(“SFA”) has filed several separate suits against multiple defendants for infringement of the ‘525
Patent. The Court first construed the ‘525 Patent in a case against Infor Global Solutions, Inc.

and seven other defendants. SFA Systems, LLC v. Infor Global Solutions (Michigan), Inc., et al.,
Case No. 6:07cv067, Docket No. 211 (hereinafter, “Infor opinion”). Since then, SFA has filed
several more cases involving the same patent. See SFA Systems, LLC v. BigMachines, Inc., Case
No. 6:10cv300; SFA Systems v. Rightnow Technologies, Inc., Case No. 6:11cv560; SFA Systems
v. Drugstore.com, Inc., Case No. 6:11cv635. The Court construed the ‘525 Patent a second time
in SFA Systems v. 1-800-Flowers.com, Inc., Case No. 6:09cv340, Docket No. 333 (hereinafter,
“first 1-800-Flowers opinion”).1 Many of the disputed terms have been previously construed by
the Court. As the Court has already repeatedly described the technology at issue in the ‘525
Patent, it will not do so again. See, e.g., Case No. 6:07cv067, Docket No. 211.
In addition to the ‘525 Patent, the ‘341 Patent is before the Court for the first time. The
‘341 Patent is a direct descendent of the ‘525 Patent, and is also directed to a sales-force
automation system that integrates intelligent, automated salesperson support for multiple phases
of the sales process. ‘341 Patent, Abstract. Generally, the claims of the ‘341 Patent are directed
to systems that detect changes in information relating to events in a sales system, automatically
initiate an operation based on the event, determine whether the event has occurred previously
and update other events if the operation is automatically initiated. See id. at 3:55–4:3. Although
the Court has not previously construed the ‘341 Patent, the Court has construed several of the
terms currently in dispute in previous litigation arising from related patents.
APPLICABLE LAW
“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.,

1

The Court adopted the opinion of Magistrate Judge Love with a minor modification regarding the claim phrase
“inferring . . . a context.” Case No. 6:09cv340, Docket No. 406.

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Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
intrinsic evidence to define the patented invention’s scope. See id.; 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). This intrinsic evidence includes
the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
1314; C.R. Bard, Inc., 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; 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 also 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.
(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. 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)); 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

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or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
lexicography governs. Id. Also, the specification may resolve 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, Inc., 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)); see also 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.”).
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
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a 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 is entirely unhelpful to a court. Id. Generally, extrinsic

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evidence is “less reliable than the patent and its prosecution history in determining how to read
claim terms.” Id.
ANALYSIS
“sales process”
This term appears in Claims 1, 2, 3, 13, 20, 21, 24, 25, 40, and 42 of the ‘525 Patent and
Claims 1, 2, 13, 14, 16, 27, 29, 31, 32, and 33 of the ‘341 Patent. Plaintiff proposes “a process of
selling goods or services, including two or more phases such as lead generation, time with
customer, order management, and customer retention,” as construed in the first 1-800-Flowers
opinion. Case No. 6:09cv340, Docket No. 333 at 8. The Defendants in the Amazon.com, Inc.
case (“Amazon Defendants”) propose “a real world process of selling goods or services
including two or more phases such as lead generation, time with customer, order management
and customer retention.” Newegg, Inc. (“Newegg”), the sole defendant in the 1-800-flowers.com,
Inc. case, proposes “a real life process of a salesperson selling goods or services, including two
or more phases such as lead generation, time with customer, order management, and customer
retention.” The parties’ primary dispute is whether the definition of “sales process” should
include Defendants’ proposed real-world process and salesperson elements.
SFA argues the term is presumed to have the same meaning in both the ‘525 and ‘341
Patents because they share a common specification. Case No. 6:11cv52, Docket No. 335 at 8.
Further, SFA contends Defendants’ request to import “real-world process or salesperson” into
the previous construction is unnecessary because the parties have already stipulated that “event
occurring in the sales process” is a real-life action. Id. at 9.
To justify adding “real-world process” to the construction, the Amazon Defendants point
to the Court’s prior determination that an “event occurring in the sales process” is “a real-life

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action or inaction that occurs in the sales process.” Case No. 6:11cv52, Docket No. 339 at 5–6.
These Defendants contend that SFA opposes defining the sales process as a real-world activity in
order to pursue infringement theories against Defendants’ websites that lack a real-world
element. Id.
For its part, Newegg offers several theories to support including “salesperson” and “real
life” as a clarification of the previously construed definition. Case No. 6:09cv340, Docket No.
340 at 5–12. First, Newegg contends that when the term “sales process” appears in the claims, it
expressly relates to a process involving a salesperson. Id. at 5. Second, Newegg argues that the
title of the ‘341 Patent is “Sales Force Automation System and Method” and sales force is
defined as a group of employees whose job it is to sell their company’s products or services. Id.
at 6. Third, Newegg contends that the patent’s prosecution history also supports inclusion of a
salesperson, since the applicants repeatedly argued in amendments that the invention “improves
the efficiency with which a salesperson completes sales transactions.” Id. at 7. Fourth, Newegg
maintains that the kiosk and website implementations in fact are only examples of tools that can
form part of the sales process by collecting information for use by a salesperson. Id. at 8. Finally,
Newegg points to SFA’s arguments in prior litigation related to the ‘525 Patent. Id. at 10. In
response to a motion for summary judgment of invalidity, SFA argued the ‘525 Patent’s purpose
was to help salespersons, thus distinguishing it from prior art that was not directed at helping
salespersons. Id. In the first 1-800-Flowers opinion, the Court concluded that SFA did not argue
that the claims “only cover salesperson interaction,” but Newegg believes that SFA did in fact
distinguish prior art solely based on the presence of a salesperson. Id. at 11. Even if there are
other distinguishable factors, Newegg contends that because SFA expressly relied on the
presence of a salesperson to defeat an invalidity challenge to its patent, those arguments have a

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disclaimer effect such that SFA should be estopped from arguing that a salesperson is not
necessary. Id. at 11–12.
The Court has already construed this term, and “[t]he same terms in the same patent or
related patents are presumed to carry the same meaning.” DataTreasury Corp. v. Magtek, Inc.,
2006 U.S. Dist. LEXIS 100662, at *10–11 (E.D. Tex. Sept. 29, 2006) (citing Omega Eng’g, Inc.
v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)). The Court will not add Defendants’
proposed real-world or real-life requirements to the construction. While discussing the
distinction between “events occurring in the system” and “events occurring in the sales process”
in its prior opinion, the Court previously stated:
The invention is intended to integrate a real-life sales process with events occurring in a
computerized system. See ‘525 patent, Abstract (“A salesforce automation system which
integrates computerized, intelligent automated salesperson support for multiple phases of
the sales process.”). Events occurring within the system are distinct from events occurring
in the sales process because the system is “computerized” and the “sales process” is
real-world activity. Id. at 30:36–41 (“a sales event may be an event in the sales process,
typically occurring between the salesperson and the customer, while an application event
may be an internal operation of the sales system (i.e., the operation of the software and
hardware making up the sales system) which is used to electronically facilitate the sales
event”).
First 1-800-Flowers opinion, at p. 7–8 (emphasis added). Thus, in order to appropriately
distinguish “events . . . in the sales process” from “events . . . in the system,” the Court has
already stated that the sales process is real-world activity. First 1-800-Flowers opinion, at 8. The
Court did not, however, hold that the meaning of “the sales process” unequivocally excludes
computer activity, as Defendants’ proposals suggest. Such a finding is inconsistent with the
teachings of the specification. For example, Figures 21 A through E list exemplary events, most
of which either expressly or implicitly involve both real-world activity and the use of the
computing system. See Figures 21 A and B (“a customer contacts an Internet Web-site to get
product information”; “a customer uses a kiosk to gain information on a product or service and

