Diem LLC v. BigCommerce, Inc.
Filing
66
MEMORANDUM OPINION AND ORDER construing the disputed claim terms in U.S. Patent No. 7,770,122. Signed by Magistrate Judge John D. Love on 2/7/2018. (mjc, )
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
DIEM LLC,
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v.
BIGCOMMERCE, INC.
Civil Action No. 6:17-cv-186-JRG-JDL
MEMORANDUM OPINION AND ORDER
This claim construction opinion construes the disputed claim terms in U.S. Patent No.
7,770,122 (“the ’122 Patent”).
Plaintiff Diem LLC (“Diem” or “Plaintiff”) alleges that
Defendant BigCommerce, Inc. (“BigCommerce” or “Defendant”) infringes the ’122 Patent.
Plaintiff filed an opening claim construction brief (Doc. No. 56), to which Defendant filed a
responsive brief (Doc. No. 59),1 and Plaintiff filed a reply (Doc. No. 62).
The Parties
additionally submitted a Joint Claim Construction Chart pursuant to P.R. 4-5(d). (Doc. No. 64.)
On February 6, 2018, the Court held a claim construction hearing. Upon consideration of the
parties’ arguments, and for the reasons stated herein, the Court adopts the constructions set forth
below.
OVERVIEW OF THE PATENTS
Plaintiff alleges Defendant infringes certain asserted claims of the ’122 Patent. Plaintiff
states that “the claimed method allows lay people having no knowledge about computer coding
to create, customize, and host their own website.” (Doc. No. 56 at 2.) The ’122 Patent is titled
“Codeless Dynamic Websites Including General Facilities,” and relates to website hosting
without coding. See generally ’122 Patent. More specifically, the ’122 Patent describes “a
1
A corrected responsive brief was filed with errata as Docket No. 60-1. All citations herein will be to the corrected
version unless otherwise noted.
1
method that enable[s] even non-technical people to host their own websites without coding,
including general facilities such as webmail, chat, subscription, send page, user registration,
login, password maintenance, advertisement hosting, chat box, RSS Feeds etc.” Id. at 2:7–11. A
person who hosts the website is called a “user” and a person who visits a website is called a
“visitor.” Id. at 2:15–17. The user creates the website using a “codeless website development
and hosting system,” which provides a hosting page with a homepage template. Id. at 2:15–18.
The hosting page contains various text boxes, text areas, as well as control buttons that help build
a website. Id. at 2:17–63. These concepts are reflected in the patent’s asserted claims, and
independent claim 1 is set forth below for reference:
1. A method comprising
causing a user computer to request a template web page computer code file
from a server computer in response to a request by a user through a web
browser computer program running on the user computer;
supplying the template web page computer code file from the server computer
to the user computer in response to the request, wherein the template web
page computer code file includes code representing a first plurality of
control buttons, a second plurality of visible items, a host button and a
fourth plurality of hidden fields;
storing the template web page computer code file in a temporary computer
memory of the user computer,
causing the user computer to interpret the template web page computer code
file to display a template web page display on a user monitor of the user
computer wherein the template web page display includes the first
plurality of control buttons, the second plurality of visible items, and the
host button;
causing the first plurality of control buttons, the second plurality of visible
items, and the host button of the template web page display to be stored in
a first location in the temporary computer memory of the user computer;
causing the fourth plurality of hidden fields to be located at a second location
in the temporary computer memory of the user computer;
modifying the template web page display to form a modified template web
page display by executing functions of a script computer programming
code of the template web page computer code file, wherein the template
web page display is modified by modifying one or more of the second
plurality of visible items of the template web page display on the user
monitor of the user computer;
2
wherein the modified template web page display includes the first plurality of
control buttons, a third plurality of visible items, which includes one or
more modified visible items of the second plurality of visible items and
any non-modified visible items of the second plurality of visible items,
and the host button;
causing the third plurality of visible items of the modified template web page
display to be stored in the temporary computer memory of the user
computer;
receiving at the user computer, a user selection of the host button of the
modified template web page display;
in response to the user selection of the host button, causing content and
attributes of the third plurality of visible items of the modified template
web page display to be taken from the first location in the temporary
computer memory of the user computer and placed in the fourth plurality
of hidden fields in the second location in the temporary computer memory
of the user computer;
in response to the user selection of the host button, further causing the content
