Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page1 of 23
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`E-FILED on 8/31/2011
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`IN RE GOOGLE LITIGATION
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`No. C-08-03172 RMW
`
`CLAIM CONSTRUCTION ORDER
`[Re Docket No. 246]
`
`On November 21, 2007, Software Rights Archive, LLC ("SRA") sued defendants Google
`Inc., Yahoo! Inc., IAC Search & Media Inc., Lycos, Inc. and AOL, LLC (collectively "defendants")
`in the Eastern District of Texas. SRA asserts that defendants infringe United States Patent No.
`5,544,352 ("'352 Patent"), United States Patent No. 5,832,494 ("'494 Patent"), and United States
`Patent No. 6,233,571 ("'571 Patent"). On July 21, 2008, defendants filed a declaratory judgment
`action in this court, alleging non-infringement and invalidity of the same three patents. The Texas
`action was transferred to this court on July 22, 2010 and then consolidated with the declaratory
`judgment action. The parties seek construction of claim terms in the asserted patents. The court
`held a claim construction hearing on April 27, 2011. Per the court's request, the parties filed
`supplemental briefs on May 9, 2011. The parties have also filed additional briefs addressing the
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`For the Northern District of California
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`United States District Court
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`001
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page2 of 23
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`United States Patent and Trademark Office's ("PTO's") ongoing reexamination of all three patents.
`SRA represents that the PTO has now allowed all asserted claims of the '494 and '352 patents
`without amendment but has issued a final rejection of the '571 patent.
`After consideration of the claims, specification, prosecution history, and other relevant
`evidence, and after hearing the arguments of the parties, the court now construes the language of the
`'494 and '352 patents for which the parties have offered different interpretations. Preliminarily,
`however, the court notes that its practice is normally to hear summary judgment motions that turn on
`claim construction concurrently with claim construction. The reason is that
`the legal function of giving meaning to claim terms always takes place in the context
`of a specific accused infringing device or process. While a trial court should certainly
`not prejudge the ultimate infringement analysis by construing claims with an aim to
`include or exclude an accused product or process, knowledge of that product or
`process provides meaningful context for the first step of the infringement analysis,
`claim construction.
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326-7 (Fed. Cir. 2006).
`Unfortunately, this practice was not followed here and some of the claim terms were construed
`outside the context of the infringement and invalidity issues. The constructions may conceivably
`need revision when the court has a better understanding of the accused methods.
`I. U.S. PATENT NO. 5,544,352
`The '352 patent, like the other asserted patents, relates to the use of non-semantic link
`analysis to enhance computerized searching of electronic databases. According to the "Background
`of the Invention," the claims overcome problems associated with "Boolean" searching of document
`databases:
`Current computer search programs use a text-by-text analysis procedure (Boolean
`Search) to scan a database and retrieve items from a database. The attorney must
`input a string of text, and the computer evaluates this string of text. Then the
`computer retrieves items from the database that match the string of text . . . .
`However, Boolean searches of textual material are not very efficient.
`'352 patent col.1 ll.27-40.
`Addressing these issues,
`The invention begins with an existing database and indexes the data by creating a
`numerical representation of the data. This indexing technique called proximity
`indexing generates a quick-reference of the relations, patterns, and similarity found
`among the data in the database. Using this proximity index, an efficient search for
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`2
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`For the Northern District of California
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`United States District Court
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`002
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`Facebook Inc. Ex. 1202
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`

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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page3 of 23
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`pools of data having a particular relation, pattern or characteristic can be effectuated.
`This relationship can then be graphically displayed.
`Id. at col.3 ll.51-58.
`Proximity Indexing indexes the data by using statistical techniques and empirically
`developed algorithms. The resulting search by an advanced data searching program
`of the Proximity Indexed data is significantly more efficient and accurate than a
`simple Boolean search.
`Id. at col.4 ll.9-13.
` Because the asserted patents share many common terms, the disputed claim terms are
`construed consistently across the patents. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282,
`1293 (Fed. Cir. 2005).
`
`"A non-semantical method"
`A.
