EMG Technology, LLC v. The Vanguard Group, Inc.
Filing
164
MEMORANDUM OPINION AND ORDER construing the disputed claim terms of United States Patent No. 7,441,196. After consolidating 6:13-cv-134 with this action, the Court allowed Defendant Autozone, Inc. to join in the claim construction positions Defendant s briefed. Having considered the parties' arguments and the applicable law, the Court canceled the Markman hearing originally scheduled for 12/11/2013, and adopts the constructions set forth in this Order. A summary of the final constructions is included with this order as Attachment A. Parties are ordered to submit an agreed upon mediator within five days and mediate within 40 days. Signed by Judge Michael H. Schneider on 12/4/13. (mjc, )
United States District Court
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
EMG TECHNOLOGY GROUP, LLC
v.
THE VANGUARD GROUP, INC., et al.
§
§
§
§
§
Cause No. 6:12-cv-543
(Consolidated—Lead Case)
MEMORANDUM OPINION AND ORDER
This claim construction order construes the disputed claim terms of United States Patent
No. 7,441,196. Plaintiff filed an opening brief (Doc. No. 138), Defendants filed a response (Doc.
No. 140), and Plaintiff filed a reply (Doc. No. 142). 1 After consolidating Cause No. 6:13-cv-134
with this action, the Court allowed Defendant Autozone, Inc. to join in the claim construction
positions Defendants briefed. Having considered the parties’ arguments and the applicable law,
the Court canceled the Markman hearing originally scheduled for December 11, 2013 in Tyler,
Texas, and for the reasons that follow, the Court adopts the constructions set forth herein. A
summary of the final constructions is included with this order as Attachment A.
1
References to docket numbers herein shall be to Case No. 6:12-CV-543 unless otherwise
indicated.
Page 1 of 50
Table of Contents
I. BACKGROUND ........................................................................................................................ 3
II. LEGAL PRINCIPLES ............................................................................................................ 4
III. LEVEL OF ORDINARY SKILL IN THE ART ................................................................. 7
IV. CONSTRUCTION OF DISPUTED TERMS ...................................................................... 8
A. “manipulated within selected one of the regions” ................................................................. 8
B. “email form”........................................................................................................................... 8
C. “purchasing interface” ............................................................................................................ 9
D. “simplified navigation interface” ........................................................................................... 9
E. “next deeper navigation layer” ............................................................................................. 14
F. “exclusive to a separate single navigation option” ............................................................... 17
G. “unique input” and “associated with a specific unique input” ............................................. 24
H. “to navigate to the web page” .............................................................................................. 28
I. “to navigate to the sister site” ................................................................................................ 32
J. “to generate a sister site” ....................................................................................................... 33
K. “reformatted” ....................................................................................................................... 39
L. “the two-dimensional layer in a form of a navigation matrix”............................................. 40
M. “manipulating a region of the screen” and “manipulating a selected region of the
screen” ................................................................................................................................ 43
N. “sister site” ........................................................................................................................... 48
O. “webpage” and “web page” ................................................................................................. 48
V. CONCLUSION....................................................................................................................... 49
Page 2 of 50
I. BACKGROUND
This is a patent infringement suit. Plaintiff alleges infringement of United States Patent
No. 7,441,196 (“the ’196 Patent”) by Defendants The TJX Companies, Inc., J.C. Penney Corp.,
Inc., Coach, Inc., Williams-Sonoma, Inc., Pottery Barn Inc., Pottery Barn Teen Inc., Pottery Barn
Kids Inc., West Elm, Inc., and Autozone, Inc.
The ’196 Patent, titled “Apparatus and Method of Manipulating a Region on a Wireless
Device Screen for Viewing, Zooming and Scrolling Internet Content,” issued on October 21,
2008, and bears an earliest priority date of November 15, 1999. The ’196 Patent has undergone
reexamination at the United States Patent and Trademark Office (“PTO”), and a reexamination
certificate issued on September 6, 2011. The Abstract of the ’196 Patent states:
A method and apparatus of simplified navigation. A web page is provided having
a link to a sister site. The sister site facilitates simplified navigation. Pages from
the sister site are served responsive to actuation of the sister site link. In one
embodiment, the sister site includes matrix pages to permit matrix navigation.
The Court previously construed various terms in the ’196 Patent in EMG Technology,
LLC v. Dr. Pepper Snapple Group Inc., et al., first in a provisional claim construction order
(No. 6:10-CV-536, Doc. No. 296 (Apr. 3, 2012) (Davis, J.)), and then in a final claim
construction order (No. 6:10-CV-536, Doc. No. 311, 2012 WL 3263588 (Aug. 8, 2012) (Davis,
J.) (“Dr. Pepper”)). 2 The Court also construed claims of the ’196 Patent in EMG Technology,
LLC v. Chrysler Group, et al., No. 6:12-CV-259, Doc. No. 143, 2013 WL 3753562 (July 11,
2013) (Schneider, J.) (“Chrysler”). 3
2
The Dr. Pepper case settled approximately two months after the Court entered the final claim
construction order (see 10/16/2012 Notice of Case Closure, No. 6:10-CV-536, Doc. No.
321). Citations to Dr. Pepper herein refer to the page numbering of the slip opinion.
3
The Chrysler case is ongoing and has not yet proceeded to trial (see No. 6:12-CV-259).
Citations to Chrysler herein refer to the page numbering of the slip opinion.
Page 3 of 50
II. LEGAL PRINCIPLES
Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 52 F.3d
967, 979 (Fed. Cir. 1995). The purpose of claim construction is to resolve the meanings and
technical scope of claim terms. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.
Cir. 1997). When the parties dispute the scope of a claim term, “it is the court’s duty to resolve
it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008).
The claims of a patent define the scope of the invention. Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). They provide the “metes and bounds” of the
patentee’s right to exclude. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251,
1257 (Fed. Cir. 1989). Accordingly, claim construction begins with and “remain[s] centered on
the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1116 (Fed. Cir. 2004).
Claim terms are normally given their “ordinary and customary meaning.” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Generally, “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.” Id at 1313.
The best guide for defining a disputed term is a patent’s intrinsic evidence. Teleflex, 299
F.3d at 1325. Intrinsic evidence includes the patent’s specification and the prosecution history.
Id.
The claims are part of the specification. Markman, 52 F.3d at 979. .”). “[T]he context in
which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314;
see also Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed Cir. 1997) (“[T]he language of
Page 4 of 50
the claim frames and ultimately resolves all issues of claim interpretation.”). “Differences among
claims can also be a useful guide in understanding the meaning of particular claim terms.”
Phillips, 415 F.3d at 1314.
In addition to the claims, the specification’s written description is an important
consideration during the claim construction process. Vitronics Corp., 90 F.3d at 1582. The
written description provides further context for claim terms and may reflect a patentee’s intent to
limit the scope of the claims. See Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
“[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.’” Phillips, 415 F.3d at
1315 (quoting Vitronics, 90 F.3d at 1582).
The specification may also 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. For example,
“[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is
rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Grp., Inc., 362 F.3d
1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583).
But care must be taken to avoid unnecessarily reading limitations from the specification
into the claims. Teleflex, 299 F.3d at 1326; see also Raytheon Co. v. Roper Corp., 724 F.2d 951,
957 (Fed. Cir. 1983) (“That claims are interpreted in light of the specification does not mean that
everything expressed in the specification must be read into all the claims.”). “[P]articular
embodiments appearing in the written description will not be used to limit claim language that
has broader effect.” Innova/Pure Water, 381 F.3d at 1117; see also Phillips, 415 F.3d at 1323
Page 5 of 50
(“[A]lthough the specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments.”).
The prosecution history is also part of the intrinsic evidence. Phillips, 415 F.3d at 1317. It
“consists of the complete record of the proceedings before the PTO and includes the prior art
cited during the examination of the patent.” Id. “As in the case of the specification, a patent
applicant may define a term in prosecuting a patent.” Home Diagnostics, Inc. v. LifeScan, Inc.,
381 F.3d 1352, 1356 (Fed. Cir. 2004). Statements made during the prosecution of the patent may
limit the scope of the claims. Teleflex, 299 F.3d at 1326; see Omega Eng’g Inc. v. Raytek Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003) (explaining that the doctrine of prosecution disclaimer
“preclud[es] patentees from recapturing through claim interpretation specific meanings
disclaimed during prosecution”).
Finally, the Court may rely on extrinsic evidence to aid with understanding the meaning
of claim terms. Markman, 52 F.3d at 981. Extrinsic evidence includes “all evidence external to
the patent and prosecution history, including expert and inventor testimony, dictionaries, and
learned treatises.” Id. at 980. Extrinsic evidence is generally less useful or reliable, Phillips, 415
F.3d at 1317, and it should not be relied on when it contradicts the intrinsic evidence, Markman,
52 F.3d at 981.
Prior claim construction proceedings involving the same patents in suit are “entitled to
reasoned deference under the broad principals of stare decisis and the goals articulated by the
Supreme Court in Markman, even though stare decisis may not be applicable per se.” Maurice
Mitchell Innovations, LP v. Intel Corp., No. 2:04-CV-450, 2006 WL 1751779, at *4 (E.D. Tex.
June 21, 2006). The Court nonetheless conducts an independent evaluation during claim
construction proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F. Supp.
Page 6 of 50
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.
2:11–CV–390, 2012 WL 6494240 (E.D. Tex. Dec. 13, 2012).
III. LEVEL OF ORDINARY SKILL IN THE ART
As a threshold matter, the parties dispute the level of skill of a person of ordinary skill in
the art. The Court has a duty to resolve the dispute. See Multiform Desiccants, Inc. v. Medzam,
Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998) (“It is the person of ordinary skill in the field of the
invention through whose eyes the claims are construed.”); accord Cybor Corp. v. FAS Techs.,
Inc., 138 F.3d 1448, 1478 (Fed. Cir. 1998) (Rader, C.J., concurring in part) (noting that “claim
construction requires . . . assessment of the level of ordinary skill in the art”).
Plaintiff proposes that “one of ordinary skill in the art in the 1999 time frame would have
had a bachelor[’]s degree in computer science or two years [of] experience with HTML
programming and some basic knowledge of computer science” (Doc. No. 138 at 8).
