Richard D. Kirk, Esq., Wilmington, Delaware; Thomas C. Grimm, Esq., Wilmington, Delaware; Steven J. Rizzi, Esq. (argued), New York, New York; Attorneys for Plaintiff Robocast, Inc.
Thomas L. Halkowski, Esq., Wilmington, Delaware; Kurt L. Glitzenstein, Esq. (argued), Boston, Massachusetts; Attorneys for Defendant Microsoft Corporation.
Richard L. Horwitz, Esq., Wilmington, Delaware; Harrison J. Frahn IV, Esq. (argued), Palo Alto, California; Attorneys for Defendant Apple Inc.
RICHARD G. ANDREWS, District Judge.
This is a claim construction opinion. Plaintiff Robocast, Inc. has asserted complaints for infringement of United States Patent No. 7, 155, 451 ("'451 Patent") against Defendants Microsoft Corporation and Apple Inc. (C.A. 10-1055-RGA, D.I. 1; C.A. 11-235-RGA, D.I. 1).
The '451 Patent relates to methods of automating the presentation of computer content. The invention is generally intended to reduce the number of decisions a user makes while surfing the web or browsing other computer content. The user is able to preprogram the software to automatically present an arrangement of preferred content in a streamlined fashioned, while preserving the user's ability to interact with the displayed content. This method of presentation requires the creation of a "show structure of nodes, " which may be structured in a variety of arrangements as taught by the claims of the '451 Patent.
The disputed terms follow.
A. "Show Structure of Nodes"
The first term is "show structure of nodes." This term phrase is used in all five of the asserted independent claims. To provide context for the term, it is used in claim 1 as follows:
A method for displaying on a user's computer, content derived from a plurality of resources in an organized arrangement comprising the steps of:
creating a show structure of nodes, each node identifying a resource from a plurality of accessible resources;
without requiring user input, automatically accessing a plurality of said resources each of said resources identified by each of said nodes; and
displaying a content corresponding to each of said resources automatically in accordance with said show structure, wherein said step of creating further comprises the step of providing an interactively variable duration information, representing the duration within which a corresponding content to said resource is being displayed so as to enable a user to vary said duration.
The parties agree that the "show structure of nodes" relates to the automated presentation of content from internet resources. Both sides adopt constructions that define "show structure of nodes" as including a "path" that travels "through" the "nodes" in order to display or present "content." There are, however, four disputes of scope relating to the phrase. These are (1) whether the patentee disclaimed a "list of nodes" from the "show structure of nodes;" (2) whether the "show structure of nodes" necessarily specifies a "duration for which each node's content is to be displayed by default;" (3) whether the "show structure" itself must be construed as a "data structure;" and (4) whether the "path" of the "show structure of nodes" must be "sequenced." These proposed elements are discussed in tum.
(1) "Other than a list of nodes"
Defendants argue that the patentee disclaimed a "list of nodes" during prosecution. A patentee may limit the meaning of a claim term by making a clear and unmistakable disavowal of scope during prosecution. Viiv Healthcare UK Ltd. v. Lupin Ltd., 2012 WL 5839380, *4 (D. Del. 2012). This may occur where an applicant clearly characterizes an invention in order to overcome rejections based on prior art. Id. Prosecution disclaimer is not found where the file history is ambiguous. Id. Defendants argue that the patentee disclaimed "a list of nodes" from possible arrangements used to form "a show structure of nodes." In support, they rely on the patentee's June 2000 discussion of the "Braverman" prior art article in response to an examiner rejection:
Meanwhile, the Braverman reference discloses a simple slide show wherein a list of URLs are read and presented in succession as in a slide show. A special script file is employed that contains the list of the URLs and corresponding delay times. The script file that the slide show reads "is a simple ASCII text file, consisting of one command per line." Braverman, p. 2, line 1.
