Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 1 of 60
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`ALMONDNET, INC., INTENT IQ,
`LLC,
` Plaintiff,
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`-v-
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`MICROSOFT CORPORATION,
` Defendant.
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`ALMONDNET, INC., INTENT IQ,
`LLC,
` Plaintiff,
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`-v-
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`AMAZON.COM, INC.,
`AMAZON.COM SERVICES LLC,
`AMAZON WEB SERVICES, INC.,
` Defendants.
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`6:21-CV-00897-ADA
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`6:21-CV-00898-ADA
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`CLAIM CONSTRUCTION ORDER AND MEMORANDUM IN SUPPORT THEREOF
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`Before the Court are the Parties’ claim construction briefs: Defendants’ Microsoft
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`Corporation’s and Amazon.com, Inc., Amazon.com Services LLC, and Amazon Web Services,
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`Inc.’s (“Amazon”) Opening and Reply briefs (6:21-cv-00897 ECF Nos. 29 and 32, respectively;
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`6:21-cv-00898 ECF No. 33 and 40, respectively) and Plaintiffs AlmondNet, Inc. and Intent IQ,
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`LLC’s Response and Sur-Reply briefs (6:21-cv-00897 ECF Nos. 30 and 34, respectively; 6:21-cv-
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`00898 ECF No. 34 and 42, respectively). The Court provided preliminary constructions for the
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`disputed terms one day before the hearing. The Court held the Markman hearing on November
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`30, 2022. 6:21-cv-00897 ECF No. 69, 6:21-cv-00898 ECF No. 50. During that hearing, the Court
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`informed the Parties of the final constructions for the disputed terms. Id. This Order does not alter
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`any of those constructions.
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`1
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 2 of 60
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`I.
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`DESCRIPTION OF THE ASSERTED PATENTS
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`Plaintiff asserts U.S. Patent Nos. 7,822,639, 8,244,582, 8,244,586, 8,671,139, 8,677,398,
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`9,830,615. All six patents are generally directed towards targeted advertising, which the parties
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`divide into four groups.
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`A. Group 1: ’582 Patent
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`In the first group, which Defendants call the “Profiling Matching” patent, is the ’582 Patent.
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`The specification and claims of the ’582 Patent describes gathering profile information about a
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`user, adding that information to an already maintained profile for the user, and then using that
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`information to target advertising. ’582 Patent at 3:62–4:38; ’582 Patent, Claims 1, 11.
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`B. Group 2: ’639 and ’586 Patents
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`In the second group, which Defendants call the “Advertising Saturation” patents, are the
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`’639 and ’586 Patents. The specifications of these patents describe targeting advertising for when
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`a media property, e.g., a website, becomes “saturated” (i.e., cannot accept any more advertising)
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`by using a third party to place additional targeted advertising on another media property. ’639
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`Patent at 2:51–58, ’586 Patent at 2:51–60.
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`C. Group 3: ’139 and ’615 Patents
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`In the third group, which Defendants call the “Targeted Advertising” patents, are the ’139
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`and ’615 Patents. These patents describe “an automatic system” to “facilitate selection of media
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`properties on which to display an advertisement, responsive to a profile collected on a first media
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`property[.]” ’139 Patent at 6:12–18; ’822 Patent at 6:12–35
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`D. Group 4: ’398 Patent
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`In the fourth group, which Defendants call the “Viewer Targeting” patent, is the ’398
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`Patent. The specification describes that the inventor sought to solve a specific problem, namely,
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`2
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 3 of 60
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`how to “avoid the use of PII”—or “personally identifiable information,” such as a user’s name,
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`birth date, or account numbers—when targeting users on one electronic device medium “based on
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`activity in another.” ’398 Patent at 7:13–22. The ’398 Patent describes “[u]sing user profile
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`information derived from online activity from one of the online access IP addresses, a television
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`advertisement is selected, such as by using behavioral targeting or demographic information, and
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`automatically directed to the set-top box indicated by the set-top IP address associated with that
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`online access IP address.” ’398 Patent at 7:66–8:11
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`II.
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`LEGAL STANDARD
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`A. General principles
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`The general rule is that claim terms are generally given their plain-and-ordinary meaning.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.
