I/P Engine, Inc. v. AOL, Inc. et al

Filing 158

Response to 129 Claim Construction Brief, filed by AOL Inc., Gannett Company, Inc., Google Inc., IAC Search & Media, Inc., Target Corporation. (Noona, Stephen)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
NORFOLK DIVISION
I/P ENGINE, INC.
Plaintiff,

Civil Action No. 2:11-cv-512

v.
AOL, INC., et al.,
Defendants.

DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF
Introduction
The evidence cited in Plaintiff’s Opening Claim Construction Brief largely supports
Defendants’ proposed constructions. For example, Plaintiff repeatedly states that the claimed
invention requires “collaborative” feedback, or feedback from other users with similar interests
or needs. This fully supports Defendants’ construction of “[feedback system for] receiving
information found to be relevant to the query by other users” as a system for determining “what
information other users with similar interests or needs found to be relevant.” Plaintiff also cites
intrinsic and extrinsic evidence showing that the ordinary meaning of “scanning” entails a
sequential, item-by-item crawl of a web spider, as Defendants’ construction properly provides,
not that “scanning” can merely be “looking for items” as Plaintiff contends.
Where Plaintiff’s Opening Brief does not provide support for Defendants’ constructions,
it largely ignores Defendants’ constructions altogether. For example, Plaintiff refuses to take a
position on which method steps must occur in order, even though Defendants have clearly staked
out a position on this issue. Plaintiff does not even defend its proposed construction (or attack
Defendants’ proposed construction) for the terms “individual user” and “first user,” instead

ignoring these terms. And Plaintiff’s repeated baseless procedural complaints regarding the
claim construction process do nothing to advance resolution of the important issues before the
Court on claim construction.
Because Plaintiff’s brief does nothing to rebut Defendants’ constructions – indeed,
because Plaintiff’s brief largely supports Defendants’ constructions – Defendants’ constructions
should be adopted.
Argument
I.

COLLABORATIVE FEEDBACK AND RELATED TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“[feedback system for]
receiving information
found to be relevant to the
query by other users”
(‘664 Claim 1, 26)

[System using a process of
filtering information by]
determining what information
other users with similar interests
or needs found to be relevant

No construction necessary

“collaborative feedback
data” (‘420 Claim 10, 25)

data from users with similar
interests or needs regarding what
informons such users found to be
relevant

information concerning what
informons other users with
similar interests or needs found
to be relevant

A.

- or [feedback system for]
receiving information
concerning what other users
found to be relevant to the
query

Defendants’ construction of “[feedback system for] receiving information
found to be relevant to the query by other users” includes the collaborative
element that even Plaintiff admits is necessary to the claimed invention.

As shown in the parties’ Opening briefs, the parties generally agree that “collaborative
feedback data” connotes data or information about what informons other users with similar
interests or needs found to be relevant (though they disagree about the precise construction for
this term). This point is critical, because the claimed invention requires a “collaborative”
element. (See Defendants’ Opening Brief (“DOB”) at 7-9.) Thus, the “feedback system for

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receiving information found to be relevant to the query by other users” in ‘664 claim 1 must be
construed as a feedback system for receiving collaborative information – i.e., information that
other users with similar interests or needs found to be relevant. The step of “receiving
information found to be relevant to the query by other users” in claim 26 must also be construed
as requiring collaborative information. Only with these constructions would claims 1 and 26
contain the “collaborative” element that is necessary to the claimed invention.
Notably, Plaintiff itself acknowledges repeatedly that the claimed invention must include
a “collaborative” element. For example, the first page of Plaintiff’s brief states that “[t]he
Lang/Kosak patents teach innovative search engine techniques that provide high-quality search
results by combining content-based data with collaborative feedback data from other users to
optimally satisfy a user’s need for information”. (Plaintiff’s Opening Brief (“POB”) at 1
(emphasis added).) Elsewhere, Plaintiff explains that “[i]n this nascent search engine
environment that Messrs. Lang and Kosak envisioned, the content analysis evaluates how well
an item satisfies a user’s query, and the collaborative analysis evaluates feedback received from
other users that previously searched using the same query.” (Id. at 4 (emphasis added).)
Plaintiff also states: “Importantly, the specification describes how the search engine information
processing system filters informons for relevance to a query using both content-based and
collaborative feedback data.” (Id. (citation omitted) (emphases added).)
Plaintiff also acknowledges that, in the context of collaborative filtering required by the
invention, “feedback from other users” is feedback from other users with similar interests or
needs. Indeed, Plaintiff specifically states that “[c]ollaborative filtering, on the other hand,
determines relevance based on feedback from other users – it looks to what items other users
with similar interests or needs found to be relevant.” (Id. at 3 (citations omitted) (emphasis

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added).) In other words, Plaintiff acknowledges that in context of the claimed invention, which
requires a collaborative element, “other users” are “users with similar interests or needs” just as
Defendants’ construction provides.
As Plaintiff’s own characterization of the claimed invention supports the position that
“receiving information found to be relevant to the query by other users” be construed as
“determining what information other users with similar interests or needs found to be relevant,”
Defendants’ construction should be adopted.1
B.