Defendants propose that “one of ordinary skill in the art in the 1999 time frame would
have had a master[’]s degree in computer science or commensurate industry experience of at
least four to five years of experience with HTML programming and general knowledge of
Internet browser technology” (Doc. No. 140 at 4).
On balance, the Court finds that the level of ordinary skill in the art at the relevant time
was a bachelor’s degree in computer science or, alternatively, two years of experience with
HTML programming.
Page 7 of 50
IV. CONSTRUCTION OF DISPUTED TERMS
A. “manipulated within selected one of the regions”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“manipulated within the region
associated with a unique input”
that
is
(Doc. No. 138 at 8).
Defendants submit that “[t]he construction of ‘manipulated within selected one of the
regions’ was raised by a party that is no longer in this action, Motorola Mobility LLC, and is not
disputed by the remaining Defendants” (Doc. No. 140 at 4 n.2).
The parties having thus reached agreement, the Court hereby construes “manipulated
within selected one of the regions” to have its plain meaning.
B. “email form”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“a form that, when filled, transmits an email”
(Doc. No. 113-1 at 1; Doc. No. 138 at 8). The parties submit that this term appears in Claims 36
and 72.
Defendants submit that “in the interest of limiting the number of claim terms the Court
will need to address, Defendants will accept a construction of plain meaning for the term ‘email
form’” (Doc. No. 140 at 4 n.2). The parties’ November 8, 2013 Joint Claim Construction Chart
confirms this agreed construction (Doc. No. 149-2 at 2).
The parties having thus reached agreement, the Court hereby construes “email form” to
have its plain meaning.
Page 8 of 50
C. “purchasing interface”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning
“purchasing form displayed in the navigation
matrix”
(Doc. No. 138 at 12; Doc. No. 140 at 4). The parties submit that this term appears in Claims 37
and 73.
In its reply brief, Plaintiff states that it “will agree with Defendants’ proposed
construction of ‘purchas[ing] interface’ as meaning a ‘purchas[ing] form displayed in the
navigation matrix” (Doc. No. 142 at 1 n.2). The parties’ November 8, 2013 Joint Claim
Construction Chart confirms this agreed construction (Doc. No. 149-2 at 2).
The parties having thus agreed upon a construction, the Court hereby construes
“purchasing interface” to mean “purchasing form displayed in the navigation matrix.”
D. “simplified navigation interface” 4
Plaintiff’s Proposed Construction
Defendant Coach’s Proposed Construction
Plain meaning
“a navigation interface that cannot encompass
‘links between pages’ or ‘prioritization’ of
content from a web page”
(Doc. No. 138 at 12; Doc. No. 140 at 7). The parties submit that this term appears in Claims 25,
35, 36, 58, 71, and 72.
4
“Defendant Coach requests construction of this term. The Defendants, including Coach,
believe the term ‘simplified navigation interface’ is indefinite . . . . Nevertheless, Coach
contends that while the term is indefinite, it is at least clear from the prosecution history that
the term must exclude standard navigation using links between pages and prioritization of
content from a web page for the reasons discussed here” (Doc. No. 140 at 7 n.4). The
disputed term “simplified navigation interface” is also the subject of Defendants’ Motion for
Summary Judgment of Invalidity for Indefiniteness (Doc. No. 144), which the Court
addresses by a separate Memorandum Opinion and Order.
Page 9 of 50
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ attempt to define a term by stating what it does not
mean will confuse the jury” and is “based on excerpts taken out of context from the prosecution
history of related patent applications” (Doc. No. 138 at 14). Plaintiff urges that “[i]t would run
contrary to th[e] plain language to say that a simplified navigation interface cannot encompass
links between pages” (Doc. No. 138 at 15). As to the prosecution history, Plaintiff argues that it
“distinguished the prior art on the basis that it lacked a sister site, i.e., a website separate from the
standard site,” and Plaintiff further argues that it “merely state[d] that prioritization is different
from simplification” (Doc. No. 138 at 15–17).
Defendant Coach, Inc. (“Coach”) responds that during prosecution, the patentee
definitively stated that “links between pages” and “prioritization of content from a web page” are
outside the scope of the claimed “simplified navigation interface.” Coach cites RFID Tracker,
Ltd. v. Wal-Mart Stores, Inc., 342 Fed. App’x 628 (Fed. Cir. 2009), as an example of a negative
limitation. In RFID Tracker, the Court of Appeals for the Federal Circuit affirmed the district
court’s construction of the term “interrogator/reader” as meaning “an interrogator/reader that
includes a field generator and a receiver, but not a transmitter.” Id. at 629. The district court
relied upon prosecution history that stated the “interrogator/reader” performs no transmission
other than generating a radio frequency field for polling radio frequency identification (RFID)
tags. Id. at 631–32. Coach has also noted that “an applicant’s argument that a prior art reference
is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the
applicant distinguishes the reference on other grounds as well.” Saffran v. Johnson & Johnson,
712 F.3d 549, 559 (Fed. Cir. 2013) (quoting Andersen Corp. v. Fiber Composites, LLC, 474 F.3d
1361, 1374 (Fed. Cir. 2007)) (internal quotation marks omitted).
Page 10 of 50
Plaintiff replies that Coach “contorts [Plaintiff’s] straight-forward response to the
examiner that merely having links between pages of a single website is not a sister site” (Doc.
No. 142 at 1). Instead, Plaintiff argues, Plaintiff distinguished prior art as lacking a separate
sister site (Doc. No. 142 at 2). As to “prioritization,” Plaintiff replies that it “distinguished the
prior art on the basis that it lacked a simplified navigation interface or one provided by a sister
site. Merely having a web page on a single website that has less content is not the same as a
separate website (i.e., sister site) having a simplified navigation interface” (Doc. No. 142 at 2–3).
Finally, Plaintiff submits that “[i]f there is any disclaimer, it would be that a standard website
that merely prioritizes content on one of its webpages does not disclose a sister site having a
simplified navigation interface” (Doc. No. 142 at 3 n.4).
(2) Analysis
As to Coach’s argument regarding “links between pages,” the patentee stated during
prosecution of United States Patent No. 7,020,845 (“the ’845 Patent”): 5
[L]inks between individual webpages within a website do not constitute the
accessing of sister sites or the association of a webpage with a sister site. Further,
Appellants note that the standard manner in which a website is navigated is by
using links between pages. Arora [(United States Patent No. 5,911,145)] simply
provides an automated and organized manner for linking the webpages of a
website to one another. This is not equivalent to providing simplified navigation,
rather it is standard navigation.
(7/11/2003 Appeal Brief, Doc. No. 138-5 at 13; see 7/5/2005 Decision on Appeal, Doc. No. 1407 at 12 (“[W]e agree with appellants (brief, pages 13 and 14) that having links to other web
pages does not simplify the navigation of a web page, and that ‘this simplified navigation, as
characterized by the Examiner, is not provided by a sister site but is provided in the webpage
itself.”)). Coach argues that the patentee thereby “unmistakably distinguished ‘simplified
5
The ’196 Patent is a continuation of the ’845 Patent.
Page 11 of 50
navigation’ from ‘standard navigation,’ which [Plaintiff] defined as ‘links between pages’ that
provide ‘an automated and organized manner for linking the webpages of a website to one
another.’ Thus, [Plaintiff] agreed and represented that ‘simplified navigation’ does not
encompass ‘links between pages,’ which [Plaintiff] dismissed as ‘standard’ navigation” (Doc.
No. 140 at 8).
A reasonable reading, however, is that the patentee criticized Arora not for using links
between pages but rather for using a single website instead of a distinct sister site. See SanDisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005) (“There is no ‘clear and
unmistakable’ disclaimer if a prosecution argument is subject to more than one reasonable
interpretation, one of which is consistent with a proffered meaning of the disputed term.”). On
balance, the patentee made no definitive statements that would warrant precluding links from
being part of a “simplified navigation interface.” See Omega Eng’g, 334 F.3d at 1324 (“As a
basic principle of claim interpretation, prosecution disclaimer promotes the public notice
function of the intrinsic evidence and protects the public’s reliance on definitive statements made
during prosecution.” (emphasis added)). Moreover, the specification discloses examples of
linking between pages as part of a simplified navigation interface. See ’196 Patent at 8:24–9:25,
9:46–10:3, Figs. 2a, 2b, 10a–10g.
As to Coach’s argument regarding “prioritization of content from a web page,” Coach
cites the prosecution of abandoned United States Patent Application No. 12/547,429. 6 The
applicant responded to a rejection based on “Kanevsky,” United States Patent No. 6,300,947:
The cited section makes no mention of a “simplified navigation interface” or that
such an interface is provided by a “sister site.” Rather, the cited section discusses
how a web page can have some of its content dropped when displayed on a
6
United States Patent Application No. 12/547,429 was a continuation of a continuation of the
’196 Patent. See United States Patent Application Publication No. 2010/0017295.
Page 12 of 50
smaller display based on a prioritization scheme. See col. 11, lines 42–45
(“[p]rioritization depends on such factors as, for example, the importance of
information contained in an object and/or how often this object (link) is visited by
this particular user or all users”). Thus, the navigation is not simplified; rather, the
navigation is prioritized. This could in fact render the navigation more
complicated or less simple, due to low priority navigation options being dropped
to fit a screen size. Dropping navigation options makes accessing dependent or
linked content more difficult when the corresponding links are dropped.
(8/2/2011 Response to Office Action, Doc. No. 140-10 at 6).
A reasonable reading is that the patentee did not disclaim prioritization but rather merely
criticized Kanevsky for dropping low priority navigation options instead of providing a distinct
sister site. See SanDisk, 415 F.3d at 1287. On balance, the patentee made no definitive
statements that would warrant precluding a “simplified navigation interface” from including
“prioritization” of content from a web page. See Omega Eng’g, 334 F.3d at 1324. Moreover, one
embodiment disclosed in the ‘196 Patent includes a “ranking system” for displaying, “in a userfriendly ranked order,” only the highest-ranked products in a particular category. See ’196 Patent
at 8:56–9:2, Fig. 10e.
Coach’s proposed construction is therefore hereby expressly rejected. No further
construction is necessary. See U.S. Surgical, 103 F.3d at 1568 (“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.”).
Page 13 of 50
The Court accordingly hereby construes “simplified navigation interface” to have its
plain meaning.
