Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 1 of 24 PageID #: 1537
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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` )
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`
`)
`)
`)
`) C.A. No. 15-cv-262-SLR-SRF
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`)
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`IMPROVED SEARCH LLC,
`
`
`Plaintiff,
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`
`
`v.
`
`
`AOL INC.,
`
`
`
`
`
`
`Defendant.
`
`PLAINTIFF’S REPLY CLAIM CONSTRUCTION BRIEF
`
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`Farnan LLP
`919 N. Market Street, 12th Floor
`Wilmington, Delaware 19801
`Telephone No.: (302) 777-0300
`Facsimile No.: (302) 777-0301
`Email Address: bfarnan@farnanlaw.com
`Email Address: mfarnan@farnanlaw.com
`
`Robert J. Yorio (admitted pro hac vice)
`Carr & Ferrell LLP
`120 Constitution Drive
`Menlo Park, California 94025
`Telephone No. : (650) 812-3400
`Facsimile No.: (650) 812-3444
`Email Address: yorio@carrferrell.com
`
`Attorneys for Plaintiff Improved Search LLC
`
`Date: December 27, 2016
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`AOL Ex. 1016
`Page 1 of 24
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 2 of 24 PageID #: 1538
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`
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`TABLE OF CONTENTS
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`DISPUTED CLAIM TERMS ......................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
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`H.
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`
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`Translating .............................................................................................................. 1
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`Second language ..................................................................................................... 2
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`Contextual search / contextually searching............................................................. 5
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`Dialectal standardization / dialectally standardizing / dialectally standardize ....... 8
`
`Means for receiving from the user through an input device a query
`in a first language .................................................................................................. 10
`
`Dialectal controller for dialectally standardizing a content word
`extracted from the query ....................................................................................... 11
`
`1.
`
`2.
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`Defendant fails to make a prima facie case for construing
`“dialectal controller” under 35 U.S.C. § 112 ¶ 6 ...................................... 12
`
`The ’154 patent discloses sufficient structure for
`“dialectal controller” ................................................................................. 13
`
`Means to search the database of the advertising cues based on the
`relevancy to the translated content word .............................................................. 18
`
`Means to send the search results and the matching advertising cues to
`the user’s computer screen .................................................................................... 19
`
`
`
`i
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 3 of 24 PageID #: 1539
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`
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Advanced Ground Info. Sys., Inc. v. Life360, Inc.
`830 F.3d 1341 (Fed. Cir. 2016) .................................................................................... 12, 13, 17
`
`AllVoice Computing PLC v. Nuance Commc’ns, Inc.
`504 F.3d 1236 (Fed. Cir. 2007) ................................................................................................ 16
`
`Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech.
`521 F.3d 1328 (Fed. Cir. 2008) ................................................................................................ 16
`
`Atmel Corp. v. Info Storage Devices, Inc.
`198 F.3d 1374 (Fed. Cir. 1999) ................................................................................................ 17
`
`Cox Communications v. Sprint Communication Co. LP
`838 F.3d 1224 (Fed. Cir. 2016) ................................................................................................ 15
`
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.
`234 F.3d 558 (Fed. Cir. 2000) .................................................................................................... 8
`
`Finisar Corp. v. DirecTV Grp., Inc.
`523 F.3d 1323 (Fed. Cir. 2008) .......................................................................................... 14, 16
`
`Function Media, LLC v. Google, Inc.
`708 F.3d 1310 (Fed. Cir. 2013) .......................................................................................... 14, 16
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.
`381 F.3d 1111 (Fed. Cir.2004) ................................................................................................... 9
`
`Intel Corp. v. VIA Techs. Inc.
`319 F.3d 1357 (Fed. Cir. 2003) ................................................................................................ 16
`
`Med. Instrumentation and Diagnostics Corp. v. Elekta AB
`344 F.3d 1205 (Fed. Cir. 2003) ................................................................................................ 16
`
`MonkeyMedia, Inc. v. Apple, Inc.
`No. A-10-CA-319-SS, 2013 WL 12076550 (W.D. Tex. Feb. 22, 2013) .................................. 13
`
`Phillips v. AWH Corp.
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................................................ 10
`
`Poly-America, L.P. v. Api Indus., Inc.
`2016-1200, 9-10 (Fed. Cir. Oct. 14, 2016) ................................................................................. 5
`
`ii
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`AOL Ex. 1016
`Page 3 of 24
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 4 of 24 PageID #: 1540
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`
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`TecSec, Inc. v. Int’l Bus. Machs. Corp.
