IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`IMPROVED SEARCH LLC,
`
`
`
`
`
`AOL INC.,
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`
`
`
`
`C.A. No. 15-262 (SLR) (SRF)
`
`)))))))))
`
`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19801
`(302) 658-9200
`jblumenfeld@mnat.com
`
`Attorneys for Defendant
`
`DEFENDANT AOL INC.’S ANSWERING CLAIM CONSTRUCTION BRIEF
`
`
`
`
`
`
`
`
`
`
`
`OF COUNSEL:
`
`Kevin Hardy
`Samuel Bryant Davidoff
`Melissa B. Collins
`Sanjiv P. Laud
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`(202) 434-5000
`
`December 6, 2016
`
`
`
`AOL Ex. 1015
`Page 1 of 33
`
`

`

`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`INTRODUCTION ........................................................................................................... 1 
`
`THE PATENTED TECHNOLOGY ................................................................................ 2 
`
`III. 
`
`ARGUMENT .................................................................................................................. 4 
`
`A. 
`
`Improved Search Tries To Enlarge the Scope of the Asserted Claims with
`Its Constructions of “Dialectal Standardization” and “Second Language” ............ 4 
`
`B. 
`
`C. 
`
`1. 
`
`2. 
`
`“Dialectal Standardization/Dialectally Standardizing/Dialectally
`Standardized” ........................................................................................... 4 
`
`“Second Language” .................................................................................. 8 
`
`Improved Search Tries To Avoid Prior Art by Adding a Limitation to Its
`Proposed Construction of “Contextual Search” .................................................. 11 
`
`Claim 7 of the ’154 Patent Does Not Satisfy the Requirements for
`Functional Claiming Under 112, ¶ 6 ................................................................... 14 
`
`1. 
`
`2. 
`
`3. 
`
`“Dialectal Controller for Dialectally Standardizing a Content Word
`Extracted from the Query” ...................................................................... 15 
`
`“Means To Search the Database of the Advertising Cues Based on
`the Relevancy to the Translated Content Word” ...................................... 22 
`
`“Means for Receiving from the User Through an Input Device a
`Query in the First Language” .................................................................. 24 
`
`D. 
`
`Improved Search’s Proposed Construction of “Translating” Is
`Unsupported....................................................................................................... 25 
`
`IV. 
`
`CONCLUSION ............................................................................................................. 28 
`
`
`
`i
`
`AOL Ex. 1015
`Page 2 of 33
`
`

`

`TABLE OF AUTHORITIES
`
`FEDERAL CASES
`
`Advanced Ground Info. Sys., Inc. v. Life360, Inc.,
`830 F.3d 1341 (Fed. Cir. 2016) ..................................................................................... passim
`
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008) ...................................................................................... 18, 22
`
`Atmel Corp. v. Info. Storage Devices, Inc.,
`198 F.3d 1374 (Fed. Cir. 1999) ............................................................................................ 19
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) ................................................................................ 18, 21, 23
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) .......................................................................................... 4, 6
`
`Markem-Imaje Corp. v. Zipher Ltd.,
`No. 10-CV-112-PB, 2011 WL 5837087 (D.N.H. Nov. 21, 2011) ......................................... 17
`
`MonkeyMedia, Inc. v. Apple, Inc.,
`No. A-10-CA-319-SS, 2013 WL 12076550 (W.D. Tex. Feb. 22, 2013) ............................... 17
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ................................................................................ 18, 22, 23
`
`NFC Technology, LLC, v. Samsung Electronics Co., Ltd. et al.,
`No. 2:15-cv-283-JRG-RSP (E.D. Tex. Apr. 28, 2016) ......................................................... 17
`
`Noah Sys., Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012) ............................................................................................ 24
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................................................. 4
`
`Triton Tech of Tex., LLC v. Nintendo of Am., Inc.,
`753 F.3d 1375 (Fed. Cir. 2014) ............................................................................................ 18
`
`Via Vadis, LLC v. Buffalo Americas, Inc.,
`No. A-14-CV-808-LY, 2016 WL 5239626 (W.D. Tex. Sept. 20, 2016) ............................... 17
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)................................................................................................ 4
`
`Watts v. XL Sys., Inc.,
`232 F.3d 877 (Fed. Cir. 2000).............................................................................................. 15
`
`ii
`
`AOL Ex. 1015
`Page 3 of 33
`
`

