Interval Licensing LLC v. Yahoo! Inc.

Filing 7

STIPULATED FINAL JUDGMENT ORDER by Judge Marsha J. Pechman. (Attachments: # 1 Claim Construction Order)(MD)

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 1 of 31

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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INTERVAL LICENSING, LLC,

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Plaintiff,

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CLAIM CONSTRUCTION ORDER

v.

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LEAD CASE NO. C10-1385MJP

AOL, INC., et al.,
Defendants.

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This matter comes before the Court on the opening and responsive claim construction

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17 briefs provided by the parties. (Dkt. Nos. 300, 301, 311, 315.) Having reviewed the briefs and all
18 related papers, and having held a tutorial hearing on December 10, 2012, and a Markman hearing
19 on December 12, 2012, the Court hereby enters the following ORDER:
The Court finds the terms “unobtrusive manner” and “does not distract a user” are

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21 indefinite, and finds that the claims containing these terms are therefore invalid under 35 U.S.C.
22 § 112 ¶ 2. The Court adopts Plaintiff’s proposed construction of disputed terms 2, 6, 7, 9, 10, 11,
23 12, 13, and 15. The Court adopts Defendants’ proposed construction of disputed terms 3, 5, 8,
24 and 14.

CLAIM CONSTRUCTION ORDER- 1

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Background
The two patents at issue in this litigation disclose an “attention manager for occupying

3 the peripheral attention of a person in the vicinity of a display device.” U.S. Patent No. 6,034,652
4 (the “‘652 Patent”); U.S. Patent No. 6.788.314 (the “‘314 Patent”). The ‘314 Patent is a
5 continuation of the ‘652 Patent, and the two patents share a common specification. The
6 inventions described in the two patents are aimed at providing information to users in non7 distracting ways that do not interfere with the user’s primary activity on a device such as a
8 computer. (Dkt. No. 300 at 6. 1) The inventions are intended to “improve users’ ability to take
9 advantage of available information by allowing for the flow of other sources of information that
10 they otherwise would not see.” (Id.)
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Plaintiff Interval Licensing is the licensing arm of Interval Research Corporation,

12 founded in 1992 by Paul Allen and David Liddle to perform advanced research and development
13 in the areas of information systems, communications, and computer science. (Dkt. No. 153 at 4.)
14 Interval Research was issued approximately 300 patents in less than a decade. (Id.) In the present
15 litigation, Plaintiff brings suit against eleven Defendants: AOL, Inc.; Apple, Inc.; eBay, Inc.;
16 Facebook, Inc.; Google, Inc.; Netflix, Inc.; Office Depot, Inc.; OfficeMax, Inc.; Staples, Inc.;
17 Yahoo!, Inc.; and YouTube, LLC. (Id. at 2-4.) Plaintiff alleges Defendants are infringing four
18 patents. (Id. at 5.) The Court has divided the litigation into two tracks, staying the track
19 concerning U.S. Patent Nos. 6,263,507 and 6,757,682, but lifting the stay on the track concerning
20 the ‘652 and ‘314 Patents. (Dkt. No. 269 at 2.) In this track, the parties have agreed to
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This litigation includes a number of related cases. The references here refer to docket
24 numbers in the lead case, Case No. C10-1385MJP.

CLAIM CONSTRUCTION ORDER- 2

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1 construction for eleven terms. (Dkt. No. 300 at 9.) The parties dispute the constructions of 13
2 remaining terms. (Id.)
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Discussion
A. Legal Standard
It is a “bedrock principle” of patent law that “the claims of a patent define the invention

6 to which the patentee is entitled to the right to exclude.” Philips v. AWH Corp., 415 F.3d 1303,
7 1312 (Fed. Cir. 2005) (en banc) (citations omitted). The words of a patent claim “are generally
8 given their ordinary and customary meaning.” Vitriolics Corp. v. Conceptronic, Inc., 90 F.3d
9 1576 (Fed. Cir. 1996). The ordinary and customary meaning of a claim term is the meaning that
10 the term would have to a person of ordinary skill in the art in question at the time of the
11 invention. Phillips, 415 F.3d at 1313.
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The Court has the sole responsibility for construing patent claims. See Markman v.

13 Westview Instruments, Inc., 517 U.S. 370 (1996). The Federal Circuit has established a clear
14 hierarchy of sources to guide courts in claim construction. First, if a claim term is non-technical
15 and derives no special meaning from the patent and its prosecution history, the court need not
16 construe it. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
17 However, if a jury might otherwise misunderstand a claim term in the context of the patent and
18 its file history, courts are to “read the claim term not only in the context of the particular claim in
19 which the disputed term appears, but in the context of the entire patent, including the
20 specification.” Phillips, 415 F.3d at 1313. The Federal Circuit has affirmed that “the best source
21 for understanding a technical term is the specification from which it arose, informed, as needed,
22 by the prosecution history.” Phillips, 415 F.3d at 1315.
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Intrinsic evidence—the specification and prosecution history—is the primary source for

24 understanding claim terms. Phillips, 415 F.3d at 1315. Courts are also authorized to consider

CLAIM CONSTRUCTION ORDER- 3

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1 “evidence external to the patent and prosecution history, including expert and inventor
2 testimony, dictionaries, and learned treatises.” Id. However, “while extrinsic evidence can shed
3 useful light on the relevant art . . . it is less significant than the intrinsic record in determining the
4 legally operative meaning of claim language. Id. (internal quotations and citations omitted).
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Disputed terms 5, 9, and 15 are means-plus-function limitations. Title 35 U.S.C. § 112

6 provides that “[a]n element in a claim for a combination may be expressed as a means or step for
7 performing a specified function without the recital of structure, material, or acts in support
8 thereof, and such claim shall be construed to cover the corresponding structure, material, or acts
9 described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2000). Construing a
10 means-plus-function limitation is a two-step process. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d
11 13644, 1369 (Fed. Cir. 2001). First, the court must “identify the function explicitly recited in the
12 claim.” Id. Then the court must “identify the corresponding structure set forth in the written
13 description that performs the particular function set forth in the claim.” Id. at 1369-70. The
14 identified structure must not include “structure from the written description beyond that
15 necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem. Co., Inc.,
16 194 F.3d 1250, 1258 (Fed. Cir. 1999).
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B. Indefiniteness
Defendants ask the Court to hold that two claim limitations that appear frequently in both

19 patents are insolubly ambiguous. (Dkt. No. 301 at 9-10.) This finding would render invalid all
20 the claims of the ‘314 Patent and claims 4-8, 11, 34, and 35 of the ‘652 Patent. (Id.) The two
21 limitations are: (1) that images be displayed in an “unobtrusive manner” and (2) that the display
22 of images must not “distract a user” from the user’s primary interaction with the apparatus. (Id.);
23 ‘652 Patent, Claims 4-8, 11, 34, 35; ‘314 Patent, All Claims. Defendants assert, “[w]hether
24 treated separately or together, these claim limitations fail to define a definite invention at least

