Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 1 of 10 PageID #: 2335
`
`Plaintiff,
`
`
`
`
`
`C.A. No. 19-1410 (MN)
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Defendants.
`
`VB ASSETS, LLC,
`
`
`
`
`
`AMAZON.COM, INC., AMAZON.COM
`LLC, AMAZON WEB SERVICES, INC.,
`A2Z DEVELOPMENT CENTER, INC.
`d/b/a LAB126, RAWLES LLC, AMZN
`MOBILE LLC, AMZN MOBILE 2 LLC,
`AMAZON.COM SERVICES, INC. f/k/a
`AMAZON FULFILLMENT SERVICES,
`INC. and AMAZON DIGITAL SERVICES
`LLC,
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`MEMORANDUM ORDER
`
`At Wilmington this 23rd day of June 2021:
`
`IT IS HEREBY ORDERED that the claim terms of U.S. Patent Nos. 8,073,681 (“the ’681
`
`Patent”), 9,015,049 (“the ’049 Patent”), 9,626,703 (“the ’703 Patent”), 7,818,176 (“the ’176
`
`Patent”), 8,886,536 (“the ’536 Patent”) and 9,269,097 (“the ’097 Patent”) with agreed-upon
`
`constructions are construed as follows (see D.I. 85, Ex. A-1):
`
`1.
`
`2.
`
`3.
`
`“model” means “an approximation, representation, or idealization of
`selected aspects of the structure, behavior, operation, or other characteristics
`of a real-world process, concept, or system” (’049 Patent, claims 1, 3, 4, 5,
`8, 11, 13, 14, 15 & 18; ’176 Patent, claims 2-5, 18-21, 28-31 & 44-47)
`
`“short-term shared knowledge” / “short-term knowledge” do not require
`construction (’681 Patent, claims 1-3, 10, 13-15, 22, 25-27, 34, 37, 39 & 41;
`’049 Patent, claims 1, 3-4, 7-8, 11, 13-14 & 17-18)
`
`“domain agent” means “software with domain-specific behavior and
`information” (’536 Patent, claims 1, 4 & 32)
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 2 of 10 PageID #: 2336
`
`4.
`
`5.
`
`“acoustic grammar” means “grammar of phonotactic rules of the English
`language that maps phonemes to syllables” (’176 Patent, claims 1, 16, 27 &
`42)
`
`“speech recognition engine” / “speech recognition” means “software or
`hardware that recognizes the words or phrases in the natural language
`utterance”1 (’681 Patent, claims 7, 10, 19, 22, 31 & 34; ’703 Patent, claims
`1, 9, 15, 22, 25, 29 & 30; ’176 Patent, claims 1, 10, 14, 25, 27, 36, 40, 42 &
`51; ’536 Patent, claims 1, 10 & 32; ’097 Patent, claim 7)
`
`Further, as announced at the hearing on June 9, 2021, IT IS HEREBY ORDERED that the
`
`disputed claim terms of the ’681, ’049, ’703, ’176, ’536 and ’097 Patents are construed as follows:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`“long-term shared knowledge” / “long-term knowledge” do not require
`construction beyond the clarification that both have the same meaning and
`are a type of shared knowledge (’681 Patent, claims 1, 4, 13, 16, 25, 28, 37,
`39 & 41; ’049 Patent, claims 4-6, 8, 14-16 & 18)
`
`“context” does not require construction (’681 Patent, claims 1, 7, 13, 19, 22,
`25, 31, 34, 37, 39, 41; ’703 Patent, claims 1, 15, 25, 30; ’176 Patent, claims
`1, 14, 27 & 40)
`
`“identifying . . . roles associated with the user and one or more other
`participants” does not require construction (’681 Patent, claims 5, 17 & 29)
`
`“classifying one or more of the utterance or the current conversation into a
`conversation type” does not require construction (’681 Patent, claims 5, 17
`& 29)
`
`“identifying . . . information allocation among the user and one or more
`other participants” does not require construction (’681 Patent, claims 5, 17
`& 29)2
`
`1
`
`2
`
`
`The parties reached agreement on this construction at the hearing with the understanding
`that the construction does not exclude mapping a stream of phonemes contained in a natural
`language utterance or generating a preliminary interpretation. The parties also agreed that
`this construction does not require those limitations either. (See D.I. 89 at 62:5-14; see also
`id. at 27:10-25).
`
`The only dispute over the meaning of the two “identifying” and one “classifying” terms
`from the ’681 Patent was whether the terms were indefinite. That is, Plaintiff proposed no
`construction necessary and Defendants argued the terms were indefinite. The Court found
`that indefiniteness had not been proven at this stage, leaving no further claim construction
`dispute for these terms.