E. “next deeper navigation layer” 7
Plaintiff’s Proposed Construction
Defendant Coach’s Proposed Construction
Plain meaning
“a more specific navigation layer from the
plurality of layers”
(Doc. No. 138 at 17; Doc. No. 140 at 12; Doc. No. 149-2 at 4). The parties submit that this term
appears in Claims 25 and 58.
(1) The Parties’ Positions
Plaintiff submits that “[a]ccording to the claim language, the next deeper layer is more
specific than the layer that preceded it” (Doc. No. 138 at 17). Plaintiff argues that because
Coach’s proposed language “already is in the language of the claim,” “[t]he addition of
duplicative language only will serve to confuse a jury” (Doc. No. 138 at 18).
Coach responds that Plaintiff’s argument actually supports Coach’s proposal that “next
deeper” means “more specific” and that there must be multiple layers (Doc. No. 140 at 12).
Plaintiff replies by reiterating that “the claim already includes the language . . . that
Coach proposes to add” (Doc. No. 142 at 3).
(2) Analysis
Claim 58 is representative and recites (emphasis added; reexamination amendments
included but not indicated):
58. A machine readable medium having instructions stored therein, which when
executed cause a machine to perform a set of operations comprising:
displaying on-line content accessed via the Internet, the on-line content
reformatted from a webpage in a hypertext markup language (HTML) format into
an extensible markup language (XML) format to generate a sister site, the sister
7
“Defendant Coach requests construction of this term” (Doc. No. 140 at 12 n.5).
Page 14 of 50
site including a portion or a whole of content of the web page reformatted to be
displayed and navigable through a simplified navigation interface on any one of a
television, web appliance, console device, handheld device, wireless device or
cellular phone, the simplified navigation interface displayed in a form of a twodimensional layer of cells from a plurality of layers and a plurality of cells, the
two-dimensional layer in a form of a navigation matrix, each cell is a division of a
screen and exclusive to a separate single navigation option associated with a
specific unique input, the on-line content formatted to be displayed in one or more
of the plurality of cells and formatted to be selected for navigation by one or more
of the unique inputs, navigation options to change between layers of the
simplified navigation interface from general to more specific in each deeper
layer;
displaying a hyperlink on the sister site to navigate to the web page, or
displaying a hyperlink on the web page to navigate to the sister site;
receiving a user selection of one of the navigation options;
forwarding the selected navigation option across the internet to a server
providing the simplified navigation interface;
receiving a next deeper navigation layer of the simplified navigation
interface corresponding to the selected navigation option; and
manipulating a region of the screen for viewing and zooming and/or
scrolling of the displayed on-line content.
The specification also discloses “layers”:
“Primary navigation options” as used herein are those navigation options that
necessarily change between successive matrix layers, changing from general to
more specific with increases in depth in the matrix.
’196 Patent at 7:46–49.
FIGS. 10a–g are a series of matrix layers displayed during an exemplary
navigation using one embodiment of the invention. In this example, navigation
begins at the Shopping and Products matrix layer and [sic] shown in FIG. 10a. A
selection of 5 on the 10a matrix layer yields an Electronics matrix layer shown in
FIG. 10b.
Selecting 1 on the keypad when the matrix layer of 10b is displayed yields the
Audio matrix layer of FIG. 10c. By selecting an 8 on the keypad when 10c is
displayed, the system displays a Receivers matrix layer of FIG. 10d, which breaks
down receivers into price categories and also provides the option of navigating, in
this embodiment, into Consumer Reports industry reports related to receivers.
Id. at 8:36–49.
Page 15 of 50
During prosecution of related United States Patent Application No. 09/440,214, which
issued as United States Patent No. 6,600,497 (“the ’497 Patent”), 8 the patentee explained: “[T]he
instant application defines a next deeper navigation matrix layer as a layer for which the primary
navigation options are more specific than the layer above it.” (7/16/2002 Amendment and
Response to Office Action, Doc. No. 140-9 at 2). Also during that prosecution, the patentee
stated:
Additionally, responsive to the selection of a cell navigation matrix layer, a next
deeper navigation matrix layer is generated on the display. In this manner, the
user is able to drill down through successively more exact categories until the
desired content page is reached at the maximum depth of that path through the
navigation matrix . . . .
(1/7/2004 Appeal Brief, Doc. No. 140-10 at 5).
On balance, the prosecution history cited by Coach adds little, if anything, that is not
already present in surrounding claim language, such as in Claim 58, quoted above. Instead,
Coach’s proposed construction would tend to confuse rather than clarify the scope of the claims.
The Court therefore hereby expressly rejects Coach’s proposed construction.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568 (“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, 626 F.3d at 1207 (“Unlike O2 Micro, where the court
failed to resolve the parties’ quarrel, the district court rejected Defendants’ construction.”).
8
The ’196 Patent is a continuation of a continuation-in-part of the ’497 Patent.
Page 16 of 50
The Court accordingly hereby construes “next deeper navigation layer” to have its
plain meaning.
F. “exclusive to a separate single navigation option”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“there is a one-to-one relationship between
cells and navigation options” 9
(Doc. No. 138 at 18; Doc. No. 149-2 at 2). The parties submit that this term appears in Claims 25
and 58.
Chrysler construed this disputed term to mean “there is a one-to-one relationship between
cells and navigation options.” Chrysler at 10–17. The Court also held that its construction
required “one-to-one correspondence in ‘both directions.’ That is, the Court’s construction
precludes ‘one-to-many’ correspondence and also precludes ‘many-to-one’ correspondence.”
Chrysler at 17.
(1) The Parties’ Positions
Plaintiff “maintains that this phrase does not require construction and disagrees that it
should be interpreted to preclude the many-to-one correspondence, at least to the extent that
Defendants interpret this to mean that two cells, each with its own navigation option, cannot lead
to the same place” (Doc. No. 138 at 18). Plaintiff explains: “The plain meaning of the claim
language states that each cell is exclusive (not shared) to a separate and single (not more than
one) navigation option. In short, there is a one-to-one mapping such that each cell corresponds to
a single navigation option” (Doc. No. 138 at 19). Plaintiff submits that “[f]or example, Figure 2B
illustrates that two navigation options such as ‘Favorites’ and [‘]Shopping’ can lead to the same
9
In their response brief, Defendants proposed: “‘contains a single navigation option that is
distinct from that of every other cell’ but Defendants now support the Chrysler construction”
(Doc. No. 140 at 13).
Page 17 of 50
place” (Doc. No. 138 at 20). Plaintiff further urges that Defendants’ proposal would improperly
limit the claims to certain preferred embodiments and should therefore be rejected (Doc. No. 138
at 20).
Defendants respond that the Court should adopt the construction and analysis set forth in
Chrysler, together with the clarifications set forth in Chrysler (Doc. No. 140 at 13–15).
Plaintiff replies that it “does not dispute the one-to-one correspondence between the cells
and the navigation option, but maintains that the claim language captures this relationship” (Doc.
No. 142 at 3). Plaintiff further argues that “[a]dopting a definition that itself requires clarification
will foster confusion among the jury” (Doc. No. 142 at 4). Plaintiff concludes that because
“[t]his is a case where the proposed construction does not improve upon the claim language and,
in fact, introduces ambiguity where none existed before,” “[t]his term should be given its plain
meaning” (Doc. No. 142 at 4). Plaintiff nonetheless notes that it “would not oppose that in its
Claim Construction Order, the Court makes clear that the plain meaning captures and requires
the one-to-one correspondence between a cell and navigation option” (Doc. No. 142 at 4 n.5).
(2) Analysis
Claim 58 is representative and recites (emphasis added; reexamination amendments
included but not indicated):
58. A machine readable medium having instructions stored therein, which when
executed cause a machine to perform a set of operations comprising:
displaying on-line content accessed via the Internet, the on-line content
reformatted from a webpage in a hypertext markup language (HTML) format into
an extensible markup language (XML) format to generate a sister site, the sister
site including a portion or a whole of content of the web page reformatted to be
displayed and navigable through a simplified navigation interface on any one of a
television, web appliance, console device, handheld device, wireless device or
cellular phone, the simplified navigation interface displayed in a form of a twodimensional layer of cells from a plurality of layers and a plurality of cells, the
two-dimensional layer in a form of a navigation matrix, each cell is a division of a
screen and exclusive to a separate single navigation option associated with a
Page 18 of 50
specific unique input, the on-line content formatted to be displayed in one or more
of the plurality of cells and formatted to be selected for navigation by one or more
of the unique inputs, navigation options to change between layers of the
simplified navigation interface from general to more specific in each deeper layer;
displaying a hyperlink on the sister site to navigate to the web page, or
displaying a hyperlink on the web page to navigate to the sister site;
receiving a user selection of one of the navigation options;
forwarding the selected navigation option across the internet to a server
providing the simplified navigation interface;
receiving a next deeper navigation layer of the simplified navigation
interface corresponding to the selected navigation option; and
manipulating a region of the screen for viewing and zooming and/or
scrolling of the displayed on-line content.
The specification of the ’196 Patent discusses navigation options but does not explicitly
define “exclusive” or “separate”:
In the context of a matrix page, one suitable segmentation is by cell, e.g., each cell
corresponds to a region that may be independently brought into focus. The
borders of the regions may or may not be visible on the web pages displayed. This
segmentation facilitates tab, scroll, and zoom features described in more detail
below. Alternatively, segmentation may be performed as part of a custom browser
on custom browser nodes or may be instantiated as a hardware or firmware
solution within, for example, the set top box.
’196 Patent at 3:2–11.
If the page is not a matrix page, the page is segmented either based on area or
content. By “segmentation,” it is meant that the page is divided into a plurality of
regions. The regions may contain one or more links and/or some amount of
content. This segmentation facilitates usability as discussed in more detail below.
Id. at 4:58–64.
FIG. 8 is a diagram of the display of a graphical user interface of one embodiment
of the invention. The screen is divided into a plurality of cells. In this
embodiment, there are fifteen cells that represent navigation options and one
messaging cell for displaying messages from the server, the progress or status bar,
and a title block. The cells can further be subdivided between the digit keys 1–9
keys [sic] which, in this embodiment, represent the primary set of navigation
options and the keys designated by letters A–C which represent secondary
navigation options and *, 0, and # keys that may be additional navigation options
or provide specialized functions. For example, the * key may return the user to the
server home site, thereby leaving matrix navigation. The ABC cells will typically
hold advertising, and selecting one of those cells will generate a matrix layer with
Page 19 of 50
primary navigation cells directed to that advertiser or the product line being
advertised. While the interface is designed to be fully accessible with minimal key
strokes from a key pad, it is also within the scope and contemplation of the
invention to permit selection with a mouse or other pointer device.
