`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`
`
` )
`
`
`)
`)
`)
`) C.A. No. 15-cv-262-SLR-SRF
`)
`)
`)
`)
`)
`
`
`
`
`IMPROVED SEARCH LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`AOL INC.,
`
`
`
`
`Defendant.
`
`PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF
`
`Dated: November 3, 2016
`
`
`
`Brian E. Farnan (Bar No. 4089)
`Farnan LLP
`919 North Market St., 12th Floor
`Wilmington, DE 19801
`Phone 302-777-0300
`Fax 302-777-0301
`bfarnan@farnanlaw.com
`
`Robert J. Yorio (admitted pro hac vice)
`Carr & Ferrell LLP
`120 Constitution Drive
`Menlo Park, California 94025
`Tel: (650) 812-3400
`yorio@carrferrell.com
`
`Attorneys for Plaintiff Improved Search LLC
`
`
`AOL Ex. 1012
`Page 1 of 27
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`

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`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`INTRODUCTION .............................................................................................................. 1 
`
`THE PATENTED TECHNOLOGY ................................................................................... 1 
`
`RELEVANT PRINCIPLES OF CLAIM CONSTRUCTION ............................................ 2 
`
`ANALYSIS ......................................................................................................................... 3 
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`
`
`
`
`Translating .............................................................................................................. 3
`
`Second language ..................................................................................................... 5
`
`Content word ........................................................................................................... 6
`
`Contextual search / contextually searching ............................................................. 7
`
`Dialectal standardization / dialectally standardizing / dialectally standardize ..... 10
`
`Search in the second language / searching in the second language ...................... 12
`
`Advertising cues .................................................................................................... 13
`
`Disputed phrases 8, 9, 10, and 11 are not indefinite ............................................. 14
`
`8.
`
`9.
`
`Means for receiving from the user through an input device a
`query in a first language ............................................................................ 15
`
`Dialectal controller for dialectally standardizing a content
`word extracted from the query .................................................................. 16
`
`10. Means to search the database of the advertising cues based
`on the relevancy to the translated content word ........................................ 19
`
`11. Means to send the search results and the matching advertising
`cues to the user’s computer screen ............................................................ 21
`
`
`
`i
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`AOL Ex. 1012
`Page 2 of 27
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`

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`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases 
`
`ACTV, Inc. v. Walt Disney Co.
`346 F.3d 1082, 1088 (Fed. Cir. 2003) ........................................................................................ 2
`
`Comark Commc’ns, Inc. v. Harris Corp.
`156 F.3d 1182, 1186 (Fed. Cir. 1998) ........................................................................................ 2
`
`Greenberg v. Ethicon Endo-Surgery, Inc.
`91 F.3d 1580, 1583 (Fed. Cir. 1996) ........................................................................................ 17
`
`Markman v. Westview Instruments, Inc.
`517 U.S. 370, 387 (1996) ............................................................................................................ 2
`
`Nautilus, Inc. v. Biosig Instruments, Inc.
`134 S. Ct. 2120, 2124 (2014) .................................................................................................... 15
`
`NFC Technology, LLC, v. Samsung Electronics Co., Ltd. et al.
`No. 2:15-cv-283-JRG-RSP (E.D. Tex. Apr. 28, 2016) ............................................................. 18
`
`Noah Sys., Inc. v. Intuit Inc.
`675 F.3d 1302, 1311 (Fed. Cir. 2012) ...................................................................................... 15
`
`Oatey Co. v. IPS Corp.
`514 F.3d 1271, 1276 (Fed. Cir. 2008) .................................................................................. 4, 10
`
`Phillips v. AWH Corp.
`415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) ................................................................ 2, 3, 8
`
`Robert Bosch, LLC v. Snap-On Inc.
`769 F.3d 1094, 1099 (Fed. Cir. 2014) ...................................................................................... 17
`
`Southwall techs., Inc. v. Cardinal IG Co.
` 54 F.3d 1570, 1578 (Fed. Cir. 1995) ......................................................................................... 3
`
`Strikeforce Techs., Inc. v. Phonefactor, Inc.
`Civil Action No. 13-490-RGA-MPT,
`2015 U.S. Dist. LEXIS 1027 at *11-12 (D. Del. Jan. 29, 2015) .............................................. 15
`
`TecSec, Inc. v. Int’l Bus. Machs. Corp.
