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Sound View Innovations, LLC v. Facebook, Inc.

United States District Court, D. Delaware

May 19, 2017

Sound View Innovations, LLC, Plaintiff,
Facebook, Inc., Defendant.

          Memorandum Opinion John C. Phillips, Jr., Esq., Megan C. Haney, Esq., Phillips, Goldman, McLaughlin & Hall, P.A., Wilmington, Del.; Alan S. Kellman, Esq. (argued), Tamir Packin, Esq. (argued), Jason Berrebi, Esq., Edward B. Geist, Esq. (argued), Tom BenGera, Esq., Wesley L. White, Esq., Desmarais LLP, New York, N.Y., attorneys for Plaintiff.

          Karen Jacobs, Esq., Jack B. Blumenfeld, Esq., Morris, Nicholas, Arsht & Tunnell LLP, Wilmington, Del.; Heidi L. Keefe, Esq. (argued), Phillip E. Morton, Esq. (argued), Andrew C. Mace, Esq. (argued), Cooley LLP, Palo Alto, Cal., attorneys for Defendant.


          Andrews, U.S. District Judge.

         Plaintiff Sound View and Defendant Facebook ask the Court to construe several terms from U.S. Patents No. 5, 991, 845; No. 6, 125, 371; No. 6, 732, 181; No. 7, 366, 786; No. 7, 412, 486; and No. 8, 135, 860. The '181 patent and '786 patent share a common specification; otherwise, the patents are unrelated. The parties submitted a joint claim construction brief that included fifty-four terms to be construed. (D.I. 82). I ordered the parties to narrow the field of terms for hearing (D.I. 85) and the parties submitted a letter requesting a hearing on ten terms (D.I. 88). I held a Markman hearing on March 31, 2017 on the ten terms. (D.I. 89). This opinion addresses only those terms.

         I. 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). Claim construction aids the factfinder in determining the scope of those claims.

         A. General Principles of Claim Construction

         '"[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, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in original). When construing patent claims, 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 quotation marks omitted).

         "[T]he 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." Id. at 1312-13 (citations and internal 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.

         When a court relies solely upon the intrinsic evidence-the patent claims, the specification, and the prosecution history-the court's construction is a determination of law. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015). The court may also make factual findings based upon consideration of extrinsic evidence, which "consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19 (internal quotation marks omitted). Extrinsic evidence may assist the court in understanding the underlying technology, the meaning of terms to one skilled in the art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less useful in claim construction than the patent and its prosecution history. Id.

         "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) (citation and internal quotation marks omitted).

         B. Means-Plus-Function Claims

         While only two disputed terms use the word "means, " Defendant argues that several other terms are means-plus-function, invoking 35 U.S.C. § 112(f). For terms not phrased with "means, " there is a rebuttable presumption that those terms are not means-plus-function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). "This presumption can collapse when a limitation lacking the term 'means' nonetheless relies on functional terms rather than structure or material to describe performance of the claimed function." Apex Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1372 (Fed. Cir. 2003); see also Williamson, 792 F.3d at 1348 (Form is not "blindly elevated" over substance. Instead, "the essential inquiry is... whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure."). Defendant bears the burden of overcoming the presumption by a preponderance of the evidence. Adv. Ground Info. Sys. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir. 2016).

         "Construing a means-plus-function claim term is a two-step process." Williamson, 792 F.3d at 1351. First, I must identify the claimed function. Id. Second, I must discern and evaluate the corresponding structure. Id. at 1351-52.

         The disclosure of a corresponding structure is a requirement of means-plus-function claiming. Structure corresponds to a claimed function if "the intrinsic evidence clearly links or associates that structure to the function recited in the claim." Id. at 1352. "Even if the specification discloses corresponding structure, the disclosure must be [adequate] to achieve the claimed function." Id.

         For software patents claiming a function that a general purpose computer cannot perform, the specification must disclose an algorithm. Id. "The algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Id.

         If a claim invoking § 112(f) fails to disclose an adequate corresponding structure, the claim is indefinite. Id. at 1352; In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Defendant bears the burden of proving the claim is indefinite because of inadequate disclosure by clear and convincing evidence. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).

         II. Construction Of Disputed Terms

         1. "spin, " "spinning"

a. Plaintiff s proposed construction: "wait, " "waiting"
b. Defendant's proposed construction: "repeatedly trying to acquire a lock in a tight loop; i.e., busy waiting"
c. Court's construction: plain and ordinary meaning

         The parties dispute the proper construction of "spin" and "spinning" as used in claim 13 of U.S. Patent No. 5, 991, 845. Claim 13 reads:

13. A method for providing multiple processes with mutually exclusive access to a shared resource in a system having a lock associated with the shared resource, possession of the lock signifying exclusive access to the shared resource, wherein processes desiring access to the shared resource spin on the lock until the lock is acquired, the method comprising the steps of:
maintaining a linked queue structure of data records corresponding to a queue of processes including processes spinning on the lock and a process possessing the lock, one data record per process; transferring the lock from the process possessing the lock to a process next in the queue;
conducting a cleanup process if one or more processes in the queue have terminated, said cleanup process removing said one or more terminated processes from the queue and reassembling the linked queue structure.

