Wednesday, November 10, 2010

Unbridled "Optimization" Term in Software Patent Claim Leads to Finding of Indefiniteness

Data Retrieval Technology v. Sybase, Inc. et al., No. 3-08-cv-05481 (N.D. Ca., Nov. 8, 2010)

DRT sued defendants on patents directed to computer-implemented methods for retrieving information stored in databases without the need for human analysis of the source data.  One of the claims in the patent recited a driver that automatically obtains information about the data structure of a data source "wherein said information about the data structure leads to optimization of a new database in which information from said first database is to be stored."

One of the defendants moved for summary judgment of invalidity under 112(2), arguing that the claimed optimization feature rendered the claim insolubly ambiguous.  Under DRT's proposed claim construction, a database would be "optimized" when its performance “with respect to a given characteristic” is superior to that of the data source from which it was created.  The problem here was that a specific "characteristic" was not provided in the patent.

The district court found this fatal to the patent:

The fundamental flaw here is that no such characteristic is in fact given. Thus, if one could identify a single characteristic of a database that is superior to that of the original source, the database would be “optimized” within the meaning of the claim. As DRT’s expert Paul Bertucci stated in his deposition, “[t]here are hundreds of [] potential characteristics” of a database that may be improved. . . . Further, Mr Bertucci admitted in his second declaration that “the process of optimization involves tradeoffs -  i e, one design/configuration may provide improved performance for certain types of queries while at the same time, diminishing performance for other types of queries and database operations.”

It is clear that DRT’s proposed construction of “optimization” fails to define any meaningful limitation. . . . The claim [] requires that the new database be “optimiz[ed],” id, but under the proposed construction any such database could be considered optimized. One must only identify one of the hundreds of possible characteristics of the new database that performs better than that of the original data source. And because optimization necessarily involves tradeoffs, a database that is demonstrably inferior to the original data source with respect to the most important characteristics would still be superior with respect to some characteristic and therefore “optimized.” A competitor would have no way to know whether a process for transforming a data source into a new database led to “optimization” and would be subject to an infringement suit if the patent holder could locate a single characteristic of the database that is superior to that of the data source. Accordingly, DRT’s proposed construction is indefinite.
With regard to a narrowing construction of "optimization", the opinion noted that
The court is unable to adopt any narrowing construction of “optimization” that is consistent with the language of the claim. DRT notes that “the patent provides a number of examples of characteristics for which a database may be optimized” and suggests that “the claim term is further limited when read in light of the specification by the examples provided by the specification.”  This suggestion fails to grasp “the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim.” Phillips, 415 F3d at 1323. Although the specification can be used to help define unclear claim terms, it cannot be used to limit them. The patent specification provides examples of “different systems which are optimized for different purposes,” specifically those “optimized for data entry or storage vs speed or flexibility or data analysis and reporting, optimized for accounting data vs company data, and the like.” ’392 Patent at 1:34-37. But DRT does not argue that these examples actually define “optimize,” which, as discussed above, means to improve performance with respect to any of a large number of possible characteristics. . . . Informatica’s motion for summary judgment of indefiniteness is supported by clear and convincing evidence and is accordingly GRANTED.
Read/download the opinion here (link)

Source: Docket Navigator

13 Comentários:

Anonymous said...

Pardon the pun, but it is painfully obvious that this is a right result for the wrong reason.

In regards to "a database that is demonstrably inferior to the original data source with respect to the most important characteristics would still be superior with respect to some characteristic and therefore “optimized.” A competitor would have no way to know whether a process for transforming a data source into a new database led to “optimization"

A more accurate (and legally more correct) version that does not confuse breadth with indefiniteness would be to hold that since "optimized" can happen for the least factor being improved (and not one necessarily important for the actual use of the database), the claim would be obvious under, oh let's say a million (or any) database improvement patent.

What you see here is continued technical ineptitude of the courts, here jumping on the flavor of the day - 112.

Patent purists should be appalled.

Anonymous said...

excerpt from claim 1:

..wherein said information about the data structure leads to optimization of a new database in which information from said first database is to be stored.

There is no 'said first database' so I guess that term was construed to mean 'said first data source'.

The phrase 'optimization of a new database' is confusing because it implies an improvement over a previous database characteristic.

There is an inherent data access optimization provided by the migration of data from a generic source into a database as part of 'understood in the art' primary database functionality.

This would perhaps limit the 'optimization' term to a more definite meaning but that is not really what the above claim phrase states ('optimization provided by the migration of data' is not the same as 'optimization of a new database').

So my best understanding here is that the phrase does not make sense so the 'optimized' term is construed broadly to mean 'better' and thus indefinite.

Anonymous II

Anonymous said...

"better" is not indefinite, only broad.

First Anonymous wins.

Anonymous said...

""better" is not indefinite, only broad."

Idk about that, but first anon definitely does not win. Like the district court says, the term is so broad so as to be a non-limitation because all systems would be "optimized" in one way or another. Assuming that the limitation is not meant to be a non-limitation, which is apparent from the usage in the claim, one can make no sense of what it intends to limit the claim to, thus a finding of insoluble indefiniteness.

