Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 1 of 49 PageID #: 7960
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`::
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`::
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`: C. A. No. 18-937-CFC-MPT
`:
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`::
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`:
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`RETAILMENOT, INC.,
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`v.
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`HONEY SCIENCE CORP.,
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`Plaintiff,
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`Defendant.
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`REPORT AND RECOMMENDATION
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`On June 25, 2018, RetailMeNot, Inc. (“RetailMeNot”), filed this action alleging
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`infringement of U.S. Patent Nos. 9,626,688 (“the ’373 patent”); 9,639,853 (“the ’853
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`patent”); 9,953,335 (“the ’335 patent”); and 9,965,769 (“the ’769 patent”) (collectiv ely,
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`“the RetailMeNot Patents”) by Honey Science Corp. (“Honey”).1 On December 20,
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`2018, Honey filed its Answer to Complaint and First Amended Counterclaims alleging,
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`inter alia, infringement of U.S. Patent No. 10,140,625 (“the ’625 patent” or “the Honey
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`Patent”) (collectively, with the RetailMeNot Patents, “the patents-in-suit”).2 On May 17,
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`2019, the parties filed a Joint Claim Construction Chart (“JCCC”)3 and, on August 14,
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`2019, filed Joint Claim Construction Briefs addressing the RetailMeNot Patents and the
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`Honey Patent (“Joint RetailMeNot Brief” and “Joint Honey Brief,” respectively).4 The
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`court held a Markman hearing on August 27, 2019.5 The court recommends that the
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`District Court adopt the constructions as set forth below.
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`1 D.I. 1.
`2 D.I. 28.
`3 D.I. 67.
`4 D.I. 109, D.I. 107.
`5 D.I. 112 (Tr. Markman hearing (Aug. 27, 2019)).
`
`Honey Science Corp.
`Exhibit 2015
`RetailMeNot v. Honey
`IPR2019-01565
`Ex. 2015-0001
`
`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 2 of 49 PageID #: 7961
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`I.
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`THE PATENTS-IN-SUIT
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`RetailMeNot’s ’853, ’335, and ’769 patents, titled “Devices, Methods, and
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`Computer-Readable Media for Redemption Header for Merchant Offers,” and referred
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`to as the “Header Patents,” are related and share a written description.6 The Header
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`Patents generally relate to assisting online shoppers with coupon redemption.7 The
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`Abstract of those patents recites:
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`Devices, computer-implemented methods, and computer-readable media
`for a redemption header for merchant offers, such as online coupons, are
`provided. In some embodiments, an offers website may provide offers,
`such as online coupons, in a browser executing on a user device. When
`a user selects an online coupon, the browser is redirected to a merchant
`website associated with the online coupon and a coupon code value is
`copied to a clipboard. Additionally, a redemption header having the
`coupon code and instructions is added in the merchant webpage. A
`webpage element for the redemption header, such as an inline frame, is
`created in the merchant webpage and the redemption header is provided
`based on an offer identifier stored in a browser-accessible storage item
`such as a cookie.
`
`RetailMeNot’s ’688 patent, titled “Method and System for Facilitating Access to a
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`Promotional Offer,” and referred to as the “Click-to-Copy Patent,” relates to the
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`redemption of online coupons, which merchants use to provide discounted prices or
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`other benefits to customers.8 The Abstract of that patent recites:
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`A method of facilitating access to a promotional offer, the method
`comprising: receiving at a server system a page request from a client
`device; and sending program code executable in a browser application to
`the client device in response to the page request, the program code being
`executable to display at least one promotional offer and a promotional
`code, to provide a flash object at a display position of the promotional
`code and, in response to selection of the flash object, to cause the
`
`6 D.I. 109 at vi. The court will cite the ’853 patent’s written description.
`7 Id. at 49.
`8 Id. at vi; id. at 4.
`
`2
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`Ex. 2015-0002
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 3 of 49 PageID #: 7962
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`promotional code to be copied to a user-accessible memory of the client
`device and to open a new browser display of the browser application.
