RODNEY GILSTRAP, District Judge.
Before the Court are Plaintiffs Blue Calypso, Inc. and Blue Calypso LLC's (collectively, "Plaintiff's") Opening Claim Construction Brief (Dkt. No. 163), Defendants Groupon Inc., IZEA, Inc., Foursquare Labs, Inc., and Yelp Inc.'s (collectively, "Defendants'") Responsive Claim Construction Brief (Dkt. No. 171), and Plaintiff's Reply Claim Construction Brief (Dkt. No. 175).
On July 8, 2015, the Court held a claim construction hearing and heard argument.
A. "endorsement tag" ...585
C. "endorsement opportunity" and "endorsement opportunities" ...590
D. Preambles ...591
E. "subsidy" and "subsidizing" ...594
F. "subsidy program" ...596
G. "testimonial tag" ...598
H. "set" ...599
I. "content communication that can be sent from the qualified subscriber to the recipient" and "content communication between the first source communications device and the first destination communication device" ...601
J. "conditioning ... based on" ...604
Plaintiff brings suit alleging infringement of United States Patents No. 8,155,679 ("the '679 Patent"), 8,438,055 ("the '055 Patent"), and 8,452,646 ("the '646 Patent") (collectively, "the patents-in-suit"). In January 2014, after the parties filed the above-cited initial claim construction briefs,
The '679 Patent, titled "System and Method for Peer-to[-]Peer Advertising Between Mobile Communication Devices," issued on April 10, 2012, and bears a filing date of November 18, 2009. The Abstract of the '679 Patent states:
The '055 Patent claims priority to, and incorporates by reference, the application that issued as the '679 Patent. The '646 Patent, in turn, claims priority to, and incorporates by reference, both the application that issued as the '679 Patent and the application that issued as the '055 Patent.
It is understood that "[a] claim in a patent provides the metes and bounds of
To ascertain the meaning of claims, courts look to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. Id. A patent's claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary, which explains the invention and may define terms used in the claims. Id. "One purpose for examining the specification is to determine if the patentee has limited the scope of the claims." Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed.Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee's invention. Otherwise, there would be no need for claims. SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985) (en banc). The patentee is free to be his own lexicographer, but any special definition given to a word must be clearly set forth in the specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed.Cir.1992). Although the specification may indicate that certain embodiments are preferred, particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994).
This Court's claim construction analysis is substantially guided by the Federal Circuit's decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir.2005) (en banc). In Phillips, the court set forth several guideposts that courts should follow when construing claims. In particular, the court reiterated that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." 415 F.3d at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). To that end, the words used in a claim are generally given their ordinary and customary meaning. Id. The ordinary and customary meaning of a claim term "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. This principle of patent law flows naturally from the recognition that inventors are usually persons who are skilled in the field of the invention and that patents are addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that "the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Id. Although the claims themselves may provide guidance as to the meaning of particular terms, those terms are part of "a fully integrated written instrument." Id. at 1315 (quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation. Like the specification, the prosecution history helps to demonstrate how the inventor and the United States Patent and Trademark Office ("PTO") understood the patent. Id. at 1317. Because the file history, however, "represents an ongoing negotiation between the PTO and the applicant," it may lack the clarity of the specification and thus be less useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination of how the inventor understood the invention and whether the inventor limited the invention during prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed.Cir.2004) (noting that "a patentee's statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation").
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed.Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through dictionaries or otherwise) before resorting to the specification for certain limited purposes. Phillips, 415 F.3d at 1319-24. According to Phillips, reliance on dictionary definitions at the expense of the specification had the effect of "focus[ing] the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent." Id. at 1321. Phillips emphasized that the patent system is based on the proposition that the claims cover only the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court emphasized that claim construction issues are not resolved by any magic formula. The court did not impose any particular sequence of steps for a court to follow when it considers disputed claim language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general rule that the claims measure the scope of the patent grant.
The Court nonetheless conducts an independent evaluation during claim construction proceedings. See, e.g., Texas Instruments, Inc. v. Linear Techs. Corp., 182 F.Supp.2d 580, 589-90 (E.D.Tex.2002); Burns, Morris & Stewart Ltd. P'ship v. Masonite Int'l Corp., 401 F.Supp.2d 692, 697 (E.D.Tex.2005); Negotiated Data Solutions, Inc. v. Apple, Inc., No. 2:11-CV-390, 2012 WL 6494240, at *5 (E.D.Tex. Dec. 13, 2012).