`731 F.3d 1336 (Fed. Cir. 2013) ................................................................................................ 16
`
`Telcordia Techs., Inc. v. Cisco Sys., Inc.
`612 F.3d 1365 (Fed. Cir. 2010) .......................................................................................... 16, 17
`
`Trimed v. Stryker Corp.
`514 F.3d 1256 (Fed. Cir. 2008) ................................................................................................ 11
`
`Typhoon Touch Techs., Inc. v. Dell, Inc.
`659 F.3d 1376 (Fed. Cir. 2011) ................................................................................................ 16
`
`Statutes
`
`35 U.S.C. § 112 (6) ..................................................................................................... 11, 12, 16, 19
`
`35 U.S.C. § 112 ¶ 4 ......................................................................................................................... 3
`
`35 U.S.C. § 112(f) ......................................................................................................................... 17
`
`Rules
`
`37 C.F.R. § 1.57(e)........................................................................................................................ 17
`
`iii
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 5 of 24 PageID #: 1541
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`DISPUTED CLAIM TERMS
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`
`
`A.
`
`Translating
`
`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
`
`
`
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`Defendant’s response does not address Improved Search’s objection to its proposed
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`construction, that is, Defendant does not take into consideration that “translating” is used both
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`for “translating” a standardized content word into a second language, but also “translating” the
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`search results back into a first language. See ’101 patent, claims 7, 9, 12, 23, 25; ’154 patent,
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`claim 7. Defendant does not dispute that the first language is not “pre-selected by the user.”
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`Stated differently, Defendant’s proposed construction would impose a restriction, the first
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`language being pre-selected by the user, never discussed or identified in a single embodiment of
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`the claimed invention set forth in the specification of either the ’101 patent or the ’154 patent.
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`
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`Defendant misconceives Improve Search’s argument regarding the target language
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`including a “default target language,” and misinterprets the patent specifications. Neither the
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`’101 patent, nor the ’154 patent, nor Defendant’s arguments describe the default target language
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`being pre-selected by the user. Furthermore, each embodiment disclosing post-search
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`translation, that is, translating the search results into the first or source language, describe a
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`translation without the resulting language being pre-selected by the user.1
`
`
`1 While Defendant cites to the patents’ references to translation into a target language, it is silent
`regarding any citations to the patents’ referring to translation back into the first or source
`language. See, e.g., ’101 patent at Abstract, 2:52-55, 3:37-39, 4:2-5, 4:34-37, 4:63-67, 6:28-32,
`Figs. 2-3; ’154 patent at 4:45-49, 5:45-49, 6:7-10, 6:27-28, 6:62-66, 7:5-17, 8:27-28, Figs. 1-3
`(disclosing “translating” search results back into the first or source language, the first or source
`language not necessarily limited to being “pre-selected by the user”).
`
`1
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 6 of 24 PageID #: 1542
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`
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`Defendant argues that one cannot translate a word without first deciding the language
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`into which it is to be translated. However, as Dr. Carbonell testified, a translation system can be
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`“capable of translating into a multitude of languages,” of which one language is not necessarily
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`predetermined for incoming translation jobs. Ex. 1 to D.I. 62 [Document 062-1] (“Carbonell
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`Dep.”) at 106:15-22. Dr. Carbonell further identifies that “somebody other than the user can
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`determine which language to translate into,” which instead may be determined as a function of
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`resource availability. Id. at 108:7-13.
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`
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`Finally, Improved Search’s construction does not expand the scope of the word
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`“translating” to include situations not contemplated by the patents, in particular “accidental
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`translations.” Defendant refers to a situation in which a user first performs a search of “soccer”
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`then hits one of the results, such as a story about soccer in South America, that say “more like
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`this one.” Carbonell Dep. at 109:13-110:6. In that scenario, as admitted by the Defendant, “the
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`search engine adds the word ‘futbol’ to the query,” as a result of such a query expansion.
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`Carbonell Dep. at 110:4-5, (emphasis added). Defendant misconceives Dr. Carbonell’s
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`explanation when stating that “some of these alterations might inadvertently replace words in
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`one language with words in a different language.” D.I. 62 at 27, (emphasis added). Adding a
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`word which happens to be in a document in a different language is markedly different from
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`changing text from one language into an equivalent text in a different language.