`

`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ................................................................................ 15, 16, 17
`
`35 U.S.C. § 112, ¶ 6 ........................................................................................................... passim
`
`OTHER AUTHORITIES
`
`
`
`iii
`
`AOL Ex. 1015
`Page 4 of 33
`
`

`

`I.
`
`INTRODUCTION
`
`The patents-in-suit, U.S. Patent No. 6,604,101 and U.S. Patent No. 7,516,154, disclose
`
`methods and systems for cross-language searching. The asserted claims of those patents all
`
`relate to query translation, i.e., a processes for translating a user’s search query into a foreign
`
`language and then using the translated query to search for relevant documents in that language.
`
`The purported innovation of both patents is to enhance this query translation through “dialectal
`
`standardization,” whereby—prior to translation into a foreign language—the words in a user’s
`
`query are first standardized to account for variations across different dialects of the user’s native
`
`language. For example, the patents propose to dialectally standardize the British English word
`
`“lorry” and the American English word “truck” to whichever of those terms is more standard and
`
`less ambiguous before translating that standardized word into a foreign language for searching.
`
`See ’101 patent at 5:4-43; ’154 patent at 5:1-3. Improved Search’s proposed constructions are
`
`inconsistent with the patents’ disclosure of this alleged invention.
`
`First, Improved Search attempts to broaden the asserted claims by reading out two
`
`fundamental requirements of the purported invention: (1) dialectally standardizing a user’s
`
`query and (2) translating the dialectally standardized query into a different language. Improved
`
`Search eliminates these fundamental requirements by: (a) proposing to construe the term
`
`“dialectal standardization” as covering standardizing not only across words in different dialects
`
`but also across words in different “styles” in the same dialect, i.e., non-dialectal standardization;
`
`and (b) proposing to construe the term “second language” as including not only a different
`
`language but also a different dialect of the user’s language, i.e., something that is undisputedly
`
`not a different language. Both proposed constructions are inconsistent with the plain and
`
`ordinary reading of the patents’ claims, their specifications, and the other intrinsic evidence.
`
`1
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`AOL Ex. 1015
`Page 5 of 33
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`

`

`Second, in a transparent attempt to avoid prior art that it regards as problematic,
`
`Improved Search attempts to limit the claims to only searches of the World Wide Web. It does
`
`this by proposing to construe the term “contextual search” as being limited to only searches of
`
`the Web, notwithstanding that this limitation is absent from the asserted claims and that such a
`
`Web-based limitation was actually deleted by the patent owner during prosecution.
`
`Third, the sole asserted system claim—claim 7 of the ’154 patent—attempts to claim the
`
`functions of a “dialectal controller for dialectally standardizing,” a “means to search the database
`
`of advertisements,” and a “means for receiving . . . through an input device” without disclosing
`
`sufficient structure to support such functional claiming under 35 U.S.C. § 112, ¶ 6.
`
`Finally, although the parties have been able to narrow their disputes over several
`
`additional claim terms, Improved Search still proposes an unsupported construction for the term
`
`“translating.”1
`
`II.
`
`THE PATENTED TECHNOLOGY
`
`Improved Search alleges AOL infringes one independent claim of the ’101 patent, claim
`
`1, and several of that claim’s dependent claims. It also alleges AOL infringes two independent
`
`claims of the ’154 patent, claims 1 and 7, which are method and system claims, respectively.
`
`Searching for information in a different language was not a new problem at time of the
`
`purported priority dates of the patents-in-suit. Various approaches to solving it had been
`
`developed over the preceding years, including systems and methods that performed cross-
`
`1
`The parties have agreed to the following constructions of previously disputed terms: (1)
`“content word” should be construed as “a word other than a preposition, article, or
`pronoun;” (2) “search in the second language” should be construed as “searching using
`only words from the second language including words from other languages that are used
`in the second
`language;” and (3) “advertising cues” should be construed as
`“advertisements, as well as signals or references that direct a user to an advertisement.”
`The parties will submit an Amended Joint Claim Construction Statement reflecting these
`agreements.
`
`2
`
`AOL Ex. 1015
`Page 6 of 33
`
`