CLAIM CONSTRUCTION ORDER- 4

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1 because whether an image is displayed in an ‘unobtrusive manner’ or ‘does not distract a user’
2 depends on the subjective opinion of each individual user and on the surrounding environment in
3 which the image is displayed.” (Dkt. No. 301 at 10.) Therefore, Defendants assert, the Patents do
4 not tell one of ordinary skill in the art what constitutes displaying an image in an “unobtrusive
5 manner” and what “does not distract a user.” (Dkt. No. 301 at 10.)
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Every patent’s specification must “conclude with one or more claims particularly

7 pointing out and distinctly claiming the subject matter which the applicant regards as his
8 invention.” 35 U.S.C. § 112 ¶ 2 (2000); see Halliburton Energy Servs., Inc. v. M-1 LLC, 514
9 F.3d 1244, 1249 (Fed. Cir. 2008). “Because the claims perform the fundamental function of
10 delineating the scope of the invention, the purpose of the definiteness requirement is to ensure
11 that the claims delineate the scope of the invention using language that adequately notifies the
12 public of the patentee’s right to exclude.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
13 1342, 1347 (Fed. Cir. 2005) (citations omitted). “Even if a claim term’s definition can be
14 reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot
15 translate the definition into meaningfully precise claim scope.” Halliburton, 514 F.3d at 1251.
16 Patent claims with clear boundaries are “essential to promote progress, because [they] enable[]
17 efficient investment in innovation.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
18 U.S. 722, 730-31 (2002). This issue is properly raised during the Markman hearing because an
19 analysis of claim indefiniteness under § 112 ¶ 2 is “inextricably intertwined with claim
20 construction.” Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir.
21 1999); see also Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1340-41 (Fed. Cir. 2003)
22 (determination of claim definiteness “requires a construction of the claims according to the
23 familiar cannons of claim construction.”).
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CLAIM CONSTRUCTION ORDER- 5

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Defendants have a heavy burden to prove indefiniteness. The statutory presumption of

2 patent validity means that “close cases of indefiniteness in litigation involving issued patents are
3 properly resolved in favor of the patentee.” Exxon Research & Eng’g Co. v. United States, 265
4 F.3d 1371, 1380 (Fed. Cir. 2001). A claim is not indefinite “merely because it poses a difficult
5 issue of claim construction.” Id. at 1375. “Only after a thorough attempt to understand the
6 meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is
7 invalid for indefiniteness. Foremost among the tools of claim construction is of course the claim
8 language itself, but other portions of the intrinsic evidence are clearly relevant, including the
9 patent specification and prosecution history.” All Dental Prodx, LLC v. Advantage Dental
10 Prods., Inc., 309 F.3d 774, 780 (Fed. Cir. 2002).
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Using the ordinary tools of claim construction, the Court finds that the terms “in an

12 unobtrusive manner” and “does not distract” a user, whether used together or separately, are
13 insolubly ambiguous. See ‘652 Patent, Claims 4-8, 11, 34, 35; ‘314 Patent, All Claims. The
14 intrinsic record provides no basis for a person of ordinary skill in the art to determine whether a
15 displayed image is displayed in an “unobtrusive manner.” (Id.) The Federal Circuit addressed a
16 similar situation in Datamize, where it held that a claim directed to an electronic kiosk system
17 with an “aesthetically pleasing” user interface was invalid as indefinite because neither the claim
18 language nor the specification provided an “objective standard . . . in order to allow the public to
19 determine the scope” of the term. 417 F.3d at 1350. The Datamize court found that the patentee
20 “offered no objective definition identifying a standard for determining when an interface screen
21 is ‘aesthetically pleasing.’” Id. Likewise, the claims of the ‘652 and ‘314 Patents provide no
22 meaningful definition of the phrase “unobtrusive manner,” because the same image may or may
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CLAIM CONSTRUCTION ORDER- 6

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1 not be considered unobtrusive depending on a variety of factors, such as color, size, and
2 information displayed. (See Dkt. No. 301 at 14.)
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Similarly, the limitation that a displayed image “does not distract” a user is indefinite

4 because whether something distracts a user from his primary interaction depends on the
5 preferences of the particular user and the circumstances under which any single user interacts
6 with the display. See Halliburton, 514 F.3d at 1255 (“When a proposed construction requires that
7 an artisan make a separate infringement determination for every set of circumstances in which
8 the composition may be used, and such determinations are likely to result in differing outcomes
9 (sometimes infringing and sometimes not), that construction is likely to be indefinite.”). As
10 Defendants explain, one user with a higher ability to focus may not be distracted by an image,
11 while another user with a lesser ability to concentrate may be easily pulled away by the same
12 image. (Dkt. No. 301 at 17.) “While patentees are allowed to claim their inventions broadly, they
13 must do so in a way that distinctly identifies the boundaries of their claims.” Halliburton, 514
14 F.3d at 1253.
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The Patents’ specification also fails to provide guidance. Plaintiff points to various

16 passages in the specification that purport to define the terms “unobtrusive manner” and “does not
17 distract the user.” (Dkt. No. 311 at 7-8.) Despite Plaintiff’s insistence, none of these sections
18 show one of ordinary skill in the art how to distinguish between displays of content that are
19 obtrusive/unobtrusive and distracting/non-distracting. Plaintiff points to Column 6, lines 37-51
20 of the specification of the ‘652 Patent, which discusses an embodiment where “the information is
21 presented by the attention manager during active periods . . . in an unobtrusive manner that does
22 not distract the user from the primary interaction (e.g., the information is presented in areas of a
23 display screen that are not used by displayed information association with the primary
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CLAIM CONSTRUCTION ORDER- 7

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1 interaction).” ‘652 Patent at 6:39-45. During the Markman hearing, Plaintiff focused on the
2 parenthetical in lines 43-45, arguing that this provided an express definition of the terms.
3 However, while a patent’s specification may act as a dictionary, a dictionary only works if it is
4 comprehensible. See Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 789 (Fed Cir.
5 2010) (“If the specification reveals a special definition for a claim term, ‘the inventor’s
6 lexicography governs’” (quoting Phillips, 415 F.3d at 1316)). Here there is simply no way that a
7 person of ordinary skill in the art would know that this phrase, starting with “e.g.,” constitutes an
8 express definition. ‘652 Patent at 6:39-45.
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The next passage, which explains that an attention manager “generally” makes use of