Defendants’ construction of “collaborative feedback data” properly
recognizes that the “data” must come from similar users.

As explained in Defendants’ Opening Brief, the claims and specification repeatedly state that
collaborative feedback data comes from other users with similar interests or needs. (DOB at 6.)
Plaintiff asserts that requiring collaborative feedback data to come from such users
“improperly imports an additional requirement [] that is not supported by the claim language or
the specification.” (POB at 23.) In purported support of this argument, Plaintiff cites the
specification’s definition of “collaborative filtering” and argues this definition does not say
where the data to be filtered comes from. (See id. at 22, 23 (“[c]ollaborative filtering” involves
“determining what informons other users with similar interests or needs found to be relevant.”)

1

Although Plaintiff never raised this issue in the parties’ meet and confers, Plaintiff
now argues that Defendants’ construction does not account for the “to the query” portion of
“[feedback system for] receiving information found to be relevant to the query by other users.”
(POB at 24.) If the Court wishes to address this point, Defendants do not object to appending the
words “to a query” to the end of their proposed construction. Plaintiff also argues that “there is
no reason to add the ‘using a process of filtering’ limitation to this phrase when the phrase
requires only the simple step of ‘receiving’ data.” (Id.) Plaintiff never raised this point before
either. In any event, while Defendants’ construction properly acknowledges that the feedback
system receives collaborative feedback data for later use in the “process of filtering” (see
Abstract), Defendants also do not object to replacing “filtering” with “receiving” in their
construction. The core dispute over this term is not the “filtering,” or the “query,” but whether
the reference to “other users” must connote other users with similar interests or needs.

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(citing 4:26-29).) But this is a non-sequitur. “Collaborative filtering” is a different term than
“collaborative feedback data.” While both terms indisputably relate to other users with similar
interests or needs, “collaborative filtering” is a filtering process that uses “collaborative feedback
data.” (See Abstract (“A user feedback system provides collaborative feedback data for
integration with content profile data in the operation of the collaborative/content-based filter.”).)
The process of collaborative filtering itself does not come “from” users with similar interests or
needs, so it is unsurprising that the specification’s definition of collaborative filtering does not
contain this “from” element. On the other hand, the collaborative feedback data used in
collaborative filtering does come “from” other users with similar interests or needs. As the
specification states, “[c]ollaborative filtering employs additional data from other users”. (24:3738 (emphasis added).) Thus, Defendants’ construction of “collaborative feedback data” as “data
from users with similar interests or needs regarding what informons such users found to be
relevant” is perfectly appropriate.
II.

“SCANNING” TERMS
Term/Phrase

Defendants’ Construction

Plaintiff’s Construction

“scan[ning] a network” (‘420
Claims 10, 25)

Spider[ing] or crawl[ing] a
network

looking for items in a network

“a scanning system” (‘664
Claim 1)

a system used to scan a
network

a system used to search for
information

A.

Plaintiff’s own evidence supports Defendants’ construction for “scanning a
network” and negates Plaintiff’s construction.

As explained in Defendants’ Opening Brief, the Patents repeatedly link “scanning” to the
operation of a spider. (DOB at 11-12.) The evidence from Plaintiff’s own brief also consistently
supports Defendants’ construction, which captures the applicable ordinary meaning of
“scanning” in the context of the Patents.

5

For example, Plaintiff acknowledges that “the specification describes an embodiment
using a spider system that ‘scans a network’”. (POB at 13 (citing 25:39-40).) In fact, Plaintiff
points to nothing in the specification where “scanning” does not involve a spider, which further
shows that Defendants’ construction of “scanning” as “spidering” is appropriate. See Wang
Labs., Inc. v. America Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999) (“The only
embodiment described in the ‘669 patent specification is the character-based protocol, and the
claims were correctly interpreted as limited thereto.”) Nor does Plaintiff point to anything in the
specification that supports Plaintiff’s generic “looking for items” construction.
Plaintiff also cites several dictionary definitions of “scanning.” (POB at 12 fn 5.) Each
definition shows that “scanning” requires a sequential, item-by-item crawl. (See id. (“Scan -- . . .
2: to examine by point-to-point observation or checking, to investigate thoroughly by checking
point-to-point”; “Scan – (3) to sequentially search a file”; “Scan – Computer Technology. 1. to
examine sequentially each item in a list, each record in a file, each point of a display, or each
input or output channel of a communication link.”) (citations omitted).) All these definitions
show that scanning is a more narrow and specific process than merely “looking for items.”
Not only is a sequential, item-by-item search narrower than merely “looking for items” –
thereby showing the incorrectness of Plaintiff’s construction – but it is precisely how spiders
operate. See Ira S. Nathanson, Internet Infoglut and Invisible Ink, 12 HARV. J. L & TECH. 43, 61
(1998) (“A spider (also known as a robot, crawler or indexer) is a program that scans the Web,
crawling from link to link”); Eric W. Guttag, Applying the Printed Publication Bar in the
Internet Age, 16 VA. J. L. & TECH. 66, *12 (2011) (“In web crawling, web pages are retrieved by
a ‘crawler’ (also known as a ‘spider’), which is an automated web browser that follows every
link on the web site from which the web pages are being retrieved (crawled).”) (emphasis

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added). Accordingly, Plaintiff’s own cited evidence supports Defendants’ construction of
“scan[ning] a network” as “spider[ing] or crawl[ing] a network.”
B.

