Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 1 of 15 PageID #: 7678
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`ROKU, INC.,
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`ALMONDNET, INC. and INTENT IQ,
`LLC,
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`Plaintiff,
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`Defendants.
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 21-1035 (MN)
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`MEMORANDUM ORDER
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`At Wilmington, this 29th day of May 2024:
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`The Court heard argument about the disputed claim terms of U.S. Patent Nos. 8,677,398
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`(“the ’398 Patent”), 10,715,878 (“the ’878 Patent”), 8,566,164 (“the ’164 Patent”), 10,321,198
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`(“the ’198 Patent”), 8,595,069 (“the ’069 Patent”), 8,671,139 (“the ’139 Patent”), 8,959,146 (“the
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`’146 Patent”), and 8,244,582 (“the ’582 Patent) on July 7, 2023. (D.I. 147). IT IS HEREBY
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`ORDERED that the claim terms of the ’878 Patent, the ’198 Patent, the ’139 Patent, and the ’146
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`Patent, as well as U.S. Patent Nos. 7,822,639 (“the ’639 Patent”), 8,244,586 (“the ’586 Patent),
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`10,026,100 (“the ’100 Patent”), and 10,628,857 (“the ’857 Patent”), with agreed-upon
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`constructions are construed as follows (see D.I. 136 at 5):
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`1.
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`2.
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`The preambles of claim 1 of the ’878 Patent, claim 1 of the ’198 Patent,
`claims 1 and 37 of the ’139 Patent, and claims 1 and 21 of the ’146 Patent
`are limiting;
`
`“third-party server computer” means “server controlled by an entity that is
`distinct from the entit(ies) controlling the [computer system] / [system
`comprising one or more computers] performing the claimed method” (’139
`Patent, claims 1, 37; ’146 Patent, claims 1, 21); and
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 2 of 15 PageID #: 7679
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`3.
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`“off-site advertisement” / “off-site” means “advertisement that is derived
`from outside of the immediate local context of a present site” and “outside
`of the immediate local context of a present site,” respectively (’639 Patent,
`claim 1; ’586 Patent, claim 1; ’100 Patent, claims 1, 15, 29; ’857 Patent,
`claim 1).
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`Further, as announced at the hearing on July 7, 2023, IT IS HEREBY ORDERED that the
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`disputed claim terms of the ’398 Patent, the ’878 Patent, the ’164 Patent, the ’198 Patent, the ’069
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`Patent, the ’139 Patent, the ’146 Patent, and the ’582 Patent are construed as follows:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`“automatically with the computer system” / “automatically” / “automatic”
`means “done with little to no human control” (’582 Patent, claims 1, 4–5,
`9–11, 14–15; ’139 Patent, claims 1, 37; ’146 Patent, claims 1, 21; ’164
`Patent, claim 1; ’398 Patent, claim 22; ’069 Patent, claims 4–5; ’198 Patent,
`claims 1, 4–5);
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`“available” means “electronically available” (’582 Patent; claims 1, 11);
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`“URL redirection” means “obtaining a requested webpage or a portion of a
`requested webpage from a different location” (’582 Patent, claims 1, 10,
`11);
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`“electronic indicia”/ “indicia” is not indefinite and means “electronic data
`indicative of;” “electronic indicia indicating” means “electronic data
`indicating” (’398 Patent, claim 18; ’198 Patent, claim 2);
`
`“at least in part on at least a portion” is not indefinite and is construed as
`having its plain and ordinary meaning (’398 Patent, claim 22; ’878 Patent,
`claim 6);
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`“unaffiliated third [party]/[parties]” is not indefinite and means “not closely
`associated or related” (’582 Patent, claims 1, 5, 11, 15);
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`“partial profile” is not indefinite and is construed as having its plain and
`ordinary meaning (’582 Patent, claims 1, 3, 4, 11, 13, 14);
`
`“indicia of instructions” / “indicia of a condition” / “indicia” is not indefinite
`and means “data indicative of” (’582 Patent, claims 11, 15; ’139 Patent
`claims, 1, 37; ’146 Patent, claims 1, 5–6, 8, 21); and
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`“possibly applicable” is not indefinite and means “possible to be applied”
`(’139 Patent, claims 1, 37; ’146 Patent, claims 1, 21).