10 “unused capacity,” including both “spatial” and “temporal” dimensions, also provides little
11 guidance to one of ordinary skill in the art trying to understand the terms. ‘652 Patent at 6:4512 51; see Datamize, 417 F.3d at 1352 (“while the description of an embodiment provides examples
13 of aesthetic features of screen displays that can be controlled by the authoring system, it does not
14 explain what selection of these features would be ‘aesthetically pleasing.’”). Neither do examples
15 of specific embodiments. In Datamize, the patentee provided examples of features that were
16 “aesthetically pleasing,” such as “some aspect of button styles and sizes, window borders, color
17 combinations, and type fonts,” but the Federal Circuit held that the term was still indefinite
18 because “the specification does not explain what factors a person should consider when selecting
19 a feature to include in the authoring system.” Id. Here, Plaintiff points the Court to an
20 embodiment that uses the “unused spatial capacity” of the display screen, or is “presented in
21 areas of a display screen that are not used by displayed information associated with the primary
22 interaction.” (Dkt. No. 311 at 7); ‘652 Patent at 6:37-51; 2:17-19. As in Datamize, these
23 descriptions are unhelpful because they do not explain what factors a person should consider
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CLAIM CONSTRUCTION ORDER- 8

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1 when selecting a feature to include. 417 F.3d at 1352. In fact, rather than providing any objective
2 guidance, the examples cited by Plaintiff simply refer back in general terms to the “wallpaper” or
3 “screensaver” embodiments. They do not provide a way for a person of ordinary skill in the art to
4 translate the definition into meaningfully precise claim scope. See Halliburton, 514 F.3d at 1251.
5

The prosecution history also fails to set forth an objective method to determine whether a

6 displayed item is “unobtrusive” or would “not distract” a user. Plaintiff argues that although the
7 PTO raised possible indefiniteness issues for other terms, it “never raised any issue with respect
8 to the ‘unobtrusive manner’ phrase.” (Dkt. No. 311 at 8.) Plaintiff also cites to the prosecution
9 history of the ‘652 patent, where the PTO linked “display[ing] content data in an unobtrusive
10 manner” with the “wallpaper embodiment and display area embodiment.” (Dkt. No. 327-1 at
11 107.) None of this provides guidance as to any “physical characteristics that guide the
12 determination” of whether a display is unobtrusive or distracting. See Deere & Co. v. Bush Hog,
13 LLC, No. 2011-1629, -1630, -1631, slip op. at 17 (Fed. Cir. Dec. 4, 2012.) Lastly, Plaintiff cites
14 to various examples where Defendants have used the term “unobtrusive” in their own patents.
15 (Id.) However, Defendants point out that most of those patents do not use the term “unobtrusive”
16 in a claim, and, even if they do, their specifications may contain sufficient guidance. In sum,
17 Plaintiff fails to show that the extrinsic record provides any clarity regarding the meaning of
18 these two terms.
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The limitations “unobtrusive manner” and “does not distract a user” are indefinite

20 because the patents fail to provide an objective standard by which to define the scope of these
21 terms. See Datamize, 417 F.3d at 1350. They are also indefinite because the determination of
22 whether an accused product would meet the claim limitations depends on its usage in changing
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1 circumstances. See Halliburton, 514 F.3d at 1254-55. Therefore, the Court finds that the claims
2 containing these terms are invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2.
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C. Terms for Construction

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1. “selectively displaying on the display device . . . an image or images generated from
the set of content data”

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The Court adopts the parties’ agreed construction of term 1: “[choose/choosing] and
display[ing] one or more “images generated from the set of content data” according to
scheduling information. (Dkt. No. 334.)
2. “images generated from a set of content data”
PLAINTIFF’S CONSTRUCTION

Audio and/or visual output that is generated
11 from data within a set of content data
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DEFENDANTS’ CONSTRUCTION
Audio and/or visual output defined by a
content provider that is generated from data
within a set of related data

The Court adopts Plaintiff’s proposed construction: “audio and/or visual output that is

14 generated from data without a set of content data.”
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The only dispute between the parties with respect to this term is whether the audio and/or

16 visual output must be “defined by the content provider,” as Defendants propose. (Dkt. No. 301 at
17 21.) Defendants argue that their construction specifies, “consistent with the intrinsic record and
18 the very purpose of the invention, that the audio and/or visual output is defined by the content
19 provider.” (Id.) This proposed construction goes too far. While the abstract of the ‘652 Patent
20 states that the attention manager “affords an opportunity to content providers to disseminate their
21 information,” the Patent nowhere says that the output is “defined” by the content provider. ‘652
22 Patent, Abstract.
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Defendants’ proposed construction also fails because it conflicts with the definitions of

2 “image” and “content data” in the specification. (Dkt. No. 300 at 12.) The specification defines
3 “image” as “any sensory stimulus that is produced from the set of content data” and defines
4 “content data” as “data that is used by the attention manager to generate displays.” ‘652 Patent at
5 6:60-64; 9:51-54. The idea that output must be defined by a content provider does not appear in
6 the specification. “If the specification reveals a special definition for a claim term, ‘the inventor’s
7 lexicography governs,’” Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 789 (Fed Cir.
8 2010) (quoting Phillips, 415 F.3d at 1316.). Therefore, the Court adopts Plaintiff’s proposed
9 construction.
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3. “in an unobtrusive manner that does not distract a user of the apparatus from a
primary interaction with the apparatus”

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PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

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During a user’s primary interaction with the
13 apparatus and unobtrusively such that the
images generated from the set of content data
14 are displayed in addition to the display of
images resulting from the user’s primary
15 interaction
16 Alternate Construction: During a user’s
primary interaction with the apparatus and
17 the information is presented in an area of
the display screen not substantially used by
18 displayed information associated with the
primary interaction of the user
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As written, this term is inherently subjective
and therefore indefinite.
Alternately, this must be limited such that the
images are displayed either when the attention
manager [or system] detects that the user is not
engaged in a primary interaction or as a
background of the computer screen.

As explained in Section B, these terms are indefinite. Courts cannot rewrite claims to

21 preserve their validity. Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed Cir. 1999); see also
22 Becton, Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990) (“Nothing in
23 any precedent permits judicial redrafting of claims.”). “While patentees are allowed to claim
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CLAIM CONSTRUCTION ORDER- 11

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1 their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their
2 claims.” Halliburton, 514 F.3d at 1253.
3

Plaintiff’s argument against a finding of indefiniteness highlights the flaws in these

4 terms. Plaintiff asserts that the following passage from the specification provides a clear,
5 objective definition of “unobtrusive manner”:
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According to another further aspect of the invention, the selective display of an image or
images occurs while the user is engaged in a primary interaction with the apparatus,
which primary interaction can result in the display of an image or images in addition to
the image or images generated from the set of content data (“the wallpaper
embodiment”) (emphasis added in Plaintiff’s brief). ‘652 Patent at 3:25-31; (Dkt. No. 300
at 18-19.)