`The parties agree that a "non-semantical method" requires the examination of non-semantical
`relationships between records (or "objects") in a database. The parties also agree that a "semantical
`method" accounts for an object's words or phrases. However, defendants seek a negative limitation
`for "non-semantical" that excludes consideration of words or phrases, thus disclaiming word-based
`searching. The parties' proposed constructions are as follows:
`
`
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`CLAIM LANGUAGE
`
`"a non-semantical
`method"
`
`SRA'S PROPOSED
`CONSTRUCTION
`A method reciting steps that
`analyze or use non-semantical
`relationships (i.e., citation
`relationships)
`
`DEFENDANTS' PROPOSED
`CONSTRUCTION
`A method of analysis that does not
`account for phrases and words in a
`textual object and that is based on
`explicit references to other textual
`objects
`or
`A method of analysis that is based on
`direct relationships between textual
`objects and that otherwise does not
`account for phrases and words in a
`textual object
`
`SRA contends that the claims, specification, and prosecution history of the '352 patent
`compel the conclusion that semantic methods based on words and phrases are not excluded from
`non-semantical methods. Claim 26 recites the following:
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`3
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`For the Northern District of California
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`United States District Court
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`003
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page4 of 23
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`26. A non-semantical method for numerically representing objects in a computer
`database and for computerized searching of the numerically represented objects in the
`database, wherein direct and indirect relationships exist between objects in the
`database, comprising:
`marking objects in the database so that each marked object may be
`individually identified by a computerized search;
`creating a first numerical representation for each identified object in the
`database based upon the object's direct relationship with other objects in the
`database;
`storing the first numerical representations for use in computerized searching;
`analyzing the first numerical representations for indirect relationships existing
`between or among objects in the database;
`generating a second numerical representation of each object based on the
`analysis of the first numerical representation;
`storing the second numerical representation for use in computerized
`searching; and
`searching the objects in the database using a computer and the stored second
`numerical representations, wherein the search identifies one or more of the
`objects in the database.
`'352 patent claim 26. SRA further points to dependent claim 27 which specifically recites the use of
`"semantic indexing techniques" which account for words and phrases in combination with the non-
`semantic techniques of independent claim 26:
`27. The non-semantical method of claim 26, wherein the objects in the database
`include words, and semantic indexing techniques are used in combination with
`the non-semantical method, the method further comprising the step of creating
`and storing a boolean word index for the words of the objects in the database.
`Id. at claim 27 (emphasis added). According to SRA, claim 27 recites that the same "non-semantic
`method" of claim 26 "further comprises" the creation of a "boolean word index," which necessarily
`accounts for words or phrases in the database. In response, defendants claim that SRA's position
`ignores the "non-" in the claim term itself. Defendants contend that the use of the term "comprising"
`in claim 26 and the addition of semantical steps in dependent claims is not enough to rewrite the
`plain meaning of the "non-" modifier. See Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.
`Cir. 2007) (holding that "comprising" does not "render every word and phrase therein open-
`ended–especially where, as here, the patentee has narrowly defined the claim term it now seeks to
`have broadened").
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`4
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`For the Northern District of California
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`United States District Court
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`004
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page5 of 23
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`In its supplemental briefing, SRA also contends that this court should give significant weight
`to SRA's arguments submitted to the PTO in the co-pending reexamination of all the asserted claims.
`The Federal Circuit has instructed courts to "monitor" ongoing reexamination or prosecution activity
`"to ascertain whether [the court's] construction of any of the claims has been impacted by further
`action at the PTO or any subsequent proceedings." Proctor & Gamble Co. v. Kraft Foods Global,
`Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008). SRA also points out that the panel handling the
`reexamination of the '352 patent has allowed all of the asserted claims of the '352 patent without
`amendment over the prior art that defendants submitted to the PTO. Dkt. No. 373 Ex. 1 at pg. 3.
`SRA cites to Dura Global Techs., Inc. v. Magna Donnelly Corp., 2010 WL 4259615, at *16-18
`(E.D. Mich. Oct. 25, 2010) for the proposition that the court should rely on statements made in co-
`pending reexamination proceedings, even if they are for the benefit of the plaintiff. In Dura Global,
`the court relied on statements made by the plaintiff in a reexamination proceeding that a term did not
`"exclude pulleys" to reject defendant's construction that required a negative limitation excluding
`"pulleys" in the co-pending litigation. Id. The court went on to note that the plaintiff's statements in
`reexamination did not appear to be self-serving because it was the court's technical advisor, not the
`plaintiff, who brought the reexamination statements to the court's attention. Id at 17.
`In response, defendants argue that because SRA's reexamination statements were filed with
`the PTO during litigation, they are merely self-serving and should be accorded little, if any, weight.