and attributes of the third plurality of visible items of the modified
template web page display to be taken from the fourth plurality of hidden
fields in the second location in temporary computer memory and wrapped
in a request object containing no html file in temporary memory of the
user computer and sending the request object containing no html file to the
server computer;
receiving the request object containing no html file at the server computer;
storing the request object containing no html file in temporary memory of the
server computer;
causing the server computer to take the content and attributes of the third
plurality of visible items of the modified template web page display out of
the request object containing no html file and to store them as text in a
database; and
retrieving the content and attributes of the third plurality of visible items of
the modified template web page display from the database, and
transmitting them to a visitor computer with print instructions in response
to a visitor request for a web page comprising the third plurality of visible
items of the modified template web page display;
causing the browser computer program running on the visitor computer to
interpret the print instructions to display a visitor web page display
comprising the third plurality of visible items of the modified template
web page display.
’122 Patent at 37:5–38:18.
There are fourteen disputed terms or phrases in the asserted claims.
LEGAL STANDARD
3
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
the patented invention’s scope.
Id. at 1313–14; Bell Atl. Network Servs., Inc. v. Covad
Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes
the claims, the rest of the specification and the prosecution history.
Phillips, 415 F.3d at
1312–13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their
ordinary and customary meaning as understood by one of ordinary skill in the art at the time of
the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361,
1368 (Fed. Cir. 2003). Claim language guides the Court’s construction of claim terms.
Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be
highly instructive.” Id.
Other claims, asserted and unasserted, can provide additional
instruction because “terms are normally used consistently throughout the patent.”
Id.
Differences among claims, such as additional limitations in dependent claims, can provide
further guidance. Id.
“[C]laims ‘must be read in view of the specification, of which they are a part.’”
Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)).
“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’”
Id. (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex. Inc. v.
Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may
define his own terms, give a claim term a different meaning than it would otherwise
4
possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the
Court generally presumes terms possess their ordinary meaning, this presumption can be
overcome by statements of clear disclaimer.
See SciMed Life Sys., Inc. v. Advanced
Cardiovascular Sys., Inc., 242 F.3d 1337, 1343–44 (Fed. Cir. 2001). This presumption does
not arise when the patentee acts as his own lexicographer.
See Irdeto Access, Inc. v.
EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed. Cir. 2004).
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 Group Inc., 362
F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
the specification may aid the court in interpreting the meaning of disputed language in the
claims, particular embodiments and examples appearing in the specification will not generally be
read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
1988); see also Phillips, 415 F.3d at 1323.
The prosecution history is another tool to supply the proper context for claim
construction because a patentee may define a term during prosecution of the patent. Home
Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
specification, a patent applicant may define a term in prosecuting a patent.”).
The well-
established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g Inc. v.
Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
5
patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
prosecution to obtain claim allowance. Middleton Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir.
2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir.
2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
(citations omitted)). “Indeed, by distinguishing the claimed invention over the prior art, an
applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d
1372, 1378-79 (Fed. Cir. 1988) (quotation omitted).
“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.”
Omega Eng’g, Inc., 334 F.3d at 1324.
Although “less significant than the intrinsic record in determining the legally operative
meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
treatises may help the Court understand the underlying technology and the manner in which one
skilled in the art might use claim terms, but such sources may also provide overly broad
definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
expert testimony may aid the Court in determining the particular meaning of a term in the
pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
prosecution history in determining how to read claim terms.” Id.