`731 F.3d 1336, 1349 (Fed. Cir. 2013) ...................................................................................... 15
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc.
`135 S. Ct. 831, 837-38, 841-42 (2015) ....................................................................................... 3
`
`ii
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`AOL Ex. 1012
`Page 3 of 27
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`

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`
`Virnetx, Inc. v. Cisco Sys., Inc.
`767 F.3d 1308, 1318 (Fed. Cir. 2014) ........................................................................................ 8
`
`Watts v. XL Sys., Inc.
`232 F.3d 877, 880 (Fed. Cir. 2000) .......................................................................................... 17
`
`Wi-Lan USA, Inc., v. Apple Inc.
`830 F.3d 1374, 1382 (Fed. Cir. 2016) ............................................................................ 8, 10, 12
`
`Williamson v. Citrix Online, LLC
`792 F.3d 1339, 1348 (Fed. Cir. 2015) ...................................................................................... 17
`
`
`
`Statutes 
`
`35 U.S.C. § 112 ...................................................................................................................... passim
`
`iii
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`AOL Ex. 1012
`Page 4 of 27
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`
`
`INTRODUCTION
`
`Plaintiff Improved Search LLC (“Improved Search”) proposes constructions that are
`
`I.
`
`
`
`consistent with the plain language of the claims and are supported by the specification.
`
`Alternatively, Defendant’s constructions incorporate arbitrary limitations and exclude disclosed
`
`embodiments that would otherwise be supported by the plain language of the claims. Defendant
`
`further contends erroneously that four terms/phrases are indefinite as construed as means-plus-
`
`function claims under 35 U.S.C. § 112 ¶ 6 – specifically failing to make a prima facie case for
`
`interpreting “dialectal controller” under § 112 ¶ 6. The term does not recite the word “means,”
`
`even though other terms found in the same claims do, and Defendant cannot overcome the
`
`presumption against interpretation under § 112 ¶ 6 since the term denotes sufficient structure.
`
`Even if this Court rules that the particular term is to be so governed, the specification expressly
`
`and unequivocally describes structure linked to each of the four claim terms.
`
`II.
`
`THE PATENTED TECHNOLOGY
`
`
`
`The ‘101 and ‘154 patents disclose methods and systems for conducting a translingual
`
`search on the Internet and accessing multilingual web sites through dialectal standardization, pre-
`
`search translation and post-search translation. Dialectal standardization identifies a keyword
`
`from an input query and standardizes it to a standard and less ambiguous keyword. The pre-
`
`search translation translates the standardized keyword to a target language which is then used in
`
`searching and retrieving web documents in the target language. The post-search translation then
`
`provides translations of the search results into the source language.
`
`
`
`The ‘101 patent aimed to solve the problem that most Internet search tools catered
`
`primarily to the needs of English speaking Internet users, thus rendering the search tools
`
`relatively useless to non-English speaking Internet users who constituted as much as 75% of the
`
`1
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`AOL Ex. 1012
`Page 5 of 27
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`Internet user population at the time of the inventions. The problem had not been addressed by
`
`any pre-existing search engine. While non-English speaking Internet users created web sites to
`
`store information in non-English languages, that rich source of information was unavailable to
`
`query by English oriented search engines.
`
`
`
`The ‘154 patent further disclosed a method and system to send a user one or more
`
`advertisements in a source language, over the Internet, while the user is performing a cross
`
`language search. In particular, the server conducts a search in the database and returns one or
`
`more advertisements relevant to the content word.
`
`III. RELEVANT PRINCIPLES OF CLAIM CONSTRUCTION
`
`
`
`Claim construction is a matter of law. Markman v. Westview Instruments, Inc., 517 U.S.
`
`370, 387 (1996). The ordinary and customary meaning of a claim term 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.”
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Proper claim
`
`construction examines “the claim language, the written description, and, if relevant, the
`
`prosecution history . . .[t]he appropriate starting point, however, is always with the language of
`
`the asserted claim itself.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.
`
`Cir. 1998). Not only do “the claims themselves provide substantial guidance as to the meaning
`
`of particular claim terms,” Phillips, 415 F.3d at 1314, but also “the context of the surrounding
`
`words of the claim” must be considered to determine “the ordinary and customary meaning of
`
`those terms.” Id. (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
`
`2003)).