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`2
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 3 of 15 PageID #: 7680
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`In addition, for the reasons set forth below:
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`1.
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`2.
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`The preamble of claim 1 of the ’582 Patent is not limiting; and
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`the preamble of claim 11, to the extent it differs from the preamble of claim
`1, of the ’582 Patent is limiting.
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`The parties briefed the issues (D.I. 136) and submitted supplemental briefing concerning
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`the preambles of claims 1 and 11 of the ’582 Patent. (D.I. 145 & 146).1 The Court carefully
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`reviewed all submissions in connection with the parties’ contentions regarding the disputed claim
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`terms, heard oral argument (see D.I. 147) and applied the legal standards below in reaching its
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`decision.
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`I.
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`LEGAL STANDARDS
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`A.
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`Claim Construction
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`“[T]he ultimate question of the proper construction of the patent [is] a question of law,”
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`although subsidiary fact-finding is sometimes necessary. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
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`574 U.S. 318, 325 (2015). “[T]he words of a claim are generally given their ordinary and
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`customary meaning [which is] the meaning that the term would have to a person of ordinary skill
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`in the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (internal
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`citations and quotation marks omitted). Although “the claims themselves provide substantial
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`guidance as to the meaning of particular claim terms,” the context of the surrounding words of the
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`claim must also be considered. Id. at 1314. “[T]he ordinary meaning of a claim term is its meaning
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`1
`
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`The original briefing covered the disputed constructions for all terms (D.I. 136). Because
`new arguments were raised at the Markman hearing, the Court requested supplemental
`briefing on constructions for the disputed preamble terms. (D.I. 147 at 23:25-24:3).
`Plaintiff submitted its brief on July 10, 2023 (D.I. 145) and Defendants responded on July
`11, 2023. (D.I. 146).
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`3
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 4 of 15 PageID #: 7681
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`to the ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation marks
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`omitted).
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`The patent specification “is always highly relevant to the claim construction analysis . . .
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`[as] it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic,
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`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is also possible that “the specification may reveal a
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`special definition given to a claim term by the patentee that differs from the meaning it would
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`otherwise possess. In such cases, the inventor’s lexicography governs.” Phillips, 415 F.3d at
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`1316. “Even when the specification describes only a single embodiment, [however,] the claims of
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`the patent will not be read restrictively unless the patentee has demonstrated a clear intention to
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`limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom
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`Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks
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`omitted) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)).
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`In addition to the specification, a court “should also consider the patent’s prosecution
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`history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
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`1995) (en banc), aff’d, 517 U.S. 370 (1996). The prosecution history, which is “intrinsic
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`evidence, . . . consists of the complete record of the proceedings before the PTO [Patent and
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`Trademark Office] and includes the prior art cited during the examination of the patent.” Phillips,
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`415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of the claim language
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`by demonstrating how the inventor understood the invention and whether the inventor limited the
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`invention in the course of prosecution, making the claim scope narrower than it would otherwise
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`be.” Id.
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`In some cases, courts “will need to look beyond the patent’s intrinsic evidence and to
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`consult extrinsic evidence in order to understand, for example, the background science or the
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`4
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 5 of 15 PageID #: 7682
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`meaning of a term in the relevant art during the relevant time period.” Teva, 574 U.S. at 331.
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`Extrinsic evidence “consists of all evidence external to the patent and prosecution history,
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`including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d
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`at 980. Expert testimony can be useful “to ensure that the court’s understanding of the technical
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`aspects of the patent is consistent with that of a person of skill in the art, or to establish that a
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`particular term in the patent or the prior art has a particular meaning in the pertinent field.”
