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Word to Info Inc. v. Facebook Inc.

United States District Court, N.D. California

July 12, 2016

WORD TO INFO INC, Plaintiff,
v.
FACEBOOK INC., Defendant. Claims WTI's Construction Defendants' Construction Court's Construction

          CLAIM CONSTRUCTION ORDER

          WILLIAM H. ORRICK UNITED STATES DISTRICT JUDGE

         INTRODUCTION

         Plaintiff Word to Info, Inc. ("WTI") brings two separate lawsuits - one against defendant Facebook Inc. ("Facebook") (Case No. 15-cv-03485-WHO) and the other against Google Inc. ("Google") (Case No. 15-cv-03486-WHO) - accusing both defendants of infringing the same seven patents, United States Patent Nos. (1) 5, 715, 468 ("the '468 patent"); (2) 6, 138, 087 ("the '087 patent"); (3) 6, 609, 091 ("the '091 patent"); (4) 7, 349, 840 ("the '840 patent"); (5) 7, 873, 509 ("the '509 patent"); (6) 8, 326, 603 ("the '603 patent"); and (7) 8, 688, 436 ("the '436 patent"). Each of the patents in suit relates to natural language processing. The parties have asked me to construe ten terms from the asserted claims. Based on the parties' briefing, the tutorial on June 10, 2016, and the arguments presented at the hearing on June 17, 2016, I construe the terms as set forth below.[1]

         BACKGROUND

         The patents-in-suit relate to natural language processing. Each of the patents-in-suit was invented by Robert Budzinski, each shares the same specification, and each besides the '468 and '436 patents shares the same abstract.

         The '468 patent (issued February 3, 1998) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language." The '087 patent (issued October 24, 2000) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language Utilizing State Representation Data, Word Sense Numbers, Function Codes and/or Directed Graphs."

         The '091 patent (issued August 19, 2003) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language Utilizing State Representation Data, Word Sense Numbers, Function Codes and/or Directed Graphs."

         The '840 patent (issued March 25, 2008) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language Utilizing State Representation Data, Word Sense Numbers, Function Codes, Directed Graphs, Context Memory, and/or Purpose Relations."

         The '509 patent (issued January 18, 2011) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language Utilizing State Representation Data, Word Sense Numbers, Function Codes, Directed Graphs, Context Memory, and/or Purpose Relations."

         The '603 patent (issued December 4, 2012) is titled "Memory System for Storing and Retrieving Experience and Knowledge with Natural Language Queries."

         The '436 patent (issued April 1, 2014) is titled "Memory System for Storing and Retrieving Experience and Knowledge by Utilizing Natural Language Responses."

         Budzinski filed the first of the seven applications underlying the patents-in-suit on September 30, 1994. Opening Br. at 2 (Dkt. No. 101); Defs. Br. at 1 (Dkt. No. 103).[2] During prosecution of the '468 patent, the examiner initially rejected certain claims as unpatentable over European Patent Application Publication No. 0180888 to Katayama ("Katayama") (Mead Decl. Ex. A, Dkt. No. 103-2). See '468 file at 38 (Webb Decl. Ex. 9, Dkt. No. 101-9). In a response dated June 25, 1996, Budzinski argued that his invention - including the invention's claimed "word sense numbers" - was distinct from Katayama. See Id. at 38 ("Word sense numbers are a novel, nonobvious invention not taught in Katayama. A word sense number makes it possible to have new capabilities compared to the case dictionary, function memory, and semantic analysis means of Katayama."); see also Id. at 38-65. The examiner subsequently allowed the claims. In all subsequent applications for the patents-in-suit, Budzinski included a sentence in the abstract stating, "A word sense number is an address to the meaning of a word."

         During prosecution of the '509 and '603 patents, the examiner initially rejected certain claims as unpatentable over United States Patent No. 7, 383, 169 to Vanderwende ("Vanderwende") (Webb Decl. Ex. 13, Dkt. No. 101-13). See '509 file at 4 (Webb Decl. Ex. 10, Dkt. No. 101-10); '603 file at 13 (Webb Decl. Ex. 11, Dkt. No. 101-11). In responses dated September 11, 2009 (for the '509 patent) and March 2, 2012 (for the '603 patent), Budzinski argued that his invention was distinct from Vanderwende, and the examiner subsequently allowed the claims. See '509 file at 4-76; '603 file at 13-87.

         LEGAL STANDARD

         Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996). "The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history." Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). "There are only two exceptions to this general rule: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution." Id.

