KEITHLEY v. HOMESTORE.COM, INC.
No. C 03-4447 SI.
636 F.Supp.2d 978 (2008)
Kevin L. KEITHLEY and Tren Technologies Holdings, LLC, Plaintiffs, v. The HOMESTORE.COM, INC., et al., Defendants.
United States District Court, N.D. California.
November 19, 2008.
Attorney(s) appearing for the Case
Scott Richard Mosko, Robert Francis McCauley, Finnegan, Henderson, Farabow, Garrett &, Stanford Research Park, Palo Alto, CA, for Plaintiffs.Bruce J. Rose, Douglas R. Wilner, Jitendra Malik, Alston & Bird LLP, Benjamin S. Pleune, Charlotte, NC, Jennifer L. Shoda, Luther Kent Orton, Snyder Miller & Orton LLP, San Francisco, CA, Jud Graves, Alston & Bird LLP, Atlanta, GA, for Defendants.
ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT AS TO NONINFRINGEMENT AND INVALIDITY BASED ON INDEFINITENESS; DENYING OTHER MOTIONS AS MOOT
SUSAN ILLSTON, District Judge.
On November 14, 2008, the Court heard argument on various motions for summary judgment filed by defendants. For the reasons set forth below, the Court GRANTS defendants' motion as to noninfringement and invalidity based on indefiniteness. In light of the Court's resolution of that motion, the Court DENIES AS MOOT defendants' motion to amend the answer, and defendants' other motions for summary judgment.
BACKGROUND
The '025 patent, titled "Apparatus and Method for Interactive Communication for Tracking and Viewing Data," issued from a "continuation" patent application of an earlier application filed in October of 1993. The patent is generally directed to use of an information processing system for acquiring and displaying information, and describes and claims methods for acquiring and displaying real estate and property-related information (Claims 1 and 3) and a related system for tracking such information (Claim 5). Pleune Decl. Ex. 1 ('025 patent).
Plaintiffs filed suit in 2003, alleging that numerous websites operated by defendant Homestore.com (now Move, Inc.) ("Move"), infringe claims of the '025 patent. Defendant's websites are devoted almost entirely to home and real estate-related content, and include www.realtor.com, www.move.com, www.homestore.com, www.homebuilder.com, www.rentnet.com, www.springstreet.com, and www.seniorhousingnet.net. Mahnken Decl. ¶ 2. Plaintiffs have also sued the National Association of Realtors ("NAR") and the National Association of Homebuilders of the United States ("NAHB") by virtue of their involvement with Move in the www.realtor.com and www.homebuilder.com websites, respectively.
After this suit was filed, defendants instituted an ex parte reexamination of the '025 patent, submitting prior art that they believed showed that the PTO should never have issued the '025 patent. The PTO initially disallowed claims 1-5, but after receiving further written comments from plaintiff Keithley, on March 20, 2007, the PTO issued a reexamination certificate that confirmed the patentability of original claims 1-9 without amendment and deemed new dependent claims 10-15 to also be patentable over the prior art. Pleune Decl. Ex. 2. In an order filed September 10, 2007, Judge Jenkins construed 10 terms taken from Claims 1, 3 and 5.
DISCUSSION
Defendants have moved for summary judgment of noninfringement as to Claims 1 and 3, and invalidity based on indefiniteness as to Claim 5.
[636 F.Supp.2d 980]
A. Claim 1
Claim 1 provides, in its entirety:
'025 patent col. 14, ll. 34-65.
Defendants contend that step (e) of method Claim 1 describes, at least in part, an action to be taken by first end users acting independently in accessing the system. Defendants argue that "accessing data files by said first end users" means that first end users access data files, and that because this clause requires action by other parties, defendants can only be held liable if plaintiffs can show that the circumstances meet the requirements for a finding of joint infringement. Plaintiffs respond that Judge Jenkins' claim construction of step (e) requires a finding that this step, in its entirety, relates only to the system passively collecting data, and therefore does not require any action by first end users.
In construing step (e) of Claim 1, Judge Jenkins did not construe "accessing data files by said first end users." Judge Jenkins did construe the final clause in step (e)—"said end user inquiries being the retrieving and viewing of text and/or graphic data from a database"—to mean "said end user inquiries being requests for information that are passively monitored." Claim Construction Order at 5-8, 36. Plaintiffs rely on the following language from the Claim Construction Order:
Order at 7-8.