The Court hereby adopts the following agreed-upon constructions:
Term Claims Agreed Construction "demographic" '679 Patent: "related to education, employment, purchasing Claim 1 habits, interests, hobbies, affiliations, age, gender, geographic location, or other data used to identify '055 Patent: a target market for a product or service" Claims 2 and 12 "incentive '055 Patent: "a set of rules governing an incentive distribution" program" Claims 2 and 12 '646 Patent: Claim 4 "incentivizing" '055 Patent: "offering a reward provided to a subscriber based Claim 1 on an endorsement" '646 Patent: Claims 1 and 2 "intermediary" '055 Patent: "one or more computer servers and memory Claims 2 and 12 executing computer applications and communications to implement the advertising '646 Patent: endorsement system" Claims 4 and 6-8 "offer" '646 Patent: "an actionable display on a subscriber Claims 4, 6, and 8 communication device or a destination communication device that when validated provides a benefit" "qualified '055 Patent: "a person who meets the demographic criteria of subscriber" Claims 2 and 12 an advertiser" ('055 and '646 '646 Patent: Patents only) Claim 4 "testimonial" '055 Patent: "a text message, picture, audio or video message Claims 2, 3 and 12-13 associated with an advertiser, advertisement or advertising program"
Plaintiff's Proposed Construction Defendants' Proposed Construction "an active link including a unique identifier" "an active link including a unique identifier to allow viewing and tracking of advertisements, source communication devices and event identifications"
(Dkt. No. 253, at 2.) The parties submit that this term appears in Claims 1 and 6 of the '679 Patent, Claims 2 and 12 of the '055 Patent, and Claim 4 of the '646 Patent. (Dkt. No. 244, Ex. A, at 2.)
Plaintiff has argued:
(Dkt. No. 163, at 16.).
Defendants have responded that "[t]he term appears in the `Definitions' section of the '055 Patent, and is defined as `an active link including a unique identifier to allow viewing of advertisements and track [sic] an advertisement, source communication device and event identification.'" (Dkt. No. 171, at 4 (quoting '055 Patent at 3:11-14).) Defendants have also argued that "[n]othing in Claim 4 of the '055 Patent is rendered superfluous by the patentee's definition" because "[t]he patentee's definition, urged by Defendants, does not specify the method by which an `endorsement tag' is created." (Dkt. No. 171, at 4.)
Plaintiff has replied that "[t]he patent specifications are replete with the term `endorsement[,]' [a]nd `tag' is a term that is readily used by persons of ordinary skill in the art to refer to an active link with a unique identifier...." (Dkt. No. 175, at 5.) Plaintiff has further argued that Defendants' proposed construction would exclude an embodiment, disclosed in all of the patents-in-suit, in which "the recipient receives an active link with a unique identifier (in this example, a hyperlink) — not one that, as Defendants propose, necessarily allow[s] viewing and tracking of advertisements and source communication devices and event identification in all instances." (Id., at 6; see '679 Patent at 5:32-44.) Finally, Plaintiff has replied that the definition of "endorsement tag" in the '055 Patent is consistent with Plaintiff's proposed construction because "the remainder of the definition merely states the intended or beneficial purpose for the link, which may or may not appear in the dependent claims." (Id., at 7).
In supplemental briefing, Defendants reiterate that the '055 Patent and the '646
Plaintiff responds that its proposed construction avoids jury confusion "by removing the remainder clause that defines only potential, but not necessary, ways the active link could be used." (Dkt. No. 264, at 1.) Plaintiff also argues that Defendants' proposal "read[s] out a preferred embodiment in the parent '679 patent." (Id., at 2.) "Alternatively," Plaintiff submits, "the Court could avoid the potential for jury confusion by construing this term for the '055 and '646 patents to mean: "an active link including a unique identifier to allow viewing or tracking of advertisements, source communication devices or event identifications." (Id., at 1 n.1.)
Claim 1 of the '679 Patent is representative and recites, in relevant part (emphasis added):
The specification of the '679 Patent discloses:
'679 Patent at 9:37-60 (emphasis added).
The '055 Patent and the '646 Patent, in a "Definitions" section, expressly refer to an "endorsement tag" as "an active link including a unique identifier to allow viewing and tracking of advertisements, source communication devices and event identifications." '646 Patent at 3:20-22; see '055 Patent at 3:10-13. The specification thus sets forth the language proposed by Defendants. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996) ("The specification acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication."). Further, in general, when "patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents." NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed.Cir.2005); Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed.Cir.2003) ("[W]e presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.").
On balance, however, "to allow viewing and tracking of advertisements, source communication devices and event identifications" is language describing intended beneficial uses or purposes rather than defining the disputed term itself. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir.2008) ("The court's task is not to limit claim language to exclude particular devices because they do not serve a perceived `purpose' of the invention.") (quoting E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1370 (Fed.Cir.2003)).
