Case 1:18-cv-00001-RGA-SRF Document 143 Filed 04/27/23 Page 1 of 11 PageID #: 24592
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IPA TECHNOLOGIES INC.,
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`Plaintiff,
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`v.
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`MICROSOFT CORPORATION,
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`Defendant.
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`Civil Action No. 18-00001-RGA
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`MEMORANDUM ORDER
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`This Memorandum Order addresses the issue of claim construction of two terms in U.S.
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`Patent No. 6,851,115 (“the ’115 patent”), U.S. Patent No. 7,069,560 (“the ’560 patent”), and U.S.
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`Patent No. 7,036,128 (“the ’128 patent”) (“the Asserted Patents”). The parties submitted a Joint
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`Claim Construction Brief (D.I. 131), and I heard oral argument on April 18, 2023.1
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`IPA brought this case against Microsoft in 2018. (D.I. 1). IPA also brought a companion case
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`against Amazon. IPA Techs. Inc. v. Amazon.com, Inc., No. 1:16-cv-1266 (“the Amazon case”).
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`The cases have proceeded on different timetables. I long ago issued a claim construction order in
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`the Amazon case. (Amazon case, D.I. 128).
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`I. LEGAL STANDARD
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`“It is a bedrock principle of patent law that the claims of a patent define the invention to which
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`the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
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`Cir. 2005) (en banc) (internal quotation marks omitted). “‘[T]here is no magic formula or
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`catechism for conducting claim construction.’ Instead, the court is free to attach the appropriate
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`1 Citations to the transcript, which is not yet docketed, are in the format “Tr. __.”
`1
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`weight to appropriate sources ‘in light of the statutes and policies that inform patent law.’”
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`SoftView LLC v. Apple Inc., 2013 WL 4758195, at *1 (D. Del. Sept. 4, 2013) (alteration in original)
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`(quoting Phillips, 415 F.3d at 1324). When construing patent claims, a court considers the literal
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`language of the claim, the patent specification, and the prosecution history. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 977–80 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). Of
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`these sources, “the specification is always highly relevant to the claim construction analysis.
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`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips,
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`415 F.3d at 1315 (internal quotation marks omitted).
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`“[T]he words of a claim are generally given their ordinary and customary meaning. . . . [Which
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`is] the meaning that the term would have to a person of ordinary skill in the art in question at the
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`time of the invention, i.e., as of the effective filing date of the patent application.” Id. at 1312–13
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`(citations and internal quotation marks omitted). “[T]he ordinary meaning of a claim term is its
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`meaning to [an] ordinary artisan after reading the entire patent.” Id. at 1321 (internal quotation
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`marks omitted). “In some cases, the ordinary meaning of claim language as understood by a person
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`of skill in the art may be readily apparent even to lay judges, and claim construction in such cases
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`involves little more than the application of the widely accepted meaning of commonly understood
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`words.” Id. at 1314.
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`When a court relies solely upon the intrinsic evidence—the patent claims, the specification,
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`and the prosecution history—the court’s construction is a determination of law. See Teva Pharms.
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`USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). The court may also make factual findings
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`based upon consideration of extrinsic evidence, which “consists of all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.” Phillips, 415 F.3d at 1317–19 (quoting Markman, 52 F.3d at 980). Extrinsic evidence
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`2
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`may assist the court in understanding the underlying technology, the meaning of terms to one
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`skilled in the art, and how the invention works. Id. Extrinsic evidence, however, is less reliable
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`and less useful in claim construction than the patent and its prosecution history. Id.
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`II.