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`Honey’s ’625 patent, titled “Systems and Methods for Interfacing with a Website
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`to Modify Content,” discloses a browser solution for automatically testing online coupon
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`codes and applying the coupon code that results in the greatest savings.9 The ’625
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`patent Abstract recites:
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`The field of the invention relates to systems and methods for interfacing
`with a third party website. In one embodiment, a computer system is
`configured to directly interface with a website via a webpage to change
`certain numerical values through the use of digital codes. The digital
`codes are applied to a data entry interface on the webpage, and the
`responses are monitored and transmitted back to a server system.
`
`II.
`
`LEGAL STANDARDS
`
`“It is a bedrock principle of patent law that the claims of a patent define the
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`invention to which the patentee is entitled the right to exclude.”10 “‘[T]here is no magic
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`formula or catechism for conducting claim construction.’ Instead, the court is free to
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`attach the appropriate weight to appropriate sources ‘in light of the statutes and policies
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`that inform patent law.’”11 Construing the claims in a patent is a question of law.12
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`Unless a patentee acts as his own lexicographer by setting forth a special
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`definition or disavows the full scope of a claim term, the words in a claim are to be given
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`their ordinary and accustomed meaning.13 “[T]he ordinary and customary meaning of a
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`9 D.I. 107 at 2.
`10 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
`11 SoftView LLC v. Apple Inc., C.A. No. 10-389 (CONSOLIDATED), 2013 WL
`4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324).
`12 Markman v. Westview Instruments, Inc., 52 F.3d 967, 977-78 (Fed. Cir. 1995),
`aff’d, 517 U.S. 370, 388-90 (1996).
`13 Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
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`2012).
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`3
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`Ex. 2015-0003
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 4 of 49 PageID #: 7963
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`claim term is the meaning that the term would have to a person of ordinary skill in the
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`art in question at the time of the invention, i.e., as of the effective filing date of the
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`patent application.”14 A person of ordinary skill in the art (“POSITA”) “is deemed to read
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`the claim term not only in the context of the particular claim in which the disputed term
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`appears, but in the context of the entire patent, including the specification.”15 “[T]he
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`specification is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.”16
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`The court may also consider extrinsic evidence, which “consists of all evidence
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`external to the patent and prosecution history, including expert and inventor testimony,
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`dictionaries, and learned treatises.”17 “Extrinsic evidence is to be used for the court’s
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`understanding of the patent, not for the purpose of varying or contradicting the terms of
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`the claims.”18 “The construction that stays true to the claim language and most naturally
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`aligns with the patent’s description of the invention will be, in the end, the correct
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`14 Phillips, 415 F.3d at 1313.
`15 Id.
`16 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`This court has previously observed: “Section 112(b) of Title 35 provides that ‘[t]he
`specification shall conclude with one or more claims[.]’ This language makes clear that
`the specification includes the claims asserted in the patent, and the Federal Circuit has
`so held. See Markman, 52 F.3d at 979 (‘Claims must be read in view of the
`specification, of which they are part’). The Federal Circuit and other courts, however,
`have also used ‘specification’ on occasion to refer to the written description of the
`patent as distinct from the claims. See, e.g., id. (‘To ascertain the meaning of claims,
`we consider three sources: The claims, the specification, and the prosecution
`history.’).” IPC Sys., Inc. v. Cloud9 Techs. LLC, C.A. No. 16-443-CFC, 2018 WL
`5342654, at *1 n.1 (D. Del. Oct. 29, 2018). As did the court in IPC Sys., this Report and
`Recommendation will refer to the portion of the specification that is not the claims as
`“the written description” to avoid confusion.
`17 Phillips, 415 F.3d at 1317.
`18 Markman, 52 F.3d at 981.
`
`4
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`Ex. 2015-0004
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 5 of 49 PageID #: 7964
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`construction.”19
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`Five disputed terms are alleged to be indefinite. The claims of a patent must
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`“particularly point[] out and distinctly claim[] the subject matter” regarded as the
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`invention.20 In determining whether challenged claims meet this requirement, the court
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`must strike the “delicate balance” that tolerates “[s]ome modicum of uncertainty”
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`necessitated by “the inherent limitations of language” yet at the same time ensures that
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`“[the] patent [is] . . . precise enough to afford clear notice of what is claimed[.]”21
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`Accordingly, “a patent is invalid for indefiniteness if its claims, read in light of the [written
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`description] delineating the patent, and the prosecution history, fail to inform, with
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`reasonable certainty, those skilled in the art about the scope of the invention.”22
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`III.
