These determinations by Judge Pechman would appear to largely gut the assertions under these two patents, although Interval is almost certain to pursue the two remaining claims under the '652 patent.
Keep in mind, Interval did assert the claims of two other patents, 6,263,507 and 6,757,682, in this litigation, but the Court separated those two patents into a separate track, and that track remains stayed at this time.
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE
INTERVAL LICENSING, LLC,
Plaintiff,
v.
AOL, INC., et al.,
Defendants.
LEAD CASE NO. C10-1385MJP
CLAIM CONSTRUCTION ORDER
This matter comes before the Court on the opening and responsive claim construction
briefs provided by the parties. (Dkt. Nos. 300, 301, 311, 315.) Having reviewed the briefs and all
related papers, and having held a tutorial hearing on December 10, 2012, and a Markman hearing
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
indefinite, and finds that the claims containing these terms are therefore invalid under 35 U.S.C.
§ 112 ¶ 2. The Court adopts Plaintiff’s proposed construction of disputed terms 2, 6, 7, 9, 10, 11,
12, 13, and 15. The Court adopts Defendants’ proposed construction of disputed terms 3, 5, 8,
and 14.
Background
The two patents at issue in this litigation disclose an “attention manager for occupying
the peripheral attention of a person in the vicinity of a display device.” U.S. Patent No. 6,034,652
(the “‘652 Patent”); U.S. Patent No. 6.788.314 (the “‘314 Patent”). The ‘314 Patent is a
continuation of the ‘652 Patent, and the two patents share a common specification. The
inventions described in the two patents are aimed at providing information to users in nondistracting
ways that do not interfere with the user’s primary activity on a device such as a
computer. (Dkt. No. 300 at 6.1) The inventions are intended to “improve users’ ability to take
advantage of available information by allowing for the flow of other sources of information that
they otherwise would not see.” (Id.)
Plaintiff Interval Licensing is the licensing arm of Interval Research Corporation,
founded in 1992 by Paul Allen and David Liddle to perform advanced research and development
in the areas of information systems, communications, and computer science. (Dkt. No. 153 at 4.)
Interval Research was issued approximately 300 patents in less than a decade. (Id.) In the present
litigation, Plaintiff brings suit against eleven Defendants: AOL, Inc.; Apple, Inc.; eBay, Inc.;
Facebook, Inc.; Google, Inc.; Netflix, Inc.; Office Depot, Inc.; OfficeMax, Inc.; Staples, Inc.;
Yahoo!, Inc.; and YouTube, LLC. (Id. at 2-4.) Plaintiff alleges Defendants are infringing four
patents. (Id. at 5.) The Court has divided the litigation into two tracks, staying the track
concerning U.S. Patent Nos. 6,263,507 and 6,757,682, but lifting the stay on the track concerning
the ‘652 and ‘314 Patents. (Dkt. No. 269 at 2.) In this track, the parties have agreed to
__________________________________
1 This litigation includes a number of related cases. The references here refer to docket
numbers in the lead case, Case No. C10-1385MJP.
2
construction for eleven terms. (Dkt. No. 300 at 9.) The parties dispute the constructions of 13
remaining terms. (Id.)
Discussion
A. Legal Standard
It is a “bedrock principle” of patent law that “the claims of a patent define the invention
to which the patentee is entitled to the right to exclude.” Philips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (citations omitted). The words of a patent claim “are generally
given their ordinary and customary meaning.” Vitriolics Corp. v. Conceptronic, Inc., 90 F.3d
1576 (Fed. Cir. 1996). 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. Phillips, 415 F.3d at 1313.
The Court has the sole responsibility for construing patent claims. See Markman v.
Westview Instruments, Inc., 517 U.S. 370 (1996). The Federal Circuit has established a clear
hierarchy of sources to guide courts in claim construction. First, if a claim term is non-technical
and derives no special meaning from the patent and its prosecution history, the court need not
construe it. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
However, if a jury might otherwise misunderstand a claim term in the context of the patent and
its file history, courts are 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.” Phillips, 415 F.3d at 1313. The Federal Circuit has affirmed that “the best source
for understanding a technical term is the specification from which it arose, informed, as needed,
by the prosecution history.” Phillips, 415 F.3d at 1315.
Intrinsic evidence—the specification and prosecution history—is the primary source for
understanding claim terms. Phillips, 415 F.3d at 1315. Courts are also authorized to consider
3
“evidence external to the patent and prosecution history, including expert and inventor
testimony, dictionaries, and learned treatises.” Id. However, “while extrinsic evidence can shed
useful light on the relevant art . . . it is less significant than the intrinsic record in determining the
legally operative meaning of claim language. Id. (internal quotations and citations omitted).
Disputed terms 5, 9, and 15 are means-plus-function limitations. Title 35 U.S.C. § 112
provides that “[a]n element in a claim for a combination may be expressed as a means or step for
performing a specified function without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2000). Construing a
means-plus-function limitation is a two-step process. Asyst Techs., Inc. v. Empak, Inc., 268 F.3d
13644, 1369 (Fed. Cir. 2001). First, the court must “identify the function explicitly recited in the
claim.” Id. Then the court must “identify the corresponding structure set forth in the written
description that performs the particular function set forth in the claim.” Id. at 1369-70. The
identified structure must not include “structure from the written description beyond that
necessary to perform the claimed function.” Micro Chem., Inc. v. Great Plains Chem. Co., Inc.,