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But this purported “clear, objective definition” sheds no light on what “unobtrusive manner”
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means. Are all manifestations of the screensaver embodiment considered “unobtrusive”? What
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color, shape, or size makes an image more or less “unobtrusive”? Which unused areas of the
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display screen are unobtrusive? The “definition” cited by Plaintiff addresses none of these
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questions. See Datamize, 417 F.3d at 1351 (“when faced with a purely subjective phrase . . . a
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court must determine whether the patent’s specification supplies some standard for measuring
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the scope of the phrase.”).
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As Defendants point out, this purported “clear, objective definition” fails to even mention
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the word “unobtrusive.” (Dkt. No. 315 at 12.) Further, the passage states that the primary
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interaction “can result” in the display of images, not that it “must result” or even that it “results.”
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(Id.) The words “can result” indicate that the primary interaction sometimes, but not always,
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results in the display. (Id.) Plaintiff’s argument that the patentee acted as its own lexicographer is
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unpersuasive. A comparison with Phillips is illustrative. 415 F.3d at 1325. In Phillips, the
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Federal Circuit relied on passages in the asserted patent’s specification that specifically discussed
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1 “baffles” to construe the term “baffles.” Id. Here, Plaintiff is unable to point to any such
2 language discussing a specific meaning for “unobtrusive.”
3

Plaintiff’s proposed construction also incorrectly excludes the screen saver embodiment

4 described in the Patents. Column 6, lines 45-51 of the ‘652 Patent specification states,
5 “Generally, then, an attention manager according to the invention makes use of ‘unused
6 capacity’ of a display device, ‘unused capacity’ being defined broadly to include, for example,
7 the embodiments mentioned above, i.e., both temporal (e.g., the first-described embodiment
8 above) and spatial (e.g., the second-described embodiment above) dimensions” (emphasis
9 added). ‘652 Patent, 6:45-51. This explanation, coming directly after Plaintiff’s proposed
10 definition of “unobtrusive,” does not distinguish between the “temporal” embodiment and the
11 “spatial” embodiment. (Dkt. No. 300 at 18-19.) Plaintiff’s references to the prosecution history
12 are unpersuasive because, to the extent the PTO identifies “unobtrusive” with the “wallpaper
13 embodiment,” this conflicts with the language of the specification, which does not distinguish
14 between the screensaver embodiment and the wallpaper embodiment. See SRAM Corp. v. AD-II
15 Eng’g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006).
16

Finally, Plaintiff’s last-minute amendment, presented to the Court as an “alternative

17 compromise construction” that Defendants rejected, still does not solve the indefiniteness
18 problem. (Dkt. No. 334.) Plaintiff suggests construing the term to mean “during a user’s primary
19 interaction with the apparatus and the information is presented in an area of the display
20 screen not substantially used by displayed information associated with the primary
21 interaction of the user” (emphasis indicates amendment). (Id. at 3.) First, this construction
22 reads out the words “does not distract” from the term, while introducing the word
23 “substantially.” Second, the proposed construction, specifying that the information must be
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1 presented in an areas “not substantially used” is still indefinite, because it is not supported in the
2 specification and because one of ordinary skill in the art has no way of knowing what
3 “substantial” means in this context. Rather than providing clarification for the Court, Plaintiff’s
4 inability to settle on a construction further undermines its argument that the specification acted as
5 a dictionary regarding this term.
6
7

4. “primary interaction”
During the Markman hearing, the parties agreed to adopt the definition of this term in

8 Column 8, lines 19-23 of the ‘652 Patent. Therefore, the Court construes “primary interaction” as
9 “any operation of the computer that occurs to enable or to support the performance of the
10 function or functions that provide the basis for the user’s use of the computer.”
11
12

5. “means for selectively displaying on the display device, in an unobtrusive manner
that does not distract a user of the apparatus from a primary interaction with the
apparatus, an image or images generated from the set of content data”

13 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

14 Function: Selectively displaying an image or
images generated from the set of content data
15 on the display device in an unobtrusive manner
that does not distract a user of the apparatus
16 from a primary interaction with the apparatus

As set forth above, this term includes a phrase
that is indefinite within the recited function;
thus this term is indefinite.

17 Structure: One or more digital computers
programmed to identify the next set of content
18 data in the schedule and display the next set of
content data in the schedule in an “unobtrusive
19 manner that does not distract a user of the
apparatus from a primary interaction with the
20 apparatus”
21

Function: “selectively displaying on the
display device in an unobtrusive manner that
does not distract a user of the apparatus from a
primary interaction with the apparatus, an
image or images generated from the set of
content data” [as construed herein[
To the extent there is any structure disclosed
that could fulfill the recited function, it is:
Structure: A conventional digital computer
programmed with a screen saver application
program, activated by the detection of an idle
period, or a wallpaper application program,
that “selectively displays . . . image or images
generated from the set of content data” [as

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1

construed herein]

2
As explained in Section B, this term includes a phrase that is indefinite within the recited
3
function; therefore this term is indefinite.
4
The parties agree that the recited function includes displaying images “in an unobtrusive
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manner that does not distract a user of the apparatus from a primary interaction.” (Dkt. No. 315
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at 15-16.) However, the parties dispute what, if any, structure is disclosed in the specification for
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performing the function recited in the claim. (Dkt. No. 301 at 29; Dkt. No. 300 at 22-24.) The
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Federal Circuit has observed that “[i]n a means-plus-function claim in which the disclosed
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structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed
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structure is not the general purpose computer, but rather the special purpose computer
11
programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game Tech., 184
12
F.3d 1339, 1349 (Fed. Cir. 1999). “The corresponding structure for a § 112 ¶ 6 claim for a
13
computer-implemented function is the algorithm disclosed in the specification.” Aristocrat
14
Techs. Austl. PTY Ltd. v. Int’l Game. Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
15
Here, Plaintiff fails to identify anything in the specification that describes the steps the
16
software would perform or the “algorithm” used to implement the recited function for the
17
“means for displaying” term. (Dkt. No. 315 at 16.) While a “description of the function in words
18
may disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm
19
to provide the necessary structure under § 112 ¶ 6,” the description Plaintiff provides here is
20
insufficient. See Typhoon Touch. Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir.
21
2011). Plaintiff points to Fig. 5A in the specification, which says the digital computer must select
22
the content to be displayed. (Dkt. No. 311 at 14.) Then, Plaintiff explains, “the image or images
23
generated from that set of content data must be displayed ‘in an unobtrusive manner’.” (Id.,
24

CLAIM CONSTRUCTION ORDER- 15

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 16 of 31

1 citing step 105 of Fig. 5A). Then, according to Plaintiff, the images must be displayed “during a
2 user’s primary interaction with the apparatus and unobtrusively such that the images generated
3 from the set of content data are displayed in addition to the display of images resulting from the
4 user’s primary interaction.” (Id., quoting ‘652 patent at 3:25-30.) Rather than describing the
5 function, Plaintiff merely parrots the indefinite functional language in the claims and fails to
6 identify any algorithm that is actually capable of accomplishing the function. As Defendants
7 explain, “[s]uch a construction would capture any general purpose computer programmed to
8 perform the recited function regardless of whether it corresponds to any algorithm in the
9 specification.” (Dkt. No. 301 at 29-30.) Therefore, the Court finds claim 4 of the ‘652 Patent and
10 its dependent claims are invalid as indefinite for lacking sufficient disclosure of supporting
11 structure.
12

6. “each content provider provides its content data to [a/the] content display system
independently of each other content provider”

13
PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

14
No construction needed; in the alternative:
15 each content provider provides its content data
to the content display system without being
16 influenced or controlled by any other content
provider
17

Each content provider transmits its content data
to [a/the] content display system without being
transmitted through, by or under the influence
or control of any other content provider

18

The Court adopts Plaintiff’s construction and declines to construe this term.

