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

Filing 176

Memorandum in Support re 175 MOTION for Reconsideration re 171 Memorandum Opinion, in Part of Claim Construction Order filed by AOL Inc., Google Inc., IAC Search & Media, Inc., Target Corp., and Gannett Company, Inc. (collectively, "Defendants"). (Noona, Stephen) Modified on 6/22/2012 to add all defendants to docket text as the Motion is filed on behalf of all defendants (ecav). ).

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’ MEMORANDUM IN SUPPORT OF MOTION FOR
RECONSIDERATION IN PART OF CLAIM CONSTRUCTION ORDER
Defendants move the Court to reconsider its claim constructions for the terms
“collaborative feedback data” (from ‘420 claims 10 and 25) and “[feedback system for] receiving
information found to be relevant to the query by other users” (from ‘664 claims 1 and 26).
Defendants respectfully submit that the Court’s claim construction rulings as to these phrases
were a result of a misunderstanding of the parties’ actual dispute and also fail to take into
account the parties’ agreement that “collaborative feedback” necessarily requires feedback of
users “with similar interests or needs.”
Argument
I.

THE COURT’S CONSTRUCTION OF “COLLABORATIVE FEEDBACK DATA”
OMITS THE AGREED UPON REQUIREMENT THAT THIS DATA MUST
CORRESPOND TO “USERS WITH SIMILAR INTERESTS OR NEEDS.”
The parties agreed that the “collaborative feedback data” of claims 10 and 25 of the ‘420

patent must correspond to users “with similar interests or needs.” In its briefing, Plaintiff
acknowledged that “the system considers ‘what informons other users with similar interests or
needs found to be relevant.’ The parties agree that this is the claimed ‘collaborative feedback
data.’” (Pl. Opening Br. (Dkt. 129) at 22 (emphasis added).) Plaintiff further explained

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collaborative filtering “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 (emphasis
added).) Plaintiff similarly explained at the Markman Hearing that collaborative feedback data
corresponds to which informons “other users with similar interests or needs have found to be
relevant”:
So, your Honor, interestingly, both parties point to the same language in the
specification to support their constructions, and what I would point out to the
Court with respect to this specification language which appears here at the bottom
of the slide is that it is referring to the same thing that I'm talking about here,
which is the informons that the other users with similar interests or needs have
found to be relevant.
*

*

*

The specification language both parties rely upon appears in the left under the
blue heading, and the key part we have put in brackets at capital [A], the
language, that's really what's being construed. ‘What informons other users with
similar interests or needs found to be relevant.’ And you will see the plaintiff's
proposal tracks that language very closely.”1
(Tr. 34:18-25; 36:4-13) (emphases added).
Despite this agreement, the Court construed the term “collaborative feedback data” as
“data from system users regarding what informons such users found to be relevant.” (Order, 10.)
In doing so, the Court omitted the parties’ agreed upon requirement that the collaborative
feedback data correspond to “users with similar interests or needs.” Defendants respectfully
submit the Court should exercise its discretion and reconsider this construction to correct this

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As both parties acknowledged, “[c]ollaborative filtering [] is the process of filtering
informons, e.g., documents, by determining what informons other users with similar interests or
needs found to be relevant.” (4:26-29 (emphasis added).) The Court discounted this passage on
the theory that the specification’s definition of collaborative filtering should not be used to define
collaborative feedback data. (See Order at 10.) Defendants respectfully submit that the Court’s
position was erroneous, because the specification’s definition of collaborative filtering shows
what the patents mean by the word “collaborative” itself, as both parties agreed.
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error. ActiveVideo Networks, Inc. v. Verizon Comm’ns, Inc., No. 2:10-cv-248-RAJ, at 3 (E.D.
Va. June 30, 2011) (under Federal Rule of Civil Procedure 54(b), a court may revise an
interlocutory order at any time before the entry of judgment, in the exercise of its discretion and
“as justice requires”); Boykin Anchor Co., Inc. v. Wong, No. 5:10-cv-591, 2012 WL 937182, *1
(E.D.N.C. March 20, 2012): “No clear standard exists for the analysis of a motion for
reconsideration under Fed. R.Civ. P. 54(b) other than its resolution [is] ‘committed to the
discretion of the court.’”2
It appears this error stems from a misunderstanding of the parties’ actual dispute
regarding this term. The Court stated “I/P Engine submits that Defendants attempt to read an
additional source limitation into this claim by adding the requirement that the data must come
from ‘users with similar interests or needs’ to the one limitation contained within the claim
language that data must come from ‘system users.’” (Order, 10.) Plaintiff, however, did not
contend that Defendants improperly added that the data must correspond to “users with similar
interests or needs.” Again, to the contrary, Plaintiff agreed that the data must correspond to users
with similar interests or needs.
Instead, the dispute concerning this term was whether this data regarding users, whom
both parties agreed must have “similar interests or needs,” comes from those users, as
Defendants proposed in their construction (“data from users with similar interests or needs
regarding what informons such users found to be relevant”), or merely concerns what informons
those users found relevant, as Plaintiff proposed in its construction (“information concerning