The Court accordingly hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction Plain and ordinary meaning "a person who meets the demographic criteria of an advertiser"
(Dkt. No. 253, at 3.) The parties submit that this term appears in Claims 1, 3, and 6 of the '679 Patent. (Dkt. No. 244, Ex. A, at 2.)
Defendants have argued that "qualified subscriber" is a "coined term" that is explicitly defined by the patents-in-suit in a "Definitions" section. (Dkt. No. 171, at 20.) Plaintiff has replied that "Defendants offer no reason why this term must be construed for all patents based upon a definition in the '055 Patent...." (Dkt. No. 175, at 14.) Plaintiff has also argued that "Defendants' proposal excludes embodiments in which qualification depends upon capabilities of the subscriber's device." (Id., at 15.)
In supplemental briefing, Defendants reiterate that the '055 Patent expressly defines
Plaintiff responds by reiterating that "Defendants offer no reason why this term must be construed for the '679 patent based upon a definition in the later-filed '055 patent." (Dkt. No. 264, at 3.)
The specifications of the '055 Patent and the '646 Patent refer to the disputed term in a "Definitions" section: "`Qualified Subscriber': a person who meets the demographic criteria of an advertiser." '055 Patent at 3:27-28; '646 Patent at 3:37-38. As noted above, the parties now agree that as to the '055 Patent and the '646 Patent, the term "qualified subscriber" should be construed as "a person who meets the demographic criteria of an advertiser." (Dkt. No. 244, 5/15/2015 Joint Claim Construction and Prehearing Statement, at 2.)
The '679 Patent contains no such express definition and, as Plaintiff notes, the specification refers to communication habits as well as to capabilities of the subscriber's device:
'679 Patent at 7:56-9:34 (emphasis added).
On balance, the above-quoted disclosures in the '679 Patent demonstrate that in the absence of an explicit definition of "qualified subscriber," that term is broader than "demographics," even in light of the parties' above-noted agreed-upon construction of "demographic" as meaning "related to education, employment, purchasing habits, interests, hobbies, affiliations, age, gender, geographic location, or other data used to identify a target market for a product or service." (Dkt. No. 244, 5/15/2015 Joint Claim Construction and Prehearing Statement, at 2.) For example, as quoted above, qualification of subscribers can relate to device capabilities, financial information, or purchasing of endorsements.
Thus, because Defendants' proposal would limit the disputed term to particular embodiments disclosed in the specifications, Defendants' proposal of "demographic criteria" is hereby expressly rejected as to the '679 Patent. See Innova/Pure Water, 381 F.3d at 1117 ("[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect."); see also Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to
Some construction is nonetheless warranted as to the '679 Patent so as to minimize confusion. See TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D.Tex. May 29, 2012) (Bryson, J.) ("The Court believes that some construction of the disputed claim language will assist the jury to understand the claims.").
The Court therefore hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction Plain and ordinary meaning "an opportunity to participate in an incentive program, including a description of the advertiser, advertising campaign, advertisement and incentive program, including incentive values offered"
(Dkt. No. 253, at 4.) The parties submit that these terms appear in Claims 2 and 12 of the '055 Patent. (Dkt. No. 244, Ex. A, at 2.)
Defendants have argued that "construction is required to provide a definite form to this concept and distinguish it from the term `offer' discussed above." (Dkt. No. 171, at 28.) Plaintiff has replied that "[a]n endorsement opportunity is just an opportunity to endorse," and Plaintiff has argued that the patentee did not redefine the term. (Dkt. No. 175, at 15.)
In supplemental briefing, Defendants argue that "Plaintiffs' proposed plain and ordinary meaning construction attempts to broaden this term beyond its express definition in the '055 Patent." (Dkt. No. 253, at 4.) Defendants urge that "[e]very reference to an `endorsement opportunity' appearing in the '055 Patent is consistent with that term's express definition," and "[t]hat express definition is the only guidance provided in the patent for construing the disputed claim term." (Id., at 5.) Further, Defendants note, the specification expressly defines related terms such as "endorsement," "endorsement tag," "endorsement identifier," and "endorser." (Id.)
Plaintiff responds that Defendants' proposed construction "improperly reads in characteristics of a singular embodiment in the specification." (Dkt. No. 264, at 3.) Plaintiff argues that "[t]here is no specific catalog of things the information must contain other than an opportunity to endorse an advertiser or advertisement." (Id., at 4.)
The specification of the '055 Patent discloses:
'055 Patent at 10:1-5. The specification of the '055 Patent also includes a "Definitions" section that defines "endorsement" as "an event of sending an endorsement tag to a recipient." Id. at 3:8-9.