Plaintiff misstates Defendants’ indefiniteness position.

Plaintiff alleges that “Defendants initially proposed that the term ‘scanning a network’ is
indefinite.” (POB at 13.) This is incorrect. Defendants never alleged that “scanning a network,”
standing alone, is indefinite. Rather, Defendants alleged that longer claim phrases that contain
the words “scanning a network” are indefinite, in part because they are logically inconsistent
with each other.2
For example, ‘420 claim 25 recites “scanning a network to make a demand search” while
‘664 claim 38 recites “scanning a network in response to a demand search.” It is logically
impossible to construe “scanning a network to make a demand search” and “scanning a network
in response to a demand search” in a consistent manner, regardless of how “demand search” and
“scanning a network” might be construed in isolation. “Scanning a network in response to a
demand search” implies that a demand search is what causes a network to be scanned, while
“scanning a network to make a demand search” implies that a demand search is made by
scanning a network. It is logically impossible for Item A to be the cause of Item B and for Item
A to also be made by Item B. The demand search is either the cause of the scanning or it is made
by the scanning. It cannot be both.
Because “scanning a network to make a demand search” and “scanning a network in
response to a demand search” cannot be construed in a logically consistent manner, both terms
are indefinite. One of skill in the art could not read both terms and ascribe a sensible and
consistent definition to each, which renders both terms indefinite as a matter of law. See
2

See Declaration of Jennifer J. Ghaussy (“Ghaussy Decl.”), Ex. A (Defendants’
Proposed Constructions for Claim Terms and Elements) at 2-3.)

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Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008) (“Even if a
claim term’s definition can be reduced to words, the claim is still indefinite if a person of
ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.”)
Be that as it may, Defendants agreed that the indefiniteness of these longer phrases need
not be decided during the Markman process. (See DOB at 10 fn. 5.) Plaintiff’s attempt to inject
this indefiniteness issue back into the Markman process is perplexing, particularly since Plaintiff
has complained that the list of issues to be decided during Markman is already too long and
given that Defendants agreed to delay their indefiniteness arguments and instead construe the
smaller phrase “scanning a network” at Plaintiff’s request. (See generally Plaintiff’s Motion to
Compel Compliance with the Court’s Scheduling Order (Dkts. 99, 100); Defendants’ Opposition
Brief (Dkt. 109).)
For the reasons stated above, the Court should construe “scan[ning] a network” as
“spider[ing] or crawl[ing] a network.”
C.

“A scanning system” should be construed as “a system used to scan a
network.”

As explained in Defendants’ Opening Brief, the term “scanning system” appears in two
independent claims: ‘664 claim 1 and ‘420 claim 25. Because it is undisputed that the “scanning
system” of ‘420 claim 25 is used to “scan a network,” the same conclusion should hold for the
“scanning system” of ‘664 claim 1 – particularly since there is no suggestion that the two
“scanning systems” differ in any way. (DOB at 12.)
Plaintiff counters that construing “a scanning system” as “a system used to scan a
network” would violate the doctrine of claim differentiation because “dependent claim 24 recites
a further limitation on the scanning system, requiring it to ‘scan a network’”. (POB at 15.) Yet
claim 24 actually recites “the search system of claim 1 wherein the scanning system further

8

comprises scanning a network upon a demand search request.” As explained in Defendants’
Opening Brief, the claimed invention can operate in “wire search” or “demand search” mode.
(DOB at 19-20.) Thus, the “further limitation” added by dependant claim 24 is that the network
scanning occur “upon a demand search request” (i.e., in demand search mode), not that the
network scanning occur at all. Rather, claim 24 presupposes that the scanning system scans a
network and then adds the limitation that the network scanning occur in response to a demand
search request.
Thus, Plaintiff’s claim differentiation argument is incorrect. Construing claim 1’s
“scanning system” as “a system used to scan a network” would not render claim 24 superfluous,
because claim 24 recites an additional limitation apart from “scanning a network.” See SRAM
Corp. v. AD-II Eng’g, Inc., 465 F.3d 1351, 1358 (Fed. Cir. 2006) (“AD-II’s claim differentiation
argument lacks merit because claim 27 recites a series of down-shifts and would not be rendered
superfluous by the district court’s claim construction.”); Telemac Cellular Corp. v. Topp
Telecom, Inc., 247 F.3d 1316, 1326 (Fed. Cir. 2001) (rejecting claim differentiation argument
where dependent claim “embraces additional limitations not encompassed within” the
independent claim).
Just as Plaintiff has provided no valid reason to reject Defendants’ proposed construction
of “a scanning system” as “a system used to scan a network,” Plaintiff has provided no valid
reason to adopt its own proposed construction of “a scanning system” as “a system used to
search for information.” As noted above and in Defendants’ Opening Brief, the intrinsic and
extrinsic evidence shows that “scanning” is a narrower subset of searching, not a synonym for
searching. Thus, “a scanning system” cannot simply be “a system used to search for

9

information,” since that would improperly equate “scanning” with “searching.” Plaintiff ignores
this contradiction entirely.
III.