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`AGREED-UPON CONSTRUCTIONS
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`In the JCCC, the parties agree that the preamble of the asserted claims of the
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`’625 patent is limiting.23 The parties also agree on the construction of the following
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`terms in ’853 patent: “selection of one of the plurality of offers” means “selection of one
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`of the plurality of electronic coupons,” and “offer redemption identifier” and “offer
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`identifier” mean “identifier associated with an offer that enables or describes the
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`redemption of the offer.”24 The parties agree the term “website” recited in the ’853,
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`’335, and ’769 patents means “a collection of [. . .] webpages” (noun) or “[. . .] of a
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`19 Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
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`1998).
`
`20 35 U.S.C. § 112.
`21 Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014) (citations
`omitted).
`22 Id. at 901.
`23 D.I. 67 at 1.
`24 D.I. 109 at 4; D.I. 67 at 1.
`
`5
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`Ex. 2015-0005
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 6 of 49 PageID #: 7965
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`collection of webpages” (adj.).”25 The parties agree the term “automatically,” recited in
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`the ’688 patent means “[copy[] the coupon code and send [] a second serve request]
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`without human intervention.”26 The court recommends accepting the parties’ agreed-
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`upon constructions for purposes of this litigation.
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`IV.
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`COURT’S CONSTRUCTION OF DISPUTED CLAIM TERMS
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`Nine disputed terms are found in the RetailMeNot Patents and three disputed
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`terms are found in the Honey Patent.
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`Before addressing the parties’ specific proposed constructions, the court notes
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`that many of RetailMeNot’s proposals are for the court to ascribe the “plain and ordinary
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`meaning” to the disputed term, i.e., provide no construction. Although the court
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`ultimately accepts certain of RetailMeNot’s arguments, the difficulty with its position in
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`general is the parties do not agree on what that “plain and ordinary meaning” is. Thus,
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`under O2 Micron Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., the court is faced with
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`accepting no construction, or considering the definition by the party proposing an actual
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`definition.27 Also, RetailMeNot largely supports its suggestion that certain terms be
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`given their “plain and ordinary meaning” by citing extrinsic evidence for terms that do
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`not necessarily suggest such meaning, unlike “automatically” which the parties agree, in
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`one instance, or do not dispute, in the other instance, are easily understood to mean
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`“without human intervention.”
`
`25 D.I. 109 at 4.
`26 Id.
`27 521 F.3d 1351, 1361 (Fed. Cir. 2013) (“A determination that a claim term
`‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate
`when a term has more than one ‘ordinary’ meaning or when reliance on a term's
`‘ordinary’ meaning does not resolve the parties' dispute. . . .”).
`
`6
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`Ex. 2015-0006
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 7 of 49 PageID #: 7966
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`A.
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`“feedback portion” (’688 patent, claim 1)
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`1.
`
`2.
`
`3.
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`RetailMeNot’s proposed construction: plain and ordinary meaning
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`Honey’s proposed construction: “part of the webpage inviting user
`input”
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`Court’s construction: “part of the webpage inviting user input.”
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`The court’s recommendations of the constructions for “feedback portion” and
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`“[feedback portion] indicative of historical user’s views on the content” are discussed
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`together, below.
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`B.
`
`“[feedback portion] indicative of historical user’s views on the content”
`(’688 patent, claim 1)
`
`1.
`
`2.
`
`3.
`
`RetailMeNot’s proposed construction: plain and ordinary meaning
`
`Honey’s proposed construction: “[feedback portion] indicating
`previously posted user comments in relation to content”
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`Court’s construction: “indicative of historical user’s views on the
`content”
`
`RetailMeNot contends the entire phrase “feedback portion indicative of historical
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`user’s views on the content” should be given its plain and ordinary meaning and not, as
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`Honey suggests, be separately defined as two terms, “feedback portion” and “indicative
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`of historical user’s views on the content.”28 Honey does not agree that either the two
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`separate terms, or the entire phrase, has a plain and ordinary meaning.
`
`RetailMeNot frames the dispute over these terms as involving two issues: (1)
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`whether the feedback invites user feedback (Honey’s position) or whether it only
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`indicates previous user feedback to the present user (RetailMeNot’s position); and (2)
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`28 D.I. 112 at 9:7-24.
