405 F.Supp.2d 731, 2005 Markman 3481372
`(Cite as: 405 F.Supp.2d 731)
`
`Page 1
`
`United States District Court,
`E.D. Texas,
`Marshall Division.
`TRILOGY SOFTWARE, INC.
`v.
`SELECTICA, INC.
`Civ.A. No. 2:04-CV-160.
`
`Dec. 20, 2005.
`
`Background: Owner of patents for product config-
`uration and pricing software sued competitor for in-
`fringement. Competitor counterclaimed for
`in-
`fringement of its own patents.
`
`the District Court,
`
`Holdings: Construing claims,
`Ward, J., held that:
`(1) product and part “relationships” were not lim-
`ited to tables and bit vectors described in preferred
`embodiment;
`(2) “organizational groups” were groups of pur-
`chasing organizations where each group had char-
`acteristic;
`(3) means-plus-function claim was invalid for in-
`definiteness; and
`(4) “light client” was standalone Internet-capable
`device having relatively less bandwidth capability
`than desktop computer.
`
`Claims construed.
`
`West Headnotes
`
`[1] Patents 291
`
`314(5)
`
`291 Patents
`291XII Infringement
`291XII(C) Suits in Equity
`291k314 Hearing
`291k314(5) k. Questions of law or
`fact. Most Cited Cases
`Patent claim construction is issue of law for court
`to decide.
`
`[2] Patents 291
`
`165(3)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k165 Operation and Effect of Claims
`
`in General
`
`291k165(3) k. Construction of lan-
`guage of claims in general. Most Cited Cases
`
`Patents 291
`
`167(1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
`Models
`
`Cases
`
`291k167(1) k. In general. Most Cited
`
`Patents 291
`
`168(2.1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k168 Proceedings in Patent Office in
`
`General
`
`of Claims
`
`291k168(2) Rejection and Amendment
`
`291k168(2.1) k. In general. Most
`
`Cited Cases
`To ascertain meaning of patent claims, court looks
`to three primary sources: claims, specification, and
`prosecution history.
`
`[3] Patents 291
`
`167(1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
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`
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`
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`

`
`405 F.Supp.2d 731, 2005 Markman 3481372
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`
`Models
`
`291k167(1) k. In general. Most Cited
`
`Cases
`Patent's claims must be read in view of specifica-
`tion, of which they are part.
`
`[4] Patents 291
`
`165(2)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k165 Operation and Effect of Claims
`
`in General
`
`291k165(2) k. Claims as measure of
`patentee's rights. Most Cited Cases
`
`Patents 291
`
`167(1.1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
`Models
`
`291k167(1.1) k. Specification as limit-
`ing or enlarging claims. Most Cited Cases
`It is function of claims, not specification, to set
`forth the limits of patentee's claims.
`
`[5] Patents 291
`
`162
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(A) In General
`291k162 k. Contemporaneous construc-
`tion of inventor. Most Cited Cases
`Patentee is free to be his or her own lexicographer,
`but any special definition given to word must be
`clearly set forth in specification.
`
`[6] Patents 291
`
`167(1.1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`Page 2
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
`Models
`
`291k167(1.1) k. Specification as limit-
`ing or enlarging claims. Most Cited Cases
`Although patent specification may indicate that cer-
`tain embodiments are preferred, particular embodi-
`ments appearing in specification will not be read in-
`to claims when claim language is broader than em-
`bodiments.
`
`[7] Patents 291
`
`157(1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(A) In General
`291k157 General Rules of Construction
`291k157(1) k. In general. Most Cited
`
`Cases
`Words used in patent claim are generally given
`their ordinary and customary meaning, i.e., mean-
`ing that words would have to person of ordinary
`skill in art in question on effective filing date of
`patent application.
`
`[8] Patents 291
`
`167(1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
`Models
`
`291k167(1) k. In general. Most Cited
`
`Cases
`It is proper in all cases to refer back to descriptive
`portions of patent specification to aid in solving
`doubt or in ascertaining true intent and meaning of
`language employed in claims.