         A patentee acts as his or her own lexicographer when he or she "clearly set[s] forth a definition of the disputed claim term other than its plain and ordinary meaning." Id. (internal quotation marks omitted); accord Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). That is, the patentee must "clearly express an intent to redefine the term." Thorner, 669 F.3d at 1365 (internal quotation marks omitted).

         The standard for when a patentee has disavowed the full scope of a claim term is "similarly exacting." Id. at 1366. "Disavowal requires that the specification or prosecution history make clear that the invention does not include a particular feature or is . . . limited to a particular form of the invention." Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks omitted). With respect to disavowal made during prosecution, it is only a "clear and unmistakable disavowal [that] overcomes the heavy presumption that claim terms carry their full ordinary and customary meaning." Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (internal quotation marks omitted). "Where an applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable." 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013); accord Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016). The Federal Circuit "ha[s] thus consistently rejected [prosecution history disclaimer arguments] based on prosecution statements too vague or ambiguous to qualify as a disavowal of claim scope." Avid, 812 F.3d at 1045 (internal quotation marks omitted).

         On the other hand, the Federal Circuit has found prosecution history disclaimer in a variety of circumstances:

For example, we have held that disclaimer applies when the patentee makes statements such as "the present invention requires" or "the present invention is" or "all embodiments of the present invention are." We have also found disclaimer when the specification indicated that for "successful manufacture" a particular step was "required." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007) ("Those statements are not descriptions of particular embodiments, but are characterizations directed to the invention as a whole."). We found disclaimer when the specification indicated that the invention operated by "pushing (as opposed to pulling) forces, " and then characterized the "pushing forces" as "an important feature of the present invention." We found disclaimer when the patent repeatedly disparaged an embodiment as "antiquated, " having "inherent inadequacies, " and then detailed the "deficiencies that make it difficult" to use. Chicago Bd. Options Exch., Inc. v. Int'l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012) ("[T]he specification goes well beyond expressing the patentee's preference and its repeated derogatory statements about [a particular embodiment] reasonably may be viewed as a disavowal."). Likewise, we found disclaimer limiting a claim element to a feature of the preferred embodiment when the specification described that feature as a "very important feature in an aspect of the present invention" and disparaged alternatives to that feature.

Hill-Rom, 755 F.3d at 1372 (some internal citations and alterations omitted).

         When supported by clear and unmistakable statements of disavowal, "the scope of a surrender of subject matter during prosecution is [not] limited to what is absolutely necessary to avoid a prior art reference." Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361 (Fed. Cir. 2005). The Federal Circuit has held "patentees to the scope of what they ultimately claim, and [has] not allowed them to assert that claims should be interpreted as if they had surrendered only what they had to." Id. at 1361-62.

         Significantly for the purposes of the bulk of the claim construction disputes at issue here, a claim term that lacks a "plain or established meaning to one of ordinary skill in the art . . . ordinarily cannot be construed broader than the disclosure in the specification." Indacon, Inc. v. Facebook, Inc., No. 2015-1129, 2016 WL 3162043, at *3 (Fed. Cir. June 6, 2016); see also Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (holding that there is no presumption of ordinary and customary meaning "where a disputed term lacks an accepted meaning in the art, " and that "absent such an accepted meaning, we construe a claim term only as broadly as provided for by the patent itself"). In such circumstances, "[t]he duty . . . falls on the patent applicant to provide a precise definition for the disputed term, " Irdeto, 383 F.3d at 1300; see also J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1570 (Fed. Cir. 1997), and "a court must resort to the remaining intrinsic evidence - the written description and the prosecution history - to obtain the meaning of th[e] term, " Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed. Cir. 2004); see also Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 991 (Fed. Cir. 2007) (construing the term "terrain floor boundary, " which had "no ordinary meaning to a skilled artisan, " according to the particular description of the term in the specification); Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1359-61 (Fed. Cir. 2005) (construing the term "download component, " which had "no commonly understood meaning reflected in general dictionaries or similar sources" and "[no] specialized meaning in the relevant art, " to include the particular attributes described in the specification).

         DISCUSSION

         I. UNDISPUTED TERMS

         The parties agree that "plausibility" means "[a] measurement of whether an interpretation is consistent in the context of the conversation with respect to grammar, semantics, experience, and knowledge." Jnt. Claim Constr. Stmt. at 2.

         II.DISPUTED TERMS NOT INVOLVING 35 U.S.C. § 112 ¶ 6

         A. "word sense number"

Claims
WTI's Construction
Defendants' Construction
Court's Construction

'087 patent, claim 1, 4, 17, 23

'091 patent, claim 1, 12

'840 patent, claim 1, 2, 3, 5, 15, 16

'509 patent, claim 9, 10, 16

'603 patent, claim 9, 10, 13, 14

'436 patent, claim 1, 7,

11, 14

'468 patent, claim 1, 8,

12, 16, 24, 31, 33

An identifier for a word meaning, the identifier including an identification number.