In patent construction, “subsidiary fact finding is sometimes necessary” and the court
“may have to make ‘credibility judgments’ about witnesses.” Teva v. Sandoz, 135 S.Ct. 831, 838
(2015). In some cases, “the district court will need to look beyond the patent’s intrinsic evidence
6
and to consult extrinsic evidence in order to understand, for example, the background science or
the meaning of a term in the relevant art during the relevant time period.” Id. at 841. “If a
district court resolves a dispute between experts and makes a factual finding that, in general, a
certain term of art had a particular meaning to a person of ordinary skill in the art at the time of
the invention, the district court must then conduct a legal analysis: whether a skilled artisan
would ascribe that same meaning to that term in the context of the specific patent claim under
review.” Id. (emphasis in original). When the court makes subsidiary factual findings about the
extrinsic evidence in consideration of the “evidentiary underpinnings” of claim construction,
those findings are reviewed for clear error on appeal. Id.
DISCUSSION
The parties dispute the meaning of the following claim terms, which are set forth herein:
I.
DISPUTED CLAIM TERMS
A.
“the user” / “the visitor” / “the program” (’122 Patent, Claim 1)
United States Patent No.
7,770,122
Claim Language
Plaintiff’s Proposed
Construction
Defendant’s Proposed
Construction
“causing a user computer
to request a template web
page computer code file”
No construction necessary, as “A user causing a user
the term should be afforded its computer to request a
template web page computer
plain-and-ordinary meaning.
code file”
Alternatively
“Software service provider
causing a user computer to request
a template web page computer
code file”
“storing the template web
page computer code file in
a temporary computer
memory of the user
computer”
No construction necessary, as “The user storing the template
the term should be afforded its web page computer code file
in a temporary computer
plain-and-ordinary meaning.
memory of the user
computer.”
Alternatively
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“Software service provider storing
the template web page computer
code file in a temporary computer
memory of the user computer”
“causing the user
computer to interpret the
template web page
computer code file”
No construction necessary, as “The user causing the user
the term should be afforded its computer to interpret the
template web page computer
plain-and-ordinary meaning.
code file”
Alternatively
“Software service provider
causing the user computer to
interpret the template web page
computer code file”
“causing the first plurality
of control buttons, the
second plurality of visible
items, and the host button
of the template web page
display to be stored in a
first location in the
temporary computer
memory of the user
computer;”
No construction necessary, as “The user causing the first
the term should be afforded its plurality of control buttons,
the second plurality of visible
plain-and-ordinary meaning.
items, and the host button of
the template web page display
Alternatively
to be stored in a first location
in the temporary computer
“Software service provider
memory of the user
causing the first plurality of
computer”
control buttons, the second
plurality of visible items, and the
host button of the template web
page display to be stored in a first
location in the temporary
computer memory of the user
computer”
“causing the fourth
plurality of hidden fields
to be located at a second
location in the temporary
computer memory of the
user computer;”
No construction necessary, as “The user causing the fourth
the term should be afforded its plurality of hidden fields to be
located at a second location in
plain-and-ordinary meaning.
the temporary computer
memory of the user
Alternatively
computer”
“Software service provider
causing the fourth plurality of
hidden fields to be located at a
second location in the temporary
computer memory of the user
computer”
“causing the third
plurality of visible items of
the modified template web
page display to be stored
No construction necessary, as “The user causing the third
the term should be afforded its plurality of visible items of
the modified template web
plain-and-ordinary meaning.
page display to be stored in
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the temporary computer
memory of the user
computer”
in the temporary
computer memory of the
user computer;”
Alternatively
“causing content and
attributes of the third
plurality of visible items of
the modified template web
page display to be taken
from the first location in
the temporary computer
memory of the user
computer and placed in
the fourth plurality of
hidden fields in the second
location in the temporary
computer memory of the
user computer;”
No construction necessary, as “The user causing content and
the term should be afforded its attributes of the third plurality
of visible items of the
plain-and-ordinary meaning.
