Showing posts with label Bono. Show all posts
Showing posts with label Bono. Show all posts
How Keithley vs. National Association of Realtors created a homeless person
The Rise Fund Story hidden from view.
In a dark file cabinet belonging to the National Association of Realtors there is a proposal presented by Pete Bennett to Kevin Keithley.
Billionaires’ Ball: Deconstructing TPG’s $2 billion RISE Fund
Talk about raising expectations. The RISE fund scored an Andrew Ross Sorkin exclusive in the New York Times, led by Bono, backed by all-stars on the impact billionaire circuit, and driven by TPG Growth, with more than $8 billion under management.
For all the signals that the big boys are arriving in impact investing, the $2 billion RISE Fund appears to be the biggest. It’s one of the first to put 10-figure capital behind a solid impact strategy. And there are more billions where that came from, if TPG can really deliver impact “alpha” – market-beating financial returns because of, not in spite of, a savvy impact investment thesis.
The fundraising goals for RISE has apparently doubled since a $1 billion fund was first announced in September. Maya Chorengel of Elevar Equity, which has been tapped by TPG to both develop deal pipeline and raise funds for RISE, has said the day is not far off for a $5 billion fund, once deal tickets and fund sizes can get to the scale needed for big institutional investors. TPG Group en toto manages about $74 billion.
If Sorkin knows the identity of “at least two large pension funds and one sovereign wealth fund (that) have committed nine figure sums” – he’s not saying. (Send tips.)
Sorkin and TPG’s William E. McGlashan teamed up to ensure nobody was confused about whether RISE was conceding any returns to deliver impact. Sorkin used an older term, “double-bottom line,” for what has become known as impact investing. He summed up the performance as “mixed results; either investors lost money, or the social impact was negligible or nonexistent.”Bono himself laid down the gantlet, slamming the rigor of most of impact investing to date. “There is a lazy mindedness that we afford the do-gooders,” Bono told Sorkin. It has become “a lot of bad deals done by good people.”
EARLY ADOPTERS
It’s not clear whether Bono’s unnamed do-gooders but bad dealmakers includes folks like Jeff Skoll, Pierre Omidyar, Richard Branson, Lynne Benioff, Reid Hoffman and Laurene Powell Jobs, all of whom are board members and investors of RISE. The club is an A-list of the kind of Silicon Valley-based, solution-savvy billionaires who are increasingly committing investment capital – not just philanthropic money – to generate social and environmental value.
Skoll’s Capricorn Investment Group now manages $5 billion in assets. Capricorn has made big bets on satellite-imagery, healthcare diagnostics and cleantech. Skoll took the lead, with TPG Growth’s McGlashan, to enlist Bridgespan Group consultants to design the impact reporting schema.
Laurene Powell Jobs, the head of the Emerson Collective, one of the new breed of non-foundation impact funds, technically an LLC, which can invest in both for-profit and non-profit organizations. With nearly $20 billion, Powell Jobs is one of the world’s wealthiest women, based on holdings in Apple and Disney built by her late husband, Steve Jobs.
Richard Branson, everybody’s favorite globe-trotting impact billionaire, who has his fingers in everything from the Carbon War Room and the B Team to the all-star human rights advocacy group, the Elders.
Reid Hoffman, a founder of LinkedIn, just acquired by Microsoft for $26 billion, making Hoffman’s stake worth nearly $3 billion. Hoffman is an outspoken provocateur, having pledged $5 million to aid veteran’s if President-elect Donald Trump would release his tax returns.
Mellody Hobson is president of Ariel Investments, the $10 billion fund manager based in Chicago that is one of the country’s largest minority-owned investment firm.
Lynne Benioff, who is building the philanthropic complement to husband Marc Benioff’s platform at Salesforce for advocating corporate responsibility.
Mo Ibrahim, the billionaire founder of Celtel International, which is riding the mobile wave sweeping Africa — an historic infrastructure leapfrog that is a key driver of any emerging market investment thesis as falling prices of connectivity and energy open new customers and new opportunities.
