United States District Court, D. Delaware
Ryan P. Newell, Esq., Connolly Gallagher LLP, Wilmington, DE; Marc A. Fenster, Esq. (argued), Russ August & Kabat, Los Angeles, CA; Benjamin T. Wang, Esq. (argued), Russ August & Kabat, Los Angeles, CA, attorneys for Plaintiff IpLeam, LLC.
Mary B. Graham, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Mark D. Selwyn, Esq. (argued), WilmerHale, Palo Alto, CA; Andrew B. Grossman, Esq., WilmerHale, Los Angeles, CA; Peter O'Rourke, Esq., Oracle Corporation, Redwood Shores, CA, attorneys for Defendant Oracle Corporation.
Eve H. Ormerod, Esq., Greenberg Traurig, LLP, Wilmington, DE; Joshua L. Raskin, Esq, (argued), Greenberg Traurig, LLP, New York, NY; Allan A. Kassenoff, Esq (argued), Greenberg Traurig, LLP, New York, NY; Scott J. Bomstein, Esq., Greenberg Traurig, LLP, New York, NY; Julie P. Bookbinder, Esq. (argued), 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, IpLearn, 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). A second day of oral argument was held on October 24, 2013. (No. 11-825 D.I. 413, No. 11-876 D.I. 114, No. 11-1026 D.I. 118).
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.'" Soft View 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 131 7-19 (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. " company documents "
1. Plaintiff's proposed construction: plain and ordinary meaning.
2. Defendants' proposed construction: "documents used by employees to perform a job in the company."
3. Court's Construction: "documents in the possession of the company."
The Plaintiff argues that the phrase should not be construed because its meaning is plain. (No. 11-825 D.I. 363 at 4). Defendants argue that the term should be limited to those documents used to perform a job in the company, as the specification describes documents such as "letters written... by the company's secretaries" (448 at 7:39-44), "the template... for the company's annual report" (448 at 7:54-57), and "a design of a building" (448 at 8:35-38). Because these documents may be used by employees to perform a job, Defendants argue that the term should be limited to this construction (No. 11-825 D.I. 363 at 5).
The Court sees no reason to limit the term "company documents" to such a narrow construction. There is nothing in the claims that requires any limitation. While employees indeed tend to use company documents to perform their jobs, company documents could also include training materials, third-party materials, and other materials. Accordingly, the Court's construction adheres to the plain meaning, which is "documents in the possession of the company."
B. "searching at least some of the documents" I "at least some of the documents are searched"
1. Plaintiff's construction: plain and ordinary meaning.
2. Defendants' construction: "querying a database of company documents a database of company documents is queried."
3. Court's construction: plain and ordinary meaning.
The Plaintiff argues that the phrase should not be construed because its meaning is plain. (No. 11-825 D.I. 363 at 10). Defendants argue that their construction is consistent with the only embodiment described in the specification. (No. 11-825 D.I. 363 at 11). Because it is clear from the specification and the Court's previous claim constructions that the search is performed by a computer, the Court sees no need to replace the language of the claims. Substituting the term "querying" for "searching" will not help the jury. Furthermore, documents need not exist in a database, as the specification describes an embodiment where "the apparatus can access through a network the learning materials" (448 at 7:21-23), as an alternative to the learning database embodiment.
C. " institute user pays to access materials regarding the at least one learning user" I "pays to access materials "
1. Plaintiff's construction: "an organization or a person within an organization, which has an interest in information relating to at least one individual user, pays a fee to access personal material regarding the at least one individual user."
2. Defendants' construction: "an organization pays a fee specifically for access to personal material regarding at least one individual user."
3. Court's construction: "pays a fee to access personal material regarding the at least one learning user."
Plaintiff argues that the Court should adopt the Saba court's construction. (No. 11-876 D.I. 101 at 70). Defendants argue that the construction should also include a limitation that the payment is "specifically" for access to personal materials because the intent of the patent is for institute users to get access to personal information. ld. At the outset, the Court notes that the terms "institute user" and "learning user" have been previously construed as "an organization or a representative of an organization that has an interest in accessing information relating to a learning user" (No. 11-825 D.I. 409 at 8), and a "current or potential employee or customer of an institute user who uses the system/method to access learning materials inexpensively." (No. 11-825 D.I. 409 at 6). Therefore, the term being construed here is "pays to access materials regarding the at least one learning user."
While the Court understands Defendants' argument, and indeed it appears that the intent of the patent is to provide access to personal information, limiting the payments made "specifically" to "access" the personal information would improperly import the specification into the claims. The institute user must "pay to access materials regarding the at least one learning user" and is "permit[ed]... to access materials regarding at least one learning user." (Claim 8 of 556). While the claim implies that the subjective intent of the institute user is to access personal materials, the claim is not that limiting. A payment may give the right of access. The right of access may or may not be exercised. Or the payment may give rights to multiple things, only one of which is access. Therefore, the payment need not be "specifically" for accessing personal materials.
D. "ascertaining materials for a learning user to learn"
1. Plaintiff's construction: plain and ordinary meaning.
2. Defendants' construction: "applying a set of rules to identify and select a set of learning ...