Defendants respond that Judge Jenkins was only construing, and thus only discussing, the final clause in step 1(e) in its order and in no way indicated that the initial clause in 1(e) did not require action by first end users. Defendants argue that Judge Jenkins was distinguishing between "active" and "passive" monitoring of the first end users' actions when accessing data files ("Keithley's express clarification that the claim term at issue [the final clause of 1(e)] focuses on `watching the actions of the end user' and monitoring `the behavior of the first end user as they surf through the database.'" Id. at 7.) Defendants argue that these findings are completely consistent with the plain language of first end users accessing data files, and that in fact they require it because if first end users are not accessing data files, there is nothing for the system to monitor—actively or passively.
The Court agrees with defendants that step (e) requires action by first end users, in addition to passive monitoring by the system of those actions. Step 1(e) introduces the step of "accessing data files by said first end users," then further defines the accessing of the data files to be "a plurality of inquiries from individual first end users," which reiterates that the action is taken by first end users. The final clause in 1(e), which is the one construed by the Court, then further defines the end user inquiries, but does nothing to alter the fact established by the first two clauses that the end users make the inquiries,which is in turn how they access the files. Put differently, defining the inquiries does not change the fact that the inquiries must be made by the first end users; these inquiries are how the first end users access the data files, and they are the actions that the system passively monitors.
Defendants contend that if the Court finds that step 1(e) requires action by first end users, defendants do not infringe Claim 1 because there is no evidence to support a finding of "joint infringement." "[D]irect infringement requires a single party to perform every step of a claimed method." Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 , 1329 (Fed.Cir.2008) (citing BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 , 1380 (Fed.Cir.2007), and 35 U.S.C. § 271(a)). "[W]here the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises `control or direction' over the entire process such that every step is attributable to the controlling party, i.e., the `mastermind.'" Id. "At the other end of this multi-party spectrum, mere `arms-length' cooperation will not give rise to direct infringement by any party." Id.; see also BMC, 498 F.3d at 1381 ("The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party.").
In Muniauction, the Federal Circuit reversed a district court's denial of a motion for judgment as a matter of law following a jury verdict of infringement. The patent in Muniauction related to municipal bond auctions conducted over an electronic network, such as the Internet, and it was undisputed that no single party performed every step of the asserted claims. Id. at 1328-29. For example, at least one claimed step was performed by the bidders
[636 F.Supp.2d 982]
In BMC, the Federal Circuit affirmed a summary judgment of noninfringement where the plaintiff's evidence was insufficient to create a genuine issue of material fact as to whether the defendant controlled or directed the activity of third party debit networks. The patent in BMC claimed a method for processing debit transactions without a personal identification number and required the combined actions of multiple actors, including the payee's agent, a remote payment network, and the card-issuing financial institutions. 498 F.3d at 1375. The plaintiff proffered evidence to establish some relationship between the defendant (which processed financial transactions for clients as a third party) and the debit networks, such as the fact that the defendant provided data including debit card numbers, names, amounts of purchase, etc., to the debit networks. However, the court held that there was no genuine issue of material fact as to whether the defendant controlled or directed the activity of the debit networks because there was no evidence that the defendant also provided instructions or directions regarding the use of that data. Id. at 1381.
Here, the evidence is similar to that presented in Muniauction and BMC, and therefore is insufficient to raise a triable issue of fact regarding defendants' direction or control over the first end user consumers. Defendants have submitted the declaration of Tracy Mahnken, the Senior Vice President of Move. Mahnken Decl. (Docket No. 734). Mahnken describes Move's websites, and the relationship between the websites and users as follows:
Mahnken Decl. ¶¶ 3, 5-6, 8-13, 15.
Plaintiffs emphasize the following facts to contend that there are at least disputed issues of fact regarding the level of direction and control that Move exercises over the users. First, plaintiffs note that the "Terms and Conditions" on the websites state that it is "a binding contract between Move and you [the user]" that expressly grants users "the right to access Move's system." Id. at Ex. 1; see also id. ("Move grants you [the user] a limited license to access and use the Move Network and Content. . . ."). Plaintiffs also argue that Move limits and controls what users of Move's system can access by routing users to certain Web pages that only allow certain types of searches for real estate information and providing access to certain information (e.g., newly constructed homes) only if a real estate agent or builder has paid Move to provide users to access that "enhanced" information. Herbst Decl. Ex. 3 (Mahnken depo. at 135-38 (testifying that for a new home to be part of the group of all new homes that are searched at the Move website, someone must pay Move to have it included in the search pool)) (Docket No. 795). Plaintiffs also emphasize the fact that Move purposefully grants users access to its content so that it can then monitor the users' actions, tracking what files the users (registered or not) access via requests for information. Id. at Ex. 1 (Tygar Expert Report at 73-78).