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`Phillips, 415 F.3d at 1318. Nonetheless, courts must not lose sight of the fact that “expert reports
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`and testimony [are] generated at the time of and for the purpose of litigation and thus can suffer
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`from bias that is not present in intrinsic evidence.” Id. Overall, although extrinsic evidence “may
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`be useful to the court,” it is “less reliable” than intrinsic evidence, and its consideration “is unlikely
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`to result in a reliable interpretation of patent claim scope unless considered in the context of the
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`intrinsic evidence.” Id. at 1318-19. Where the intrinsic record unambiguously describes the scope
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`of the patented invention, reliance on any extrinsic evidence is improper. See Pitney Bowes, Inc.
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`v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
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`B.
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`Indefiniteness
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`“The primary purpose of the definiteness requirement is to ensure that the claims are
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`written in such a way that they give notice to the public of the extent of the legal protection afforded
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`by the patent, so that interested members of the public, e.g., competitors of the patent owner, can
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`determine whether or not they infringe.” All Dental Prodx, LLC v. Advantage Dental Prods., Inc.,
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`309 F.3d 774, 779-80 (Fed. Cir. 2002) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
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`520 U.S. 17, 28-29 (1997)). Put another way, “[a] patent holder should know what he owns, and
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`the public should know what he does not.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
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`Co., 535 U.S. 722, 731 (2002).
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`5
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 6 of 15 PageID #: 7683
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`A patent claim is indefinite if, “viewed in light of the specification and prosecution history,
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`[it fails to] inform those skilled in the art about the scope of the invention with reasonable
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`certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). A claim may be
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`indefinite if the patent does not convey with reasonable certainty how to measure a claimed feature.
`
`See Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015). But “[i]f such
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`an understanding of how to measure the claimed [feature] was within the scope of knowledge
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`possessed by one of ordinary skill in the art, there is no requirement for the specification to identify
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`a particular measurement technique.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d
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`1312, 1319 (Fed. Cir. 2015).
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`Like claim construction, definiteness is a question of law, but the Court must sometimes
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`render factual findings based on extrinsic evidence to resolve the ultimate issue of definiteness.
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`See, e.g., Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370, 1376 (Fed. Cir. 2017); see also
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`Teva, 574 U.S. at 334-36. “Any fact critical to a holding on indefiniteness . . . must be proven by
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`the challenger by clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357,
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`1366 (Fed. Cir. 2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed.
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`Cir. 2008).
`
`II.
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`THE COURT’S RULING
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`The Court’s ruling regarding the disputed claim terms of the ’398 Patent, the ’878 Patent,
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`the ’164 Patent, the ’198 Patent, the ’069 Patent, the ’139 Patent, the ’146 Patent, and the ’582
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`Patent, with the exception of the preambles of claims 1 and 11 of the ’582 Patent, was announced
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`during the Markman hearing on July 7, 2023, as follows:
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`6
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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 7 of 15 PageID #: 7684
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`At issue, there are ten disputed claim terms in eight
`patents.[2] I am prepared to rule on nine 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 and all the evidence submitted by
`the parties. There was full briefing on each of the disputed terms
`and we had argument 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 and indefiniteness. I have
`a legal standard section that I have included in earlier opinions,
`including somewhat recently in REX Computing, Inc. v. Cerebras
`Systems Inc., Civil Action No. 21-525 (MN). I incorporate that law
`and adopt it into my ruling today and will also set it out in the order
`that I issue.
`
`First, the preambles of claims 1 and 11 of the ’582 Patent:
`The parties disagree whether the preambles are limiting. Plaintiff
`asserts that they are and Defendants argue that they are not. As we
`have already discussed, there were some new arguments raised
`today that were not briefed. And I have asked for short additional
`submissions next week.
`
`
`The second group of terms are the “automatically” terms –
`“automatically with
`the computer system”/ “automatically”/
`“automatic” – in multiple claims of the asserted patents.[3]
`Defendants proposed the Court adopt the plain and ordinary
`meaning of the term, “wherein ‘automatically’ / ‘automatic’ does
`not mean ‘manually’
`/ ‘manual.’”