Id. at 7:65–8:17.
FIGS. 10a–g are a series of matrix layers displayed during an exemplary
navigation using one embodiment of the invention. In this example, navigation
begins at the Shopping and Products matrix layer and [sic] shown in FIG. 10a. A
selection of 5 on the 10a matrix layer yields an Electronics matrix layer shown in
FIG. 10b.
Selecting 1 on the keypad when the matrix layer of 10b is displayed yields the
Audio matrix layer of FIG. 10c. By selecting an 8 on the keypad when l0c is
displayed, the system displays a Receivers matrix layer of FIG. l0d, which breaks
down receivers into price categories and also provides the option of navigating, in
this embodiment, into Consumer Reports industry reports related to receivers.
Notably, in FIG. 10d, the number of primary navigation options is reduced to 4.
Thus, it is not necessary that all layers of the matrix have the same number of
cells, nor is it required that all cells have the same size.
Id. at 8:37–53.
During reexamination of the ‘196 Patent, the patentee stated:
Additionally, Claim 1 is distinguishable over HTML 4.0 as the applied reference
fails to disclose or suggest that “each cell is a division of a screen and exclusive to
a separate single navigation option associated with a specific unique input.” The
Request identifies assigning an access key to an element, as described in HTML
4.0, as “a separate single navigation option associated with a specific unique
input.” However, HTML 4.0 fails to disclose or suggest that an access key is
unique to an element. In this regard, more than one access key can be assigned to
the same element. Therefore, HTML 4.0 fails to disclose or suggest that “each cell
is a division of the screen and exclusive to a separate single navigation option
associated with a specific unique input,[”] as recited in Claim 1.
Accordingly, the ’196 Patent holder submits that HTML 4.0 fails to disclose or
suggest all the features of Claim 1.
(8/30/2010 Response to Office Action, Doc. No. 140-13 at 13 (emphasis added)).
The prosecution histories of related patents are also relevant to construction of the
disputed term. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007)
Page 20 of 50
(“When the application of prosecution disclaimer involves statements from prosecution of a
familial patent relating to the same subject matter as the claim language at issue in the patent
being construed, those statements in the familial application are relevant in construing the claims
at issue.”); see also Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir. 2003)
(“[P]rosecution disclaimer may arise from disavowals made during the prosecution of ancestor
patent applications. . . . As long as the same claim limitation is at issue, prosecution disclaimer
made on the same limitation in an ancestor application will attach.”)
During prosecution of the ’497 Patent, 10 the patentee stated:
Even more significant is the utter absence in either of the [prior art] references of
the user input device permitting a unique input corresponding to each cell of a
current two-dimensional layer of navigation matrix. By way of example, although
Jones [(United States Patent No. 6,199,098)] teaches that when a mouse is over
one of the links and clicks thereon, it opens a node in the hierarchy[,] this fails to
teach or suggest the unique input associated with each cell of a current twodimensional layer of navigation matrix. Moreover, since a mouse click is still a
mouse click, wherever it happens to occur, a mouse fails to provide the ability to
supply the unique inputs as the term is used by Applicants. When unique inputs
are used, traversal of the matrix may be independent of cursor position.
(7/9/2002 Response to Office Action, Doc. No. 140-9 at 3–4 (emphasis in original)).
During prosecution of United States Patent No. 7,194,698 (“the ’698 Patent”), 11 an
Interview Summary noted discussion regarding a “one to one mapping”:
The examiner and applicant discussed language for the claims to further describe
that the navigation interface comprises a plurality of cells arranged in a grid-like
structure having a one to one mapping unique to a key press and wherein data is
automatically displayed based on a user’s selection history log.
(4/28/2005 Interview Summary Doc. No. 140-14 (emphasis added)). Then, in remarks
accompanying an amendment that added the phrase “unique inputs,” the patentee explained that
“[c]ontent that is formatted for navigation with unique inputs has a one-to-one unique mapping
10
11
The ’196 Patent is a continuation of a continuation-in-part of the ’497 Patent.
The ’698 Patent is a divisional of the ’497 Patent.
Page 21 of 50
to an input.” Dr. Pepper at 9 (quoting 5/27/2005 Amendment, No. 6:10-CV-536, Doc. No. 28013 at 14) (emphasis as in Dr. Pepper). In Dr. Pepper, the Court considered this and related
prosecution history and concluded that:
[Plaintiff] did not clearly disavow touchscreens; rather, it defined and limited the
simplified navigation interface of the original claim 39.
[Plaintiff’s] introduction of “unique inputs” to distinguish [the] Kaplan
[reference] did make clear that unique inputs require a one-to-one mapping
between the user input and the associated content. . . . Thus, there is a one-to-one
mapping between a unique input and the content it is associated with. [Plaintiff’s]
proposed construction, which only requires “a single input that is sufficient to
activate a single navigation option,” fails to capture this one-to-one mapping. The
input must activate “only one” navigation option.
Dr. Pepper at 9.
On balance, Dr. Pepper is persuasive because the above-quoted excerpts from the
prosecution history contain definitive statements requiring a “one-to-one” relationship between
the inputs and the content associated therewith. (See, e.g., 8/30/2010 Response to Office Action,
Doc. No. 140-13 at 13 (“HTML 4.0 fails to disclose or suggest that an access key is unique to an
element. In this regard, more than one access key can be assigned to the same element.”));
Omega Eng., 334 F.3d at 1324 (“As a basic principle of claim interpretation, prosecution
disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s
reliance on definitive statements made during prosecution.” (emphasis added)).
Such an interpretation is also consistent with extrinsic dictionary definitions, submitted
by Defendants, that define “exclusive” as meaning “[n]ot shared with others. Independent or
single: sole” and that define “separate” as meaning “[e]xisting by itself: independent. Not alike:
dissimilar.” Webster’s II New College Dictionary 391, 1007 (1995) (included with Defendants’
briefing at Doc. No. 140-16). Defendants also submit another definition of “exclusive” as
meaning “[n]ot divided or shared with others . . . Single or independent; sole.” American
Page 22 of 50
Heritage Dictionary 473 (Second College Edition 1985) (included with Defendants’ briefing at
Doc. No. 140-17). Although extrinsic dictionary definitions must be used with caution, such
evidence is “among the many tools that can assist the court in determining the meaning of
particular terminology to those of skill in the art of the invention.” Phillips, 415 F.3d at 1318.
As to Defendants’ statement that “[t]he Court also clarified [in Chrysler] that its
construction . . . meant there could be no ‘empty cells’ that do not include a navigation option,”
the Court found in Chrysler:
Plaintiff emphasized at the June 20, 2013 hearing that a matrix layer may contain
“empty” cells, that is, cells for which there is no associated navigation option.
See, e.g., ’196 Patent at Fig. 14. The claim language, however, recites that “each
cell is a division of a screen and exclusive to a separate single navigation option.”
On balance, the claim language is plain that “each cell” is associated with a
navigation option.
Chrysler at 16–17. The Court hereby adopts this finding from Chrysler.
The Court further hereby clarifies, as requested by the defendants at the June 20, 2013
hearing in Chrysler and as re-urged by Defendants in the above-captioned case (see Doc.
No. 140 at 13), that the Court’s construction requires one-to-one correspondence in “both
directions.” That is, the Court’s construction precludes “one-to-many” correspondence and also
precludes “many-to-one” correspondence because such correspondence would contradict the
patentee’s above-quoted reliance on “one-to-one mapping” and “one-to-one unique mapping.”
See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir. 2011) (“The
patentee is bound by representations made and actions that were taken in order to obtain the
patent.”).
The Court therefore hereby construes “exclusive to a s eparate single navigation
option” to mean “there is a one-to-one relationship between cells and navigation options.”
Page 23 of 50
G. “unique input” and “associated with a specific unique input”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plaintiff proposes construing “unique input” to Defendants propose construing “associated
mean “a separate input that actuates only one with a specific unique input” to mean
navigation option”
“associated with a distinct input that actuates
only one navigation option”
(Doc. No. 138 at 21; Doc. No. 140 at 15). The parties submit that these terms appear in
Claims 25 and 58.
Dr. Pepper construed “unique input” to mean “a separate input that actuates only one
navigation option.” Dr. Pepper at 7–10.
At the June 20, 2013 hearing in Chrysler, the Court preliminarily proposed construing
“unique input” to mean “a separate input that actuates only one navigation option.” Plaintiff was
agreeable, but the defendants responded that the Court should substitute the word “distinct” for
the word “separate” to clarify that each input is different from all other inputs. The Court also
proposed construing “associated with a specific unique input” to have its plain meaning, and
Plaintiff and the defendants had no objection.
Chrysler then adopted defendants’ suggested modification, thereby construing “unique
input” to mean “a distinct input that actuates only one navigation option.” Chrysler at 21.
(1) The Parties’ Positions
Plaintiff argues that “there is no basis for substituting ‘distinct’ for ‘separate’ in the
Court’s construction because ‘separate’ captures that ‘each navigation option must be actuated
by a different [or separate] input,’ i.e, that no one input actuates more than one navigation
option” (Doc. No. 138 at 21 (quoting Chrysler at 19)). Plaintiff further argues that “[t]he use of
the word ‘distinct’ also is problematic because it will foster confusion with a jury about what it
means for an input to be ‘distinct’” (Doc. No. 138 at 21). Plaintiff continues that “nowhere in the
Page 24 of 50
specification is the term ‘distinct’ used, i.e, does it mean different letters, numbers, numbers vs.
letters? Similarly, the substitution of ‘that’ for ‘one’ also does not clarify the claim language”
(Doc. No. 138 at 22).
Defendants respond that Dr. Pepper and Chrysler erred by finding that the patentee did
not disavow coverage of a “touchscreen” as a “unique input” (Doc. No. 140 at 15 n.7).
Otherwise, Defendants cite the analysis of Chrysler as support for requiring a “distinct” input
(Doc. No. 140 at 15–16).