`
`2
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 3 of 10 PageID #: 2337
`
`The parties briefed the issues (see D.I. 79) and submitted an appendix containing intrinsic
`
`and extrinsic evidence, including expert declarations (see D.I. 80), and Plaintiff VB Assets, LLC
`
`provided a tutorial describing the relevant technology (D.I. 77).3 The Court carefully reviewed all
`
`submissions in connection with the parties’ contentions regarding the disputed claim terms, heard
`
`oral argument (see D.I. 89) and applied the following legal standards in reaching its decision:
`
`I.
`
`LEGAL STANDARDS
`
`A.
`
`Claim Construction
`
`“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
`
`although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`
`135 S. Ct. 831, 837-38 (2015). “[T]he words of a claim are generally given their ordinary and
`
`customary meaning [which is] the meaning that the term would have to a person of ordinary skill
`
`in the art in question at the time of the invention, i.e., as of the effective filing date of the patent
`
`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
`
`citations and quotation marks omitted). Although “the claims themselves provide substantial
`
`guidance as to the meaning of particular claim terms,” the context of the surrounding words of the
`
`claim also must be considered. Id. at 1314. “[T]he ordinary meaning of a claim term is its meaning
`
`to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks
`
`omitted).
`
`The patent specification “is always highly relevant to the claim construction analysis . . .
`
`[as] it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also possible that “the specification may reveal a
`
`special definition given to a claim term by the patentee that differs from the meaning it would
`
`
`Defendants did not submit a tutorial.
`
`3
`
`3
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 4 of 10 PageID #: 2338
`
`otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at
`
`1316. “Even when the specification describes only a single embodiment, [however,] the claims of
`
`the patent will not be read restrictively unless the patentee has demonstrated a clear intention to
`
`limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom
`
`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks
`
`omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
`
`In addition to the specification, a court “should also consider the patent’s prosecution
`
`history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
`
`1995) (en banc), aff’d, 517 U.S. 370 (1996). The prosecution history, which is “intrinsic evidence,
`
`. . . consists of the complete record of the proceedings before the PTO [Patent and Trademark
`
`Office] and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d
`
`at 1317. “[T]he prosecution history can often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention and whether the inventor limited the
`
`invention in the course of prosecution, making the claim scope narrower than it would otherwise
`
`be.” Id.
`
`In some cases, courts “will need to look beyond the patent’s intrinsic evidence and to
`
`consult extrinsic evidence in order to understand, for example, the background science or the
`
`meaning of a term in the relevant art during the relevant time period.” Teva, 135 S. Ct. at 841.
`
`Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
`
`including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d
`
`at 980. Expert testimony can be useful “to ensure that the court’s understanding of the technical
`
`aspects of the patent is consistent with that of a person of skill in the art, or to establish that a
`
`particular term in the patent or the prior art has a particular meaning in the pertinent field.”
`
`4
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 5 of 10 PageID #: 2339
`
`Phillips, 415 F.3d at 1318. Nonetheless, courts must not lose sight of the fact that “expert reports
`
`and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
`
`from bias that is not present in intrinsic evidence.” Id. Overall, although extrinsic evidence “may
`
`be useful to the court,” it is “less reliable” than intrinsic evidence, and its consideration “is unlikely
`
`to result in a reliable interpretation of patent claim scope unless considered in the context of the
`
`intrinsic evidence.” Id. at 1318-19. Where the intrinsic record unambiguously describes the scope
`
`of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc.
`
`v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
`
`B.
`
`Indefiniteness
`
`“The primary purpose of the definiteness requirement is to ensure that the claims are
`
`written in such a way that they give notice to the public of the extent of the legal protection afforded
`
`by the patent, so that interested members of the public, e.g. competitors of the patent owner, can
`
`determine whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc.,
`
`309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton-Davis Chem. Co.,
`
`520 U.S. 17, 28-29 (1997)). Put another way, “[a] patent holder should know what he owns, and
`
`the public should know what he does not.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
`
`Co., Ltd., 535 U.S. 722, 731 (2002).
`
`A patent claim is indefinite if, “viewed in light of the specification and prosecution history,
`
`[it fails to] inform those skilled in the art about the scope of the invention with reasonable
`
`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). A claim may
`
`be indefinite if the patent does not convey with reasonable certainty how to measure a claimed
`
`feature. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But
`
`“[i]f such an understanding of how to measure the claimed [feature] was within the scope of
`
`5
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 6 of 10 PageID #: 2340
`
`knowledge possessed by one of ordinary skill in the art, there is no requirement for the
`
`specification to identify a particular measurement technique.” Ethicon Endo–Surgery, Inc. v.
`
`Covidien, Inc., 796 F.3d 1312, 1319 (Fed. Cir. 2015).