Drawing all inferences in favor of plaintiffs, the Court finds that plaintiffs have not raised a triable issue of fact that Move "controls or directs" the users such that it is appropriate to hold Move vicariously liable for the acts of the users. In Muniauction, the plaintiff argued that the defendants directed and controlled the bidders by the following: (1) requiring bidders to install and configure software, including entry of a preassigned bidder ID and password; (2) connecting bidders and issuers to a server maintained by defendant; bidders used defendants' system to calculate and prepare bids for submission during the auction, transmitted those bids to defendants' server, and then financial advisers and issuers accessed the servers after conclusion of the auction to view the bid results online; (3) instructing bidders what to do throughout the auction process using detailed screen shots and written explanations; and (4) exercising contractual control over bidders by licensing the software, requiring that all bids "shall be irrevocable and shall constitute valid offers without a signature by an officer of the Licensee," and reserving the right to "modify or terminate access to BIDCOMP or PARITY at any time in the sole exercise of its discretion." Orton Decl. Ex. 5 at 12-13 (Brief of Plaintiff-Appellee Muniauction
[636 F.Supp.2d 985]
Thus, as in Muniauction, Move allows users access to its websites, but does not cause those users to access any particular information. Move's "Terms and Conditions" are analogous to the contracts in Muniauction which the Federal Circuit found insufficient. Indeed, the level of control exerted in Muniauction was arguably greater in that there the defendants required bidders to install and configure software in order to access the defendants' server, and all bidders were assigned a password. At oral argument, plaintiffs attempted to distinguish Muniauction by contending that the contracts in Muniauctiondid not specifically address the claim at issue, namely the "inputting" by the bidders. However, that is not a distinction drawn by the Muniauction court. Instead, the court reiterated that "the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method." Muniauction, 532 F.3d at 1330. The Court concludes that Move does not perform every step of Claim 1, nor does Move have another party perform steps on its behalf. Further, plaintiffs have not articulated any theory under which Move is vicariously liable for the actions of the users of Move's websites. Accordingly, the Court concludes that defendants do not infringe Claim 1.
B. Claim 3
Defendants move for summary judgment of noninfringement of Claim 3 on the ground that Claim 3 provides consumer first end users with differing levels of access to information depending on the users' access codes. Defendants argue that there is no infringement because the extent of information available to all consumers on Move's websites is the same and is not determined by an "access code."
Claim 3 provides, in its entirety:
'025 patent at col. 15, ll. 4-35.
Dependent Claim 4,1 provides in its entirety:
'025 patent at col. 15, ll. 36-57.
Judge Jenkins construed the phrase "said end user inquiries being the retrieving and viewing of text and/or graphic data from a database" in step (f) of this claim (as in step (e) of Claim 1) to mean "said end user inquiries being requests for information that are passively monitored." Claim Construction Order at 5-8, 36. The Court also construed the phrase "compiling and merging a plurality of first end user inquiries" in step (g) of this claim to mean "collecting and combining the results of first end user inquiries." Id. at 12-15, 36. The Court did not construe the phrase "the extent of information available to said end users being determined by said users' access code" in step (d) of Claim 3.
Defendants contend that the reference to "said end users" in step (d) of Claim 3 refers only to persons acting as "first end users," in accessing property related information, even if those users also happen to be real estate agents. Defendants note that the specification distinguishes in various ways between "End Users" and "Real Estate Agents." An "End User" is defined as follows:
'025 patent, col. 5, ll. 5-12.
The specification defines "Real Estate Companies and Agents" as follows:
[636 F.Supp.2d 987]
Defendants argue that a real estate agent might sometimes act as an "End User" or "first end user"—like someone "looking to lease and/or purchase real property"—in requesting and receiving property information. Defendants argue that when real estate agents are acting as End Users, they would conceivably fall within the reach of Claim 3. They contend, however, that insofar as real estate agents are engaged in activity other than requesting and receiving property information as End Users, they are acting as Real Estate Agents, not as End Users within the meaning of this claim, and do not fall within the reach of Claim 3. Defendants argue that it is clear that Claim 3 does not encompass the activities of real estate agents as Real Estate Agents because dependent Claim 4 extends the methods of Claim 3 to additional steps performed by real estate agents.