“COMBINING” (‘420 CLAIMS 10, 25; ‘664 CLAIMS 1, 26)
Defendants’ Construction

Plaintiff’s Construction

Plain meaning; alternatively, bringing together
A.

uniting into a single number or expression

Plaintiff’s construction of “combining” as “uniting into a single number of
expression” defies the ordinary meaning of this term, the claim language,
and the specification.

Plaintiff argues that its construction of “combining” as “uniting into a single number or
expression” accords with “the widely accepted meaning” of the term, the claim language, and the
specification. (POB at 18-20.) However, Plaintiff’s construction actually defies all these
evidentiary sources.
1.

Plaintiff’s construction defies the ordinary meaning of “combining.”

Plaintiff asserts that “[i]n its ordinary usage, ‘combining’ two things means that the
individual pieces are united or merged in a way to obscure individual characters or into a single
number or expression.” (POB at 18.) This position is simply not credible. There are legions of
contexts in which two things can be “combined” without “obscuring individual characters” or
creating “a single number or expression.” For example, a high school curriculum might combine
math and English, an Indiana Jones costume might combine a fedora with a bullwhip, and a
tropical vacation might combine sunbathing with scuba diving. In none of these cases do the
individual items lose their separate character or merge into a “single number or expression.”
Thus, Plaintiff’s position that “combining” is limited to “uniting into a single number or
expression” is contrary to the ordinary usage of this word.

10

2.

Plaintiff’s construction is inconsistent with the claim language.

Plaintiff argues that “[i]n every instance that the claim term [“combining”] is used in the
asserted independent claims, it is for the purpose of uniting the data into a single number or
expression.” (POB at 18.) This is incorrect. For example, ‘664 claim 26[c] recites “combining
the information found to be relevant to a query by other users with the searched information.”
The “searched information” is the output of claim 26[a], which recites “searching for information
relevant to a query.” Thus, in the context of this claim, both the “searched information” and the
“information found to be relevant to a query by other users” are search results or other
information entities that are relevant to a query. It makes no sense to “combine” these relevant
information entities “into a single number or expression.” For instance, if these relevant
information entities are web pages – as search engine results normally are3 – how can a
collection of web pages be combined “into a single number or expression?” Plaintiff’s
“combining” construction makes no sense when applied to ‘664 claim 26, and it should therefore
be rejected.
3.

Plaintiff’s construction would read preferred embodiments out of the
claims.

Plaintiff argues that the specification supports its construction of “combining,” but
Plaintiff focuses exclusively on the specification embodiment shown in Figure 6. (See POB at
19-20.) As explained in Defendants’ Opening Brief, Plaintiff’s construction would read out
other embodiments in which the claimed “combination” occurs through a sequential application
of filters. (DOB at 15-17.) It is irrelevant that Plaintiff’s construction might support some
3

As the specification states, “[t]he present invention relates to information processing
systems . . . wherein a search engine operates with collaborative and content-based filtering to
provide better search responses to user queries.” (1:10-26 (emphasis added).) Thus, the
information entities relevant to a query are preferably (if not exclusively) search results returned
by a search engine.

11

embodiments from the specification (such as Figure 6) – because Plaintiff’s construction reads
out other embodiments, it must be rejected. See MBO Labs. v. Becton, Dickinson & Co., 474
F.3d 1323, 1333 (Fed. Cir. 2007) (“[A] claim interpretation that excludes a preferred
embodiment from the scope of the claim is rarely, if ever, correct.”) (citation omitted).
B.

“Combining” should be given its plain meaning, as Defendants propose.