194 F.3d 1250, 1258 (Fed. Cir. 1999).
B. Indefiniteness
Defendants ask the Court to hold that two claim limitations that appear frequently in both
patents are insolubly ambiguous. (Dkt. No. 301 at 9-10.) This finding would render invalid all
the claims of the ‘314 Patent and claims 4-8, 11, 34, and 35 of the ‘652 Patent. (Id.) The two
limitations are: (1) that images be displayed in an “unobtrusive manner” and (2) that the display
of images must not “distract a user” from the user’s primary interaction with the apparatus. (Id.);
‘652 Patent, Claims 4-8, 11, 34, 35; ‘314 Patent, All Claims. Defendants assert, “[w]hether
treated separately or together, these claim limitations fail to define a definite invention at least
4
because whether an image is displayed in an ‘unobtrusive manner’ or ‘does not distract a user’
depends on the subjective opinion of each individual user and on the surrounding environment in
which the image is displayed.” (Dkt. No. 301 at 10.) Therefore, Defendants assert, the Patents do
not tell one of ordinary skill in the art what constitutes displaying an image in an “unobtrusive
manner” and what “does not distract a user.” (Dkt. No. 301 at 10.)
Every patent’s specification must “conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant regards as his
invention.” 35 U.S.C. § 112 ¶ 2 (2000); see Halliburton Energy Servs., Inc. v. M-1 LLC, 514
F.3d 1244, 1249 (Fed. Cir. 2008). “Because the claims perform the fundamental function of
delineating the scope of the invention, the purpose of the definiteness requirement is to ensure
that the claims delineate the scope of the invention using language that adequately notifies the
public of the patentee’s right to exclude.” ?Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1347 (Fed. Cir. 2005) (citations omitted). “Even if a claim term’s definition can be
reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot
translate the definition into meaningfully precise claim scope.” Halliburton, 514 F.3d at 1251.
Patent claims with clear boundaries are “essential to promote progress, because [they] enable[]
efficient investment in innovation.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
U.S. 722, 730-31 (2002). This issue is properly raised during the Markman hearing because an
analysis of claim indefiniteness under § 112 ¶ 2 is “inextricably intertwined with claim
construction.” Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir.
1999); see also Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1340-41 (Fed. Cir. 2003)
(determination of claim definiteness “requires a construction of the claims according to the
familiar cannons of claim construction.”).
5
Defendants have a heavy burden to prove indefiniteness. The statutory presumption of
patent validity means that “close cases of indefiniteness in litigation involving issued patents are
properly resolved in favor of the patentee.” Exxon Research & Eng’g Co. v. United States, 265
F.3d 1371, 1380 (Fed. Cir. 2001). A claim is not indefinite “merely because it poses a difficult
issue of claim construction.” Id. at 1375. “Only after a thorough attempt to understand the
meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is
invalid for indefiniteness. Foremost among the tools of claim construction is of course the claim
language itself, but other portions of the intrinsic evidence are clearly relevant, including the
patent specification and prosecution history.” All Dental Prodx, LLC v. Advantage Dental
Prods., Inc., 309 F.3d 774, 780 (Fed. Cir. 2002).
Using the ordinary tools of claim construction, the Court finds that the terms “in an
unobtrusive manner” and “does not distract” a user, whether used together or separately, are
insolubly ambiguous. See ‘652 Patent, Claims 4-8, 11, 34, 35; ‘314 Patent, All Claims. The
intrinsic record provides no basis for a person of ordinary skill in the art to determine whether a
displayed image is displayed in an “unobtrusive manner.” (Id.) The Federal Circuit addressed a
similar situation in Datamize, where it held that a claim directed to an electronic kiosk system
with an “aesthetically pleasing” user interface was invalid as indefinite because neither the claim
language nor the specification provided an “objective standard . . . in order to allow the public to
determine the scope” of the term. 417 F.3d at 1350. The Datamize court found that the patentee
“offered no objective definition identifying a standard for determining when an interface screen
is ‘aesthetically pleasing.’” Id. Likewise, the claims of the ‘652 and ‘314 Patents provide no
meaningful definition of the phrase “unobtrusive manner,” because the same image may or may
6
not be considered unobtrusive depending on a variety of factors, such as color, size, and
information displayed. (See Dkt. No. 301 at 14.)
Similarly, the limitation that a displayed image “does not distract” a user is indefinite
because whether something distracts a user from his primary interaction depends on the
preferences of the particular user and the circumstances under which any single user interacts
with the display. See Halliburton, 514 F.3d at 1255 (“When a proposed construction requires that
an artisan make a separate infringement determination for every set of circumstances in which
the composition may be used, and such determinations are likely to result in differing outcomes
(sometimes infringing and sometimes not), that construction is likely to be indefinite.”). As
Defendants explain, one user with a higher ability to focus may not be distracted by an image,
while another user with a lesser ability to concentrate may be easily pulled away by the same
image. (Dkt. No. 301 at 17.) “While patentees are allowed to claim their inventions broadly, they
must do so in a way that distinctly identifies the boundaries of their claims.” Halliburton, 514
F.3d at 1253.
The Patents’ specification also fails to provide guidance. Plaintiff points to various
passages in the specification that purport to define the terms “unobtrusive manner” and “does not
distract the user.” (Dkt. No. 311 at 7-8.) Despite Plaintiff’s insistence, none of these sections
show one of ordinary skill in the art how to distinguish between displays of content that are
obtrusive/unobtrusive and distracting/non-distracting. Plaintiff points to Column 6, lines 37-51
of the specification of the ‘652 Patent, which discusses an embodiment where “the information is
presented by the attention manager during active periods . . . in an unobtrusive manner that does
not distract the user from the primary interaction (e.g., the information is presented in areas of a
display screen that are not used by displayed information association with the primary
7
interaction).” ‘652 Patent at 6:39-45. During the Markman hearing, Plaintiff focused on the
parenthetical in lines 43-45, arguing that this provided an express definition of the terms.