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`7
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`Ex. 2015-0007
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 8 of 49 PageID #: 7967
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`whether “indicative of historical user’s views on the content” should be restricted to the
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`form of previously posted comments (Honey’s position) or encompasses many of the
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`other forms of user feedback disclosed in the written description (RetailMeNot’s
`
`position).29
`
`The court determines that the entire “feedback portion” phrase of the ’688 patent
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`is not susceptible to a plain and ordinary meaning and that “feedback portion” and
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`“indicative of historical user’s views on the content” should be separately construed.
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`RetailMeNot argues the “feedback portion” phrase is defined expressly by the
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`claim language.30 The court disagrees. “Feedback portion” is neither a commonly
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`understood term, nor expressly defined by claim language. RetailMeNot
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`acknowledges,31 and the claim language is unambiguously clear, that the “content item”
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`of claim 1 comprises three distinct elements:
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`. . . a content item comprising:
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`a display portion overlaid with a coupon code and a flash object or other
`object having associated therewith script or code permitted by the browser
`application to copy characters to a clipboard memory of the client
`computing device,
`
`a description of the content, and
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`a feedback portion indicative of historical user's views on the content[.]”32
`
`With regard to the first issue identified by RetailMeNot, whether the feedback
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`invites user feedback (Honey’s position) or whether it only indicates previous user
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`29 Id. at 10:1-13.
`30 Id. at 10:14-16.
`31 Id. at 10:16-20.
`32 ’688 patent, claim 1 (all emphases added unless otherwise noted).
`
`8
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`Ex. 2015-0008
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 9 of 49 PageID #: 7968
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`feedback to the present user (RetailMeNot’s position), the court determines Honey’s
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`position is correct. RetailMeNot’s position conflates the distinct limitations “feedback
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`portion” and “display portion.” In asserting the entire phrase “feedback portion” should
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`be given its plain and ordinary meaning, RetailMeNot contends the claim language itself
`
`defines the feedback portion, i.e., that it is indicative of historical (or previous) user’s
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`views on the content.33 Its support for that position, however, is the written description’s
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`discussion of the display portion.34 RetailMeNot also points to the illustration in Figure
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`2, and accompanying written description, of a success rate display and histogram
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`revealing previous historical user votes to support its position. This evidence again
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`pertains to the display portion.35 Thus, court determines RetailMeNot is incorrect in its
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`assertion that the claim language, and purported supporting written description, defines
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`the entire “feedback portion” term.
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`Honey’s proposed construction of “feedback portion,” “part of the webpage
`
`inviting user input,” is supported by the claim language and written description. Claim 1
`
`33 D.I. 112 at 10:22-11-1.
`34 ’688 patent, 5:16-30 (“The display portion 210 further comprises a statistical
`information display section 230 that provides information regarding the efficacy of the
`promotional offer . . . . In some embodiments, the statistical information 230 may
`comprise a histogram 232 representative of the historical user votes received . . . . The
`histogram 232 may comprise a number of bars displayed in series and indicative of the
`number and value . . . of user votes on the perceived reliability or redeemability of the
`promotional offer.”).
`35 See ’688 patent, Fig. 2 (illustrating “Stats: 73% Success rate”); 5:15-30 (“The
`display portion 210 further comprises a statistical information display section 230 that
`provides information regarding the efficacy of the promotional offer . . . . In some
`embodiments, the statistical information 230 may comprise a histogram 232
`representative of the historical user votes received in relation to the particular
`promotional offer [and] may comprise a number of bars displayed in series and
`indicative of the number and value . . . of user votes on the perceived reliability or
`redeemability of the promotional offer.”).