modified template web page
display to be taken from the
Alternatively
first location in the temporary
computer memory of the user
“Software service provider
computer and placed in the
causing content and attributes of
the third plurality of visible items fourth plurality of hidden
fields in the second location in
of the modified template web
the temporary computer
page display to be taken from the
memory of the user
first location in the temporary
computer”
computer memory of the user
computer and placed in the fourth
plurality of hidden fields in the
second location in the temporary
computer memory of the user
computer”
“sending the request
object containing no html
file to the server
computer;”
No construction necessary, as “The user sending the request
the term should be afforded its object containing no html file
to the server computer.”
plain-and-ordinary meaning.
“Software service provider
causing the third plurality of
visible items of the modified
template web page display to be
stored in the temporary computer
memory of the user computer”
Alternatively
“Software service provider
sending the request object
containing no html file to the
server computer”
“causing the server
computer to take the
content and attributes of
the third plurality of
visible items of the
modified template web
page display out of the
request object containing
no html file and to store
them as text in a
No construction necessary, as “The provider causing the
the term should be afforded its server computer to take the
content and attributes of the
plain-and-ordinary meaning.
third plurality of visible items
of the modified template web
Alternatively
page display out of the request
object containing no html file
“Software service provider
and to store them as text in a
causing the server computer to
database”
take the content and attributes of
the third plurality of visible items
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database;”
of the modified template web
page display out of the request
object containing no html file and
to store them as text in a
database”
“causing the browser
computer program
running on the visitor
computer to interpret the
print instructions”
No construction necessary, as “The visitor causing the
the term should be afforded its browser computer running on
the visitor computer to
plain-and-ordinary meaning.
interpret the print
instructions.”
Alternatively
“Software service provider
causing the browser computer
program running on the visitor
computer to interpret the print
instructions”
Plaintiff states that “[t]he crux of the dispute for these [ten] terms is whether it is
appropriate to add language to these terms that identifies a particular entity who performs the
claimed action.” (Doc. No. 56 at 8.) Most of the claim construction disputes center on terms
such as “causing…,” “storing…,” and “sending…,” and the question as to what/who does the
“causing,” “storing,” and “sending.”
Plaintiff asks for no construction, or in the alternative, a construction that prefaces the
term with “the software provider.” Plaintiff maintains that the language in the overall patent
shows that the claims were intended to show performance by the software provider. Id. at 9–10.
Plaintiff points out that certain dependent claims note that an action is done “by a user,” and
others do not specify what entity performs the steps. Id. at 10–11. Plaintiff concludes this
construction was intentional and should be given meaning. Id. Plaintiff then examines each
disputed claim step and argues that Defendant’s proposed additional language should be rejected
because the construction contrasts with the utility of the patent or that the language is already in
the claim, making added terms irrelevant. Id. at 9–25. Defendant counters that the software
provider does not cause the actions of the patent, because other actions are needed. (Doc. No.
10
60-1 at 3.) Specifically, Defendant argues that each construction should include a preface of “the
user,” “the provider,” or “the visitor.” Id. Defendant argues that the ’122 Patent specification
and file history, as well as the extrinsic evidence show that the user is the entity that causes
certain tasks to occur, not the software provider. Id. at 4–12. Defendant concludes that there is
no evidence in the record that any party besides those Defendant provides in the claim
construction operates the function in the claim, and the language is therefore appropriate. Id. at
14–17.
For each of the above terms, the primary dispute between the parties is the same—
whether the user performs the claimed action, or whether it is done by the software provider. To
resolve this dispute, the Court must look at the context of claim 1 as whole as well as the
individually claimed steps to determine who performs each claimed method step. Here, claim 1
is a method claim that claims several steps to enable a non-technical user to host a website
without coding. See ’122 Patent at 37:5–38:15; 2:6–8. Plaintiff wishes to read out any user
action from claim 1 and argues that the user is simply the impetus to start what is claimed, but is
outside the scope of the claimed steps. However, this reading of the claim does not comport with
the plain claim language or the intrinsic evidence.