`

`language search on the Web as well as across other types of document collections. Thus,
`
`Improved Search’s claim that the problem of cross-language Web search “had not been
`
`addressed by any pre-existing search engine,” Pl.’s Opening Claim Construction Br. (“Br.”) [D.I.
`
`54] at 2, is simply not correct. Indeed, the ’101 patent itself expressly acknowledges that
`
`translated search was not a new concept, and that existing cross-language information retrieval
`
`systems contained this functionality. ’101 patent at 2:66-3:13.
`
`What the patents’ inventors allege as the novel aspect of their invention is their attempt to
`
`address a perceived shortcoming in the existing query translation techniques, namely, that those
`
`techniques did not standardize query words prior to translation to account for dialectal variations
`
`within a language. See ’101 patent at 3:13-19. For example, the patents explain, the following
`
`“dialectal variations” might be standardized: “centre vs. center, lorry vs. truck, queue vs. line and
`
`petrol vs. gasoline[,] etc.” ’154 patent at 5:1-3. According to the ’101 patent, dialectal
`
`standardization is “essential” to good translations because “[o]therwise, a single inconsistency
`
`could result in a wrong translation and ruin the entire search process.” ’101 patent at 5:53-55.
`
`This feature, which the inventors label “dialectal standardization” (to be performed by a
`
`“dialectal controller”), was the only feature the examiner considered inventive when allowing the
`
`’101 patent to issue. Joint Appendix (“J.A.”) at 125 (’101 patent file history).
`
`The ’154 patent is a continuation-in-part of a divisional of the ’101 patent. It
`
`incorporates by reference the contents of the ’101 patent and also repeats portions of the
`
`“dialectal standardization” disclosure of that patent. ’154 patent at 1:6-17. In relevant part, the
`
`’154 patent merely discloses the ’101 patent’s “dialectal standardization” invention but adds to it
`
`the ability “to send a user one or more advertisements in his native language” by searching a
`
`database of advertisements for items related to the user’s query. Id. at 3:8-11.
`
`3
`
`AOL Ex. 1015
`Page 7 of 33
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`

`

`III. ARGUMENT
`
`Claim construction is meant to determine the meaning claims would have to a person of
`
`ordinary skill in the art to which the invention pertains. Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-13 (Fed. Cir. 2005) (en banc). The inquiry begins with the claim language because the
`
`claims “define the invention to which the patentee is entitled the right to exclude.” Id. at 1312
`
`(quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.
`
`Cir. 2004)). When interpreting the claims, the claim language is not read in isolation, and the
`
`specification is “the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at
`
`1315 (internal quotation marks omitted). Extrinsic evidence, including expert testimony, may be
`
`relevant to claim construction, but it may not be used to contradict the language of the claims or
`
`specification, and “where the patent documents are unambiguous, expert testimony regarding the
`
`meaning of a claim is entitled to no weight.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`
`1576, 1584 (Fed. Cir. 1996).
`
`A.
`
`Improved Search Tries To Enlarge the Scope of the Asserted Claims with Its
`Constructions of “Dialectal Standardization” and “Second Language”
`
`1.
`
`Standardization/Dialectally
`“Dialectal
`Standardized”
`
`Standardizing/Dialectally
`
`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
`
`Claim Term
`dialectal
`standardization /
`dialectally
`standardizing /
`dialectally
`standardized
`
`AOL’s proposed construction of “dialectal standardization” is the plain and ordinary
`
`
`
`meaning of the term in the context of the patents. The parties agree that the “standardization”
`
`portion of the term requires the resulting “standardized” word to be “standard and less
`
`ambiguous” when compared to the original query word. The parties also do not dispute that the
`
`4
`
`AOL Ex. 1015
`Page 8 of 33
`
`