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`PATENTS AT ISSUE
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`The parties agree that, for claim construction purposes, claim 29 of the ’115 patent is
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`representative. (D.I. 131 at 1). That claim reads as follows:
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`29. A computer program stored on a computer readable medium, the computer program executable
`to facilitate cooperative task completion within a distributed computing environment, the
`distributed computing environment including a plurality of autonomous electronic agents, the
`distributed computing environment supporting an Interagent Communication Language, the
`computer program comprising computer executable instructions for:
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`providing an agent registry that declares capabilities of service-providing electronic agents
`currently active within the distributed computing environment;
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`interpreting a service request in order to determine a base goal that may be a compound,
`arbitrarily complex base goal, the service request adhering to an Interagent Communication
`Language (ICL), where in the ICL includes:
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`a layer of conversational protocol defined by event types and parameter lists
`associated with one or more of the events, wherein the parameter lists further refine
`the one or more events; and
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` a
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` content layer comprising one or more of goals, triggers and data elements
`associated with the events;
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`the act of interpreting including the sub-acts of:
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`determining any task completion advice provided by the base goal, and
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`determining any task completion constraints provided by the base goal;
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`constructing a base goal satisfaction plan including the sub-acts of:
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`determining whether the request service is available,
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`determining sub-goals required in completing the base goal by using
`reasoning that includes one or more of domain-independent coordination
`strategies, domain-specific reasoning, and application-specific reasoning
`comprising rules and learning algorithms,
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`selecting service-providing electronic agents from the agent registry
`suitable for performing the determined sub-goals, and
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`ordering a delegation of sub-goal requests complete the requested service;
`and
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`implementing the base goal satisfaction plan.
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`(’115 patent, claim 29) (disputed terms italicized).
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`III. CONSTRUCTION OF AGREED-UPON TERMS
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`I adopt the following agreed-upon constructions:
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`CLAIM TERM
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`CLAIMS
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`CONSTRUCTION
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`“layer”
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`“layer of conversational
`protocol”
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`“task completion advice”
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`’115 patent: claim 29
`’560 patent: claims 50, 53
`’128 patent: claim 22
`ʼ115 patent: claim 29
`ʼ560 patent: claims 50, 53
`ʼ128 patent: claim 22
`ʼ115 patent: claim 29
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`“task completion constraints”
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`ʼ115 patent: claim 29
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`“capability”
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`’115 patent: claims 29, 30
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`“symbolic name”
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`’115 patent: claim 33
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`“task declaration”
`“request for a service” /
`“service request”
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`ʼ115 patent: claim 33
`ʼ115 patent: claim 29, 34-36
`ʼ560 patent: claims 50, 51, 53
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`“base goal”
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`“cooperative task completion
`/ cooperative completion of
`the base goal”
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`ʼ115 patent: claims 29, 38
`ʼ560 patent: claim 50, 53
`ʼ115 patent: claim 29
`ʼ560 patent: claims 50, 53
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`4
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`“a set of rules that are a part
`of the ICL”
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`“a layer which governs the
`structure of interagent
`communications”
`“one or more parameters
`containing advice on how to
`execute a task”
`“one or more parameters
`containing constraints on how
`to execute a task”
`“a function an agent can
`perform”
`“a name that is used to
`identify an agent and need not
`be unique.”
`“a statement of an agent task”
`“The ‘request for a
`service’/’service request’
`must be recited in the claimed
`ICL and must meet every
`requirement of the claimed
`ICL”
`“starting goal”
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`plain and ordinary meaning
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`“an interface,
`communication, and task
`coordination language”
`“a layer, which specifies the
`content of interagent
`messages”
`“a message between agents or
`between an agent and a
`facilitator”
`“separating or resolving into
`constituent parts based on
`factors other than syntax”
`plain and ordinary meaning
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`“a single-goal expression
`comprising multiple sub-
`goals”
`“a single goal expression
`expressed in a language or
`syntax that allows multiple
`sub-goals and potentially
`includes more than one type
`of logical connector (e.g.,
`AND, OR, NOT), and/or
`more than one level of logical