Looking first, for example, at step one of claim 1, it requires “causing a user computer to
request a template web page computer code file from a server computer in response to a request
by a user through a web browser computer program running on the user computer…” ’122
Patent at 37:6–9. Here, Plaintiff contends that although the claim recites “in response to a
request by a user through a web browser computer program running on the user computer,” the
user action is nonetheless outside the scope of the claim. Plaintiff contends that the true claimed
step is simply “causing a user computer to request a template web page computer code file from
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a server computer,” which can be done entirely by the software provider. Thus, under Plaintiff’s
interpretation, no user action is needed to meet the requirements of this claim step.
This
interpretation effectively reads out the plain language of the claim that recites “a request by a
user.” The specification makes clear that such a request by the user is done “by a user typing a
URL…”.
See ’122 Patent at 34:25–30 (“…the template web page computer code file is
requested simply by a user typing a URL (universal resource locator) of the template web page
computer code file in an address box of the user’s browser on the user’s computer monitor and
hitting an enter button of the user’s computer keyboard.”). The specification thus describes the
request being made by an affirmative action of the user typing a URL. Indeed, as the goal of the
invention is to enable a non-technical user to host a website without the need to code, it is only
logical that the user be a component of the claimed invention; otherwise, the claim could simply
recite software capable of coding on behalf of the user. Plaintiff contends that no software claim
could ever be written without the user, but Plaintiff fails to appreciate that this is a method claim
indisputably initiated by action of a user, and indeed the patentee could have drafted a software
claim configured to do the claimed steps or a claim that only calls out actions at the server.
Here, the claimed steps of the method claim are not written as such, but require specific
performance of each action recited including user action.
Even accepting Plaintiff’s interpretation that the claim is written specifically to not
include any action of the user—effectively divorcing the second clause of step one of claim 1—
the steps of claim 1 themselves do not support this interpretation that the user is absent from the
claim. Plaintiff relies on claim 13, a dependent claim that depends from claim 1, to argue that
the patentee’s intentional drafting of requiring user action by first claiming “a user selecting”
followed by “in response to the user selecting,” indicates that the patentee’s use of the phrase “in
12
response to” is a non-claimed passive action of the user. However, Plaintiff does not address the
steps of claim 1 that include an active verb done by the user. For example, step seven requires
“modifying the template web page display…” ’122 Patent at 37:32–39. Although this step is
not in dispute, the action of “modifying the template…” clearly requires action by the user.
Indeed, the specification makes clear that the user modifies the template. See, e.g., ’122 Patent at
35:14–15 (“a user modifies the template web page display by using the computer processor of
the user computer…”); 33:30–31 (“At step 1206, a user computer (as operated by a user)
modifies the template web page computer code file”); 5:9–12 (“the user can modify the
background color and border of the form as well as the colors, fonts and borders of the labels and
input boxes.”); 27:26–29 (“The location, text, font and color of the label 690a can be modified
by keeping the cursor in a box of the label 690a (border not visible since sup-pressed) and using
the control buttons as required.”); contra ’122 Patent at 33:63–65 (“…the server computer
receives the modified template web page computer code file (having HTML tags)…”). Even
under Plaintiff’s divorced interpretation of the alleged “passive” claim language reciting user
action, the claim itself cannot be performed without some action by the user. Thus, Plaintiff’s
claim differentiation arguments are not persuasive.
Similarly, step ten recites “receiving at the user computer, a user selection of the host
button of the modified template web page display.” ’122 Patent at 37:48–49. The parties agree
that the claim term should be construed to mean “a user selection of the host button of the
modified template web page display is received at the user computer.” (Doc. No. 64-1, at 14.)