`

`word “‘dialectal’ is the adjective form of ‘dialect.’” See Ex. 2 (Patent Owner’s Preliminary
`
`Response, Google Inc. v. Improved Search LLC, Case No. IPR2016-00797 (June 28, 2016)) at 17
`
`(quoting Merriam-Webster dictionary). Logically, “dialectal standardization” is therefore
`
`“standardization” done across dialects. And that is AOL’s construction: “changing a word to a
`
`more standard and less ambiguous word in a different dialect of the same language.”
`
`AOL’s construction also comports with how the term “dialectal standardization” is used
`
`in the patents. The patents do not explicitly define “dialectal standardization,” but they do
`
`explain its purpose. “Dialectal standardization is an important step because often times words
`
`encountered have several different dialectal variations.” ’101 patent at 5:36-38 (emphasis
`
`added). The “dialectal controller at server backend picks up the keyword and standardizes it to a
`
`commonly known word and/or term. This is done to bring about a consistency in the meaning of
`
`a word notwithstanding dialectal variations.” See ’101 patent at 5:29-35 (emphasis added).
`
`“[D]ialectal variations are the rule rather than the exception and . . . the only way to counter them
`
`is by standardizing a query or a word to a commonly known word.” Id. at 5:46-49; see also ’154
`
`patent at 5:7-10 (same). Thus, the patents are quite clear that the term “dialectal standardization”
`
`refers to standardizing across different dialects, as one would expect from their use of the
`
`adjective “dialectal.”
`
`Improved Search’s construction, on the other hand, attempts to broaden the term to
`
`include standardization across dialects or across “styles” within the same dialect. But the word
`
`“styles” appears nowhere in either patent. It is a vague word that Improved Search and its expert
`
`use to describe every other non-dialectal variation that might exist in a language. Ex. 1
`
`(Transcript of Dec. 1, 2016 Deposition of J. Carbonell) (“Carbonell Dep.”) at 65:18-67:7.
`
`Improved Search’s addition of this word to the proposed construction is nothing more than an
`
`5
`
`AOL Ex. 1015
`Page 9 of 33
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`

`

`effort to read out the limitation “dialectal” from the term “dialectal standardization.” Improved
`
`Search’s expert conceded this at his deposition:
`
`Q. But what about if you took out both the “styles” and the
`“dialects”? To map keywords into standard and less ambiguous
`keywords, that’s what you’re really saying. Right?
`
`MR. YORIO: Objection to the form of the question.
`
`Q. How is what you’re saying different from, to map keywords
`into standard and less ambiguous keywords?
`
`A. It is stating that these keywords could be within the dialect or
`across dialects, so it’s making it clearer. But I don’t think it’s
`fundamentally different.
`
`Carbonell Dep. at 68:25-69:12 (emphasis added). Construing a term to delete limiting words is
`
`not proper claim construction. See, e.g., Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`
`Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (explaining that “all claim terms are presumed to have
`
`meaning in a claim”). The patents’ inclusion of the word “dialectal” indicates that the inventors
`
`intended to address a particular form of standardization, namely, standardization across dialects,
`
`and not standardization more generally. Improved Search cannot now ignore that limitation.
`
`Improved Search claims that the patents’ specifications support including standardization
`
`“within the same dialect” as part of “dialectal standardization.” Improved Search argues that the
`
`“intrinsic record makes clear that . . . different variants of the word ‘auto,’ including
`
`‘automobile’ and ‘transportation vehicle’ are dialectally standardized.” Br. at 10. That is a
`
`misreading of the patents. Although the patents do refer to these three variants of the word auto,
`
`they never refer to these variations as “dialectal variations” or state that one such term would be
`
`“dialectally standardized” to another. To the contrary, the patents explain that
`
`if the dialectal controller fails to recognize the word and thus is
`unable to perform dialectal standardization, the query prompter
`unit may prompt the user for more input . . . to clarify and to
`sharpen his/her query. . . . In that case the user may submit another
`query to the query input device. . . . For instance, different variants
`of the word “auto” including automobile and transportation vehicle
`
`6
`
`AOL Ex. 1015
`Page 10 of 33
`
`