`
`9
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`Ex. 2015-0009
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 10 of 49 PageID #: 7969
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`makes clear “feedback portion” is distinct from “display portion.” Likewise, Figure 2 and
`
`the written description demonstrate this distinction. Figure 2 illustrates two separate
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`boxes identified as 210 and 220, and described in the written description as: “[t]he
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`display portion 210 comprises a promotional code 212, also referred to as a coupon
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`code, and a description 218 of the promotion[,]” and “Feedback portion 220 comprises
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`text 222 inviting feedback in relation to the promotional offer and positive and negative
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`voting buttons 224, 226.”36 The written description uses feedback to mean user input:
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`“The promotional offer may be displayed in conjunction with a feedback section
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`configured to allow a user to provide feedback input in relation to the promotional
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`offer[.]”37
`
`RetailMeNot’s argument that Honey improperly relies on a preferred embodiment
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`is unavailing because that embodiment provides confirmation of the distinction between
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`the feedback and display portions. The written description nowhere suggests a
`
`conflated embodiment of the feedback and display portions. The court also rejects
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`RetailMeNot’s argument that claim 2, reciting “[t]he system of claim 1, wherein the
`
`feedback portion comprises a positive and negative voting button . . .” adds to the
`
`feedback portion a positive and negative voting button, e.g., that claim 1 is presenting
`
`36 ’688 patent, 5:14-16; 5:65-66. See also, e.g., id., 4:56-67 (“Database 130 may
`comprise a localised or distributed database storing data records for the various
`promotional offers, as well as user feedback (if any) received in relation to each
`promotional offer.”); id., 4:62-67 (“Database 130 may also be used by server system
`110 to store data regarding the number of times a promotional offer is selected and
`may store data for the purpose of rating or ranking the various promotional offers
`according to user feedback and/or other measures of efficacy or reliability of the
`promotional offers.”).
`37 Id., 2:30-33.
`
`10
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`Ex. 2015-0010
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 11 of 49 PageID #: 7970
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`user feedback from previous users and then claim 2 adds the solicitation of feedback
`
`from the present user.38 Claim 1 invites feedback from the present user; claim 2
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`describes a specific manner in which that feedback is invited or received.
`
`Consequently, the court recommends construing “feedback portion” to mean “part of
`
`the webpage inviting user input.”
`
`The second issue identified by RetailMeNot is whether “indicative of historical
`
`user’s views on the content” should be restricted to the form of previously posted
`
`comments (Honey’s position) or encompasses many of the other forms of user
`
`feedback disclosed in the written description (RetailMeNot’s position). The court has
`
`determined the entire “feedback portion” phrase is not amenable to a plain and ordinary
`
`meaning. The court determines, however, the written description does not limit the
`
`separate phrase “indicative of historical user’s views on the content” to previously
`
`posted comments as Honey suggests, and it is appropriate to provide no additional
`
`definition other than the words themselves: “indicative of historical user’s views on the
`
`content.”
`
`As an initial matter, Honey notes the claim language “historical user’s” is singular
`
`possessive, not plural possessive, and thus the term must reflect an individual user’s
`
`comments related to the content.39 In response, RetailMeNot posited, “I think a lot of
`
`people don’t know how to use a apostrophes. If it’s singular it would be [‘]an[‘] historical
`
`user’s view on the content.”40 Here, the court does not believe the construction of this
`
`38 D.I. 112 at 14:23-15:16.
`39 Id. at 24:7-12.
`40 Id. at 28:18-21.
`
`11
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`Ex. 2015-0011
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 12 of 49 PageID #: 7971
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`term hinges on apostrophe placement and, in any event, that placement does not
`
`indicate whether the phrase is limited to previously posted comments.
`
`Next, in the phrase “feedback portion indicative of historical user’s views on
`
`content,” the italicized language modifies “feedback portion,” not the separate “display
`
`portion” limitation. Yet, RetailMeNot relies on the written description’s explanation of
`
`the display portion for its position that “indicative of historical user’s views”
`
`encompasses other forms of user feedback such as efficacy, user success rate, user
`
`perceived reliability, aggregated positive and negative endorsements or votes from
`
`users, and other statistical information.41
`
`For its part, Honey relies on the written description’s explanation that:
`
`Feedback portion 220 comprises text 222 inviting feedback in relation to
`the promotional offer and positive and negative voting buttons 224, 226.
`Feedback portion 220 may also comprise a selectable link or button to
`display previously posted user comments in relation to the promotional
`offer to allow qualified users to post further feedback.42
`
`Honey’s position improperly limits the phrase to a preferred embodiment
`
`included in a section of the written description that, while discussing the feedback
`
`portion, states the feedback portion comprises text “inviting feedback,” “positive and
`
`negative voting buttons”, and “may also comprise a . . . link or button to display
`
`previously posed user comments.” The written description does not, and need not,
`
`provide the universe of specific sources “indicative of historical user’s views on the
`
`content,” but it clearly does not limit those sources to comments. The court
`
`recommends no additional definition for this phrase and it be given the plain and
`
`41 ’688 patent, 5:16-30 (describing “display portion 210").