19

The only dispute regarding this term concerns whether the word “independently” needs to

20 be construed at all. (Dkt. No. 300 at 42; Dkt. No. 301 at 30.) It does not. Defendants explain that
21 their construction clarifies that “a content provider does NOT provide its content data
22 ‘independently’ if one content provider’s data is provided ‘through, by or under the influence or
23 control of any other content provider.’” (Dkt. No. 301 at 30 (emphasis in original).) If a claim
24

CLAIM CONSTRUCTION ORDER- 16

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 17 of 31

1 term is non-technical and derives no special meaning from the patent and its prosecution history,
2 the court need not construe it. See U.S. Surgical Corp., 103 F.3d at 1568. That is the case here.
3

The prosecution history confirms Plaintiff’s assertion that the term need not be construed.

4 During the original prosecution the patentee expressly removed the requirement of “direct”
5 transmission from the content provider to the content display system as part of the amendment in
6 which the language of this disputed term was added. (Dkt. No. 300 at 25, citing ‘314 Patent
7 History, IL_DEFTS0006293.) As part of this amendment, the “directly to the display device”
8 language was removed from the claims, while the language disputed here was added. (Id.)
9 Defendants’ proposed construction improperly reintroduces a requirement of “direct”
10 transmission that was expressly removed during prosecution.
11
12

7. “user interface installation instructions for enabling provision of a user interface
that allows a person to request the set of content data from the specified information
source”

13 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

14 “installation instructions” for enabling
provision of an interface that enables a person
15 to request the set of content data from a
specific source of information
16

“instructions” that enable content providers to
install a user interface in the content provider’s
information environment so that users can
request a particular set of content data
representing the image(s) to be displayed from
the specified content provider

17
18

The Court adopts Plaintiff’s construction: “‘installation instructions’ for enabling

19 provision of an interface that enables a person to request the set of content data from a specific
20 source of information.”
21

Defendants ask the Court to require that the user interface be “in the content provider’s

22 information environment,” as outlined in the specification of the ‘652 Patent at Col. 16:9-16.
23 (Dkt. No. 301 at 32.) But adopting this construction would import a limitation from a preferred
24

CLAIM CONSTRUCTION ORDER- 17

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 18 of 31

1 embodiment in contravention of Federal Circuit precedent. See Phillips, 415 F.3d at 1323
2 (“[A]lthough the specification often describes very specific embodiments of the invention, we
3 have repeatedly warned against confining the claims to those embodiments.”). In fact, the
4 specification of the ‘652 Patent explains that “[a]ny appropriate user interface can be used for
5 enabling a user to directly request a particular set of content data.” ‘652 Patent at 18:60-61. This
6 contravenes Defendants’ construction. Id.
7

Defendants also attempt to limit the claim by requiring that the user interface permit a

8 user to request “a particular set of content data representing the image(s) to be displayed from the
9 specified content provider.” (Dkt. No. 301 at 32.) Again, Defendants’ attempt to insert a
10 requirement that every content provider take an active role in “defining” or “formulating” the
11 content data or the images generated is an improper attempt to import a limitation from a
12 preferred embodiment. (Dkt. No. 300 at 27.) This language is not supported by the claims and
13 would only serve to add uncertainty about what the claims require.
14

8. “during operation of an attention manager”

15 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

16 During the operation of a system for engaging
at least part of the user’s attention that is not
17 occupied by the user’s primary interaction with
the apparatus
18

During operation of a system that displays
images to a user either when the program
detects that the user is not engaged in a
primary interaction or as a background of the
computer screen

19
The Court adopts Defendants’ construction: “During operation of a system that displays
20
images to a user either when the program detects that the user is not engaged in a primary
21
interaction or as a background of the computer screen.”
22
Plaintiff’s construction, relying on the discussion of “attention manager” in the Abstract
23
of the ‘652 Patent, would result in a construction that provides no meaningful boundaries for the
24

CLAIM CONSTRUCTION ORDER- 18

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 19 of 31

1 term. Contrary to Plaintiff’s assertion, the specification does not define the term “attention
2 manager”; it simply uses the term as the title of its invention. (Dkt. No. 301 at 33.) The Court
3 construes the term according to the only description in the specification that gives objective
4 boundaries to the scope of this limitation: the “screensaver” and “wallpaper” embodiments. (Dkt.
5 No. 301 at 33.)
6

The prosecution history also confirms that “attention manager” should be construed

7 according to the screensaver and wallpaper embodiments. During prosecution, the examiner
8 rejected the ‘652 Patent over U.S. Patent No. 5,572,643 (the “Judson Patent”), which teaches a
9 method for displaying messages to a computer user in an internet browser while the user is
10 waiting for the webpage to load. (Dkt. No. 301 at 34, citing JPHS Ex. C1 at
11 IL_DEFTS0007928.) In distinguishing its invention from the Judson Patent, applicants argued
12 that “the instant invention uses a different unused capacity than that used by the method taught
13 by Judson.” (Id.) Applicants explained that their invention made use of the “unused capacity” of
14 a display device and of the attention of a person in the vicinity of the display device through two
15 implementations, the screensaver and the wallpaper embodiments. (Id.) Having relied on the
16 specification’s description of both the screensaver and wallpaper embodiments to distinguish the
17 purported invention from prior art, Plaintiff cannot now expand the scope of the invention during
18 litigation. See CVI/Beta Ventures v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (“through
19 statements made during prosecution or reexamination an applicant . . . may commit to a
20 particular meaning for the patent term, which meaning is then binding in litigation”).
21

The Court reads the claim term “in the context of the entire patent, including the

22 specification.” Phillips, 415 F.3d at 1313. Defendants’ proposed construction is the only one that
23
24

CLAIM CONSTRUCTION ORDER- 19

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 20 of 31

1 gives objective meaning to the term “attention manager” and is consistent with the specification
2 and the prosecution history.
3

9. “means for acquiring a set of content data from a content providing system”

4 PLAINTIFF’S CONSTRUCTION
5 Function: acquiring a set of content data from
a content providing system
6
Structure: A digital computer capable of
7 communicating with a content providing
system via a network and programmed to
8 perform at least the following steps: (1)
providing a user with an interface to directly
9 request a particular set of content data, (2)
indicating to the content provider the particular
10 set of content data requested by the user, and
(3) obtaining the particular set(s) of content
11 data requested by the user at the content
display system
12

DEFENDANTS’ CONSTRUCTION
Function: acquiring a set of content data from
a content providing system
Structure: A digital computer connected to a
content providing system via a network and
programmed to perform the steps: (1)
providing a user with an interface to directly
request a particular set of content data, (2)
indicating to the content provider the particular
set of content data requested by the user, (3)
receiving a set of instructions at the content
display system that identify the site from which
the set of content data is to be acquiring, (4)
downloading the particular set(s) of content
data requested by the user at the content
display system

13
14

The Court adopts Plaintiff’s construction of this means-plus-function term.