Plaintiff replies that “the plain and ordinary meaning of ‘separate’ captures, in the Court’s
words, that ‘each navigation option must be actuated by a different input’” (Doc. No. 142 at 5
(quoting Chrysler at 19) (emphasis Plaintiff’s)). Plaintiff also argues that “[t]he use of the word
‘distinct’ is not found in the specification or claims. It will create confusion with a jury about
what it means for an input to be ‘distinct.’ For example, does it mean using different letters,
different numbers, or numbers and letters, etc? Because Defendants’ construction reflects a
preference rather than improved clarity, EMG’s construction should be adopted” (Doc. No. 142
at 5 n.7). Finally, Plaintiff argues that Chrysler properly rejected the defendants’ argument that
the patentee disclaimed touchscreens (Doc. No. 142 at 5).
(2) Analysis
As a preliminary matter, Defendants agree that the phrase “associated with a” requires no
construction (see Doc. No. 140 at 15). The Court therefore construes only the term “unique
input.”
The term “unique input” raises the same underlying issues as the term “exclusive to a
separate single navigation option,” discussed above. The Court therefore reaches the same
conclusions here. Further, the Court finds persuasive the findings in Dr. Pepper and Chrysler
Page 25 of 50
that the patentee did not disclaim touchscreens. Dr. Pepper at 9–10 (finding that Plaintiff’s
“arguments that a mouse click is not a unique input d[id] not disavow touchscreens as unique
inputs”); Chrysler at 19.
As to the proper construction, the constituent term “unique” does not appear in the
specification, but Plaintiff has cited Figure 8 as “an example of using numbers, letters, or
symbols on a keypad as specific unique inputs associated with a navigation option” (Doc.
No. 138 at 22). Figure 8 is reproduced here:
Plaintiff has also cited portions of the specification, which are reproduced here:
The screen is divided into a plurality of cells. In this embodiment, there are fifteen
cells that represent navigation options and one messaging cell for displaying
messages from the server, the progress or status bar, and a title block. The cells
can further be subdivided between the digit keys 1–9 keys [sic] which, in this
embodiment, represent the primary set of navigation options and the keys
designated by letters A–C which represent secondary navigation options and *, 0,
and # keys that may be additional navigation options or provide specialized
functions.
***
By selecting an 8 on the keypad when 10c is displayed, the system displays a
Receivers matrix layer of FIG. 10d, which breaks down receivers into price
categories and also provides the option of navigating, in this embodiment, into
Consumer Reports industry reports related to receivers.
Page 26 of 50
’196 Patent at 7:66–8:9, 8:44–49.
On balance, the Court finds that using the word “distinct” instead of “separate” in the
Court’s construction will better aid the finder of fact by emphasizing that each navigation option
must be actuated by a different input. See Funai Elec. Co., Ltd. v. Daewoo Elec. Corp., 616 F.3d
1357, 1366 (Fed. Cir. 2010) (“The criterion is whether the explanation aids the court and the jury
in understanding the term as it is used in the claimed invention.”). The Court therefore
substantially adopts the Dr. Pepper construction of “unique input,” but here as in Chrysler, the
Court changes the word “separate” to “distinct.” Chrysler at 19–20.
Finally, the Court hereby expressly adopts the finding in Chrysler rejecting the
defendants’ argument that a touch on a touchscreen constitutes the same “unique input” no
matter where it occurs on a screen. See id. Instead, “buttons” on a touchscreen, for example, can
constitute multiple “unique inputs” just as if they were physical hardware buttons, such as on a
keypad. See Dr. Pepper at 9–10. The factual analysis of whether particular “inputs” are unique is
a factual question for an infringement analysis rather than a legal question for claim construction.
See Markman, 52 F.3d at 976 (“An infringement analysis entails two steps. The first step is
determining the meaning and scope of the patent claims asserted to be infringed. The second step
is comparing the properly construed claims to the device accused of infringing.” (citation
omitted)); see also PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
(“[A]fter the court has defined the claim with whatever specificity and precision is warranted by
the language of the claim and the evidence bearing on the proper construction, the task of
determining whether the construed claim reads on the accused product is for the finder of fact.”).
The Court accordingly hereby construes “unique input” to mean “a distinct input that
actuates only one navigation option.”
Page 27 of 50
H. “to navigate to the web page”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“to navigate to the web page used to generate
the sister site”
(Doc. No. 138 at 23; Doc. No. 140 at 16). The parties submit that this term appears in Claims 25
and 58.
Chrysler construed this disputed term to mean “to navigate to the website used to
generate the sister site.” Chrysler at 21–24.
(1) The Parties’ Positions
Plaintiff argues that “the ‘used to generate’ language is misleading and will confuse the
jury” (Doc. No. 138 at 23). Plaintiff submits:
Defendants may argue that the “used to generate” language means that the sister
sites must be converted from the main sites. Stated differently, they will argue
that the claims are limited such that the creation and maintenance of the sister site
independently from the main site is outside the scope of the claims. But, the
claims do not say anything about how the sister site is made, much less require
that the general use web site generates the sister site. The claims recite only that a
portion or a whole of the on-line content from a webpage is reformatted to
generate a sister site, but are otherwise silent about the process used to format the
content . . . .
(Doc. No. 138 at 23–24 (citing ’196 Patent at 10:20–28)). Plaintiff further explains that “the
specification describes a non-limiting embodiment where the sister site is created from the
website. This non-limiting embodiment describes this conversion process as ‘transcoding.’ . . .
[T]he claims of the ‘196 patent do not recite this feature” (Doc. No. 138 at 24 (citing ’196 Patent
at 3:21–37)). Plaintiff therefore maintains that “because the claim language already describes the
relationship between the web page and sister site, no construction is required” (Doc. No. 138 at
23; see also Doc. No. 138 at 26).
Page 28 of 50
Defendants respond that “[g]iven [Plaintiff’s] unwillingness to agree that the web page
referred to in this term is the same one that is used to generate the sister site, it is evident that this
term needs to be construed in order to confirm its meaning for the jury” (Doc. No. 140 at 16). As
to the proper construction:
Defendants agree with the Court’s construction of this term in the Chrysler case
with one modification. To avoid confusion, the Court’s construction should
provide that “the web page,” and not a “website,” is used to generate the sister
site. This is evident from viewing the claim language itself, which explicitly
requires navigation to a “web page.” (Emphasis added). [Plaintiff] selected the
term “web page”, so “web page” should be in the construction. See Chef America
v. Lamb-Weston, 358 F.3d 1371, 1373 (Fed. Cir. 2004) (“courts may not redraft
claims, whether to make them operable or to sustain their validity. . . . Even ‘a
nonsensical result does not require the court to redraft the claims . . . .’”) [(quoting
Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir.
1999))].
(Doc. No. 140 at 16–17). Defendants then review the claim language, the specification, and the
prosecution history and conclude that “[w]ithout question . . . the ‘web page’ referred to in this
claim term is the very web page that was reformatted to generate the sister site” (Doc. No. 140 at
17).
Plaintiff replies that “[u]nder the guise of merely trying to set forth the antecedent basis
for ‘web page’ in these phrases, Defendants propose to insert ‘used to generate’ language that is
confusing and about which Defendants intend to argue always requires the machine conversion
of the web page to create the sister site” (Doc. No. 142 at 5). Plaintiff argues that “[t]he claim
language, however, makes clear that it is the content from a web page (not the web page itself)
that is reformatted to generate a sister site” and that “the claims do not say anything about the
process of making the sister sites” (Doc. No. 142 at 6).
Plaintiff also argues that the specification discloses multiple embodiments and in only
one embodiment is the sister site “transcod[ed]” from the web site (Doc. No. 142 at 6). Plaintiff
Page 29 of 50
submits that “the specification discloses embodiments showing the manual reformatting of sister
sites and maintaining separate databases of sister site web pages corresponding to the standard
webpages as an alternative to converting a desktop website to create a sister site on the fly”
(Doc. No. 142 at 6 (citing ’196 Patent at 2:56–59, Figs. 2B, 2C, 9A–D, 10a–g, 11, 12a–b, 13)).
Plaintiff further argues that the construction should refer to “website” rather than “web page”
because Chrysler, citing Dr. Pepper, properly found that a web site is something comprised of
web pages (Doc. No. 142 at 7 (citing Chrysler at 9)).
Finally, Plaintiff argues that although it “contends that these [‘to navigate . . .’] phrases
do not need to be construed because their meanings are clear in the context of the claims and thus
readily understood by a jury, to the extent that the Court determines that the language should be
clarified, [Plaintiff] proposes the language ‘that corresponds to’ for ‘used to generate’ in the
Court’s constructions in order to avoid the confusion discussed above regarding how the sister
site is generated” (Doc. No. 142 at 7–8 n.10).
(2) Analysis
Although Plaintiff proposes that no construction is required, the parties’ briefing
demonstrates a dispute that the Court has a duty to resolve. See O2 Micro, 521 F.3d at 1362.
Claim 58 is representative and recites (emphasis added; reexamination amendments
included but not indicated):
58. A machine readable medium having instructions stored therein, which when
executed cause a machine to perform a set of operations comprising:
displaying on-line content accessed via the Internet, the on-line content
reformatted from a webpage in a hypertext markup language (HTML) format into
an extensible markup language (XML) format to generate a sister site, the sister
site including a portion or a whole of content of the web page reformatted to be
displayed and navigable through a simplified navigation interface on any one of a
television, web appliance, console device, handheld device, wireless device or
cellular phone, the simplified navigation interface displayed in a form of a twodimensional layer of cells from a plurality of layers and a plurality of cells, the
Page 30 of 50
two-dimensional layer in a form of a navigation matrix, each cell is a division of a
screen and exclusive to a separate single navigation option associated with a
specific unique input, the on-line content formatted to be displayed in one or more
of the plurality of cells and formatted to be selected for navigation by one or more
of the unique inputs, navigation options to change between layers of the
simplified navigation interface from general to more specific in each deeper layer;
displaying a hyperlink on the sister site to navigate to the web page, or
displaying a hyperlink on the web page to navigate to the sister site;
receiving a user selection of one of the navigation options;
forwarding the selected navigation option across the internet to a server
providing the simplified navigation interface;
receiving a next deeper navigation layer of the simplified navigation
interface corresponding to the selected navigation option; and
manipulating a region of the screen for viewing and zooming and/or
scrolling of the displayed on-line content.
The claim itself thus recites that the sister site is generated from an HTML “web page.”