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request follow-up call from company representative”; “Salesperson configures a product and
service solution for a customer”). Finally, the Amazon Defendants’ complaint—that SFA’s
infringement contentions against e-commerce websites with no real-world element contradict the
previous construction—does not warrant fresh claim construction. Instead, such complaints are
appropriately addressed in motions for summary judgment.
Newegg’s proposed “salesperson” requirement is not appropriate, either. Absent express
claim language, the claims do not require use by a salesperson to the exclusion of other potential
embodiments. First 1-800-Flowers opinion, at 13. The Court has already determined that SFA
did not argue previously that the claims only cover salesperson interaction. Id. at 14. In the prior
litigation, SFA addressed the Filepp art by arguing that “[the system] could possibly be
programmed for many purposes.” Ex. F to Response, Infor Litigation, Pl.’s Resp. Mot. Summ. J.
Inv. at 4. SFA went on to point out that Filepp does not “describe how to program the Prodigy
online subscription service for direct sales from salespersons to end–user customers.” Id.
However, SFA stopped short of stating the asserted claims require a sales person, indicating that
SFA’s statements regarding the salesperson refer to the disclosure and not to the asserted claims.
This conclusion seems obvious considering that SFA’s argument distinguishing Filepp would
have been much stronger had they simply argued that the claims require a salesperson. In sum,
neither the claims themselves nor the intrinsic record support such a limitation. Therefore, SFA
is not estopped from arguing that a salesperson is not a necessary part of the claimed sales
process and there is no reason to import such limitation into the construction.
“Sales process” is construed—consistent with the Court’s previous construction—as “a
process of selling goods or services, including two or more phases such as lead generation, time
with customer, order management, and customer retention.”

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“facilitate/facilitating/facilitate a sales process”
These terms appear in Claims 1 and 40 of the ‘525 Patent and Claim 27 of the ‘341
Patent. SFA contends no construction is necessary. The Amazon Defendants propose “assist”
and “assisting” in place of “facilitate” and “facilitating.”2 Thus, the dispute is whether the
construction should replace the common claim word, “facilitate,” with another common word
and arguable synonym, “assist.”
The Amazon Defendants contend their construction is correct because the Court
previously described the sales process as a “real-life . . . process,” and the specification
repeatedly uses the word “assist” to describe the manner in which the claimed sales system
assists humans through the various states of that process. Case No. 6:11cv52, Docket No. 339 at
8. Therefore, “assist” distinguishes between the computerized process and the real-life process.
Id.
SFA argues that Defendants’ construction is simply a back-door attempt to imply that
salesperson action is a requirement of these claims, and thus improperly imports a limitation
from the specification. Case No. 6:11cv52, Docket No. 335 at 8.
These terms need no construction. First, the meaning of “facilitate” is clear in the context
of the claim and it will be readily understandable to the jury. See O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (recognizing that “district courts are
not (and should not be) required to construe every limitation present in a patent’s asserted
claims”). The parties present no legally sound reason to replace the claim word, “facilitate,” with
the specification word, “assist.” There is no reason to import claim limitations that are not
required by the claim language or the intrinsic record. Second, the Court has already clarified

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For example, “facilitate a sale,” “facilitate a sales process,” and “facilitate a new action.” Case No. 6:11cv52,
Docket No. 339 at 7–10.

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that the sales process is a real-life activity but that it does not exclude computer involvement. See
supra at 8 (citing first 1-800-Flowers opinion, at 8). Thus, there is no need to further belabor the
claim construction to highlight this distinction.
“[facilitate a] new action”
This term appears in Claims 1, 13, 31, 32 of the ‘341 Patent and Claims 1 and 20 of the
‘525 Patent. SFA contends no construction is necessary. The Amazon Defendants contend
“facilitate a new action” should be construed as “to assist with a new action in the sales process,”
As “facilitate” has already been addressed, this dispute boils down to whether “new action”
refers to an event in the sales process.
SFA argues that the term “new action” is used ordinarily in the context of the claims, and
that Defendants’ addition of “in the sales process” improperly imports a term from the
specification to introduce a novel limitation wholly absent from the original term. Case No.
6:11cv52, Docket No. 335 at 10–11.
The Amazon Defendants argue that the term “new action” refers to an event in the reallife sales process because the claims consistently use “facilitate” for this type of real-life event.
Case No. 6:11cv52, Docket No. 339 at 10. The Amazon Defendants further reason that the
patents consistently use “act” or “action” to refer to that real-life sales process. Id. In other
places, the claims describe certain events as occurring within the computer system, whereas this
“new action” lacks such a description. Id. Therefore, the Amazon Defendants reason that this
new action must occur outside the computer system, as part of the real-world sales process. Id.
It is not necessary to include “sales process” in the construction of “new action.” It is
clear from the claims that the new action is part of the sales process. See Phillips, 415 F.3d at
1314 (“[T]he claims themselves provide substantial guidance as to the meaning of particular

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claim terms”). Each of the disputed claims follows the same pattern. It starts with a computer
designed to facilitate sales-process actions. Then, later in the claim, a “new action” appears:
a plurality of subsystems of a computer configured to electronically facilitate one or
more actions performed during at least one phase of the sales process;
...
[an] event manager detecting one or more changes in information regarding an event
occurring within the system and automatically initiating an operation in one or more
particular subsystems of the computer to facilitate a new action based on the event
‘341 Patent, 39:1–10 (emphasis added). See also 40:22, 33; 42:27, 42; 42:54, 65; ‘525 Patent,
Claims 35:65–66, 36:8–9; 37:35–36, 44–45 (same). In each claim at issue, the term “new action”
refers to the earlier “one or more actions . . . [in] the sales process.” Logically, these “new
actions” are just as much a part of the sales process as the predicate actions mentioned earlier in
each claim. “New action” needs no further construction. However, the parties are cautioned to
read this resolution of the dispute consistent with the previous holding that the sales process does
not exclude computer activity, as explained above.
“a computer implemented sales system”/“automated sales system”
This term appears in the preambles of Claims 1, 27, 31, 33 of the ‘341 Patent and Claims
1 and 40 of the ‘525 Patent. The Court addressed this term in its first opinion in the 1-800Flowers case and determined it did not require construction. First 1-800-Flowers opinion, at 11–
13. SFA asserts that no construction is necessary for this term or that, if construed, it should be
given its plain and ordinary meaning. Newegg proposes a “computer system used to guide a
salesperson or guide content to a salesperson automatically during multiple phases of a sales
process.” As with the construction of “sales process,” the dispute revolves around whether this
term should be construed so as to incorporate a salesperson.

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SFA contends that because the term is clear on its face, the construction should not
incorporate a salesperson. Case No. 6:09cv340, Docket No. 425 at 5–6. SFA also argues that the
Court previously rejected the proposal to incorporate a salesperson because the specification
does not describe using the claimed systems and methods to assist a salesperson to the exclusion
of other potential embodiments. Id.
Newegg argues that its proposed construction reflects the proper essence of the invention,
which is designed to help a salesperson make sales. Case No. 6:09cv340, Docket No. 430 at 12–
13. Newegg argues that the inventor used the salesperson to distinguish the invention from prior
art during prosecution and in prior litigation. Id. Therefore, Newegg contends that an appropriate
construction is one that makes clear that the system is intended to assist a salesperson. Id.
While the specification does describe using the claimed systems and methods to assist a
salesperson, it does not do so to the exclusion of other potential embodiments. First 1-800Flowers opinion, at 12–13. Further, the Court will not import a salesman limitation where a
salesperson is not literally required by the claims. “[A] computer implemented sales
system”/“automated sales system” does not require construction.
“event manager”
This term appears in Claims 1, 27, 28, 29, 30, 31, and 33 of the ‘341 Patent and Claims 1,
40, 41, 42, and 43 of the ‘525 Patent. The Court has twice previously reviewed this term as it
appears in the ‘525 Patent, first in the Infor opinion and again in the first 1-800-Flowers opinion.
Case No. 6:07cv067, Docket No. 211 at 8–9; Case No. 6:09cv340, Docket No. 333 at 22. The
original construction was “hardware and/or software.” Infor at 9. Later, in response to a dispute
as to whether the event manager is structural, the Court amended the construction to “hardware
and or software that is within a computer implemented sales system.” First 1-800-Flowers