Correct finding.

I note however something funny that the DC said.

"Although the specification can be used to help define unclear terms, it cannot be used to limit them."

An interesting proposition, but I don't think that it is necessarily always true. The limits of the claim are found through interpretation of the claim.

Anonymous said...

First Anonymous still wins as just because all system would be "optimized' does not mean the term is indefinite.

The epitome of breadth is only confused with lack of clarity by the dilettante.

Unlimited is not Unclear.

Anonymous said...

"Unlimited is not Unclear"

Unlimited may or may not be unclear, but as here, non-limited vs limited in some manner which nobody can tell sure as he11 makes it so.

Again, this has nothing to do with whether or not it is unlimited. It has to do with whether or not it is limited, and if so, how.

Anonymous said...

Again, this has everything to do with understanding the difference between broad and indefinite.

Anonymous said...

"Again, this has everything to do with understanding the difference between broad and indefinite."

Yep, and like the attorney that lost, you don't understand it. Even though you'd really really like to.

Anonymous said...

"Understanding" as you are using the term in defense of the District Court is clearly a misnomer.

Anonymous 1 is correct - The District Court has botched this.

Claim scope of "any improvement" is clearly understandable. The shame here is not whether claim should survive (or that the original attorney should be vindicated - neither the claim nor the original attorney should not). The shame here is that this case is plainly decided incorrectly. There simply is no question as to the scope of the claim. The scope is "any". The court is simply wrong in its test result of "It is clear that DRT’s proposed construction of
“optimization” fails to define any meaningful limitation." - The limitation of any improvement is indeed meaningful - it means what it says. The so called "fundamental
flaw here is that no such characteristic is in fact given" is simply wrong, as the particular characteristic is not required by the claim.

This should have been rejected during prosecution under this premise. Short of that, this would be ridicuously easy to destroy in reexam. One would have to pick literally "any" prior art that shows the actual claimed improvement.

Botching the law by the District Court really serves no one. Your arguing logic of "what he said" is simply not compelling.

This one should be put into the same oven as the Chef America.

Anonymous said...

""any improvement""

But it isn't clear that such IS THE CORRECT SCOPE. There is a presumption that the applicant didn't mean for that term to be unlimited, or, the way you put it, "any improvement". However, no other appropriate construction can be found.

"The limitation of any improvement is indeed meaningful - it means what it says."

Which is what, exactly?

"as the particular characteristic is not required by the claim."

We're aware, and that's a contributing factor to the term rendering the claim indefinite. If they had specified a particular characteristic then the DC could have at least MAYBE found it definite. Probably not, but there would have been a chance.

"This one should be put into the same oven as the Chef America."

The "controlling law" oven?

I agree.

Anonymous said...

Last Anonymous,

Your logic is horrible.

It is precisely in the court's reaching for some "correct scope" instead of merely construing the claim as it is that the conflation of breadth and lack of clarity is introduced.

The lesson from Chef America is simply this: Don't reach. Your "contributing factor" is the fingerprint of malfeasance.

If the claim, as can easily (and very understandably) be construed to include any improvement, the claim is clear and definite - but immensely and fatally broad.

Just because the claim as written renders the claim itself a briquette is no justification for horribly mangling breadth versus clarity. Any lawyer (and one would hope - any judge) should be able to spot the error here.

Anonymous said...

So then because there is one interpretation, that is clearly not what the applicant intended, does not make sense from a technical or ivo the spec standpoint, but is an easily made and understood construction then one automatically gives up the quest to find the correct scope?

L u l z. You sir have problems with a mental deficiency in your brain.


By the by, Chef America stands for no such nonsense. The only thing it stands for is that the literal claim language is not subject to "interpretationlol" to make it make sense.

If anything, the notions of Chef America back up this finding.

Anonymous said...

Your understanding of case law is evidently deficient. Clearly, you are not lawyer. Are you an examiner?

Read Chef America again - try to understand that the quest to find the correct scope and your "interpretationlol" that is going on in the instant case are the same things.

Try to understand that you are simply not allowed to frolic and venture forth in finding "clearly what not what the applicant intended", as you say, which by the way is an errant presentation of the matter - the correct presentation is can the claim be resolved to have a definite meaning. Ask yourself if the applicant in Chef America intended to prepare briquettes.

Yes, one must use the plain understanding of words, and (if you are an examiner, you should catch this) one cannot import limitations from the specification into the claims.

The fact that "the characteristic" is not a claim element is the clue that the district judge here was on a frolic and engaged in your "interpretationlol".

Any real lawyer recognizes that the application of law from one case to the next is not dependent on the fact patterns being identical. While Chef America upheld that District Court's ruling, the holding applied here would actually overturn this District Court's ruling.

As mentioned, this would be a case of being careful of what you ask for - as the resulting claim would be fatally broad (not indefinite).

Once again, the primary issue here is understanding the difference between broad and indefinite.

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