`
`[9] Patents 291
`
`168(2.1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
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`
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`
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`

`
`405 F.Supp.2d 731, 2005 Markman 3481372
`(Cite as: 405 F.Supp.2d 731)
`
`291IX(B) Limitation of Claims
`291k168 Proceedings in Patent Office in
`
`General
`
`of Claims
`
`291k168(2) Rejection and Amendment
`
`291k168(2.1) k. In general. Most
`
`Cited Cases
`Prosecution history is relevant to determination of
`how inventor understood invention and whether in-
`ventor limited invention during prosecution by nar-
`rowing scope of patent claims.
`
`[10] Patents 291
`
`159
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(A) In General
`291k159 k. Extrinsic evidence in general.
`Most Cited Cases
`Role of dictionary definitions when construing pat-
`ent claim terms is subordinate to intrinsic record.
`
`[11] Patents 291
`
`167(1.1)
`
`291 Patents
`291IX Construction and Operation of Letters
`Patent
`
`291IX(B) Limitation of Claims
`291k167 Specifications, Drawings, and
`
`Models
`
`291k167(1.1) k. Specification as limit-
`ing or enlarging claims. Most Cited Cases
`Product and part “relationships,” called for in pat-
`ent for product configuration software, were not
`limited to tables and bit vectors described in pre-
`ferred embodiment.
`
`[12] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Product
`relationship,” called for
`
`in patent
`
`for
`
`Page 3
`
`product configuration software, was association
`between product and one or more parts, with
`product representing left-hand side of relationship,
`and set of parts representing right-hand side of the
`relationship.
`
`[13] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Part relationships,” called for in patent for product
`configuration software, were associations that exis-
`ted between first set of parts and second set of
`parts, with first set representing left-hand side of re-
`lationship and second set representing right-hand
`side of relationship.
`
`[14] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Includes classification,” called for in patent for
`product configuration software, was classification
`in which second set of one or more elements was
`included when all members of first set of one or
`more elements existed in configuration.
`
`[15] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`for
`“Configuration state,” referred to in patent
`product configuration software, was status of ele-
`ments in current configuration.
`
`[16] Patents 291
`
`101(2)
`
`291 Patents
`
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`
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`

`
`405 F.Supp.2d 731, 2005 Markman 3481372
`(Cite as: 405 F.Supp.2d 731)
`
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Includes relationship,” called for in patent for
`product configuration software, was relationship
`that caused elements on right-hand side of relation-
`ship to be included in configuration when all ele-
`ments of left-hand side of relationship were already
`included.
`
`[17] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Excludes relationship,” called for in patent for
`product configuration software, was relationship
`that caused elements of right-hand side of relation-
`ship to be excluded when all elements of left-hand
`side were already included.
`
`[18] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Requires choice relationship,” called for in patent
`for product configuration software, was relationship
`in which number of elements had to be chosen from
`second set of elements on right-hand side of rela-
`tionship when all elements of left-hand side were
`already included.
`
`[19] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Removed relationship,” called for in patent for
`
`Page 4
`
`product configuration software, was relationship
`that caused elements of right-hand side of relation-
`ship to be removed when all elements of left-hand
`side were already included.
`
`[20] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Optional relationship,” called for in patent for
`product configuration software, was relationship in
`which number of elements could be chosen from
`second set of elements on right-hand side of rela-
`tionship when all elements of left-hand side were
`already included.
`
`[21] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`for
`in patent
`“Active relationship,” called for
`product configuration software, was relationship in
`which all elements on left-hand side of relationship
`were selected.
`
`[22] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“NotActivatable relationship,” called for in patent
`for product configuration software, was relationship
`in which selection of certain left-hand side items
`resulted in invalid configuration state.