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opinion, at 22. SFA proposes the construction adopted in the first 1-800-Flowers opinion.
Defendant Newegg proposes “an inference engine that is functionally separate from the
subsystems.” The disputes are whether: (1) the absence of the ‘525 Patent’s “inference” claim
limitations from the ‘341 Patent necessitates a more detailed definition to include an “inference
engine;” and (2) the event manager must be functionally separate.
1) Inference Requirement
Newegg argues that “event manager” must be clarified because Claims 1 and 40 of the
‘525 Patent recite “an event manager . . . inferring occurrence of the event . . . , ” while Claims 1
and 27 of the ‘341 Patent do not recite any inference capability. Case No. 6:09cv340, Docket No.
430 at 19. Newegg suggests that the Court referred to this inference capability in its previous
determination that additional claim limitations on the event manager in the ‘525 Patent prevent it
from reading on “anything under the sun.” Id. at 20. According to Newegg, the prosecution
history also suggests that the inference capability is central to the ‘525 Patent. Id. Thus, Newegg
argues that the previous construction, absent an inference limitation, would allow the event
manager to read on “anything under the sun.” Id.
SFA asks for adoption of the previous construction to be consistent. Case No. 6:09cv340,
Docket No. 425 at 9. SFA maintains that there is no further need for clarification and it is
improper to import a specific embodiment into this claim term. Id.
The construction in the first 1-800-Flowers opinion is appropriate. The term’s
construction was based on the ‘525 Patent’s specification, which remains unchanged, and is
substantively identical to the ‘341 Patent’s specification. The inference engine discussed by the
patents is described as an option for “an alternative embodiment” employing an expert system.
See ‘341 Patent, Col. 36–37. The effect of Newegg’s request is to limit the subject claims to this

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alternative embodiment. Furthermore, each independent claim at issue provides multiple
functional limitations to the “event manager,” thus preventing an overly broad reading of the
term. Therefore, the event manager cannot read anything under the sun.
2) Functionally Separate Requirement
Newegg further proposes “an inference engine that is functionally separate from the
subsystems” because the event manager is always described and shown as being functionally
separated from the subsystems. Id. at 22–23. Newegg argues that since the event manager is the
brain of the claimed system, it must be separate from the various subsystems in order to interface
with them. Id.
SFA contends Newegg’s proposed “functionally separate” language does not correspond
to any part of the term being construed. Case No. 6:09cv340, Docket No. 425 at 9. Therefore,
SFA argues that adding this language to the construction would improperly create new
limitations. Id.
Adding “functionally separate from the subsystems” to the construction would muddy the
term instead of clarifying it. The claims recite an event manager “coupled to the subsystems and
configured to” realize various operations within them. ‘341 Patent, Col. 50–65. While in one
sense the event manager has a distinct function from that of each subsystem, at the same time the
event manager works in conjunction with each system to realize any given function. For
example, Figure 5 of the ‘525 Patent shows the event manager working with the order
management component. ‘525 Patent, 3:3–4. The claims set out the functionality of the event
manager with sufficient specificity such that adding additional limitations to the construction is
unnecessary.
In sum, the parties have not proposed any meritorious clarification for “event manager”

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and there is no reason to read additional limitations into this term. Consistent with its prior
construction, “event manager” is construed as “hardware and/or software that is within a
computer implemented sales system.”
“detecting one or more changes in information regarding an event”
This term appears in Claims 1 (event in the system), 13 (event in the sales process), 27
(event in the system), and 32 (event in the sales process) of the ‘341 Patent. SFA suggests that no
construction is needed. Newegg proposes “detecting one or more changes in information
concerning an event that exists in the system.” The dispute centers around whether the detected
changes in events are limited to pre-existing events.
SFA offers several reasons for leaving this term unconstrued. First, SFA submits that
commonly understood words like “detect” and “information” need not be defined, and there is no
indication of a special meaning in the context of the claims. Case No. 6:09cv340, Docket No.
425 at 9. SFA also contends that to the extent “event” has a special meaning, it has already been
construed in the ‘525 patent in the context of “event occurring in the system” and “event
occurring in the sales process.”3 Id. at 10. Further, since the claims alternatively use the term
“event” to refer to events occurring in the system (e.g., Claims 1 & 27) and events occurring in
the sales process (e.g., Claims 13 and 32), limiting all claimed events to system events would
contradict the express claim language. Id.
Newegg argues that the specification illustrates that when changes in information
regarding an event occurs in the system, that information already existed in the system. Case No.
6:09cv340, Docket No. 430 at 26. For example, Newegg points to portions of the specification

3

The previous construction of “event occurring in the system” was “an operation of the software or hardware
making up the sales system.” First 1-800-Flowers opinion, at 7. The previous construction of “event occurring in the
sales process” was “a real-life action or inaction that occurs in the sale process.” Id. at 10.

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that recite an automatic checking of changes made to information in the system, and reasons that
such information necessarily already existed in the system. Id. at 26.
The plain language of the claims includes information regarding new events and preexisting events. The claims recite “changes in information regarding an event.” The
specification, which discusses the occurrence of events and the subsequent action of the system,
does not contradict the claim language. Contrary to the plain claim language and the
specification’s teachings, Newegg’s proposal would limit the claim so that new events could not
satisfy this limitation. In addition, Newegg’s proposal requires that all events “exist[] in the
system.” As noted above, each of the subject claims expressly requires either events occurring in
the system or events occurring in the sales process. Thus, Newegg’s proposal would be either
duplicative of Claims 1 and 27 or contradictory to the express claim language of Claims 13 and
32. This term needs no construction.
“event occurring within/in the system”
This term appears in Claims 1 and 27 of the ‘341 Patent. SFA proposes adoption of the
Court’s prior construction, “an operation of the software or hardware making up the sales
system.” First 1-800-Flowers opinion, at 7. Defendant Newegg proposes “an internal software or
hardware activity that corresponds to an event in the sales process.” The disputes include
whether the system events: (1) must be internal; and (2) necessarily correspond to events in the
sales process.
SFA argues the Court’s previous construction is proper, whereas Newegg’s proposed
construction would introduce an additional limitation not contemplated by the claims. Case No.
6:09cv340, Docket No. 425 at 13. Despite the fact that the Court previously distinguished an
“event occurring within/in the system” from an “event occurring in the sales process,” Newegg’s

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proposed construction makes “event occurring within the sales process” a requirement of an
“event occurring within the system.” Id.
Newegg points to the specification to support its arguments that the software or hardware
activity must be internal. Case No. 6:09cv340, Docket No. 430 at 27–28 (“a sales event may be
an event in the sales process, . . . while an application event may be an internal operation of the
sales system . . . .”). Newegg also contends that, according to the specification, application
events “generally represent a sales event occurring in the sales process.” Id.
The Court has already construed an “event occurring within the system” as “an operation
of the software or hardware making up the sales system.” Although the specification does
mention the word “internal,” the Court’s construction contemplates that word by referring to
“hardware or software making up the sales system.” Newegg’s proposal confuses rather than aids
the Court’s construction by raising the question of what is “internal” hardware or software.
Further, it is not necessary to define the system event as one “that corresponds to an event in the
sales process” because any correspondence between events in the sales process and events in the
system is already expressly required by the claims. For example, Claim 1 recites a subsystem
that “determines if the event has occurred previously in the sales process and updates another
event or task in at least another subsystem. . . .” ‘341 Patent, 39:11–14. While consistent with
many embodiments, Newegg’s proposal would require both types of events in every claim,
thereby improperly importing limitations. Therefore, consistent with the Court’s previous
construction, “event occurring within/in the system” is construed as “an operation of the software
or hardware making up the sales system.”