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`CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959
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`(2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in the
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`relevant community at the relevant time.”) (internal quotation omitted). The plain-and-ordinary
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`meaning of a term is the “meaning that the term would have to a person of ordinary skill in the art
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`in question at the time of the invention.” Phillips, 415 F.3d at 1313.
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`The “only two exceptions to [the] general rule” that claim terms are construed according
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`to their plain-and-ordinary meaning are when the patentee (1) acts as his/her own lexicographer or
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`(2) disavows the full scope of the claim term either in the specification or during prosecution.
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`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). The Federal
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`Circuit has counseled that “[t]he standards for finding lexicography and disavowal are exacting.”
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`Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). To act as his/her
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`3
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 4 of 60
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`own lexicographer, the patentee must “clearly set forth a definition of the disputed claim term”
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`and “‘clearly express an intent’ to [define] the term.” Thorner, 669 F.3d at 1365.
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`“Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.” Phillips, 415 F.3d at 1317. “[D]istinguishing the claimed
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`invention over the prior art, an applicant is indicating what a claim does not cover.” Spectrum
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`Int’l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1379 (Fed. Cir. 1998). The doctrine of prosecution
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`disclaimer precludes a patentee from recapturing a specific meaning that was previously
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`disclaimed during prosecution. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir.
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`2003). “[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing
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`actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26.
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`Accordingly, when “an applicant’s statements are amenable to multiple reasonable interpretations,
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`they cannot be deemed clear and unmistakable.” 3M Innovative Props. Co. v. Tredegar Corp., 725
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`F.3d 1315, 1326 (Fed. Cir. 2013).
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`A construction of “plain and ordinary meaning” may be inadequate when a term has more
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`than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve
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`the parties’ dispute. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361
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`(Fed. Cir. 2008). In that case, the Court must describe what the plain-and-ordinary meaning is.
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`Id.
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`“Although the specification may aid the court in interpreting the meaning of disputed claim
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`language . . ., particular embodiments and examples appearing in the specification will not
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`generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571
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`(Fed. Cir. 1988). “[I]t is improper to read limitations from a preferred embodiment described in
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`the specification—even if it is the only embodiment—into the claims absent a clear indication in
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 5 of 60
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`the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co.
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`v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`Although extrinsic evidence can be useful, it is “less significant than the intrinsic record in
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`determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
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`Technical dictionaries may be helpful, but they may also provide definitions that are too broad or
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`not indicative of how the term is used in the patent. Id. at 1318. Expert testimony may also be
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`helpful, but an expert’s conclusory or unsupported assertions as to the meaning of a term are not.
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`Id.
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`B. Indefiniteness
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`“[I]ndefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc.
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`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
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`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2.
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`A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about
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`the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc.,
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`572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2 and is therefore invalid as
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`indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective of one of
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`ordinary skill in the art as of the time the application was filed. Id. at 911.
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 6 of 60
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`Plaintiffs’ Proposed
`Construction
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`Amazon’s Proposed
`Construction
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`No construction necessary;
`plain and ordinary meaning
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`Identifier
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`Alternatively, an identifier or
`information indicating that its
`bearer has been marked
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`III. LEGAL ANALYSIS
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`A. Term #1: “tag”
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`Term
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`#1: “tag”
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`U.S. Patent No. 7,822,639,
`Claims 24, 40, 44; U.S.
`Patent No. 8,244,586, Claims
`1, 2, 7, 8, 11, 19, 20; U.S.
`Patent No. 8,671,139, Claims
`3, 46, 47, 50, 51, 53; U.S.
`Patent No. 8,959,146, Claims
`10, 11, 23, 24; U.S. Patent
`No. 9,830,615, Claim 9; U.S.
`Patent No. 10,321,198,
`Claims 22, 23; U.S. Patent
`No. 8,200,822, Claims 37, 43,
`44, 47, 49, 50, 51
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`Proposed by Amazon
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`Amazon contends that the Court should construe this term to aid the jury. Opening at 5.
