Blue Calypso, Inc. v. Groupon, Inc.
Filing
279
MEMORANDUM OPINION AND ORDER. Signed by Judge Rodney Gilstrap on July 14, 2015. (jml)
THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
BLUE CALYPSO, INC.,
v.
GROUPON, INC.
___________________________________
IZEA, INC.
___________________________________
YELP, INC.
___________________________________
FOURSQUARE LABS, INC.
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No. 6:12cv486
(LEAD CASE)
No. 6:12cv786
No. 6:12cv788
No. 6:12cv837
MEMORANDUM OPINION AND ORDER
Before the Court are Plaintiffs Blue Calypso, Inc. and Blue Calypso LLC’s (collectively,
“Plaintiff’s”) Opening Claim Construction Brief (Dkt. No. 163), Defendants Groupon Inc.,
IZEA, Inc., Foursquare Labs, Inc., and Yelp Inc.’s (collectively, “Defendants’”) Responsive
Claim Construction Brief (Dkt. No. 171), and Plaintiff’s Reply Claim Construction Brief (Dkt.
No. 175). 1 Further before the Court are Defendants’ Supplemental Claim Construction Brief
(Dkt. No. 253) and Plaintiff’s Supplemental Responsive Claim Construction Brief (Dkt.
No. 264).
On July 8, 2015, the Court held a claim construction hearing and heard argument.
1
Docket numbers herein refer to Civil Action No. 6:12cv486 unless otherwise indicated.
Page 1 of 44
Table of Contents
I. BACKGROUND ....................................................................................................................... 3
II. LEGAL PRINCIPLES ........................................................................................................... 4
III. CONSTRUCTION OF AGREED TERMS ........................................................................ 8
IV. CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9
A. “endorsement tag” ................................................................................................................. 9
B. “qualified subscriber”.......................................................................................................... 13
C. “endorsement opportunity” and “endorsement opportunities” ........................................... 18
D. Preambles ............................................................................................................................ 20
E. “subsidy” and “subsidizing” ................................................................................................ 24
F. “subsidy program” ............................................................................................................... 28
G. “testimonial tag” ................................................................................................................. 30
H. “set”..................................................................................................................................... 32
I. “content communication that can be sent from the qualified subscriber to the
recipient” and “content communication between the first source communications
device and the first destination communication device” .................................................... 37
J. “conditioning . . . based on” ................................................................................................. 41
V. CONCLUSION...................................................................................................................... 44
Page 2 of 44
I. BACKGROUND
Plaintiff brings suit alleging infringement of United States Patents No. 8,155,679 (“the
’679 Patent”), 8,438,055 (“the ’055 Patent”), and 8,452,646 (“the ’646 Patent”) (collectively,
“the patents-in-suit”). In January 2014, after the parties filed the above-cited initial claim
construction briefs, 2 the Court granted a Joint Motion to Stay Litigation Pending Covered
Business Method Patent Review (Dkt. No. 188). (See Dkt. No. 190, 1/16/2014 Order.) In April
2015, the Court lifted the stay and, after further proceedings, ordered supplemental claim
construction briefing. (See Dkt. No 213, 4/2/2015 Order; see also Dkt. No. 215, 4/6/2015 Order;
Dkt. No. 229, 5/4/2015 Order.) The parties then filed the above-cited supplemental claim
construction briefs.
The ’679 Patent, titled “System and Method for Peer-to[-]Peer Advertising Between
Mobile Communication Devices,” issued on April 10, 2012, and bears a filing date of
November 18, 2009. The Abstract of the ’679 Patent states:
Disclosed are a method and system for peer-to-peer advertising between mobile
communication devices. A subsidy program is set up based on a profile of an
advertiser having at least one advertising media. A qualified subscriber is
identified for the advertiser based on a profile of a subscriber. One or more
advertisers and subsidy programs for the qualified subscriber is selected. In
addition, when a communication transmission is received from a source
communication device, at least one advertising media is associated with the
communication transmission and the communication transmission is transmitted
from a source communication device to a destination communication device.
The ’055 Patent claims priority to, and incorporates by reference, the application that
issued as the ’679 Patent. The ’646 Patent, in turn, claims priority to, and incorporates by
reference, both the application that issued as the ’679 Patent and the application that issued as the
2
The initial claim construction briefs also addressed United States Patents No. 7,664,516 and
8,457,670, which are no longer at issue in these claim construction proceedings.
Page 3 of 44
’055 Patent. 3 Although the parties have addressed various differences between the
specifications, the present Memorandum Opinion and Order refers to the specification of the
’679 Patent unless otherwise indicated.
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right
which the patent confers on the patentee to exclude others from making, using or selling the
protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed.
Cir. 1999). Claim construction is clearly an issue of law for the court to decide. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
(1996).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One
purpose for examining the specification is to determine if the patentee has limited the scope of
the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
3
The parties appear to dispute the effective filing dates of the patents-in-suit and whether the
later patents are continuations-in-part (see, e.g., Dkt. No. 170, at 6-7), but any such disputes have
no impact on the Court’s analysis in the present Memorandum Opinion and Order.
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lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the
patentee is entitled the right to exclude.” 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words
used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and
customary meaning of a claim term “is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.” Id. at 1313. This principle of patent law flows naturally from the
recognition that inventors are usually persons who are skilled in the field of the invention and
that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
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(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as
being the primary basis for construing the claims. Id. at 1314-17. As the Supreme Court stated
long ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive
portions of the specification to aid in solving the doubt or in ascertaining the true intent and
meaning of the language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In
addressing the role of the specification, the Phillips court quoted with approval its earlier
observations from Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the
specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the
applicant,” it may lack the clarity of the specification and thus be less useful in claim
construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is
relevant to the determination of how the inventor understood the invention and whether the
inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see
Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a
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patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant
to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The
court did not impose any particular sequence of steps for a court to follow when it considers
disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the
appropriate weight to the intrinsic sources offered in support of a proposed claim construction,
bearing in mind the general rule that the claims measure the scope of the patent grant.
In general, prior claim construction proceedings involving the same patents-in-suit are
“entitled to reasoned deference under the broad principals of stare decisis and the goals
articulated by the Supreme Court in Markman, even though stare decisis may not be applicable
per se.” Maurice Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779,
Page 7 of 44
at *4 (E.D. Tex. June 21, 2006) (Davis, J.); see TQP Development, LLC v. Inuit Inc., No. 2:12CV-180, 2014 WL 2810016, at *6 (E.D. Tex. June 20, 2014) (Bryson, J.) (“[P]revious claim
constructions in cases involving the same patent are entitled to substantial weight, and the Court
has determined that it will not depart from those constructions absent a strong reason for doing
so.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 839-40 (2015) (“prior
cases will sometimes be binding because of issue preclusion and sometimes will serve as
persuasive authority”) (citation omitted).
The Court nonetheless conducts an independent evaluation during claim construction
proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp. 2d 580,
589-90 (E.D. Tex. 2002); Burns, Morris & Stewart Ltd. P’ship v. Masonite Int’l Corp., 401 F.
Supp. 2d 692, 697 (E.D. Tex. 2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11CV-390, 2012 WL 6494240, at *5 (E.D. Tex. Dec. 13, 2012).
III. CONSTRUCTION OF AGREED TERMS
The Court hereby adopts the following agreed-upon constructions:
Term
“demographic”
Claims
’679 Patent:
Claim 1
’055 Patent:
Claims 2 and 12
“incentive
program”
’055 Patent:
Claims 2 and 12
Agreed Construction
“related to education, employment, purchasing
habits, interests, hobbies, affiliations, age, gender,
geographic location, or other data used to identify
a target market for a product or service”
“a set of rules governing an incentive distribution”
’646 Patent:
Claim 4
Page 8 of 44
“incentivizing”
’055 Patent:
Claim 1
“offering a reward provided to a subscriber based
on an endorsement”
’646 Patent:
Claims 1 and 2
“intermediary”
’055 Patent:
Claims 2 and 12
“one or more computer servers and memory
executing computer applications and
communications to implement the advertising
endorsement system”
’646 Patent:
Claims 4 and 6-8
“offer”
’646 Patent:
Claims 4, 6, and 8
“an actionable display on a subscriber
communication device or a destination
communication device that when validated
provides a benefit”
“qualified
subscriber”
’055 Patent:
Claims 2 and 12
“a person who meets the demographic criteria of
an advertiser”
(’055 and ’646
Patents only)
’646 Patent:
Claim 4
“testimonial”
’055 Patent:
Claims 2, 3 and 12-13
“a text message, picture, audio or video message
associated with an advertiser, advertisement or
advertising program”
(Dkt. No. 151, 10/4/2013 Joint Claim Construction and Prehearing Statement, at 2; Dkt. No. 163
at 27; Dkt. No. 171, at 5; Dkt. No. 244, 5/15/2015 Joint Claim Construction and Prehearing
Statement, at 2.).