However, while a patent’s specification may act as a dictionary, a dictionary only works if it is
comprehensible. See Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 789 (Fed Cir.
2010) (“If the specification reveals a special definition for a claim term, ‘the inventor’s
lexicography governs’” (quoting Phillips, 415 F.3d at 1316)). Here there is simply no way that a
person of ordinary skill in the art would know that this phrase, starting with “e.g.,” constitutes an
express definition. ‘652 Patent at 6:39-45.
The next passage, which explains that an attention manager “generally” makes use of
“unused capacity,” including both “spatial” and “temporal” dimensions, also provides little
guidance to one of ordinary skill in the art trying to understand the terms. ‘652 Patent at 6:45-
51; see Datamize, 417 F.3d at 1352 (“while the description of an embodiment provides examples
of aesthetic features of screen displays that can be controlled by the authoring system, it does not
explain what selection of these features would be ‘aesthetically pleasing.’”). Neither do examples
of specific embodiments. In Datamize, the patentee provided examples of features that were
“aesthetically pleasing,” such as “some aspect of button styles and sizes, window borders, color
combinations, and type fonts,” but the Federal Circuit held that the term was still indefinite
because “the specification does not explain what factors a person should consider when selecting
a feature to include in the authoring system.” Id. Here, Plaintiff points the Court to an
embodiment that uses the “unused spatial capacity” of the display screen, or is “presented in
areas of a display screen that are not used by displayed information associated with the primary
interaction.” (Dkt. No. 311 at 7); ‘652 Patent at 6:37-51; 2:17-19. As in Datamize, these
descriptions are unhelpful because they do not explain what factors a person should consider
8
when selecting a feature to include. 417 F.3d at 1352. In fact, rather than providing any objective
guidance, the examples cited by Plaintiff simply refer back in general terms to the “wallpaper” or
“screensaver” embodiments. They do not provide a way for a person of ordinary skill in the art to
translate the definition into meaningfully precise claim scope. See Halliburton, 514 F.3d at 1251.
The prosecution history also fails to set forth an objective method to determine whether a
displayed item is “unobtrusive” or would “not distract” a user. Plaintiff argues that although the
PTO raised possible indefiniteness issues for other terms, it “never raised any issue with respect
to the ‘unobtrusive manner’ phrase.” (Dkt. No. 311 at 8.) Plaintiff also cites to the prosecution
history of the ‘652 patent, where the PTO linked “display[ing] content data in an unobtrusive
manner” with the “wallpaper embodiment and display area embodiment.” (Dkt. No. 327-1 at
107.) None of this provides guidance as to any “physical characteristics that guide the
determination” of whether a display is unobtrusive or distracting. See Deere & Co. v. Bush Hog,
LLC, No. 2011-1629, -1630, -1631, slip op. at 17 (Fed. Cir. Dec. 4, 2012.) Lastly, Plaintiff cites
to various examples where Defendants have used the term “unobtrusive” in their own patents.
(Id.) However, Defendants point out that most of those patents do not use the term “unobtrusive”
in a claim, and, even if they do, their specifications may contain sufficient guidance. In sum,
Plaintiff fails to show that the extrinsic record provides any clarity regarding the meaning of
these two terms.
The limitations “unobtrusive manner” and “does not distract a user” are indefinite
because the patents fail to provide an objective standard by which to define the scope of these
terms. See Datamize, 417 F.3d at 1350. They are also indefinite because the determination of
whether an accused product would meet the claim limitations depends on its usage in changing
9
circumstances. See Halliburton, 514 F.3d at 1254-55. Therefore, the Court finds that the claims
containing these terms are invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2.
C. Terms for Construction
1. “selectively displaying on the display device . . . an image or images generated from
the set of content data”
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 | DEFENDANTS’ CONSTRUCTION |
Audio and/or visual output that is generated
from data within a set of content data |
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
generated from data without a set of content data.”
The only dispute between the parties with respect to this term is whether the audio and/or
visual output must be “defined by the content provider,” as Defendants propose. (Dkt. No. 301 at
21.) Defendants argue that their construction specifies, “consistent with the intrinsic record and
the very purpose of the invention, that the audio and/or visual output is defined by the content
provider.” (Id.) This proposed construction goes too far. While the abstract of the ‘652 Patent
states that the attention manager “affords an opportunity to content providers to disseminate their
information,” the Patent nowhere says that the output is “defined” by the content provider. ‘652
Patent, Abstract.
10
Defendants’ proposed construction also fails because it conflicts with the definitions of
“image” and “content data” in the specification. (Dkt. No. 300 at 12.) The specification defines
“image” as “any sensory stimulus that is produced from the set of content data” and defines
“content data” as “data that is used by the attention manager to generate displays.” ‘652 Patent at
6:60-64; 9:51-54. The idea that output must be defined by a content provider does not appear in
the specification. “If the specification reveals a special definition for a claim term, ‘the inventor’s
lexicography governs,’” Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 789 (Fed Cir.
2010) (quoting Phillips, 415 F.3d at 1316.). Therefore, the Court adopts Plaintiff’s proposed
construction.
3. “in an unobtrusive manner that does not distract a user of the apparatus from a
primary interaction with the apparatus”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
During a user’s primary interaction with the
apparatus and unobtrusively such that the
images generated from the set of content data
are displayed in addition to the display of
images resulting from the user’s primary
interaction
Alternate Construction: During a user’s
primary interaction with the apparatus and
the information is presented in an area of
the display screen not substantially used by
displayed information associated with the
primary interaction of the user |
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
preserve their validity. Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed Cir. 1999); see also
Becton, Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990) (“Nothing in
any precedent permits judicial redrafting of claims.”). “While patentees are allowed to claim
11
their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their
claims.” Halliburton, 514 F.3d at 1253.