`

`are permitted to be input by the user as part of the dialectal
`standardization process.
`
`’101 patent at 5:56-67 (emphasis added); see also ’154 patent at 5:16-25 (similar language).
`
`
`This section of the patents describes how a user might modify the query when the
`
`invention is unable to perform dialectal standardization because of a non-dialectal ambiguity.
`
`For example, if a user enters the word “auto” and the dialectal controller is unable to process it,
`
`the user may input a substitute term like “transportation vehicle” so that the system can identify
`
`what form of “auto” the user is interested in using before performing dialectal standardization.
`
`Thus, properly read, this section of the specification supports AOL’s construction. It shows that
`
`the patents handle non-dialectal variation (e.g., auto/automobile/transportation vehicle) through a
`
`separate process of manual user intervention and not through dialectal standardization.
`
`Nowhere do the patents state that “auto” would be “dialectally standardized” to
`
`“transportation vehicle” or vice-versa. Nor would such dialectal standardization make any sense,
`
`as a transportation vehicle could just as easily be a train, airplane, boat, bicycle, or any other of a
`
`number of vehicles. Changing “auto” to “transportation vehicle,” or “transportation vehicle” to
`
`“auto,” as Improved Search suggests, would introduce ambiguity in either direction, would not
`
`improve a user’s search, and would run counter to the stated purpose of the patents.
`
`Improved Search also expresses concern that, under AOL’s construction, “[s]earch results
`
`for ‘plane’ may miss web documents relating to airplanes, since ‘plane’ is more ambiguous” than
`
`airplane. Br. at 11. And Improved Search gives examples of other words that a search user
`
`might wish to disambiguate such as “delimit,” “demarcate,” and “differentiate.” Id. None of
`
`that is relevant. The patents do not purport to describe a system or method of standardization
`
`that would resolve all ambiguity in a query and lead to a perfect search. Instead, they focus on
`
`one particular problem—variation across dialects that could lead to an improper translation. See
`
`7
`
`AOL Ex. 1015
`Page 11 of 33
`
`

`

`’101 patent at 5:36-55. Improved Search cannot now use claim construction to expand the scope
`
`of the patents to cover generic standardization across any pair of words in the same language.
`
`In addition to this significant flaw, Improved Search’s construction also introduces an
`
`ambiguity not present in AOL’s. Improve Search’s construction adds the term “to map,” a term
`
`it does not explain or define and which is not used in the claims or the specifications. Use of this
`
`term would introduce ambiguity in the construction and a potential for confusing the jury.
`
`Improved Search does not take issue with AOL’s use of the word “changing,” a word that is
`
`clear and that both parties used in their constructions of the term “translating.” Moreover,
`
`Improved Search’s expert was apparently indifferent as to whether the word “map” was used in
`
`the construction of this term. See Carbonell Dep. at 51:7-10 (“to map, convert, standardize—
`
`whichever verb you want, substitute a more standard and less ambiguous word in its place”).
`
`Accordingly, the Court should adopt a construction using AOL’s clearer term, “changing.”
`
`2.
`
`“Second Language”
`
`Claim Term
`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
`
`
`
`AOL’s straightforward construction of “second language” is consistent with the ordinary
`
`meaning of the claim language and supported by the specification. Neither party claims that the
`
`term “language,” standing alone, needs further construction. “First language,” for example, is an
`
`undisputed term; the parties agree it means the “language in which the query is entered by the
`
`user.” See Joint Claim Construction Statement [D.I. 51] at 1. “Second language” is,
`
`consequently, a language different from a first language. Nothing in the claim language suggests
`
`anything other than this straightforward reading. Indeed, the only specific first and second
`
`languages mentioned in any claims (or in the specifications for that matter) are English and
`
`8
`
`AOL Ex. 1015
`Page 12 of 33
`
`