`42 Id., 5:64-6:3.
`
`12
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`Ex. 2015-0012
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 13 of 49 PageID #: 7972
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`ordinary meaning as expressed by the words of the claim: “indicative of historical
`
`user’s views on the content.”
`
`C.
`
`“display portion overlaid with a coupon code and a flash object or other
`object” (’688 patent, claim 1)
`
`1.
`
`2.
`
`3.
`
`RetailMeNot’s proposed construction: plain and ordinary meaning
`
`Honey’s proposed construction: “a coupon code and a flash object
`or other object together overlaying a part of the displayed
`webpage”
`
`Court’s construction: “a coupon code and a flash object or other
`object together overlaying a part of the displayed webpage”
`
`The dispute with this term is whether the definition requires “a coupon code and
`
`flash object or other object” that “together overlay[] a part of the displayed webpage,”
`
`e.g., does the “coupon code” have to overlay in some part with the “flash object or other
`
`object.” The answer to this question is whether, as Honey maintains, the prosecution
`
`history reveals a clear and unmistakable disclaimer.43
`
`The claim language itself does not suggest a spacial requirement between a
`
`“coupon code” and “flash object or other object.” Turning to the written description,
`
`Figure 2 illustrates flash object 213 that does overlap a coupon code 212. “Display
`
`portion 210 further comprises a flash object 213, such as an empty flash movie, that is
`
`transparent and overlaid on the promotional code 212. Alternatively, flash object 213
`
`may comprise one or more images that display the promotional code 212.”44
`
`43 See, e.g., Mass. Inst. of Tech. v. Shire Pharms. Inc., 839 F.3d 1111, 1119
`(Fed. Cir. 2016) (“‘[I]n order for prosecution disclaimer to attach, the disavowal must be
`both clear and unmistakable.’”) (alteration in original) (quoting 3M Innovative Props. Co.
`v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013)).
`44 ’688 patent, 5:31-34.
`
`13
`
`Ex. 2015-0013
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 14 of 49 PageID #: 7973
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`RetailMeNot acknowledges the potential of overlap but asserts this description of a
`
`preferred embodiment does not require that overlap.45 Honey’s position, however, is
`
`that during prosecution of the parent application of the ’688 patent, the patentee argued
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`that the “coupon code” and the “flash object or other object” must at least partially
`
`overly the same part of the webpage in distinguishing prior art.46
`
`The court first notes that the ’688 patent is properly held to disclaimer
`
`“arguments in the parent application.”47 During prosecution of the parent application,
`
`the applicant distinguished prior art by CouponMountain.com:
`
`CouponMountain.com, however, teaches a flash object for copying
`promotional codes 1) the selection of which does not cause copying of the
`code to the clipboard because the flash object is not embedded until after
`the selection, and 2) is not overlaid on a display portion associated with a
`coupon code. Rather, as explained below, CouponMountain.com teaches
`a simple image object that the user selects to copy a coupon code, and
`the image object then launches a script that embeds a flash object, after
`the selection, and in a different portion of the webpage from the image
`object. As such, CouponMountain.com cannot teach or suggest “the
`copying to the clipboard memory being caused at least in part by the
`selection of the flash object,” or “a display portion associated with a
`coupon code and overlaid with a flash object.”48
`
`Further, the flash object of CouponMountain.com is not in the position
`recited by the independent claims: overlaid on “a display portion
`associated with a coupon code.” As noted above, the flash object is
`
`45 D.I. 112 at 34:8-35:3.
`46 D.I. 109 at 22-23, id. at 27, 27 n.1.
`47 See Hakim v. Cannon Avent Grp., LLC, 479 F.3d 1313, 1316-18 (Fed. Cir.
`2007) (finding that the district court did not err in holding applicant to arguments made
`during prosecution of the parent application and explaining that “[a]lthough a disclaimer
`made during prosecution can be rescinded, permitting recapture of the disclaimed
`scope, the prosecution history must be sufficiently clear to inform the examiner that the
`previous disclaimer, and the prior art that it was made to avoid, may need to be
`re-visited”) (citation omitted).