` Plaintiff proposes
`the
`construction, “not manually.” Today, Defendants agreed that the
`ordinary meaning of automatically is “done with little to no human
`control.” I will adopt that plain and ordinary meaning.
`
`
`2
`
`3
`
`
`U.S. Patent No. 8,677,398 (“the ’398 Patent”), U.S. Patent No. 10,715,878 (“the ’878
`Patent”), U.S. Patent No. 8,566,164 (“the ’164 Patent”), U.S. Patent No. 10,321,198 (“the
`’198 Patent”), U.S. Patent No. 8,595,069 (“the ’069 Patent”), U.S. Patent No. 8,671,139
`(“the ’139 Patent”), U.S. Patent No. 8,959,146 (“the ’146 Patent”), and U.S. Patent No.
`8,244,582 (“the ’582 Patent”).
`
`Claims 1, 4–5, 9–11, and 14–15 of the ’582 Patent; claims 1 and 37 of the ’139 Patent;
`claims 1 and 21 of the ’146 Patent; claim 1 of the ’164 Patent; claim 22 of the ’398 Patent;
`claims 4–5 of the ’069 Patent; claims 1 and 4–5 of the ’198 Patent.
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`7
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 8 of 15 PageID #: 7685
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`Defendants’ main argument for “not manually” is that in
`parts of the prosecution history for various patents, applicants
`commented on a lack of human action. In particular, Plaintiff cites
`to a statement in the IPR for the ’398 Patent[4] distinguishing prior
`art, noting that “[b]ecause clicking on the login button represents a
`request from the user . . . to perform the alleged ‘recognizing’ and
`‘generating and storing’ steps,
`these steps do not occur
`‘automatically’ as the claim[5] requires.”[6] I cannot, however, read
`that to mean that no prior human action is permitted, particularly
`given that the following paragraph allows that “some user action
`could be permissible,” as long as that action is not sufficient to
`“negate[] the recited steps being done ‘automatically.’”[7]
`
`Plaintiff also points out that claims of the ’139 Patent were
`amended
`to
`include
`that certain steps were automatically
`performed.[8] And that is true. I cannot, however, read that to
`clearly mean that no prior human conduct insufficient to negate the
`automation claimed is possible.
`
`Finally, Plaintiff cites to the prosecution of the ’639
`Patent,[9] which is not a patent that’s asserted claims use this term.
`There, the applicants noted that during an interview they added
`“automatically” in certain claim elements to make clear that the
`computer was doing the action. This is where the applicant used the
`phrase as “opposed to ‘manual.’”[10] I read this as requiring that a
`computer perform an action, but again, do not believe it clearly and
`unambiguously precludes prior human conduct that does not negate
`the action being automatically done.
`
`So I will construe the “automatically” terms to mean “done
`with little to no human control.” And whether there is too much
`
`
`(D.I. 137, Ex. 33 at 40).
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`It appears that claims 36 and 37 of the ’398 patent were at issue in the IPR.
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`(D.I. 137, Ex. 33 at 40).
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`Id.
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`(See D.I. 137, Ex. 39).
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`(D.I. 137, Ex. 9 at 17-18).
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`Id.
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`8
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 9 of 15 PageID #: 7686
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`human control for something to be considered automatic appears to
`me to be a fact issue for the jury.
`
`The third term is “available” in claims 1 and 11 of the ’582
`Patent. There was a dispute in the briefs about this but today
`everyone agreed that this means “electronically available.” I will
`adopt that construction.
`
`The fourth term is “URL redirection” in claims 1, 10, and 11
`of the ’582 Patent. Defendants propose the construction “obtaining
`certain information for at least a portion of an accessed page / site
`from a different location.” Plaintiff proposes the construction
`“obtaining a requested webpage from a different location.” I will
`adopt a hybrid of the Plaintiff’s proposal: “obtaining a requested
`webpage or a portion of a requested webpage from a different
`location.”