Pierre Omidyar, whose Omidyar Network is one of the earliest LLC’s investing as both a foundation and a venture fund. Since 2004, Omidyar network has invested $1 billion and helped drive much of the research and marketing field-building agenda of the impact-investing community. Omidyar has been a longtime investor in funds managed by Elevar Equity, which has been tapped by Rise.
Elevar, which raised its own $74 million fund last year, has been low-key about its activities. (Maya Chorengel of Elevar lays out a good primer on the firm’s investment thesis in this video panel, which also includes Matt Bannick, head of Omidyar Network.)
Bill Gates was not among the publicly announced list, but folks like Hoffman and Branson are also investors in the Gates-led Breakthrough Energy Coalition. Breakthrough is also pegged as a multi-billion dollar fund and also specifically pegged to meeting specific impact goals, namely, staying below the 2-degree temperature rise limit set by world leaders in the global climate treaty now in force. The Gates Foundation has deployed more than $1 billion in so-called program-related investments in profit-making firms with a clear charitable intent.
MEASUREABLE IMPACT
RISE expects to split its money between U.S. and emerging markets. Domestic investments include healthcare, education and clean energy. Emerging market sectors include financial services, housing and education. Rise claims to have created strict metrics to measure social impact and has hired an outside auditor (but will tie fund manager’s compensation only to financial performance, not impact).
The notion of TPG – or Bono, for that matter – rising in as a white knight to rescue impact investing didn’t sit so well with veterans of the movement to shift capital toward social and environmental progress.
Use of a failed social impact bond in New York as an example was the kind of apples-and-oranges benchmark that Sorkin would never have used in “serious” business reporting. That bond was backed by Goldman Sachs at the behest of then-Mayor Michael Bloomberg, but fell short of its goals to reduce the recidivism rate for adolescent offenders at Rikers Island.
FRONTIER CAPITAL
McGlashan cited as an example of the opportunities TPG’s investments in Apollo Tower, a cellphone tower company in Myanmar. TPG began backing Apollo in 2014, before Myanmar emerged from military control. Myanmar went from nearly 0 percent cellphone penetration to 70 percent, accounting for more than 5 percent growth in G.D.P. (Our friends at Unreasonable.is have a good update on Myanmar’s march toward mobile money.)
The company’s value has more than doubled. As for impact? Sorkin vaguely endorses the notion the investment “helped to increase transparency in a country known for tight control of its information, helping the nation take steps toward democracy.” Again, for his serious deal stories, Sorkin would ask for more proof. Interesting tidbit: McGlashan left San Francisco in 2013 and moved to India for a year.
Sorkin didn’t probe deeply on RISE’s investment thesis, but a mashup of Elevar’s approach and the well-documented strategies of Omidyar Network would suggest that it will target emerging middle-class consumers around the world. Importantly, that means families with $10 a day, not the extreme poor with live on under $2 a day. Omidyar laid out the opportunities and risks in “Frontier Capital,” a 2015 report that outlines an approach to investing in businesses serving low- to lower-middle-income people in emerging markets.
Bono tried belatedly to scale back expectations, agreeing to report back in a year or two and “be actually a bit tough on ourselves.” But he also made clear that more is at stake than the success of a single investment fund.
“Capitalism is going up on trial, and I think that it’s clear that putting profit before people is a nonsustainable business model,” Bono told Sorkin. It’s not that capitalism is immoral; it’s amoral. It’s a better servant than master.”
[seperator style=”style1″]Disclosure[/seperator]
Photo credit: Tillman Global Holdings
ImpactAlpha has business relations with some of the investors named in this story.
NextEquity Partners
NextEquity Partners
The partners that hired and fired Bennett left him homeless
This will be a story about a programmer that lost everything, rebuilt it back and then realized his extensive losses were tied to the titans of Private Equity.
Using information repositories from Crunch Base, SEC, Federal Filings plus various source from Public/Private/Media. Many items requiring reposting is exact form as digital sources are often edited or removed.
