Arthur G. Connolly, III, Esq., Wilmington, Delaware; Michael J. Bettinger, Esq. (argued), San Francisco, California; Attorneys for Plaintiff Google, Inc.
Arthur G. Connolly, III, Esq., Wilmington, Delaware; Grant E. Kinsel, Esq. (argued), Los Angeles, California; Attorneys for Plaintiff Microsoft Corporation.
Sean T. O'Kelly, Esq., Wilmington, Delaware; James C. Hall, Esq. (argued), Andover, Massachusetts; Attorneys for Defendant Geotag, Inc.
RICHARD G. ANDREWS, District Judge.
This is a claim construction opinion. Plaintiffs Google Inc. and Microsoft Corporation filed a declaratory action asserting non-infringement of Defendant Geotag, Inc.'s U.S. Patent No. 5, 930, 474 ("'474 Patent"). The '474 Patent discloses computer software informational databases integrated with search engine technology that allow users to find points of interest according to desired geographic regions.
Claim construction is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995), aff'd, 517 U.S. 370 , 388-90 (1996). When construing the claims of a patent, a court considers the literal language of the claim, the patent specification and the prosecution history. Markman, 52 F.3d at 979. Of these sources, the specification is "always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term." Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). However, "[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.'" Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) ( quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)).
A court may consider extrinsic evidence, including expert and inventor testimony, dictionaries, and learned treatises, in order to assist it in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works. Phillips, 415 F.3d at 1318-19; Markman, 52 F.3d at 979-80. However, extrinsic evidence is considered less reliable and less useful in claim construction than the patent and its prosecution history. Phillips, 415 F.3d at 1318-19 (discussing "flaws" inherent in extrinsic evidence and noting that extrinsic evidence "is unlikely to result in a reliable interpretation of a patent claim scope unless considered in the context of intrinsic evidence").
In addition to these fundamental claim construction principles, a court should also interpret the language in a claim by applying the ordinary and accustomed meaning of the words in the claim. Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984). If the patent inventor clearly supplies a different meaning, however, then the claim should be interpreted according to the meaning supplied by the inventor. Markman, 52 F.3d at 980 (noting that patentee is free to be his own lexicographer, but emphasizing that any special definitions given to words must be clearly set forth in patent). If possible, claims should be construed to uphold validity. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
The parties organize the disputed phrase terms into five groups: the "hierarchy" phrases, the "dynamic replication" phrases, the "topics" phrases, the "entries" phrases, and the "additional" phrases.
A. The "Hierarchy" Phrases
The first group is referred to as the "hierarchy" phrases by the parties. The proposed constructions for this group follows:
Claim term phrase Google Microsoft Geotag #1. "hierarchy of "related geographical No separate "an arrangement of
geographical areas" areas, ordered such that construction. See related information or (claims 1, 4, 20) broader general areas construction for term #2 data, ordered from encompass narrower broader general specific ones" categories to narrower specific ones" #2. "a database of Google focuses on the "a database of records No need to separately information organized separate terms in the primarily organized into construe; see into a hierarchy of limitation and does not interrelated geographic constructions for #3 and geographical areas construe this entire areas such that there are #19 wherein entries to each term. parent geographic areas one of said hierarchy of and child geographic geographical areas is areas, wherein the further organized into records associated with topics" a geographic area are further organized into (claim 1) topics" #3. "a database of No need to separately No separate "a collection of information organized construe. See term # 1 construction necessary. interrelated information into a hierarchy of See construction for or data organized such geographical areas" term # 2 that a computer program (claim 1) can quickly retrieve selected information or #4. "said database of data, ordered from information organized broader geographical into a predetermine [sic] categories to narrower hierarchy of geographical geographical areas" categories" (claim 20) #5. "hierarchy" No need to separately No separate "an arrangement of construe. See term #1, construction necessary. related information or (claims 1, 5, 20) term #16 for "topics, " See construction for data, ordered from and term #17 for term #2, term #16 for broader general #6. "hierarchically "wherein said topics are "topics" and term #17 categories to narrower organized" hierarchically for "wherein said topics specific ones" organized" are hierarchically (claim 32) organized." (same as #1, 17) #7. "narrower "a geographic area in "a geographic area in No need to construe. geographical area" the database the database which is a Plain and ordinary encompassed by a child of the broader meaning (claim 1) broader geographic area geographic area" in the database" #8. "geographical area of relatively smaller expanse" (claim 20) #9. "broader "a geographic area in "a geographic area in No need to construe.