`
` I
`
` think this is supported by the intrinsic evidence. Element
`(b) of claims 1 and 11 of the ’582 Patent require that “receiving the
`partial profile is achieved as a result of automatic electronic URL
`redirection from a portion of a page of the website accessed by the
`user computer.” Similarly, the specification states that “[t]he web-
`site forwards . . . (optionally) a redirect to a portion of the visitor’s
`page to a server located in cyberspace . . . . By redirecting a portion
`of the visitor’s page to the server, the visitor’s browser reports to the
`server a cookie the server put on the visitor’s computer in the past,
`if any.”[11] The specification also states that “[t]he user enables the
`server attached to the databank to receive the cookie it installed by
`redirecting a portion of the visitor page to the databank’s
`server[].”[12]
`
`Plaintiff relies on the ’582 Patent’s prosecution history,
`specifically the prosecution of a parent patent (the ’307 Patent).[13]
`Although Plaintiff has identified statements from the patent history
`that refer to examples of computing dictionary definitions, and one
`of those is consistent with Plaintiff’s proposed construction, I do not
`find the “example” given to be a clear and unambiguous
`
`
`(’582 Patent at 4:2-8).
`
`(’582 Patent at 12:2-4).
`
`(D.I. 137, Ex. 41 at 6-7).
`
`11
`
`12
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`13
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`9
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 10 of 15 PageID #: 7687
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`definition.[14] Nor do I think that they otherwise undermine the
`statements in the specification I have already noted.
`
`The fifth term “electronic indicia”/ “indicia” in claim 18 of
`the ’398 Patent and claim 2 of the ’198 Patent, as well as the eighth
`term “partial profile” in claims 1, 3, 4, 11, 13, and 14 of the ’582
`Patent, the ninth term, “indicia of instructions” / “indicia of a
`condition” / “indicia” in various claims,[15] and the tenth term,
`“possibly applicable” in claims 1 and 37 of the ’139 Patent and
`claims 1 and 21 of the ’146 Patent, I have already told you that I do
`not find Plaintiff has met its burden to prove indefiniteness by clear
`and convincing evidence and in the absence of any counterproposals
`will adopt the Defendants’ proposals for those terms. Plaintiff may,
`if appropriate, raise this issue in connection with summary judgment
`if additional evidence is adduced.
`
` think I am going to say the same thing for the sixth term,
`“at least in part on at least a portion” in claim 22 of the ’398 Patent
`and claim 6 of the ’878 Patent. Plaintiff has not met its burden. And
`I do think that this case is distinguishable from the Zadro case
`Plaintiff relies on.[16] In Zadro, Judge Bryson was addressing the
`claim element “at least in part generally concentrically aligned.”[17]
`He did note that in that claim the language “at least in part” was
`problematic, but I read that really as being problematic in the context
`with the other language. So I cannot say as a matter of law that
`Plaintiff has met its burden for this term. And will give those terms
`their plain and ordinary meaning.
`
`Finally, the seventh term argued is “unaffiliated third
`[party]/[parties]” in claims 1, 5, 11, 15 of the ’582 Patent.
`Defendants propose the construction “a party not having common
`ownership with the party or parties that control said programmed
`computer system.” Plaintiff argues that this term is indefinite and
`lacks reasonable certainty as to scope.
`
`
` I
`
`
`Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016).
`
`Claims 11 and 15 of the ’582 Patent; claims 1 and 37 of the ’139 Patent; claims 1, 5–6, 8,
`and 21 of the ’146 Patent.
`
`Zadro Prods., Inc. v. SDI Techs., Inc., No. 17-1406 (WCB), 2019 WL 10252726 (D. Del.
`June 19, 2019).
`
`Id. at *1-4.
`
`14
`
`15
`
`16
`
`17
`
`10
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 11 of 15 PageID #: 7688
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`I have struggled with this term. The patent really provides
`no guidance at all as to what unaffiliated means. Defendants rely on
`portions of column 3 of the ’582 Patent[18] and Roku’s corporate
`privacy statement to support their reading. I do not find either of
`those to be helpful. The specification does not say anything about
`the affiliation status of the entities mentioned – whether affiliated or
`unaffiliated. And it certainly says nothing about their corporate or
`business ownership. So I reject Defendants’ proposal.