`
`[23] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`
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`
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`

`
`405 F.Supp.2d 731, 2005 Markman 3481372
`(Cite as: 405 F.Supp.2d 731)
`
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`Corresponding structure for “means for obtaining
`user input,” called for in patent for product pricing
`software, was general purpose computer, including
`keyboard or mouse. 35 U.S.C.A. § 112, ¶ 6.
`
`[24] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`Corresponding structure for “means for analyzing
`at least one selected element,” called for in patent
`for product pricing software, was general purpose
`computer programmed to perform steps of al-
`gorithm disclosed by relevant flow diagram. 35
`U.S.C.A. § 112, ¶ 6.
`
`[25] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Organizational groups,” called for in patent for
`product configuration software, were groups of pur-
`chasing organizations where each group had char-
`acteristic.
`
`[26] Patents 291
`
`101(6)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(6) k. Ambiguity, uncertainty or
`indefiniteness. Most Cited Cases
`Claim in patent for product configuration software
`was invalid for indefiniteness, where specification
`failed to disclose sufficient structure corresponding
`to its “means for arranging” limitation; disclosed
`screen shot was insufficient representation of relev-
`
`Page 5
`
`ant algorithm. 35 U.S.C.A. § 112, ¶¶ 2, 6.
`
`[27] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Application,” called for in patent for product con-
`figuration software, was computer program that
`was designed to allow end-user to perform some
`specific task.
`
`[28] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`Claim in patent for product configuration software,
`calling for transportation of graphical user-interface
`(GUI) application from server platform to client
`platform, required transportation of GUI applica-
`tion without also transporting object model and
`configurator.
`
`[29] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Ordering,” called for in patent for product config-
`uration software, did not necessarily require pur-
`chasing.
`
`[30] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Applet,” called for in patent for product configura-
`
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`
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`

`
`405 F.Supp.2d 731, 2005 Markman 3481372
`(Cite as: 405 F.Supp.2d 731)
`
`tion software, was small program that was capable
`of being executed from within another application.
`
`[31] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Web-browser plug-in,” called for in patent for
`product configuration software, was program mod-
`ule that was designed to directly interface with, and
`give additional capability to, web browser.
`
`[32] Patents 291
`
`101(2)
`
`291 Patents
`291IV Applications and Proceedings Thereon
`291k101 Claims
`291k101(2) k. Construction in general.
`Most Cited Cases
`“Light client,” referred to in patent for product con-
`figuration software, was standalone Internet-cap-
`able device having relatively less bandwidth capab-
`ility than desktop computer.
`
`Patents 291
`
`328(2)
`
`291 Patents
`291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
`291k328 Patents Enumerated
`291k328(2) k. Original utility. Most Cited
`
`Cases
`6,405,308,
`6,233,609,
`5,878,400,
`5,825,651,
`6,460,077, 6,535,913, 6,553,350, 6,675,294. Con-
`strued.
`
`Page 6
`
`6,049,822. Cited.
`*734 Samuel Franklin Baxter, Attorney at Law,
`Marshall, TX, Micah John Howe, I, Peter John Ay-
`ers, Scott Lamar Cole, Austin, TX, and Mike
`McKool, Jr., McKool, Smith, Dallas, TX, for Tri-
`logy Software, Inc.
`
`Otis W. Carroll, Jr., Jack Wesley Hill, Ireland, Car-
`roll & Kelley, PC, Tyler, TX, Don F. Livornese,
`Korula T. Cherian, Patricia L. Peden, Howrey LLP,
`Henry Charles Bunsow, Robert Scott Wales, Kfir
`Levy, Rick Chang, Howrey Simon Arnold & White,
`San Francisco, CA, Franklin Jones, Jr., Jones &
`Jones, Marshall, TX, Sidney Calvin Capshaw, III,
`Brown McCarroll, Longview, TX, for Selectica,
`Inc.
`
`MEMORANDUM OPINION AND ORDER
`
`WARD, District Judge.
`
`1. Introduction.
`
`The court issues this order to construe the claim
`terms at issue in the various patents in suit. The
`court will first provide a discussion of the rules
`which govern the claim construction process. Next,
`the court will provide an overview of the patents
`asserted by the plaintiff, Trilogy Software, Inc.