An address to the meaning of a word, which contains attributes regarding the meaning and has meaning data that is (1) utilized to determine the intended meaning of a word usage, and (2) organized into relations to other word sense numbers that can be used for selecting a word sense number which has the intended meaning of a word contained in natural language.

For the following types of word sense numbers, the structure is as follows:

An adjective word sense number is composed of an identification number, a state value or value range, and an owner word sense number.

The word sense number of a concrete noun contains a word sense identifying number, a type number, a specificity number, and an experience number.

The word sense number of a state abstract noun contains an identification number, a type number, a specificity number, and an experience number.

A verb word sense number contains an

Defendants' construction, slightly modified:

An address to the meaning of a word, which contains attributes regarding the meaning and has meaning data that is (1) utilized to determine the intended meaning of a word usage, and (2) organized into relations to other word sense numbers that can be used for selecting a word sense number which has the intended meaning of a word contained in natural language.

For the following types of word sense numbers, the structure is as follows:

An adjective word sense number is composed of an identification number, a state value or value range, and an owner word sense number.

The word sense number of a concrete noun contains a word sense identifying number, a type number, a specificity number, and an experience number.

The word sense number of a state abstract noun contains an identification number, a type number, a specificity number, and an experience number.

identification number which defines the verb. word sense number, and includes partial to complete word sense identification numbers of main sentence roles.

A verb word sense number contains an identification number which defines the verb. word sense number, and includes partial to complete word sense identification numbers of main sentence roles.

Example Claims

'603 patent, claim 9

A method of processing natural language in an apparatus, which comprises steps

utilizing a natural language processor to provide a data base of natural language with associated word sense numbers and/or function codes in memory associated with said apparatus,

associating additional data with said word sense numbers and/or function codes associated with said data base of natural language in memory associated with said apparatus,

indexing said data base of natural language with respect to word sense numbers and/or function codes with said apparatus,

storing said index in memory associated with said apparatus,

providing electronically encoded data which is representative of natural language in memory associated with said apparatus,

providing a dictionary data base in memory associated with said apparatus wherein said dictionary data base contains a plurality of entries which are comprised of one or more of syntax usage data, associated word sense numbers, and/or function codes,

lexically processing said electronically encoded data to access said dictionary data base with said apparatus,

providing a grammar specification in memory associated with said apparatus,

utilizing said natural language words which are associated with said electronically encoded data and said associated data which are from said dictionary data base entries with reference to said grammar specification to select word sense numbers and/or function codes with said apparatus,

utilizing said index to said data base of natural language to access word sense numbers and/or function codes with said associated additional data to match or partially match said selected word sense numbers and/or function codes associated with said natural language which is associated with said electronically encoded data with said apparatus.

'436 patent, claim 1

A method of processing natural language in an apparatus, which comprises steps:

providing natural language which is processed by said apparatus to provide electronically encoded data which is representative of said natural language,

providing a dictionary data base in memory associated with said apparatus wherein said dictionary data base contains a plurality of entries which are comprised of one or more of syntax usage data, associated word sense numbers with associated state representation data, and/or function codes,

lexically processing said electronically encoded data to access said dictionary data base with said apparatus,

providing a natural language plausibility and expectedness processor in said apparatus,

utilizing said natural language plausibility and expectedness processor to initiate accessing entries of said dictionary data base which are associated with words of said natural language.

'436 patent, claim 7

A method of processing as defined in claim 1 which comprises steps:

providing a context data base wherein said context data base contains a plurality of entries which are comprised of one or more of word sense numbers having associated state representation data, and/or function codes,

utilizing said context data base for processing natural language.

         The parties' dispute over the meaning of "word sense number" focuses on three issues, corresponding to the three parts of defendants' construction: (1) whether the term should be defined as "[a]n address to the meaning of a word;" (2) whether the term should be defined to require that the "meaning data" be "utilized" and "organized" in certain ways; and (3) whether the term should be defined to require certain structures for adjective, concrete noun, state abstract noun, and verb word sense numbers. See Opening Br. at 5-9; Defs. Br. at 4-9; Reply Br. at 2-7 (Dkt. No. 105).