`
`And although I was tempted to find that the term is
`indefinite, I think the more prudent course is to let discovery play
`out and see if there is additional information that comes out that
`would be relevant to Plaintiff’s arguments.
`
`So I am going to give unaffiliated its plain and ordinary
`meaning, which according to some of the dictionary definitions that
`we saw during the hearing, I am going to say is “not closely
`associated or related.”
`
`
`(D.I. 147 at 89:25-96:11).
`
`
`As noted, the Court did not decide at the hearing whether the preambles of claims 1 and 11
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`of the ’582 Patent are limiting. Plaintiff argues that they are limiting, and Defendants argue that
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`they are not.
`
`Preambles generally do not limit claims. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d
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`1336, 1346 (Fed. Cir. 2002). A preamble, however, may serve as a claim limitation in certain
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`instances, such as when the preamble “recites essential structure or steps, or if it is ‘necessary to
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`give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
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`289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, 182 F.3d at 1305). A preamble may
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`also be limiting when the claim limitations in the body of claim “rely upon and derive antecedent
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`basis from the preamble.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir.
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`2003). On the other hand, when the claim body recites a structurally complete invention and the
`
`
`(’582 Patent at 3:33-47).
`
`18
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`11
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`

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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 12 of 15 PageID #: 7689
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`preamble language is used merely to state the purpose or intended use of the invention, the
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`preamble is generally not treated as limiting the scope of the claim. Catalina, 289 F.3d at 808.
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`See also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006).
`
`There is no “litmus test” for determining whether preamble language is limiting. Catalina,
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`289 F.3d at 808. Rather, whether such language is limiting is assessed in regard to “the facts of
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`each case in light of the claim as a whole and the invention described in the patent.” Storage Tech.
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`Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). See also Am. Med. Sys., Inc. v.
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`Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010); Catalina, 289 F.3d at 808 (“Whether to treat
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`a preamble as a limitation is a determination resolved only on review of the entire . . . patent to
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`gain an understanding of what the inventors actually invented and intended to encompass by the
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`claim.” (internal quotation marks and citation omitted)).
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`The preamble of claim 1 recites “[a]n automated method of collecting profiles of Internet-
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`using entities, the method comprising.”19 Plaintiff argues that this preamble is limiting because it
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`requires that the method be automated, and the phrase “Internet-using entities” gives meaning to
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`the phrase “global computer network.” (D.I. 136 at 7). Defendants argue that the preamble is not
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`limiting because claim 1 recites a structurally complete invention and the preamble is used to state
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`an intended purpose of use. (D.I. 136 at 6-7).
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`According to Plaintiff, the inclusion of “automated” in the preamble is limiting because if
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`it is not limiting, the claim could be infringed by performing a method in which some steps were
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`automatically performed, and others were manually performed. Plaintiff points to statements made
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`by AlmondNet in its Patent Owner’s Preliminary Response (“POPR”) to Covered Business
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`Method (“CBM”) challenges raised by Yahoo! Inc. before the Patent Trial and Appeal Board.
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`(’582 Patent at 16:42-43).
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`19
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`12
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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 13 of 15 PageID #: 7690
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`Plaintiff characterizes AlmondNet’s statements in its POPR, specifically that “the claims do not
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`deal with human decision-making or activities,” as admissions that “convey core and fundamental
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`characteristics of the claims which AlmondNet used to overcome Yahoo!’s § 101 challenge.”
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`(D.I. 145 at 1). Defendants respond that AlmondNet was not “disavowing any human involvement
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`whatsoever,” but rather distinguishing “the computer-centric claims of the ’582 Patent from a
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`category of “claims relating to ‘interpersonal and intrapersonal activities,’” which courts have
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`sometimes held to be abstract. (D.I. 146 at 1). In addition, Defendants emphasize that AlmondNet
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`never “sa[id] that the entirety of the claimed method must be performed automatically” and argue
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`that the inclusion of automatic steps in claim 1 does not require that “the entire method . . . be
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`performed solely by a programmed computer without any human interaction,” but rather “supports
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`the ‘automatic nature’ of the process.” Id.