IV. CONSTRUCTION OF DISPUTED TERMS
A. “endorsement tag”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“an active link including a unique identifier”
“an active link including a unique identifier to
allow viewing and tracking of advertisements,
source communication devices and event
identifications”
Page 9 of 44
(Dkt. No. 253, at 2.) The parties submit that this term appears in Claims 1 and 6 of the ’679
Patent, Claims 2 and 12 of the ’055 Patent, and Claim 4 of the ’646 Patent. (Dkt. No. 244,
Ex. A, at 2.)
(1) The Parties’ Positions
Plaintiff has argued:
The specification of the ’055 patent, when considered as a whole, describes the
endorsement tag consistent with the other patents-in-suit as “a serialized URL link
that when activated causes an advertisement to be sent from a third party
intermediary to the destination communication device over the network.”
’055 patent, col. 1:56-65. The extra limitations sought by the Defendants—
regarding using the unique identifier for tracking or viewing advertisements,
source communication devices, and event identification—appear in dependent
claims, such as dependent claim 4 of the ’055 patent (describing a first, second,
and third identifier components of the endorsement tag and their uses).
(Dkt. No. 163, at 16.).
Defendants have responded that “[t]he term appears in the ‘Definitions’ section of the
’055 Patent, and is defined as ‘an active link including a unique identifier to allow viewing of
advertisements and track [sic] an advertisement, source communication device and event
identification.’” (Dkt. No. 171, at 4 (quoting ’055 Patent at 3:11-14).) Defendants have also
argued that “[n]othing in Claim 4 of the ’055 Patent is rendered superfluous by the patentee’s
definition” because “[t]he patentee’s definition, urged by Defendants, does not specify the
method by which an ‘endorsement tag’ is created.” (Dkt. No. 171, at 4.)
Plaintiff has replied that “[t]he patent specifications are replete with the term
‘endorsement[,]’ [a]nd ‘tag’ is a term that is readily used by persons of ordinary skill in the art to
refer to an active link with a unique identifier . . . .” (Dkt. No. 175, at 5.) Plaintiff has further
argued that Defendants’ proposed construction would exclude an embodiment, disclosed in all of
the patents-in-suit, in which “the recipient receives an active link with a unique identifier (in this
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example, a hyperlink)—not one that, as Defendants propose, necessarily allow[s] viewing and
tracking of advertisements and source communication devices and event identification in all
instances.” (Id., at 6; see ’679 Patent at 5:32-44.) Finally, Plaintiff has replied that the definition
of “endorsement tag” in the ’055 Patent is consistent with Plaintiff’s proposed construction
because “the remainder of the definition merely states the intended or beneficial purpose for the
link, which may or may not appear in the dependent claims.” (Id., at 7).
In supplemental briefing, Defendants reiterate that the ’055 Patent and the ’646 Patent
expressly define the disputed term. (Dkt. No. 253, at 2-3.) Defendants submit that “[t]his
definition is reinforced by FIG. 9 of the ’055 Patent (FIG. 8 of the ’646 Patent), which describes
‘a method for the creation of a unique identifier’ that includes the incorporation of information
related to the ‘Source Communication Device,’ ‘Advertising Campaign Identification’ and
‘Impression Identification’ into the ‘Endorsement Tag.’” (Dkt. No. 253, at 3.)
Plaintiff responds that its proposed construction avoids jury confusion “by removing the
remainder clause that defines only potential, but not necessary, ways the active link could be
used.” (Dkt. No. 264, at 1.) Plaintiff also argues that Defendants’ proposal “read[s] out a
preferred embodiment in the parent ’679 patent.” (Id., at 2.) “Alternatively,” Plaintiff submits,
“the Court could avoid the potential for jury confusion by construing this term for the ’055 and
’646 patents to mean: “an active link including a unique identifier to allow viewing or tracking
of advertisements, source communication devices or event identifications.” (Id., at 1 n.1.)
(2) Analysis
Claim 1 of the ’679 Patent is representative and recites, in relevant part (emphasis
added):
1. In a system comprising a network, a source communication device, a
destination communication device and an intermediary connected to the network,
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said intermediary comprising a server adapted to execute a method for providing
advertising content from at least one advertiser of a group of advertisers to a
recipient associated with the destination communication device and for
subsidizing a qualified subscriber associated with the source communication
device comprising:
...
providing an endorsement tag related to the at least one advertiser of the
group of advertisers and linked with the advertising content;
transmitting to the qualified subscriber information for creating a content
communication that can be sent from the qualified subscriber to the recipient, the
content communication including the endorsement tag;
...
receiving a signal through execution of the endorsement tag to transmit
the advertising content; and,
transmitting the advertising content to the recipient.
The specification of the ’679 Patent discloses:
FIG. 7b describes a communication and the recording of historical data.
Subscriber 600 initiates a communication with contact 760 in step 790. At steps
792 and 794, the endorsement manager software inserts and sends an endorsement
and embedded link in the communication. The destination device accepts the
communication and embedded link and sends a response to the source device in
steps 796 and 798. The source device records the historical data in step 797.
FIG. 7c describes the data flow required for subsidy collection. At step 750, the
intermediary receives history data from the subscriber 600 reflecting a
communication with contact 760, such as a phone can [sic, call] where an
imbedded [sic, embedded] link has been sent in an endorsement message. At step
762, contact 760 follows the link embedded in the endorsement to the
advertisement data hosted by intermediary 640. Intermediary 640 monitors
historical data including the number of endorsements sent by subscriber 600 and
the number of recipients contacted by subscriber 600 that use the embedded link
to view the advertisement from the set of advertisements 664. Individual contacts
are identified by a unique identifier embedded in each endorsement sent by
subscriber 600 to contact 760. At step 766, the unique identifier is decoded by the
intermediary site 640, allowing identification of the contact 760 responding to the
endorsement. At step 751, the intermediary calculates the subsidy and analyzes
the subscriber history data and contact interaction history.
’679 Patent at 9:37-60 (emphasis added).
The ’055 Patent and the ’646 Patent, in a “Definitions” section, expressly refer to an
“endorsement tag” as “an active link including a unique identifier to allow viewing and tracking
Page 12 of 44
of advertisements, source communication devices and event identifications.” ’646 Patent at
3:20-22; see ’055 Patent at 3:10-13. The specification thus sets forth the language proposed by
Defendants. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)
(“The specification acts as a dictionary when it expressly defines terms used in the claims or
when it defines terms by implication.”). Further, in general, when “patents all derive from the
same parent application and share many common terms, we must interpret the claims
consistently across all asserted patents.” NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
1293 (Fed. Cir. 2005); Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003)
(“[W]e presume, unless otherwise compelled, that the same claim term in the same patent or
related patents carries the same construed meaning.”).
On balance, however, “to allow viewing and tracking of advertisements, source
communication devices and event identifications” is language describing intended beneficial
uses or purposes rather than defining the disputed term itself. See Howmedica Osteonics Corp.
v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (“The court’s task is not to
limit claim language to exclude particular devices because they do not serve a perceived
‘purpose’ of the invention.”) (quoting E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370
(Fed. Cir. 2003)).
The Court accordingly hereby construes “endorsement tag” to mean “an active link
including a unique identifier.”
B. “qualified subscriber”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain and ordinary meaning
“a person who meets the demographic criteria
of an advertiser”
Page 13 of 44
(Dkt. No. 253, at 3.) The parties submit that this term appears in Claims 1, 3, and 6 of the ’679
Patent. (Dkt. No. 244, Ex. A, at 2.)
(1) The Parties’ Positions
Defendants have argued that “qualified subscriber” is a “coined term” that is explicitly
defined by the patents-in-suit in a “Definitions” section. (Dkt. No. 171, at 20.) Plaintiff has
replied that “Defendants offer no reason why this term must be construed for all patents based
upon a definition in the ’055 Patent . . . .” (Dkt. No. 175, at 14.) Plaintiff has also argued that
“Defendants’ proposal excludes embodiments in which qualification depends upon capabilities
of the subscriber’s device.” (Id., at 15.)