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`Amazon contends that, “in the context of the alleged inventions, the term ‘tag’ simply refers to an
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`‘identifier.’” Id. at 5–6 (quoting ’639 Patent at 5:29–32, 5:23–32; ’586 Patent at 5:20–29; ’139
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`Patent at 3:22–26; ’615 Patent at 3:32–36; ’822 Patent at 3:22–26; ’198 Patent at 10:1–12, 10:22–
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`25). Amazon contends that their proposed construction is consistent with contemporary dictionary
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`definitions. Id. at 6.
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`In their response, Plaintiffs contend that “tag” does not need construction as it is a
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`commonly used English word to “refer to the result of the action of tagging,” e.g., like a name tag
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`is an item that someone tags themselves with. Response at 4, 5 (citing ’586 Patent at 6:41–45,
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`20:23–24). Plaintiffs contend that the ’586 Patent recites that a “tag simply identifies that its bearer
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`6
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 7 of 60
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`was so marked.” Id. at 5 (citing ’586 Patent at 5:20–29). Plaintiffs contend that extrinsic evidence
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`supports their proposed construction. Id. at 5–6 (citing dictionary definitions).
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`With respect to Amazon’s proposed construction, Plaintiffs first contend that Amazon’s
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`alleged need to construe the term—jury confusion—is hypothetical as Amazon has not provided
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`evidence that a jury might be confused. Id. at 6.
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`Plaintiffs contend that Amazon’s proposed construction is incorrect because the
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`specification recites that the “tag” does not need to contain any information that identifies the visit.
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`Id. (citing ’586 Patent at 5:20–29). Plaintiffs contend that the intrinsic record “further emphasizes”
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`the distinction between “tag” and “identifier.” Id. at 7 (quoting ’198 Patent at 22:64–67
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`(“[e]xamples of extra identifiers could include . . . a tag.”), Claim 11 (“the first set-top box
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`identifier includes a tag or a cookie on the first set-top box.”).
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`Plaintiffs contend that extrinsic evidence confirms that a “tag” need not “identify” the
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`visitor. Id. at 6–7 (citing dictionaries).
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`In their reply, Amazon contends that the parties are closer than expected, but that Plaintiffs
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`are asking the Court to kick the can down the road. Reply at 1. To avoid that, Amazon contends
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`that the Court should just construe the term at this stage in the case as “the Court will likely reach
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`the same conclusion it can reach right now—a tag is simply an identifier or information indicating
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`that its bearer has been marked.” Id.
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`In their sur-reply, Plaintiffs contend that Amazon do not allege lexicography to justify their
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`construction. Sur-Reply at 1. Plaintiffs contend that Amazon’s proposed construction could
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`require that the entity being tagged store the tag, but that would be inconsistent with the
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`specification which describes that a “tag does not have to be placed on the user’s device.” Id.
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`(quoting ’146 Patent at 4:24; ’586 Patent at 10:45–50). Plaintiffs contend that Amazon does not
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 8 of 60
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`provide evidence that this term would be difficult for a POSITA or a lay jury to understand. Id. at
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`1–2.
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`The Court’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the Court agrees
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`with Plaintiffs and finds that the proper construction is plain-and-ordinary meaning for the reasons
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`that follow. First, the “heavy presumption” is that terms should be construed according to their
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`plain-and-ordinary meaning. Azure Networks, 771 F.3d at 1347. Second, Defendant does not
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`expressly allege lexicography or disclaimer, which are the only two exceptions to the general rule
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`that a term should be construed as having its plain-and-ordinary meaning. Thorner, 669 F.3d at
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`1365. Third, Defendants do not provide evidence that this term would be difficult for a POSITA
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`or a lay jury to understand, nor does the Court believe that a POSITA or a lay jury would not
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`understand the meaning of this term.
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`Therefore, for the reasons described above, the Court finds that “tag” should be construed
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`according to its plain-and-ordinary meaning.
