Monday, March 15, 2010

Google, Yahoo! Skirt Divided Infringement Claim Based on Data Provided "By the User"

PA Advisors LLC v. Google, Inc. et al., Case No. 2:07-cv-480 (E.D. Tex., March 11, 2010, order)

nXn (formerly "PA Advisors") owned a patent directed to Internet searching technology that "reflects the user's cultural, educational, and social backgrounds and the user's psychological profile" based on historic linguistic patterns identified in the user's prior activity.

After the claim construction phase, defendants moved for summary judgment of noninfringement based on 2 separate arguments: (1) the accused products did not "extract . . . at least one segment representative of a linguistic pattern" as recited in the claims, and (2) the accused products did not perform the step of "providing, by the user to the local computer system, search request data . . ."

On the first issue of a "segment" of a "linguistic pattern", nXn argued that this limitation did not require the identification of a particular word as a part of speech, and thus the broad definition would encompass the accused products.  The court strongly disagreed:

The relevant claim constructions reflect this process. “Linguistic patterns” are recognized in “segments” which are in turn extracted from “text items.” “Linguistic patterns” are a combination of various parts of speech (nouns, verbs, adjectives, etc.).” “Segments” are “one or more parts of speech arranged in an order.” And “text items” are “a series of words that can be split into at least one sentence.” Whereas text items refer generally to words, segments and linguistic patterns refer to particular parts of speech.

Despite the relevant constructions, nXn maintains that words in general are parts of speech without reference to whether they may be nouns, verbs, adjectives, etc. Put differently, nXn contends that the claims do not require any identification of a particular word as a particular part of speech but rather only require identification of plain words which also happen to be parts of speech. This theory ignores the plain teachings of the ‘067 patent. In every example or embodiment discussed in the ‘067 patent’s specification, the system must identify and tag words as particular parts of speech. . . . Without identifying and tagging the words as parts of speech, the claimed system would not produce a segment or discover a linguistic pattern. Of course these linguistic patterns then, according to the patent, disclose the user’s cultural and psychological profile. . . . The idea that the system only requires identifying words without reference to parts of speech finds no support in the patent. In fact, the ‘067 patent repeatedly disparages prior art search engines that operate by running “word” searches, referred to in the prior art as “key word” searches.
With regard to divided infringement, the court ran through the rulings of BMC Resources and Muniauction and concluded that
This case presents very similar facts in a claim requiring activity by more than a single party. Independent claim 1 provides in relevant part:

(c) providing, by the user to the local computer system, search request data representative of the users expressed desire to locate data substantially pertaining to said search request data.

col.24 11.45-49. All of the remaining steps recited in claim I are performed by the system - not the user. While Google and Yahoo benefit and invite users to visit their websites and run searches, they in no way “control or direct” them once they are there. Significantly, users are free to search as they please. Neither Google nor Yahoo direct users to search or input specific terms or phrases.

[W]hile it is true that searches initiated by Google or Yahoo could be relevant to infringement, neither accused system “initiates” any search. Notably, Google and Yahoo only offer suggestions and spelling changes after the user has begun a search query. In other words, even where search suggestions or spelling changes are provided by the system, the user is still first required to initiate a search query. Moreover, the user continues to choose the course of the search without the “control or direction” of the accused search engines.

In a last ditch effort, nXn resorts to arguments in equity. nXn first highlights that claim 1 could have easily been written to avoid this whole divided infringement issue and therefore it would be unfair to make it an issue now. But the Federal Circuit already rejected the same argument in BMC Resources . . . any fault only lies with nXn’s prosecuting attorney. Although BMC Resources and its progeny came long after the ‘067 patent issued, the general principles and rules propounded therein were well settled. Regardless of the equities, the Federal Circuit’s precedent is clear in compelling a finding of noninfringement.
Summary judgment of noninfringement as to all asserted claims is therefore GRANTED.

Note - the opinion was written by Judge Rader, who was sitting by designation in the E.D. Tex.

Download a copy of the opinion here (link)

Source: Docket Navigator

See also: "Big Tech Shouts 'Yippee!,' Patent Bar Chattering as Rader Heads to Texas" (link)

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