17

“the event has occurred previously in the sales process”
This term appears in Claims 1, 13, 27, 31, 32, and 33 of the ‘341 Patent. SFA contends
that the term does not require additional construction beyond the previous constructions of
“event” and “sales process.” The Amazon Defendants propose “the event has occurred
previously in the same sales process in which an item or service is sold.” Newegg proposes
“determines if the event is at least the second occurrence of the event in the same sales process
that pertains to the customer associated with the event.” The dispute is whether construction is
necessary to define which event and sales process are referenced by “the event” and “the sales
process.”
SFA contends that no construction is necessary because “event” and “sales process” have
already been construed, and “occurred previously” does not acquire any special meaning here
that would require construction. Case No. 6:09cv340, Docket No. 425 at 11. Furthermore,
mentions of the event and the sales event clearly refer back to the event or sales process
mentioned earlier in the claim. Id. at 12. SFA states that any confusion about this antecedent
basis can be resolved by jury instructions rather than through a claim construction that creates
new limitations. Id. at 12.
The Amazon Defendants contend that the event and sales process in this term refer to the
same event and sales process, respectively, mentioned earlier in each claim. Case No. 6:11cv52,
Docket No. 339 at 15. By example, Claim 13 recites “detecting one or more changes in
information regarding an event occurring in the sales process” and later “determin[ing] if the
event has occurred previously in the sales process.” Id. Therefore, the latter phrase refers back to
the same event mentioned earlier and refers to the same sales process. Id.

18

Similarly, Newegg argues that without construction, the term “occurred previously”
could apply to any previous event in any sales process ever completed, without any meaningful
boundaries. Case No. 6:09cv340, Docket No. 430 at 23. Therefore, Newegg seeks to construe the
term to clarify that “the event” refers to a prior event that occurred in the present sales process.
Id. at 24. Moreover, a given sales process necessarily relates to a specific customer, with steps
such as scheduling “follow up activities,” “receiving[ing] and shar[ing] all information related to
that customer’s contact with the company,” and “identify[ing] customer as a potential customer
for accessories.” Id. at 24. Finally, Newegg contends that if an event has “occurred previously,”
this occurrence logically must be at least the second occurrence of the same event. Id. at 25.
With respect to this dispute, there is no legally sound reason to confine the claims beyond
the literal syntax of the express words and the prior construed terms. Grammatically, the general
rule is that the first mention of a noun is preceded by a or an and subsequent references to the
same noun are preceded by the or said. As an example, the second mention of “sales process”
(“the sales process”) refers back to the first mention (“a sales process”) and both relate to the
same “process of selling goods or services, including two or more phases such as lead
generation, time with customer, order management, and customer retention” (the construction for
“sales process.”). The same analysis applies for the events. Therefore, the claim syntax,
combined with the prior constructions of “event” and “sales process,” is sufficient to resolve the
parties’ dispute, and this term does not require separate construction.
“context”/“infer[ring] . . . a context”
“Context” appears in Claims 1–4, 15, 16, 18–21, 24, 27, 28, 30, 32, and 40 of the ‘525
Patent. In the Infor case, the Court adopted the parties’ agreed construction: “information already
existing within the system that becomes relevant upon the occurrence of an event.” Infor opinion,

19

at 7. The Court adopted the same definition in the 1-800-Flowers case. First 1-800-Flowers
opinion, at 15. SFA proposes the Court’s prior construction. The Amazon Defendants propose
“the circumstances in which an event occurs, a setting.”
“[I]nfer[ring] . . . a context” appears in Claims 1, 20, and 40 of the ‘525 Patent. The Court
previously construed this term as “logical process by which the fact that information already
existing within the system becomes relevant upon the occurrence of an event is derived by
application of logical rules.” First 1-800-Flowers opinion, at 17–18. While originally the parties
advocated for different constructions, at the Markman hearing the parties reached an agreed
construction that adds “to known or assumed facts” to the end of the Court’s prior construction.4
Thus, “infer[ring] a context” is construed as a “logical process by which a context is derived by
application of logical rules to known or assumed facts.” Further, “context”—consistent with the
Court’s prior construction—is construed as “information already existing within the system that
becomes relevant upon the occurrence of an event.”
“infer[ring] . . . occurrence of the event [occurring within/in the system]”
This term appears in Claims 1, 20 and 40 of the ‘525 Patent. SFA argues no construction
is needed or, if construed, the prior constructions of “infer[ring]” and “event occurring within/in
the system” should be combined to read: “logical process by which an occurrence of the event is
derived by application of logical rules.” The Amazon Defendants propose “a logical process by
which the fact that a hardware or software operation internal to the system has occurred is
derived from known facts by the application of logical rules.” The central dispute is whether the
inferred event is necessarily the antecedent “event within the system.”
4

“The Court: It would read, ‘logical process by which a context is derived by . . . application of logical rules to
known or assumed facts.’ . . . [D]o we have an agreement then that will be the definition by agreement? Is that
agreeable to Defendants?. . . . Mr. Fowler: Your Honor, we prefer our construction, but this would be acceptable as
an alternative. The Court: So do I take that as an agreement? Mr. Fowler: Yes, Your Honor. The Court: Plaintiffs
agree? Mr. Fenster: Yes, sir.” Case No. 6:09cv340, Docket No. 444 at 47–49.

20

SFA contends that, because the Court has previously construed both “infer[ring]” and
“event occurring within/in the system,” this new permutation that combines the two terms need
not be separately construed. Case No. 6:11cv52, Docket No. 335 at 34. While SFA agrees that
there is an antecedent basis for the term “the event,” SFA believes that crafting the effects of that
antecedent basis for the claim construction is improper. Case No. 6:11cv52, Docket No. 349 at 5.
SFA contends that the normal rules regarding antecedent basis adequately define the scope of the
claims such that no additional construction is necessary. Id.
The Amazon Defendants argue that their proposed construction clarifies that the event
refers to the antecedent system event (“event occurring within the system”). Case No. 6:11cv52,
Docket No. 339 at 11. Since that antecedent term has already been construed as “an operation of
the software or hardware making up the sales system,” Defendants argue that their construction
correctly clarifies that “the event” refers back to that same internal event. Id.
Defendants’ proposal amounts to a request to clarify claim syntax by adding an
overlapping claim construction. However, applying ordinary principles of claim syntax is
sufficient to resolve the parties’ dispute. For example, Claim 1 of the ‘525 Patent recites
“detecting one or more changes in state characteristic of an event occurring within the system,
inferring occurrence of the event and a context in which the event occurred” (emphasis added). It
is clear that the second two mentions of “the” event refer to the antecedent “event occurring
within the system.” No further construction is necessary.
“lead”
This term appears in Claims 5–10, 12, 33–37, 39, and 42 of the ‘525 Patent and Claims
5–10, 12, 20–24, and 26 of the ‘341 Patent. SFA argues that no construction is necessary.
Newegg proposes “an individual determined to be a potential customer based on previously

21

obtained information relating to the individual’s identity, prior purchases, and product interests.”
The dispute is whether “lead” must be a potential customer.
SFA argues that “lead” should be given its plain and ordinary meaning. Case No.
6:09cv340, Docket No. 425 at 15. SFA contends that Newegg’s definition of a lead as “an
individual determined to be a potential customer” conflicts with the specification. Id. at 16. For
example, the specification differentiates between a lead and a potential customer where it states
that “[c]onventional lead management systems . . . assist sales personnel in developing customer
leads into potential customers.” ‘341 patent, 1:46–48. Id. at 16. According to SFA, Defendant’s
construction of “lead” would render this statement redundant. Id.
Newegg argues that both the claims and specification use “lead” to refer to a “potential
customer.” Case No. 6:09cv340, Docket No. 430 at 16–17. For example, the specification
explains that one subsystem’s goal is “committing a customer to a specific purchase, i.e.,
converting the ‘lead’ into a purchasing customer.” Id. at 17 (citing ‘341 Patent, 8:51–54). The
specification also recites an event manager that can suggest “that the particular customer may be
a prospective lead.” Id. (citing ‘341 Patent, 15:4–11). Newegg concludes that these equivalencies
mean “lead” is an “individual determined to be a potential customer” based on several pieces of
information: the individual’s identity, prior purchases, and product interests. Newegg contends
that the specification supports a construction that includes this information because it recites that
“information such as names, addresses, and product interests of potential customers is
gathered. . . . Sales information . . . such as information previously gathered, purchased
databases, or previous customers, may also be used in conjunction with the lead generation
component to identify potential customers.” ‘341 Patent, 8:21–31.

