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Dow Jones & Company, Inc. v. Ablaise Ltd.

July 11, 2007

DOW JONES & COMPANY, INC., PLAINTIFF,
v.
ABLAISE LTD., ET AL., DEFENDANTS.
DOW JONES REUTERS BUSINESS INTERACTIVE, LLC, D/B/A FACTIVA PLAINTIFF,
v.
ABLAISE LTD., ET AL., DEFENDANTS.



The opinion of the court was delivered by: James Robertson United States District Judge

MEMORANDUM

In these related cases, plaintiffs Dow Jones & Company and Dow Jones Reuters Business Interactive seek a declaratory judgment that they have not infringed U.S. patents 6,961,737 and 6,295,530, held by defendant Ablaise. Ablaise counterclaims, alleging infringement. Before an allegedly infringing device can be compared to the patent claims, the Court must first determine "the scope and meaning of the patent claims asserted." Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citations omitted). See also Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).*fn1 My construction of the disputed claims and the reasons for my rulings are set forth below.*fn2

Claim Construction of the '737 Patent

(1) The word "function" in the term "storing executable functions" means an identifiable set of computer instructions.

The "ordinary and customary meaning" of the word "function" to someone of "ordinary skill in the art," Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), is a set of computer instructions. This construction is supported by the specification. '737 Patent, Col. 12, 11. 46-48 ("A format function...may be considered as the smallest unit of instructions for producing a portion of HTML code."). See also Dow Jones Reply Br., Ex. A, at 2 ("The ordinary meaning of the term "function" is a named set of instructions.").

The parties appear to agree on this point, disagreeing only on whether a function must be "named" or merely "identifiable," and whether a function must include "a set of function steps, at least one of which, when executed, creates a portion of code." The claim itself is unclear on these points.

The specification for the '737 patent, however, requires only that each function be identifiable. '737 Patent, Col. 13, lines 41-45 ("At step 905 the functions required to create the particular string...are identified.").*fn3 Moreover, although certain functions described in the specification create portions of code, others perform different tasks, such as retrieving data from a database. Id. at Col. 15, ll. 54-58.

Dow Jones argues further that "storing executable functions" requires "storing a universal set of all available functions." In support of this view, Dow points to a passage from the specification in which the preferred embodiment is described, which states "the system as a whole includes a universal family set of all available functions." Id. at Col. 12, ll. 49-50. Dow views the inclusion of the "universal family set" as an essential feature of the preferred embodiment that must be read into the claim. The Federal Circuit, however, has "repeatedly warned against confining the claims" to specific embodiments described in the specification, Phillips, 415 F.3d at 1323 (citing cases), and has "expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Id. In order for the specification to be used to limit the claim as Dow Jones would have it, it must "disavow" the claim scope through "words or expressions of manifest exclusion" or "explicit disclaimers." Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005)(citing Housey Pharms., Inc. v. Astrazeneca UK Ltd., 366 F.3d 1348, 1352 (Fed. Cir. 2004)). The specification of the '737 patent lacks such an indicator of applicant intent.

(2) The words "request for specified content data" in the term "in response to identifying a request for specified content data and a user identifier; (a)...(e)..." do not require construction. The language is unambiguous within the context of the claim. Dow, however, seeks three limitations upon the word "request." First, Dow proposes adding the phrase "wherein the request was transmitted by a browsing device." This addition is unnecessary, because it is redundant with language earlier in the claim ("identifying requests from browsing devices").

Second, Dow proposes that the request include "a format identifier that is separate and distinct from the user identifier." Although claim 1 is unclear on this point - it states only that a format identifier can be "received" and does not indicate whether it must be received with the request or can come from another source - dependent claims 2, 10, and 16 offer clarity. Those claims state that "said format identifier" is "received with said request." If a request, by definition, already includes a format identifier, the language in claims 2, 10, and 16 would be redundant. See Phillips, 415 F.3d at 1314 (finding that the term "'steel baffles'...strongly implies that the term 'baffles' does not inherently mean objects made of steel."). Moreover, under the doctrine of claim differentiation, the requirement in claims 2, 10, and 16 that the format identifier is received with the request implies that the same limitation should not be read into claim 1.*fn4 Phillips, 415 F.3d at 1315 ("[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation is not present in the independent claim.").

Claim differentiation is only a guide, Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2007), and "cannot be used to broaden claims beyond their correct scope, determined in light of the specification and prosecution history." Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998). Yet neither the specification nor the prosecution history supports Dow's limiting construction. Although the specification teaches that, in the preferred embodiment, a request "will include" a format identifier, '737 Patent, Col. 14, 11. 3-7, mere inclusion of a feature in the preferred embodiment does not disavow claim scope absent "words or expressions of manifest exclusion" or "explicit disclaimers." Gillette Co., 405 F.3d at 1374 (Fed. Cir. 2005)(citing Housey Pharms., Inc., 366 F.3d at 1352). The specification for the '737 patent does not demonstrate "a clear intention to limit the claim scope" in the manner that Dow Jones suggests, and indeed contemplates that the format identifier could come from at least one other possible source: a user database. '737 Patent, Col. 15, ll. 31-34 and Col. 16, ll. 8-14.

The prosecution history offers no additional guidance. Dow points to a section of the history in which the applicants distinguished their invention from prior art that did not "teach[] serving the same text/graphic content in different viewable page formats -- depending upon receiving requests incorporating respectively different format identifiers." Decl. of Brian Rosenbloom, Ex. M, Amendment, Dec. 16, 2003, at 13. When that section is read within the context of the entire file history, however, it is clear that the distinction the applicants were making between their invention and the prior art centered on the definition of "format," rather than "request." As with the specification, there is no "clear and unambiguous disavowal" of the claim scope in the prosecution history. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1124 (Fed. Cir. 2004).

Dow's third proposed limitation is that "request" means something other than "a request for a predetermined file" or "a request to retrieve and execute a specified file." As Dow points out, the specification discloses that the prior art included retrieving and executing a specified file, specifically a CGI.bin program, in response to identifying a request. '737 Patent, Col. 8, 11. 19-44. Dow contends that this section of the specification "makes clear that the invention does not include a particular feature," and so should be "deemed to be outside the reach of the claims." Honeywell Intern., Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1319 (Fed. Cir. 2006). That contention is rejected. The specification merely distinguishes the prior art from the applicants' invention. The specification does not criticize CGI.bin programs or claim that they would not work in conjunction with the present invention. The applicants did not "disparage" requests to retrieve and execute a specified file.

(3) The words "type of formatting" in "receiving format identifiers identifying the type of formatting required" mean a layout or presentation ...


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