Thus, defendants contend that Claim 3 requires a method that distinguishes between information that is available to end users based on different access codes held by different end users, while Claim 4 requires a method that further distinguishes the information that is available to real estate agents based on different access codes held by different agents. Defendants argue that Move's websites do not infringe claim 3 because every consumer on Move's websites has access to the same information about the properties listed there. Defendants note that there are no access codes assigned to Consumers, Mahnken Decl. ¶ 14, and although a Consumer can register, registration simply affords the Consumer the ability to save and return to searches conducted and listings identified: the overall information available to registered and unregistered users is identical. Id. ¶¶ 9-14.
Plaintiffs argue that defendants are improperly imposing limitations on Claim 3 that are not contained in the claim language. Plaintiffs contend that element 3(d) only requires that the "request" from the end user "relat[e] to the end users' information needs" and there is no justification for excluding real estate agents from that claim. Plaintiffs assert that including real estate agents as end users in Claim 3 does not render Claim 4 superfluous because plain language of Claim 4 indicates that the "demographics pattern database" is "further" generated and updated to reflect the passively monitored "agent" information requests. However, as defendants persuasively argue, if agents (as agents) were a subset of end users in Claim 3, the demographics pattern database of Claim 3 would already encompass passively monitored real estate agent information requests, and thus Claim 4 would not add anything to the database.
Plaintiffs also contend that even if the Court agrees that Claim 3 does not include Real Estate Agents, defendants' websites still infringe Claim 3—or at least there are disputes of fact sufficient to defeat summary judgment—because registered users can access saved listings, saved searches and other relevant links, while unregistered users cannot access such information. Defendants respond that access to saved listings and searches does not constitute to access to a different "extent of information." Defendants argue that it is undisputed that unregistered and registered
[636 F.Supp.2d 988]
The Court agrees that plaintiffs have not raised a genuine issue of disputed fact. Where "the relevant aspects of the accused device's structure and operation are undisputed in [a] case, the question of whether [the accused device] literally infringes the asserted claims of the [] patent turns on the interpretation of those claims." K-2 Corp. v. Salomon S.A., 191 F.3d 1356 , 1362 (Fed.Cir.1999) (citing Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573 , 1578 (Fed.Cir.1996)) ("Where, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over [claim interpretation], the question of literal infringement collapses to one of claim construction and is thus amenable to summary judgment."). Although plaintiffs attempt to characterize the parties' dispute on this point as a factual one, the disagreement actually centers on the interpretation of "extent of information available." Here, it is undisputed that the overall information available to be searched by registered and unregistered users of defendants' websites is identical. It is also undisputed that registered users can save searches and access that information, while unregistered users cannot. The Court agrees with defendants' interpretation of the claim language, and holds that because "the extent of information available" to registered and unregistered users of defendants' websites is the same, defendants do not infringe Claim 3.
C. Claim 5
Defendants contend that Claim 5 is invalid under 35 U.S.C. § 112 ¶¶ 2, 6 because there is no structure—specifically no algorithm—that is adequately disclosed for the "demographics database updating means" in the means-plus-function limitation of that claim. Claim 5 provides, in its entirety:
'025 patent, col. 15, l. 58-col. 16, 1.18. Judge Jenkins construed the phrase "compiling and merging a plurality of first end user inquiries" in the last element of this claim to mean "collecting and combining the results of first end user inquiries." Claim Construction Order at 12-15. Substituting the Court's construction of that phrase results in the following:
The parties agree that "database demographics updating means" is a means-plus-function term that invokes 35 U.S.C. § 112 ¶ 6. As such, "the scope of that claim limitation [must] be defined by the structure disclosed in the specification plus any equivalents of that structure; in the absence of structure disclosed in the specification to perform those functions, the claim limitation would lack specificity, rendering the claim as a whole invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2." Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328 , 1331 (Fed.Cir.2008). "A determination of claim indefiniteness is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696 , 705 (Fed.Cir.1998). "To the extent there are any factual findings upon which a trial court's indefiniteness conclusion depends, they must be proven by the challenger by clear and convincing evidence." Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 , 1338 (Fed.Cir.2008).