Plaintiff’s argument against a finding of indefiniteness highlights the flaws in these
terms. Plaintiff asserts that the following passage from the specification provides a clear,
objective definition of “unobtrusive manner”:
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.)
But this purported “clear, objective definition” sheds no light on what “unobtrusive manner”
means. Are all manifestations of the screensaver embodiment considered “unobtrusive”? What
color, shape, or size makes an image more or less “unobtrusive”? Which unused areas of the
display screen are unobtrusive? The “definition” cited by Plaintiff addresses none of these
questions. See Datamize, 417 F.3d at 1351 (“when faced with a purely subjective phrase . . . a
court must determine whether the patent’s specification supplies some standard for measuring
the scope of the phrase.”).
As Defendants point out, this purported “clear, objective definition” fails to even mention
the word “unobtrusive.” (Dkt. No. 315 at 12.) Further, the passage states that the primary
interaction “can result” in the display of images, not that it “must result” or even that it “results.”
(Id.) The words “can result” indicate that the primary interaction sometimes, but not always,
results in the display. (Id.) Plaintiff’s argument that the patentee acted as its own lexicographer is
unpersuasive. A comparison with Phillips is illustrative. 415 F.3d at 1325. In Phillips, the
Federal Circuit relied on passages in the asserted patent’s specification that specifically discussed
12
“baffles” to construe the term “baffles.” Id. Here, Plaintiff is unable to point to any such
language discussing a specific meaning for “unobtrusive.”
Plaintiff’s proposed construction also incorrectly excludes the screen saver embodiment
described in the Patents. Column 6, lines 45-51 of the ‘652 Patent specification states,
“Generally, then, an attention manager according to the invention makes use of ‘unused
capacity’ of a display device, ‘unused capacity’ being defined broadly to include, for example,
the embodiments mentioned above, i.e., both temporal (e.g., the first-described embodiment
above) and spatial (e.g., the second-described embodiment above) dimensions” (emphasis
added). ‘652 Patent, 6:45-51. This explanation, coming directly after Plaintiff’s proposed
definition of “unobtrusive,” does not distinguish between the “temporal” embodiment and the
“spatial” embodiment. (Dkt. No. 300 at 18-19.) Plaintiff’s references to the prosecution history
are unpersuasive because, to the extent the PTO identifies “unobtrusive” with the “wallpaper
embodiment,” this conflicts with the language of the specification, which does not distinguish
between the screensaver embodiment and the wallpaper embodiment. See SRAM Corp. v. AD-II
Eng’g, Inc., 465 F.3d 1351, 1359 (Fed. Cir. 2006).
Finally, Plaintiff’s last-minute amendment, presented to the Court as an “alternative
compromise construction” that Defendants rejected, still does not solve the indefiniteness
problem. (Dkt. No. 334.) Plaintiff suggests construing the term to mean “during a user’s primary
interaction with the apparatus and the information is presented in an area of the display
screen not substantially used by displayed information associated with the primary
interaction of the user” (emphasis indicates amendment). (Id. at 3.) First, this construction
reads out the words “does not distract” from the term, while introducing the word
“substantially.” Second, the proposed construction, specifying that the information must be
13
presented in an areas “not substantially used” is still indefinite, because it is not supported in the
specification and because one of ordinary skill in the art has no way of knowing what
“substantial” means in this context. Rather than providing clarification for the Court, Plaintiff’s
inability to settle on a construction further undermines its argument that the specification acted as
a dictionary regarding this term.
4. “primary interaction”
During the Markman hearing, the parties agreed to adopt the definition of this term in
Column 8, lines 19-23 of the ‘652 Patent. Therefore, the Court construes “primary interaction” as
“any operation of the computer that occurs to enable or to support the performance of the
function or functions that provide the basis for the user’s use of the computer.”
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”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
Function: Selectively displaying an image or
images generated from the set of content data
on the display device in an unobtrusive manner
that does not distract a user of the apparatus from a primary interaction with the apparatus
Structure: One or more digital computers
programmed to identify the next set of content
data in the schedule and display the next set of
content data in the schedule in an “unobtrusive
manner that does not distract a user of the
apparatus 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.
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 construed herein] |
14
As explained in Section B, this term includes a phrase that is indefinite within the recited
function; therefore this term is indefinite.
The parties agree that the recited function includes displaying images “in an unobtrusive
manner that does not distract a user of the apparatus from a primary interaction.” (Dkt. No. 315
at 15-16.) However, the parties dispute what, if any, structure is disclosed in the specification for
performing the function recited in the claim. (Dkt. No. 301 at 29; Dkt. No. 300 at 22-24.) The
Federal Circuit has observed that “[i]n a means-plus-function claim in which the disclosed
structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose computer
programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game Tech., 184
F.3d 1339, 1349 (Fed. Cir. 1999). “The corresponding structure for a § 112 ¶ 6 claim for a
computer-implemented function is the algorithm disclosed in the specification.” Aristocrat
Techs. Austl. PTY Ltd. v. Int’l Game. Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
Here, Plaintiff fails to identify anything in the specification that describes the steps the
software would perform or the “algorithm” used to implement the recited function for the
“means for displaying” term. (Dkt. No. 315 at 16.) While a “description of the function in words
may disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm
to provide the necessary structure under § 112 ¶ 6,” the description Plaintiff provides here is
insufficient. See Typhoon Touch. Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384 (Fed. Cir.