`
`Like claim construction, definiteness is a question of law, but the Court must sometimes
`
`render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.
`
`See, e.g., Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017); see also
`
`Teva, 135 S. Ct. at 842-43. “Any fact critical to a holding on indefiniteness . . . must be proven
`
`by the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d
`
`1357, 1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338
`
`(Fed. Cir. 2008).
`
`I.
`
`THE COURT’S RULING
`The Court’s ruling regarding the disputed claim terms of ’681, ’049, ’703, ’176, ’536 and
`
`’097 Patents was announced from the bench at the conclusion of the hearing as follows:
`
`. . . At issue in this case we have six patents in three families and six
`disputed claim terms. . . . I am prepared to rule on each of the
`disputes. I will not be issuing a written opinion, but I will issue an
`order stating my rulings. I want to emphasize before I announce my
`decisions that although I am not issuing a written opinion, we have
`followed a full and thorough process before making the decisions I
`am about to state. I have reviewed the patents in dispute. I have
`also reviewed the excerpts of the ’681 Patent prosecution history
`submitted, the dictionary definitions, the IPR papers and validity
`contentions included in the joint appendix as well as the expert
`declarations. Plaintiff submitted a tutorial on the technology. There
`was full briefing on each of the disputed terms. And there has been
`argument here today. All of that has been carefully considered.
`
`
`As to my rulings. I am not going to read into the record my
`understanding of claim construction law generally. I have a legal
`standard section that I have included in earlier opinions. And I will
`
`6
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 7 of 10 PageID #: 2341
`
`incorporate that law and adopt it into my ruling today and will also
`set it out in the order that I issue.[4]
`
`Now, the disputed terms.
`
`The first term is two similar phrases “long-term shared
`knowledge” and “long-term knowledge” in claims 1, 4, 13, 16, 25,
`28, 37, 39, and 41 of the ’681 Patent; claims 4 through 6, 8, 14
`through 16, and 18 of the ’049 Patent. The parties agree that these
`terms should be given the same meaning. Plaintiff proposes that the
`terms be given their plain and ordinary meaning, which Plaintiff
`contends is “shared knowledge built by identifying information with
`long-term significance that is user-centric, rather than session-
`based.” Defendants assert that no construction is necessary but, if
`one is given, the proper construction is “shared knowledge from one
`or more prior conversations,” though today Defendants agreed that
`“from” in that construction is no different than using the word
`“about,” which is the word used in the claims. Both sides agree that
`“long-term knowledge” and “long-term shared knowledge” refer to
`“shared knowledge.” The dispute seems to be whether “long-term
`knowledge” is shared knowledge that has long-term significance
`that is user-centric.
`
`Here, I don’t think that either side’s proposed construction is
`entirely correct. Beginning with the claim language itself, it is
`noteworthy (and undisputed) that in every instance where “long-
`term knowledge” appears, it is followed by language indicating that
`the long-term knowledge includes “knowledge about one or more
`past [or prior] conversations with the user.”[5] Thus, although the
`claims require that the long-term knowledge include knowledge
`from one or more past conversations, that that concept is specifically
`recited in the claims suggests that Defendants’ proposal is
`redundant.
`
`Plaintiff points to language in certain claims of the ’681
`Patent referring to “long-term shared knowledge about the user”[6]
`to argue that the “long-term” terms require knowledge that is user-
`centric.
` Although
`that
`language suggests
`the “long-term
`knowledge” relates to the user in those claims, that language is
`
`The parties did not raise any disputes as to the person of ordinary skill in the art (“POSA”)
`that are relevant to the issues raised in connection with claim construction.
`
`(See ’681 Patent at Claims 1, 13, 25, 37 & 39; see also ’049 Patent at Claims 4 & 14).
`
`(See ’681 Patent at Claims 1, 13, 25, 37 & 39).
`
`7
`
`4
`
`5
`
`6
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 8 of 10 PageID #: 2342
`
`absent from the claims of the ’049 Patent. Instead, the ’049 Patent
`claims recite “long-term knowledge about one or more prior
`conversations between the user and the computer system.”
`Defendants, however, do not dispute that the long-term knowledge
`in both patents is shared knowledge about the user or relating to the
`user or its prior conversations. And thus it is unnecessary to read
`the “user-centric” concept into the meaning of the “long-term” terms
`because there is clarifying language indicating the “long-term
`shared knowledge” and “long-term knowledge” are about the user
`or its prior conversations.