NextEquity Partners Growth equity and venture capital firm, led by former Apple and Elevation Partners executives, focused on disruptive tech & new media
Categories Finance, Financial Services, Venture Capital Headquarters Regions San Francisco Bay Area, Silicon Valley, West Coast Founded Date Jul 1, 2015 Founders Adam Hopkins, Avie Tevanian, Fred Anderson, Rami Reyes Operating Status Active
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NextEquity is led by an integrated team of investors and operators with extensive experience working with high growth, market leading new media and technology companies and serving as trusted advisors and close business partners to management.
NextEquity's leadership team includes Fred Anderson (former CFO of Apple and Co-Founder of Elevation Partners), Avie Tevanian (former Chief Software Technology Officer at Apple and Managing Director at Elevation Partners), and Adam Hopkins (a Managing Director of Elevation Partners). NextEquity draws upon its principals' deep technology, operating, and growth equity experience managing or investing in companies, such as Apple, Airbnb, Facebook, Sonos, and Yelp.
NextEquity's leadership team includes Fred Anderson (former CFO of Apple and Co-Founder of Elevation Partners), Avie Tevanian (former Chief Software Technology Officer at Apple and Managing Director at Elevation Partners), and Adam Hopkins (a Managing Director of Elevation Partners). NextEquity draws upon its principals' deep technology, operating, and growth equity experience managing or investing in companies, such as Apple, Airbnb, Facebook, Sonos, and Yelp.
KEITHLEY v. HOMESTORE.COM, INC. (MOVE.COM)
KEITHLEY v. HOMESTORE.COM, INC. (MOVE.COM)
On or about June 1st 2008 attorneys from Alston Bird called in regards to a
technology proposal for Kevin L. KEITHLEY and Tren Technologies
Holdings, LLC
Via his Venture Fund, Move.com, Realtor.com and formerly Homestore were sued
During May 2008, I got a call from Alston Bird offices in Charleston. The attorney asked me to remember Kevin Keithly after he shared facts about the Patent Litigation.He goes do you remember line 21 of your proposal, I said yes. Without hesitation repeated almost verbatim Line 21. I doubt the veracity of your patent given that Dave Del Dotto of Del Dotto Enterprises was selling this same feature long before the original patent application.
Supposed to be deposed instead evicted, then beated, then becomes homeless but the Attorneys representing Bono called about a deposition with a fee of around 1,000 to 1,500.
Then William McGlashan CEO of TPG Growth is linked to a bribery
scandal but in my case this story is witness murders, bank
fraud, extortion, Abuse of Authority under Color of Law, the
conviction of a sitting District Attorney for perjury who moves
into house with the widow of a cop that killed Bennett's
Employee.
Every Breath you take is simple, last week due to my October
assualt case, Every breath I take is difficult.
ELEVATION PARTNERS
Prior Portfolio Companies
BioWare / Pandemic Studios
BioWare/Pandemic Studios was a creative and management alliance between BioWare Corp. and Pandemic Studios, LLC, two leading independent video game developers.
BioWare / Pandemic Studios
BioWare/Pandemic Studios was a creative and management alliance between BioWare Corp. and Pandemic Studios, LLC, two leading independent video game developers.
Palm,
Inc. is a leading provider of mobile devices and experiences that enable consumers and businesses to connect to their information in more useful and usable ways.
Inc. is a leading provider of mobile devices and experiences that enable consumers and businesses to connect to their information in more useful and usable ways.
Move is a leader in online real estate; its network of websites, including
REALTOR.com and Move.com, provide the resources and decision support tools
for consumers and real estate professionals looking for home and real
estate-related information.
Yelp (NYSE: YELP) is a website that connects people with great local
businesses; Yelp is the leading local guide for real word-of-mouth on
everything from boutiques and mechanics to restaurants and dentists.
Facebook (NASDAQ: FB) is a social utility that helps people communicate
more efficiently with their friends, family and coworkers.
Forbes is the publisher of Forbes magazine, Forbes.com and other media
properties.
MarketShare is an analytics company that enables businesses to grow
efficiently by uncovering which actions really drive results.
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).