2011). Plaintiff points to Fig. 5A in the specification, which says the digital computer must select
the content to be displayed. (Dkt. No. 311 at 14.) Then, Plaintiff explains, “the image or images
generated from that set of content data must be displayed ‘in an unobtrusive manner’.” (Id.
15
citing step 105 of Fig. 5A). Then, according to Plaintiff, the images must be displayed “during a
user’s primary interaction with the apparatus and unobtrusively such that the images generated
from the set of content data are displayed in addition to the display of images resulting from the
user’s primary interaction.” (Id., quoting ‘652 patent at 3:25-30.) Rather than describing the
function, Plaintiff merely parrots the indefinite functional language in the claims and fails to
identify any algorithm that is actually capable of accomplishing the function. As Defendants
explain, “[s]uch a construction would capture any general purpose computer programmed to
perform the recited function regardless of whether it corresponds to any algorithm in the
specification.” (Dkt. No. 301 at 29-30.) Therefore, the Court finds claim 4 of the ‘652 Patent and
its dependent claims are invalid as indefinite for lacking sufficient disclosure of supporting
structure.
6. “each content provider provides its content data to [a/the] content display system
independently of each other content provider”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
No construction needed; in the alternative:
each content provider provides its content data
to the content display system without being
influenced or controlled by any other content
provider |
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 |
The Court adopts Plaintiff’s construction and declines to construe this term.
The only dispute regarding this term concerns whether the word “independently” needs to
be construed at all. (Dkt. No. 300 at 42; Dkt. No. 301 at 30.) It does not. Defendants explain that
their construction clarifies that “a content provider does NOT provide its content data
‘independently’ if one content provider’s data is provided ‘through, by or under the influence or
control of any other content provider.’” (Dkt. No. 301 at 30 (emphasis in original).) If a claim
16
term is non-technical and derives no special meaning from the patent and its prosecution history,
the court need not construe it. See U.S. Surgical Corp., 103 F.3d at 1568. That is the case here.
The prosecution history confirms Plaintiff’s assertion that the term need not be construed.
During the original prosecution the patentee expressly removed the requirement of “direct”
transmission from the content provider to the content display system as part of the amendment in
which the language of this disputed term was added. (Dkt. No. 300 at 25, citing ‘314 Patent
History, IL_DEFTS0006293.) As part of this amendment, the “directly to the display device”
language was removed from the claims, while the language disputed here was added. (Id.)
Defendants’ proposed construction improperly reintroduces a requirement of “direct”
transmission that was expressly removed during prosecution.
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”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
“installation instructions” for enabling
provision of an interface that enables a person
to request the set of content data from a
specific source of information |
“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 |
The Court adopts Plaintiff’s construction: “‘installation instructions’ for enabling
provision of an interface that enables a person to request the set of content data from a specific
source of information.”
Defendants ask the Court to require that the user interface be “in the content provider’s
information environment,” as outlined in the specification of the ‘652 Patent at Col. 16:9-16.
(Dkt. No. 301 at 32.) But adopting this construction would import a limitation from a preferred
17
embodiment in contravention of Federal Circuit precedent. See 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.”). In fact, the
specification of the ‘652 Patent explains that “[a]ny appropriate user interface can be used for
enabling a user to directly request a particular set of content data.” ‘652 Patent at 18:60-61. This
contravenes Defendants’ construction. Id.
Defendants also attempt to limit the claim by requiring that the user interface permit a
user to request “a particular set of content data representing the image(s) to be displayed from the
specified content provider.” (Dkt. No. 301 at 32.) Again, Defendants’ attempt to insert a
requirement that every content provider take an active role in “defining” or “formulating” the
content data or the images generated is an improper attempt to import a limitation from a
preferred embodiment. (Dkt. No. 300 at 27.) This language is not supported by the claims and
would only serve to add uncertainty about what the claims require.
8. “during operation of an attention manager”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
During the operation of a system for engaging
at least part of the user’s attention that is not
occupied by the user’s primary interaction with
the apparatus |
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 |
The Court adopts Defendants’ construction: “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.”
Plaintiff’s construction, relying on the discussion of “attention manager” in the Abstract
of the ‘652 Patent, would result in a construction that provides no meaningful boundaries for the
18
term. Contrary to Plaintiff’s assertion, the specification does not define the term “attention
manager”; it simply uses the term as the title of its invention. (Dkt. No. 301 at 33.) The Court
construes the term according to the only description in the specification that gives objective
boundaries to the scope of this limitation: the “screensaver” and “wallpaper” embodiments. (Dkt.
No. 301 at 33.)
The prosecution history also confirms that “attention manager” should be construed
according to the screensaver and wallpaper embodiments. During prosecution, the examiner
rejected the ‘652 Patent over U.S. Patent No. 5,572,643 (the “Judson Patent”), which teaches a
method for displaying messages to a computer user in an internet browser while the user is
waiting for the webpage to load. (Dkt. No. 301 at 34, citing JPHS Ex. C1 at
IL_DEFTS0007928.) In distinguishing its invention from the Judson Patent, applicants argued
that “the instant invention uses a different unused capacity than that used by the method taught
by Judson.” (Id.) Applicants explained that their invention made use of the “unused capacity” of
a display device and of the attention of a person in the vicinity of the display device through two
implementations, the screensaver and the wallpaper embodiments. (Id.) Having relied on the
specification’s description of both the screensaver and wallpaper embodiments to distinguish the
purported invention from prior art, Plaintiff cannot now expand the scope of the invention during
litigation. See CVI/Beta Ventures v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (“through
statements made during prosecution or reexamination an applicant . . . may commit to a
particular meaning for the patent term, which meaning is then binding in litigation”).