`
`
`
`B.
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`Second language
`
`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
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`
`
`2
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 7 of 24 PageID #: 1543
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`Defendants cite to various portions of the specification as supporting the view that the
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`“second language” must exclude any form of language other than a language different from the
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`first language. D.I. 62 at 9-10. Yet, Defendant and the specification are silent regarding
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`imposing any such limitation upon the second language. The limitations that the “first language”
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`is English and the “second language” is Chinese are confined to pairs of dependent claims 4-5,
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`15-16, and 27-28, which, via 35 U.S.C. § 112 ¶ 4, are narrower than the independent claims from
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`which they depend. Dr. Carbonell opines that the patent “is not explicit with respect to whether
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`you could translate into another dialect or another language;” “[w]hen [persons of ordinary skill
`
`in the art] talk about translation, we include translation among languages and translation among
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`dialects.” Carbonell Dep. at 28:23-29:2; See Supp. Carbonell Decl. at ¶ 1.
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`Moreover, Defendant’s assertion that excluding different dialects is consistent with the
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`purpose of the patented technology is unfounded. The specification is quite clear that the
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`purpose of the technology is to allow users to transcend language barriers and obtain access
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`otherwise unavailable due to the need to translate.2 Such language barriers would comprise
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`situations in which the user’s inability to understand a different dialect prohibited him or her
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`from accessing a document. Without any description limiting the second language, the
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`specification is clear that the second language may include any language needing translating to
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`or from the first language, including a different dialect of the first language. See Carbonell Decl.
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`[Document 056] at ¶ 15; See also Carbonell Dep. at 29:8-9 (“In other words, you can translate
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`from one language to another or from one dialect to another”).
`
`
`2 See also ’101 patent at 2:61-65 (“Such a system will go a long way in transcending all language
`barriers and improving inter-human communication. This will not only pave the way to a
`healthier interactive environment and cultural exchange but also help in an optimal utilization
`of available resources on the Web”).
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`3
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 8 of 24 PageID #: 1544
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`Defendant argues that a construction allowing the first and second language to be the
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`same language goes against the plain reading of the claims. Simply because a claim refers to a
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`“first” and a “second” does not necessarily mean that the “first” is mutually exclusive of the
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`“second,” and indeed claims can contain limitations wherein the “first” is the same as the
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`“second.” Furthermore, a plain reading of the claims clearly allows a second language to be a
`
`different dialect of the first language, as long as the system or method can translate between the
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`first language and the second language. For example, claim 1 of the ’101 patent recites,
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`“translating the at least one dialectally standardized content word into a second language through
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`a translator,” and claim 7 of the ’154 patent recites, “a first translator for translating the
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`dialectally standardized content word into a second language.” Defendant misconstrues
`
`Improved Search’s argument as requiring languages and dialects to be construed as the same.
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`This is not required. Various languages may each have various dialects, which may necessitate
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`translation. See Carbonell Decl. at ¶ 15. The construction is consistent that, prior to such a
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`translation, certain words contained within the query may need dialectal standardization.
`
`Defendant then relies on an oversimplification of the differences between dialectal
`
`standardization and translation. The difference, within the context of the patents, is not simply
`
`that “dialects” are standardized and “languages” are translated. See D.I. 62 at 10. Dr. Carbonell
`
`elaborated on the difference:
`
`Dialectal standardization applies to the words, and it's
`finding the most standard, often using criteria like syntactic
`analysis and frequency and so forth, to find the words that are most
`likely to be used and least ambiguous at the word level.
`In translation, you're finding the equivalent, meaning in the
`target language, which requires work beyond the word. You need
`to find the right combination of the words, right syntactic structure.
`But it does not require you to find the most standard way of saying.
`So that's why they are not the same process. Carbonell Dep. at
`39:7-18.
`
`4
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`Thus, dialectal standardization and translation are not merely distinguished by virtue of any
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`restriction on the sets of communications for which they process, and such a distinction cannot
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`be a basis for supporting an unreasonably narrow view of “second language,” a construction that
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`is at variance with the stated purpose of the patents.
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`
`
`C.