15

The parties agree on the function of this term. (Dkt. No. 300 at 28; Dkt. No. 301 at 36.)

16 However, the parties’ proposed constructions raise three disputes concerning the corresponding
17 structure: (1) whether the digital computer must be “connected to a content providing system via
18 a network” as an independent limitation; (2) whether the corresponding structure must be
19 programmed for “receiving a set of instructions at the content display system that identify the
20 site from which the set of content data is to be acquired”; and (3) whether the content data must
21 be “downloaded,” rather than simply “obtained.” (Dkt. No. 300 at 29.) The answer to each
22 question is no.
23
24

CLAIM CONSTRUCTION ORDER- 20

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 21 of 31

1

Defendants’ proposed requirement that the digital computer be connected to the content

2 providing system “via a network” goes beyond the language of the specification, which explains,
3 “[a]ny appropriate user interface can be used for enabling a user to directly request a particular
4 set of content data.” ‘652 Patent at 18:60-61. Defendants’ proposed construction also improperly
5 suggests that a connection must be maintained at all times, while the recited steps only require
6 requesting and obtaining the content data. (Dkt. No. 300 at 29.) As Plaintiff explains, the user
7 interface could be presented to the user before a connection with the content provider is
8 established, but this would not fall within Defendants’ proposed construction. (Id.) See Micro
9 Chem., 194 F.3d at 1258 (“Nor does the statute permit incorporation of structure from the written
10 description beyond that necessary to perform the claimed function.”).
11

Defendants’ proposed construction also improperly includes the step of “receiving a set

12 of instructions at the content display system that identify the site from which the set of content
13 data is to be acquired.” (Dkt. No. 300 at 30.) The fact that this step is not necessary to perform
14 the function is demonstrated by its omission from Figure 4, which describes a “method . . . for
15 acquiring and updating sets of content data.” ‘652 Patent at Fig. 4. Defendants assert that
16 “acquisition instructions 331” are necessary to perform the claimed function.” (Dkt. No. 301 at
17 36.) But the specification teaches that “acquisition instructions 331” are obtained after a set of
18 content data has been acquired by the content display system. ‘652 Patent at 20:62-65. Because it
19 is not necessary to perform the recited function, Defendants’ step (3) will not be incorporated in
20 the structure for this term.
21

Finally, Defendants’ proposed use of the term “downloading’ rather than “obtaining” is

22 unnecessary and goes against the usage in the specification. (Dkt. No. 300 at 30.) If a claim term
23 is non-technical and derives no special meaning from the patent and its prosecution history, the
24

CLAIM CONSTRUCTION ORDER- 21

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 22 of 31

1 court need not construe it. See U.S. Surgical Corp., 103 F.3d at 1568. The specification provides
2 no reason to replace these easily understandable words with “downloading,” a term that does not
3 appear in the specification. (Dkt. No. 300 at 31.) Defendants object that “a jury may interpret
4 ‘obtaining’ to include an embodiment where content data was acquired through local sources,”
5 which was expressly disclaimed. (Dkt. No. 315 at 21.) Defendants provide no evidence that the
6 word “downloading” is any less susceptible to misinterpretation than the word “obtaining.”
7 Plaintiff’s construction is more reasonable.
8

10. “content provider”

9 PLAINTIFF’S CONSTRUCTION
10 No construction necessary; in the alternative: a
system that provides one or more “sets of
11 content data”

DEFENDANTS’ CONSTRUCTION
An entity that formulates one or more “sets of
content data”

12
The Court finds that no construction is necessary of this term because it is non-technical
13
and has no special meaning in the context of the patent. See U.S. Surgical Corp. v. Ethicon, Inc.,
14
103 F.3d 1554, 1568 (Fed. Cir. 1997).
15
Defendants’ proposed construction inappropriately limits the claim term to require that
16
the content provider “formulate” the content, rather than simply “provide” it. (Dkt. No. 300 at
17
31, Dkt. No. 301 at 38.) See Phillips, 415 F.3d at 1323 (“[A]lthough the specification often
18
describes very specific embodiments of the invention, we have repeatedly warned against
19
confining the claims to those embodiments.) While Defendants are able to point to a few
20
instances where the word “formulate” is used, it is not used universally. Cf. ‘314 Patent,
21
Abstract; ‘314 Patent 31:48-49, 31:52-53. 31:58-59. In fact, while the Abstract of the ‘314 Patent
22
says that “[e]ach set of content data is formulated by a content provider,” it nowhere says that
23
24

CLAIM CONSTRUCTION ORDER- 22

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 23 of 31

1 every content provider must “formulate,” rather than “provide,” the sets of content data. ‘314
2 Patent Abstract.
3

11. “content data scheduling instructions for providing temporal constraints on the
display of the image or images generated from the set of content data”

4
PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

5
“instructions” that affect the duration, order,
6 timing, and/or frequency of the display of the
“image or images generated from the set of
7 content data”

instructions that can be tailored by a content
provider that specify the time(s) at which
image(s) generated from a set of content data
may be displayed

8
The Court adopts Plaintiff’s construction: “‘instructions’ that affect the duration, order,
9
timing, and/or frequency of the display of the ‘image or images generated from the set of content
10
data.’”
11
The parties have two disagreements regarding this term: (1) whether “temporal” is
12
limited to “timing,” or also includes duration, order and frequency; and (2) whether the limitation
13
requires that all content data scheduling instructions must always be capable of being “tailored
14
by a content provider.” (Dkt. No. 300 at 33; Dkt. No. 301 at 39.) Plaintiff’s construction is the
15
more reasonable one.
16
The specification clarifies that “content data scheduling instructions for providing
17
temporal constraints” includes not only timing, but also duration, order, and frequency. (Dkt. No.
18
300 at 33.) In relevant part, specification states:
19
20
21
22

The content data scheduling instructions can specify, for example, the duration of time
that the image or images generated from a set of content data can be displayed, an order
in which the images generated from a plurality of sets of content data are displayed, a
time or times at which the image or images generated from a set of content data can or
cannot be displayed, and/or constraint on the number of times that the image or images
generated from a set of content data can be displayed. ‘652 Patent at 4:31-55.