Further, the recital of “the web page” in the term “to navigate to the web page” refers to the same
“webpage” 12 used to generate the sister site. See, e.g., Process Control Corp. v. HydReclaim
Corp., 190 F.3d 1350, 1356–57 (Fed. Cir. 1999) (“It is clear from the language of the claim itself
that the term ‘a discharge rate’ in clause [b] is referring to the same rate as the term ‘the
discharge rate’ in clause [d].” (square brackets in original)); NTP, Inc. v. Research In Motion,
Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005) (“[I]t is a rule of law well established that the definite
article ‘the’ particularizes the subject which it precedes. It is a word of limitation as opposed to
the indefinite or generalizing force of ‘a’ or ‘an.’”) (quoting Warner-Lambert Co. v. Apotex
Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003)) (internal quotation marks omitted). The Court
therefore hereby expressly rejects Plaintiff’s argument that the sister site can be created
“independently from the main site” as Plaintiff has suggested (see Doc. No. 138 at 23–24).
The proper construction of the term is thus evident from the face of the claim except that,
as found in Dr. Pepper, the “sister site” is generated from a “web site,” not strictly a particular
12
The parties have treated “web page” and “webpage” as synonyms (see Doc. No. 149-2 at 2).
Page 31 of 50
“web page.” See Dr. Pepper at 6. Although Defendants argue that “[i]f the patentee had intended
to refer to a ‘website,’ it could have done so” (Doc. No. 140 at 19), the context of the claims and
the specification demonstrate that a sister site, which may include multiple pages, is generated
from a corresponding website, which may include one page or multiple pages as well. Dr.
Pepper at 6 (citing ’196 Patent at 2:52–54, 2:56–57); see Phillips, 415 F.3d at 1313
(“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in
the context of the particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.). For example, the Brief Summary of the Invention in
the ’196 Patent states: “Pages from the sister site are served responsive to actuation of the sister
site link.” ’196 Patent at 1:45–47 (emphasis added). Defendants’ proposal to limit the sister site
to being generated from a specific “web page” is therefore hereby expressly rejected.
The Court therefore hereby construes “to navigate to the web page” to mean “to
navigate to the website used to generate the sister site.”
I. “to navigate to the sister site”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“to navigate to the sister site generated from
the web page”
(Doc. No. 138 at 23; Doc. No. 140 at 20). The parties submit that this term appears in Claims 25
and 58.
Chrysler construed this disputed term to mean “to navigate to the sister site generated
from the website.” Chrysler at 24. Plaintiff argues this term together with the term “to navigate
to the web page,” discussed above (see Doc. No. 138 at 23–26; Doc. No. 142 at 5–7). Defendants
argue the two terms separately but present substantially the same arguments, noting that “[t]he
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parties’ dispute on the term ‘to navigate to the sister site’ mirrors the dispute concerning the term
‘to navigate to the web page’” (Doc. No. 140 at 20).
Although Plaintiff proposes that no construction is required, the parties’ briefing
demonstrates a dispute that the Court has a duty to resolve. See O2 Micro, 521 F.3d at 1362.
Because the term “to navigate to the sister site” raises the same issues as the term “to navigate to
the web page,” discussed above, the Court reaches the same conclusions.
The Court accordingly hereby construes “to navigate to the sister site” to mean “to
navigate to the sister site generated from the website.”
J. “to generate a sister site”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“to bring a web site in an XML format into
existence by a machine reformatting the
HTML format web page”
(Doc. No. 138 at 26; Doc. No. 140 at 22). The parties submit that this term appears in Claims 25
and 58.
Dr. Pepper found no construction necessary for the larger term “the [first/online] content
reformatted from a web page in a hypertext markup language (HTML) format into an extensible
markup language (XML) format to generate a sister site.” Dr. Pepper at 10–11 (emphasis
added).
Chrysler construed “to generate a sister site” to mean “to bring a website in an XML
format into existence by reformatting the HTML format website.” Chrysler at 25–30.
(1) The Parties’ Positions
Plaintiff “maintains that the claim phrase ‘to generate a sister site’ does not require
construction because the claim language already describes the relationship between the desktop
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website and sister site” (Doc. No. 138 at 26). Plaintiff also notes that Chrysler considered and
expressly rejected Defendants’ proposal of adding a “machine” limitation (Doc. No. 138 at 27).
Plaintiff further argues that “[t]he ’196 Patent specification does not use the words ‘machine
reformatting,’ ‘machine transcoder,’ or ‘machine,’ so there is no support for inserting the
requirement of a machine performing this operation. In addition, the jury would be confused
about what these terms mean because the specification never uses the word ‘machine’ in
connection with reformatting content” (Doc. No. 138 at 27). Plaintiff also reiterates its argument,
discussed above as to the “to navigate . . .” terms, that “sister sites can be made manually and
maintained separately from the desktop websites” (Doc. No. 138 at 27).
Defendants respond that “[t]he specification only teaches machine reformatting” (Doc.
No. 140 at 22). Defendants argue that Chrysler erred by not requiring a “machine,” and
Defendants submit that “[w]hat was not previously before this Court, however, was that the
inquiry of ‘. . . how a person of ordinary skill in the art understands a claim term provides an
objective baseline from which to begin claim interpretation’” (Doc. No. 140 at 23–24 (quoting
Phillips, 415 F.3d at 1313)). Defendants urge that “even a person with only basic knowledge of
computer science approaches computing problems attempting to find ways to not only solve the
problem, but also solve the problem efficiently, using a computer” and “automated machine
processes” (Doc. No. 140 at 24). Defendants conclude that “[a] person with even basic computer
science knowledge would not understand the ’196 Patent to encompass manual human processes
intermixed between the automated machine processes expressly claimed” (Doc. No. 140 at 25).
Plaintiff replies by reiterating the Chrysler findings and by arguing that “the fact that a
computer scientist may ask ‘what can be efficiently automated?’ does not change that the
specification and claim language do not require machine automation” (Doc. No. 142 at 8).
Page 34 of 50
Plaintiff also again submits the disclosure that: “Content partners may maintain a database of
sister site web pages corresponding to the pages in the general use site. Alternatively, content
partners may provide a facility for converting web pages on the fly to the sister site format”
(’196 Patent at 2:56–59) (emphasis added).
(2) Analysis
Claim 58 is representative and recites, in relevant part (emphasis added; reexamination
amendments included but not indicated):
58. A machine readable medium having instructions stored therein, which when
executed cause a machine to perform a set of operations comprising:
displaying on-line content accessed via the Internet, the on-line content
reformatted from a webpage in a hypertext markup language (HTML) format into
an extensible markup language (XML) format to generate a sister site, the sister
site including a portion or a whole of content of the web page reformatted to be
displayed and navigable through a simplified navigation interface on any one of a
television, web appliance, console device, handheld device, wireless device or
cellular phone, the simplified navigation interface displayed in a form of a twodimensional layer of cells from a plurality of layers and a plurality of cells, the
two-dimensional layer in a form of a navigation matrix, each cell is a division of a
screen and exclusive to a separate single navigation option associated with a
specific unique input, the on-line content formatted to be displayed in one or more
of the plurality of cells and formatted to be selected for navigation by one or more
of the unique inputs, navigation options to change between layers of the
simplified navigation interface from general to more specific in each deeper layer;
....
The specification discloses:
In one embodiment, the sister site is traditional HTML pages converted to a
matrix format to permit matrix navigation. This conversion may be done using an
XML transcoding or any other suitable language.
Content partners may maintain a database of sister site web pages corresponding
to the pages in the general use site. Alternatively, content partners may provide a
facility for converting web pages on the fly to the sister site format.
’196 Patent at 2:52–59 (emphasis added). Defendants have also cited Figure 3, which illustrates
“transcoder 30”:
Page 35 of 50
FIG. 3 is a flow diagram of conversion of standard HTML pages to a sister site
format in one embodiment of the invention. A hypertext markup language
(HTML) page 40 is transcoded by a transcoder 30 to yield, for example, an XML
page 42 to which a document type definition (DTD) 38 is applied. The DTD 38
specifies the rules for the structure of the resulting XML document. The XML
page is then reformatted using extensible style language (XSL) 34 to
corresponding format data 32. XSL is not currently supported by all standard
browsers. Thus, after formatting, the XML document is translated to an extensible
hypertext markup language (XHTML) document for subsequent display by a
client side browser on display 52. Alternatively, the XML page may have a
cascading style sheet (CSS) applied to achieve the desired format. One advantage
of the CSS is that it is supported by standard browsers. After application of the
CSS, the resulting formatted page can be displayed by the client browser on
display 52.
Id. at 3:21–37 (emphasis added). Figure 3 is reproduced here:
Defendants have relied upon Figure 3 as well as various disclosures that, Defendants
argue, frame the claims in the context of machine-automated processes:
A person of ordinary skill in the art would understand the ’196 Patent to mean
that automated machine processes are performed to complete all the claimed steps
of the patent. The ’196 Patent is about simplification. ’196 Patent at 2:26 (“A
Page 36 of 50
simplified system for navigation…”). One embodiment provides: “[c]ontent
partners may maintain a database of sister site web pages…” ’196 Patent at 2:56–
57. In this embodiment, many pages would have to be converted from full sites to
sister sites at once. Such repetitive tasks would be simplified by efficiently
automating the steps with a computer. Another embodiment envisions that
“content partners may provide a facility for converting web pages on the fly…”
’196 Patent at 2:58–59. In this embodiment, web pages would each be converted
on-demand in the same instant the web pages are requested. The only way to
convert web pages on-demand, in a simplified way, is through machine
automation. In another embodiment, the patent discloses “providing for
conversion on the client side.” ’196 Patent at 3:45–46. This embodiment is only
possible using a machine automated process, as it is impossible for a content
provider to manually convert a web page at a client’s home.
(Doc. No. 140 at 24–25 (citations modified)). Defendants have also cited Figure 9a, which
illustrates a matrix of an “amazon.com sister site” that includes a cell for “amazon.com,” which
Defendants argue is for navigating to the original HTML “web page” from which the sister site
was generated (Doc. No. 140 at 18).
On one hand, the specification discusses conversion in the context of machine
transcoding, as opposed to manual conversion by a person. See Retractable Techs., Inc. v.
Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (“In reviewing the intrinsic
record to construe the claims, we strive to capture the scope of the actual invention, rather than
strictly limit the scope of claims to disclosed embodiments or allow the claim language to
become divorced from what the specification conveys is the invention.”); see also Nystrom v.