`
`
`
`Extrinsic evidence may not be used to contradict or change the meaning of claims “in
`
`derogation of the ‘indisputable public records consisting of the claims, the specification and the
`
`2
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`AOL Ex. 1012
`Page 6 of 27
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`prosecution history,’ thereby undermining the public notice function of patents.” Phillips. at
`
`1319 (quoting Southwall techs., Inc. v. Cardinal IG Co. 54 F.3d 1570, 1578 (Fed. Cir. 1995)).
`
`While the court may consider such evidence “if the court deems it helpful in determining ‘the
`
`true meaning of languages used in the patent claims,’” the extrinsic evidence “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. At times, a district court may need to resolve subsidiary
`
`factual disputes in the course of construing a patent claim, such as finding that a “certain term of
`
`art had a particular meaning to a person of ordinary skill in the art at the time of the invention.”
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837-38, 841-42 (2015).
`
`IV. ANALYSIS
`
`
`
`A.
`
`Translating1
`
`Claim Phrase
`
`translating
`
`Improved Search’s Proposed
`Construction
`changing text from one language into
`an equivalent text in a different
`language
`
`AOL’s Proposed Construction
`
`changing text from one language
`into an equivalent text in a different
`language pre-selected by the user
`
`
`
`
`
`The term “translating” should be construed as “changing text from one language into an
`
`equivalent text in a different language.” There is no dispute whether “translating” includes this
`
`construction. However, Defendants ask the Court to construe “translating” to add a requirement
`
`that the different language is “pre-selected by the user.” The term “translating” has no limited
`
`meaning in the context of the claims or specification. In the asserted claims, “translating” is used
`
`in two separate contexts: “translating” a standardized content word into a second language; and
`
`1 “Translating” appears in asserted claims 1 and 25 and in non-asserted claims 7, 9, 12, 19, 22,
`and 23 of the ‘101 patent, and in asserted claims 1 and 7 and in non-asserted claim 13 of the
`‘154 patent. (‘101 patent, claims 1, 7, 9, 12, 19, 22, 23, and 25; and ‘154 patent, claims 1, 7,
`and 13.) See Joint Claim Construction Statement (D.I. 51 in 15-cv-262) at p. 2.
`
`3
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`“translating” the search results into a first language. The claims do not require that a user pre-
`
`selects the first or second language, only that the text is changed from one language into an
`
`equivalent text in a different language. The word “pre-selected” does not appear in any claim of
`
`the ‘101 or ‘154 patents, and there is no reason to insert it into the claims.
`
`
`
`Defendant seems to import this unclaimed limitation not from any citation of
`
`“translating,” but from an apparent misinterpretation of a single embodiment describing a “target
`
`language having been pre-selected by the user.” (‘101 patent, 6:5-9.) Nonetheless, Defendant’s
`
`proposed construction is incorrect because it excludes disclosed embodiments. Oatey Co. v. IPS
`
`Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008). The specification makes clear that the target
`
`language may also include a “default target language.” (‘101 patent, 6:9-11.) Otherwise, each
`
`reference to “target language” does not limit the term to being “pre-selected,” but instead
`
`generally describes the target language. (See ‘101 patent, Abstract, Figures 2 and 3, 3:25-45,
`
`4:15-21, 4:30-33, 4:61-67, 7:1-27.) Furthermore, neither the claims nor specification require that
`
`a user pre-select a first or a second language for translating. (See Id. at 1, 5, 7, 12, 16, 17, 22-24,
`
`27, and 28; ‘154 patent, claims 1, 4, 7, 10, 13, and 17-19.) Certainly, a layperson can readily
`
`contemplate “translating” into a different language not necessarily “pre-selected by a user.” (See
`
`Declaration of Dr. Jaime Carbonell, Ph.D. In Support of Improved Search Opening Claim
`
`Construction Brief, filed herewith (“Carbonell Decl.”) at ¶ 14.)
`
`
`
`Accordingly, “translating” should be construed as “changing text from one language into
`
`an equivalent text in a different language,” and the additional limitations injected by Defendant
`
`should be rejected.
`
`4
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`Page 8 of 27
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`
`
`B.