`See, e.g., Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1270 (Fed. Cir. 1986) (noting that
`papers filed with the PTO during litigation "might very well contain merely self-serving statements
`which likely would be accorded no more weight than testimony of an interested witness or argument
`of counsel").
`As the Federal Circuit explained in Springs Window Fashions LP v. Novo Indus., L.P., "[t]he
`public notice function of a patent and its prosecution history requires that a patentee be held to what
`he declares during the prosecution of his patent." 323 F.3d 989, 995 (Fed. Cir. 2003) (emphasis
`added). Applying this principal, the Federal Circuit has been willing to bind a patentee to its
`statements made during prosecution. See, e.g., id. (holding patentee to prosecution statements
`requiring that cutters be "independently movable"). It does not follow from the use of a patentee's
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`5
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`For the Northern District of California
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`United States District Court
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`005
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page6 of 23
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`statements against the patentee, however, that a patentee may necessarily use statements made
`during co-pending reexamination for its own benefit. See Mondis Tech., Ltd. v. Hon Hai Precision
`Indus. Co. Ltd., No. 07-565, 2011 U.S. Dist. LEXIS 7140, at *94 (E.D. Tex. Jan. 24, 2011) ("The
`statements to which Plaintiff refers were made in re-examination merely months before Plaintiff
`filed its claim construction brief–thus they should be given little, if any, weight."). Here, SRA's
`proposed construction is included verbatim in SRA's statements to the PTO. Unlike the plaintiff in
`Dura Global, SRA informed the court of its reexamination arguments within weeks of making them
`to the PTO. Dkt. No. 351. SRA's reliance on Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283, 1287 (Fed. Cir. 2010) is misplaced. In that case, the Federal Circuit simply found
`that the defendant was incorrect in arguing that the plaintiff had expressly defined "equivalent as
`meeting all of the requirements of the FDA's bioequivalence guidelines" during reexamination. Id.
`The Adams Respiratory court did not adopt a verbatim construction advanced by the plaintiff during
`reexamination. To be sure, the panel of examiners handling the reexamination of the '352 patent
`issued a Final Office Action, wherein they allowed all of the asserted claims in the '352 patent. Dkt.
`No. 373 Exh. 1. But prosecution is not a platform for a patentee to "enlarge, diminish, or vary the
`limitations in the claims." Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
`1995). SRA fails to identify anything in the reexamination of the '352 patent indicating that the
`examiners adopted SRA's proposed construction of "non-semantical." Therefore, SRA's self-serving
`statements made in the concurrent reexamination proceedings are entitled to little weight.
`The court turns to the claims and the specification, which the Federal Circuit has identified
`as "the single best guide to the meaning of a disputed term," Phillips v. AWH Corp., 415 F.3d 1303,
`1321 (Fed. Cir. 2005). At first glance, the term "non-semantical method" seems to exclude
`consideration of any semantical relationships. SRA argues that a complete exclusion of semantical
`considerations is irreconcilable with the fact that the steps of claim 26 require numerically
`representing textual citations contained in documents, and, therefore, necessarily account for the
`words and phrases of the citations in those documents. However, defendants' latest construction
`takes into account phrases and words in textual objects only as necessary to analyze direct
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`6
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`For the Northern District of California
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`United States District Court
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`006
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page7 of 23
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`relationships. Therefore, SRA's argument that defendants' proposed construction does not account
`for words and phrases at all is not correct.
`Dependent claim 27 recites the "non-semantical method . . . the method further comprising
`the step of creating and storing a boolean word index." '352 patent claim 26. According to SRA,
`this language inherently recognizes that the non-semantical method of claim 26 can include
`semantical techniques – namely, a boolean word index. SRA's argument is unconvincing.
`Regardless of the addition of semantic techniques in claim 27, the steps of claim 26 are expressly
`qualified as "non-semantical." In Regents of Univ. of Cal. v. DakoCytomation Cal., Inc., the Federal
`Circuit noted that "while it is true that dependent claims can aid in interpreting the scope of claims
`from which they depend, they are only an aid into interpretation and are not conclusive." 517 F.3d
`1364, 1375 (Fed. Cir. 2008). The Federal Circuit went on to hold that the term "unique sequences"
`excluded "repetitive sequences," even though certain dependent claims did not exclude repetitive
`sequences. Id. at 1376. Similarly, independent claim 26 excludes semantic techniques, even though
`dependent claim 27 adds a semantic technique. In fact, claim 27 states that "semantic indexing
`techniques are used in combination with the non-semantical method," thereby demonstrating that the
`two are indeed separate methods. '352 patent col.35 ll.54-60 (emphasis added).