`
`Contextual search / contextually searching
`
`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
`
`
`
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`Defendant does not identify a single embodiment of the claimed invention set forth in the
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`specification of either the ’101 patent or the ’154 patent that performs a search on a domain-
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`limited document set. Defendant ignores the role of the specification in providing context for
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`unequivocally describing the invention as including searching, retrieving, and accessing web
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`documents and web sites. See Ex. 1 to Yorio Decl. IPR2016-00797 Denying Request for
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`Rehearing, dated November 16, 2016, pp. 4-8; ’101 patent at 4:61-63; See also Poly-America,
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`L.P. v. Api Indus., Inc., 2016-1200, 9-10 (Fed. Cir. Oct. 14, 2016) (holding that the
`
`specification’s characterizing of “the present invention” as including the limitation, in addition to
`
`every embodiment described in the specification having the limitation, was a clear and
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`unequivocal disavowal of claim scope even though it was not explicit).
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`
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`Defendant’s argument that Dr. Carbonell acknowledges “contextual search” does not
`
`inherently refer to a search limited to the Web is out of context and misplaced. In context,
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`Dr. Carbonell’s statements illustrate the necessity of contextual search in Web searching.
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`Dr. Carbonell discussed the history of contextual searching, specifically that, in the beginning,
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`5
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 10 of 24 PageID #: 1546
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`
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`contextual search was not necessary when searching only a small database of context in a
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`particular domain. Carbonell Dep. at 104:18-24. When expanded to the Web, the “necessity for
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`[contextual searching] became very obvious.” Id.
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`
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`Defendant also misconstrues the language of claim 1 of the ’101 patent. “Performing a
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`contextual search and retrieval of documents in a computer network” in the preamble refers to
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`the separate elements of both “contextual search” and “retrieval of documents in a computer
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`network.” Furthermore, the body of claim 1 refers to “performing a contextual search in the
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`second language based on the at least one translated content word,” and “obtaining the search
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`results in the second language in the form of at least one of site names (URLs) and documents,
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`satisfying a search criteria,” claim limitations which do not broaden “contextual search” as being
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`over a “computer network.” Defendant’s interpretation of “computer network” is consistent with
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`Improved Search’s arguments regarding “contextual search.”
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`
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`Defendant’s argument that some claims are more limited to the Web than other claims is
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`logically unsustainable. While claims 12 and 23 of the ’101 patent and claim 7 of the ’154
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`patent are limited to searches on the Web, the references to “site names, pages, and descriptions”
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`and “web documents” in other claims do not show an intent to make claim 1 broader to
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`encompass domain-limited sets of documents untethered from the Web. Indeed, claim 1 recites
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`that the search results are “in the form of at least one of site names (URLs) and documents,”
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`which explicitly highlights that the search returns results from the Web since URLs are
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`identifiers of web-based documents. Carbonell Decl. at ¶ 19. Nevertheless, those additional
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`terms provide further support that “contextual search” refers to searching a domain-unlimited set
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`of documents on the Web.
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`6
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`AOL Ex. 1016
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 11 of 24 PageID #: 1547
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`Defendant presents an incomplete and misstated assessment of the prosecution history.
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`In particular, Defendant’s assertion that “the prosecution history shows the applicant
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`affirmatively broadened its claims to encompass more than just Web-based queries” ignores the
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`evolution of the claims during prosecution. For example, the amendment of the preamble of
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`claim 1 to recite “a method for translating a query input by a user for performing a contextual
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`search and retrieval of multilingual documents in a computer network” was not a broadening
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`amendment, but a narrowing one. The preamble of claim 1 had multiple amendments, evolving
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`from “search and retrieval of multilingual web documents,” to encompass the “search and
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`retrieval of multilingual documents,” before being narrowed to require the “contextual search
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`and retrieval of documents in a computer network.” ’101 file history, Joint Appendix (“J.A.”) at
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`91 and 119. Similarly, the search results limitation changed from “in the form of at least one of
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`site names (URLs) and multilingual documents” to “in the form of at least one of site names
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`(URLs) and documents,” both of which retained the web-based limitation of site names (URLs).
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`Id. By narrowing “search” to “contextual search,” and arguing that the amendments
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`“distinguished a feature of the present invention allowing . . . a contextual search of the Internet,”
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`the patentee clearly limited the claims to a Web-based search.