`
`Second language2
`
`
`
`Claim Phrase
`
`second language
`
`Improved Search’s Proposed
`Construction
`language different from the first
`language, including different dialects
`of the first language
`
`AOL’s Proposed Construction
`
`language different from the first
`language
`
`
`
`
`
`The claims and specification require that “second language” be construed as “language
`
`different from the first language, including different dialects of the first language.” Defendant’s
`
`proposed construction may exclude translating from a first dialect of a language into a second
`
`dialect of the same language (e.g. translating from the Mandarin dialect of the Chinese language
`
`to the Cantonese dialect of the Chinese language). Each use of “second language” in the asserted
`
`claims clearly encompasses translating into, performing a contextual search in, and using a
`
`search engine in a second language that is a “language different from the first language,
`
`including different dialects of the first language.”
`
`
`
`“Including different dialects of the first language” is supported by the specification. For
`
`example, the ‘101 specification describes that, “In Chinese, for instance, there are as many as
`
`over forty different dialectal variations for just one particular word. Such instances corroborate
`
`the fact that dialectal variations are the rule rather than the exception.” (‘101 patent, 5:44-47.)
`
`In certain languages, such as Chinese as explained by the ‘101 specification, different dialectal
`
`variations are so prolific as to warrant a separate translation, contextual search, and search engine
`
`for each dialect. (Carbonell Decl. ¶ 15.) Indeed, there exist translation services that offer
`
`
`2 “Second language” appears in asserted claims 1, 5, 24, 27, and 28 and in non-asserted claims
`6, 7, 12, 16, 17, 22, and 23 of the ‘101 patent, and in asserted claims 1 and 7 and in non-
`asserted claims 4, 10, 13, and 17-19 of the ‘154 patent. (‘101 patent, claims 1, 5, 7, 12, 16,
`17, 22-24, 27, and 28; and ‘154 patent, claims 1, 4, 7, 10, 13, and 17-19.) See Joint Claim
`Construction Statement (D.I. 51 in 15-cv-262) at p. 2.
`
`5
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`translation across dialects of the same language. (Id. See Exhibit J of Carbonell Decl.) There
`
`also exists research for translating between dialects of the same language. (See Exhibit C of
`
`Carbonell Decl.; See also Exhibit B of Carbonell Decl., (discussing “inter-dialect [machine
`
`translation] in general and Cantonese-Mandarin [machine translation] in particular”).
`
`Accordingly, “second language” should be construed as “language different from the first
`
`language, including different dialects of the first language.”
`
`
`
`C.
`
`Content word3
`
`Claim Phrase
`
`content word
`
`Improved Search’s Proposed
`Construction
`a word, typically a noun, verb,
`adjective, or adverb, that carries
`semantic content
`
`AOL’s Proposed Construction
`
`a noun, verb, adjective, or adverb
`
`
`
`
`
`The concept of a “content word” is well known in the art of cross-lingual translation, and
`
`would be understood by a person having ordinary skill in the art to mean “a word, typically a
`
`noun, verb, adjective, or adverb, that carries semantic content.” (See, e.g., Merriam Webster’s
`
`Online Dictionary http://www.merriam-webster.com/dictionary/content%20word (a “content
`
`word” is “a word that primarily expresses lexical meaning”). (Exhibit D of Carbonell Decl.)
`
`
`
`Defendant’s proposed construction unduly limits “content word” to only a “noun, verb,
`
`adjective, or adverb,” which is far narrower than the inventor’s intended scope of the claim
`
`element. For example, a user can search for model numbers such as “EOS-120.” While it is
`
`clear that model numbers carry semantic content, linguists may dispute whether the model is
`
`considered a noun. (Carbonell Decl. ¶ 16.) Furthermore, a user can search with numbers as
`
`3 “Content word” appears in asserted claim 1 and in non-asserted claims 9, 12, 19, 22 and 23
`of the ‘101 patent, and in asserted claims 1 and 7 and in non-asserted claims 3 and 9 of the
`‘154 patent. (‘101 patent, claims 1, 9, 12, 19, 22, and 23; and ‘154 patent, claims 1, 3, 7, and
`9.) See Joint Claim Construction Statement (D.I. 51 in 15-cv-262) at p. 2.