         1."address to the meaning of a word"

         Defendants argue that "word sense number" should be construed to mean "address to the meaning of a word" because the term is explicitly defined in this way in the abstracts for each of the patents-in-suit except the '468 patent. Defs. Br. at 4-6; see also, e.g., '087 patent at abstract ("A word sense number is an address to the meaning of a word."); '603 patent at abstract (same); '436 patent at abstract (same). WTI counters that the intrinsic record as a whole supports using "identifier for a word meaning" instead of "address to the meaning of a word." Opening Br. at 5-6. WTI also argues that use of the word "address" "invites confusion" because of its "well-known meaning . . . [i]n the field of computer technology" as "a specific location in computer memory." Id. at 6-7.

         I agree with defendants. The parties do not dispute that "word sense number" has no ordinary meaning in the art. See Defs. Br. at 4 (noting that "WTI does not attempt to show that ‘word sense number' has an accepted ordinary meaning in the field"); see also Opening Br. at 5-9; Reply Br. at 2-7. Accordingly, it was up to Budzinski to "provide a precise definition for the . . . term, " Irdeto, 383 F.3d at 1300, which is exactly what he appears to have attempted to do in explicitly stating in the abstracts for all but one of patents-in-suit what a word sense number "is." Cf. Sinorgchem Co., Shandong v. Int'l Trade Comm'n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) ("Moreover, the word ‘is, ' again a term used here in the specification, may signify that a patentee is serving as its own lexicographer."); accord Abbott Labs. v. Andrx Pharm., Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007). Indeed, Budzinski specifically amended the original abstract to include this sentence following the examiner's initial rejection of the '468 patent as unpatentable over Katayama.

         WTI contends that a word sense number is better understood as an "identifier for a word meaning, " but WTI fails to cite anything in the specification or prosecution history that provides meaningful support for this position. See Opening Br. at 5-6; Reply Br. at 3. Although the specification describes certain types of word sense numbers as containing "identification numbers, " see, e.g., '468 patent at 8:63-65 ("The word sense number of a state abstract noun contains an identification number."); id. at 9:67-10:02 ("A verb word sense number contains an identification number."), that is not the same as defining "word sense number" as "identifier for a word meaning." And, although the specification uses the word "identifier" in various contexts, WTI fails to identify a single instance when the specification uses that word in connection with a description of word sense numbers.

         Given the clear definitional language in the abstracts, and the absence of intrinsic evidence to support WTI's construction of "word sense number" as "identifier for a word meaning, " WTI's concern that using the word "address" "invites confusion" is not persuasive. "Under [Federal Circuit] precedent, the patentee's lexicography must govern the claim construction analysis." Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1356 (Fed. Cir. 2014). A word sense number is an "address to the meaning of a word."[3]

         2."meaning data that is (1) utilized to determine the intended meaning of a word usage, and (2) organized into relations to other word sense numbers that can be used for selecting a word sense number which has the intended meaning of a word contained in natural language"

         Defendants also seek to define the term "word sense number" to require "meaning data that is (1) utilized to determine the intended meaning of a word usage, and (2) organized into relations to other word sense numbers that can be used for selecting a word sense number which has the intended meaning of a word contained in natural language." Defs. Br. at 6-7.

         In support of this portion of their construction, defendants rely on statements made by Budzinski during prosecution. In distinguishing Vanderwende during prosecution of the '509 and '603 patents, Budzinski explained that

[w]ord sense numbers are a novel, nonobvious invention not taught in Vanderwende. A word sense number, which is described below, has an associated state representation which makes it possible to have new capabilities compared to the organized text words . . . in Vanderwende . . . First, I will describe the features of word sense numbers and some of the new capabilities of the present invention that are made possible with word sense numbers, and I will compare word sense numbers and these capabilities with Vanderwende . . . A word sense number has meaning data which is utilized to determine the intended meaning of a word usage. The meaning data of a word sense number is organized into relations to other word sense numbers, and these relations can be used for selecting a word sense number which has the intended meaning of a word contained in natural language.

'509 file at 5-6 (emphasis added); '603 file at 14-15 (emphasis added).

         Similarly, during prosecution of the '468 patent, Budzinski distinguished Katayama by stating,

Word sense numbers are a novel, nonobvious invention not taught in Katayama . . . The meaning data of a word sense number is organized into relations to other word sense numbers, and these relations can be used for selecting word sense numbers which have the intended definition sense of a word for a usage in text.

'468 file at 38-39 (emphasis added). When the examiner rejected the claims of the '468 patent because of the indefiniteness of terms like "word sense number, " Budzinski relied on this language in responding to the rejection. The examiner found that the claims were

indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claims are replete with alternate expressions such as "natural language text word or said non-textual natural language equivalent" and "word sense numbers or function ...

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