TREX Co., Inc., 424 F.3d 1136, 1144–45 (Fed. Cir. 2005) (construing term “board” to mean
“wood cut from a log” in light of the patentee’s consistent usage of the term; noting that patentee
“is not entitled to a claim construction divorced from the context of the written description and
prosecution history”). Also, the Figures cited by Plaintiff, such as Figures 2B, 2C, 9A–D, 10a–g,
11, 12a–b, and 13 (see Doc. No. 138 at 27), illustrate sister sites but do not illustrate manual
generation of a sister site.
Page 37 of 50
On the other hand, the claims themselves only refer to “generat[ing],” not transcoding,
and nothing in the specification disclaims using the content of a website to create a sister site
manually rather than by machine. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1366–67 (Fed. Cir. 2012) (“It is . . . not enough that the only embodiments, or all of the
embodiments, contain a particular limitation. We do not read limitations from the specification
into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer,
there must be a clear and unmistakable disclaimer.”).
On balance, Defendants’ proposal would improperly import a limitation into the claims
and is hereby expressly rejected. See Innova/Pure Water, 381 F.3d at 1117; see also Phillips, 415
F.3d at 1323.
Defendants have also noted that the preambles of Claims 25 and 58 recite operations
performed by a machine (Doc. No. 140 at 25). Defendants have not briefed any issue of whether
the preambles of Claims 25 and 58 are limitations of those claims. See generally Catalina Mktg.
Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808–09 (Fed. Cir. 2002). Moreover, even assuming
for the sake of argument that those preambles are limiting, there is no need to duplicate that
limitation in the constructions of “to generate a sister site” and “reformatted.” Moreover, as
Plaintiff properly submits, “the claimed operations can be performed by a machine using a sister
site that is manually created” (Doc. No. 142 at 9).
Finally, as discussed above regarding the term “to navigate to the web page,” the sister
site is generated from an HTML format “website” rather than strictly a single “web page.” See
Dr. Pepper at 6–7. The Court also hereby expressly rejects Plaintiff’s argument that the sister
site can be created “independently from the main site” as Plaintiff has suggested (see Doc.
No. 138 at 23–24).
Page 38 of 50
The Court accordingly hereby construes “to generate a sister site” to mean “to bring a
website in an XML format into existence by reformatting the HTML format website.”
K. “reformatted”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“reformatted by a machine transcoder”
(Doc. No. 138 at 26; Doc. No. 140 at 22). The parties submit that this term appears in Claims 25
and 58.
Dr. Pepper found no construction necessary for the larger term “the [first/online] content
reformatted from a web page in a hypertext markup language (HTML) format into an extensible
markup language (XML) format to generate a sister site.” Dr. Pepper at 10–11 (emphasis
added). Chrysler likewise found no construction necessary for the term “reformatted.” Chrysler
at 30–31.
Plaintiff and Defendants argue this disputed term together with the term “to generate a
sister site” (see Doc. No. 138 at 26–28; Doc. No. 140 at 22–25; Doc. No. 142 at 7–9). Plaintiff
submits specifically as to “reformatted,” however, that “[b]ecause this term is used in its plain
and ordinary sense, it should not be construed” (Doc. No. 138 at 28).
The parties’ disputes having been fully addressed with reference to the term “to generate
a sister site,” above, Defendants’ proposal of requiring a “machine transcoder” is hereby
expressly rejected. The term “reformatted” requires no further construction. See U.S. Surgical,
103 F.3d at 1568 (“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
Page 39 of 50
be) required to construe every limitation present in a patent’s asserted claims.”); Finjan, 626
F.3d at 1207 (“Unlike O2 Micro, where the court failed to resolve the parties’ quarrel, the district
court rejected Defendants’ construction.”).
The Court therefore hereby construes “reformatted” to have its plain meaning.
L. “the two-dimensional layer in a form of a navigation matrix”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“the layer is at least two rows and at least two
columns and is formed in a rectangular
arrangement”
(Doc. No. 138 at 28; Doc. No. 140 at 26). The parties submit that this term appears in Claims 25
and 58.
At the June 20, 2013 hearing in Chrysler, the Court provided the parties with the
following preliminary proposed construction: “the layer includes at least two rows and at least
two columns.” Chrysler at 31. The defendants were agreeable, and Plaintiff responded that it
would be agreeable if the Court made clear that the rows and columns may be irregular. Id.
Plaintiff expressed concern that although the Court’s preliminary proposed construction omitted
the “rectangular arrangement” phrase proposed by the defendants, the construction might
nonetheless be read to require a regular, uniform distribution of rows and columns. Id. Plaintiff
cited Figures 2C, 10f, 13, and 14 as illustrating irregular segmentation. Id. Plaintiff agreed,
however, that a single column would not qualify as “two-dimensional.” Id. Chrysler then
construed the disputed term to mean “the layer includes at least two rows and at least two
columns.” Id. at 32. The Court also expressly rejected the defendants’ proposal of requiring a
“rectangular arrangement,” and the Court further clarified that “the Court’s construction allows
Page 40 of 50
for ‘irregular segmentation,’ that is, non-uniform arrangement of rows and columns, and that
cells may be of irregular size and shape.” Id.
(1) The Parties’ Positions
In the above-captioned case, Plaintiff acknowledges Chrysler but nonetheless “maintains
that this phrase does not require construction because the claim language will [be] readily
understood by a jury without construction” (Doc. No. 138 at 28). Plaintiff also cites portions of
the specification that Plaintiff characterizes as disclosing non-uniform, non-rectangular
arrangements (Doc. No. 138 at 28–29) (citing ’196 Patent at 2:63–65, 4:67–5:3, 8:51–53, 10:4–8,
Figs. 2B, 2C, 8, 9a–d, 10a–g, 12a–b, 14).
Defendants respond that “[a] ‘navigation matrix’ is generally understood to refer to a
rectangular arrangement, rather than some random arrangement of cells” (Doc. No. 140 at 26).
Defendants also argue that “none of the[] statements in the patent [cited by Plaintiff] suggest,
expressly or inherently, that the navigation matrix does not have a rectangular shape, overall”
(Doc. No. 140 at 27).
Plaintiff replies that “[c]onstruing the term runs the risk that a jury will assume that every
row has the same number of columns and every column has the same number of rows” (Doc.
No. 142 at 9). Plaintiff further argues that the Court’s clarification in Chrysler regarding
“irregular segmentation” “would have to be given to the jury and even then it raises questions
about what ‘irregular segmentation’ and ‘non-uniform arrangement of rows and columns’ mean”
(Doc. No. 142 at 9).
(2) Analysis
Because the parties’ disagree on whether the disputed term requires a “rectangular
arrangement,” the Court is obligated to construe the term. See O2 Micro, 521 F.3d at 1362.
Page 41 of 50
Claim 58 is representative and recites, in relevant part (emphasis added): “the simplified
navigation interface displayed in a form of a two-dimensional layer of cells from a plurality of
layers and a plurality of cells, the two-dimensional layer in a form of a navigation matrix, each
cell is a division of a screen and exclusive to a separate single navigation option associated with
a specific unique input . . . .”
As the parties agreed in Chrysler, the claimed “two-dimensional” matrix is something
more than a single row or a single column. Defendants’ proposal of at least two rows and at least
two columns is appropriate because, for example, multiple “columns” arranged in a single, onedimensional row would not be “two-dimensional.”
As to whether a “rectangular arrangement” is required, Defendants argue that “every
embodiment shown in the figures of the patent is a rectangular grid of cells, like a keypad” (Doc.
No. 140 at 27) (citing ’196 Patent at Figs. 2B, 5C, 8, 9a–9d, 10a–10g, 11, 12a–12b). Defendants
emphasize that the ’196 Patent, in particular in Figure 9b, “expressly teaches how to implement
an irregular segmentation of cells within a rectangular matrix (note that the rightmost column has
only two rows, while all other columns have four rows)” (Doc. No. 140 at 27). As to extrinsic
evidence, Defendants have cited a dictionary definition of “matrix” that includes “something
resembling a mathematical matrix esp[ecially] in rectangular arrangement of elements into rows
and columns” Merriam-Webster’s Collegiate Dictionary 717 (10th ed. 1996) (included with
Defendants’ briefing at Doc. No. 140-21).
In light of the disclosure of irregular segmentation. See ’196 Patent at 1:58, 3:16, Fig. 2C;
see also id. at 2:63–65, 8:51–53. and that cell boundaries might not be shown. See id. at 3:2–11,
4:67–5:3. The terms “two-dimensional” and “matrix” do not require a rectangular arrangement.
On balance, Defendants’ proposal of “a rectangular arrangement” would improperly import a
Page 42 of 50
limitation into the claims and is hereby expressly rejected. See Innova/Pure Water, 381 F.3d
at 1117; see also Phillips, 415 F.3d at 1323.
The Court further hereby clarifies that, as found in Chrysler, the Court’s construction
allows for “irregular segmentation” such that cells may be of irregular size and shape and may be
in a non-uniform arrangement of rows and columns. Chrysler at 32.
The Court accordingly hereby construes “the two-dimensional layer in a form of a
navigation matrix” to mean “the layer includes at least two rows and at least two columns.”
M. “manipulating a r egion of the screen” and “manipulating a selected region of the
screen”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
No construction necessary
“manipulating a cell”
(Doc. No. 138 at 29; Doc. No. 140 at 28). The parties submit that this term appears in Claims 25
and 58.
Dr. Pepper previously found no construction necessary as to the larger term
“manipulating a [region/selected region] of the screen for viewing and zooming and/or scrolling
of the displayed on-line content.” Dr. Pepper at 12–13. In Chrysler, the Court did not construe
this term because “[d]efendants’ response brief d[id] not address this term, and the parties did not
address this term in their joint statement regarding the terms to be argued at the June 20, 2013
hearing” in Chrysler. Chrysler at 33.
(1) The Parties’ Positions
Plaintiff cites the Dr. Pepper analysis and, in particular, the finding in Dr. Pepper that
“[t]he specification and claims . . . do not limit a region to only a portion of the screen” (Doc.