`
`6
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`keywords, e.g. patent numbers, license numbers, phone numbers, etc., which may not necessarily
`
`be nouns, verbs, adjectives, or adverbs. (Id.; See Exhibit F of Carbonell Decl.) Linguists
`
`categorize such examples as “cardinals.” (Id.) In addition, users can search with “ordinals” such
`
`as “thirty-third.” (Id.) Nothing in the specification implies that “content word” is limited to only
`
`nouns, verbs, adjectives, or adverbs.
`
`The ‘154 patent supports incorporating other word structures, besides nouns, verbs,
`
`adjectives, and adverbs, that carry semantic content. For example, the ‘154 patent discloses that
`
`“in a typical deployment, as soon as a content word or a keyword is extracted from the user’s
`
`query input, the server conducts a search in the database and returns to the user one or more
`
`advertisements relevant to the content word or keyword.” (‘154 patent, 4:41-45.) This passage
`
`indicates that the content word is something useful as a key field to search a database, including
`
`proper names, model numbers, quantities, units, etc. (Carbonell Decl. ¶ 17-18.)
`
`Accordingly, “content word” should be construed as “a word, typically a noun, verb,
`
`adjective, or adverb, that carries semantic content.”
`
`
`
`D.
`
`Contextual search / contextually searching4
`
`Claim Phrase
`
`contextual
`search /
`contextually
`searching
`
`
`
`Improved Search’s Proposed
`Construction
`Identification of/identifying relevant
`documents from the domain-
`unlimited set of documents available
`on the World Wide Web, based on
`words contained in the documents
`
`AOL’s Proposed Construction
`
`identification of relevant documents
`from an external set of unidentified
`documents, not a pre-identified set
`of documents, based on words
`contained in those documents
`
`
`4 “Contextual search / contextually searching” appears in asserted claims 1, 24, and 25 and in
`non-asserted claims 9, 12, 19, 22 and 23 of the ‘101 patent, and in asserted claims 1 and 7 of
`the ‘154 patent. (‘101 patent, claims 1, 9, 12, 19, and 22-25; and ‘154 patent, claims 1 and
`7.) See Joint Claim Construction Statement (D.I. 51 in 15-cv-262) at p. 2.
`
`7
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`
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`The term “contextual search” or “contextually searching” should be construed as the
`
`“identification of / identifying relevant documents from the domain-unlimited set of documents
`
`available on the World Wide Web, based on words contained in the documents.” Indeed, while
`
`decisions of the Patent Trial and Appeal Board (PTAB) have only persuasive authority,
`
`Improved Search’s construction is identical to that of “contextual search” and “contextual
`
`searching” as interpreted by the PTAB in the IPR proceeding initiated against the ‘101 patent by
`
`AOL and Google. (See IPR2016-00797 Decision Denying Institution of Inter Partes Review,
`
`dated September 6, 2016, pp. 6-12.) This construction is the same under both the Broadest
`
`Reasonable Interpretation standard and Phillips.
`
`The proposed construction is supported by the plain meaning of the claim language. For
`
`example, claim terms such as “obtaining the search results in the second language in the form of
`
`at least one of site names (URLs) and documents, satisfying a search criteria” (‘101 patent, claim
`
`1), “a search engine for searching in the second language, the site names (URLs), pages and
`
`descriptions satisfying search criteria” (Id., claim 12), and “translating said web documents” (Id.,
`
`claim 23) support construing contextual search as being over the domain-unlimited set of
`
`documents available on the World Wide Web. There is no support in the patent claims or the
`
`specifications for any form of domain-limited search, or searches performed on a fixed database
`
`or on a pre-selected set of documents. (Carbonell Decl. ¶ 19.) Proper construction of a claim
`
`term is informed by “consistent use of [the] term in a particular way in the specification.” Wi-
`
`Lan USA, Inc., v. Apple Inc., 830 F.3d 1374, 1382 (Fed. Cir. 2016) (citing Virnetx, Inc. v. Cisco
`
`Sys., Inc., 767 F.3d 1308, 1318 (Fed. Cir. 2014)) (rejecting a proposed construction of “specified
`
`connection,” in which an “intermediary node can maintain only one ‘specified connection,’ that
`
`8
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`was divorced from the claim language and the specification which consistently limited the term
`
`to multiple connections).