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`8
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 9 of 60
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`B. Term #2: “delivery to visitor computers visiting a second, different Internet site
`of advertisements sold, for a first price, for placement on visitor computers that
`have visited the first Internet site” / “direction of at least one off-site
`advertisement to visitor computers visiting a second Internet site . . . which off-
`site advertisement concerns at least one offering of a third-party advertiser that
`has paid to display said advertisement on visitor computers that have visited the
`first Internet site”
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`Term
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`#2: “delivery to visitor
`computers visiting a second,
`different Internet site of
`advertisements sold, for a
`first price, for placement on
`visitor computers that have
`visited the first Internet site” /
`“direction of at least one off-
`site advertisement to visitor
`computers visiting a second
`Internet site . . . which off-site
`advertisement concerns at
`least one offering of a third-
`party advertiser that has paid
`to display said advertisement
`on visitor computers that
`have visited the first Internet
`site”
`
`U.S. Patent No. 7,822,639,
`Claim 24; U.S. Patent No.
`8,244,586, Claims 1, 11
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`Proposed by Amazon
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`The Parties’ Positions:
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`Plaintiffs’ Proposed
`Construction
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`Amazon’s Proposed
`Construction
`
`No construction necessary;
`plain and ordinary meaning
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`
`’639 patent, claim 24; ’586
`patent, claim 11:
`delivery to visitor computers
`currently visiting a second,
`different Internet site of
`advertisements that were
`sold, for a first price, for
`placement on visitor
`computers that have visited
`the first Internet site
`
`’586 patent, claim 1:
`direction of at least one off-
`site advertisement to visitor
`computers currently visiting a
`second Internet site . . . which
`off-site advertisement
`concerns at least one offering
`of a third-party advertiser that
`has previously paid to display
`said advertisement on visitor
`computers that have visited
`the first Internet site
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`The parties have two disputes: (1) the “direction/delivery of an advertisement to visitor
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`computers visiting a second Internet site,” and (2) the timing of the “sale” or “payment” for that
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`advertisement. Response at 8.
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`9
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 10 of 60
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`Amazon contends that its proposed constructions “clarify that the transaction must occur
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`prior to the display of the advertisement on the second Internet site[.]” Opening at 8 (emphasis in
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`Defendants’ brief). Amazon contends that the sole embodiment in the specification describes that
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`when space for advertisement is sold out for a first Internet site, space for that advertisement may
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`be sold on a second Internet site. Id. (citing ’639 Patent at 13:10–23, 13:24–33).
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`Amazon also contends that the patentee “confirmed during prosecution that, in the claimed
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`invention, the advertisements are first sold for displaying to visitors on a first Internet site, and
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`then are displayed to the visitors when they arrive at a second Internet site.” Id. at 9. More
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`specifically, Amazon contends that “[t]he patentee replaced then-recited ‘selling placements of
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`advertisements on a multitude of computers that visit the first site’ to ‘refer[] ... to advertisements
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`sold for placement on computers visiting the first site.” Id. (some internal quotations marks
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`omitted). Amazon contends that Examiner accepted Applicant’s amendment and characterization,
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`and indicated that the basis for patentability was because prior art did not disclose that the (1)
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`user’s computer was “currently visiting a second site” and (2) “advertisements that were sold for
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`placement to visitors of the first site are directed to the second site[.]” Id. at 9–10 (quoting
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`Opening, Ex. 6 at 3–4, 4–5).
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`In its response, with respect to the first issue, Plaintiffs do not dispute that the advertisement
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`must be delivered at/on the second sites, but Plaintiffs contend that Amazon’s construction would
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`“seemingly allow the claim to be satisfied by delivering the ad to the visitor at the first site, because
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`at the time the advertisement is delivered, the visitor would be ‘currently visiting a second,
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`different Internet site.’” Response at 8. Based on this, Plaintiffs contend that Amazon’s proposed
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`construction incorrectly focuses on timing of the advertisement delivery, rather than the location
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`of its delivery. Id. Plaintiffs contend that Examiner’s Notice of Allowance “cannot give rise to
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`10
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 11 of 60
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`narrowing disclaimer.” Id. at 9 (quoting Salazar v. Procter & Gamble Co., 414 F.3d at 1345; 3M
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`Innovative Props., 350 F.3d at 1374).
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`With respect to the second issue, Plaintiffs contend that the intrinsic evidence indicates that
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`the payment occurs at some time and not necessarily prior to delivery. Id. More specifically,
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`Plaintiffs contend that the intrinsic evidence does not specify when the payment takes place. Id.