`nesting (e.g., use of
`parentheses), or the
`substantive equivalent”
`“a settable mechanism for
`taking or requesting action
`when a condition or set of
`conditions is met”
`“type of event”
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`“goal(s) formulated in ICL”
`“lists of parameters that
`refine associated events”
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`“inter-agent language” /
`“inter-agent communication
`language” / “ICL”
`“a content layer”
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`ʼ115 patent: claim 29, 35, 36
`ʼ560 patent: claims 50, 53
`ʼ128 patent: claim 22
`ʼ115 patent: claim 29
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`“event”
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`“non-syntactic
`decomposition”
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`“agent registry” / “registry of
`capabilities of the service-
`providing electronic agents”
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`“compound goal” / “complex
`goal”
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`“arbitrarily complex goal
`expression” / “arbitrarily
`complex base goal” /
`“arbitrarily complex goal”
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`ʼ115 patent: claims 29, 39-41
`ʼ560 patent: claims 50, 53
`ʼ128 patent: claim 22
`ʼ560 patent: claims 50, 53
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`ʼ115 patent: claims 29, 30,
`32, 33
`ʼ560 patent: claims 50, 51,
`53-55
`ʼ115 patent: claim 29
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`ʼ115 patent: claims 29
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`“trigger”
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`“event type(s)”
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`“ICL goal(s)”
`“parameter lists associated
`with one or more events” /
`“wherein the parameter lists
`further refine the one or more
`events”
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`ʼ115 patent: claims 29, 33,
`38-44
`ʼ128 patent: claim 2
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`ʼ115 patent: claim 29
`ʼ560 patent: claims 50, 53
`ʼ128 patent: claim 22
`ʼ128 patent: claim 22
`ʼ115 patent: claim 29
`ʼ128 patent: claim 22
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`A. “sub-goal” (’115 patent: claims 29, 45; ’560 patent: claims 50, 53; ’128 patent: claim
`22)
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`a. Plaintiff’s proposed construction: No construction needed; plain and ordinary meaning.
`However, to the extent the Court determines that a specific construction is warranted:
`“a goal that is performed to accomplish a base goal”
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`b. Defendant’s proposed construction: “one of multiple requests necessary to achieve a
`goal”
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`c. The Court’s construction: “subgoals, when not modified by ‘one or more,’ means “two
`or more subgoals”
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`The parties dispute the relationship between a “sub-goal” and a “request for service.”
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`Defendant argues that these terms are synonymous because, “[i]n the context of the Asserted
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`Patents, a ‘goal’ is a request for service.” (D.I. 131 at 11-12). I disagree. First, as Plaintiff notes
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`(id. at 18), Defendant asks me to construe a separate term: “goal.” Neither party has submitted
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`“goal” for construction. I decline to construe it here. Second, I agree with Plaintiff that the intrinsic
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`record reflects that “[g]oals and service requests are related, but distinct, concepts.” (Id. at 18).
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`The claim language supports this view. For example, claim 29 of the ’115 patent recites
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`“interpreting a service request in order to determine a base goal,” ’115 patent at 31:59-60, and
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`claim 53 of the ’560 patent recites “determining a base goal based on the service request.” ’560
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`patent at 36:18. As Plaintiff notes, “[i]f a goal and a service request are viewed as the same entity,
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`there would be no need to interpret one to yield the other.” (D.I. 131 at 18).
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`Defendant’s response is that, because these claims describe a particular type of goal (“base
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`goals”) rather than just “goals,” a service request nevertheless constitutes a goal. (Id. at 23). I am
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`not convinced. The Federal Circuit has stated that, in the absence of evidence to the contrary,
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`different claim terms are presumed to have different meanings. CAE Screenplates Inc. v. Heinrich
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`Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). I do not think Defendant offers
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`persuasive reasons to depart from this principle here. Defendant argues that the specification
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`equates goals and requests. (D.I. 131 at 11-12). For instance, Defendant points to a disclosed
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`example in which the patents explain, “The goal, now stated in ICL, is then transmitted to the
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`client agent’s parent facilitator in a step 906. The parent facilitator responds to this service request
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`….” ’115 patent at 18:6-8 (emphasis added). I do not think that this language contradicts Plaintiff’s
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`interpretation. The service request, as I understand it, expresses the goal. The goal is therefore a
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`component of the service request, rather than the service request itself. Defendant’s arguments
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`with respect to the prosecution history and recent IPR proceedings (D.I. 131 at 12) do not convince
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`me otherwise.