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“[T]he Federal Circuit has expressly noted the need for district courts to entertain
motions to reconsider in the specific context of claim construction.” Lighting Ballast Control,
LLC v. Philips Elecs. N. Am. Corp., No. 7:09-cv-29, 2010 WL 4946343, *10 (N.D. Tex. Dec. 2,
2010) (citing Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir.
2002)).
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what informons other users with similar interests or needs found to be relevant.”) (Joint CC &
Pre-Hr’g Statement, Ex. A at 1 (emphasis added); Order, 8; Tr. 70:23 to 71:20.) Indeed, Plaintiff
specifically objected that “Defendants’ definition requires that the data be ‘from users with
similar interests or needs.’” (Pl. Opening Br. at 22 (emphasis in original).) Plaintiff echoed this
position at the hearing, observing its agreement that collaborative feedback is information
corresponding to what “users with similar interests or needs found to be relevant,” but
distinguishing the parties’ constructions based upon what it described as a “source limitation” of
where this information comes from:
IPE's construction, on the other hand, your Honor, does not propose a second
source limitation. But instead, what it does is it proposes to explain collaborative
feedback data is the information concerning what informons users with similar
interests or needs found to be relevant. So the point here is we are still just
talking about data or information. We are not talking about where it's coming
from. This fits harmoniously and appropriately within the claim language itself,
your Honor.
(Tr. 34:2-11.)
In its Markman ruling, the Court agreed with Defendants on the parties’ actual dispute,
concluding “it is clear to the Court that the collaborative feedback data comes from system users
and pertains to informons considered by those users.” (Order, 9.) Given the parties’ agreement
that collaborative feedback data involves users with similar interests or needs, and given the
Court’s finding that this data comes from users, the construction should have necessarily
included the limitation that the data be “from users with similar interests or needs regarding what
informons such users found to be relevant,” as Defendants asserted.
Accordingly, Defendants respectfully request that the Court reconsider its Order and
adopt Defendants’ construction of “collaborative feedback data.”

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II.

THE “OTHER USERS” IN “[FEEDBACK SYSTEM FOR] RECEIVING
INFORMATION FOUND TO BE RELEVANT TO THE QUERY BY OTHER USERS”
MUST BE OTHER USERS WITH SIMILAR INTERESTS OR NEEDS
The Court’s decision not to construe the “[feedback system for] receiving information

found to be relevant to the query by other users” phrases in the ‘664 patent appears to have
stemmed from a similar error that affected its construction of “collaborative feedback data.”
(See Order at 11-12.) Only Defendants’ proposed construction properly recognizes that the
feedback system must incorporate the concept of collaborative feedback.
Notwithstanding the parties’ divergent constructions, the parties agreed that all of the
asserted claims of the ‘664 patent must include collaborative feedback. For example, Plaintiff
stated: “[t]he Lang/Kosak patents teach innovative search engine techniques that provide highquality search results by combining content-based data with collaborative feedback data from
other users to optimally satisfy a user’s need for information.” (Pl. Opening Br. at 1 (emphasis
added); see also Def. Response Br. (Dkt. 158) at 2-4; Defendants’ Markman slides 21-24.)
Plaintiff repeated this agreement at the hearing, stating that “Lang and Kosak through their
invention came up with an improved way to filter search results combining the content analysis
and collaborative feedback to provide superior results” (Tr. 27:20-23) and further that “[t]he
claims in the '420 and the '664 patent relate to combining two specific measures in that
methodology that happens in the search engine, two specific measures to improve search results.
Those specific measures are content and collaborative data.” (Id. at 16:13-17.) When discussing
the particular phrases at issue, Plaintiff acknowledged that they referred to the same collaborative
feedback data of the ‘420 patent. (Id. at 38-39.) In fact, Plaintiff acknowledged that
“collaborative feedback data” in the ‘420 patent expressed the same concept as the phrases at
issue in the ‘664 patent, just in a different way. (Id. at 37:21-25: “And we see a similar kind of
issue here with respect to the '664 and the two claims that are at issue here. The language is
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different because patent lawyers, I have learned over doing these cases, like to express the same
concepts in different ways.”)
Further, the parties agreed that collaborative feedback requires users with similar interests
or needs. Thus, the “other users” in ‘664 claims 1 and 26 necessarily must be understood to
mean other users “with similar interests or needs” in order to provide these claims with the
collaborative feedback element that both parties agree is required by claims 1 and 26. Indeed,
Plaintiff admitted this too, stating 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.” (Pl. Opening Br. at 3 (emphasis added).) And as with
“collaborative feedback data,” Plaintiff took issue with Defendants’ construction because it
supposedly added a “separate source limitation.” (Tr. 39.)
In refusing to construe these phrases, the Court failed to acknowledge both (1) the
parties’ agreement that the claims must include collaborative feedback, and (2) the parties’
agreement that collaborative feedback requires users with similar interests or needs, and thereby
overlooked that the “other users” in this phrase must be understood to mean other users with
similar interests or needs to capture the “collaborative feedback” that all parties agree must be
present in the claims.
Further, the Court reasoned that it need not construe the phrases because claim
construction is not required for all terms, but only where there is a genuine dispute between the
parties. (Order, 11.) The Court found that with these phrases construction was not required
because the plain language itself was sufficient to resolve any dispute. (Id. at 12.) Defendants
respectfully submit, however, that the language alone does not resolve the parties’ dispute.
Indeed, as explained above, Plaintiff and Defendants have asserted disparate interpretations of

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this language, despite their agreement that the feedback data at issue must involve “users with
similar interests or needs.”
Accordingly, and to avoid further disputes as to these phrases later in the case,
Defendants respectfully request that the Court reconsider its construction for “[feedback system
for] receiving information found to be relevant to the query by other users” and adopt
Defendants’ construction that properly interprets these phrases to apply to information
corresponding to users with similar interests or needs, as both parties agree is required by the
‘664 patent.

Dated: June 22, 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]
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

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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 June 22, 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
KAUFMAN & CANOLES, P.C.
150 West Main Street
Post Office Box 3037
Norfolk, VA 23514
Telephone: [phone]
Facsimile: [phone]
[e-mail]

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