`

`Chinese, which are undisputedly different languages. See, e.g., ’101 patent, claims 4, 5, 27, 28.
`
`Moreover, the patents’ specifications never refer to translating as meaning anything other than
`
`translation from one language to a second language. That is also entirely consistent with
`
`purpose of the patented technology, which is to allow users to find information they otherwise
`
`would not have access to because it is written in a language other than their native language. See
`
`generally ’101 patent, col. 2 (describing the problem to be solved); see also id. at 2:56-57 (“Such
`
`a system will help the users to transcend language barriers while making a search on the web.”);
`
`’154 patent, 4:25-29 (“Such a system enables a user to read advertisements in her native
`
`language. . . while he is reading web documents in a foreign language . . . .”).
`
`Notwithstanding this evidence, Improved Search proposes that “second language” could
`
`include not only different languages, but also “dialects of the first language.” In other words,
`
`Improved Search proposes that both the first and second language could be the same language.
`
`That construction flies in the face of the plain reading of the claims. It would mean that the
`
`patents used the term “second language” to mean “any language, including the first language”
`
`notwithstanding that the word “second” unquestionably connotes something different and
`
`distinct from the “first.”
`
`Improved Search’s proposed broadening of the word “second language” to cover dialects
`
`as well as languages is also inconsistent with both patents’ specifications. The patents
`
`distinguish between dialects and languages, explaining that a single language may include within
`
`it dialectal variations. See ’101 patent at 5:38-40 (“A language such as English itself is full of
`
`dialectal variations in the form of British English and American English to name a few.”). And,
`
`the claimed systems and methods address dialects and languages differently, through two unique,
`
`sequential steps. Differences in dialects, or “dialectal variations,” are “dialectally standardized.”
`
`9
`
`AOL Ex. 1015
`Page 13 of 33
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`

