UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF RHODE ESLAND
`
`INC. and
`ARENDI U.S.A.,
`ARENDI HOLDIN: LIMITED
`
`V.
`
`CA No. 02—343~T
`
`MICROSOFT CORPORATION
`
`ORDER RE CLAIM CONSTRUCTION
`
`the parties disagree regarding the
`In their written memoranda,
`meaning of the following terms contained in Claim 1 of the ‘853
`patent:
`
`“Upon a single entry of the execute command” and
`
`“Analyzing the document
`contained therein.”
`
`to determine if the first information is
`
`the parties agreed that “upon” means “on
`During oral argument,
`
`
`immediately or very soon after” and that “first information”
`or
`refers to text
`in the document
`that
`is entered by a user.
`The
`remaining dispute with respect to claim construction focuses on:
`
`1.
`
`What is meant by “the execute command"?
`
`2. Whether the claim covers a method requiring the user to select
`particular
`text
`in the document before the document
`is
`analyzed and a search for first information is conducted.
`
`This Court has carefully reviewed the ‘853 patent and its
`
`prosecution history bearing in mind the following principles of
`claim construction.
`
`1.
`
`(‘0
`
`their
`to have
`terms generally should be construed.
`Claim,
`ordinary and customary meaning unless a different meaning is
`given to them by the patentee and indicated with reasonable
`clarity and precision in the patent or
`its prosecution
`history.
`K—2 Corp. v. Salmon S.A.,
`191 F.3d 1356,
`1362~63
`(Fed. Cir. 1999}; Nothern Telecom Ltd. v. Samsung Elecs. C0,,
`215 F.3d 1281, 1295 (Fed. Cir. 2000).
`
`terms generally are construed to have the meaning
`Technical
`that would be attributed to them by one of ordinary skill in
`
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`the art at
`
`the time of the invention. Collins v. Northern
`
`(Fed. Cir. 2090). Again,
`Telecom Ltd., 216 F.3d 1042, 1044
`that meaning is overcome if a different meaning is clearly
`expressed by the patentee in the patent or its prosecution
`history.
`K—B Cor
`., 191 F.3d at 1363.
`
`to resolve
`The specification should be consulted in order
`ambiguities in the meaning of the terms used and to determine
`whether the patentee has used any claim terms in a manner that
`would be
`inconsistent with their ordinary and customary
`meaning. Watts v. XL Sys.,
`232 F.3d 877,
`883
`(Fed. Cir.
`2000}; Interactive Gift Express v. Compuserve, 256 F93d 1323,
`1331—32 (Fed. Cir. 2091*.
`
`
`The prosecution history may be consulted for the purpose of
`determining whether
`the
`patentee
`clearly
`disavowed
`a
`particular interpretation of a claim. Amgen:
`Inc. v. Hoechst
`Marion RousselE Inc., 314 F.3d 1313, 1327 (Fed. Cir. 2003};
`Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1313 (Fed.
`Cir. 2002).
`
`Based on a review in accordance with those principles; and,
`the reasons stated below,
`this Court hereby construes the
`
`
`
`DJ
`
`for
`
`dispu:ed terms of claim 1 as follows:
`
`1.
`
`[\3
`
`LA)
`
`(.71
`
`“the execute command” means the execute command referred to in
`
`the preceding element of claim 1 as “an execute command which
`initiates a record retrieval from an information source.”
`
`“input device” means a de“:ce that allows a user to provide
`input into a computer system.
`
`“the input device" means the input device referred to in the
`preceding element of Claintl as “an input device configured to
`enter an execute command which initiates a record retrieval
`
`program.”
`
`It includes a menu choice or selection because:
`
`a.
`
`The patent specification specifically refers to “input
`device” as including a “menu choice."
`Column 3, Lines
`41—43.
`'
`
`b.
`
`The abstract refers to the function item that initiates
`
`the retrieval process as including “selection in a menu.”
`
`“Entry of the execute command” may be accomplished by clicking
`on or selecting a menu choice.
`
`“upon a single entry of the execu:e command" means that:
`
`a.