The Court reads the claim term “in the context of the entire patent, including the
specification.” Phillips, 415 F.3d at 1313. Defendants’ proposed construction is the only one that
19
gives objective meaning to the term “attention manager” and is consistent with the specification
and the prosecution history.
9. “means for acquiring a set of content data from a content providing system”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
Function: acquiring a set of content data from
a content providing system
Structure: A digital computer capable of
communicating with a content providing
system via a network and programmed to
perform at least the following 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, and
(3) obtaining the particular set(s) of content
data requested by the user at the content
display system |
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 |
The Court adopts Plaintiff’s construction of this means-plus-function term.
The parties agree on the function of this term. (Dkt. No. 300 at 28; Dkt. No. 301 at 36.)
However, the parties’ proposed constructions raise three disputes concerning the corresponding
structure: (1) whether the digital computer must be “connected to a content providing system via
a network” as an independent limitation; (2) whether the corresponding structure must be
programmed for “receiving a set of instructions at the content display system that identify the
site from which the set of content data is to be acquired”; and (3) whether the content data must
be “downloaded,” rather than simply “obtained.” (Dkt. No. 300 at 29.) The answer to each
question is no.
20
Defendants’ proposed requirement that the digital computer be connected to the content
providing system “via a network” goes beyond the language of the specification, which explains,
“[a]ny appropriate user interface can be used for enabling a user to directly request a particular
set of content data.” ‘652 Patent at 18:60-61. Defendants’ proposed construction also improperly
suggests that a connection must be maintained at all times, while the recited steps only require
requesting and obtaining the content data. (Dkt. No. 300 at 29.) As Plaintiff explains, the user
interface could be presented to the user before a connection with the content provider is
established, but this would not fall within Defendants’ proposed construction. (Id.) See Micro
Chem., 194 F.3d at 1258 (“Nor does the statute permit incorporation of structure from the written
description beyond that necessary to perform the claimed function.”).
Defendants’ proposed construction also improperly includes the step of “receiving a set
of instructions at the content display system that identify the site from which the set of content
data is to be acquired.” (Dkt. No. 300 at 30.) The fact that this step is not necessary to perform
the function is demonstrated by its omission from Figure 4, which describes a “method . . . for
acquiring and updating sets of content data.” ‘652 Patent at Fig. 4. Defendants assert that
“acquisition instructions 331” are necessary to perform the claimed function.” (Dkt. No. 301 at
36.) But the specification teaches that “acquisition instructions 331” are obtained after a set of
content data has been acquired by the content display system. ‘652 Patent at 20:62-65. Because it
is not necessary to perform the recited function, Defendants’ step (3) will not be incorporated in
the structure for this term.
Finally, Defendants’ proposed use of the term “downloading’ rather than “obtaining” is
unnecessary and goes against the usage in the specification. (Dkt. No. 300 at 30.) If a claim term
is non-technical and derives no special meaning from the patent and its prosecution history, the
21
court need not construe it. See U.S. Surgical Corp., 103 F.3d at 1568. The specification provides
no reason to replace these easily understandable words with “downloading,” a term that does not
appear in the specification. (Dkt. No. 300 at 31.) Defendants object that “a jury may interpret
‘obtaining’ to include an embodiment where content data was acquired through local sources,”
which was expressly disclaimed. (Dkt. No. 315 at 21.) Defendants provide no evidence that the
word “downloading” is any less susceptible to misinterpretation than the word “obtaining.”
Plaintiff’s construction is more reasonable.
10. “content provider”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
No construction necessary; in the alternative: a
system that provides one or more “sets of
content data” |
An entity that formulates one or more “sets of
content data” |
The Court finds that no construction is necessary of this term because it is non-technical
and has no special meaning in the context of the patent. See U.S. Surgical Corp. v. Ethicon, Inc.,
103 F.3d 1554, 1568 (Fed. Cir. 1997).
Defendants’ proposed construction inappropriately limits the claim term to require that
the content provider “formulate” the content, rather than simply “provide” it. (Dkt. No. 300 at
31, Dkt. No. 301 at 38.) See 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.) While Defendants are able to point to a few
instances where the word “formulate” is used, it is not used universally. Cf. ‘314 Patent,
Abstract; ‘314 Patent 31:48-49, 31:52-53. 31:58-59. In fact, while the Abstract of the ‘314 Patent
says that “[e]ach set of content data is formulated by a content provider,” it nowhere says that
22
every content provider must “formulate,” rather than “provide,” the sets of content data. ‘314
Patent Abstract.
11. “content data scheduling instructions for providing temporal constraints on the
display of the image or images generated from the set of content data”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
“instructions” that affect the duration, order,
timing, and/or frequency of the display of the
“image or images generated from the set of
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 |
The Court adopts Plaintiff’s construction: “‘instructions’ that affect the duration, order,
timing, and/or frequency of the display of the ‘image or images generated from the set of content
data.’”
The parties have two disagreements regarding this term: (1) whether “temporal” is
limited to “timing,” or also includes duration, order and frequency; and (2) whether the limitation
requires that all content data scheduling instructions must always be capable of being “tailored
by a content provider.” (Dkt. No. 300 at 33; Dkt. No. 301 at 39.) Plaintiff’s construction is the
more reasonable one.
The specification clarifies that “content data scheduling instructions for providing
temporal constraints” includes not only timing, but also duration, order, and frequency. (Dkt. No.
300 at 33.) In relevant part, specification states:
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
Some confusion results because a prior sentence, lines 4:37-39, discusses “content data
scheduling instructions for providing temporal constraints,” while the later section discusses
“content data scheduling instructions.” ‘652 Patent at 4:47-55. However, the context of the
specification shows that the use of “temporal” in Column 4, line 38, was not meant to limit the
term “content data scheduling instructions” to only what the specification refers to as “timing
instructions”—the third example of the specification’s explanation of “content data scheduling
instructions” at Column 4, lines 47-55. Id. Defendants’ proposed construction is too narrow
because it would exclude other types of content data scheduling instructions expressly taught by
the specification, including duration instructions, sequencing instructions, and saturation
instructions. See ‘652 Patent at 4:47-55; 16:65-17:28.