`
`
`
`The ‘101 and ‘154 patents describe a technology that was specifically developed and
`
`designed to identify relevant documents from the domain-unlimited set of documents over the
`
`World Wide Web. The specification describes that, at the time of the ‘101 patent, “the sheer
`
`volume of documents available on different sites on the World Wide Web (‘Web’) warrants that
`
`there be efficient search tools for quick search and retrieval of relevant information.” (‘101
`
`patent, 1:16-20.) As such, the specification explains that the invention is specifically directed to
`
`“translation of query and retrieval of multilingual information on the web and more particularly
`
`to a method and system for conducting a translingual search on the Internet and accessing
`
`multilingual web sites through dialectal standardization, pre-search translation and post-search
`
`translation.” (Id., 1:9-14.) Further supporting the proposed construction, the specification
`
`unequivocally describes the invention as including searching, retrieving, and accessing web
`
`documents and web sites. (See Id., Abstract, 3:40-45, 4:10-16, 4:61-67, 5:5-21, 6:17-22, 6:40-
`
`44, 6:57-63, 7:29-33.)
`
`
`
`In addition, the prosecution history explicitly supports the proposed construction. The
`
`patentee amended independent claims 1, 12, 22 and 23 of the ‘101 patent to include “contextual
`
`search” to “further distinguish a feature of the present invention allowing input of a query in a
`
`first language or source language; and a contextual search of the Internet in a second or target
`
`language.” (Exhibit 3 of Yorio Decl.) The patentee specifically argued over the prior art that did
`
`“not teach the element of performing a contextual search in a network,” thus showing the
`
`absence of any form of domain limited search being included within “contextual search.” (Id.)
`
`Thus, the proposed construction is consistent with the plain meaning of the claim language and is
`
`9
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`supported by both the specification and the file history. (See Carbonell Decl. ¶ 19; Wi-Lan USA
`
`Inc., 830 F.3d at 1382.)
`
`Accordingly, “contextual search / contextually searching” should be construed as
`
`“identification of / identifying relevant documents from the domain-unlimited set of documents
`
`available on the World Wide Web, based on words contained in the documents.”
`
`
`
`E.
`
`Dialectal standardization / dialectally standardizing / dialectally standardize5
`
`Claim Phrase
`
`dialectal standardization /
`dialectally standardizing /
`dialectally standardize
`
`Improved Search’s Proposed
`Construction
`to map keywords from different
`styles and dialects into standard
`and less ambiguous keywords
`
`AOL’s Proposed Construction
`
`changing a word to a more
`standard and less ambiguous
`word in a different dialect of the
`same language
`
`
`
`
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`“Dialectal standardization” means “to map keywords from different styles and dialects
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`into standard and less ambiguous keywords.” This construction is consistent with the plain
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`meaning of the claim language and mandated by the specification and file history.
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`Defendant’s alternative proposal that “dialectal standardization” be construed as
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`“changing a word to a more standard and less ambiguous word in a different dialect of the same
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`language” is erroneous as it excludes disclosed embodiments. Oatey Co. v. IPS Corp., 514 F.3d
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`1271, 1276 (Fed. Cir. 2008). The intrinsic record makes clear that, for instance, different
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`variants of the word “auto,” including “automobile” and “transportation vehicle” are dialectally
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`standardized. (‘101 patent, 5:63-67.) The word “motorcar” may similarly be dialectally
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`standardized to “automobile.” Contrary to Defendant’s proposed construction, each variant is in
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`5
`“Dialectal standardization / dialectally standardizing / dialectally standardize” appears in
`asserted claim 1 and in non-asserted claims 9, 12, 19, 22, and 23 of the ‘101 patent, and in
`asserted claims 1 and 7 of the ‘154 patent. (‘101 patent, claims 1, 9, 12, 19, 22, and 23; and
`‘154 patent, claims 1 and 7.) See Joint Claim Construction Statement (D.I. 51 in 15-cv-262)
`at p. 2.