The parties further agree that the specification discloses a "Server's computer 412" with a "database" as a corresponding structure for performing the claimed "updating" function. The question presented by defendants' motion is whether that disclosure is sufficient. Defendants contend that under two recent Federal Circuit cases, merely referring to a computer to provide the required structure is not sufficient. See generally Aristocrat, 521 F.3d 1328 (Fed.Cir.2008); Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323 , 1340-41 (Fed.Cir.2008). Instead, defendants contend, the patent must disclose a specific algorithm to perform the function. Plaintiffs respond that the specification sufficiently discloses enough of an algorithm.
In Aristocrat, the district court held that a patent's disclosure of a general purpose, programmable microprocessor was not a sufficient disclosure of structure to satisfy § 112 ¶ b. The district court held that in a means-plus-function claim "in which the disclosed structure is a computer or a microprocessor programmed to carry out an algorithm, a corresponding structure must be a specific algorithm disclosed in the specification, rather than merely `an algorithm executed by a computer.'" Aristocrat, 521 F.3d at 1331-32. The district court held that because the specification lacked any specific algorithm or any step-by-step process for performing the claimed functions, the asserted structure was insufficient. Id. at 1332.
The Federal Circuit affirmed. The court first explained the general principle that "[i]n cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the specification be more than simply a general purpose computer or microprocessor." Id. at 1333. "Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as
[636 F.Supp.2d 990]
The Federal Circuit rejected Aristocrat's arguments that the specification disclosed algorithms that were sufficient to constitute a qualifying disclosure of structure. Aristocrat contended that claim language referring to "the game control means being arranged to pay a prize when a predetermined combination of symbols is displayed in a predetermined arrangement of symbol positions selected by a player" implicitly disclosed an algorithm for the microprocessor. The Federal Circuit disagreed, holding that this language simply describes the function to be performed, not the algorithm by which it is performed. Id. The court also rejected Aristocrat's "real point," which was that devising an algorithm to perform that function was within the capability of one skilled in the art, and thus it was not necessary to disclose any particular algorithm. Id. The court also rejected Aristocrat's reliance on equations and mathematical descriptions contained in the claim language, holding that this language "is not an algorithm that describes how the function is performed, but is merely a mathematical expression that describes the outcome of performing the function." Id. The court concluded that Aristocrat "has disclosed, at most, pictorial and mathematical ways of describing the claimed function of the game control means. That is not sufficient to transform the disclosure of a general purpose microprocessor into the disclosure of sufficient structure to satisfy section 112 paragraph 6." Id. at 1335.
Shortly after Aristocrat, the Federal Circuit decided Finisar Corporation v. The DirecTV Group, Inc., 523 F.3d 1323 (Fed.Cir.2008). There, the court explained that for computer-implemented means-plus-functions claims where the disclosed structure is a computer programmed to implement an algorithm, the patentee may express that algorithm "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Id. at 1340 (internal citation omitted). In Finisar, the claims at issue included the limitation "database editing means . . . for generating . . . and for embedding. . . ." Id. The patent disclosed the following purported structure corresponding to this claim term: "software 132 (executed by CPU 130) generates a hierarchical set of indices referencing all the data in the information database 112 and embeds those indices in the information database." Id. The court held that this language was insufficient, as it "provides nothing more than a restatement of the function, as recited in the claim." Id. "Simply reciting `software' without providing some detail about the means to accomplish the function is not enough." Id. at 1340-41. Similarly, the court noted that the specification described
[636 F.Supp.2d 991]
Here, plaintiffs argue that the specification discloses a server that runs a database program that executes typical database functions to automatically update demographics pattern (or information) databases by compiling, merging, and storing all "viewer selections" (information requests) by end users. Plaintiffs argue that one skilled in the art2 would understand from reading the '025 specification that the disclosed server is executing available database programs, and that such programs at the time of the invention had a system for automatic indexing and otherwise efficient insertion and restructuring and extraction of data. Plaintiffs rely on the following language:
Plaintiffs argue that a person of ordinary skill in the art would recognize steps disclosed in the specification for performing the claimed "updating" function. Plaintiffs argue that such a person would recognize that the disclosed server is executing available database programs with the capabilities of compiling, merging, and storing information and generating, maintaining and/or updating a database. Plaintiffs further argue that such a person would recognize that the server is programmed to passively monitor end user requests for information and to compile, merge and store the collected information in a database that is continually updated.