Defendants’ proposal to limit this term to instructions that “can be tailored by a content
provider” also incorrectly imports a characteristic from a certain embodiment into the claim. See
Phillips, 415 F.3d at 1323. The plain language of this limitation does not require that all content
data scheduling instructions must always be capable of being “tailored by a content provider.”
(Dkt. No. 311 at 21.) While the specification discusses an embodiment where tailoring occurs
before the instructions are sent to the content display system, nowhere does it state that the
instructions must always be tailored. See ‘652 Patent at 17:49-57; (Dkt. No. 300 at 34-35).
Plaintiff’s proposed construction, which tracks the claim language while clarifying the meaning
of “temporal” according to the specification, is the better construction.
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”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
“instructions” that specify when to obtain an
updated version of a set of content data and the |
“instructions” that can be tailored by the
content provider when to obtain an updated |
24
location from which to obtain such updated
version |
version of a previously acquired set of content
data and the location from which to obtain
such updated version |
The Court adopts Plaintiff’s construction: “‘instructions’ that specify when to obtain an
updated version of a set of content data and the location from which to obtain such updated
version.”
The parties’ only dispute with respect to this term is whether the claimed instructions are
limited to those that “can be tailored by the content provider.” (Dkt. No. 300 at 35; Dkt. No. 301
at 42.) For the same reasons discussed in term 11 with respect to content data scheduling
instructions, this additional limitation is improper. In opposition, Defendants cite to the summary
of the invention, which states that “the attention manager allows content providers to tailor
particular aspects of the attention manager as desired by the content provider, such as the
acquisition of updated sets of the content provider’s content data (E.g., the frequency of such
updates).” ‘652 Patent at 5:39-45. Defendants also cite to a sentence in the summary that says
that instructions “can be tailored as necessary or desirable by a content provider.” (Dkt. No. 301
at 42); ‘652 Patent at 3:3-8. But the summary’s use of the word “can” is instructive. Id. As with
content data scheduling instructions, the specification nowhere says that the instructions “must”
be tailored. Plaintiff’s construction is therefore more reasonable.
13. “content display system scheduling instructions for scheduling the display of the
image or images on the display device”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
“instructions” that implement a display
schedule by determining which image or
images generated from the “sets of content
data” will be displayed and mediating conflicts
between the display requirements of multiple
“sets of content data” |
“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 |
25
The Court adopts Plaintiff’s construction: “‘instructions’ that implement a display
schedule by determining which image or images generated from the ‘sets of content data’ will be
displayed and mediating conflicts between the display requirements of multiple ‘sets of content
data.’”
Only Plaintiff’s construction encompasses all types of content display system scheduling
instructions discussed in the specification, without requiring any particular type. See ‘652 Patent
at 10:43-11:10; 20:37-42; 26:52-57. Defendants’ construction highlights one type of content
display system scheduling instructions (display order and duration), but fails to mention that the
specification teaches that these instructions may also determine whether images generated from
certain sets of content data will be displayed at all. Id.; (Dkt. No. 300 at 36). For example, in
Column 26, lines 52-57, the specification teaches that “[t]he content display system scheduling
instructions can include instructions that evaluate a probability function each time that a set of
content data in the schedule is presented for display, and either display or not display the set of
content data dependent upon the evaluation of the probability function. ‘652 Patent at 26:52-57.
Defendants’ proposed construction is incorrect because it excludes these types of content
display system scheduling instructions. See Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
616 F.3d 1283, 1290 (Fed. Cir. 2010) (A claim construction that excludes the preferred
embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support.”).
Rather that improperly injecting a limitation into the construction, as Defendants charge, the
statement that the instructions “mediat[e] conflicts between the display requirements of multiple
‘sets of content data’” simply construes the term in accordance with the specification. (Dkt. No.
315 at 24); see ‘652 Patent at 10:43-11:10.
26
14. “instructions”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
Either (a) data related to the accomplishment
of a function and/or (b) a statement or
expression that can be interpreted by a
computer that specifies a function to be
performed by a system |
A statement in a programming language that
specifies a function to be performed by a
system |
The Court adopts Defendants’ construction: “a statement in a programming language that
specifies a function to be performed by a system.
Plaintiff’s proposed construction asks the Court to adopt a broad reading that expands the
scope of the term “instructions” beyond its plain and ordinary meaning to also “include data
related to the accomplishment of a function.” (Dkt. No. 300 at 37-38.) Plaintiff’s construction
would go even further that Plaintiff explains, classifying data alone as “instructions” if it is
“related to the accomplishment of a function.” (Id.) This is a step too far.
The intrinsic evidence does not support the conclusion that an “instruction” is “data.” For
example, the text of the specification explicitly recognizes that “instructions” and “data” are
different things because functional components can be represented by one or the other. See ‘652
Patent at 14:53-54 (“Each of the functional components are represented by a set of instructions
and/or data.” (emphasis added)). If “data” is a type of “instructions,” then the phrase
“instructions and/or data” would not make sense. Id.; (Dkt. No. 301 at 44). The specification
acknowledges that “sets of instructions may include, if appropriate, data related to
accomplishment of the functions associated with the set of instructions.” ‘652 Patent at 14:55-57.
In other words, instructions might include data, but instructions cannot be data alone. (Dkt. No.