In supplemental briefing, Defendants reiterate that the ’055 Patent expressly defines the
disputed term, and Defendants submit that “[t]he parties do not dispute that the claim term
‘qualified subscriber’ has the same definition in both the ’679 and ’055 Patents.” (Dkt. No. 253,
at 3.) Further, Defendants argue, “just because the specification discloses an embodiment with
additional criteria, which may also factor into the qualification of a subscriber, does not defeat
the clear import of the claim language, which conditions subscriber qualification on the existence
of a ‘match condition’ derived between advertiser and subscriber ‘profiles’—profiles which
explicitly include ‘demographic data.’” (Id., at 4 (citing ’679 Patent at Claim 1).)
Plaintiff responds by reiterating that “Defendants offer no reason why this term must be
construed for the ’679 patent based upon a definition in the later-filed ’055 patent.” (Dkt.
No. 264, at 3.)
(2) Analysis
The specifications of the ’055 Patent and the ’646 Patent refer to the disputed term in a
“Definitions” section: “‘Qualified Subscriber’: a person who meets the demographic criteria of
Page 14 of 44
an advertiser.” ’055 Patent at 3:27-28; ’646 Patent at 3:37-38. As noted above, the parties now
agree that as to the ’055 Patent and the ’646 Patent, the term “qualified subscriber” should be
construed as “a person who meets the demographic criteria of an advertiser.” (Dkt. No. 244,
5/15/2015 Joint Claim Construction and Prehearing Statement, at 2.)
The ’679 Patent contains no such express definition and, as Plaintiff notes, the
specification refers to communication habits as well as to capabilities of the subscriber’s device:
Once the subscriber’s profile is set up, in step 38, the intermediary 9 analyzes the
profile data and identifies advertisers 10 whose criteria for subsidy match the
subscriber’s criteria. For example, advertiser A offers static graphic media and
video media and advertiser B offers only audio media. Based on the media type
offered, the intermediary 9 qualifies those subscribers whose communication
devices have the capability to accept static graphics, video, and/or audio. The
intermediary 9 may also require the subscriber 1 to qualify for subsidy over a trial
period of time in order to quantify and qualify the calling habits of subscriber 1.
For example, the intermediary 9 may examine the usage history of subscribers
and qualify only those subscribers who are communicating with others most
frequently.
’679 Patent at 4:38-51 (emphasis added). Additionally, the specification of the ’679 Patent refers
to subscriber qualification based not only on demographic criteria but also on financial status:
FIG. 7a describes the bi-directional endorsement process between the subscriber
and the advertiser via the intermediary during the enrollment process. * * *
At step 700, subscriber 600 contacts intermediary 640 through network 650 using
source devices 602 and makes a subscription request including a request for
endorsement. At this step, subscriber 600 selects one or more potential endorsers
from [a] list of endorsement companies 644. Subscriber 600 submits application
604, including the selected endorsement companies and subscriber demographic
data, to intermediary 640. At step 701, an advertiser contacts intermediary 640.
Advertiser 660 submits one or more sets of desired demographic criteria to
intermediary 640.
At step 702, intermediary 640 correlates the subscriber data with the set of
demographic data criteria of the advertiser. A correlation value is assigned by
intermediary 640.
Page 15 of 44
In the preferred embodiment, the correlation value is calculated as a match value
or weighted percentage between the demographic criteria 646 and the subscriber
demographic data.
Other correlation routines can be used to provide additional metrics to the
subscriber and the advertiser related to the “match” of the subscriber
demographic data with the advertiser criteria. * * *
In another embodiment, credit reports of the subscriber from third parties may be
implemented to calculate a correlation value. Additionally, financial information
related to the subscriber, such as credit history or financial status may be
evaluated to arrive at a correlation value. At step 706, potential subscribers who
score lower than the required correlation value are recommended for rejection.
Alternatively at step 702, advertiser 660 receives a set of subscriber data from
intermediary 640. Advertiser 660 then correlates subscriber specific data 606
with desired audience demographic data 668 to derive a correlation value.
***
If a sufficient correlation value is achieved or the subscriber purchases an
endorsement, the subscriber is deemed a “qualified” subscriber. At step 710, the
advertiser notifies intermediary 640 of the endorsement and subsidy opportunities
for which the subscriber has been qualified. Intermediary 640 then notifies
subscriber 600, at step 712.
***
The bi-directional selection process allows the subscriber to select endorsers that
appeal to him. The advertiser then determines if the subscriber is qualified based
on a correlation between the subscriber’s demographics and those desired by the
advertiser. The subscriber’s contacts presumably share some, if not all, of the
subscriber’s demographics and interests. Therefore, the contacts provide a select
market and value to the advertiser, while requiring only a single demographic
comparison. This allows an advertiser to focus its endorsements on favorable
target markets without having to qualify each possible customer or examine
demographics of a large number of potentially bad prospects.
’679 Patent at 7:56-9:34 (emphasis added).
On balance, the above-quoted disclosures in the ’679 Patent demonstrate that in the
absence of an explicit definition of “qualified subscriber,” that term is broader than
“demographics,” even in light of the parties’ above-noted agreed-upon construction of
Page 16 of 44
“demographic” as meaning “related to education, employment, purchasing habits, interests,
hobbies, affiliations, age, gender, geographic location, or other data used to identify a target
market for a product or service.” (Dkt. No. 244, 5/15/2015 Joint Claim Construction and
Prehearing Statement, at 2.) For example, as quoted above, qualification of subscribers can
relate to device capabilities, financial information, or purchasing of endorsements.
Thus, because Defendants’ proposal would limit the disputed term to particular
embodiments disclosed in the specifications, Defendants’ proposal of “demographic criteria” is
hereby expressly rejected as to the ’679 Patent. See Innova/Pure Water, 381 F.3d at 1117
(“[P]articular embodiments appearing in the written description will not be used to limit claim
language that has broader effect.”); see also Phillips, 415 F.3d at 1323 (“[A]lthough the
specification often describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments.”). Such a reading is also reinforced
by surrounding claim language that expressly recites demographics where required. See ’679
Patent at Cl. 1 (reciting “a set of demographic requirements related to at least one advertiser” and
“a set of demographic data related to a subscriber).
Some construction is nonetheless warranted as to the ’679 Patent so as to minimize
confusion. See TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL
1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.) (“The Court believes that some
construction of the disputed claim language will assist the jury to understand the claims.”).
The Court therefore hereby construes “qualified subscriber” in the ’679 Patent to mean
“a person who meets the criteria of an advertiser.”
Page 17 of 44
C. “endorsement opportunity” and “endorsement opportunities”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain and ordinary meaning
“an opportunity to participate in an incentive
program, including a description of the
advertiser, advertising campaign,
advertisement and incentive program,
including incentive values offered”
(Dkt. No. 253, at 4.) The parties submit that these terms appear in Claims 2 and 12 of the ’055
Patent. (Dkt. No. 244, Ex. A, at 2.)
(1) The Parties’ Positions
Defendants have argued that “construction is required to provide a definite form to this
concept and distinguish it from the term ‘offer’ discussed above.” (Dkt. No. 171, at 28.)
Plaintiff has replied that “[a]n endorsement opportunity is just an opportunity to endorse,” and
Plaintiff has argued that the patentee did not redefine the term. (Dkt. No. 175, at 15.)
In supplemental briefing, Defendants argue that “Plaintiffs’ proposed plain and ordinary
meaning construction attempts to broaden this term beyond its express definition in the ’055
Patent.” (Dkt. No. 253, at 4.) Defendants urge that “[e]very reference to an ‘endorsement
opportunity’ appearing in the ’055 Patent is consistent with that term’s express definition,” and
“[t]hat express definition is the only guidance provided in the patent for construing the disputed
claim term.” (Id., at 5.) Further, Defendants note, the specification expressly defines related
terms such as “endorsement,” “endorsement tag,” “endorsement identifier,” and “endorser.”
(Id.)
Plaintiff responds that Defendants’ proposed construction “improperly reads in
characteristics of a singular embodiment in the specification.” (Dkt. No. 264, at 3.) Plaintiff
Page 18 of 44
argues that “[t]here is no specific catalog of things the information must contain other than an
opportunity to endorse an advertiser or advertisement.” (Id., at 4.)