On balance, particularly in light of this express definition of the constituent term "endorsement," the disputed terms require no further construction. The above-quoted disclosure regarding "[e]ach endorsement opportunity" pertains to features of particular embodiments that should not be imported into the claims. See Innova/Pure Water, 381 F.3d at 1117 ("[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect."); see also Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments."). Defendants' proposal of a list of specific features is therefore hereby expressly rejected.
The Court accordingly hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction Preambles are not limiting in the manner Preambles are limiting: Defendants propose. "subsidizing qualified subscriber with source communication device associated with providing advertising content to recipient with destination communication device" ('679 Patent) "incentivizing subscriber associated with source communication device associated with providing advertising content to a first recipient with first destination communication device" ('055 & '646 Patents)
(Dkt. No. 253, at 6.) The parties submit that the disputed preambles are in Claim 1 of the '679 Patent, Claims 2 and 12 of the '055 Patent, and Claim 4 of the '646 Patent. (Dkt. No. 244, Ex. A, at 1.)
Defendants argue that "[a]s captured in the preamble and specification of the asserted patents, the alleged invention relates fundamentally to the concept of subsidizing or incentivizing a person who receives a targeted advertisement to share or refer that advertisement with another." (Dkt. No. 253, at 6; see id. at 6-7.) Defendants submit that in Covered Business Method Patent Review ("CBM") proceedings, Plaintiff asserted, and the PTO's Patent Trial and Appeals Board ("PTAB") found, that certain preambles are limiting. (Id., at 7.) Defendants conclude: "Plaintiffs are trying to have it both ways. Plaintiffs need the preambles to be limiting to avoid having invalid claims for lack of antecedent basis, but want to disclaim all other aspects of the preambles, including the core concept of the patents-the relationship between the subsidy or incentive and the act of sharing or endorsing an advertisement." (Id., at 8.) Defendants conclude: "As not only does the preamble give life and meaning
Plaintiff responds that the preamble language referring to a "method for providing advertising content to a recipient," as well as for "subsidizing a qualified subscriber," "is only purposeful language, which is not limiting." (Dkt. No. 264, at 5.) Plaintiff also urges that "[t]he plain language of the preamble does not require that subsidizing occur in response to providing advertising content." (Id., at 6.)
Claim 1 of the '679 Patent, for example, recites (emphasis added):
In CBM proceedings as to the '679 Patent, the PTAB found:
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision, at 18-19 (P.T.A.B. Dec. 17, 2014) (citations omitted).)
Defendants urge that "this same conclusion, for the exact same reasons, applies to all of the remaining asserted claims. In fact, during discussions with Plaintiffs, Plaintiffs have conceded that the remaining preambles are limiting, and the disagreement centers solely on whether they are limiting for the sole purpose of providing antecedent basis for numerous terms or whether the preambles are limiting for all purposes." (Dkt. No. 253, at 8.)
Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir. 2002); see, e.g., Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed.Cir. 2003) ("When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.").
In general, "the purpose or intended use of the invention ... is of no significance to claim construction...." See Pitney Bowes, 182 F.3d at 1305.
Here, however, because "the claim drafter cho[se] to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects." Bell Commc'ns Research, Inc. v. Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed.Cir.1995). The entireties of the preambles are limiting. See Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed.Cir. 2014) ("The phrase `the image data' clearly derives antecedent basis from the `image data' that is defined in greater detail in the preamble as being `representative of at least one sequential set of images of a spray plume.'") (emphasis added). This analysis applies to all of the claims at issue.
At the July 8, 2015 hearing, Plaintiff cited TomTom Inc. v. Adolph, 790 F.3d 1315, 2015 WL 3814937 (Fed.Cir. June 19,
The Court therefore hereby construes Claim 1 of the '679 Patent, Claims 2 and 12 of the '055 Patent, and Claim 4 of the '646 Patent such that the
Plaintiff's Proposed Construction Defendants' Proposed Construction "[provide/providing] value or savings to "financial assistance given by one to another" another"
(Dkt. No. 253, at 10.) The parties submit that these terms appear in Claim 1 of the '679 Patent. (Dkt. No. 244, Ex. A, at 2.)
Plaintiff has argued that Defendants' proposal improperly excludes preferred embodiments, such as "product discounts," "rewards points," or anything else of value that serves as an incentive for the subscriber. (Dkt. No. 163, at 18; see '679 Patent at 3:39-48.)
Defendants have responded:
(Dkt. No. 171, at 22-23.)
Plaintiff has replied that Defendants' proposed construction is too narrow because "[t]he patents broadly use the word `subsidy' to include things such as levels of discounts, credits, points, offerings, and other types of subsidies or incentives...." (Dkt. No. 175, at 8 (citation and internal quotation marks omitted).)