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`The parties also dispute the relationship between a “goal” and a “sub-goal.” Plaintiff and
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`Defendant agree that sub-goals are component goals necessary to achieve a goal. (D.I. 131 at 9
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`(“subgoals are component goals performed to achieve a base goal”); id. at 11 (“subgoal is a
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`component or constituent request that … is necessary to satisfy the initial goal”)). The
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`disagreement here is whether a sub-goal must be one of multiple sub-goals necessary to achieve a
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`goal, or whether a sub-goal can be the only sub-goal necessary to achieve a goal.
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`Defendant argues the former. I agree. As Defendant notes (D.I. 131 at 11), the asserted
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`claims refer to both “goals” and “sub-goals.” E.g., ’115 patent, claim 29. Again, in the absence of
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`evidence to the contrary, I must presume that different claim terms mean different things. CAE
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`Screenplates Inc., 224 F.3d at 1317. Thus, a “sub-goal” presumptively differs from a “goal” in
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`some respect. The Merriam-Webster Online Dictionary includes several definitions of the prefix
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`“sub,” the second of which is most apt here: “subordinate portion of” or “subdivision of.”
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`MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/sub (last visited Apr. 19,
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`2023). In short, “sub” denotes inferiority with respect to the root word that “sub” modifies. “Sub-
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`goal,” therefore, suggests something less than a “goal.” The dictionary definition counsels against
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`Plaintiff’s proposed interpretation of sub-goal, which would permit a “sub-goal” to constitute the
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`“goal” itself. (See D.I. 131 at 17-18).
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`The intrinsic record largely supports Defendant’s interpretation. Multiple claims refer to
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`“subgoals,” plural. For example, claim 29 of the ’115 patent recites “constructing a base goal
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`satisfaction plan” that includes “determining sub-goals required in completing the base goal.” ’115
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`patent at 32:9-13 (emphasis added). The Federal Circuit has stated that a plural term is presumed
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`to refer to two or more items. Apple Inc. v. MPH Techs. Oy, 28 F.4th 254, 261-62 (Fed. Cir. 2022).
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`“That presumption can be overcome when the broader context shows a different meaning applies.”
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`Id. at 262. Plaintiff has not overcome that presumption with respect to every use of “sub-goal.” As
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`I mentioned at oral argument (Tr. at 7-8), the Patentees clearly indicate where a plural term refers
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`to one or more items: They employ the phrase “one or more.” For example, in claim 29 of the ’115
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`patent, the phrase “one or more” appears four times. ’115 patent at 31:65, 31:67, 32:1, 32:13. Yet
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`that phrase does not accompany “sub-goals.” ’115 patent at 32:12. I take that to mean that “sub-
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`goals,” standing alone, means multiple sub-goals.2
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`By contrast, other claims recite “one or more” sub-goals. Claim 1 of the ’115 patent does
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`so. ’115 patent at 29:30. So does claim 22 of the ’128 patent. ’128 patent at 37:23. I think the “one
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`or more” language modifying “sub-goals” is clear enough to permit a single sub-goal when “sub-
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`2 Plaintiff argues that such a requirement contradicts the specification, as well as an agreed-upon
`construction that I have adopted here. (D.I. 131 at 22-23). The parties agreed to construe
`“arbitrarily complex goal expression” / “arbitrarily complex base goal” / “arbitrarily complex
`goal” to mean “a single goal expression expressed in a language or syntax that allows multiple
`sub-goals….” (D.I. 138, App. B at 2) (emphasis added). I agree with Defendant (D.I. 131 at 28)
`that this language does not require single sub-goals, and, in any event, does not override the plain
`language of the claims discussed above. Neither does the acknowledgment in the specification that
`“not every goal is itself necessarily complex.” ’115 patent at 14:58-59.
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`goals” is so modified. Thus, while the phrase “one or more sub-goals” permits a single sub-goal,
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`“sub-goals” without the modifying clause requires at least two sub-goals.
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`B. “goal satisfaction plan” (’115 patent: claim 29; ’560 patent: claim 50)
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`
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`a. Plaintiff’s proposed construction: No construction needed; plain and ordinary meaning.
`However, to the extent the Court determines that a specific construction is warranted:
`“plan for satisfying a goal that includes delegating sub-goals to specific agents and is
`consistent with advice parameters.”