(2) Analysis
The specification of the ’055 Patent discloses:
At step 162 [in Figure 5A], the intermediary returns a list of endorsement
opportunities for which the subscriber is “qualified.” Each endorsement
opportunity includes a description of the advertiser, advertising campaign,
advertisement and incentive program including incentive values offered.
’055 Patent at 10:1-5. The specification of the ’055 Patent also includes a “Definitions” section
that defines “endorsement” as “an event of sending an endorsement tag to a recipient.” Id.
at 3:8-9.
On balance, particularly in light of this express definition of the constituent term
“endorsement,” the disputed terms require no further construction. The above-quoted disclosure
regarding “[e]ach endorsement opportunity” pertains to features of particular embodiments that
should not be imported into the claims. See Innova/Pure Water, 381 F.3d at 1117 (“[P]articular
embodiments appearing in the written description will not be used to limit claim language that
has broader effect.”); see also Phillips, 415 F.3d at 1323 (“[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments.”). Defendants’ proposal of a list of specific features
is therefore hereby expressly rejected.
The Court accordingly hereby construes “endorsement opportunity” and
“endorsement opportunities” to have their plain meaning.
Page 19 of 44
D. Preambles
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Preambles are not limiting in the manner
Defendants propose.
Preambles are limiting:
“subsidizing qualified subscriber with
source communication device associated with
providing advertising content to recipient with
destination communication device” (’679
Patent)
“incentivizing subscriber associated with
source communication device associated with
providing advertising content to a first
recipient with first destination communication
device” (’055 & ’646 Patents)
(Dkt. No. 253, at 6.) The parties submit that the disputed preambles are in Claim 1 of the ’679
Patent, Claims 2 and 12 of the ’055 Patent, and Claim 4 of the ’646 Patent. (Dkt. No. 244,
Ex. A, at 1.)
(1) The Parties’ Positions
Defendants argue that “[a]s captured in the preamble and specification of the asserted
patents, the alleged invention relates fundamentally to the concept of subsidizing or incentivizing
a person who receives a targeted advertisement to share or refer that advertisement with
another.” (Dkt. No. 253, at 6; see id. at 6-7.) Defendants submit that in Covered Business
Method Patent Review (“CBM”) proceedings, Plaintiff asserted, and the PTO’s Patent Trial and
Appeals Board (“PTAB”) found, that certain preambles are limiting. (Id., at 7.) Defendants
conclude: “Plaintiffs are trying to have it both ways. Plaintiffs need the preambles to be limiting
to avoid having invalid claims for lack of antecedent basis, but want to disclaim all other aspects
of the preambles, including the core concept of the patents—the relationship between the subsidy
or incentive and the act of sharing or endorsing an advertisement.” (Id., at 8.) Defendants
conclude: “As not only does the preamble give life and meaning to the claim but is also
Page 20 of 44
necessary to avoid the invalidity of the claims, the Court should hold that the preambles are
limiting for all aspects including the association between the subsidizing or incentivizing of the
subscriber and the act of providing advertisements from the subscriber to a destination device.”
(Id.)
Plaintiff responds that the preamble language referring to a “method for providing
advertising content to a recipient,” as well as for “subsidizing a qualified subscriber,” “is only
purposeful language, which is not limiting.” (Dkt. No. 264, at 5.) Plaintiff also urges that “[t]he
plain language of the preamble does not require that subsidizing occur in response to providing
advertising content.” (Id., at 6.)
(2) Analysis
Claim 1 of the ’679 Patent, for example, recites (emphasis added):
1. In a system comprising a network, a source communication device, a
destination communication device and an intermediary connected to the network,
said intermediary comprising a server adapted to execute a method for providing
advertising content from at least one advertiser of a group of advertisers to a
recipient associated with the destination communication device and for
subsidizing a qualified subscriber associated with the source communication
device comprising:
obtaining a first profile from the at least one advertiser in the group of
advertisers including a set of demographic requirements related to at least one
advertiser of a group of advertisers and storing the first profile by the
intermediary;
obtaining a second profile from the source communication device
including a set of demographic data related to a subscriber and storing the second
profile by the intermediary;
deriving a match condition between the first profile and the second profile;
determining if the subscriber is a qualified subscriber based on the match
condition;
conditioning a set of subsidy programs based on the match condition;
communicating a subsidy program of the set of subsidy programs to the
qualified subscriber;
receiving one or more selections of the at least one advertiser of the group
of advertisers and of the chosen subsidy program from the set of subsidy
programs;
Page 21 of 44
providing an endorsement tag related to the at least one advertiser of the
group of advertisers and linked with the advertising content;
transmitting to the qualified subscriber information for creating a content
communication that can be sent from the qualified subscriber to the recipient, the
content communication including the endorsement tag;
subsidizing the qualified subscriber according to the chosen subsidy
program;
receiving a signal through execution of the endorsement tag to transmit the
advertising content; and,
transmitting the advertising content to the recipient.
In CBM proceedings as to the ’679 Patent, the PTAB found:
After Institution, Patent Owner contends that the preambles of the challenged
claims are limiting. Patent Owner contends that the preambles provide antecedent
basis for limitations in the body of independent claims 7 and 23. As such, Patent
Owner contends that “the preambles provide explicit structure to the relationship
of certain components of the invention that give life, meaning and vitality to the
claimed invention.”
We agree. * * *
Notably, the preamble of independent claim 7 requires “a source communication
device possessed by a subscriber,” “a destination communication device
possessed by a recipient,” and “an advertisement.” The body of claim 7 recites
“the source communication device,” “the subscriber,” “the destination
communication device,” and “the advertisement,” all of which rely on and derive
antecedent basis from the preamble of claim 7. Similarly, the preamble of
independent claim 23 recites “a first communication device,” “a second
communication device,” and “a set of advertisers.” The body of claim 23 recites
“the first communication device,” “the second communication device,” and “the
set of advertisers.” Accordingly, we conclude that the preambles of independent
claims 7 and 23 are entitled to patentable weight.
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision,
at 18-19 (P.T.A.B. Dec. 17, 2014) (citations omitted).)
Defendants urge that “this same conclusion, for the exact same reasons, applies to all of
the remaining asserted claims. In fact, during discussions with Plaintiffs, Plaintiffs have
conceded that the remaining preambles are limiting, and the disagreement centers solely on
Page 22 of 44
whether they are limiting for the sole purpose of providing antecedent basis for numerous terms
or whether the preambles are limiting for all purposes.” (Dkt. No. 253, at 8.)
In general, a preamble limits the invention if it recites essential structure or steps,
or if it is “necessary to give life, meaning, and vitality” to the claim. Pitney
Bowes[, Inc. v. Hewlett-Packard Co.], 182 F.3d [1298,] 1305 [(Fed. Cir. 1999)].
Conversely, a preamble is not limiting “where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention.” Rowe v. Dror, 112 F.3d 473, 478,
42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); see, e.g.,
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“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.”).
In general, “the purpose or intended use of the invention . . . is of no significance to claim
construction . . . .” See Pitney Bowes, 182 F.3d at 1305.
Here, however, because “the claim drafter cho[se] 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 (Fed. Cir. 1995). The entireties of the preambles are limiting. See Proveris
Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014) (“The phrase ‘the
image data’ clearly derives antecedent basis from the ‘image data’ that is defined in greater
detail in the preamble as being ‘representative of at least one sequential set of images of a spray
plume.’”) (emphasis added). This analysis applies to all of the claims at issue.
At the July 8, 2015 hearing, Plaintiff cited TomTom Inc. v. Adolph, --- F.3d ----, 2015 WL
3814937 (Fed. Cir. June 19, 2015) (“That [a] phrase in the preamble . . . provides a necessary
structure for [the] claim . . . does not necessarily convert the entire preamble into a limitation,
Page 23 of 44
particularly one that only states the intended use of the invention.”). TomTom is distinguishable
because here, in all of the claims at issue, the language relied upon for antecedent basis is
intertwined with the entireties of the preambles such that the preambles cannot be parsed into
limiting and non-limiting portions.
The Court therefore hereby construes Claim 1 of the ’679 Patent, Claims 2 and 12 of the
’055 Patent, and Claim 4 of the ’646 Patent such that the preambles are limiting.