As explained above, Plaintiff’s crabbed construction of “combining” as “uniting into a
single number or expression” defies the plain meaning of the term and is inconsistent with at
least some claims and preferred embodiments. Instead, “combining” should be given its plain
meaning – i.e., no narrowing construction is necessary – so that this term can properly support all
the ways in which it is used in the claims and specification.
Plaintiff disputes Defendants’ alternative construction of “combining” as “bringing
together,” arguing that “[i]tems can be ‘brought together’ without combining them”. (POB at
20-21.) As mentioned above, Defendants’ primary position is that “combining” needs no
construction at all. Nonetheless, if Court desires to give a construction for “combining,”
“bringing together” encompasses all the ways in which “combining” is used in the claims and
specification. And while it may be true that items can be brought together without combining
them, items cannot be combined without being somehow brought together. Plaintiff itself quotes
a passage from the specification which shows that “combining” items entails bringing them
together. (See POB at 20 (“Each weighted IRP 429a-d is brought together with other IRPs 429ad in a combination function 427a-d.”) (quoting 14:56-58) (emphasis added).) The fact that this
passage may contemplate a mathematical combination does not mean that “combining” should
be limited to a mathematical definition (such as “uniting into a single number or expression”),
given that the claims and specification also teach several non-mathematical combinations. See
Section III(A)(2-3), supra.
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As it did with “scanning a network,” Plaintiff also argues that “Defendants again initially
took the position that ‘combining’ is indefinite and then abandoned that position.” (POB at 20.)
Again, Plaintiff’s allegation is incorrect. Defendants never argued that “combining” is
indefinite; rather, Defendants argued that larger phrases containing the word “combining” are
indefinite. (See Ghaussy Decl., Ex. A at 8.) As with the larger phrases containing “scanning a
network,” Defendants agreed to defer this indefiniteness issue until after the Markman process.
And here too, it was Plaintiff who requested that Defendants construe “combining” rather than
the longer phrases Defendants initially proposed. Plaintiff’s attempt to inject this indefiniteness
issue back into the Markman process thus is again perplexing and uncalled for.4
IV.

THE SEPARATENESS OF THE CLAIMED SYSTEMS

Defendants’ Construction
The claimed “system for scanning a
network,” “content-based filter system,” and
“feedback system” of ‘420 Claim 10 must
be different systems

Plaintiff’s Construction
The claim language does not require the claimed
system for scanning, content-based filter system,
and feedback system of claim 10 of the ‘420
patent to be the same or different “systems”

The claimed “scanning system,” “feedback
system,” and “content-based filter system”
of ‘664 Claim 1 must be different systems

The claim language does not require the
scanning system, content-based filter system,
and feedback system of claim 1 of the ‘664
patent to be the same or different “systems”

As explained in Defendants’ Opening Brief, the disparately-claimed systems in ‘420
claim 10 and ‘664 claim 1 are different systems that perform different functions; they cannot be
one and the same system. (DOB at 17-18.)
Plaintiff’s principal counterargument is to say that the number of processors involved in
the invention may vary, depending on how these processors are combined or distributed. (POB

4

Finally, Plaintiff complains that it “still does not have the evidence Defendants intend
to rely on for their definition” of “combining.” (POB at 20 fn. 11.) This complaint rings hollow,
given Defendants’ position that “combining” needs no construction at all.

13

at 26-27 (quoting 10:3-23).) This is another non-sequitur. The specification’s “processors” –
which appear nowhere in the claims – are simply the tangible hardware components that may be
used with the claimed systems. (See 10:10-12 (stating that the “processors” may include the
Intel Pentium-Pro microprocessor); Ghaussy Decl., Ex. B (WEBSTER’S NEW WORLD DICTIONARY
OF COMPUTER TERMS (8

th

Ed. 2000)) at 344 (defining “microprocessor” as an integrated circuit

fabricated on a piece of silicon and containing multiple functional units).) The fact that the
processors used with the claimed systems may be arranged in various ways says nothing about
whether the claimed systems themselves may be one and the same system. Rather, as explained
in Defendants’ Opening Brief, the disparately-claimed systems in ‘420 claim 10 and ‘664 claim
1 are different systems performing different functions, regardless of how the microprocessors
used in these systems might be arranged. Accordingly, these disparately-claimed systems cannot
be one and the same system. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1300
(Fed. Cir. 2005) (holding that the claimed “originating processor” and “gateway switch” must be
separate and distinct from each other because they perform different functions in the claimed
process and information is transferred from one to the other).5
V.

“DEMAND SEARCH” (‘420 Claims 10, 25)
Defendants’ Construction

search engine query

Plaintiff’s Construction
a one-time search performed upon a user request

5

Plaintiff’s citation to Retractable Tech. Inc. v. Becton, Dickinson & Co., 653 F.3d
1296 (Fed. Cir. 2011) is misplaced. In Retractable Tech., the Federal Circuit held that a claimed
“retainer member” and “needle holder” need not be separate physical pieces because the claims
stated that these pieces could overlap. See id. at 1303. By contrast, there is no suggestion in the
Asserted Patents that the claimed systems perform overlapping functions. To the contrary, each
system is given a discrete function separate and apart from the others.