Despite this rather explicit agreement implicating the user selection of the host button, Plaintiff
argues that the action is “receiving” and that therefore the user’s selection is not imperative to
what is required of the claim. Again, the Court does not find it appropriate to read the claim
13
language in such a divorced manner. Moreover, as explained above, even if the claim could be
read as Plaintiff suggests, when looking at the entirety of the claim, such an argument does not
prevail where at least one step requires active “modification” by the user.
Thus, looking at the disputed claim terms individually, and in the context of the entire
claim and the goals of the invention, the Court resolves the parties’ dispute as follows. Action
by the user is required in the method of claim 1 as discussed herein. Specifically, the Court
construes “causing a user computer to request a template web page computer code file” to mean
“a request by a user causing a user computer to request a template web page computer code file.”
With respect to the claim terms “causing content and attributes of the third plurality of visible
items of the modified template web page display to be taken from the first location in the
temporary computer memory of the user computer and placed in the fourth plurality of hidden
fields in the second location in the temporary computer memory of the user computer,” and
“sending the request object containing no html file to the server computer” (both terms found in
clauses being prefaced with the language “in response to the user selection of the host button”),
the Court finds that no construction is necessary with the understanding that user selection of
host button must first occur as agreed in the prior claimed step: “a user selection of the host
button of the modified template web page display is received at the user computer.”
As to the remainder of the above listed claim terms set forth in claim 1, the Court finds
that no construction is necessary with the understanding that step 1 requires user action to initiate
the software and performance of these steps that follow the user-initiated action on the server
end. Figure 13B of the ’122 Patent shows a diagram that supports such an interpretation of the
claim:
14
’122 Patent, Fig. 13B.
Figure 13B provides an exemplary embodiment wherein the user first modifies the
template web page display, and then the user “by using the browser computer program…”
“causes all visible items…” ’122 Patent, Fig. 13B. While Figure 13B is not directed to any
particular claimed steps of claim 1, it still provides guidance with respect to the patentee’s
drafting of the claim. For example, step 1312 represents a description of user actions in general
and explicitly describes those actions in the context of a “user, by using the browser computer
program running…on the user computer, … through execution of script computer programming
15
code of the template web page computer code file….” Thus, this figure further clarifies that upon
user initiation of a step, whether such step is written passively or affirmatively, the execution of
the code triggered by the user’s actions can cause the subsequent recited actions. Indeed, such an
interpretation is the only logical interpretation of many of the claimed steps.
For example, as to Defendant’s request to insert “the user” in to several of these claimed
steps, Defendant ultimately agreed with the Court that adding “the user” would result in
importation of the specification and render nonsensical results. Indeed, Defendant’s only
argument for consistently including “the user” was not a claim construction argument, but rather
the argument that under 35 U.S.C. § 271 all steps must be attributed to one actor. While this
argument may present an issue with respect to liability, it does not present a claim construction
dispute where the steps of the claim are easily understood by their plain and ordinary meaning.
In other words, the parties agree and clearly understand from the express claim language which
of these steps are being done by the software. The only dispute was whether any of the steps
required user action. As discussed herein, the Court has resolved that dispute with respect to the
specific steps that require action of the user to compete and/or initiate the claimed process.
Therefore, having resolved the parties’ dispute regarding whether claim 1 requires action
by the user, the Court finds no further construction of the above listed claim terms is necessary as
the plain language of the claim is clear. For convenience, the below chart summarizes the
Court’s constructions for the disputed terms of claim 1:
United States Patent No. 7,770,122
Claim Language
Court’s Construction
“causing a user computer to request a
template web page computer code file”
“a request by a user causing a user computer to
request a template web page computer code file”
(Cl. 1.)
16
“storing the template web page
computer code file in a temporary
computer memory of the user
computer”
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
(Cl. 1.)
“causing the user computer to
interpret the template web page
computer code file”
(Cl. 1.)
“causing the first plurality of control
buttons, the second plurality of visible
items, and the host button of the
template web page display to be stored
in a first location in the temporary
computer memory of the user
computer;”
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
(Cl. 1.)