`

`See ’101 patent at 5:24-49. Differences in languages are accounted for by translation. See ’101
`
`patent at 6:3-22. The patents never conflate the two processes or elide the distinction between
`
`“dialects,” on the one hand, and “languages” on the other. Within the context of the patents:
`
`“dialects” are standardized; “languages” are translated. And, although the patents contain
`
`several discussions of different dialects, they never once discuss—or even suggest—that these
`
`different dialects could constitute different languages.
`
`Improved Search purports to draw support for its overly-broad position from the ’101
`
`patent’s reference to different dialectal variations in Chinese. Br. at 5 (citing ’101 patent at 5:44-
`
`47). But the cited passage is about “dialectal standardization,” and not “translation.” The
`
`specification never indicates that “dialectal standardization” is a form of translation; rather, it
`
`describes a need to standardize dialectal variations to a commonly known word so as to prevent a
`
`subsequent “wrong translation.” ’101 patent at 5:44-55. Nothing in this passage supports the
`
`notion that a dialect of the first language can also constitute the “second language” within the
`
`meaning of the patents-in-suit. Neither patent ever refers to different Chinese dialects (or any
`
`other dialects for that matter) as constituting different languages.
`
`Improved Search also tries to support its position with extrinsic evidence regarding the
`
`need for and existence of systems—outside the context of the patent—that translate between
`
`dialects of the same language. Br. at 5-6; Declaration of Jaime Carbonell (“Carbonell Decl.”)
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`[D.I. 56] at 6. But whether or not one could, in the abstract, “translate” between different
`
`dialects is irrelevant. The patents do not discuss or claim translating between dialects. They
`
`only discuss, and only claim, translating between languages. Indeed, the essence of the claimed
`
`invention is that translating between languages is improved by an earlier and separate
`
`standardization to account for differences in dialects. Thus, not only is translating between
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`dialects never discussed in the patents, it would be inconsistent with their approach to cross-
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`language searching, which handles dialects via a separate process.
`
`Properly viewed, the relevant extrinsic evidence provided by Improved Search’s expert,
`
`Dr. Jaime Carbonell, only confirms AOL’s position that “language” and “dialect” mean different
`
`things, both in the context of the patents and to a person of ordinary skill more generally. As Dr.
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`Carbonell explained in his deposition, although linguists may disagree as whether two particular
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`sets of communication constitute different languages or simply different dialects, everyone
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`agrees that they cannot be both different dialects and different languages. Carbonell Dep. at
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`27:14-20. Mandarin and Cantonese are either different languages or different dialects, but not
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`both. Language and dialect are different concepts, and nothing suggests they should be
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`construed to be the same in the context of these patents.
`
`B.
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`Improved Search Tries To Avoid Prior Art by Adding a Limitation to Its
`Proposed Construction of “Contextual Search”
`
`Claim Term
`contextual
`search
`contextually
`searching
`
`
`/
`
`Proposed
`
`Search’s
`Improved
`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
`based on words contained in those
`documents
`
`The patents do not define the term “contextual search,” and they do not even mention the
`
`
`
`term in their specifications. The term appears only in the claims. The parties agree that
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`contextual search involves the “identification of relevant documents based on words contained in
`
`the documents.” Improved Search, however, attempts to impose an additional limitation that the
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`documents must be “from the domain-unlimited set of documents available on the World Wide
`
`Web.” Improved Search’s construction is the same construction provided by the Patent Trial and
`
`Appeal Board (PTAB) in an order declining to institute inter partes review based on a petition
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`filed by Google Inc. relating to the ’101 patent. But both Improved Search and the PTAB are
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`incorrect to add this Web-based limitation to the term “contextual search.” Such a limitation is
`
`inconsistent with the language of the claims and with the prosecution history of the patents.
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`First, as Improved Search's expert acknowledges, the term “contextual search” does not
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`inherently refer to a search limited to the Web. See Carbonell Dep. at 104:25-105:6 (possible to
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`perform a contextual search over a database of indexed documents).
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`Second, it is clear from the claims of the patents that the “contextual searches” described
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`are not limited to searches of the Web. Claim 1 of the ’101 patent, for example, refers to a
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`“contextual search and retrieval of documents in a computer network.” As Improved Search’s
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`expert acknowledges, a “computer network” is not limited to the Web, but encompasses “a
`
`communication network [whose] nodes are computer[s] and whose transmission th[e]n
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`transmit[s] data reliably from one computer to another.” Carbonell Dep. at 102:16-20.
`
`Third, the patents’ claims are clear that some claims are limited to searches of Web
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`documents and some are not. For example, claim 23 of the ’101 patent refers explicitly to
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`searching “web documents,” and claim 12 of that patent and claim 7 of the ’154 patent refer to a
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`search engine that searches “site names, pages, and descriptions.” But other claims, such as
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`claim 1 of the ’101 patent, contain no such limitation, referring instead to the search and retrieval
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`of “documents” generally, in addition to URLs and sites. It would be improper to nevertheless
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`import a Web-search restriction into those claims via the term “contextual search,” when the
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`drafter obviously used other language when such a limitation was intended.
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`Third, the prosecution history further confirms that the term “contextual search” did not
`
`imply a Web-based restriction. The applicant introduced the term “contextual search” into the
`
`claim language relatively late in the prosecution process to distinguish the ’101 patent from a
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`prior art reference, Redpath, on which the examiner had relied in denying the application. J.A. at
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`119-124, 126 (’101 file history). The applicant explained that Redpath described a different type
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`of search—for a translation of a previously identified document—and not a “contextual search”
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`based on “terms of interest,” that “may or may not appe