E. “subsidy” and “subsidizing”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“[provide/providing] value or savings to
another”
“financial assistance given by one to another”
(Dkt. No. 253, at 10.) The parties submit that these terms appear in Claim 1 of the ’679 Patent.
(Dkt. No. 244, Ex. A, at 2.) 4
(1) The Parties’ Positions
Plaintiff has argued that Defendants’ proposal improperly excludes preferred
embodiments, such as “product discounts,” “rewards points,” or anything else of value that
serves as an incentive for the subscriber. (Dkt. No. 163, at 18; see ’679 Patent at 3:39-48.)
Defendants have responded:
Plaintiff attempts to improperly broaden the term Subsidy to include any type of
incentive. The term Subsidy is not complex. Ordinary usage would indicate that
if a subscriber’s purchase is being subsidized, then someone other than the
subscriber is mitigating or deferring a portion of the price the subscriber would
otherwise pay. Defendants’ construction is consistent with this plain and ordinary
meaning as well as the use of the term in the specification. The specification
makes it clear that the types of incentives that are “subsidies” are those that
mitigate or defer subscriber expenses . . . .
4
The parties also submitted the word “subsidize” for construction, but that term does not appear
in the only claim identified by the parties, namely Claim 1 of the ’679 Patent.
Page 24 of 44
Plaintiff’s proposed broad construction makes a Subsidy equivalent to an
Incentive . . . .
(Dkt. No. 171, at 22-23.)
Plaintiff has replied that Defendants’ proposed construction is too narrow because “[t]he
patents broadly use the word ‘subsidy’ to include things such as levels of discounts, credits,
points, offerings, and other types of subsidies or incentives . . . .” (Dkt. No. 175, at 8 (citation
and internal quotation marks omitted).)
In supplemental briefing, Defendants submit that “Plaintiffs advance essentially the same
construction of the term ‘subsidy’ that was already rejected by the PTAB.” (Dkt. No. 253, at 8.)
Plaintiff responds that “[t]he problem with Defendants’ proposal is that their construction
will confuse the jury into thinking that a subsidy must involve the exchange of money. The
PTAB did not agree with that thinking when it issued its construction for ‘subsidy.’” (Dkt.
No. 264, at 6.) Plaintiff notes that “the PTAB expressly stated that reward points were financial
in nature because they were ‘a form of currency.’” (Id., at 7 (citing Dkt. No. 253, Ex. A,
Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision, at 7 (P.T.A.B. Dec. 17,
2014)).)
(2) Analysis
The PTAB found:
The ’679 patent does not set forth a special definition for “subsidy.” Accordingly,
we look to the ordinary meaning of the term “subsidy”— financial assistance
given by one to another. The ’679 patent’s use of “subsidy” is consistent with its
ordinary meaning. Specifically, the ’679 patent describes an advertiser setting up
a subsidy program to subsidize communication fees, offer product discounts,
generate and accumulate “reward points” for subscribers, or mitigate or defer
other expenses of the subscriber. [’679 Patent], col. 3, ll. 39-45 (referring to Fig.
2). These examples are financial in nature. Product discounts reduce the
monetary cost of a financial transaction, reward points are a form of currency, and
mitigating or deferring expenses reduces the monetary cost of a financial
transaction or postpones the monetary cost of a financial transaction, respectively.
Page 25 of 44
Also, the ’679 [Patent] describes, as part of a subscriber setup process, an
intermediary presenting, to a subscriber for selection, “subsidy programs
available, [’679 Patent], col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4,
ll. 16-17. In an example of a bi-directional endorsement process, the ’679 patent
further describes an advertiser calculating the amount to subsidize the subscriber
for endorsement, noting that some subscribers may receive a larger subsidy than
other subscribers. [’679 Patent], col. 8, ll. 47-53 (referring to Fig. 7a); see id. at
col. 7, l. 56.
For these reasons, in the Decision to Institute, the Board construed “subsidy” as
“financial assistance given by one to another.” Inst. Dec. 9-11. Neither party
challenges this construction. Having considered whether the construction set
forth in the Decision to Institute should be changed in light of evidence
introduced during trial, we are not persuaded any modification is necessary.
Therefore, we maintain the construction of “subsidy” as “financial assistance
given by one to another.”
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision,
at 7-8 (P.T.A.B. Dec. 17, 2014) (footnote omitted); id. at 7 n.5 (“AMERICAN HERITAGE
DICTIONARY 896 (3d ed. 1992) (defining “subsidy” as “1. Monetary assistance granted by a
government to a person or group in support of an enterprise regarded as being in the public
interest. 2. Financial assistance given by one person or government to another.”)).)
Claim 1 of the ’679 Patent, for example, recites (emphasis added):
1. In a system comprising a network, a source communication device, a
destination communication device and an intermediary connected to the network,
said intermediary comprising a server adapted to execute a method for providing
advertising content from at least one advertiser of a group of advertisers to a
recipient associated with the destination communication device and for
subsidizing a qualified subscriber associated with the source communication
device comprising:
obtaining a first profile from the at least one advertiser in the group of
advertisers including a set of demographic requirements related to at least one
advertiser of a group of advertisers and storing the first profile by the
intermediary;
obtaining a second profile from the source communication device
including a set of demographic data related to a subscriber and storing the second
profile by the intermediary;
deriving a match condition between the first profile and the second profile;
determining if the subscriber is a qualified subscriber based on the match
condition;
Page 26 of 44
conditioning a set of subsidy programs based on the match condition;
communicating a subsidy program of the set of subsidy programs to the
qualified subscriber;
receiving one or more selections of the at least one advertiser of the group
of advertisers and of the chosen subsidy program from the set of subsidy
programs;
providing an endorsement tag related to the at least one advertiser of the
group of advertisers and linked with the advertising content;
transmitting to the qualified subscriber information for creating a content
communication that can be sent from the qualified subscriber to the recipient, the
content communication including the endorsement tag;
subsidizing the qualified subscriber according to the chosen subsidy
program;
receiving a signal through execution of the endorsement tag to transmit the
advertising content; and,
transmitting the advertising content to the recipient.
The specification of the ’679 Patent discloses:
In step 26, advertisers 10 set up a subsidy program. The subsidy program 13
enables advertisers 10 to select or endorse desirable subscribers in order to
subsidize the communication fees, offer its own product discounts or other
company’s product discounts, generate and accumulate “rewards points” for the
subscribers, and mitigate or defer other expenses of the subscriber 1. The
advertisers 10 may provide other types of subsidies or incentives to the
subscribers 1 without departing [from] the spirit and scope of the present
disclosure.
’679 Patent at 3:39-50 (emphasis added).
This disclosure demonstrates the broad, generic sense in which the patentee used the
terms “subsidy” and “subsidizing.” As discussed by the PTAB, above, the disputed term is not
limited to monetary currency but rather includes, for example, “rewards points,” as Plaintiff has
suggested. See id.; see also id. at Claim 11 (“wherein the step of providing a subsidy program
further comprises the step of relating the subsidy to one of the group of a product discount, a
reward, and a mitigation of expenses”). Because the word “financial” might be read by a finder
of fact as limited to monetary currency, the Court reaches a construction different from the
PTAB construction that Defendants propose here.
Page 27 of 44
The Court accordingly hereby construes “subsidy” and “subsidizing” to mean
“[providing] value or savings to another.”
F. “subsidy program”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a system designed to give value or savings to
another”
“a system of opportunities designed to give
financial assistance to another”
(Dkt. No. 253, at 10.) The parties submit that this term appears in Claim 1 of the ’679 Patent.
(Dkt. No. 244, Ex. A, at 3.)
(1) The Parties’ Positions
Defendants have argued that their proposed construction “is designed to harmonize this
term with Incentive Program, which the parties agree is ‘a set of rules governing an incentive
distribution.’” (Dkt. No. 171, at 24.) Plaintiff has replied that Defendants’ proposed
construction is “dependent upon Defendants’ improper proposed definition of ‘subsidy.’” (Dkt.
No. 175, at 15.)
In supplemental briefing, Defendants argue that their proposed construction “mirrors the
construction adopted by the PTAB during its CBM Review.” (Dkt. No. 253, at 10.)
Plaintiff responds:
It is not clear what “opportunities” means within the context of the patent. The
PTAB did not explain why it selectively drew that particular term from a
dictionary definition when it proffered that construction in the CBM preliminary
decision. But what is clear is that Defendants intend to argue that “opportunities”
is necessarily plural. Nothing in the PTAB’s reasoning requires that a subsidy
program has multiple “opportunities.”