In supplemental briefing, Defendants submit that "Plaintiffs advance essentially the same construction of the term `subsidy' that was already rejected by the PTAB." (Dkt. No. 253, at 8.)
Plaintiff responds that "[t]he problem with Defendants' proposal is that their construction will confuse the jury into thinking that a subsidy must involve the exchange of money. The PTAB did not agree with that thinking when it issued its construction for `subsidy.'" (Dkt. No. 264, at 6.) Plaintiff notes that "the PTAB expressly stated that reward points were financial in nature because they were `a
The PTAB found:
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision, at 7-8 (P.T.A.B. Dec. 17, 2014) (footnote omitted); id. at 7 n.5 ("AMERICAN HERITAGE DICTIONARY 896 (3d ed.1992) (defining "subsidy" as "1. Monetary assistance granted by a government to a person or group in support of an enterprise regarded as being in the public interest. 2. Financial assistance given by one person or government to another.")).)
Claim 1 of the '679 Patent, for example, recites (emphasis added):
The specification of the '679 Patent discloses:
'679 Patent at 3:39-50 (emphasis added).
This disclosure demonstrates the broad, generic sense in which the patentee used the terms "subsidy" and "subsidizing." As discussed by the PTAB, above, the disputed term is not limited to monetary currency but rather includes, for example, "rewards points," as Plaintiff has suggested. See id.; see also id. at Claim 11 ("wherein the step of providing a subsidy program further comprises the step of relating the subsidy to one of the group of a product discount, a reward, and a mitigation of expenses"). Because the word "financial" might be read by a finder of fact as limited to monetary currency, the Court reaches a construction different from the PTAB construction that Defendants propose here.
The Court accordingly hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction "a system designed to give value or savings to "a system of opportunities designed to give another" financial assistance to another"
Defendants have argued that their proposed construction "is designed to harmonize this term with Incentive Program, which the parties agree is `a set of rules governing an incentive distribution.'" (Dkt. No. 171, at 24.) Plaintiff has replied that Defendants' proposed construction is "dependent upon Defendants' improper proposed definition of `subsidy.'" (Dkt. No. 175, at 15.)
In supplemental briefing, Defendants argue that their proposed construction "mirrors the construction adopted by the PTAB during its CBM Review." (Dkt. No. 253, at 10.)
Plaintiff responds:
(Dkt. No. 264, at 8.)
The PTAB found:
(Dkt. No. 253, Ex. A, Groupon, Inc. v. Blue Calypso, Inc., Paper 51, Final Written Decision, at 8-11 (P.T.A.B. Dec. 17, 2014) (footnote omitted); id. at 9 n.6 ("AMERICAN HERITAGE DICTIONARY 1447 (3d ed.1992) (defining `program' as `4. A system of services, opportunities, or projects, usually designed to meet a social need')").)
The specification of the '679 Patent discloses:
'679 Patent at 3:51-56 (emphasis added).
On balance, the PTAB's use of "financial," which Defendants proposed here, is unpersuasive for substantially the same reasons as for the other "subsidy" terms, discussed above. Finally, Defendants have not shown adequate support for requiring multiple "opportunities."
The Court therefore hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction "active link associated with a testimonial" Indefinite
(Dkt. No. 253, at 11.) The parties submit that this term appears in Claims 2 and 3 of the '055 Patent. (Dkt. No. 244, Ex. A, at 3.)
Defendants argue that this disputed term "is never used nor defined in the '055 Patent outside of the claims, and has no ordinary or customary meaning to one of skill in the art. Plaintiffs' construction of this term attempts to conflate `testimonial tag' with `endorsement tag,' a separate claim term that is defined in the specification of the '055 Patent." (Dkt. No. 253, at 11.)
Plaintiff responds that "because `testimonial' has already been construed, the only dispute is to [sic] the proper construction of `tag.'" (Dkt. No. 264, at 9.)
Defendants rely upon a finding by the PTAB that the term "endorsement tag" lacks written description in related United States Patent No. 7,664,516. (See Dkt. No. 253, Ex. C, Groupon, Inc. v. Blue Calypso, Inc., Paper 45, Final Written Decision, at 34-38 (P.T.A.B. Dec. 17, 2014).)
Nonetheless, Defendants' argument is premised on a matter of claim interpretation. The parties dispute the proper construction of "testimonial tag." As noted above, the Court adopts the parties' agreed-upon construction that "testimonial" means "a text message, picture, audio or video message associated with an advertiser, advertisement or advertising program." (Dkt. No. 151, 10/4/2013 Joint Claim Construction and Prehearing Statement, at 2; Dkt. No. 163 at 27; Dkt. No. 171, at 5; Dkt. No. 244, 5/15/2015 Joint Claim Construction and Prehearing Statement, at 2.).