No. 138 at 30) (citing Dr. Pepper at 13). Plaintiff further argues that “‘[r]egion’ and ‘cell’ are not
used interchangeably in the claims or specification because they mean different things,” and in
Page 43 of 50
further support Plaintiff submits dictionary definitions of “region” and “cell” (Doc. No. 138
at 30).
Defendants respond that the disputed term itself, by referring to “a region of the screen,”
demonstrates that a region must be less than the whole web page (Doc. No. 140 at 28).
Defendants explain that “[s]egmenting the display of a web page into a number of separate
regions is a central aspect of the ’196 Patent. This segmentation is what enables the so-called
simplified navigation” (Doc. No. 140 at 28). Defendants also argue that “[t]he claims and
specification use ‘region’ and ‘cell’ interchangeably to describe the separate portions of the socalled sister site” (Doc. No. 140 at 29). Finally, Defendants submit that in prior litigation,
Plaintiff proposed giving “region” and “cell” the same construction, namely “an area” (Doc. No.
140 at 30).
Plaintiff replies by reiterating its opening arguments and by arguing that “[n]othing in the
specification or intrinsic record compels a ‘region of the screen’ to mean ‘cell.’ Defendants’
examples from the specification also actually reflect that ‘cell’ and ‘region’ are used differently”
(Doc. No. 142 at 10). Plaintiff also notes that in the prior litigation cited by Defendants, Plaintiff
“did not take the position that ‘a region of the screen’ means the same thing as ‘cell’” (Doc. No.
142 at 10 n.13).
(2) Analysis
Claim 58 is representative and recites (emphasis added; reexamination amendments
included but not indicated):
58. A machine readable medium having instructions stored therein, which when
executed cause a machine to perform a set of operations comprising:
displaying on-line content accessed via the Internet, the on-line content
reformatted from a webpage in a hypertext markup language (HTML) format into
an extensible markup language (XML) format to generate a sister site, the sister
site including a portion or a whole of content of the web page reformatted to be
Page 44 of 50
displayed and navigable through a simplified navigation interface on any one of a
television, web appliance, console device, handheld device, wireless device or
cellular phone, the simplified navigation interface displayed in a form of a twodimensional layer of cells from a plurality of layers and a plurality of cells, the
two-dimensional layer in a form of a navigation matrix, each cell is a division of a
screen and exclusive to a separate single navigation option associated with a
specific unique input, the on-line content formatted to be displayed in one or more
of the plurality of cells and formatted to be selected for navigation by one or more
of the unique inputs, navigation options to change between layers of the
simplified navigation interface from general to more specific in each deeper layer;
displaying a hyperlink on the sister site to navigate to the web page, or
displaying a hyperlink on the web page to navigate to the sister site;
receiving a user selection of one of the navigation options;
forwarding the selected navigation option across the internet to a server
providing the simplified navigation interface;
receiving a next deeper navigation layer of the simplified navigation
interface corresponding to the selected navigation option; and
manipulating a region of the screen for viewing and zooming and/or
scrolling of the displayed on-line content.
Because above-quoted Claim 58, for example, uses the term “cell” as well as the term
“region,” the Court presumes that those terms have different meanings. CAE Screenplates, Inc. v.
Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
any evidence to the contrary, we must presume that the use of these different terms in the claims
connotes different meanings.”); accord Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841,
848 (Fed. Cir. 2006) (“[T]he terms ‘engaging’ and ‘sealing’ are both expressly recited in the
claim and therefore ‘engaging’ cannot mean the same thing as ‘sealing’; if it did, one of the
terms would be superfluous.”); Chi. Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d
1361, 1369 (Fed. Cir. 2012) (noting “[t]he general presumption that different terms have
different meanings”).
Because this presumption is rebuttable, the Court turns to the evidence submitted by the
parties. The specification suggests that a “cell” corresponds to a “region”:
Content partners may also provide for segmentation of the base HTML web pages
and/or the matrix pages. A segmentation may be performed in a number of ways.
Page 45 of 50
The page may be divided up based on content or area. The net result, in any case,
is that the web page is divided into regions which are not necessarily, but may be,
of equal size. The individual regions may be brought into focus independently. By
“brought into focus,” the concept of focus in this context is analogous to the front
window in a windowing system. The focus region is deemed active and subject to
client manipulation. In the context of a matrix page, one suitable segmentation is
by cell, e.g., each cell corresponds to a region that may be independently brought
into focus. The borders of the regions may or may not be visible on the web pages
displayed. This segmentation facilitates tab, scroll, and zoom features described in
more detail below.
’196 Patent at 2:59–3:8 (emphasis added).
Particularly in the case of matrix pages, the different cells typically have
associated therewith either an alphanumeric character or some symbol such as an
asterisk or other punctuation mark to identify the cell. If there are identifications
associated with the regions, a determination is made at decision block 456 if such
an identification has been received as an input on the client node.
Id. at 5:13–19 (emphasis added).
FIGS. 9a–d are example sister site matrix pages. In FIG. 9a, an advertising cell
900 is the focus region of the displayed image. Ten advertisements are displayed
within the regions.
Id. at 8:18–20 (emphasis added).
During reexamination of the ’196 Patent, Plaintiff stated that “[t]he ’196 Patent
specification discloses a process of re-presenting a web page via a sister site through a process of
content regionalization. The ’196 Patent discloses that individual content regions may then be
brought into focus permitting simplified navigation . . .” (8/30/2010 Response, Doc. No. 140-13
at 7) (emphasis modified).
As to extrinsic evidence, Plaintiff has cited a “dictionary.com” definition of “region” as
meaning “[a] large, usually continuous segment of a surface or space” (Doc. No. 138-7). Plaintiff
has also cited a “dictionary.com” definition of “cell” as “any of various small compartments or
bounded areas forming part of a whole” (Doc. No. 138-8).
Page 46 of 50
Finally, in the prior cases of EMG Technology, LLC v. Microsoft Corp., et al. and EMG
Technology, LLC v. Apple Inc., et al., Plaintiff proposed that the plain meaning of both “region”
and “cell” was apparent, but in the alternative, Plaintiff proposed that both terms should be given
the same construction, namely “an area” (10/27/2010 P.R. 4-3 Joint Claim Construction and
Prehearing Statement, No. 6:09-CV-367, Doc. No. 266 App’x A, Doc. No. 140-22 at 11). This
prior litigation, however, was dismissed before the Court entered any claim construction order.
On balance, however, Defendants have failed to overcome the above-cited presumption
that different terms have different meanings. In particular, Defendants have failed to demonstrate
that manipulating a “region” must refer to manipulating a “cell” as opposed to, for example,
manipulating a portion of the screen that includes multiple cells. Defendants’ proposed
construction is therefore hereby expressly rejected.
No further construction is necessary. See U.S. Surgical, 103 F.3d at 1568 (“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, 626 F.3d at 1207 (“Unlike O2 Micro, where the court
failed to resolve the parties’ quarrel, the district court rejected Defendants’ construction.”).
The Court therefore hereby construes “manipulating a r egion of the screen” and
“manipulating a selected region of the screen” to have their plain meaning.
Page 47 of 50
N. “sister site”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“a website that is related to another website”
“a site that provides for navigation of a related
web page using a simplified navigation
interface”
(Doc. No. 113-2 at 1; Doc. No. 113-3 at 13). The parties submit that this term appears in Claims
25 and 58.
Dr. Pepper construed this term to mean “a website that is related to another website.”
Dr. Pepper at 5–7.
At the June 20, 2013 hearing in Chrysler, the Court provided the parties with the
following preliminary proposed construction: “a site that provides for navigation of a related
website using a simplified navigation interface.” Chrysler at 10. Both sides were agreeable to the
Court’s preliminary proposed construction, which the Court therefore adopted. Id.
Defendants argue that for the same reasons discussed as to the terms “to navigate to the
web page” and “to navigate to the sister site,” above, the Court should construe “sister site” to
mean “a site that provides for navigation of a related web page using a simplified navigation
interface” (Doc. No. 140 at 30 (emphasis Defendants’)). The Court hereby expressly rejects
Defendants’ proposal of “web page” for the same reasons as for the terms “to navigate to the
web page” and “to navigate to the sister site,” above.
The Court accordingly hereby construes “sister site” to mean “a site that provides for
navigation of a related website using a simplified navigation interface.”
O. “webpage” and “web page”
The parties note in their November 8, 2013 Joint Claim Construction Chart that they have
reached agreement that “webpage” and “web page” should be construed to mean “a document
Page 48 of 50
on an Internet website” (Doc. No. 149-2 at 2). The Court hereby adopts the parties’ agreed
construction.
V. CONCLUSION
For the reasons stated, the Court adopts the constructions set forth above.
Within forty (40) days of the issuance of this Memorandum Opinion and Order, the
parties are ORDERED, in good faith, to mediate this case with the mediator as agreed upon by
.
the parties. Within five (5) days from this date, the parties shall meet and confer and then advise
the Court of their agreed upon mediator or that they have not been able to agree upon a mediator.
If the parties do not agree upon a mediator and the Court appoints a mediator, then the parties are
ORDERED to mediate this case within forty (40) days of the appointment of a mediator by the
Court.
It is SO ORDERED.
SIGNED this 4th day of December, 2013.
____________________________________
MICHAEL H. SCHNEIDER
UNITED STATES DISTRICT JUDGE
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Attachment A
Term
Court’s Final Construction
1. “manipulated within
Plain meaning
selected one of the regions”
2. “email form”
Plain meaning
3. “purchasing interface”
“purchasing form displayed in the navigation matrix”
4. “simplified navigation
interface”
Plain meaning
5. “next deeper navigation
layer”
Plain meaning
6. “exclusive to a separate
single navigation option”
“there is a one-to-one relationship between cells and
navigation options”
7. “unique input”
“a distinct input that actuates only one navigation option”
8. “to navigate to the web
page”
“to navigate to the website used to generate the sister site”
9. “to navigate to the sister
site”
“to navigate to the sister site generated from the website”
10. “to generate a sister site”
“to bring a website in an XML format into existence by
reformatting the HTML format website.”
11. “reformatted”
Plain meaning
12. “the two-dimensional layer
in a form of a navigation
matrix”
“the layer includes at least two rows and at least two
columns”
13. “manipulating a region of
the screen” and
“manipulating a selected
region of the screen”
Plain meaning
14. “sister site”
“a site that provides for navigation of a related website using a
simplified navigation interface”
15. “webpage” and “web page” “a document on an Internet website"
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