23
24

CLAIM CONSTRUCTION ORDER- 23

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 24 of 31

1 Some confusion results because a prior sentence, lines 4:37-39, discusses “content data
2 scheduling instructions for providing temporal constraints,” while the later section discusses
3 “content data scheduling instructions.” ‘652 Patent at 4:47-55. However, the context of the
4 specification shows that the use of “temporal” in Column 4, line 38, was not meant to limit the
5 term “content data scheduling instructions” to only what the specification refers to as “timing
6 instructions”—the third example of the specification’s explanation of “content data scheduling
7 instructions” at Column 4, lines 47-55. Id. Defendants’ proposed construction is too narrow
8 because it would exclude other types of content data scheduling instructions expressly taught by
9 the specification, including duration instructions, sequencing instructions, and saturation
10 instructions. See ‘652 Patent at 4:47-55; 16:65-17:28.
11

Defendants’ proposal to limit this term to instructions that “can be tailored by a content

12 provider” also incorrectly imports a characteristic from a certain embodiment into the claim. See
13 Phillips, 415 F.3d at 1323. The plain language of this limitation does not require that all content
14 data scheduling instructions must always be capable of being “tailored by a content provider.”
15 (Dkt. No. 311 at 21.) While the specification discusses an embodiment where tailoring occurs
16 before the instructions are sent to the content display system, nowhere does it state that the
17 instructions must always be tailored. See ‘652 Patent at 17:49-57; (Dkt. No. 300 at 34-35).
18 Plaintiff’s proposed construction, which tracks the claim language while clarifying the meaning
19 of “temporal” according to the specification, is the better construction.
20
21

12. “content data update instructions for enabling acquisition of an updated set of
content data from an information source that corresponds to a previously acquired
set of content data”

22 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

23 “instructions” that specify when to obtain an
updated version of a set of content data and the
24

“instructions” that can be tailored by the
content provider when to obtain an updated

CLAIM CONSTRUCTION ORDER- 24

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 25 of 31

1 location from which to obtain such updated
version
2

version of a previously acquired set of content
data and the location from which to obtain
such updated version

3
The Court adopts Plaintiff’s construction: “‘instructions’ that specify when to obtain an
4
updated version of a set of content data and the location from which to obtain such updated
5
version.”
6
The parties’ only dispute with respect to this term is whether the claimed instructions are
7
limited to those that “can be tailored by the content provider.” (Dkt. No. 300 at 35; Dkt. No. 301
8
at 42.) For the same reasons discussed in term 11 with respect to content data scheduling
9
instructions, this additional limitation is improper. In opposition, Defendants cite to the summary
10
of the invention, which states that “the attention manager allows content providers to tailor
11
particular aspects of the attention manager as desired by the content provider, such as the
12
acquisition of updated sets of the content provider’s content data (E.g., the frequency of such
13
updates).” ‘652 Patent at 5:39-45. Defendants also cite to a sentence in the summary that says
14
that instructions “can be tailored as necessary or desirable by a content provider.” (Dkt. No. 301
15
at 42); ‘652 Patent at 3:3-8. But the summary’s use of the word “can” is instructive. Id. As with
16
content data scheduling instructions, the specification nowhere says that the instructions “must”
17
be tailored. Plaintiff’s construction is therefore more reasonable.
18
19

13. “content display system scheduling instructions for scheduling the display of the
image or images on the display device”

20 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

21 “instructions” that implement a display
schedule by determining which image or
22 images generated from the “sets of content
data” will be displayed and mediating conflicts
23 between the display requirements of multiple
“sets of content data”
24

“instructions” that implement a display
schedule for a particular content display system
by determining the display order and display
duration for image(s) generated from each
available set of content data

CLAIM CONSTRUCTION ORDER- 25

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 26 of 31

1
2

The Court adopts Plaintiff’s construction: “‘instructions’ that implement a display

3 schedule by determining which image or images generated from the ‘sets of content data’ will be
4 displayed and mediating conflicts between the display requirements of multiple ‘sets of content
5 data.’”
6

Only Plaintiff’s construction encompasses all types of content display system scheduling

7 instructions discussed in the specification, without requiring any particular type. See ‘652 Patent
8 at 10:43-11:10; 20:37-42; 26:52-57. Defendants’ construction highlights one type of content
9 display system scheduling instructions (display order and duration), but fails to mention that the
10 specification teaches that these instructions may also determine whether images generated from
11 certain sets of content data will be displayed at all. Id.; (Dkt. No. 300 at 36). For example, in
12 Column 26, lines 52-57, the specification teaches that “[t]he content display system scheduling
13 instructions can include instructions that evaluate a probability function each time that a set of
14 content data in the schedule is presented for display, and either display or not display the set of
15 content data dependent upon the evaluation of the probability function. ‘652 Patent at 26:52-57.
16

Defendants’ proposed construction is incorrect because it excludes these types of content

17 display system scheduling instructions. See Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
18 616 F.3d 1283, 1290 (Fed. Cir. 2010) (A claim construction that excludes the preferred
19 embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support.”).
20 Rather that improperly injecting a limitation into the construction, as Defendants charge, the
21 statement that the instructions “mediat[e] conflicts between the display requirements of multiple
22 ‘sets of content data’” simply construes the term in accordance with the specification. (Dkt. No.
23 315 at 24); see ‘652 Patent at 10:43-11:10.
24

CLAIM CONSTRUCTION ORDER- 26

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 27 of 31

1

14. “instructions”

2 PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

3 Either (a) data related to the accomplishment
of a function and/or (b) a statement or
4 expression that can be interpreted by a
computer that specifies a function to be
5 performed by a system

A statement in a programming language that
specifies a function to be performed by a
system

6
The Court adopts Defendants’ construction: “a statement in a programming language that
7
specifies a function to be performed by a system.
8
Plaintiff’s proposed construction asks the Court to adopt a broad reading that expands the
9
scope of the term “instructions” beyond its plain and ordinary meaning to also “include data
10
related to the accomplishment of a function.” (Dkt. No. 300 at 37-38.) Plaintiff’s construction
11
would go even further that Plaintiff explains, classifying data alone as “instructions” if it is
12
“related to the accomplishment of a function.” (Id.) This is a step too far.
13
The intrinsic evidence does not support the conclusion that an “instruction” is “data.” For
14
example, the text of the specification explicitly recognizes that “instructions” and “data” are
15
different things because functional components can be represented by one or the other. See ‘652
16
Patent at 14:53-54 (“Each of the functional components are represented by a set of instructions
17
and/or data.” (emphasis added)). If “data” is a type of “instructions,” then the phrase
18
“instructions and/or data” would not make sense. Id.; (Dkt. No. 301 at 44). The specification
19
acknowledges that “sets of instructions may include, if appropriate, data related to
20
accomplishment of the functions associated with the set of instructions.” ‘652 Patent at 14:55-57.
21
In other words, instructions might include data, but instructions cannot be data alone. (Dkt. No.
22
301 at 44.) This conclusion is confirmed by Plaintiff’s citations to the specification, see ‘652
23
24