The remaining dispute is whether a "tag" is an "active link," as Plaintiff has proposed. The following paragraph of the specification, cited by Plaintiff as support
'055 Patent at 13:32-44 (emphasis added). At the July 8, 2015 hearing, Defendants countered that Figure 7 does not illustrate creation of a testimonial tag at the source communication device, which is recited in Claim 2 of the '055 Patent. Regardless of whether this is so, Figure 7 and the associated written description provide probative context as to meaning of "tag" and "testimonial tag."
Also of note, although the parties present competing proposed constructions for the term "endorsement tag" (addressed above), both proposals refer to "an active link including a unique identifier." Defendants' argument that Plaintiff is conflating the terms "endorsement tag" and "testimonial tag" is unpersuasive because whereas both sides propose that an "endorsement tag" is "an active link including a unique identifier," Plaintiff proposes that a "testimonial tag" is an "active link associated with a testimonial."
In light of the above-quoted disclosure, as well as the parties' positions as to "endorsement tag," Plaintiff's proposed construction is appropriate.
The Court therefore hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction "a collection of one or more" "at least two"
(Dkt. No. 253, at 14; Dkt. No. 270, Ex. A, at 1.) The parties submit that this term appears in Claims 1 and 5 of the '679 Patent, Claims 2 and 12 of the '055 Patent, and Claims 4, 6, and 8 of the '646 Patent. (Dkt. No. 244, Ex. A, at 2.)
Plaintiff has argued that Defendants' proposal is incorrect because "it is understood that a set may only contain one element." (Dkt. No. 163, at 24 (citing extrinsic evidence that is quoted below).) Plaintiff has also submitted that "[i]f the inventors intended what the Defendants argue, the inventors would have instead used the word `plurality,' which is a commonly used term of art in patent claim draft[ing] when two or more elements are a material part of a claim." (Id.) Plaintiff has also cited Claim 6 of the '646 Patent, as to which Plaintiff has argued that "comparing, by the intermediary, the set of time stamp data to the set of time restrictions" could refer to "compar[ing] one time stamp to another time stamp." (Id., at
Defendants have responded that "[i]n every instance where the patents define a Set, the Set is a plurality of elements." (Dkt. No. 171, at 15.) As to Plaintiff's argument that the patentee would have used the term "plurality" if two or more elements were required, Defendants have responded that "[i]t is more plausible that if the patentee intend[ed] Set to conform to Plaintiff's proposed definition, he would have used the term[] `at least one,' which is also a commonly used term of art in patent claim drafting when one or more elements are a material part of the claim." (Id., at 16.) Defendants have noted that the patentee indeed used "at least one" in some of the claims, such as in Claim 1 of United States Patent No. 7,664,516. (Id.)
Plaintiff has replied that Defendants "do not (and cannot) argue that the claimed invention would fail to work if a set only included one element." (Dkt. No. 175, at 11.) Plaintiff has also argued that "[t]he patentee uses `set' to refer to a collection of one or more items (e.g. set of demographic data, set of geographic coordinates, and set of time restrictions) and uses `at least one' to refer to selections, choices, and relations from a set." (Id., at 11.)
In supplemental briefing, Defendants reiterate that "[i]n every instance where the patents define a `set,' the `set' is a plurality of elements, such as rules, companies, and applications." (Dkt. No. 253, at 14.)
Plaintiff responds that "Defendants' proposed construction ignores th[e] common understanding of `set' to improperly and arbitrarily limit its scope to a set containing two or more elements." (Dkt. No. 264, at 10.)
Defendants have cited the proposition that "[i]n the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings." CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed.Cir.2000). Claim 1 of the '679 Patent, for example, uses the term "set" as well as the phrase "at least one," and Claim 1 of the '055 Patent (from which two of the claims at issue depend) recites, in relevant part (emphasis added): "a selection of at least one endorsement opportunity from the set of endorsement opportunities."
As for the specification, the '679 Patent
'679 Patent at 4:3-6, 6:58-61 & 7:17-27 (emphasis added).
A permissive reading of the term "set" is also bolstered by Plaintiff's extrinsic evidence. Plaintiff has cited a dictionary that defines "set" as "[a] collection of distinct elements that have something in common" (Dkt. No. 163, Ex. 13, The American Heritage Science Dictionary 563 (2d ed.2009); see id., Ex. 14, Chambers Concise Dictionary 1124 (2d ed.2009) (similar)). Plaintiff has also cited extrinsic evidence that the term "set" can be used to refer to a collection that contains only one element (id., Ex. 17, Eric W. Weisstein, "Nonempty set," MathWorld — A Wolfram Web Resource, http://mathworld.wolfram.com/NonemptySet.html ("a set containing one or more elements"); id., Ex. 18, Margherita Barile, "Singleton set," MathWorld — A Wolfram Web Resource, http://mathworld.wolfram.com/SingletonSet.html ("A set having exactly one element ....")).