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`(quoting ’639 Patent at 6:58–7:26, 7:44; citing ’639 Patent 7:53–54, 7:60–61, 8:2–4, 8:55–59,
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`11:18–21, 11:26–67, 12:18–19, 12:29–30, 12:36–37, 12:45–47).
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`Plaintiffs contend that Defendants’ proposed construction incorrectly requires that the
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`advertisement must have been previously sold for display on the first Internet site. Id. But
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`Plaintiffs contend that the passage Defendants cite (’639 Patent at 12:9–14) does not describe
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`paying for an advertisement on a first Internet site, but rather only describes inserting an
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`advertisement into an “offsite media,” i.e., the second Internet site. Id. at 10. Plaintiffs contend
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`that nothing in this embodiment or any other passages Defendants cite to, “implies, much less
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`requires, that the same advertisement is presented at both the first site and the second site.” Id.
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`Plaintiffs contend that “Amazon similarly provides no support in the file history for its
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`proposed construction (and certainly nothing that would give rise to the “exacting” standard for
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`disclaimer).” Id. at 10–11. More specifically, Plaintiffs contend that nothing in Applicant’s
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`prosecution statements “clearly distinguishes the prior art on the basis of the timing of the sale or
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`payment[.]” Id. at 11 (quoting Response, Ex. 3 at 12 (“any ads in Oliver shown on Site 2 are not
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`from advertisers who ‘paid to display said advertisements on visitor computers that have visited
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`the first Internet site.’”), 12 (“Neither Oliver nor Adshare Concepts disclose any site getting
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`revenue from advertisements that were sold for display on computers that visited a different site.”))
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`(emphasis in original).
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`11
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 12 of 60
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`In their reply, Amazon contends that their proposed construction clarifies that
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`advertisements are delivered to visitor computers visiting the second Internet site “after the
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`transaction related to advertisements on ‘visitor computers that have visited the first Internet site.’”
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`Reply at 2 (emphasis in original).
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`With respect to Plaintiffs’ argument that Applicant’s prosecution statements were not
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`directed towards the timing of the sale or payment, Amazon contends that Plaintiffs are incorrect.
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`Id. More specifically, Amazon contends that Applicant stated that the advertisement on the second
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`Internet site “arises from the advertiser having ‘paid to display said advertisement on visitor
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`computers that have visited the first Internet site.’” Id. at 2–3 (quoting Opening, Ex. 3 at 12
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`(emphasis added by Amazon)). Amazon contends that in order to “arise from,” the advertisement
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`on the second Internet site must occur after the transaction of displaying advertisements on visitor
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`computers that have visited the first Internet site. Id. at 3. Amazon further contends that
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`Examiner’s statements indicate that the Examiner understood Applicant’s statements in that way
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`as well. Id.
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`With respect to whether the claims require that an advertisement be previously sold for
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`display on the first Internet site, Amazon contends that the claimed invention is premised on the
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`situation whether the first Internet site becomes “saturated” with advertisements, thus forcing
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`advertisements that were sold for display on the first Internet site to instead be displayed on the
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`second site. Id. at 4.
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`In its sur-reply, Plaintiffs contend that Amazon’s proposed construction (1) incorrectly
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`requires that the advertisement be sold for placement on the first Internet site and (2) improperly
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`emphasizes the timing of the advertisement’s delivery rather than the location. Sur-Reply at 2.
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`With respect to the former, Plaintiffs contend that “Amazon does not dispute that none of the
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 13 of 60
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`contracts referenced in the specification involve payment for display of an advertisement on the
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`first site.” Id. at 4. Plaintiffs contend that Amazon improperly assumes that that the advertisement
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`was sold to be displayed on the first Internet site, but was unable to do displayed due to “saturation”
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`on the first Internet site. Id. at 4.
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`With respect to the latter, Plaintiffs contend that Amazon’s proposed construction deviates
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`from the plain meaning and that Amazon does not allege lexicography and that the prosecution
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`statements Amazon points to do not meet the “exacting” standard required for disavowal. Id. at 3.