“causing the fourth plurality of hidden
fields to be located at a second location
in the temporary computer memory of
the user computer;”
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
(Cl. 1.)
“causing the third plurality of visible
items of the modified template web
page display to be stored in the
temporary computer memory of the
user computer;”
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
(Cl. 1.)
“causing content and attributes of the
third plurality of visible items of the
modified template web page display to
be taken from the first location in the
temporary computer memory of the
user computer and placed in the
fourth plurality of hidden fields in the
second location in the temporary
computer memory of the user
computer;”
No construction necessary with the understanding
that user selection of the host button must first occur
as agreed in the prior step: “a user selection of the
host button of the modified template web page
display is received at the user computer”
(Cl. 1.)
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“sending the request object containing
no html file to the server computer;
(Cl. 1.)
“receiving the request object
containing no html file at the server
computer;”
(Cl. 1.)
“causing the server computer to take
the content and attributes of the third
plurality of visible items of the
modified template web page display
out of the request object containing no
html file and to store them as text in a
database;”
No construction necessary with the understanding
that user selection of the host button must first occur
as agreed in the prior step: “a user selection of the
host button of the modified template web page
display is received at the user computer”
“receiving at the server computer a stream of bytes
stored temporarily in a computer’s temporary
memory, such as RAM (Random Access Memory)
before the computer’s browser program delivers it to
another computer”
No construction necessary as agreed (the parties
agree the software service provider performs this
step)
(Cl. 1.)
“causing the browser computer
program running on the visitor
computer to interpret the print
instructions”
No construction necessary with the understanding
that a user must first make a request as required by
step 1 of the claimed method (as construed above).
Thus, action by the user is required in the method of
claim 1.
(Cl. 1.)
B.
“receiving the request object containing no html file at the server
computer” (’122 Patent, Claim 1)
Plaintiff’s Proposal
Defendant’s Proposal
“receiving at the server computer a stream
of bytes stored temporarily in a computer's
temporary memory, such as RAM (Random
Access Memory) before the computer's
browser program delivers it to another
computer”
“Receiving a stream of bytes stored temporarily in a
computer’s temporary memory, such as RAM
(Random Access Memory) at the server computer”
Plaintiff states that this is the only term for which Defendant does not identify the actor.
(Doc. No. 56 at 23–24.) Plaintiff argues that this “was intentional and only reinforces Plaintiff’s
theory that Defendant’s proposed constructions for the previous ten action claim terms are
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divorced from the intrinsic evidence and are purely based on furthering potential noninfringement claims.” Id. Plaintiff argues that Defendant’s construction is overly broad, and
Plaintiff’s alternative construction ends the construction within the specification’s explicit
definition. Id. at 24. Defendant does not specifically brief this term. (Doc. No. 60-1.)
At the claim construction hearing, the Court proposed the construction of “receiving at
the server computer a stream of bytes stored temporarily in a computer’s temporary memory,
such as RAM (Random Access Memory) before the computer’s browser program delivers it to
another computer.” The parties agreed to this construction. Therefore, the Court construes
“receiving the request object containing no html file at the server computer” to mean “receiving
at the server computer a stream of bytes stored temporarily in a computer’s temporary memory,
such as RAM (Random Access Memory) before the computer’s browser program delivers it to
another computer.”
C.
“user selecting one or more of the first plurality of control buttons to
form the third plurality of visible items of the modified template web page display.”
(’122 Patent, Claims 4, 6)
Plaintiff’s Proposal
Defendant’s Proposal
No construction
necessary, as the term
should be afforded its
plain-and-ordinary
meaning.
“The user selecting one or more of the first plurality of control
buttons to form the third plurality of visible items of the modified
template web page display”
Plaintiff argues against Defendant’s construction because adding the term “the” does not
add any sort of clarification to the term’s meaning, and limits the “selecting” to the original user
in claim one, and not some other user. (Doc. No. 56 at 26.) Plaintiff argues that, because it
would be understood from the plain and ordinary reading of the claim term that the user is
performing the “selecting,” no construction is necessary. Id. at 27. Defendant states that the
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parties agree the user performance is required in all claims reciting this element. (Doc. No. 60-1
at 22.)