`(“Trilogy”), followed by a construction of the dis-
`puted terms in those patents. Finally, the court will
`provide an overview of the patents asserted by the
`defendant,
`counter-claimant,
`Selectica,
`Inc.
`(“Selectica”), followed by a construction of the dis-
`puted terms in those patents.
`
`Patents 291
`
`328(2)
`
`2. Claim Construction Principles.
`
`291 Patents
`291XIII Decisions on the Validity, Construction,
`and Infringement of Particular Patents
`291k328 Patents Enumerated
`291k328(2) k. Original utility. Most Cited
`
`Cases
`
`[1] “A claim in a patent provides the metes and
`bounds of the right which the patent confers on the
`patentee to exclude others from making, using or
`selling the protected invention.” Burke,
`Inc. v.
`Bruno Indep. Living Aids, Inc., 183 F.3d 1334,
`1340 (Fed.Cir.1999). Claim construction is an issue
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
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`405 F.Supp.2d 731, 2005 Markman 3481372
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`
`of law for the court to decide. Markman v. West-
`Inc., 52 F.3d 967, 970-71
`view Instruments,
`(Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116
`S.Ct. 1384, 134 L.Ed.2d 577 (1996).
`
`[2][3] To ascertain the meaning of claims, the court
`looks to three primary sources: the claims, the spe-
`cification, and the prosecution history. Markman,
`52 F.3d at 979. Under the patent law, the specifica-
`tion must contain a written description of the inven-
`tion that enables one of ordinary skill in the art to
`make and use the invention. A patent's claims must
`be read in view of the specification, of which they
`are a part. Id. For claim construction purposes, the
`description may act as a sort of dictionary, which
`explains the invention and may define terms used in
`the claims. Id. “One purpose for examining the spe-
`cification is to determine if the patentee has limited
`the scope of the claims.” Watts v. XL Sys., Inc., 232
`F.3d 877, 882 (Fed.Cir.2000).
`
`is the function of the
`it
`[4][5][6] Nonetheless,
`claims, not the specification, to set forth the limits
`of the patentee's claims. Otherwise, there would be
`no need for claims. SRI Int'l v. Matsushita Elec.
`Corp., 775 F.2d 1107, 1121 (Fed.Cir.1985) (en
`banc). The patentee is free to be his own lexico-
`grapher, but any special definition given to a word
`must be clearly set forth in the specification. Intel-
`licall, Inc. v. Phonometrics, 952 F.2d 1384, 1388
`(Fed.Cir.1992). And, although the specification
`may indicate that certain embodiments are pre-
`ferred, particular embodiments appearing in the
`specification will not be read into the claims when
`the claim language is broader than the embodi-
`ments. Electro Med. Sys., S.A. v. Cooper Life Sci-
`ences, Inc., 34 F.3d 1048, 1054 (Fed.Cir.1994).
`
`*735 [7] This court's claim construction decision
`must be informed by the Federal Circuit's recent de-
`cision in Phillips v. AWH Corporation, 415 F.3d
`1303 (Fed.Cir.2005)(en banc). In Phillips, the court
`set forth several guideposts that courts should fol-
`low when construing claims. In particular, the court
`reiterated that “the claims of a patent define the in-
`vention to which the patentee is entitled the right to
`
`Page 7
`
`exclude.” Id. at 1312 (emphasis added)(quoting In-
`nova/Pure Water, Inc. v. Safari Water Filtration
`Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). To
`that end, the words used in a claim are generally
`given their ordinary and customary meaning. Id.
`The ordinary and customary meaning of a claim
`term “is the meaning that the term would have to a
`person of ordinary skill in the art in question at the
`time of the invention, i.e. as of the effective filing
`date of the patent application.” Id. This principle of
`patent law flows naturally from the recognition that
`inventors are usually persons who are skilled in the
`field of the invention. The patent is addressed to
`and intended to be read by others skilled in the par-
`ticular art. Id.