Plaintiffs cite the declaration of their expert, Professor Justin Tygar, who states "I believe that one of ordinary skill at the time of the invention reading the '025 specification would understand that corresponding structures to be the "Server's computer 412." Tygar Decl. Ex. C at 87. Dr. Tygar acknowledges that "[t]he '025 specification does not expressly call out the algorithm," but that "[o]ne skilled in the art reading the '025 specification (including the drawings) would understand how the claimed databases were generated as well as how they are maintained, including being updated, by the Server's computer 412." As previously explained herein, the specification describes that all `viewer selections' (information requests) are captured and that data is compiled, merged, and stored into the claimed demographics information (pattern) databases, which are thereafter `continually updated to ensure accurate, up-to-date information at all times.'" Id. at 88. Dr. Tygar explains,
Id. at 87-88.
In contrast, defendants' expert opines that a person or ordinary skill would not know what falls within the scope of the "demographic database updating means" element of Claim 5. Meldal Decl. Ex. 1 at 93. Dr. Meldal states,
Id.
"It is certainly true that the sufficiency of the disclosure of algorithmic structure must be judged in light of what one of ordinary skill in the art would understand the disclosure to impart." Aristocrat, 521 F.3d at 1337. Even accepting plaintiffs' (and Dr. Tygar's) view, however, the Court finds that the specification does not sufficiently describe a structure to perform the "updating" function. Plaintiffs assert that the specification discloses a structure—the Server 412—and that one of ordinary skill in the art would have understood that the Server maintains databases, and that such a person would have been able to build "software for configuring the system . . . using standard database development techniques well known to those skilled in the art, based on the configurations described herein and the selection of the desired options." Tygar Decl. Ex. C at 87. However, the Federal Circuit has repeatedly held that for a computer-implemented function, it is insufficient to simply disclose a general purpose computer that can be programmed by a person of ordinary skill in the art to carry out the claimed function. See, e.g., 521 F.3d at 1337 ("It is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function."); see also Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946 , 953 (Fed.Cir.2007) ("The inquiry is whether one skilled in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure.").
Although plaintiffs are correct that the patent need not disclose source code, the patent must disclose the steps showing how the updating of the demographic database occurs. There is no such disclosure in the patent. Instead, as in Aristocrat, much of the language relied on by plaintiffs (and quoted above) simply describes the claimed function. For example, "Viewership and response patterns can be retrieved by advertisers, agents, and subscribers via the disclosed system's demographic retrieval databases," "In all cases, viewer selections are captured and stored by the Server," "the instant invention provides detailed data on all aspects of viewership and response. When, where, and how often an advertisement and/or profile is viewed is instantly recorded by the disclosed system," and "All files are stored on their respective databases, providing easy access and manipulation. The databases are continually updated to ensure accurate, up-to-date information at all times," all simply describe the function of monitoring, updating and storing viewership and response patterns.
The Court finds instructive Medical Instrumentation & Diagnostics Corporation
[636 F.Supp.2d 994]
(Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d at 1211-12).
Here, as in Medical Instrumentation, the specification does not specifically disclose any structure, such as specific types of software, to perform the "updating" function. Plaintiffs' contention that a person of ordinary skill in the art would know how to build "software for configuring the system . . . using standard database development techniques well known to those skilled in the art, based on the configurations described herein and the selection of the desired options," Tygar Decl. Ex. C at 87, is precisely the argument rejected in Medical Instrumentation. "The correct inquiry is to look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass software for digital-to-digital conversion and been able to implement such a program, not simply whether one of skill in the art would have been able to write such a software program." Medical Instrumentation, 344 F.3d at 1212.
Accordingly, the Court holds that because Claim 5 does not sufficiently disclose a structure for carrying out the "updating" function, that claim is invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2. This conclusion is a legal one, based on this Court's "performance of its of its duty as the construer of patent claims," Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d at 705; no factual findings are required.
CONCLUSION
For the foregoing reasons and for good cause shown, the Court hereby GRANTS defendants' motion for summary judgment of noninfringement and invalidity. (Docket No. 732). The Court DENIES AS MOOT defendant's motion to amend the answer, as well as the other motions for summary judgment filed by defendants. (Docket No. 627, 729, 764, & 776).
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