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`b. Defendant’s proposed construction: “plan for satisfying a goal that includes delegating
`sub-goals to specific agents, involves asking service providing agents to perform
`actions other than the retrieval of information, and is consistent with advice
`parameters”
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`c. The Court’s construction: “plan for satisfying a goal that includes delegating sub-goals
`to specific agents, is not limited to asking service providing agents to retrieve
`information, and is consistent with advice parameters.”
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`Plaintiff’s proposed construction of “goal satisfaction plan” is the same as what I decided
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`in the Amazon case. (Amazon case, D.I. 128 at 1). Defendant argues that this construction “should
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`be modified to give effect to a disclaimer that IPA placed on the public record during prosecution,
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`and which no party in the Amazon case brought to the Court’s attention.” (D.I. 131 at 37). I agree
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`with Defendant that some modification is in order.
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`During prosecution of the ’115 patent, the Examiner rejected the pending claims as
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`unpatentable over a combination of the Martin publication and the Kiss patent (D.I. 132-4, Ex. D
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`at 132-148), basing its decision in part on the fact that the Kiss patent disclosed the step of
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`“constructing a goal satisfaction plan.” (Id. at 133). In distinguishing the Kiss patent, Plaintiff
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`argued that “K[iss] is merely a method of information retrieval from information repositories or
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`data sources,” whereas the goal satisfaction plan in the ’115 patent “involves asking service
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`providing agents to perform actions … as opposed to merely asking the agents to retrieve
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`information from an information repository.” (Id. at 112) (emphasis in original).
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`Defendant argues that Plaintiff’s statements amount to “an unequivocal disavowal of the
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`notion that a ‘goal satisfaction plan’ can cover the retrieval of information.” (D.I. 131 at 38).
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`Defendant clarified at oral argument that it does not mean to say that a “goal satisfaction plan”
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`cannot involve information retrieval.3 (Tr. at 36). Defendant maintains, however, that Plaintiff
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`disclaimed a “goal satisfaction plan” that does not include actions. (Id.). I do not think that Plaintiff
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`disclaimed so much. “[F]or prosecution disclaimer to attach … the alleged disavowing actions or
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`statements made during prosecution” must be “both clear and unmistakeable.” Omega Eng’g, Inc.,
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`334 F.3d 1314, 1325-26 (Fed. Cir. 2003). Although Plaintiff emphasized that the ’115 patent’s
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`“goal satisfaction plan” involves actions, Plaintiff’s purpose in making this point was to illustrate
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`that the “goal satisfaction plan” involves more than just information retrieval. (See D.I. 132-4, Ex.
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`D at 111-112). This is far from a “clear and unmistakeable” disclaimer of a “goal satisfaction plan”
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`that does not include actions.
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`I think that Plaintiff did, however, disavow coverage of a “goal satisfaction plan” that is
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`limited to the retrieval of information. Plaintiff argues to the contrary. Plaintiff says, “The inclusion
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`of the term ‘merely’ in the applicants’ descriptions of the prior art indicates that the patented
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`invention not only can retrieve information—it also can perform actions.” (D.I. 131 at 39)
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`(emphasis in original). I am not convinced. Although Plaintiff did not disavow a “goal satisfaction
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`plan” capable of both retrieving information and performing actions, Plaintiff expressly argued to
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`the Examiner that the service providing agents of the ’115 patent “are not merely sources of
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`information.” (D.I. 132-4, Ex. D at 112). I do not think that Plaintiff can now argue for a
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`construction of “goal satisfaction plan” that is sufficiently vague that it would encompass exactly
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`that. Thus, I conclude that the term “goal satisfaction plan” means “plan for satisfying a goal that
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`3 Defendant’s proposed construction suggests otherwise. I therefore decline to adopt it.
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`includes delegating sub-goals to specific agents, is not limited to asking service providing agents
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`to retrieve information, and is consistent with advice parameters.”
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`IT IS SO ORDERED.
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`Entered this 27th day of April, 2023.
`
`/s/ Richard G. Andrews___
`United States District Judge
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`11
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