Finally, at least one legal authority cited by Plaintiff is in general agreement, albeit in the context of a different patent. See CEATS, Inc. v. Continental Airlines, Inc., 526 Fed.Appx. 966 (Fed.Cir.2013) (as to a "sets of seats" limitation in patents directed to reserving seats, such as on airplanes or at events, finding that "the jury could reasonably find that a `set' could be comprised entirely of a single individual seat"). This authority is more persuasive than the Mobile Telecommunications decision cited by Defendants. See Mobile Telecomms. Techs., LLC v. Clearwire Corp., No. 2:12-CV-308, 2013 WL 3339050, at *4 (E.D.Tex. July 1, 2013) (Payne, J.).
On balance, nothing in the claim language demands that a "set of demographic requirements," for example, must include multiple demographic requirements. See, e.g., '679 Patent at Claim 1. Further, construing "set" to mean "a collection of one or more," as Plaintiff has proposed, sufficiently distinguishes a "set" from "at least one" so as to avoid or overcome the above-noted CAE Screenplates presumption cited by Defendants (to whatever extent that presumption may be applicable).
The Court accordingly hereby construes
"content communication that can be sent from the qualified subscriber to the recipient" ('679 Patent) Plaintiff's Proposed Construction Defendants' Proposed Construction Plain and ordinary meaning "a single correspondence sent by the subscriber and received by a recipient via their respective communication devices using two-party communications""content communication between the first source communications device and the first destination communication device" ('055 & '646 Patents) Plaintiff's Proposed Construction Defendants' Proposed Construction Plain and ordinary meaning "a single correspondence sent by the source communication device and received by the first destination communication device using two-party communications"
(Dkt. No. 253, at 16.) The parties submit that these terms appear in Claims 1, 3, and 6 of the '679 Patent, Claims 2 and 12 of the '055 Patent, and Claim 4 of the '646 Patent. (Dkt. No. 244, Ex. A, at 1.)
Defendants have argued that "the patents relate to inserting advertisements into communication sessions between subscribers and known recipients." (Dkt. No. 171, at 14.) Defendants have also argued that "[t]hroughout the specifications and even in Plaintiff's opening claim construction brief, the purported invention is described in the context of two-way communication systems.'" (Id.). Further, Defendants have argued, even in the context of pagers "some paging systems offer two-way communication." (Id. (citing id. Ex. D, Newton's Telecom Dictionary 691 (23rd ed.2007)).) Finally, Defendants have submitted that "[n]one of the specifications discuss or suggest the insertion of advertisements into social media or blog posts, articles, tweets, pins or other one-to-many or many-to-many communication formats." (Id., at 15.)
Plaintiff has replied that Defendants' proposed construction "[i]mproperly reads in `two-way' communication despite explicit `one-way' embodiments disclosed in the patents such as pagers." (Dkt. No. 175, at 14.)
In supplemental briefing, Defendants argue that "in all situations in which the patents describe processes involving `content communications,' the patentees expressly contemplate direct, two-party communications intended for a discrete recipient." (Dkt. No. 253, at 16.)
Plaintiff responds: "The dispute for this term is a prime example of a Defendant reading in one embodiment and ignoring others. The plain language of the terms do not limit the means of communication to exclude the multitude of indirect communication forms where the communication involves other parties." (Dkt. No. 264, at 11.)
Claim 1 of the '679 Patent is representative and recites, in relevant part (emphasis added):
Figure 4 of the '679 Patent depicts a "communication process," and "[i]n step 54, the endorsement manager software 14 formats the transmission by inserting the appropriate advertiser's advertisement preceding and/or following the transmission." '679 Patent at 5:25-28. Then, "[i]n step 58, once the transmission is formatted, the endorsement manager software 14 sends the communication transmission to the communication destination 8." Id. at 5:32-34. The '679 Patent also discloses "[o]ther scenarios" where "the destination communication device 7 may insert the advertising media into the communication session." Id. at 6:48-57.