`Moreover, the term "comprising" cannot be used to render every word or phrase open-ended.
`Dependent claim 27 specifically recites the "non-semantical" method of claim 26 as "further
`comprising" a semantic technique, but that does not necessarily mean that the non-semantical
`elements of claim 26 can be re-written to include semantic techniques. SRA's construction
`impermissibly stretches the bounds of the term "comprising."
`SRA's reliance on the doctrine of claim differentiation is similarly misplaced, especially
`where the patentee distinguished prior art as allegedly disclosing semantic rather than non-
`semantical techniques. Dkt. No. 284-5 at 3 ("In contrast, the novel search techniques claimed in the
`above-titled application do not rely on the semantic model approach and are not described in any of
`the references."). To be sure, SRA contends that other statements made during the prosecution of
`the '352 patent specifically combine semantic and non-semantic techniques:
`Although the novel techniques [i.e., non-semantical methods] may be used in
`combination with semantical techniques, they may also be conducted without the use
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`7
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`For the Northern District of California
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`United States District Court
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`007
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`Facebook Inc. Ex. 1202
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`of any semantical techniques. Use of the novel methods with and without semantic
`techniques is claimed.
`See Dkt. No. 314-1 at 29. But this statement actually supports defendants' construction, as it is
`consistent with claim 26 as encompassing the novel non-semantic techniques and claim 27 as
`encompassing the combination of novel non-semantic techniques with semantic techniques. The
`statement does not explicitly show that semantic techniques are part of, rather than additions to, the
`claimed non-semantical method. As a whole, the prosecution history supports dependants' proposed
`construction.
`The specification also supports defendants' proposed construction. SRA is correct in noting
`that the specification describes a Proximity Indexing Application Program (i.e., the program that
`"numerically represents" objects) that conducts semantic proximity indexing techniques in addition
`to non-semantical indexing. See '352 patent col.8 ll.33-42. However, these semantical techniques
`are separate from the non-semantical method of claim 26. See id. at col.8 ll.33-36 (noting that the
`"sequence of subroutines that comprise the Boolean Indexing Subroutine [] are executed during
`another stage of the Proximity Indexing Application Program"). SRA also points to parts of the
`specification that describe pool searches using (1) non-semantical matrices (the Opinion Citation
`Matrix and the Opinion Similarity Matrix) and (2) "other matrices" to rank the importance of objects
`in the pool as well as determine the similarity of the objects in the pool. Id. at col.20 l.65-col.21 l.3
`(pool-similarity searching); id. at col.21 ll.26-30 (pool-importance searching). At the same time, the
`specification discloses pool searches of the Computer Search Program for Data Represented in
`Matrices ("CSPDM") that "evaluate the Section Word Similarity Matrix as well as other matrices to
`determine whether or not to retrieve a full textual object." Id. at col.19 ll.13-15. The "Section Word
`Similarity Matrix" is a semantic word-based matrix. See id. at col.19 ll.6-12. According to SRA,
`these parts of the specification disclose using both semantic and non-semantical based matrices in
`performing pool searches. Notably, these steps are directed to dependent claims 39 and 40. Each of
`those claims add pool-similarity and pool-importance limitations to the searching step of the non-
`semantical method of claim 26. Id. at claims 39 and 40. But the addition of semantic steps in later
`claims does not convert the "non-semantical method for numerically representing objects . . . and
`computerized searching" into a semantic one. Cf. TiVo, Inc. v. Echostar Comm'ns Corp., 516 F.3d
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`For the Northern District of California
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`United States District Court
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`008
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`Facebook Inc. Ex. 1202
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`1290, 1302 (Fed. Cir. 2008) (dependent claim reciting steps occurring after steps of independent
`claim did not inform construction of independent claim).
`In view of the claims and the specification, the term "non-semantical method" is construed as
`"a method of analysis that is based on direct relationships between textual objects and that otherwise
`does not account for phrases and words in a textual object." The court thus accepts defendants'
`revised proposed construction of "non-semantical."
`B.