`48 D.I. 67-3, ex. 11 (U.S. Pat. No. 8,612,288 File History), Resp. to Office Action
`dated June 25, 2013, at 11 (italics added, underlining in original).
`
`14
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`Ex. 2015-0014
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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 15 of 49 PageID #: 7974
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`embedded in the flashcopier object, the position of which appears to be
`unrelated to the image tag selected by the user and is not overlaid on "a
`display portion associated with a coupon code."49
`
`Honey contends the prosecution arguments demonstrate a clear and
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`unmistakable disavowal of claim scope thereby requiring the “coupon code” and the
`
`“flash object or other object” together must at least partially overlay the same part of the
`
`webpage. The court agrees with Honey.
`
`The applicant distinguished CouponMountain.com by stating that prior art
`
`teaches “a flash object for copying promotional codes . . . [that] is not overlaid on a
`
`display portion associated with a coupon code[,]” and that “the user selects [an image
`
`object] to copy a coupon code, and the image object then launches a script that
`
`embeds a flash object, after the selection, and in a different portion of the webpage
`
`from the image object.” Notably, the patentee supplied the emphasis by underlining
`
`that CouponMountain.com taught a flash object embedded in a different portion of the
`
`webpage, and distinguished that teaching from their invention with the statement that
`
`“the flash object of CouponMountain.com is not in the position recited by the
`
`independent claims: overlaid on ‘a display portion associated with a coupon code.’” In
`
`the Notice of Allowability for both the parent application and the ’688 patent, the
`
`examiner specifically included “using Flash overlaying coupon codes” among the
`
`reasons for allowance:
`
`The following is an examiner's statement of reasons for allowance: The
`independent claim of the present invention recites a method of operating
`a coupon-sharing website in an affiliate network, the coupon-sharing
`website facilitating user coupon redemption by loading a user selected
`
`49 Id. at 13.
`
`15
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`Ex. 2015-0015
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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 16 of 49 PageID #: 7975
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`coupon code into a clipboard memory of a client computing device for
`pasting into a coupon redemption input of a retailer, using multiple
`requests in a commercial affiliate network, maintaining feedback of
`coupon usage and reliability while using Flash overlaying the coupon
`codes, where Flash activation initiates the automatic copy and paste
`function of the code all done in a secure environment of the webpage.50
`
`Thus, the court recommends construing “display portion overlaid with a coupon
`
`code and a flash object or other object” to mean “a coupon code and a flash object or
`
`other object together overlaying a part of the displayed webpage.”
`
`D.
`
`“secure sandbox” (’688 patent, claim 1)
`
`1.
`
`2.
`
`3.
`
`RetailMeNot’s proposed construction: plain and ordinary meaning
`or, alternatively, “environment with restricted privileges which at
`least prohibits access to the clipboard of the client computing
`device or another similar user-accessible memory”
`
`Honey’s proposed construction: “environment with restricted
`privileges which at least prohibits access to the clipboard of the
`client computing device”
`
`Court’s construction: “environment with restricted privileges which
`at least prohibits access to the clipboard of the client computing
`device”
`
`The dispute with this term is whether the claimed secure sandbox requires
`
`preventing access to the clipboard only (Honey’s position) or more broadly also prohibit
`
`access to “another similar user-accessible memory” (RetailMeNot’s position).
`
`RetailMeNot in part relies on extrinsic evidence, from the parties’ experts and
`
`technical dictionaries, to support its proposed construction. That evidence is not
`
`particularly helpful in construing this term in the context of the ’688 patent because
`
`50 D.I. 67-3, Ex. 11 (U.S. Pat. No. 8,612,288 File History) Examiner’s
`Amendment, at 2-3; see also id., Ex. 11 (’688 patent File History) Examiner’s
`Amendment, at 6 (same).
`
`16
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`Ex. 2015-0016
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`

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`Case 1:18-cv-00937-CFC-MPT Document 161 Filed 11/27/19 Page 17 of 49 PageID #: 7976
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`each generally describe, and the parties’ proposed constructions recognize, a secure
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`sandbox as an environment with restricted privileges which prohibits, or restricts, certain
`
`areas of a client computing device.
`
`The “secure sandbox” term appears in the following limitation from claim 1:
`
`copying the coupon code from within a secure sandbox of the browser
`application to the clipboard memory of the client computing device, the
`copying to the clipboard memory being caused at