22

Newegg’s argument must be rejected because it seeks to replace the ordinary meaning of
a common word—lead—with strict limitations gleaned from merely anecdotal comments in the
specification. Newegg’s proposal to limit a “lead” to a “potential customer” would require a
special definition or disavowal, neither of which is present here. The specification plainly uses
the word “lead” in contexts where it does not refer to an individual determined to be a potential
customer: “[c]onventional lead management systems have been developed, for example, to assist
sales personnel in developing customer leads into potential customers.” ’341 patent, 1:46-48
(emphases added). Here, a lead only has the possibility, if developed, of becoming a “potential
customer.” The specification also mentions “lead” as just one of various types of data. For
example: “Each of the above-described components are driven in some respect by data and
information, such as prices, specifications, competition, features and benefits, leads, names,
financing, sales programs, etc.” ’341 Patent, at 11:2-6. It would make no sense to replace “lead”
with “individual determined to be a potential customer” in such cases. Since a jury will
understand the term lead as it applies in each context of the claim better than any definition that
attempts to narrow or broaden the common understanding of the term, no construction is
necessary.
“first memory storing a plurality of rules”
This term appears in the Claims 4, 19, and 32 of the ‘341 Patent. Claim 4 is
representative of the patent’s usage of the term:
The system of Claim 1, further comprising: a first memory storing a plurality of rules,
each rule indicating at least one subsequent action to be taken by a subsystem of the sales
system upon occurrence of a corresponding event occurring in a particular context; and a
decision subsystem to identify a rule stored in the first memory corresponding to the
event and for initiating operation of the particular subsystem based on the identified rule.

23

‘341 Patent, 39:23–32. SFA argues that no construction is necessary. Newegg proposes “a
database of stored rules functionally separate from the event manager; a rule is a statement which
prescribes that on the occurrence of a particular event, another event or action is initiated.” The
disputes are: (1) whether the claimed memory must be implemented in a database; and (2)
whether this term refers to something functionally separate from the event manager.
1) Database Requirement
Newegg argues that a database is required because a rule-storage database is included not
just in one preferred embodiment, but in every embodiment of the ‘341 Patent. Case No.
6:09cv340, Docket No. 430 at 29. Newegg contends that every mention of the term “memory”
appears in reference to storage of various databases. Id. at 29–30. Newegg reasons that since the
patent offers no alternative arrangements, this embodiment is not a “mere recommendation,” it is
a requirement. Id. at 29, quoting Snow v. Lake Shore & M.S. Ry. Co., 121 U.S. 617, 630 (1887).
SFA asserts that there is no indication that these common words—“memory,” storage,”
and “rules”—have a special meaning in the context of these claims. Case No. 6:09cv340, Docket
No. 425 at 14. Further, SFA believes Newegg’s proposed construction improperly seeks to limit
the term to a preferred embodiment by requiring a database. Id. SFA argues that neither the
claims nor the specification require a database. Case No. 6:09cv340, Docket No. 436 at 10
Newegg’s specification-based proposal improperly limits the “first memory storing a
plurality of rules” to a database. Although claims “must be read in view of the specification, of
which they are a part,” “[t]he written description part of the specification itself does not delimit
the right to exclude. That is the function and purpose of claims.” Markman, 52 F.3d at 979–80.
Further, even if the specification recites only one preferred embodiment as Defendants suggest,
the Federal Circuit has “expressly rejected the contention that if a patent describes only a single

24

embodiment, the claims of the patent must be construed as being limited to that embodiment.”
Phillips, 415 F.3d at 1312 (citing Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d
1352, 1366 (Fed. Cir. 2004)). The concept of “memory,” and its various alternatives, was well
understood at the time the patent was filed, and there is no reason to limit this common technical
term to a single embodiment.
2) Functionally Separate Requirement
Newegg contends that every figure of the ‘341 patent supports a construction that
clarifies that the first memory is functionally separate from the event manager. Case No.
6:09cv340, Docket No. 430 at 30.
SFA responds that Newegg's proposed introduction of “functionally separate” would add
limitations that do not relate to any part of the term. Case No. 6:09cv340, Docket No. 436 at 10.
SFA argues that the figures to which Newegg points as evidence that the memory is functionally
separate are actually conceptual diagrams showing blocks separated to represent different
concepts, not necessarily a functional separation. Id. Therefore, SFA contends that the Court
should reject Newegg’s definition and conclude that this term does not need construction. Id.
There is no legal basis to add a functional-separation limitation to the claims. Newegg’s
argument regarding the drawings’ separate representation of memory and the event manager
effectively suggests that “functional separation” should be imported to every patent claim with
similar underlying illustrations. Therefore, “first memory storing a plurality of rules” does not
need construction.
“time with customer subsystem”
This term appears in Claims 5, 6, 8, 9 and 10 of the ‘525 Patent. SFA contends no
construction is necessary. The Amazon Defendants propose “the subsystem used by a salesman

25

that includes a product information module, a customer requirements module, a quote
preparation module, a finance module, a proposal generation module, a presentation module, a
life cycle module, a performance evaluation module, and a competitive comparison module.”
Newegg proposes “a subsystem that assists a salesperson in converting a lead into a buying
customer, and that stores information about the amount of time a salesperson spends with a
customer.” The parties dispute whether this term requires a specific, salesperson-focused
definition.
SFA argues that no further construction is necessary because the Court previously
construed both “subsystem” and “plurality of subsystems” for the ‘525 Patent in the Infor
opinion. 6:11cv52, Docket No. 335 at 21–22. Further, SFA believes “time with customer” needs
no construction, as it simply refers to a subsystem that “relate[s] to the details occurring during
the time a customer spends with the system.” Id. at 22. SFA contends that Defendants’ proposed
constructions improperly seek to import limitations from a specific embodiment, such as
“salesman,” “product-information module,” “customer-requirements module,” and “quotepreparation module.” Id.
The Amazon Defendants argue that this term has no plain and ordinary meaning and must
therefore be construed according to the ‘525 Patent’s specification. Case No. 6:11cv52, Docket
No. 339 at 17. The Amazon Defendants contend that the specification only recites a “time with
customer subsystem” used by a salesperson:
the time with customer component is used by salespeople when they are with a customer
or preparing a proposal or presentation for a customer in order to generate a sale of the
product or service. The integrated subcomponent modules facilitate interaction between
the salesperson and the customer through the sales process to develop specific solutions
that meet the customer’s needs, thereby enabling the salesperson to close the sale as
described above.
Id., quoting ‘525 Patent at 12:12–20 (emphases added).

26

Further, the Amazon Defendants argue that the construction should include the specific
components provided in the specification:
The subcomponent modules [of the time with customer subcomponent] include a product
information module 402, a customer requirements module 404, a configuration module
406, a quote preparation module 408, a finance module 410, a proposal generation
module 412, a presentation module 414, a life cycle module 416, a performance
evaluation module 418, a competitive comparison module 420, among other modules.
‘525 Patent at 11:64–12:7.
Newegg proposes a construction with two components: (1) that the system assists a
salesperson in converting a lead into a buying customer; and (2) that it stores information about
the amount of time a salesperson spends with a customer. Case No. 6:09cv340, Docket No. 430
at 14. According to Newegg, this comports with the ‘341 patent’s specification, which indicates
that the time with customer subsystem “is used by the salesperson during the phase of the sales
process which occurs from the time a qualified lead is identified to the time a sale is completed
and an order is created.” Id. at 15 (quoting ‘341 Patent at 8:45–48). Further, Newegg argues that
the claims recite a system that “receives necessary information . . . and stores information
obtained during the time spent with the customer . . . .” Id. (quoting ‘341 Patent at 9:14–20).
Newegg argues that the prosecution history of a predecessor to the ‘341 Patent confirms that
“time with customer” involves a salesperson because the inventors distinguished prior art based
on the fact that the “time with customer subsystem” stores information about the amount of time
a salesperson spends with a customer. Id. at 15–16.
The term clearly and unambiguously defines itself—a subsystem related to the “time with
a customer.” This simple conclusion is clear when reading the description found in the ‘525
Patent: “[T]he time with customer component 104 is used by salespeople when they are with a
customer . . . in order to generate a sale of the product or service.” ‘525 Patent, 12:13–16.