301 at 44.) This conclusion is confirmed by Plaintiff’s citations to the specification, see ‘652
27
Patent at Fig. 3A, 14:49-65, which state that instructions “may include” data, but do not say that
“data” is “instructions.” (Dkt. No. 300 at 38.)
Contrary to Plaintiff’s assertion, the prosecution history of the ‘314 Patent also does not
support its proposed construction. Plaintiff cites a portion of the prosecution history of the ‘314
Patent where the examiner explained that the Farber Patent teaches “the respective content
provider may provide scheduling instructions tailored to the set of content data since the
providing [sic] may send information (new information is an instruction to display new
information) at the provider’s control to the client, thus controlling the duration, sequencing, and
timing of the images displayed . . . .” ‘314 Patent History, 2/14/2003 Office Action at 6
(IL_DEFTS0006109). But this statement, made in a parenthetical and discussing a different
patent, nowhere says that information alone can constitute an “instruction.” Id.
15. “means for displaying one or more control options with the display device while the
means for selectively displaying is operating”
PLAINTIFF’S CONSTRUCTION | DEFENDANTS’ CONSTRUCTION |
Function: displaying one or more control
options with the display device while the
means for selectively displaying is operating
Structure: One or more digital computers
programmed to provide a dialog box that
includes a list of one or more of the following
control options (1) terminate the operation of
the attention manager, (2) begin display of the
next scheduled set of content data, (3) begin
display of the previous scheduled set of content
data, (4) remove a set of content data from the
display schedule, (5) prevent a set of content
data from being displayed until it has been
updated, (6) modify the display schedule in
response to a user’s identified satisfaction with
a set of content data, (7) establish a link with
an information source, (8) provide an overview
of all the content data available for display by the attention manager, (9) maintain display of
the current set of content data, or (10) remove
the control option interface and structural
equivalents. |
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. |
28
The Court adopts Plaintiff’s construction of this means-plus-function term.
The parties agree that this claim limitation is written in means-plus-function format and
therefore invokes 35 U.S.C. § 112 ¶ 6, requiring a determination of the limitation’s function and
then identifying the corresponding structure in the patent’s written description that performs that
function. (Dkt. No. 300 at 40-41; Dkt. No. 301 at 45.) The parties also agree that the function of
this limitation is “displaying one or more control options with the display device while the means
for selectively displaying is operating.” (Id.) The parties even agree that the structure that
performs this function is “one or more digital computers programmed to provide a dialog box
that includes a list of . . . control options.” (Id.) The only disagreement is over what should be
included in the list of control options. (Id.)
Of the two, Plaintiff’s proposed list finds more support in the specification. Defendants
derive their list of control options solely from steps 501-505 of Figure 5B. ‘652 Patent at Fig. 5B.
But the Federal Circuit has held that when a specification discloses multiple structures that may
correspond to the function of a means-plus-function limitation, the limitation is properly
construed as covering all such structures and their equivalents. See Micro Chem., 194F.3d at
1258-59. “The specification can express the algorithm in any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in any other manner that provides
sufficient structure.” Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302 (Fed. Cir. 2012) (citations
omitted).
29
Plaintiff points to five other control options (options 1 and 7-10), all of which are
expressly disclosed in the specification. For example, the specification expressly identifies
option 1 (terminate the operation of the attention manager), stating, “One control option that can
be used with an attention manager according to the invention enables the user to directly
terminate operation of the attention manager.” ‘652 Patent at 25:37-40. It expressly describes
option 7 (establishing a link with an information source), stating, “Still another control option
that can be used with an attention manager according to the invention enables the user to
establish a link with another information source.” ‘652 Patent at 27:16-18. It expressly describes
option 8 (providing an overview of all content data available for display by the attention
manager), stating, “Another control option that can be used with an attention manager according
to the invention enables the user to obtain an overview of all of the content data available for
display by the attention manager.” ‘652 Patent at 27:64-67. It expressly describes option 9
(maintaining display of the current set of content data), stating, “Still another control option that
can be used with an attention manager according to the invention enables the user to maintain
display of the currently displayed set of content data 350 until such display is terminated by the
user.” ‘652 Patent at 28:10-13. It expressly describes option 10 (removing the control option
interface), stating, “Selection of the ‘cancel’ option 602e causes the dialog box 601 to be
removed from the screen 600.” ‘652 Patent at 28:21-28. Each of these descriptions explicitly
describes control options in an unambiguous manner.
Defendants argue that these statements in the specification are “generic statement[s]” that
“do[] not expand the corresponding structure.” (Dkt. No. 301 at 46); see Atmel Corp. v. Info.
Storage Devices, Inc., 997 F. Supp. 1210, 1215 (N.D. Cal. 1998) (“A specification that merely
mentions the possibility of alternative structures without specifically identifying them is not
30
sufficient to expand the scope of the claim beyond the example used.”). But the specification
here does not “merely mention[]” the structures; it explicitly identifies them. (See Dkt. No. 300
at 43.) The Federal Circuit has no requirement that all control options be described together in
one flowchart. Therefore, Plaintiff’s proposed construction is more reasonable.
Conclusion
The Court finds that the terms “unobtrusive manner” and “does not distract a user” are
indefinite, and that the claims containing these terms are therefore invalid under 35 U.S.C. § 112
¶ 2. The Court adopts Plaintiff’s proposed construction of terms 1, 2, 6, 7, 9, 10, 11, 12, 13, and
15. The Court adopts Defendants’ proposed construction of terms 3, 5, 8, and 14.
The clerk is ordered to provide copies of this order to all counsel.
Dated this 19th day of December, 2012.
/s/Marsha J. Pechman
Marsha J. Pechman
United States District Judge
31