`
`analysis of
`
`the doCument
`
`to determine if it contains
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`first information and searching sources external to
`document for second information associated.with the fir
`
`information must occur upon or after entry of the execurtmrrCDrt
`
`+-
`
`CD
`
`command, and
`
`the analysis and search take place without any need for
`the user to, first, select any text
`in the document by
`accenting it, highlighting it, or otherwise selecting it.
`
`Text selection by the use: was clearly disavowed by
`Arendi during prosecution of the patent as demonstrated
`by the following:
`'
`
`i.
`
`ii.
`
`initial
`20002, Arendi’s
`25,
`On April
`application was rejected as unpatentable,
`in
`part, because the Pandit patent provided for
`the
`use
`of
`pull—down menus
`to
`select
`operations or programs
`that may be used in
`connectiOn with “‘text accented, highlighted
`or otherwise indicated.’” Hedloy Examiner’s
`Detailed Action (April 25, 2000)
`i 5 {quoting
`Pandit, U.S. Patent No. 5,859,636, col. 2 line
`34).
`
`representative
`2000, Arendi’s
`12,
`June
`On
`responded by distinguishing Pandit
`on
`the
`ground that “in Pandit,
`the user must accent
`text, prior to recognizing the text, whereas
`in the present invention,
`the step of entering
`the
`execute
`command
`does
`not
`include
`highlighting or selecting the text, or first
`
`information.” Hedloy Examiner’s
`Interview
`Summary (June 14, 2004}.
`The Examiner noted
`that
`“[a1n amendment
`[would]
`be
`submitted
`which includes this difference.”
`Id.
`
`by
`followed up
`2000, Arendi
`July 27,
`iii. On
`amending
`its application to add,
`the words
`“upon a single entry of” before the words “the
`execute command." Hedloy Amendment
`(July 27,
`2000).
`
`iv.
`
`the examiner rejected
`On September 18, 2000,
`the amended application_on the ground that it
`was anticipated by the Tso patent
`(0.8. Patent
`No. 6,085,201‘.
`Hedloy Examiner’s Detailed
`Action {September 18, 2000).
`
`v.
`
`On October 17, 2000, Arendi’s representative
`attempted to distinguish Tso on the ground
`
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`t r
`
`_ 1".L t
`the
`, under Tso, “the user must select
`CTor
`tr (D N9)
`string to be processed, whereas in the
`present
`invention,
`the user does not have to
`select
`the
`text
`string to be
`analyzed.”
`Hedloy Examiner’s
`Interview Summary {October
`17,
`2000).
`The Examiner again noted.
`that
`“[aln
`amendment will
`be
`Submitted which
`includes this difference."
`id;
`
`vi.
`
`0n December 18, 2000, Arendi further amended
`its application to add the words “analyzing
`the
`document
`to determine
`if
`the
`first
`information is contained therein, and if the
`first
`information
`is
`contained
`in
`the
`document”. Hedloy Amendment
`(December
`18,
`2000). Arendi’s representative explained the
`amendment as clarifying that “the invention
`does not
`require the user
`to select
`a text
`string to be processed since it
`functions
`automatically upon a single click of an input
`
`device.”
`Id.
`
`the examiner allowed the
`vii. On January 2, 2001,
`application stating that “[i]n Tso,
`the text
`string to be processed is determined by the
`current cursor position as specified by the
`user .
`.
`. whereas the present invention ‘does
`not require the user to select the text string
`to
`be
`processed
`since
`it
`functions
`automatically upon a single click of an input
`device’
`to determine if the first information
`is contained. within the document.”
`Hedloy
`
`Examiner’s Reasons for Allowance (January 2,
`2001).
`
`6.
`
`“first information” means text in the document that is entered
`by a user and can be used by the record retrieval program to
`search sources external to the document for second information
`associated with the first information.
`
`IT :3 SO ORDERED.
`
`qxwvafi31<:,:}tw«sa
`Ernest C. Torres
`
`Chief Judge
`
`Date:
`
`:aeth».3“1 , 2L04
`
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