`
`[8] The primacy of claim terms notwithstanding,
`Phillips made clear that “the person of ordinary
`skill in the art is deemed to read the claim term not
`only in the context of the particular claim in which
`the disputed term appears, but in the context of the
`entire patent, including the specification.” Id. Al-
`though the claims themselves may provide guid-
`ance as to the meaning of particular terms, those
`terms are part of “a fully integrated written instru-
`ment.” Id. at 1315 (quoting Markman, 52 F.3d at
`978). Thus, the Phillips court emphasized the spe-
`cification as being the primary basis for construing
`the claims. Id. at 1314-17. As the Supreme Court
`stated long ago, “in case of doubt or ambiguity it is
`proper in all cases to refer back to the descriptive
`portions of the specification to aid in solving the
`doubt or in ascertaining the true intent and meaning
`of the language employed in the claims.” Bates v.
`Coe, 98 U.S. 31, 38, 25 L.Ed. 68 (1878). In ad-
`dressing the role of the specification, the Phillips
`court quoted with approval its earlier observations
`from Renishaw PLC v. Marposs Societa' per Azioni,
`158 F.3d 1243, 1250 (Fed.Cir.1998):
`
`Ultimately, the interpretation to be given a term
`can only be determined and confirmed with a full
`understanding of what the inventors actually in-
`vented and intended to envelop with the claim.
`The construction that stays true to the claim lan-
`
`© 2010 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
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`405 F.Supp.2d 731, 2005 Markman 3481372
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`
`guage and most naturally aligns with the patent's
`description of the invention will be, in the end,
`the correct construction.
`
`Consequently, Phillips emphasized the important
`role the specification plays in the claim construc-
`tion process.
`
`[9] The prosecution history also continues to play
`an important role in claim interpretation. The pro-
`secution history helps to demonstrate how the in-
`ventor and the PTO understood the patent. Phillips,
`415 F.3d at 1317. Because the file history,
`however,
`“represents
`an
`ongoing
`negotiation
`between the PTO and the applicant,” it may lack
`the clarity of the specification and thus be less use-
`ful in claim construction proceedings. Id. Neverthe-
`less, the prosecution history is intrinsic evidence.
`That evidence is relevant to the determination of
`how the inventor understood the invention and
`whether the inventor limited the invention during
`prosecution by narrowing the scope of the claims.
`
`[10] Phillips rejected any claim construction ap-
`proach that sacrificed the intrinsic record in favor
`of extrinsic evidence, such as dictionary definitions
`or expert testimony. The en banc court condemned
`the suggestion made by *736Texas Digital Sys.,
`308
`F.3d
`1193
`Inc.
`v.
`Telegenix,
`Inc.,
`(Fed.Cir.2002), that a court should discern the or-
`dinary meaning of the claim terms (through diction-
`aries or otherwise) before resorting to the specifica-
`tion for certain limited purposes. Id. at 1319-24.
`The approach suggested by Texas Digital-the as-
`signment of a limited role to the specification-was
`rejected as inconsistent with decisions holding the
`specification to be the best guide to the meaning of
`a disputed term. Id. According to Phillips, reliance
`on dictionary definitions at the expense of the spe-
`cification had the effect of “focus[ing] the inquiry
`on the abstract meaning of words rather than on the
`meaning of the claim terms within the context of
`the patent.” Id. at 1321. Phillips emphasized that
`the patent system is based on the proposition that
`the claims cover only the invented subject matter.
`Id. What is described in the claims flows from the
`
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`
`statutory requirement imposed on the patentee to
`describe and particularly claim what he or she has
`invented. Id. The definitions found in dictionaries,
`however, often flow from the editors' objective of
`assembling all of the possible definitions for a
`word. Id.