None of the references cited by the Examiner teach or suggest the present invention as claimed. For example, claim 1 of the present application relates to a method for displaying content corresponding to a show structure of nodes, wherein the delay time between the display of two consecutive nodes can be varied by the user in an interactive arrangement system.
(D.I. 135, Exh. J at 7). The patentee once again discussed the "Braverman" art in an April 2001 response:
None of the references cited by the Examiner teach or suggest the present invention as recited in claim 1. For instance, neither of the references teach or suggest the step of providing an interactively variable duration information, so as to enable a user to vary the duration that a resource is displayed to the user. Specifically, the present invention provides a system wherein the rate of transfer from one node to another in the show structure can be interactively varied and controlled by the user. Thus, a user can speed up or slow down the rate at which the consecutive resources are being displayed.
By contrast, there is no teaching or suggestion in Hauck or Braverman to provide a system wherein the rate of transfer from one node to the other can be interactively varied and controlled by the user.
(D.I. 135, Exh. Fat 6). The patentee distinguishes "Braverman" based on a distinct feature: the capability of the user to interact and thus vary the delay time between the display of two consecutive nodes. This does not disclaim a "list of nodes" from a "show structure of nodes." It is completely consistent with the patentee's distinction for the "show structure of nodes" to be arranged according to a "list of nodes" format, so long as the user may control the timing of the display of each node on the list. For this reason, there is no prosecution disclaimer based on the "Braverman" discussion, and the Court will not adopt Defendants' "other than a list of nodes" proposed element of the construction.
(2) "The duration for which each node's content is to be displayed by default"
The second dispute is whether the "show structure of nodes" must require "the duration for which each node's content is to be displayed by default." Defendants argue that this construction is a necessary to the function of the claims, as there would otherwise be no mechanism to ensure that the "show structure" moves from "node" to "node" along its "path." This can be understood as a limitation that requires the "nodes" to have a predetermined duration set to trigger the transitions between nodes. Robocast does not agree that this is an appropriate element of the construction, arguing that it is inconsistent with the specification's explicit definition of the term, is inconsistent with the language of the claims and the presumption of claim differentiation, and would read out preferred embodiments.
Robocast argues that the specification contains an explicit definition of "show structure of nodes, " and this definition has no durational requirement. The supposed definition follows: "A show structure is defined by one or more paths that are spanned through these nodes." '451 Patent at 3:4-6. It is true that a patentee may act as his own lexicographer, and does so when he clearly states any special definitions of the claim terms in the patent specification or file history. GlaxoSmithKline LLC v. Anchen Pharmaceuticals, Inc., 2012 WL 5594540 (D. Del. 2012). The Court, however, does not believe the patentee acted as his own lexicographer here, despite his use of the word "defined." A natural reading of the sentence most strongly suggests that the "[a] show structure is defined by" phrasing is used to describe important features of the "show structure, " but is not intended to communicate an explicit definition of the term itself. For example, the phrase "a person is defined by his actions" does not literally mean that the definition of "person" is "actions." The finding that the patentee did not intend a special definition is consistent with Robocast's own proposed construction, which does not adopt the supposed explicit definition in its entirety. If the patentee intended to provide an express definition, the supposed definition would not need to be modified or supplemented. See GlaxoSmithKline LLC, 2012 WL 5594540 at *4. That is not to say that the quotation is irrelevant. To the contrary, both sides agree that the "show structure" must comprise a "path" that travels through "nodes, " as indicated by the quotation. The claim construction analysis of "show structure of nodes, " however, does not end here.
Robocast next argues that the doctrine of claim differentiation is contrary to construing "show structure of nodes" with the proposed durational element. Robocast argues that while all five of the asserted independent claims include the step of"creating a show structure of nodes, " only claim 1 specifies the "step of creating further comprises the step of providing an interactively variable duration information, representing the duration within which a corresponding content to said resource is being displayed so as to enable a user to vary said duration." Robocast argues that the absence of any durational reference in the other four claims is strong evidence that no duration information is required. Robocast further argues that of these four remaining independent claims, three (claims 10, 22, and 37) have corresponding dependent claims (claims 11, 23, and 38) that add separate durational requirements.