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`
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`Defendant lists other arguments made during prosecution, but none are inconsistent with
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`the statement made by patentee that “Independent claims 1, 9, 12, 19, 22, and 23 [of the ’101
`
`patent] have herein been amended 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
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`Internet in a second or target language.” The patentee distinguished Redpath by its inability to
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`perform a contextual search because Redpath failed to disclose searching the Internet and
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`searching based on words contained in the documents. ’101 file history, J.A. at 126-27. The
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`7
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 12 of 24 PageID #: 1548
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`
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`prosecution history illustrates that the patentee argued for both limiting interpretations of
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`“contextual search,” and both restrictions should be construed as part of the term. Furthermore,
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`the patentee had an examiner interview prior to the final amendment in which the patentee
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`discussed “whether the reference does a web search or a database search” Id. at 113 – to which
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`the amendment and remarks make clear that the patentee argued the reference only disclosed a
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`database search, and not a web search as claimed and distinguished. Id. at 126. In addition, the
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`patentee did not confirm any broadening, but rather argued that the present invention included
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`that the “search is conducted in the target language regardless of whether a document has a
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`translation available in a source language.” Id. at 127. This statement was accompanied by an
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`amendment narrowing the scope of the claims to a “contextual search” as previously discussed,
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`and was unrelated to the previous amendments filed that have already been distinguished. See
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`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 234 F.3d 558, 566 (Fed. Cir. 2000).
`
`
`
`D.
`
`Dialectal standardization / dialectally standardizing / dialectally standardize
`
`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
`
`
`
`Defendant misconceives Improved Search’s argument regarding the specification’s
`
`disclosure of an example of dialectal standardization between different styles. By “styles,”
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`Improved Search means different variations of word usage within a language. Carbonell Dep. at
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`68:5-7. The specification makes clear that dialectal standardization “standardiz[es] the word to a
`
`commonly known word” to “insure[] that the search engine of the target language will recognize
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`it.” ’101 patent at 3:25-31. “[A]uto,” “automobile,” and “transportation vehicle” in the
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`8
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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 13 of 24 PageID #: 1549
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`
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`specifications is an example of different styles and is explicitly given as an example of dialectal
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`standardization:
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`“Such a query may either be a standard term or a non-standard
`term. For instance, different variants of the word ‘auto’ including
`automobile and transportation vehicle are permitted to be input
`by the user as part of the dialectal standardization process.”
`’101 patent at 5:64-67; ’154 patent at 5:22-25 (emphasis added).
`
`Contrary to Defendant’s claim that the patents do not state that one term would be “dialectally
`
`standardized” to another, this section makes clear that an input query, such as “auto,” may be a
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`non-standard term which needs to be standardized as “part of the dialectal standardization
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`process.” See Carbonell Dep. at 60:13-15. Defendant erroneously conflates an input query on
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`which the invention may be unable to perform dialectal standardization, with an input query that
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`requires standardization. See Supp. Carbonell Decl. at ¶ 2. If the system was unable to perform
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`dialectal standardization in the example, then at least one of the three terms would not be
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`permitted to be input – but that is not the case. In addition, another example in the prosecution
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`history and specification of dialectal standardizing words of different styles is “shrimp caviar”
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`and “shrimp roe,” as Dr. Carbonell explains in further describing dialectal standardization
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`utilizing statistical and syntactic analyses. Supp. Carbonell Decl. at ¶ 3.
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`Defendant also argues that Improved Search is reading out the limitation “dialectal” from
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`the term “dialectal standardization,” citing to Innova/Pure Water, Inc. v. Safari Water Filtration
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`Sys., Inc., 381 F.3d 1111 (Fed. Cir.2004) for support. The usage of the present term is quite
`
`different. In Innova/Pure Water, the modifier and term at issue, “operatively” and “connected,”
`
`were used separately throughout the patent’s specification. See also 381 F.3d at 1121 (“the
`
`actual filter element being connected to the other components . . .”) (emphasis added).
`
`9
`
`AOL Ex. 1016
`Page 13 of 24
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`

`

`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 14 of 24 PageID #: 1550
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`
`
`Here, “standardization” is never referenced independently from “dialectal.” The term
`
`“dialectal standardization” should not be construed outside of the context of the specification.
`
`See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (“claims must be
`
`construed so as to be consistent with the specification, of which they are a part”). Indeed, the
`
`specification consistently uses the whole term when describing standardization both within and
`
`across dialects. Inclusion of “styles” does not eliminate any limitations from the claims, but
`
`instead captures the purpose to produce “standard and less ambiguous” keywords.