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As explained in Defendants’ Opening Brief, the specification repeatedly states that
“demand searches” are normal search engine queries performed by regular search engines, as
distinguished from the continuous “wire” searches that require a stored query. (DOB at 19-20.)
Here too, Plaintiff’s brief endorses Defendants’ characterization of the intrinsic evidence.
For example, Plaintiff’s brief acknowledges that demand searches are performed by “regular
search engine[s]” and further acknowledges that these demand searches are distinguished from
the continuous “wire” searches. (POB at 21.) Nonetheless, Plaintiff disputes Defendants’
construction of “demand search,” stating that: “Defendants’ definition is inaccurate because it
disregards the intrinsic evidence’s teachings that a demand search is a one-shot search upon a
request from a user. Defendants’ proposal omits any reference to ‘one-shot’ or to a user making
the search demand, and instead proposes the vague concept of a ‘search engine query.’” (Id. at
21-22.)
Plaintiff’s allegation that Defendants are disregarding the intrinsic evidence is unfounded.
As for the requirement that demand searches occur “upon a user request,” that element is
subsumed within Defendants’ construction of “demand search” as “search engine query.” A jury
would understand that a “search engine query” is inherently “made upon user request” because
normal search engines do not make searches unless users ask them to. Thus, there is no reason to
add the redundant phrase “performed upon a user request.” See Walker Digital, LLC v. Capital
One Servs., LLC, No. 10-212, 2010 WL 2346642, *3 (E.D. Va. June 8, 2010) (“the overarching
goal of claim construction is to aid the jury’s understanding of claim terms, not to be an ‘exercise
in redundancy.’”)
The fact that the goal of claim construction “is to aid the jury’s understanding of claim
terms” also explains why Defendants omitted “one-shot” or “one-time” from their construction

15

of “demand search.” As explained in Defendants’ Opening Brief (DOB at 20-21), this language
would be utterly confusing to a jury. For example, if a demand search was issued by two
different users at two different times, do these searches cease being “demand searches” because
they are no longer “one-shot” or “one-time?” In the interest of avoiding this ambiguity and jury
confusion, Defendants sensibly omitted “one-shot” or “one-time” from their proposed
construction.
Furthermore, while the specification does describe “demand searches” as “one-shot,” it
does so to distinguish “demand searches” from the disclosed continuous “wire searches.”
Because no “wire search” claims are at issue in this litigation, however, the “one-shot” language
is superfluous and bears no relation to this case. Rather, this language would only serve to
confuse a jury, and should therefore be rejected.
VI.

“INDIVIDUAL USER” / “FIRST USER”

Defendants’ Construction
particular user

Plaintiff’s Construction
No further construction necessary beyond other terms

Plaintiff has not briefed the parties’ respective constructions of “individual user” or “first
user,” and so there is nothing for Defendants to respond to on this issue.
VII.

RELEVANT/RELEVANCE TERMS

Term/Phrase
“relevance to at least one of
the query and the first user”
(‘664 Claims 1, 26)

Defendants’ Construction
how well information satisfies
the information need of at least
one of the query and the first
user

Plaintiff’s Construction
No further construction
necessary beyond other
terms

“[informons/information]
relevant to a query” (‘420
Claims 10, 25; ‘664 Claims 1,
26)

[informons/information] that
satisfy the individual user’s
information need expressed in
the query

[informons/information]
having relevance to the
[individual/first] user’s
information need in the
query

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Plaintiff’s argument against Defendants’ construction of “[informons/information]
relevant to a query” attacks a straw man. Plaintiff argues that “[a]ccording to Defendants,
‘relevant’ apparently means the item absolutely satisfies the user’s information need; an item is
either 100% relevant or 0% relevant.” (POB at 17.) Yet Defendants’ construction of
“[informons/information] relevant to a query” – “[informons/information] that satisfy the
individual user’s information need expressed in the query” – does not take such an absolutist
position. Just as there are various degrees of how “relevant” an item might be, there are various
degrees of how well an item might “satisfy” the user’s information need. By saying that
“relevant” items “satisfy” the user’s information need, Defendants do not seek to read an
“absolutely” or “100%” requirement into this term. Notably, the words “absolutely” and
“100%” do not appear anywhere in Defendants’ construction – rather, they are rhetorical
flourishes injected by Plaintiff to mischaracterize Defendants’ position.
While Defendants’ construction is perfectly sensible – “relevant” items are those that
“satisfy the individual user’s information need” – Plaintiff’s construction is not. As explained in
Defendants’ Opening Brief, Plaintiff’s position that “relevant” be construed as “having
relevance” is grammatically unsound, given the parties’ agreement that “relevance to a query”
means “how well an informon satisfies the individual user’s information need in the query.”6
(DOB at 24-25.) Applying this agreed “relevance” construction to Plaintiff’s proposed
construction, the phrase “having relevance” in Plaintiff’s proposed construction would mean
6

Plaintiff repeatedly misstates what the parties agreed to as to this term. On page 11 of
its brief, Plaintiff states that the parties agreed to a construction of “relevance” as “how well an
informon satisfies the [individual/first] user’s information need in the query.” (POB at 11.) On
page 16, Plaintiff states that “[t]he parties agreed that the claim term ‘relevance’ means how well
an informon satisfies the [individual/first] user’s information need.” (Id. at 16.) In fact, as the
parties’ correspondence makes clear, their actual agreement was that “relevance to a query”
means “how well an informon satisfies the individual user’s information need in the query.”
(Ghaussy Decl., Ex. C.)