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`Notwithstanding Plaintiff’s focus on “automated” within the preamble, it did not propose
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`to construe that word. (D.I. 147 at 4:2-8). And despite the Court’s construction of the
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`“automatically” terms as “done with little to no human control,” Plaintiff continues to argue that
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`“the limiting nature of the preambles should preclude any of the recited method steps in claim 1
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`from being manually initiated or performed.” (D.I. 145 at 2). Such an interpretation would create
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`internal inconsistency between the preamble and body of claim 1, where four of the five elements
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`include something “automatic” or “automatically” done.20
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`Regarding the phrase “Internet-using entities,” at the Markman hearing, the parties
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`stipulated that the term “global computer network” in the body of claims 1 and 11 means the
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`Internet. (D.I. 147 at 19:25-20:8). Given this stipulation, the phrase “Internet-using entities” does
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`not give meaning to the phrase “global computer network” and therefore is not limiting.
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`(’582 Patent at 16:44-67).
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`20
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`13
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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 14 of 15 PageID #: 7691
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`Therefore, the Court finds that the preamble of claim 1 is not limiting. The body of the
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`claim recites a structurally complete invention, with the preamble language used merely to “state
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`a purpose or intended use for the invention.” Catalina, 289 F.3d at 808 (quoting Rowe v. Dror,
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`112 F.3d 473, 478 (Fed. Cir. 1997)).
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`The preamble of claim 11 recites “[a] tangible, non-transitory data storage medium
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`comprising indicia of instructions for a processor to perform a method of collecting profiles of
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`Internet-using entities, the method comprising.”21 The parties dispute whether the entire preamble
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`is limiting and if not, which parts are and are not limiting. Defendants argue that the Court should
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`find the entire preamble not limiting or at a minimum, everything after the first “comprising” not
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`limiting. Plaintiff argues that the entire preamble is limiting. (D.I. 147 at 26:18-23). Based on
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`their representations at the Markman hearing and the supplemental briefing, the parties appear to
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`no longer seriously dispute whether the beginning of the preamble of claim 11 is limiting (and
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`effectively agree that it is).
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`In their briefing and at the hearing, Defendants identified claim 11 as a “Beauregard claim,”
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`which is a claim to a computer-readable medium. (D.I. 136 at 6; D.I. 147 at 10:16-23). In this
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`case, that claim 11 is a Beauregard claim seems to only be apparent from the preamble. In addition,
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`claims 12 through 20 reference “[t]he data storage medium of claim 11,” but only the preamble of
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`claim 11 provides that the “data storage medium” is “tangible” and “non-transitory.” Thus, this
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`part of the preamble gives meaning to the claims and is limiting.
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`The rest of the preamble includes, “indicia of instructions for a processor to perform a
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`method of collecting profiles of Internet-using entities, the method comprising[.]” Several of the
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`claims that follow claim 11, specifically claims 12, 15, 16, 17, 19, and 20, depend on claim 11.
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`(’582 Patent at 17:45-48).
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`21
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`14
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`Case 1:21-cv-01035-MN Document 193 Filed 05/29/24 Page 15 of 15 PageID #: 7692
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`They each include that “the indicia of instructions instruct the processor to perform a method that
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`further comprises,” followed by additional limitations. The Court finds that this part of the
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`preamble is also limiting because other claims “rely upon and derive antecedent basis from” it.
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`See Eaton Corp., 323 F.3d at 1339. However, for the same reason stated above in the discussion
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`of the preamble of claim 1, the phrase “Internet-using entities,” is not limiting. Therefore, the Court
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`finds the preamble of claim 11, to the extent it differs from the preamble of claim 1, of the ’582
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`Patent is limiting.
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`The Honorable Maryellen Noreika
`United States District Judge
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`15
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