`
`Phillips does not preclude all uses of dictionaries in
`claim construction proceedings. Instead, the court
`assigned dictionaries a role subordinate to the in-
`trinsic record. In doing so, the court emphasized
`that claim construction issues are not resolved by
`any magic formula. The court did not impose any
`particular sequence of steps for a court to follow
`when it considers disputed claim language. Id. at
`1323-25. Rather, Phillips held that a court must at-
`tach the appropriate weight to the intrinsic sources
`offered in support of a proposed claim construction,
`bearing in mind the general rule that the claims
`measure the scope of the patent grant. The court
`now turns to a discussion of the claim construction
`disputes.
`
`3. Trilogy Patents.
`
`five patents
`Trilogy asserts various claims of
`against the defendant. The technology involves the
`configuration and pricing of products. The parties
`refer to three of the patents collectively as the
`“Configuration Patents.” The remaining two patents
`are referred to as the “Pricer Patents.”
`
`The Configuration Patents are designed to make it
`easier
`for sales personnel
`to define configured
`products and for customers to select from those
`definitions. The '651 patent
`is exemplary of the
`Configuration Patents, and it employs a graphical
`user interface (“GUI”) which makes it easier to cre-
`ate and select from among various product offer-
`ings. From the vendor's perspective,
`the patents
`refer to a “maintenance user” as a person on the
`sales staff of the vendor who defines products and
`available parts options. The maintenance user's job
`is made easier by the Configuration Patents because
`the maintenance user does not need to learn a con-
`
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`
`figuration language to use the invention described
`in the '651 patent. Instead, he may configure sys-
`tems through the GUI by dragging and dropping
`elements into categories representative of parts op-
`tions for various product lines. The Configuration
`Patents use product and parts relationships such as
`“include,” “exclude,” “remove,” and “requires
`choice” to allow the maintenance user to identify
`which parts are compatible with other parts to
`define a product. When the maintenance user com-
`pletes the product definition, he saves it in memory.
`
`Through the use of the GUI, the maintenance user
`sees an external representation of a product. A com-
`piler or “translation unit” converts the external rep-
`resentation of the parts selected into an internal rep-
`resentation*737 suitable for processing. In the pre-
`ferred embodiment, the internal representation of
`the product is stored in tables and bit vectors.
`
`a
`transaction,
`the
`of
`side
`other
`the
`On
`“configuration user” is a potential customer who
`might use his or her computer
`to configure a
`product by selecting from among various options.
`The configuration user inputs a part selection and
`the system processes it. After processing, the sys-
`tem updates the configuration user's product to re-
`flect the input, or, in the case of an invalid selec-
`tion, the system notifies the user that he or she has
`made an invalid selection, based on the state of the
`configuration or the product definition provided by
`the maintenance user.
`
`Trilogy also asserts various claims of two addition-
`al patents. These are referred to as the Pricer Pat-
`ents, and they enable a salesperson to create and ap-
`ply a company's pricing policy to a particular cus-
`tomer by organizing, grouping, and prioritizing the
`pricing applicable to given products and customers.
`The invention permits pricing rules to be based on
`group characteristics, rather than on individual cus-
`tomers. When a salesperson selects a particular cus-
`tomer using the invention described in the Pricer
`Patents,
`the system automatically identifies all
`groups to which that particular customer belongs.
`In doing so, the system identifies all pricing adjust-
`
`Page 9
`
`ments for which each group is eligible. The inven-
`tion sorts the various price adjustments applicable
`to a particular product offered to a particular pur-
`chasing organization based on several criteria.
`After sorting,
`the system applies pricing adjust-
`ments in a sequence which results in the final price
`for which a particular product can be sold to a par-
`ticular purchasing organization.
`
`A. Configuration Patents
`
`[11] The court will first address the Configuration
`Patents. One basic dispute drives the parties' posi-
`tions with respect to these patents. The language of
`the claims
`requires certain product and parts
`“relationships.” As indicated above, during a con-
`figuration session, the user views an external rela-
`tionship of the product being configured. A com-
`piler translates the external representation into an
`internal representation. See '651 patent, Fig. 7. In
`the preferred embodiment, the patents describe a
`tabular approach using bits in bit vectors for storing
`the internal representation of the configuration. See
`'651 patent, Figs. 8A and 8B.