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“having how well . . .” which is grammatically unsound. See In re Hyatt, 708 F.2d 712, 714
(Fed. Cir. 1983) (“[a] claim must be read in accordance with the precepts of English grammar.”);
Karl Storz Endoscopy-Am., Inc. v. Stryker Corp., No. 09-355, 2011 WL 1659867, *12 (N.D. Cal.
May 3, 2011) (rejecting proposed construction that “contradicts the grammar of th[e] sentence.”)
Notably, Plaintiff provides no explanation as to how its construction could be read with the claim
language.
Plaintiff has not briefed the parties’ respective constructions of “relevance to at least one
of the query and the first user,” and so there is nothing for Defendants to respond to on this issue.
VIII. ORDER OF STEPS (‘420 CLAIM 25; ‘664 CLAIM 26)
Defendants’ Construction
‘420 Claim 25: Step [a] must be performed before Step [b];
Steps [b] and [c] must be performed before Step [d]

Plaintiff’s Construction
No construction necessary

‘664 Claim 26: Steps [a] and [b] must be performed before
Step [c]; Step [c1] must be performed before Step [c2]
Plaintiff does not actually dispute Defendants’ position regarding which method steps must
be performed in order for ‘420 claim 25 and ‘664 claim 26. Instead, while implicitly acknowledging
that at least some order is required in the claims, Plaintiff refuses to take a clear position on what the
order is. Rather, Plaintiff states that “[t]o the extent that some limitations presuppose that one of the
earlier limitations has been performed, that (limited) required ordering of limitations is clear from the
claim language itself and no construction is necessary.” (POB at 25.)
Plaintiff’s refusal to take a position is unjustified. Determining the requisite order of
steps is a proper matter for claim construction. (See DOB at 28 (citing Federal Circuit cases in
which the order of steps was decided as a matter of claim construction.).) And Defendants have

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clearly stated which steps they believe must be performed in order. There is no valid
justification for Plaintiff’s refusal to address this issue.
Plaintiff tries to justify its refusal to provide an order of steps construction by stating that
construing the order of steps “is an improper attempt to argue non-infringement during the
Markman stage, rather than waiting for trial.” (POB at 25.) But in proposing their order of steps
construction, Defendants make no attempt to argue whether or not the accused services perform
steps in the order required by the claims. To be sure, the Court’s order of steps construction
might impact Defendants’ non-infringement arguments, but the same is true of any construction
that the Court provides for any term. Plaintiff’s attempt to conflate an order of steps construction
with a non-infringement argument has no basis in law or fact.
IX.

ANTECEDENT BASIS TERMS

Term/Phrase
“informons” / “the
informons” (‘420 Claims 10,
25)

Defendants’ Construction
“informons” and “the
informons” are the same
informons

Plaintiff’s Construction
“informons” provides
antecedent basis for “the
informons”

“users” / “such users” (‘420
Claims 10, 25)

“users” and “such users” are the
same users

“users” provides antecedent
basis for “such users”

“a query” /”the query” (‘420
Claims 10, 25; ‘664 Claims
1, 26)

“a query” and “the query” are
the same query

“a query” provides
antecedent basis for “the
query”

“a feedback system” / “the
feedback system” (‘420
Claim 10; ‘664 Claim 1)

“a feedback system” and “the
feedback system” are the same
feedback system

“a feedback system” provides
antecedent basis for “the
feedback system”

“a scanning system” / “the
scanning system” (‘664
Claim 1)

“a scanning system” and “the
scanning system” are the same
scanning system”

“a scanning system” provides
antecedent basis for “the
scanning system”

“a first user” / “the first user” “a first user” and “the first user” “a first user” provides
antecedent basis for “the first
(‘664 Claims 1, 26)
are the same first user
user”
“a content-based filter

“a content-based filter system’

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“a content-based filter

system” / “the content-based
filter system” (‘664 Claims
1, 21)

and “the content-based filter
system” are the same contentbased filter system

system” provides antecedent
basis for “the content-based
filter system”

As explained in Defendants’ Opening Brief, Plaintiff concedes that the first term in each
dyad shown above “provides antecedent basis for” the second term, but Plaintiff refuses to
acknowledge the consequence of the antecedent basis canon – namely, that the second term in
each dyad must be the same as the first. (DOB at 29-30.)
Tellingly, Plaintiff does not actually dispute that the second term in each dyad is the same
as the first – instead, Plaintiff just argues that there is no need for a construction stating this
point. (See POB at 28-29.) Yet there is every reason to provide a construction stating that the
second term in each dyad is the same as the first, because this informs the jury about the meaning
of the claims. A lay jury would have no comprehension of the phrase “antecedent basis,” and so
merely instructing the jury that the first term in each dyad “provides antecedent basis for” the
second – as Plaintiff proposes – would only create jury confusion. (See DOB at 30.) By
contrast, instructing the jury that the second term in each dyad is the same as the first would
provide meaningful guidance about the scope and meaning of the claims.
Plaintiff seems to fault Defendants for arguing that antecedent basis law has
consequences for the scope of the claims and the parties’ infringement or non-infringement
positions. (POB at 28 (“Defendants . . . insisted that their ‘the same as’ language would impose
‘certain consequences’ that they hope to argue for non-infringement purposes.”).) Again,
however, any claim construction can have consequences – otherwise, there would be no reason
to conduct claim construction in the first place.
Plaintiff cites Personalized User Model (PUM) LLP v. Google Inc., 2012 WL 295048 (D.
Del. Jan. 25, 2012) to support its antecedent basis position, but PUM supports Google’s position