The '055 Patent and the '646 Patent also refer to communications occurring in "sessions": "mobile communication devices encourage the recipient of a communication to accept advertisements because the session is identified as being initiated by a known contact." '055 Patent at 2:23-25 (emphasis added); '646 Patent at 2:20-22. Also, each of the specifications describes a communication session initiated by a known contact of the recipient. Id.; '679 Patent at 6:40-43; '055 Patent at 1:43-47; '646 Patent at 1:40-44. Further, the Background of the Invention begins by referring to "two-way communication systems." '679 Patent at 1:17-18 ("As peer-to-peer and mobile technologies evolve into highly sophisticated two-way communication systems...."); '055 Patent at 1:28-30 (similar); '646 Patent at 1:25-27 (similar).
Nonetheless, Defendants have not adequately justified their proposal of requiring a "single" correspondence or a "two-way" or "two-party" communication session. Instead, these are features of "particular embodiments appearing in the written description [that] will not be used to limit claim language that has broader effect." Innova/Pure Water, 381 F.3d at 1117; accord Phillips, 415 F.3d at 1323
Defendants' proposal having thus been rejected, no further construction is necessary. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997) ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy."); see also O2 Micro, 521 F.3d at 1362 ("[D]istrict courts are not (and should not be) required to construe every limitation present in a patent's asserted claims."); Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1207 (Fed.Cir.2010) ("Unlike O2 Micro, where the court failed to resolve the parties' quarrel, the district court rejected Defendants' construction.").
The Court accordingly hereby construes
Plaintiff's Proposed Construction Defendants' Proposed Construction Plain and ordinary meaning "making a choice ... determined by"
(Dkt. No. 253, at 19.) The parties submit that this term appears in Claim 1 of the '679 Patent and Claims 2 and 12 of the '055 Patent. (Dkt. No. 244, Ex. A, at 1.)
Defendants have submitted: "[T]he issue perceived by Defendants is that the phrase requires that the choice being made (of subsidy programs, endorsement opportunities, or the advertisement) must be determined by or dependent on the specified item (the match condition or the set of data)," as opposed to being "the same regardless of what is being referred and regardless of how strong of a match, if any, was made between the demographics of the subscriber and the advertiser." (Dkt. No. 171, at 17.) Defendants have concluded that "the endorsement opportunities (or subsidies/etc.), for a subscriber must be determined by or are dependent on the matching process between the demographic information from the subscriber and the demographic criteria of the advertiser." (Id., at 18).
Plaintiff has replied that Defendants' "identified `distinction' of how to value a subsidy is not part of this claim term and [is] irrelevant." (Dkt. No. 175, at 14.)
In supplemental briefing, Defendants reiterate that their proposed construction "seeks to clarify that the claimed system requires the conditioning of a subsidy (i.e., making a choice of subsidy programs) to be based on the match condition (determined by the degree of match between user and advertiser profiles)." (Dkt. No. 253, at 19.) Defendants argue that "[t]his requirement of making a choice of subsidy program determined by the match condition appears clear from the claim language
Plaintiff responds that "it is not clear what clarification is needed since the only time this term is used it requires `conditioning a set of subsidy programs based on the match condition.'" (Dkt. No. 264, at 14.) Plaintiff also submits that "Defendants' construction would read out adjusting, preparing, transforming, selecting or any other common understanding for the term `conditioning.'" (Id.)
Claim 1 of the '679 Patent, for example, recites in relevant part (emphasis added):
Defendants have cited disclosure in the specification of the '055 Patent regarding qualifying subscribers based on demographic criteria:
'055 Patent at 9:58-10:2 (emphasis added). On balance, this disclosure pertains to "particular embodiments appearing in the
Thus, Defendants have not adequately supported construing "conditioning" so as to depend upon "how strong of a match, if any, was made between the demographics of the subscriber and the advertiser." (Dkt. No. 171, at 17.) Further, as discussed above as to the term "set," Defendants have not adequately demonstrated that there must be two or more options for selection. Defendants' proposed construction is therefore hereby expressly rejected. See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1367 (Fed.Cir. 2012) ("The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.").
Nonetheless, some construction is appropriate to clarify that "conditioning" means "selecting." Plaintiff's briefing suggested "selecting" as a meaning of "conditioning" (Dkt. No. 264, at 14) and, at the July 8, 2015 hearing, Defendants had no strong opposition to the word "selecting," having instead emphasized its above-rejected position that the selecting must be from among two or more options.
The Court accordingly hereby construes
The Court adopts the constructions set forth in this opinion for the disputed terms of the patents-in-suit. The parties are ordered that they may not refer, directly or indirectly, to each other's claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon by the parties. As a part of such mediation, each party shall appear by counsel and by at least one corporate officer possessing sufficient authority and control to unilaterally make binding decisions for the corporation adequate to address any good faith offer or counteroffer of settlement that might arise during such mediation. Failure to do so shall be deemed by the Court as a failure to mediate in good faith and may subject that party to such sanctions as the Court deems appropriate.