Some Good (Patent) News For Dow Jones

2009-1019 Netcurrents v. Dow Jones
CD/CA 07-4027
Judge John Walter

Plaintiff Netcurrents appeals from the order of Judge John Walters granting Dow Jones summary judgment of non-infringement on the asserted claims of 6,260,041 and 6,332,141.  These patents are directed to a fast internet real-time search technology allowing users to index sites based on users selected parameters, and Dow Jones' Factiva.com range of products were accused....now if they can only do something about the Industrial Average.

The key issue was construction of the claim term "real-time," such as is used in claim 1 of the '041:

A fast Internet real-time search technology (FIRST) system for use in monitoring information on Web pages, message boards, chat rooms, discussion groups, e-mail messages, and other communications over the internet . . .

Dow Jones argued that “real-time” should be construed to mean “at the actual time that the changes occur” because that is the “ordinary and customary meaning” of “real-time” to a person of ordinary skill in the art in question at the time of the invention, relying on Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (words of a claim “are generally given their ordinary and customary meaning” when construing patent claims).   Netcurrents argued that “real-time” means “periodic” or something other than "infrequently," and its definition is clear from the context in which “real-time” is used in the patents, relying on Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“the context of the surrounding words of the claim must also be considered in determining the ordinary and customary meaning of those terms.”).

The court agreed with Dow Jones, finding that the common meaning of "real-time" coupled with its use in the specification (and confirmed by one of the inventors) meant at the time the change occurs.

The court also rejected Netcurrents plea as to what it meant to claim (rather than what it did claim), also finding that Netcurrent's proposed construction would render the claims indefinite:

While Plaintiff argues that interpreting “real-time” to mean “at the actual time that the changes occur” would render the patent claims inoperable, the Federal Circuit “repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity.” Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (affirming trial court who interpreted language in patent as requiring cookie dough itself to be heated “to” a certain temperature, and not merely air in oven where dough was placed even though this made the patent inoperable). In fact, “[e]ven a nonsensical result does not require the court to redraft the claims.” Id. Moreover, to interpret “real-time” as Plaintiff has suggested would result in the patent claims being indefinite – “periodic” could mean every minute, every hour, every day, every week, etc. – and patent claims must be “sufficiently precise to permit a potential competitor to determine whether or not he is infringing.” Amgen, Inc. v. Hoeschst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003); see, also, Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular [product or process] infringes or not.”). Plaintiff’s interpretation simply would not allow Defendants, or any competitor, to determine whether they were infringing Plaintiff’s patents or not.

The court found another, independent basis for non-infringement, construing the claims to search and index based on user-selected terms and internet locations.  In the Fastiva product, users do not get to select these criteria, rather the operators do.

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