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`More specifically, Plaintiffs contend that Amazon does not consider that “arise from” includes
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`when “the payment is agreed by the parties, but is only later finalized and delivered after the
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`advertisement is displayed.” Id. at 2–3. Plaintiffs contend that the prosecution history’s discussion
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`of “advertisements that were sold for placement” is not a disclaimer because the claims do not use
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`the words “that were.” Id. at 3.
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`
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`The Court’s Analysis:
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`After reviewing the parties’ arguments and considering the applicable law, the Court agrees
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`with Plaintiffs and finds that the proper construction is plain-and-ordinary meaning.
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`With respect to the first dispute (i.e., the “direction/delivery of an advertisement to visitor
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`computers visiting a second Internet site”), the Court agrees with Plaintiffs for the reasons that
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`follow. First, the Court agrees with Plaintiffs that Amazon’s proposed construction appears to
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`incorrectly focus on the timing of the delivery of the advertisement, rather than where the
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`advertisement is supposed to be delivered to. More specifically, the claim language recites
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`“delivery to visitor computers visiting a second, different Internet site,” but Amazon’s proposed
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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 14 of 60
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`construction—“ delivery to visitor computers currently visiting a second, different Internet site”—
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`improperly adds in the word “currently” into the claim.
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`Second, the Court agrees with Plaintiff that Applicant did not make a narrowing
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`amendment during prosecution. More specifically, an Examiner’s Notice of Allowance “cannot
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`give rise to narrowing disclaimer.” Salazar, 414 F.3d 1342, 1345 (Fed. Cir. 2005) (“[A]n
`
`applicant’s silence regarding statements made by the examiner during prosecution, without more,
`
`cannot amount to a ‘clear and unmistakable disavowal’ of claim scope. After all, the applicant has
`
`disavowed nothing.” (internal citations omitted)).
`
`Third, with respect to Amazon’s argument that the claimed invention is premised on the
`
`situation whether the first Internet site becomes “saturated” with advertisements, the Court
`
`disagrees. The claims do not require that the first Internet site is saturated with advertisements.
`
`Furthermore, there is no logical reason why an advertiser must pay for the same advertisements to
`
`be shown on the first Internet site, when it is ultimately shown on the second Internet site.
`
`With respect to the second dispute (i.e., if the advertisement must have been previously
`
`sold), the Court concludes that Applicant’s statement do not meet the “exacting” standard required
`
`for a prosecution disclaimer. Hill-Rom Servs., 755 F.3d at 1371. In particular, the statement relies
`
`on “the off-site advertisement arises from the advertiser having ‘paid to display said advertisement
`
`on visitor computers that have visited the first Internet site.’” Opening, Ex. 3 at 12. While “arises
`
`from” could mean that the advertisement on the second Internet site must occur after the
`
`transaction of displaying advertisements that have visited the first Internet site as Amazon
`
`contends, it could also mean “starting from.” As such, because there are two reasonable
`
`interpretations to Applicant’s statement, Applicant’s statement is not “clear and unambiguous.”
`
`3M Innovative Props., 725 F.3d at 1326.
`
`
`
`14
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`

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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 15 of 60
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`Furthermore, the plain language of this statement does not describe that payment must
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`occur prior to the placement of the advertisement at the second Internet site. By contrast, payment
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`could be made, for example, at the end of the month.
`
`Fourth, the Court notes that co-defendant Microsoft did not assert that this term needed to
`
`be construed, which confirms that no construction is necessary.
`
`The “heavy presumption” is that terms should be construed according to their plain-and-
`
`ordinary meaning. Azure Networks, 771 F.3d at 1347. Amazon does not allege lexicography and
`
`as described above, there is no disclaimer. As such, this claim term does not fall into either of the
`
`two exceptions to the general rule that a term should be construed as having its plain-and-ordinary
`
`meaning. Thorner, 669 F.3d at 1365.
`
`Therefore, for the reasons described above, the Court finds that this term should be
`
`construed according to its plain-and-ordinary meaning.