`"objects" and "of each object"
`The parties also dispute the meaning of the terms "object" in multiple limitations of claims
`26, 35 and 41 of the '352 patent. Defendants contend that the claim term "object" refers to every
`object that may exist in the database, while SRA argues that "object" refers to the set of objects to be
`numerically represented as referenced in the preamble. The parties' proposed constructions are as
`follows:
`
`CLAIM LANGUAGE
`
`"A . . . method for
`numerically
`representing objects
`in a computer
`database and for
`computerized
`searching of
`numerically
`represented objects
`in the computer
`database"
`"generating a second
`numerical
`representation of
`each object based on
`the analysis of the
`first numerical
`representation"
`
`DEFENDANTS' PROPOSED
`CONSTRUCTION
`No construction necessary.
`
`SRA'S PROPOSED
`CONSTRUCTION
`A computer-implemented . . .
`method for numerically
`representing a set of objects in
`a computer database and for
`computerized searching of the
`set of numerically represented
`objects in the computer
`database.
`
`generating a second numerical
`representation of each
`identified object within the set
`of numerically represented
`objects based on the analysis
`of the first numerical
`representations
`
`generating a second numerical
`representation of each object in the
`database that describes the indirect
`citation relationships found by
`analyzing the first numerical
`representation
`
`As an initial matter, SRA's proposed construction adds the language "computer-
`implemented" to the preamble. As defendants point out, the plain claim language already informs
`that a computer is required by certain aspects of the claimed method, as it expressly refers to "a
`computer database," "computerized searching," and "using a computer." But SRA contends that the
`specification and prosecution history demand that all of the claimed steps be computer implemented.
`
`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`9
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`For the Northern District of California
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`United States District Court
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`009
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`Facebook Inc. Ex. 1202
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`SRA points to multiple instances during the prosecution of the patent where prior art references were
`distinguished as pertaining to "manual" editing and clustering while the '352 patent claims all
`pertained to computerized indexing. See Dkt. No. 246-6 at 32. Moreover, the specification notes
`that any manual methods are "prone to error" while the claimed invention "can be recognized
`without direct human intervention." '352 patent col.2 ll.25-42 and col.7 ll.17-28. However, adding
`"computer-implemented," which is found nowhere in the specification, essentially renders the other
`computer-specific language superfluous. See Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-
`31 (Fed. Cir. 2008) (rejecting a construction that would render claim terms superfluous).
`Accordingly, the court finds that SRA's proposed addition of "computer-implemented" is
`unwarranted.
`Next, the court turns to SRA's proposal to add "a set of" to the claim. Defendants accuse
`SRA of rewriting the claim by adding the language. According to defendants, the preamble requires
`that all objects in the database must be numerically represented. SRA relies on Lava Trading, Inc. v.
`Sonic Trading Management, LLC, 445 F.3d 1348 (Fed. Cir. 2006) for the proposition that where a
`preamble uses a singular article, the claim language supports coverage of a subset rather than an
`entire set. See id. at 1354 ("By selecting the word 'a' instead of 'all,' the Applicant set forth a method
`wherein the traders may request and receive information for only a subset of the securities (i.e., one
`or more) . . . ."). In this case, the preamble of claim 26 uses the plural terms "objects" and
`"numerically represented objects," which defendants argue must necessarily encompass all objects.
`In addition, defendants contend that the preferred embodiment uses "each full textual object (e.g.,
`whole judicial opinion, statute, etc.)" as the starting point for creating numerical representations.
`'353 patent col.4 ll.27-31. According to defendants, the specification nowhere describes assigning
`numerical representations to only a portion of full textual objects.
`The court finds that both the literal language of the claim and the disclosed embodiments
`compel an interpretation that "numerically representing objects in a computer database" does not
`require every object in the database to be numerically represented. Critically, the claim language
`only refers to "objects," not "all objects." The fact that the term is plural is not enough to require the
`inclusion of every single object. See Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1330 (Fed.