`
`Defendant’s construction is contrary to the claimed invention, which insures that the
`
`search engine of the target language will recognize the dialectally standardized word. If a query
`
`states “plane,” for example, the method has a choice, in part, between dialectally standardizing to
`
`“airplane” in American English or “aeroplane” in British English. If “airplane” is used more
`
`frequently and would result in a greater amount of hits than “aeroplane,” the Defendant’s
`
`construction would nonetheless force the invention to select “aeroplane” since the term is in a
`
`different dialect – contrary to specification’s use of statistical and syntactic analyses and purpose
`
`of insuring the search engine will recognize the keyword. This inappropriate result would
`
`directly conflict with the claim language and specifications, thereby violating the fundamental
`
`principle of claim construction. Phillips, 415 F.3d at 1316; See Supp. Carbonell Decl. at ¶ 4.
`
`E. Means for receiving from the user through an input device a query in
`a first language
`
`Claim Phrase
`
`means for receiving from the
`user through an input device a
`query in a first language
`
`
`
`Improved Search’s
`Proposed Construction
`Means Plus Function:
`Function: receiving from the
`user through an input device
`a query in a first language
`Structure: Keyboard or
`equivalents
`
`AOL’s Proposed
`Construction
`Means Plus Function:
`Indefinite (no disclosed
`structure)
`
`10
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`AOL Ex. 1016
`Page 14 of 24
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`

`

`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 15 of 24 PageID #: 1551
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`
`
`
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`Defendant erroneously conflates function with structure. While the function as recited in
`
`the claim includes the specified structure of “an input device,” which the specification describes
`
`as a keyboard, Defendant argues that it makes no sense to include the structure performing the
`
`function within the claim limitation describing the function. See D.I. 62 at 24. If anything,
`
`however, Defendant’s argument goes against the presumption that this term should be construed
`
`as a means-plus-function claim under § 112 ¶ 6. See also Trimed v. Stryker Corp., 514 F.3d
`
`1256, 1259 (Fed. Cir. 2008) (“If, in addition to the word ‘means’ and the functional language,
`
`the claim recites sufficient structure for performing the described functions in their entirety, the
`
`presumption of § 112 ¶ 6 is overcome”). The claim term itself recites structure to perform the
`
`function. Defendant’s position on this term amounts to a concession. As such, the presumption
`
`that § 112 ¶ 6 should apply has been effectively rebutted. This term is clearly definite.
`
`In addition, as Dr. Carbonell explains, a keyboard is not only the input device, but also
`
`“converts physical motion (keystrokes) into electronic impulses (character codes) and sends
`
`these in a serial manner via a serial line, a USB port, or a blue-tooth connection to the computer
`
`– hence a ‘keyboard’ is both the physical device and the means for inputting and transmitting the
`
`user’s query.” Supp. Carbonell Decl. at ¶ 5; See also Carbonell Dep. at 131:25-132:5.
`
`F.
`
`
`Dialectal controller for dialectally standardizing a content word
`extracted from the query
`
`Claim Phrase
`
`dialectal controller for
`dialectally standardizing
`a content word extracted
`from the query
`
`Improved Search’s Proposed
`Construction
`This term is not governed by 35 U.S.C.
`§ 112(6). If it is ruled to be so governed,
`Improved Search submits that the following
`structures provide the function of
`“dialectally standardizing a content word
`extracted from the query”:
`
`Structure: Server or equivalents
`
`AOL’s Proposed
`Construction
`Means Plus
`Function:
`Indefinite (no
`disclosed structure)
`
`
`
`11
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`AOL Ex. 1016
`Page 15 of 24
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`

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`Case 1:15-cv-00262-SLR-SRF Document 68 Filed 12/27/16 Page 16 of 24 PageID #: 1552
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`
`
`1.
`
`Defendant fails to make a prima facie case for construing “dialectal
`controller” under 35 U.S.C. § 112 ¶ 6
`
`
`Defendant’s primary argument regarding the application of § 112 ¶ 6 to this term is that
`
`
`
`one skilled in the art would not have understood the term “dialectal controller” as describing a
`
`name for structure, being instead a term specifically coined for the ’154 patent. This is
`
`inconsistent. “Dialectal controller” is composed of a noun, “controller,” which one skilled in the
`
`art would understand as software running on a server, and an adjective, “dialectal,” which
`
`describes how that structure is used, namely to perform dialectal standardization. See also Supp.
`
`Carbonell Decl. at ¶ 6 (“A dialectal controller, therefore, controls the flow of query words,
`
`modifying them to the