(Dkt. No. 264, at 8.)
(2) Analysis
The PTAB found:
Page 28 of 44
The ’679 patent does not set forth a special definition for “subsidy program.” The
’679 patent’s use of “subsidy program” is consistent with the construction of
“subsidy” to mean “financial assistance given by one to another” and the ordinary
meaning of “program”—a system of services, opportunities, or projects, usually
designed to meet a social need. For example, in relation to an advertiser setting
up a subsidy program, the ’679 patent describes a subsidy program as enabling
advertisers “to select or endorse desirable subscribers” and enabling advertisers to
identify “what level of discounts, credits, points, or offerings” a subscriber would
receive as a subsidy. [’679 Patent], col. 3, ll. 39-45, 51-54. The ’679 patent also
describes an intermediary presenting, to a subscriber for selection, “subsidy
programs available, including the criteria for continued subsidy and levels of
subsidy.” [’679 Patent], col. 4, ll. 59-65.
For these reasons, in the Decision to Institute, the Board construed “subsidy
program” as “a system of opportunities designed to give financial assistance to
another.” Inst. Dec. 11-13.
***
. . . [W]e are not persuaded any modification to the construction is necessary.
Therefore, we maintain the construction of “subsidy program” as “a system of
opportunities designed to give financial assistance to another.”
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision,
at 8-11 (P.T.A.B. Dec. 17, 2014) (footnote omitted); id. at 9 n.6 (“AMERICAN HERITAGE
DICTIONARY 1447 (3d ed. 1992) (defining ‘program’ as ‘4. A system of services,
opportunities, or projects, usually designed to meet a social need’)”).)
The specification of the ’679 Patent discloses:
In addition, the subsidy program 13 enables advertisers 10 to identify what level
of discounts, credits, points, or offerings the subscriber 1 receives as a subsidy in
accordance with certain performance criteria. An example of performance
criteria includes the number of communication transmissions the subscriber had
[sic, has] made and the length of the transmissions.
’679 Patent at 3:51-56 (emphasis added).
On balance, the PTAB’s use of “financial,” which Defendants proposed here, is
unpersuasive for substantially the same reasons as for the other “subsidy” terms, discussed
Page 29 of 44
above. Finally, Defendants have not shown adequate support for requiring multiple
“opportunities.”
The Court therefore hereby construes “subsidy program” to mean “a system designed
to give value or savings to another.”
G. “testimonial tag”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“active link associated with a testimonial”
Indefinite
(Dkt. No. 253, at 11.) The parties submit that this term appears in Claims 2 and 3 of the ’055
Patent. (Dkt. No. 244, Ex. A, at 3.)
(1) The Parties’ Positions
Defendants argue that this disputed term “is never used nor defined in the ’055 Patent
outside of the claims, and has no ordinary or customary meaning to one of skill in the art.
Plaintiffs’ construction of this term attempts to conflate ‘testimonial tag’ with ‘endorsement tag,’
a separate claim term that is defined in the specification of the ’055 Patent.” (Dkt. No. 253,
at 11.)
Plaintiff responds that “because ‘testimonial’ has already been construed, the only dispute
is to [sic] the proper construction of ‘tag.’” (Dkt. No. 264, at 9.)
(2) Analysis
Defendants rely upon a finding by the PTAB that the term “endorsement tag” lacks
written description in related United States Patent No. 7,664,516. (See Dkt. No. 253, Ex. C,
Groupon, Inc. v. Blue Calypso, Inc., Paper 45, Final Written Decision, at 34-38 (P.T.A.B.
Page 30 of 44
Dec. 17, 2014).) 5 Thus, what Defendants have labeled here as an indefiniteness argument
pursuant to 35 U.S.C. § 112, ¶ 2 appears to be a written description challenge pursuant to
35 U.S.C. § 112, ¶ 1. Because claim construction proceedings generally do not address written
description challenges, Defendants’ “indefiniteness” argument is hereby expressly rejected. See
Phillips, 415 F.3d at 1327 (“[W]e have certainly not endorsed a regime in which validity analysis
is a regular component of claim construction.”)
Nonetheless, Defendants’ argument is premised on a matter of claim interpretation. The
parties dispute the proper construction of “testimonial tag.” As noted above, the Court adopts
the parties’ agreed-upon construction that “testimonial” means “a text message, picture, audio or
video message associated with an advertiser, advertisement or advertising program.” (Dkt. No.
151, 10/4/2013 Joint Claim Construction and Prehearing Statement, at 2; Dkt. No. 163 at 27;
Dkt. No. 171, at 5; Dkt. No. 244, 5/15/2015 Joint Claim Construction and Prehearing Statement,
at 2.).
The remaining dispute is whether a “tag” is an “active link,” as Plaintiff has proposed.
The following paragraph of the specification, cited by Plaintiff as support for its presently
proposed construction, discloses as follows with reference to Figure 7:
The endorsement manager program “associates” the testimonial with an
advertisement by appending the endorsement tag related to a participating
advertising campaign or advertisement to the testimonial file. In step 314, the
source communication device uploads the endorsement tag and the testimonial
file to the intermediary. At step 315, testimonial manager 109 functions are
started and the testimonial is stored by the intermediary and associated with the
advertising campaign or advertisement and the subscriber in the database. In
step 316, an actionable link is enabled to allow[] viewing of the associated
testimonial within the advertisement. At step 317, the testimonial is made
available for viewing and editing via the website portal.
5
The PTAB found unpersuasive Plaintiff’s argument that the term “tag” corresponded to the
disclosure of “an executable link, such as a hyperlink.” (See id. at 36-37.)
Page 31 of 44
’055 Patent at 13:32-44 (emphasis added). At the July 8, 2015 hearing, Defendants countered
that Figure 7 does not illustrate creation of a testimonial tag at the source communication device,
which is recited in Claim 2 of the ’055 Patent. Regardless of whether this is so, Figure 7 and the
associated written description provide probative context as to meaning of “tag” and “testimonial
tag.”
Also of note, although the parties present competing proposed constructions for the term
“endorsement tag” (addressed above), both proposals refer to “an active link including a unique
identifier.” Defendants’ argument that Plaintiff is conflating the terms “endorsement tag” and
“testimonial tag” is unpersuasive because whereas both sides propose that an “endorsement tag”
is “an active link including a unique identifier,” Plaintiff proposes that a “testimonial tag” is an
“active link associated with a testimonial.”
In light of the above-quoted disclosure, as well as the parties’ positions as to
“endorsement tag,” Plaintiff’s proposed construction is appropriate.
The Court therefore hereby construes “testimonial tag” to mean “active link associated
with a testimonial.”
H. “set”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a collection of one or more”
“at least two”
(Dkt. No. 253, at 14; Dkt. No. 270, Ex. A, at 1.) The parties submit that this term appears in
Claims 1 and 5 of the ’679 Patent, Claims 2 and 12 of the ’055 Patent, and Claims 4, 6, and 8 of
the ’646 Patent. (Dkt. No. 244, Ex. A, at 2.)
Page 32 of 44
(1) The Parties’ Positions
Plaintiff has argued that Defendants’ proposal is incorrect because “it is understood that a
set may only contain one element.” (Dkt. No. 163, at 24 (citing extrinsic evidence that is quoted
below).) Plaintiff has also submitted that “[i]f the inventors intended what the Defendants argue,
the inventors would have instead used the word ‘plurality,’ which is a commonly used term of art
in patent claim draft[ing] when two or more elements are a material part of a claim.” (Id.)
Plaintiff has also cited Claim 6 of the ’646 Patent, as to which Plaintiff has argued that
“comparing, by the intermediary, the set of time stamp data to the set of time restrictions” could
refer to “compar[ing] one time stamp to another time stamp.” (Id., at 25.) Finally, Plaintiff has
argued that “[t]he claimed invention still works as described in the specification if there is only
one data point in the set” of demographic requirements. (Id.).
Defendants have responded that “[i]n every instance where the patents define a Set, the
Set is a plurality of elements.” (Dkt. No. 171, at 15.) As to Plaintiff’s argument that the patentee
would have used the term “plurality” if two or more elements were required, Defendants have
responded that “[i]t is more plausible that if the patentee intend[ed] Set to conform to Plaintiff’s
proposed definition, he would have used the term[] ‘at least one,’ which is also a commonly used
term of art in patent claim drafting when one or more elements are a material part of the claim.”
