Ryan P. Newell, Esq., Connolly Gallagher LLP, Wilmington, DE; Benjamin T. Wang, Esq. (argued), Russ August & Kabat, Los Angeles, CA; Marc A. Fenster, Esq., Russ August & Kabat, Los Angeles, CA, attorneys for Plaintiff IpLearn, LLC.
Mary B. Graham, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Andrew B. Grossman, Esq. (argued), WilmerHale, Los Angeles, CA; Peter O'Rourke, Esq., Oracle Corporation, Redwood Shores, CA, attorneys for Defendant Oracle Corporation.
Jack B. Blumenfeld, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Joseph A. Loy, Esq. (argued), Kirkland & Ellis LLP, New York, NY; Mangesh Kulkarni, Esq. (argued), Kirkland & Ellis LLP, New York, NY, attorneys for Defendant K12, Inc.
Eve H. Ormerod, Esq., Greenberg Traurig, LLP, Wilmington, DE; Scott J. Bomstein, Esq. (argued), Greenberg Traurig, LLP, New York, NY; Allan A. Kassenoff, Esq., Greenberg Traurig, LLP, New York, NY, attorneys for Defendant Blackboard, Inc.
Phillip A. Rovner, Esq., Potter Anderson Corroon LLP, Wilmington, DE, attorney for Defendant Ultimate Software Group Inc.
RICHARD G. ANDREWS, District Judge.
Pending before this Court is the issue of claim construction of various disputed terms found in U.S. Patent No. 6, 126, 448, U.S. Patent No. 6, 213, 780, U.S. Patent No. 6, 685, 478, U.S. Patent No. 6, 398, 556, U.S. Patent No. 6, 688, 888, and U.S. Patent No. RE 38, 432.
On September 15, 2011, IpLeam, LLC ("Plaintiff') filed a patent infringement action (No. 11-825 D.I. 1) against Oracle Corporation, The Ultimate Software Group Inc., and other defendants who are no longer parties to this action. Plaintiff also filed suit against Blackboard, Inc. on September 27, 2011 (No. 11-876 D.I. 1) and against K12, Inc. on October 26, 2011 (No. 11-1026 D.I. 1). The Court has considered the Parties' Amended Joint Claim Construction Briefs (No. 11-825 D.I. 363, No. 11-876 D.I. 101, No. 11-1026 D.I. 89). The Court held oral argument on a portion of the disputed claim terms on September 30, 2013. (No. 11-825 D.I. 388, No. 11-876 D.I. 106, No. 11-1026 D.I. 105).
II. 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 the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks omitted). "[T]here is no magic formula or catechism for conducting claim construction.' Instead, the court is free to attach the appropriate weight to appropriate sources in light of the statutes and policies that inform patent law.'" SoftView LLC v. Apple Inc., 2013 WL 4758195 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324). When construing patent claims, a matter of law, a court considers the literal language of the claim, the patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-80 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). 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, 415 F.3d at 1315 (internal quotations and citations omitted).
Furthermore, "the words of a claim are generally given their ordinary and customary meaning... [which 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." Phillips, 415 F.3d at 1312-13 (internal citations and quotation marks omitted). "[T]he ordinary meaning of a claim term is its meaning to [an] ordinary artisan after reading the entire patent." Id. at 1321 (internal quotation marks omitted). "In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. (internal citations omitted).
A court may consider extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises, " in order to assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art and how the invention works. Id at 1317-19 (internal quotation marks and citations omitted). However, extrinsic evidence is less reliable and less useful in claim construction than the patent and its prosecution history. Id.
Finally, "[a] claim construction is persuasive, not because it follows a certain rule, but because it defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would exclude the inventor's device is rarely the correct interpretation." Osram GmbH v. Int'l Trade Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (internal quotation marks and citation omitted).
III. CONSTRUCTION OF DISPUTED TERMS
A. "computer-aided/computer implemented"
1. Plaintiff's proposed construction: plain and ordinary meaning.
2. Defendants' proposed construction: "performed entirely by a computer."
3. Court's Construction: "each step of the method is performed by a computer."
The Plaintiff argues that the phrase should not be construed because its meaning is plain. (No. 11-876 D.I. 101 at 77). In response, the Defendants contend that because the co-inventor did not know what the terms meant, that they require construction. (No. 11-876 D.I. 101 at 7). The Defendants also point out that the patents explain that it is the computer, not a human being, who is doing the teaching. (No. 11-876 D.I. 101 at 8).
The Court finds that the patents require that a computer performs the method. The patents clearly explain that the invention is "applicable to any subject that can be taught by a computer." (Col. 1 lines 66-67 of '208). However, while the recited method steps must be performed by a computer, there may be some human involvement. Indeed, certain steps specifically describe human involvement, for instance where "the method allows the person to search." (Claim 9 of '888). Furthermore, as the claims use the term "comprising, " additional steps may be performed without the use of a computer.
1. Plaintiff's construction: plain and ordinary meaning.
2. Defendants' construction: "pre-stored relationships among line items and subject areas that can be applied to test results."
3. Court's construction: plain and ordinary meaning. The Plaintiff again argues that the phrase should not be construed because its meaning is plain. (No. 11-876 D.I. 101 at 77). Defendants argue that rules are limited to a certain type of relationship rules that define the relationship among the line items and the subject. (No. 11-876 D.I. 101 at 51).
Both parties agree that the patent discloses multiple types of rules, such as "relationship rules" and "analysis rules." (No. 11-876 D.I. 101 at 51). Limiting the term "rules" to a subset would improperly import the specification into the claims. Based on the specification and the context in which "rules" is used in the claims, there is no ambiguity which would require the Court to further construe this term. Therefore, "rules" has its plain and ordinary meaning.
C. "generating materials for learning the subject"
1. Plaintiff's construction: plain and ordinary meaning.
2. Defendants' construction: "creating learning materials specifically tailored for a particular ...