At the claim construction hearing, the Court proposed that no construction was necessary
for this term with the agreed understanding that “a” user is the same user as recited in claim 1.
The parties agreed to this interpretation. Therefore, with respect to the term “user selecting one
or more of the first plurality of control buttons to form the third plurality of visible items of the
modified template web page display,” the Court finds no construction necessary with the agreed
understanding that “a” user is the same user recited in claim 1.
D.
“defining a particular visible item of the second plurality of visible
items of the template web page display as global to form the third plurality of visible
items of the modified template web page display by a user selecting one of the first
plurality of control buttons” (’122 Patent, Claim 8)
Plaintiff’s Proposal
Defendant’s Proposal
No construction
necessary, as the term
should be afforded its
plain-and-ordinary
meaning.
“The user defining a particular visible item of the second plurality of
visible items of the template web page display as global to form the
third plurality of visible items of the modified template web page
display by a user selecting one of the first plurality of control
buttons”
Plaintiff argues that this construction is unlike the other disputed claim terms because it
notes that the claim states the action is done by the user. (Doc. No. 56 at 28.) Plaintiff argues
that term is sufficiently clear as stated. Id. Defendant states that parties agree the user performs
this step. (Doc. No. 60-1 at 22.)
At the claim construction hearing, the Court proposed that no construction was necessary
for this term with the agreed understanding that “a” user is the same user as recited in claim 1.
The parties agreed to this interpretation.
Therefore, with respect to the term “defining a
particular visible item of the second plurality of visible items of the template web page display as
global to form the third plurality of visible items of the modified template web page display by a
20
user selecting one of the first plurality of control buttons,” the Court finds no construction
necessary with the agreed understanding that “a” user is the same user recited in claim 1.
E.
“move and be resized.” (’122 Patent, Claim 12)
Plaintiff’s Proposal
Defendant’s Proposal
No construction necessary, as the term should
be afforded its plain-and-ordinary meaning.
“The user moves and resizes”
Plaintiff argues that this claim limitation is easy to identify and that Defendant’s
construction is at odds with how the claim is worded. (Doc. No. 56 at 29.) Plaintiff maintains
that “move and be resized” are verbs describing actions that the visible items are caused to
perform, but Defendant’s construction make the verbs what the user does to the visible items. Id.
Defendant argues that the construction is “a claim element that is material to claim scope. It
qualifies the claim element ‘move and be resized’ which [] requires user performance.” (Doc.
No. 60-1 at 22.)
As this dispute relates back to the same issue discussed with respect to claim 1, the Court
finds that no construction is necessary with the understanding that claim 1 requires action by the
user as discussed herein.
II.
AGREED CLAIM TERM CONSTRUCTIONS
The parties submitted the following terms for which they agreed on constructions:
Term/Phrase
“hidden fields”
(Cl. 1.)
Agreed Construction
“parts of a web page code, which are hidden from a user and
which do not control the layout and/or format of a web page
display rendered by the specific web page code in which they
are located”
“a user selection of the host button of the modified template
“receiving at the user
web page display is received at the user computer.”
computer, a user selection of
the host button of the modified
template web page display.”
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“location in the temporary
computer memory”
“a memory address in the computer’s temporary memory”
(Cl. 1.)
“wrapped”
“placed into”
(Cl. 1.)
(Doc. No. 64-1.)
After reviewing the parties’ agreed constructions in light of the asserted claims,
specification, and prosecution history, the Court finds the parties’ agreed constructions
appropriate and construes the terms as set forth above.
CONCLUSION
For the foregoing reasons, the Court adopts the constructions set forth above.
So ORDERED and SIGNED this 7th day of February, 2018.
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