(Id., at 16.) Defendants have noted that the patentee indeed used “at least one” in some of the
claims, such as in Claim 1 of United States Patent No. 7,664,516. (Id.)
Plaintiff has replied that Defendants “do not (and cannot) argue that the claimed
invention would fail to work if a set only included one element.” (Dkt. No. 175, at 11.) Plaintiff
has also argued that “[t]he patentee uses ‘set’ to refer to a collection of one or more items (e.g.
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set of demographic data, set of geographic coordinates, and set of time restrictions) and uses ‘at
least one’ to refer to selections, choices, and relations from a set.” (Id., at 11.)
In supplemental briefing, Defendants reiterate that “[i]n every instance where the patents
define a ‘set,’ the ‘set’ is a plurality of elements, such as rules, companies, and applications.”
(Dkt. No. 253, at 14.)
Plaintiff responds that “Defendants’ proposed construction ignores th[e] common
understanding of ‘set’ to improperly and arbitrarily limit its scope to a set containing two or more
elements.” (Dkt. No. 264, at 10.)
(2) Analysis
Defendants have cited the proposition that “[i]n the absence of any evidence to the
contrary, we must presume that the use of these different terms in the claims connotes different
meanings.” CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317
(Fed. Cir. 2000). Claim 1 of the ’679 Patent, for example, uses the term “set” as well as the
phrase “at least one,” and Claim 1 of the ’055 Patent (from which two of the claims at issue
depend) recites, in relevant part (emphasis added): “a selection of at least one endorsement
opportunity from the set of endorsement opportunities.”
As for the specification, the ’679 Patent 6 uses the term “set” in plural contexts but does
not specify that a “set” necessarily includes at least two members:
Advertisers 10 also have the ability to identify when and how to apply each
advertisement media type based upon a set of rules or logic defined by either the
advertisers 10 themselves or the intermediary 9.
***
6
Defendants have not cited any different or additional disclosures in the other two patents at
issue. (See Dkt. No. 171, at 15-17; Dkt. No. 253, at 14-16.)
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FIG. 6 is a diagram showing communication between the subscriber,
intermediary, and the endorsement companies (advertisers). The set of
subscribers 600, 610 and 620 possess source devices 602, 612 and 622.
***
Subscriber 600 communicates with intermediary 640 through source device 602,
network 650 and the intermediary’s server 642. Subscriber 600 communicates
with any of the set of endorsement companies 660 through source device 602,
network 650 and set of endorsement companies’ servers 662.
Intermediary 640 communicates with network 650 through intermediary’s server
642. Additionally, list of endorsement companies 644, set of subscriber
applications 647 and software application for subscriber’s devices 648 reside on
intermediary’s server 642.
’679 Patent at 4:3-6, 6:58-61 & 7:17-27 (emphasis added).
A permissive reading of the term “set” is also bolstered by Plaintiff’s extrinsic evidence.
Plaintiff has cited a dictionary that defines “set” as “[a] collection of distinct elements that have
something in common” (Dkt. No. 163, Ex. 13, The American Heritage Science Dictionary 563
(2d ed. 2009); see id., Ex. 14, Chambers Concise Dictionary 1124 (2d ed. 2009) (similar)).
Plaintiff has also cited extrinsic evidence that the term “set” can be used to refer to a collection
that contains only one element (id., Ex. 17, Eric W. Weisstein, “Nonempty set,” MathWorld--A
Wolfram Web Resource, http://mathworld.wolfram.com/NonemptySet.html (“a set containing
one or more elements”); id., Ex. 18, Margherita Barile, “Singleton set,” MathWorld--A Wolfram
Web Resource, http://mathworld.wolfram.com/SingletonSet.html (“A set having exactly one
element . . . .”)).
Finally, at least one legal authority cited by Plaintiff is in general agreement, albeit in the
context of a different patent. See CEATS, Inc. v. Continental Airlines, Inc., No. 2012-1614, 526
F. App’x 966 (Fed. Cir. Apr. 26, 2013) (as to a “sets of seats” limitation in patents directed to
reserving seats, such as on airplanes or at events, finding that “the jury could reasonably find that
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a ‘set’ could be comprised entirely of a single individual seat”). This authority is more
persuasive than the Mobile Telecommunications decision cited by Defendants. See Mobile
Telecomms. Techs., LLC v. Clearwire Corp., No. 2:12-CV-308, 2013 WL 3339050, at *4 (E.D.
Tex. July 1, 2013) (Payne, J.).
On balance, nothing in the claim language demands that a “set of demographic
requirements,” for example, must include multiple demographic requirements. See, e.g., ’679
Patent at Claim 1. Further, construing “set” to mean “a collection of one or more,” as Plaintiff
has proposed, sufficiently distinguishes a “set” from “at least one” so as to avoid or overcome
the above-noted CAE Screenplates presumption cited by Defendants (to whatever extent that
presumption may be applicable).
The Court accordingly hereby construes “set” to mean “a collection of one or more.”
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I. “content communication that can be sent from the qualified subscriber to the recipient”
and “content communication between the first source communications device and the first
destination communication device”
“content communication that can be sent from the qualified subscriber to the recipient”
(’679 Patent)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain and ordinary meaning
“a single correspondence sent by the subscriber
and received by a recipient via their respective
communication devices using two-party
communications”
“content communication between the first source communications device and the first
destination communication device” (’055 & ’646 Patents)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain and ordinary meaning
“a single correspondence sent by the source
communication device and received by the first
destination communication device using twoparty communications”
(Dkt. No. 253, at 16.) The parties submit that these terms appear in Claims 1, 3, and 6 of the
’679 Patent, Claims 2 and 12 of the ’055 Patent, and Claim 4 of the ’646 Patent. (Dkt. No. 244,
Ex. A, at 1.)
(1) The Parties’ Positions
Defendants have argued that “the patents relate to inserting advertisements into
communication sessions between subscribers and known recipients.” (Dkt. No. 171, at 14.)
Defendants have also argued that “[t]hroughout the specifications and even in Plaintiff’s opening
claim construction brief, the purported invention is described in the context of ‘two-way
communication systems.’” (Id.). Further, Defendants have argued, even in the context of pagers
“some paging systems offer two-way communication.” (Id. (citing id., Ex. D, Newton’s Telecom
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Dictionary 691 (23rd ed. 2007)).) Finally, Defendants have submitted that “[n]one of the
specifications discuss or suggest the insertion of advertisements into social media or blog posts,
articles, tweets, pins or other one-to-many or many-to-many communication formats.” (Id.,
at 15.)
Plaintiff has replied that Defendants’ proposed construction “[i]mproperly reads in ‘twoway’ communication despite explicit ‘one-way’ embodiments disclosed in the patents such as
pagers.” (Dkt. No. 175, at 14.)
In supplemental briefing, Defendants argue that “in all situations in which the patents
describe processes involving ‘content communications,’ the patentees expressly contemplate
direct, two-party communications intended for a discrete recipient.” (Dkt. No. 253, at 16.)
Plaintiff responds: “The dispute for this term is a prime example of a Defendant reading
in one embodiment and ignoring others. The plain language of the terms do not limit the means
of communication to exclude the multitude of indirect communication forms where the
communication involves other parties.” (Dkt. No. 264, at 11.)
(2) Analysis
Claim 1 of the ’679 Patent is representative and recites, in relevant part (emphasis
added):
1. In a system comprising a network, a source communication device, a
destination communication device and an intermediary connected to the network,
said intermediary comprising a server adapted to execute a method for providing
advertising content from at least one advertiser of a group of advertisers to a
recipient associated with the destination communication device and for
subsidizing a qualified subscriber associated with the source communication
device comprising:
...
communicating a subsidy program of the set of subsidy programs to the
qualified subscriber;
Page 38 of 44
receiving one or more selections of the at least one advertiser of the group
of advertisers and of the chosen subsidy program from the set of subsidy
programs;
providing an endorsement tag related to the at least one advertiser of the
group of advertisers and linked with the advertising content;
transmitting to the qualified subscriber information for creating a content
communication that can be sent from the qualified subscriber to the recipient, the
content communication including the endorsement tag;
subsidizing the qualified subscriber according to the chosen subsidy
program;
receiving a signal through execution of the endorsement tag to transmit the
advertising content; and,
transmitting the advertising content to the recipient.