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`the same dialect, namely American English. (Carbonell Decl. ¶ 20-21.) Other examples include
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`variants of “delimit,” including “demarcate” and “differentiate,” or variants of “airplane,” such
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`as “plane” and “aircraft.” (Id.) Under Defendant’s proposed construction, a search for “plane”
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`would not be dialectally standardized to “airplane” or “aircraft” because each variant is in the
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`same dialect of American English. Search results for “plane” may miss web documents relating
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`to airplanes, since “plane” is more ambiguous.. (Id.) For example, a searching for “planes and
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`level,” returns results for a multitude of varying meanings, such as geometric figures, carpenter’s
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`tools, level flight, games, etc., while “airplanes and level” returns mostly flight-related results.
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`(Id.; Exhibit H of Carbonell Decl.; Exhibit I of Carbonell Decl.) That disclosed embodiment, an
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`important kind of dialectal standardization, would be excluded by the Defendant’s proposed
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`construction which requires the words to be in different dialects of the same language (e.g.
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`permitting “Lorry” to “Truck,” but excluding “auto” to “automobile”). (Carbonell Decl., ¶ 20-
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`21.)
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`The intrinsic record makes clear that the claimed invention requires the keyword to be
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`dialectally standardized to a commonly known word or term, regardless of whether the dialectal
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`variations between dialects exist within the same dialect. The Background, Summary, and
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`Detailed Description of the Invention each explain that dialectal standardization is “standardizing
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`the word to a commonly known word” which “insures that the search engine of the target
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`language will recognize it.” (‘101 patent, 3:28-30; See Id., 2:46-48, 3:14-16, 3:49-53, 4:22-29,
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`5:30-35, 5:46-49, 7:13-16.) The specification explains that “the importance of dialectal
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`standardization cannot be undermined in the present invention where the identified keyword
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`needs to be given one consistent meaning.” (Id., 5:50-53.) The specification goes on to warn
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`that “otherwise, a single inconsistency could result in a wrong translation and ruin the entire
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`search process during subsequent stages of the search and information retrieval.” (Id., 5:53-55.)
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`Excluding dialectal variations from being standardized, such as “auto” to “automobile,” that are
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`contained within the same dialect unequivocally contradicts the plain meaning of the claims and
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`express statements in the specification. The preferred construction is the proposed construction
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`that is consistent with the wording of the claims, the specification and the prosecution history.
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`See Wi-Lan USA, Inc., 830 F.3d at 1387-92 (rejecting a proposed construction of “UL
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`connections” that was inconsistent with the specification’s unambiguous description, the context
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`of the term in the claims as otherwise construed, and the patentee’s statements during the
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`prosecution history).
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`Accordingly, “Dialectal standardization / dialectally standardizing / dialectally
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`standardize” should be construed as “to map keywords from different styles and dialects into
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`standard and less ambiguous keywords,” and the additional limitations injected by Defendant
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`should be rejected
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`
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`F.
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`Search in the second language / searching in the second language6
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`Claim Phrase
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`search in the second
`language / searching in
`the second language
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`Improved Search’s Proposed
`Construction
`searching using words in the
`second language
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`AOL’s Proposed Construction
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`searching using only words in the
`second language
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`
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`The parties agree that the term “searching in the second language” should be construed to
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`include “searching using words in the second language,” but Defendant’s construction is unduly
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`narrow as it improperly requires using “only” words in the second language. One having
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`6 “Search in the second language / searching in the second language” appears in asserted claim
`1 and in non-asserted claims 12 and 22 of the ‘101 patent, and in asserted claims 1 and 7 of
`the ‘154 patent. (‘101 patent, claims 1, 12, and 22; and ‘154 patent, claims 1 and 7.) See
`Joint Claim Construction Statement (D.I. 51 in 15-cv-262) at p. 2.
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`ordinary skill in the art at the time of the invention would understand that a user may search in a
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`second language using words from the first language. (Carbonell Decl. ¶22-23.) For example,
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`English borrows the word “sushi” from Japanese. A Japanese query such as “すし屋” (sushi-ya)
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`would be translated into the English “sushi restaurant.” (Id.) Under Defendant’s proposed
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`construction, searching “sushi restaurant” in English would be forbidden because it contains a
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`Japanese word. A similar example is a Japanese query for “トヨタ” (Toyota) for which
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`“Toyota” is not found in the English language but may be desired to search for in English. (Id.)
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`This is an arbitrary restriction required by Defendant’s proposed construction that is not
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`necessitated by either the plain meaning of the c