('845 Patent, col. 19, ll. 1-17) (emphasis added).

         Both parties argue that the specification defines the term "spinning." Plaintiff argues the specification defines "spin" or "spinning" to mean "wait" or "waiting." Defendant argues the specification defines "spinning" to be "repeatedly trying to acquire a lock in a tight loop; i.e., busy waiting." Both parties agree that "spinning" is waiting, but the core dispute is whether it encompasses only busy-waiting or also non-busy waiting. Both parties have a point.

         The dispute focuses on a particular passage in the specification:

If the lock is busy, the processor attempting to acquire the lock can either relinquish its desire to obtain the lock so it can do other work, or it can wait or "spin" until the lock is released. In particular, an implementation in which a process repeatedly tries to acquire the lock in a tight loop is called a spin lock and the activity or retrying is known as "busy waiting" or simply "spinning".

('845 Patent, col. 1, ll. 51-58).

         Plaintiff argues the first sentence defines "spinning" as "waiting." Plaintiff is correct that the specification equates "spinning" with "waiting" here and throughout.[1]

         Defendant argues the patent defines "spinning" as "busy waiting" or as "repeatedly trying to acquire the lock in a tight loop." Defendant relies on the second sentence of the above excerpt from the specification. Defendant is partially correct. This part of the specification does couple the terms "spinning" and "busy waiting." More specifically, it defines "busy waiting" and "repeatedly trying to acquire the lock" as "spinning."[2]

         Neither Plaintiffs nor Defendant's insights, however, resolve the actual dispute, which is what range of waiting is connoted by the term "spinning." That "spinning" is "waiting" does not mean that "spinning" is all types of waiting. That "busy waiting" is "spinning" does not mean that "spinning" is (and only is) "busy waiting." Thus, I reject both Plaintiffs and Defendant's argument that the specification defines "spinning" in a relevant sense.

         Having rejected the position that the specification defines "spinning, " I am left with the conclusion that "spinning" is used in its plain and ordinary sense. The parties have offered competing expert opinions and references to prior art to support conflicting positions on what the plain and ordinary meaning of "spinning" is. Thus, I decline to reach a conclusion today and will hold a hearing to take expert testimony on the meaning of "spinning" to a person of ordinary skill in the art.

         2. "an aging controller that monitors a measurable characteristic of said memory and deletes ones of said multiple versions of said ones of said data records in response to said time stamp and said measurable characteristic thereby to increase a capacity of said memory"

a. Plaintiff's proposed construction: no construction necessary
b. Defendant's proposed construction: means-plus-function, indefinite
c. Court's construction: no construction necessary

         The parties dispute whether "controller" is a functional term, in particular, as used in the term "aging controller..." in claim 1 of U.S. Patent No. 6, 125, 371. Claim 1 reads:

         1. A processing system for use with a database of data records, said database stored in a memory, comprising:

a time stamping controller that assigns a time stamp to transactions to be performed on said database;
a versioning controller that creates multiple versions of ones of said data records affected by said transactions that are update transactions; and
an aging controller that monitors a measurable characteristic of said memory and deletes ones of said multiple versions of said ones of said data records in response to said time stamp and said measurable characteristic thereby to increase a capacity of said memory.

('371 Patent, col. 9, ll. 9-21) (emphasis added).

         Because this term does not use "means, " I start with the presumption that it is not subject to § 112(f). Defendant bears the burden of overcoming that presumption. It has failed to do so.

         Defendant argues that "controller" is a nonce word and that a person of ordinary skill in the art would recognize a "controller" by its function, not as structure; thus, the term invokes § 112(f). Defendant pounces on the functional nature of how the class of structures known as "controllers" is defined.

         Defendant's argument primarily relies on dictionaries. It cites a dictionary that states a "controller" is, "[a]s silly as it sounds, something that controls something else." Dan Gookin & Wallace Wang, Illustrated Computer Dictionary for Dummies (2d ed. 1995). That dictionary, however, goes on to describe specific controllers. Id. For example, it explains that "[a] hard disk controller is the circuitry that controls the hard drive, connecting it to the computer." Id. I also reviewed the other cited dictionary cited by Defendant (D.I. 83-1 Ex. 12), and it does not compel a finding that "controller" is a nonce term that lacks structure, nor does Defendant's expert (D.I. 83-1 Ex. 15 at ¶¶ 52-54), whose assertions mainly interpret the cited dictionaries and are countered by Plaintiffs expert (D.I. 83-1 Ex. X at 34-38).

         "Controller" may be a class of structures, rather than one specific structure, and may be defined with functional terms, but that does not make it means-plus-function. See Personalized Media u. Int'l Trade Comm'n,161 F.3d 696, 705 (Fed. Cir. 1998) ("[N]either the fact that a 'detector' is defined in terms of its function, nor the fact that the term 'detector' does not connote a precise ...

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