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

One Method Feature in Apparatus Claim Destroys Validity

Rembrandt Data Technologies, LP v. AOL LLC et al., No. 08-cv-1009 (E.D. Va., August 2, 2009, order) (B. Lee)

Notorious NPE Rembrandt sued AOL and a host of other companies over patents relating to dial-up modem technology. At the summary judgment phase, defendants moved the court to find that one of the claims was invalid under section 112 on the grounds that it is "fatally flawed" for mixing a method and apparatus claim in relevant part, the claim reads:

A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:

first buffer means for . . .
fractional encoding means for . . .
second buffer means for . . .
trellis encoding means for trellis encoding the frames from said second
buffer means; and
transmitting the trellis encoded frames.

Both parties admitted that the claim contained an error. However, Rembrandt relied in part on the Fed. Cir. ruling that "[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification; and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).

Rembrandt argued the claim should be edited to change "transmitting the trellis encoded frames" to "a transmitter section for transmitting the trellis encoded frames." According to Rembrandt, the edit is justified "because the error is so plain and known by anyone in the field there can be no question that the claim as written includes an obvious error."

Defendants argued that the proposed edit "would significantly alter the meaning of one element, changing it from a method step to an apparatus step. This is beyond the ordinary types of corrections allowed by courts . . . there is no evidence to support Rembrandt's assertion that a 'typographical' error occurred. The application claim . . . issued in the identical form as the applicants submitted it to the Patent Office. [The claim], therefore, was invalid from [the] day the application was filed."

The district court agreed with the defendants:

Rembrandt has failed to demonstrate that the language at issue is anything other than what it submitted to the Patent and Trademark Office. Edits by district courts are generally made in instances where the change is extremely minor and/or obvious. This is neither. The impact of the change proposed by Rembrandt would have a colossal effect, and is far from minor or obvious. The Court therefore grants Canon's Motion for Summary Judgment with respect to the '236 claim based on the invalidity of the claims stemming from the mixture of apparatus and method claims because it would be improper for the Court to undertake the revision proposed by Rembrandt as it is not minor, obvious, free from reasonable debate or evident from the prosecution history.

Read/download the order here (link).

NOTE: There was also an interesting issue regarding infringement, where the accused modems were capable of operating in an infringing manner, but middleware prevented them from doing so during normal operation. The district court followed the Federal Circuit's Telemac Cellular ruling to hold that "the fact that an accused 'device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.'"