27

Defendants’ proposed constructions improperly incorporate only select embodiments.
Defendants’ common request to incorporate a salesperson is also improper. The Court has
already determined that, in absence of an express claim limitation, the intrinsic record does not
support limitations requiring use by a salesperson to the exclusion of other potential
embodiments. First 1-800-Flowers opinion, at 13. The patent certainly teaches the use of
websites or kiosks as proxies for sales persons. ‘341 Patent at 15:11–30. Further, the teachings
imply that a website can replace a salesperson. ‘341 Patent at 15:20–24.
Newegg’s proposal that the system stores information about the amount of a time a
salesperson spends with a customer is directly contradicted by one of the specification sections
that Newegg cites. Docket No. 430 at 15 (citing ‘341 Patent at 9:14–20). The specification
recites a system that stores information, not about the amount of time spent with a customer but
rather about “information obtained during time spent with the customer.” ‘341 Patent, 9:14–20
(emphasis added).
Defendants’ proposed constructions improperly incorporate only select embodiments.
Thus, no construction of this term is necessary.
MOTIONS FOR SUMMARY JUDGMENT OF INDEFINITENESS
Defendants move for summary judgment of invalidity for indefiniteness on three
grounds: (1) apparatus claims reciting method steps; (2) insoluble ambiguity of the preamble
term “intelligently integrating;” and (3) insoluble ambiguity of the wherein clause. For the
reasons set forth below, the Court DENIES these motions for summary judgment.
APPLICABLE LAW
“Summary judgment is appropriate in a patent case, as in other cases, when there is no
genuine issue as to any material fact and the moving party is entitled to judgment as a matter of

28

law.” Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); FED. R. CIV.
P. 56(c). The moving party bears the initial burden of “informing the district court of the basis
for its motion” and identifying the matter that “it believes demonstrate[s] the absence of a
genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548,
2553 (1986). If the moving party meets this burden, the nonmoving party must then set forth
“specific facts showing that there is a genuine issue for trial.” FED. R. CIV. P. 56(e); see also T.W.
Elec. Serv., Inc. v. Pacific Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
A party seeking to invalidate a patent must overcome a presumption that the patent is valid.
See 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. Partn’p, 564 U.S. __, 131 S. Ct. 2238, 2243
(2011); United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996).
This presumption places the burden on the challenging party to prove the patent’s invalidity by
clear and convincing evidence. Microsoft, 131 S.Ct. at 2243; United States Gypsum Co., 74 F.3d
at 1212. Close questions of indefiniteness “are properly resolved in favor of the patentee.”
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005); Exxon
Research & Eng’g Co. v. United States, 265 F.3d 1371, 1380 (Fed. Cir. 2001).
Claims must particularly point out and distinctly claim the invention. “The specification
shall conclude with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. The primary
purpose of the requirement of definiteness is to provide notice to those skilled in the art of what
will constitute infringement. See United Carbon Co. v. Binney Co., 317 U.S. 228, 236 (1942).
The definiteness standard is one of reasonableness under the circumstances, requiring that, in
light of the teachings of the prior art and the invention at issue, the claims apprise those skilled in
the art of the scope of the invention with a reasonable degree of precision and particularity. See

29

Shatterproof Glass Corp. v. LibbeyOwens Corp., 758 F.2d 613, 624 (Fed. Cir. 1985). To rule “on
a claim of patent indefiniteness, a court must determine whether one skilled in the art would
understand what is claimed when the claim is read in light of the specification.” Bancorp Servs.,
L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). “A determination of
indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the
construer of patent claims, [and] therefore, like claim construction, is a question of law.” Amtel
Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir. 1999).
ANALYSIS
1. Motion for Summary Judgment of Indefiniteness for Impermissible Mixing of Method
and Apparatus Claims
Claim 1 of the ‘525 Patent and Claim 27 of the ‘341 Patent recite a “computer
implemented sales system,” and Claim 1 of the ‘341 Patent recites an “automated sales system.”
Newegg contends that these claims improperly mix method steps into a systems claim and move
for summary judgment of indefiniteness on these claims. Case No. 6:09cv340, Docket No. 433.
The following claim is representative of the disputed language:
A computer implemented sales system used to facilitate a sales process, the system
comprising: a plurality of subsystems configured to facilitate one or more actions
performed during at least one phase of the sales process; and an event manager, coupled
to the subsystems, the event manager detecting one or more changes in state
characteristic of an event occurring within the system, inferring occurrence of the event
and a context in which the event occurred based at least in part on the detected changes
in state, and automatically initiating an operation in one or more particular subsystems
of the computer to facilitate a new action based on the inferred context.
‘525 Patent, 35:63–36:10 (emphasis added).
A single claim that recites two separate statutory classes of invention, e.g., “an apparatus
and a method of using that apparatus,” renders the claim indefinite under 35 U.S.C. § 112 ¶ 2.
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). The problem

30

with mixing apparatus and method steps is that such mixed claims fail to clarify “whether
infringement would occur when one creates a system that allows the user to [perform the step]
. . . or . . . when the user actually [performs the step].” HTC Corp. v. IPCom GmbH & Co., KG,
667 F.3d 1270, 1277 (Fed. Cir. 2012). “[S]uch a claim ‘is not sufficiently precise to provide
competitors with an accurate determination of the “metes and bounds” of protection involved’
and is ‘ambiguous and properly rejected.’” Id. (quoting Ex parte Lyell, 17 U.S.P.Q.2d 1548
(1990)). However, apparatus claims that are limited by functional language are not necessarily
indefinite. Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375
(Fed. Cir. 2008) (citing Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008)). If the functional language of the claim merely describes “the structure and capabilities of
the claimed apparatus,” then the claim is sufficiently definite under 35 U.S.C. § 112 ¶ 2. SynQor,
Inc. v. Artesyn Techs., Inc., 2010 U.S. Dist. LEXIS 74808, at *97 (E.D. Tex. July 26, 2010), aff’d
SynQor v. Artesyn Techs. Inc., No. 2011-1192 (Fed. Cir. March 13, 2013) (citing
Microprocessor, 520 F.3d at 1375).
Newegg argues that the claims at issue impermissibly mix apparatus claims with method
steps because they recite a system and use verbs such as detecting, initiating, inferring,
determining, and updating to recite method steps. Case No. 6:09cv340, Docket No. 433 at 4.
Newegg contends that this mixture is impermissible because the public does not receive fair
notice of whether infringement occurs when a system with the claimed capabilities is created, or
when the system is used to perform the claimed steps. Id. at 9. Although Newegg acknowledges
that an apparatus claim can use similar verbs as functional language to recite system capabilities,
Newegg contends the present limitations are not functional language because they describe an
action that must be performed to use the apparatus and lack the phrase “configured to” or similar

31

language to introduce it as a description of the system’s capabilities. Id. at 6. As a result, Newegg
argues that the Court should invalidate the claims that use these terms rather than engage in
“claim saving” to fix the patentee’s invalid choice of claim language. 6:09cv340, Docket No.
437 at 5.
SFA counters that the claims do not impermissibly mix apparatus and method limitations.
Instead, SFA argues that the claims merely use functional language to describe the system by
means of what it does. Case No. 6:09cv340, Docket No. 435 at 3. Further, SFA disagrees with
Newegg’s suggestion that “configured to” or similar language is required to mark functional
language that describes system capabilities. Id. at 7–8. SFA contends that it is common for
computer-implemented systems that include software to be claimed with functional language
describing the software’s capabilities. Id. at 4. In Claim 1 of the ‘525 Patent, for example, the
system “detect[s],” “infer[s],” and “initiat[es].” Id. at 7–8. As a result, infringement would occur
upon constructing a system with those capabilities.
Defendants cite to IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005), Katz Interactive Call Processing Patent Litigation v. Am. Airlines, Inc., 639
F.3d 1303, 1318 (Fed. Cir. 2011), and their progeny, and argue the claims at issue similarly mix
method and apparatus claims. However, the claims in those cases suffered from a true ambiguity
as to whether the claims require building a product or performing a method. In particular, those
cases involved apparatus claims incorporating steps where a user acts upon the system. Here, the
claims involve capabilities of the system, as limitations on the “event manager” and “subsystem”
structural elements. The functional language merely describes the functional capability of the
claimed structures. Therefore, there is no uncertainty about when infringement would occur—it
plainly occurs when a system is created that can perform the claimed functions.