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`For the Northern District of California
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`United States District Court
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`Facebook Inc. Ex. 1202
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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page11 of 23
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`Cir. 2004) (holding that the plural form describes "a universe ranging from one to some higher
`number" rather than necessarily all). Moreover, the specification describes several embodiments
`that numerically represent less than all of the objects in the database. While the preferred
`embodiment does numerically represent all full textual objects, it does not numerically represent the
`relationships of page objects, phrase objects, non-textual objects, or other subset objects that exist in
`the database, or even the marked word objects. '353 patent col.11 l.61-col.12 l.24. Claim 26 recites
`"objects" rather than "full textual objects," and therefore refers to objects generally rather than full
`textual objects only. As SRA points out, the '352 patent defines objects as including portions of
`objects as well: "Textual objects other than full textual objects may be subsets of full textual objects
`and of each other. For example, a section, page, or paragraph of text taken from a longer text may
`be treated as a textual object." Id. at col.12 ll.18-23. Furthermore, the patent describes providing
`non-semantic numerical representations for only a pool of objects (which is less than all objects in a
`database) in the paradigm routines. Id. at col.26 ll.40-46 (noting a paradigm proximity matrix
`including only a pool of "k" objects).
`Along these same lines, the preamble provides the antecedent basis for the term "objects" in
`the body of the claims. Because the "objects" in the body of the claim are the "objects" that will be
`"numerically represented" in the preamble, and because the term "objects" in the preamble is not
`necessarily all objects in the database, the "objects" in the body of the claim does not necessarily
`mean all objects in the database either. See Lava Trading, 445 F.3d at 1353-55. Accordingly, the
`court accepts SRA's proposed construction of "objects" and "of each object," but declines to insert
`the language "computer-implemented."
`C.
`"identified object"
`The parties also disagree as to whether an "identified object" as recited in claim 26 of the
`'352 patent is a "marked object" (as defendants contend) or "an object identified by a search using a
`computer and the second numerical representation" (as plaintiff contend). The parties' proposed
`constructions are as follows:
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`For the Northern District of California
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`United States District Court
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`11
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`011
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`Facebook Inc. Ex. 1202
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`

`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page12 of 23
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`CLAIM LANGUAGE
`
`"identified object"
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`SRA'S PROPOSED
`CONSTRUCTION
`An object identified by a
`search using a computer and
`the second numerical
`representation
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`DEFENDANTS' PROPOSED
`CONSTRUCTION
`each object that has been marked
`
`SRA points to the language of claim 26 reciting "marking objects in the database so that each
`marked object may be individually identified by a computerized search." '352 patent col.35 ll.33-35
`(emphasis added). According to SRA, this language precludes defendants' construction equating
`"marked objects" with "identified objects." Furthermore, SRA notes that the final portion of claim
`26 explains how the "search identifies one or more of the objects in the database" and the search is
`performed "using a computer and the stored second numerical representation." Id. at col.35 ll.50-53.
`SRA contends that this claim language shows that "identified objects" are those "identified by a
`search using a computer and the second numerical representation."
`In support of their proposed construction, defendants point to step two of claim 26, which
`refers to "creating a first numerical representation for each identified object." Id. at col. 35 ll.36-39.
`According to defendants, the "identified object" in step two can only be referring to the object
`marked in the first step, otherwise, "each identified object" would lack antecedent basis. Put
`differently, defendants claim that SRA's construction is illogical because claim 26 explicitly requires
`that the "identified object" exist before a computerized search is conducted, but SRA's construction
`defines the "identified object" as the result of a computer search.
`35 U.S.C. § 112 ¶ 2 requires an applicant to particularly point out and distinctly claim that
`which is regarded as the invention. But the issue of antecedent basis typically arises when dealing
`with a definite article ("the" or "said"). And while the convention is useful, it is not mandatory. See
`In re Skvorecz, 580 F.3d 1262, 1268-69 (Fed. Cir. 2009) (citing MPEP § 2173.05(e) for the
`proposition that "the failure to provide explicit antecedent basis for terms does not always render a
`claim indefinite"). Here, the term at issue is not "the identified object," but rather, "each identified
`object." Therefore, the lack of antecedent basis, while perhaps confusing, does not force defendants'
`proposed construction.
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`CLAIM CONSTRUCTION ORDER—No. C-08-03172 RMW
`JLR
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`12
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`For the Northern District of California
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`United States District Court
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`012
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`Facebook Inc. Ex. 1202
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`

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`Case5:08-cv-03172-RMW Document505 Filed08/31/11 Page13 of 23
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`Even more to the point, defendants fail to address the fact that under their construction, the
`preferred embodiment would be excluded. The Federal Circuit has cautioned that "[a] claim
`construction that excludes a preferred embodiment from the scope of the claim is rarely, if ever,
`correct." MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir. 2007). Here,
`the disclosed embodiments contemplate that not every object in the database (marked, identifi