geographical area" the database that the database which is a Plain and ordinary encompasses one or parent of one or more meaning (claims 1, 31) area more narrower geographic areas in the #10. "geographical database" narrower geographic of relatively larger areas" expanse" (claim 20)
This group concerns the organization of the "hierarchy of geographical areas" of the database. The phrase appears in claim 1 as follows: "a database of information organized into a hierarchy of geographical areas wherein entries to each one of said hierarchy of geographical areas is further organized into topics." As an initial matter, the Court agrees with Microsoft's proposal that this group of terms should be construed as a single phrase, as opposed to breaking down the construction into multiple component phrases. The parties do agree that the "hierarchy of geographical areas" is comprised of an organization of broader geographic areas and related narrower geographic areas. They do not agree as to how the broader and narrower geographic areas are arranged in relation to one another. Google argues that the broader geographic areas should be understood to "encompass" the narrower geographic areas. Microsoft argues that the broader geographic areas and the narrower geographic areas are organized according to a "parent-child" relationship. Geotag argues that both of those constructions are wrongful attempts to employ the specification to limit the claims, and argues that the hierarchy is simply "ordered from broader general categories to narrower specific ones."
Google relies on the specification in support of its argument that the broader geographic regions necessarily "encompass" the narrower geographic regions. It refers to the following quotation in support: "Each of the geographical levels above the lowest level encompasses a plurality of lower level geographical areas. - '474 Patent, col. 3 ll. 22-24. Google argues that this portion of the specification demonstrates the full scope of the invention, as the very function of the hierarchy requires the broader geographic area to completely encompass a narrower area. The Court is not convinced by this argument. Google relies on a few sparse statements in the specification in support of its construction, and Google does not provide any persuasive reasoning as to why the claimed invention hinges on broader areas "encompassing" narrower areas. This understanding of the claim term is bolstered by a comparison of the claims. In Claim 1, the word "encompass" is not used to describe the relationship between the broader and narrower areas. In contrast, dependent Claim 5 does use "encompass" to describe these relationships. "There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims." Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). Although there are other differences between these two claims than the presence of "encompass" in dependent Claim 5, the presumption is this difference was intentional. For these reasons, the Court rejects Google's construction.
Microsoft's proposal to construe the phrases according to the "parent-child relationship, " on the other hand, explains a necessary aspect of the claims. During claim construction, the Court must look to see "whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment." Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1370 (Fed. Cir. 2003).
Claim 1 requires "entries" associated with "broader geographical areas" to be "dynamically replicated" to "narrower geographical areas." The "dynamic replication" phrases are the second group of disputed terms and are not construed in this section, but that group's meaning has ramifications for the "hierarchy" phrases' construction. Both Geotag and Google agree that "dynamic replication" must be construed to mean "automatic inheritance." The Court adopts this construction in Part B of this opinion infra.
"Automatic inheritance" requires that "hierarchy" be construed according to the "parentchild relationship." The specification describes the function of "automatic inheritance" as follows:
These values are the parentage name keys related to the current entry, and provide the key to displaying related entries to the internet user, and are automatically inherited from the parent entry. These reference values are used to retrace the path back through the geographic hierarchy when the user wishes to return to a related (e.g., parent) location display screen.
'474 Patent, col. 19 ll. 33-38. "Automatic inheritance" as described here is strictly dependent on the existence of "parentage name keys" and a "parent entry." They are the "reference values" that allow retracing through the hierarchy when the user returns to the related location display screen. Although the specification's use of "(e.g., parent)" would seem to indicate that the "parent-child" relationship is merely exemplary, there is no indication elsewhere as to how "automatic inheritance" would function without the "parent-child relationship." Because neither "automatic inheritance" nor "dynamically replicated" are terms with a plain and ordinary meaning, the Court can only construe their meaning and function according to what is disclosed in the patent. There is nothing in the patent indicating how these functions would occur absent a "parent-child" hierarchy.
The necessity of the "parent-child relationship" to "automatic inheritance" is again demonstrated below:
The data contained within the geographic database 210 also includes reference field 1305 which include a reference city, reference region, reference state, province or territory, reference country, reference continent, and reference world values. These values are the parentage name keys related to the current entry, and provide the key to displaying related entries to the internet users, and are automatically inherited from the parent entry.
Id. at col. 19 ll. 29-39. The "parentage name keys" are necessary to displaying "related entries to the internet users." They are "automatically inherited from the parent entry." To further demonstrate the necessity of the "parent-child relationship" to "automatic inheritance, " the patent teaches the importance of "label fields" to the invention. See id. at col. 19 ll. 45-63. When a user selects a certain geographic region, all corresponding "parent entries" are taken from the "label field" and displayed to the user. Id. at col. 19 ll. 52-57. The patent then specifically teaches that the label field is "automatically inherited" from the "parent entry, " and warns that the values within the parent label field should not be changed. Id. at col. 19 ll. 61-63. The most reasonable interpretation of the admonition to leave the label field unchanged is to preserve the function of "automatic inheritance." It is language ...