`
`Selectica would limit all of the claims to the pre-
`ferred embodiment. See Selectica's Response Brief,
`at 7 (“generating product and parts relationships is
`accomplished exclusively through the use of tables
`and vectors.”). In particular, Selectica points to the
`'651 patent, col. 3, which provides:
`
`During configuration,
`the invention maintains
`runtime information that is stored in tables and
`vectors. To achieve greater processing efficiency,
`the system represents elements in a configuration
`(e.g. product, part, and group) as a bit in a bit
`vector.
`
`'651 patent, col. 3, ll. 12-16 (emphasis added). Un-
`der Selectica's claim construction proposals, rela-
`tionships are generated in the invention exclusively
`through the use of tables having a left-hand side
`and a right-hand side. Likewise, in its brief, Select-
`ica defines “left-hand side of said relationship” to
`
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`mean “the left-hand side of a runtime table used to
`store relationship information,
`the left-hand side
`comprising a bit vector containing a bit that corres-
`ponds to elements.” See Selectica's Response Brief,
`at pp. 27-28.
`
`Trilogy urges a broader construction and relies
`heavily on the doctrine of claim *738 differenti-
`ation. Several unasserted dependent claims expli-
`citly use the terms “left hand side” or “right hand
`side.” As a result, Trilogy urges the court not to im-
`pose those limitations in the asserted claims-as the
`language of the asserted claims does not require it.
`According to Trilogy, one novel aspect of the in-
`vention is the manner, referred to as the external
`representation, in which the relationships are ex-
`pressed through the use of a GUI. Trilogy charac-
`terizes the use of tables and bit vectors as the pre-
`ferred way to store the internal relationships in
`memory-not as limitations to the claims of the pat-
`ent directed toward the external representation fea-
`tures of the invention.
`
`The court has carefully reviewed the patents, the
`specifications, and the cited portions of the prosec-
`ution history. Although this question is close, it ap-
`pears
`that
`the
`patentee
`viewed
`the
`term
`“relationships” similar to the way one would view
`associations between the entries on the left-hand
`side of an equation with the results on the right-
`hand side of the equation. In this regard, Selectica
`correctly observes that the patents, read as a whole,
`imply the existence of a left-hand and a right-hand
`side to the various relationships. Dependent claim 4
`refers to “the elements specified in the left-hand
`side of said relationship” and assumes the existence
`of a left-hand side to the relationship from which
`the claim depends. Moreover, as Selectica's counsel
`urged at oral argument, this view of “relationships”
`is the same even when the patent describes the ex-
`ternal representation of the relationships.
`
`Nevertheless, the court is not convinced that this
`way of viewing relationships requires the court to
`import the tables and bit vector limitations sought
`by the defendant. As suggested above, the patents
`
`Page 10
`
`refer to the ideas of the left-hand and right-hand
`sides of a relationship in a broader sense in the con-
`text of the external representation of those relation-
`ships. Figure 6 of the patent demonstrates this. It is
`important to remember that Figure 6 is not a repres-
`entation of tables and bit vectors, but instead is a
`representation of the GUI screen. According to the
`relevant portions of the specification:
`
`“The maintainer can drag an element (or ele-
`ments) from pane 602 into pane 610.... The ele-
`ment(s) dragged into pane 610 are referred to as
`the left-hand side of the relationship. The ele-
`ment(s) dragged into pane 614 are referred to as
`the right-hand side of the relationship.”
`
`'615 patent, at col. 8, ll. 41-48.
`
`Thus, although Selectica's counsel correctly noted
`that the patent describes “external relationships,”
`by using the terms “left-hand side” and “right-hand
`side,” the language of the specification refers to
`these concepts in a more generic sense than Select-
`ica's claim constructions will allow. The court is
`not persuaded that the cited portions of the specific-
`ation operate to limit t