32

Further, the language present in the claims is functional despite the lack of “configured
to” or similar wording. Claim 1 of the ‘525 Patent and Claims 1 and 27 of the ‘341 Patent claims
recite components of the sales system: a plurality of subsystems and an event manager. Verbs
such as “detect[ing],” “infer[ring],” and “initiat[ing]” serve to recite the system’s capabilities.
One of ordinary skill in the art would understand that Claim 1 of the ‘525 Patent and Claims 1
and 27 of the ‘341 Patent are limited to an apparatus, and that any infringement occurs upon
creation of the claimed system. See Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of
Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003) (finding that the party seeking to
invalidate a claim as indefinite must show by clear and convincing evidence that one skilled in
the art would not understand the scope of the claim when read in light of the specification).
Defendants have failed to show by clear and convincing evidence that these claims are
insoluble due to an impermissible mix of apparatus limitations and method steps. Accordingly,
Defendants’ motions for summary judgment of indefiniteness of Claim 1 of the ‘525 Patent and
Claims 1 and 27 of the ‘341 Patent are DENIED.
2. Motion for Summary Judgment of Indefiniteness due to Insoluble Ambiguity of
“Intelligently Integrating”
The preambles of Claims 1 and 31 of the ‘341 Patent recite an “automated sales system
for intelligently integrating into a single system tools used by a salesperson in the sales process.”
‘341 Patent, 38:64–66, 42:22–24. Both the Amazon Defendants and Newegg contend that the
“intelligently integrating” phrase is insolubly ambiguous, and move for summary judgment of
indefiniteness on these claims. Case No. 6:09cv340, Docket No. 433; Case No. 6:11cv52,
Docket No. 338.

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A preamble is limiting “if it recites essential structure or steps, or if it is ‘necessary to
give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808, 62 USPQ2d 1781, 1784 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999)). “[A]
claim preamble has the import that the claim as a whole suggests for it. In other words, when the
claim drafter chooses to use both the preamble and the body to define the subject matter of the
claimed invention, the invention so defined, and not some other, is the one the patent protects.”
Bell Commc’ns. Research, Inc. v. Vitalink Commc’ns. Corp., 55 F.3d 615, 620, 34 USPQ2d
1816, 1820 (Fed. Cir. 1995). When limitations in the body of the claim rely upon and derive
antecedent basis from the preamble, then the preamble may act as a necessary component of the
claimed invention. See, e.g., Electro Sci. Indus. v. Dynamic Details, Inc., 307 F.3d 1343, 1348,
64 USPQ2d 1781, 1783 (Fed. Cir. 2002); Rapoport v. Dement, 254 F.3d 1053, 1059, 59 USPQ2d
1215, 1219 (Fed. Cir. 2001); Pitney Bowes, 182 F.3d at 1306, 51 USPQ2d at 1166. On the other
hand, “if the body of the claim sets out the complete invention,” then the language of the
preamble may be superfluous. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1310, 64
USPQ2d 1832, 1837 (Fed. Cir. 2002); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246
F.3d 1368, 1373–74, 58 USPQ2d 1508, 1512 (Fed. Cir. 2001).
SFA argues that “intelligently integrating” does not render Claims 1 and 31 of the ‘341
Patent indefinite because it is not a limitation. Case No. 6:11cv52, Docket No. 350 at 2–3. SFA
contends that although the Court previously held that the preamble of Claim 1 of the ‘525 is a
limitation, that holding does not extend to the related claims in the ‘341 preamble, which contain
additional language including “intelligently integrating.” Id. Finally, SFA argues that

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“intelligently integrating” is not necessary to understand the claim, since the body of the claims
in the ‘341 Patent sets out a complete invention. Id. at 3.
The Court previously found the preambles of Claim 1 and Claim 40 of the ‘525 Patent to
be limiting. First 1-800-Flowers opinion, at 12. The preambles of Claims 1 and 31 of the ‘341
Patent are similar, but not identical. For comparison, the preamble of Claim 1 of the ‘525 Patent
recites:
A computer implemented sales system used to facilitate a sales process, the system
comprising: . . .
35:63–64. The preamble of Claim 1 of the ‘341 Patent recites:
An automated sales system for facilitating a sale of an item or service by intelligently
integrating into a single system tools used by a salesperson in a sales process, the
automated sales system comprising: . . .
38:64–66; 42:22–24. Although the ‘341 Patent is a continuation of the ‘525 Patent, no preamble
phrase is transferred intact to the newer patent—all are rephrased or expanded. ‘341 Patent at
1:6–20. Therefore, it is not a given that the Court’s previous finding extends to the preambles of
Claims 1 and 31 of the ‘341 Patent.
For a preamble to be limiting it must be “‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int'l, at 808. Defendants simply assume that the preambles of Claim 1
and 31 of the ‘341 Patent are limiting, and focus their argument on whether the preamble term
“intelligently integrating” is so insolubly ambiguous that it renders the claim indefinite.
Defendants contend that “intelligently integrating” is insolubly ambiguous because intelligence
is a subjective word of degree, and the patent provides no standard for determining whether a
sales system has been intelligently integrated rather than merely integrated. Case No. 6:09cv340,
Docket No. 433 at 9; Case No. 6:11cv52, Docket No. 338 at 5–6. By Defendants’ own

35

arguments, then, “intelligently integrating” cannot be necessary to give meaning to the claim.
Accordingly, the law does not elevate this preamble phrase to a substantive claim limitation.
Furthermore, even if “intelligently integrating” were a limitation, it is not insolubly
ambiguous. “Intelligently” refers to the computer-science form of intelligence, which is a mere
reference to “processing capability.” See THE COMPUTER GLOSSARY: THE COMPLETE
ILLUSTRATED DICTIONARY, Alan Freedman, 9th Ed. (2001). The subject claims do not employ
the word “intelligently” as a word of degree. Rather, the word helps describe the affirmative
claim limitations as relating to integration by computer processing.
In sum, Defendants do not provide a meritorious basis for either finding the preamble
language a limitation or finding such language insolubly ambiguous. Accordingly, Defendants’
motions for summary judgment of indefiniteness of Claims 1 and 31 of the ‘341 Patent are
DENIED.
3. Motion for Summary Judgment of Indefiniteness due to Insolubly Ambiguous Wherein
Clause
Independent Claims 1, 13, 27, 31, 32 and 33 of the ‘341 Patent recite the following
wherein clause:
wherein at least one subsystem of the plurality of subsystems determines if the event has
occurred previously in the sales process and updates another event or task in at least
another subsystem of the plurality of subsystems if the operation is automatically initiated
‘341 Patent, 39:11–16; 40:36–40; 41:61–65; 44:17–21; 42:44–51; 43:9–13. The Amazon
Defendants contend that this wherein clause is insolubly ambiguous and move for summary
judgment to invalidate these claims as well as their dependent claims. Case No. 6:11cv52,
Docket No. 338 at 8, 14.