CLAIM CONSTRUCTION ORDER- 27

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 28 of 31

1 Patent at Fig. 3A, 14:49-65, which state that instructions “may include” data, but do not say that
2 “data” is “instructions.” (Dkt. No. 300 at 38.)
3

Contrary to Plaintiff’s assertion, the prosecution history of the ‘314 Patent also does not

4 support its proposed construction. Plaintiff cites a portion of the prosecution history of the ‘314
5 Patent where the examiner explained that the Farber Patent teaches “the respective content
6 provider may provide scheduling instructions tailored to the set of content data since the
7 providing [sic] may send information (new information is an instruction to display new
8 information) at the provider’s control to the client, thus controlling the duration, sequencing, and
9 timing of the images displayed . . . .” ‘314 Patent History, 2/14/2003 Office Action at 6
10 (IL_DEFTS0006109). But this statement, made in a parenthetical and discussing a different
11 patent, nowhere says that information alone can constitute an “instruction.” Id.
12

15. “means for displaying one or more control options with the display device while the
means for selectively displaying is operating”

13
PLAINTIFF’S CONSTRUCTION

DEFENDANTS’ CONSTRUCTION

14
Function: displaying one or more control
15 options with the display device while the
means for selectively displaying is operating
16
Structure: One or more digital computers
17 programmed to provide a dialog box that
includes a list of one or more of the following
18 control options (1) terminate the operation of
the attention manager, (2) begin display of the
19 next scheduled set of content data, (3) begin
display of the previous scheduled set of content
20 data, (4) remove a set of content data from the
display schedule, (5) prevent a set of content
21 data from being displayed until it has been
updated, (6) modify the display schedule in
22 response to a user’s identified satisfaction with
a set of content data, (7) establish a link with
23 an information source, (8) provide an overview
of all the content data available for display by
24

CLAIM CONSTRUCTION ORDER- 28

Function: displaying one or more control
options with the display device while the
means for selectively displaying is operating
Structure: One of more digital computers
programmed to provide a dialog box that
includes a list of one or more of the following
control options; perform at least one of steps
501 (Want to display the next set of content
data in the schedule?), 502 (Want to display
the previous set of content data in the
schedule?), 503 (Want to remove the current
set of content data from the schedule?), 504
(Want to prevent display of the current set of
content data until that set of content data has
been updated?), and 505 (Want to specify a
satisfaction level for the current set of content
data?), and structural equivalents.

Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 29 of 31

1 the attention manager, (9) maintain display of
the current set of content data, or (10) remove
2 the control option interface and structural
equivalents.
3
4

The Court adopts Plaintiff’s construction of this means-plus-function term.

5

The parties agree that this claim limitation is written in means-plus-function format and

6 therefore invokes 35 U.S.C. § 112 ¶ 6, requiring a determination of the limitation’s function and
7 then identifying the corresponding structure in the patent’s written description that performs that
8 function. (Dkt. No. 300 at 40-41; Dkt. No. 301 at 45.) The parties also agree that the function of
9 this limitation is “displaying one or more control options with the display device while the means
10 for selectively displaying is operating.” (Id.) The parties even agree that the structure that
11 performs this function is “one or more digital computers programmed to provide a dialog box
12 that includes a list of . . . control options.” (Id.) The only disagreement is over what should be
13 included in the list of control options. (Id.)
14

Of the two, Plaintiff’s proposed list finds more support in the specification. Defendants

15 derive their list of control options solely from steps 501-505 of Figure 5B. ‘652 Patent at Fig. 5B.
16 But the Federal Circuit has held that when a specification discloses multiple structures that may
17 correspond to the function of a means-plus-function limitation, the limitation is properly
18 construed as covering all such structures and their equivalents. See Micro Chem., 194F.3d at
19 1258-59. “The specification can express the algorithm in any understandable terms including as a
20 mathematical formula, in prose, or as a flow chart, or in any other manner that provides
21 sufficient structure.” Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302 (Fed. Cir. 2012) (citations
22 omitted).
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1

Plaintiff points to five other control options (options 1 and 7-10), all of which are

2 expressly disclosed in the specification. For example, the specification expressly identifies
3 option 1 (terminate the operation of the attention manager), stating, “One control option that can
4 be used with an attention manager according to the invention enables the user to directly
5 terminate operation of the attention manager.” ‘652 Patent at 25:37-40. It expressly describes
6 option 7 (establishing a link with an information source), stating, “Still another control option
7 that can be used with an attention manager according to the invention enables the user to
8 establish a link with another information source.” ‘652 Patent at 27:16-18. It expressly describes
9 option 8 (providing an overview of all content data available for display by the attention
10 manager), stating, “Another control option that can be used with an attention manager according
11 to the invention enables the user to obtain an overview of all of the content data available for
12 display by the attention manager.” ‘652 Patent at 27:64-67. It expressly describes option 9
13 (maintaining display of the current set of content data), stating, “Still another control option that
14 can be used with an attention manager according to the invention enables the user to maintain
15 display of the currently displayed set of content data 350 until such display is terminated by the
16 user.” ‘652 Patent at 28:10-13. It expressly describes option 10 (removing the control option
17 interface), stating, “Selection of the ‘cancel’ option 602e causes the dialog box 601 to be
18 removed from the screen 600.” ‘652 Patent at 28:21-28. Each of these descriptions explicitly
19 describes control options in an unambiguous manner.
20

Defendants argue that these statements in the specification are “generic statement[s]” that

21 “do[] not expand the corresponding structure.” (Dkt. No. 301 at 46); see Atmel Corp. v. Info.
22 Storage Devices, Inc., 997 F. Supp. 1210, 1215 (N.D. Cal. 1998) (“A specification that merely
23 mentions the possibility of alternative structures without specifically identifying them is not
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Case 2:10-cv-01385-MJP Document 341 Filed 12/28/12 Page 31 of 31

1 sufficient to expand the scope of the claim beyond the example used.”). But the specification
2 here does not “merely mention[]” the structures; it explicitly identifies them. (See Dkt. No. 300
3 at 43.) The Federal Circuit has no requirement that all control options be described together in
4 one flowchart. Therefore, Plaintiff’s proposed construction is more reasonable.
5
6

Conclusion
The Court finds that the terms “unobtrusive manner” and “does not distract a user” are

7 indefinite, and that the claims containing these terms are therefore invalid under 35 U.S.C. § 112
8 ¶ 2. The Court adopts Plaintiff’s proposed construction of terms 1, 2, 6, 7, 9, 10, 11, 12, 13, and
9 15. The Court adopts Defendants’ proposed construction of terms 3, 5, 8, and 14.
10

The clerk is ordered to provide copies of this order to all counsel.

11

Dated this 19th day of December, 2012.

12

A

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Marsha J. Pechman
United States District Judge

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