The strength of the claim differentiation argument, however, is weakened by the presence of dependent claim 2 purporting to add a durational limitation that is supposedly not present in independent claim 1. Claim 2 adds the limitation, "wherein said step of creating [a show structure of nodes] further comprises the step of providing a duration information, representing the duration within which a corresponding content to said resource is being displayed." Claim 1 itself, however, already has the limitation of "wherein said step of creating further comprises the step of providing an interactively variable duration information." This makes clear that "duration information, " which is the only additional limitation provided by claim 2, is already present in claim 1. The patentee's addition of a durational limitation via a dependent claim to an independent claim where one is clearly already present lessens the force of Robocast's claim differentiation argument. The premise of claim differentiation is that the inventor would not add a redundant dependent claim. That is, however, what the inventor did here. Thus, that he would do it in other claims is also plausible.
Moreover, all of the independent claims contain the limitation that the content "automatically" be displayed or delivered to the user, and Robocast provides no satisfactory answer as to how the "show structure" would accomplish this absent a durational component associated with each "node." A review of the specification reveals that the patentee impliedly defined a "show structure of nodes" to require a durational element. Robocast warns that employing the specification to limit the claims would be inconsistent with Phillips v. A WH Corporation, which states:
[T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.
415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane). The Court finds instructive various passages in the specification. These passages are not "very specific embodiments of the invention." They are instead definitive statements that describe the basic components of the "show structure of nodes, " a term with no well accepted meaning in the art of computer science and no explicit definition. The lone fact that a description is preceded by "in accordance with one embodiment of the invention" is not a reason to ignore that description. For example, the "Summary of the Invention" section begins, "In accordance with one embodiment of the invention, a presentation software is employed in a web browser software." Id. at 2:51-53. This is the polar opposite of a "very specific embodiment" that the Federal Circuit has instructed against employing to limit claim terms. Despite the self-styling as "one embodiment of the invention, " there is no tenable argument that "presentation software  employed in a web browser software" is not applicable to each claim. The very next sentence describes the "show structure" as a "presentation of a series of resources" that is "commenced" after a "triggering event." Id. at 2:53-55. The word "show" itself implies a presentation with a beginning and an end, i.e., a presentation with a durational component. This is supported by the ensuing acknowledgment, "The presentation of all resources may be adjusted for different pacing attributes of individual users." Id. at 3:09-11. The use of the word "pacing" further implies that timing is intrinsic to the "show structure" presentation. Further, this sentence appears within a very general description of the invention, suggesting it is strong evidence for defining the scope of "show structure of nodes."
Another piece of intrinsic evidence suggesting that the durational aspect is limiting appears within the "Field of the Invention" paragraph: "This invention relates generally to computer networks, and specifically to a method of sequencing and scheduling web pages, via a suite of software applications." Id. at 1: 16-19. The "Abstract" section likewise describes "[a] method of sequencing and scheduling web resources, via a software application that collects URLs and feeds them to a Web browser, so that the amount of clicks and decisions are reduced when browsing the Internet." The "scheduling and sequencing" of web pages strongly suggests they will be displayed according to some timing arrangement. Finally, the description of the "node" of the "show structure" references an "indication of the duration" consistent with the above quotations: "Each node in the structure includes both an address from which the information may be accessed and an indication of the duration for which the content will be presented." Id. at 3:26-29. All of this indicates that a durational component is fundamental to the "show structure of nodes."
Robocast argues that adopting the durational requirement would read out a preferred embodiment of the invention. Specifically, Robocast points to Figure 2C and its accompanying description. Figure 2C follows:
The parties agree that Figure 2C is representative of claim 37, which claims a "multidimensional show structure of nodes" as follows:
A method for displaying on a user's computer, content derived from a plurality of resources in an organized ...