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The Amazon Defendants contend that the wherein clause is insolubly ambiguous due to
three ambiguous terms: “determines if the event has occurred previously;” “if the operation is
automatically initiated;” and “updates another event or task.” Id. at 8–12. First, Defendants
contend that the claim does not define what effect the determination mentioned in “determines if
the event has occurred previously” has on “updat[ing] another event or task.” Id. at 8. If the later
event or task is updated, there is no indication if that happens only if the event has occurred
previously, only if it hasn’t occurred previously, or either way. Id. at 8–9. The Amazon
Defendants contend that neither the specification nor the prosecution history shed light on this
issue. Id. at 9.
Second, the Amazon Defendants contend that the wherein clause recites the condition “if
the operation is automatically initiated,” but does not indicate which of the first two steps is
conditioned by the automatic initiation. Id. The Amazon Defendants argue that this ambiguity,
combined with the ambiguity arising from “determines if the event has occurred previously,” can
result in six different but equally plausible interpretations, thus making it impossible for one of
ordinary skill in the art to determine if a product infringes. Id.
Third, the Amazon Defendants contend that the step requiring the system to “update[]
another event or task” is insolubly ambiguous because the patent does not disclose how to update
an event or task. Id. at 11–12. As the patent generally refers to an “event” simply as something
that has happened, the Amazon Defendants argue it is unclear how an event can be updated. Id.
at 12. The Amazon Defendants submit that the specification provides no guidance because it
refers to updating information or modules but never to updating events. Id. at 12–13. Therefore,
the Amazon Defendants claim that the updating step is indefinite and, in combination with the

37

previously mentioned ambiguities, the ‘341 Patent’s independent claims and their dependent
claims should be invalidated. Id. at 13.
SFA argues that the wherein clause is not indefinite because there is no dependent
relationship between the phrases as Defendants contend. Docket 350 at 7. According to SFA, the
clause simply requires a subsystem that can perform two functions: (1) determine if the event
occurred previously; and (2) update another event or task in another subsystem if the operation is
automatically initiated. Id. As to the conditional phrase “if the operation is automatically
initiated,” SFA argues that it unambiguously modifies only the updating phrase. Id. at 7–8. As
support, SFA points to the rule of the last antecedent, which holds that “a limiting clause or
phrase . . . should ordinarily be read as modifying only the noun or phrase that it immediately
follows.” Id. at 8. Finally, SFA argues that the term “update an event or task” is not ambiguous
because the specification does disclose the ability to update both tasks and events. Id. at 10. For
example, the specification discloses that the event manager may “recognize operations carried in
the customer satisfaction module . . . and may direct the self management component 102 to
automatically insert tasks . . . .” Id. at 10 (quoting ‘341 Patent, 22:40–50). The time management
module also recites the ability to update tasks by “drag[ging] and drop[ping]” them. Id. at 10
(quoting ‘341 Patent, 24:8–25). Likewise, SFA contends that the specification recites ways to
update events: pairing or grouping (34:38–55), and linking (36:12–23). Id. at 11.
A claim may escape a finding of indefiniteness “[i]f the meaning of the claim is
discernible, even though the task may be formidable and the conclusion may be one over which
reasonable people will disagree . . . .” Exxon Research and Eng’g Co. v. United States, 265 F.3d
1371, 1375 (Fed. Cir. 2001). In the wherein clause at issue, the claim language does not indicate
any dependent relationship, nor is such a relationship necessary to understand the clause as

38

written. A simple conjunction—“and”—joins the two functions of the claimed subsystem.
Therefore, one of ordinary skill can determine that the claims require a subsystem that can
perform both the determining step and the updating step recited in the wherein clause. As to the
phrase “if the operation is automatically initiated,” the most plausible conclusion is the one
suggested by SFA under the grammar rules—that this phrase conditions only the nearest
antecedent. Although Defendants may disagree about this meaning, the language does not reach
a level of indefiniteness such that no meaning is discernible. Id.
The Amazon Defendants argue that the limitation “updates another event or task” is
insolubly ambiguous because neither the specification nor the prosecution history of the ‘341
Patent discloses how to update an event. Case No. 6:11cv52, Docket No. 338 at 11. While
Defendants’ position facially refers to specification support, at the core of this argument is
Defendants’ allegation that the concept of “updating” is hopelessly unclear because “events” are
something that happen, an occurrence. Id. at 11–2. It is evident both from the specification (e.g.
Figure 21) and the Court’s prior constructions that “events” are generally something that
happens. In that respect, the Court has already defined “event occurring within the system” as
“an operation of the software or hardware making up the sales system.” The Court has also
defined “event occurring in the sales process,” as “a real life action or inaction that occurs in the
sales process.” Even though “events” are generally occurrences, the specification is clear that
events are recorded. This disclosure is implicit throughout the specification, for example in
discussing events that are tied together. ’341 Patent, 34:38-55. In addition, the specification
discloses specific embodiments where “events” are preserved as records in a database:
The rules may prescribe that on the occurrence of a particular event, an event
record is examined in the event manager database to determine if other related
events have occurred, and if the other events have occurred, the rules may
indicate that another sales event should be initiated.

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‘341 at 35:48–53 (emphasis added).
Typical operation of the event manager 201 will now be described. In the
disclosed embodiment, upon the occurrence of an application event using the
business object 1908, the business object 1908 exposes 1914, the event and
associated event handlers to the event managing unit 1904, and the information
contained in the exposed event is used by the event managing unit 1902 to
create or update a database in the event manager database 1904.
‘341 at 35:23–40 (emphasis added). Given the breadth of the disclosure, including the
embodiment that discloses the recording of events in a database, one skilled in the art would
understand how to create or update such a record. And more importantly, the skilled artisan
would understand the claim language relating to updating an event. In view of the specification,
the skilled artisan would recognize that claim language regarding updating an event refers to
updating the record of an event, however that record is maintained. Finally, Defendants’
argument and much of the briefing relies mostly upon the extent of disclosed embodiments and
very little upon an alleged ambiguity in the claim words. Though claims must be read in view of
the specification, the issue of indefiniteness is whether the claim words are discernable. Here, the
disputed words are discernable in view of the specification and thus, the claim is not indefinite.
Therefore, the Court DENIES Defendants’ motion for summary judgment of indefiniteness of
the ‘341 Patent’s independent claims 1, 13, 27, 31, 32 and 33 and their dependent claims.
CONCLUSION
For the foregoing reasons, the Court interprets the claim language in this case in the
manner set forth above. For ease of reference, the Court’s claim interpretations are set forth in a
table as Appendix A. Further, the Court hereby DENIES Defendant Newegg’s Motion for
Partial Summary Judgment of Indefiniteness (Docket No. 433) and Defendants Amazon, Inc.,
et al.’s Motion for Partial Summary Judgment of Indefiniteness (Docket No. 338).

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So ORDERED and SIGNED this 11th day of April, 2013.

__________________________________
LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

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APPENDIX A
Court’s Construction

Claim Term

1. sales process

a process of selling goods or services, including two or
more phases such as lead generation, time with customer,
order management, and customer retention

2. facilitate/facilitating

No construction

3. [facilitate a] new action

No construction

4. computer implemented sales
system/automated sales system

No construction

5. event manager

hardware and/or software that is within a computer
implemented sales system

6. detecting/detect one or more
changes in information
regarding an event

No construction

7. event occurring within the
system/event occurring in the
system

an operation of the software or hardware making up the
sales system

8. the event has occurred
previously in the sales process

No construction

9. context

information already existing within the system that
becomes relevant upon the occurrence of an event

infer[ring] . . . a context

logical process by which a context is derived by
application of logical rules to known or assumed facts

10. Infer[ring]. . . occurrence of the
event [occurring within/in the
No construction
system]
11. lead

No construction

12. first memory storing a plurality No construction
of rules
13. time with customer subsystem

No construction

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