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more than Plaintiff’s. In PUM, as in this case, there were numerous term dyads in which a term
was first introduced with an indefinite article and later referred to with a definite article. Google
sought a construction that “the latter term must be referring to the former term,” and the Court
agreed with Google for almost every dyad at issue:
“Google argues that, ‘[a]s a matter of common sense, where these terms are first
introduced with ‘a,’ and then later used with ‘the,’ the latter term must be
referring to the former term.’ PUM responds that none of the disputed claim
terms require construction . . . For the most part, the Court agrees with Google.
For all except two of the antecedent basis terms . . . the Court finds that the terms
using definite articles refer to the former terms in the same limitation.”
See id. at *25 (emphasis added).
For all these reasons, Defendants’ construction that the second term in each dyad is the
same as the first is far preferable to Plaintiff’s construction that the first term in each dyad
“provides antecedent basis for” the second. Thus, Defendants’ construction should be adopted.
X.

PLAINTIFF’S ATTEMPT TO PRECLUDE DEFENDANTS’ CONSTRUCTIONS
IS MERITLESS AND HYPOCRITICAL
At various points, Plaintiff argues that Defendants’ constructions should be precluded

because Defendants modified these constructions from the original proposed constructions that
Defendants served on March 21, 2012. (See POB at 13 fn. 7, 15 fn. 8, 20.) This argument is not
only meritless, but ignores Plaintiff’s own evolving positions since the initial exchange in March.
The parties’ mutual exchange of proposed constructions on March 21 was the beginning
of their negotiation over a final list of terms for construction, and both parties have modified
their lists of disputed terms and proposed constructions numerous times throughout this process.
For instance, Plaintiff’s March 21 submission did not even contain constructions for “a scanning
system” or “[informons/information] relevant to a query,” and Plaintiff’s antecedent basis
construction was different from its current position. (See Ghaussy Decl., Ex. D.) Defendants did
not seek to preclude Plaintiff’s proposed constructions just because its list of disputed terms and
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proposed constructions has evolved since the March 21 exchange. Likewise, Plaintiff has no
basis to preclude Defendants’ constructions.
In fact, Plaintiff’s attempt to preclude any proposed construction that varies from the
initial March 21 exchange would mean that the parties’ post-March 21 negotiations over a final
list of terms and constructions were meaningless. If the parties’ proposed constructions must be
fixed and frozen as of March 21, then there would be no point to these negotiations. Yet the
parties did negotiate at length about their proposed constructions, and both parties modified their
lists of terms and constructions in an attempt to reach common ground and narrow the disputed
issues. (See Dkt. 109 at 6-7 (recounting the parties’ post-March 21 negotiations).) Plaintiff’s
attempt to render these negotiations meaningless should be rejected. Rather, the Court should
evaluate both parties’ proposed constructions on the merits and should reject Plaintiff’s attempt
to preclude Defendants’ constructions.
Conclusion
For the foregoing reasons, Defendants’ constructions should be adopted.

Dated: May 3, 2012

By: /s/ Stephen E. Noona
Stephen E. Noona
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone: [phone]
Facsimile: [phone]
David A. Perlson
QUINN EMANUEL URQUHART &
SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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Counsel for Defendants GOOGLE INC., IAC
SEARCH & MEDIA, INC., TARGET CORP., and
GANNETT COMPANY, INC.

By: /s/ Stephen E. Noona
Stephen E. Noona
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone: [phone]
Facsimile: [phone]
Robert L. Burns
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
Two Freedom Square
11955 Freedom Drive
Reston, VA 20190
Telephone: [phone]
Facsimile: [phone]
Cortney S. Alexander
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
3500 SunTrust Plaza
303 Peachtree Street, NE
Atlanta, GA 94111
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant AOL, INC.

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CERTIFICATE OF SERVICE
I hereby certify that on May 3, 2012, I will electronically file the foregoing with the Clerk
of Court using the CM/ECF system, which will send a notification of such filing (NEF) to the
following:
Jeffrey K. Sherwood
Kenneth W. Brothers
DICKSTEIN SHAPIRO LLP
1825 Eye Street NW
Washington, DC 20006
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
Counsel for Plaintiff, I/P Engine, Inc.

Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 W. Main Street, Suite 2100
Norfolk, VA 23510-1665
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Counsel for AOL Inc., Google, Inc.,
Gannett Co., Inc., Target Corporation and
IAC Search & Media, Inc.

/s/ Stephen E. Noona
Stephen E. Noona
Virginia State Bar No. 25367
KAUFMAN & CANOLES, P.C.
150 West Main Street, Suite 2100
Norfolk, VA 23510
Telephone: [phone]
Facsimile: [phone]
[e-mail]
11687250_1.DOC

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