Figure 4 of the ’679 Patent depicts a “communication process,” and “[i]n step 54, the
endorsement manger software 14 formats the transmission by inserting the appropriate
advertiser’s advertisement preceding and/or following the transmission.” ’679 Patent at 5:25-28.
Then, “[i]n step 58, once the transmission is formatted, the endorsement manager software 14
sends the communication transmission to the communication destination 8.” Id. at 5:32-34. The
’679 Patent also discloses “[o]ther scenarios” where “the destination communication device 7
may insert the advertising media into the communication session.” Id. at 6:48-57.
The ’055 Patent and the ’646 Patent also refer to communications occurring in
“sessions”: “mobile communication devices encourage the recipient of a communication to
accept advertisements because the session is identified as being initiated by a known contact.”
’055 Patent at 2:23-25 (emphasis added); ’646 Patent at 2:20-22. Also, each of the specifications
describes a communication session initiated by a known contact of the recipient. Id.; ’679 Patent
at 6:40-43; ’055 Patent at 1:43-47; ’646 Patent at 1:40-44. Further, the Background of the
Invention begins by referring to “two-way communication systems.” ’679 Patent at 1:17-18
(“As peer-to-peer and mobile technologies evolve into highly sophisticated two-way
communication systems . . . .”); ’055 Patent at 1:28-30 (similar); ’646 Patent at 1:25-27 (similar).
Page 39 of 44
Nonetheless, Defendants have not adequately justified their proposal of requiring a
“single” correspondence or a “two-way” or “two-party” communication session. Instead, these
are features of “particular embodiments appearing in the written description [that] will not be
used to limit claim language that has broader effect.” Innova/Pure Water, 381 F.3d at 1117;
accord Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining the claims to those
embodiments.”). In particular, Defendants have not demonstrated that the disputed terms
exclude multi-party communications. The Court therefore hereby expressly rejects Defendants’
proposed construction.
Defendants’ proposal having thus been rejected, no further construction is necessary. See
U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (“Claim construction
is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary
to explain what the patentee covered by the claims, for use in the determination of infringement.
It is not an obligatory exercise in redundancy.”); see also O2 Micro, 521 F.3d at 1362 (“[D]istrict
courts are not (and should not be) required to construe every limitation present in a patent’s
asserted claims.”); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010)
(“Unlike O2 Micro, where the court failed to resolve the parties’ quarrel, the district court
rejected Defendants’ construction.”).
The Court accordingly hereby construes “content communication that can be sent
from the qualified subscriber to the recipient” and “content communication between the
first source communications device and the first destination communication device” to have
their plain meaning.
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J. “conditioning . . . based on”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain and ordinary meaning
“making a choice . . . determined by”
(Dkt. No. 253, at 19.) The parties submit that this term appears in Claim 1 of the ’679 Patent and
Claims 2 and 12 of the ’055 Patent. (Dkt. No. 244, Ex. A, at 1.)
(1) The Parties’ Positions
Defendants have submitted: “[T]he issue perceived by Defendants is that the phrase
requires that the choice being made (of subsidy programs, endorsement opportunities, or the
advertisement) must be determined by or dependent on the specified item (the match condition or
the set of data),” as opposed to being “the same regardless of what is being referred and
regardless of how strong of a match, if any, was made between the demographics of the
subscriber and the advertiser.” (Dkt. No. 171, at 17.) Defendants have concluded that “the
endorsement opportunities (or subsidies/etc.), for a subscriber must be determined by or are
dependent on the matching process between the demographic information from the subscriber
and the demographic criteria of the advertiser.” (Id., at 18).
Plaintiff has replied that Defendants’ “identified ‘distinction’ of how to value a subsidy is
not part of this claim term and [is] irrelevant.” (Dkt. No. 175, at 14.)
In supplemental briefing, Defendants reiterate that their proposed construction “seeks to
clarify that the claimed system requires the conditioning of a subsidy (i.e., making a choice of
subsidy programs) to be based on the match condition (determined by the degree of match
between user and advertiser profiles).” (Dkt. No. 253, at 19.) Defendants argue that “[t]his
requirement of making a choice of subsidy program determined by the match condition appears
clear from the claim language itself, but is also explained in the specification . . . .” (Id., at 20
Page 41 of 44
(citing ’055 Patent at 9:58-10:2).) At the July 8, 2015 hearing, Defendants further emphasized
that their proposal of “making a choice” requires a selection from among two or more options.
Plaintiff responds that “it is not clear what clarification is needed since the only time this
term is used it requires ‘conditioning a set of subsidy programs based on the match condition.’”
(Dkt. No. 264, at 14.) Plaintiff also submits that “Defendants’ construction would read out
adjusting, preparing, transforming, selecting or any other common understanding for the term
‘conditioning.’” (Id.)
(2) Analysis
Claim 1 of the ’679 Patent, for example, recites in relevant part (emphasis added):
1. In a system comprising a network, a source communication device, a
destination communication device and an intermediary connected to the network,
said intermediary comprising a server adapted to execute a method for providing
advertising content from at least one advertiser of a group of advertisers to a
recipient associated with the destination communication device and for
subsidizing a qualified subscriber associated with the source communication
device comprising:
obtaining a first profile from the at least one advertiser in the group of
advertisers including a set of demographic requirements related to at least one
advertiser of a group of advertisers and storing the first profile by the
intermediary;
obtaining a second profile from the source communication device
including a set of demographic data related to a subscriber and storing the second
profile by the intermediary;
deriving a match condition between the first profile and the second profile;
determining if the subscriber is a qualified subscriber based on the match
condition;
conditioning a set of subsidy programs based on the match condition;
communicating a subsidy program of the set of subsidy programs to the
qualified subscriber;
receiving one or more selections of the at least one advertiser of the group
of advertisers and of the chosen subsidy program from the set of subsidy
programs;
...
subsidizing the qualified subscriber according to the chosen subsidy
program;
....
Page 42 of 44
Defendants have cited disclosure in the specification of the ’055 Patent regarding
qualifying subscribers based on demographic criteria:
At step 161, the intermediary responds to the request by performing a matching
process to qualify subscribers for endorsement opportunities.
The matching process correlates the demographic profile data from the subscriber
with the demographic criteria of the advertiser. A correlation value is assigned
by the intermediary. In the preferred embodiment, the correlation value is
calculated by comparing each element of the demographic criteria to each
element of the demographic profile to arrive at a correlation value.
At step 162, the intermediary returns a list of endorsement opportunities for which
the subscriber is “qualified.”
’055 Patent at 9:58-10:2 (emphasis added). On balance, this disclosure pertains to “particular
embodiments appearing in the written description [that] will not be used to limit claim language
that has broader effect.” Innova/Pure Water, 381 F.3d at 1117; accord Phillips, 415 F.3d
at 1323.
Thus, Defendants have not adequately supported construing “conditioning” so as to
depend upon “how strong of a match, if any, was made between the demographics of the
subscriber and the advertiser.” (Dkt. No. 171, at 17.) Further, as discussed above as to the term
“set,” Defendants have not adequately demonstrated that there must be two or more options for
selection. Defendants’ proposed construction is therefore hereby expressly rejected. 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.”).
Nonetheless, some construction is appropriate to clarify that “conditioning” means
“selecting.” Plaintiff’s briefing suggested “selecting” as a meaning of “conditioning” (Dkt.
No. 264, at 14) and, at the July 8, 2015 hearing, Defendants had no strong opposition to the word
Page 43 of 44
“selecting,” having instead emphasized its above-rejected position that the selecting must be
from among two or more options.
The Court accordingly hereby construes “conditioning . . . based on” to mean “selecting
. . . based on.”
V. CONCLUSION
The Court adopts the constructions set forth in this opinion for the disputed terms of the
patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each
other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered
to refrain from mentioning any portion of this opinion, other than the actual definitions adopted
by the Court, in the presence of the jury. Any reference to claim construction proceedings is
limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the
parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon
.
by the parties. As a part of such mediation, each party shall appear by counsel and by at least
one corporate officer possessing sufficient authority and control to unilaterally make binding
decisions for the corporation adequate to address any good faith offer or counteroffer of
settlement that might arise during such mediation. Failure to do so shall be deemed by the Court
as a failure to mediate in good faith and may subject that party to such sanctions as the Court
deems appropriate.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 14th day of July, 2015.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
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