`
`Turning to the specifications, I struggle to find support for
`the limitations included in Plaintiff’s proposal. The ’681 and ’049
`Patents do not explicitly define “long-term shared knowledge” or
`“long-term knowledge.” The summary of invention explains that,
`according to an aspect of the invention, “shared knowledge”
`obtained from incoming data may be used to inform a decision.[7]
`According to an aspect of the invention, that “shared knowledge”
`may include both “short-term” and “long-term” knowledge.[8] The
`summary of invention further explains that the shared knowledge
`“may be used to . . . build long-term shared knowledge by
`significance.”[9]
`identifying
`information with
`long-term
`Additionally, “[l]ong-term shared knowledge may generally be
`user-centric, rather than session-based, where inputs may be
`accumulated over time to build user, environmental, cognitive,
`historical, or other long-term knowledge models.” Plaintiff relies
`on this language to argue that the “long-term knowledge” terms
`require
`the knowledge
`to be user-centric with
`long-term
`significance.[10] But these passages are noteworthy in that they use
`“may” – i.e., language that suggests user-centricity and long-term
`significance are optional aspects of the “long-term knowledge”
`terms. I do not believe these passages require the particular
`limitation offered by Plaintiff. In sum, I decline to read in the
`limitations offered by both sides because the proposals either
`improperly read in limitations or add redundancy. Having rejected
`both proposals, I will decline to construe “long-term shared
`knowledge” and “long-term knowledge” but add the clarification
`that the two terms have the same meaning – i.e., “long-term shared
`
`(’681 Patent at 4:45-48).
`
`(Id. at 4:51-53).
`
`(Id. at 4:62-63).
`
`(D.I. 79 at 4; see also ’681 Patent at 14:9-14).
`
`8
`
`7
`
`8
`
`9
`
`10
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 9 of 10 PageID #: 2343
`
`knowledge” and “long-term knowledge” are both a type of shared
`knowledge. And the parties agree on this aspect.
`
`The second term is again two phrases “speech recognition
`engine” and “speech recognition” in various claims of the asserted
`patents.[11] During the argument, the parties agreed that these
`phrases mean software or hardware that recognizes the words or
`phrases in the natural language utterance with the understanding that
`it does not exclude mapping a stream of phonemes contained in a
`natural language utterance or generating a preliminary interpretation
`but it does not require those either. I will adopt that agreed-upon
`construction.
`
`The third term is “context” in various claims of the ’681
`Patent, the ’703 Patent and the ’176 Patent.[12] Plaintiff asserts that
`no construction is necessary. Defendants propose that the term
`means “subject domain(s) that apply to a user utterance.” Although
`the contours of the dispute are not entirely clear, the main issue
`seems to be whether context refers to some general subject domain
`relating to an utterance as Defendants propose or refers to something
`broader as Plaintiff proposes. Here, I agree with Plaintiff.
`
`The claims in which the term “context” appear do not shed
`any light on this dispute. That is, there is nothing in the term itself
`or the surrounding claim language to support Defendants’ proposal.
`Defendants rely on select disclosures from several of the patents to
`argue the “context” must mean “subject domain(s) that apply to a
`user utterance.”
` The cited portions, however, are either
`embodiments that may use a subject domain or domain agent or they
`don’t mention subject domains at all, but Defendants argue that I
`should nevertheless read in a subject domain. Therefore, I reject
`Defendants’ proposal, and decline to further construe the claims
`other than to reiterate that the ordinary meaning of context does not
`require a subject domain or domain agent.
`
`The remaining three claim terms are all from the ’681 Patent
`and the only dispute between the parties on each of those terms is
`whether each term is indefinite. That is, Plaintiff argues that no
`construction is necessary, and Defendants argue that the terms are
`indefinite. A finding of indefiniteness requires clear and convincing
`
`The terms appear in: claims 7, 10, 19, 22, 31 & 34 of the ’681 Patent; claims 1, 9, 15, 22,
`25, 29 & 30 of the ’703 Patent; claims 1, 10, 14, 25, 27, 36, 40, 42 & 51 of the ’176 Patent;
`claims 1, 10 & 32 of the ’536 Patent; and claim 7 of the ’097 Patent.
`
`“Context” appears in: claims 1, 7, 13, 19, 22, 25, 31, 34, 37, 39 & 41 of the ’681 Patent;
`claims 1, 15, 25 & 30 of the ’703 Patent; and claims 1, 14, 27 & 40 of the ’176 Patent.
`
`9
`
`11
`
`12
`
`

`

`Case 1:19-cv-01410-MN Document 90 Filed 06/23/21 Page 10 of 10 PageID #: 2344
`
`evidence. I do not believe that that evidence exists on the present
`record, which is largely attorney argument by Defendants. Thus, I
`decline to reach the merits of Defendants’ indefiniteness arguments
`at this time, and Defendants may raise the issue again in connection
`with summary judgment to the extent that they wish to continue
`pursuing that argument.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The Honorable Maryellen Noreika
`United States District Judge
`
`
`
`
`
`
`
`
`
`
`
`10
`
`