`
`
`
`
`
`
`
`15
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`

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`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 16 of 60
`
`C. Term #3: “second Internet site” / “second, different Internet site”
`
`
`
`Term
`
`#3: “second Internet site” /
`“second, different Internet
`site”
`
`U.S. Patent No. 7,822,639,
`Claims 24, 40; U.S. Patent
`No. 8,244,586, Claims 1, 5, 6,
`7, 8, 9, 11, 14, 17, 19, 20
`
`Proposed by Defendants
`
`
`
`The Parties’ Positions:
`
`Plaintiffs’ Proposed
`Construction
`
`Defendants’ Proposed
`Construction
`
`“Internet site operated for the
`benefit of a different (and not
`commonly owned) entity than
`an entity for which the first
`Internet site is operated for
`the benefit of.”
`
`
`Internet site owned by and
`operated for the benefit of
`proprietor(s) that are different
`from (not commonly owned
`by) proprietors of the first
`Internet site
`
`Alternatively, Internet site
`operated for the benefit of
`proprietor(s) that are different
`from (not commonly owned
`by) proprietors of the first
`Internet site
`
`
`Defendants contend that Applicant expressly distinguished “first Internet site” and “second
`
`Internet site” during prosecution. Opening at 10. Defendants contend that even though the
`
`prosecution statements were made during the prosecution for the direct parent of the ’586 Patent,
`
`which shares the same specification, the statements made during prosecution of a parent patent
`
`also apply to the child patent. Id. (citing Iridescent Networks v. AT&T Mobility, 933 F.3d 1345,
`
`1350 (Fed. Cir. 2019)).
`
`In their response, Plaintiffs concedes that Applicant distinguished prior art on the basis that
`
`a “‘second Internet site’ is an Internet site operated for the benefit of a different (and not commonly
`
`owned) entity than an entity for which the first Internet site is operated for the benefit of.”
`
`Response at 12. Plaintiffs contend that “the applicant made clear that by ‘proprietor,’ the applicant
`
`referred to the entity benefitting from operation of a site, not the owner or operator of the site.” Id.
`
`Plaintiffs contend that Defendants’ proposed construction deviates from Applicant’s prosecution
`
`
`
`16
`
`

`

`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 17 of 60
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`statements first by “refer[ring] to the ownership of a site, not who benefits from operation of the
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`site.” Id.
`
`Plaintiffs contend that Defendants’ proposed construction “is also confusing because it
`
`introduces the concept that the second site must be ‘not commonly owned by[] proprietors of the
`
`first Internet site,’ a concept that is not implied by the applicant’s prosecution statements.” Id. at
`
`13.
`
`In their reply, Defendants contend that Plaintiffs’ proposed construction incorrectly
`
`substitutes “entity” for “proprietor,” as it is inconsistent with the intrinsic record. Reply at 5.
`
`Defendants also concede that they are willing to drop “owned by and” as shown in their alternate
`
`proposed construction. Id.
`
`In their sur-reply, Plaintiffs contend that the prosecution history describes that the intended
`
`beneficiary of the second Internet site are “entities” and not the owner or operator of the site. Sur-
`
`Reply at 5 (quoting Opening, Ex. 8 at 14 (“The usage described herein is consistent with the patent
`
`specification, which describes sites throughout in terms of the entities benefitting from them…”)).
`
`
`
`The Court’s Analysis:
`
`After reviewing the parties’ arguments and considering the applicable law, the Court agrees
`
`with Plaintiffs and finds that the proper construction is “Internet site operated for the benefit of a
`
`different (and not commonly owned) entity than an entity for which the first Internet site is
`
`operated for the benefit of.” Plaintiffs’ proposed construction and Defendants’ alternate proposed
`
`construction differs only in one respect, namely whether the proper construction should use the
`
`word “entity” (Plaintiffs’ position) or “proprietor” (Defendants’ position). Applicant’s
`
`prosecution statement uses the word “proprietor” in the prosecution statement, but it also expressly
`
`
`
`17
`
`

`

`Case 6:21-cv-00898-ADA Document 113 Filed 06/19/23 Page 18 of 60
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`describes that “proprietors” is subsumed within “entities.” Opening, Ex. 8, at 14 (“The references
`
`in the claims to ‘first site’ and ‘second site,’ therefore, refer to sites operated for the benefit of
`
`different (and not commonly owned) proprietors. The usage described here is consistent with the
`
`pa