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Jobdiva, Inc. v. Monster Worldwide, Inc.

United States District Court, S.D. New York

October 3, 2014

JOBDIVA, INC., Plaintiff,
v.
MONSTER WORLDWIDE, INC., Defendant.

OPINION & ORDER

KATHERINE B. FORREST, District Judge.

On November 18, 2013, JobDiva, Inc. ("JobDiva") sued Monster Worldwide, Inc. ("Monster") for patent infringement. JobDiva's claims relate to four patents:

1. U.S. Patent No. 7, 711, 573 (the "'573 Patent"), titled "Resume Management and Recruitment Workflow System and Method, " issued on May 4, 2010;
2. U.S. Patent No. 8, 234, 221 (the "'221 Patent"), titled "Recruitment Vendor Management System and Method, " issued on July 31, 2012;
3. U.S. Patent No. 8, 280, 823 (the "'823 Patent"), titled "Recruitment Management and Recruitment Workflow System and Method, " issued on October 2, 2012; and
4. U.S. Patent No. 8, 463, 715 (the "'715 Patent"), titled "Resume Management and Recruitment Workflow System and Method, " issued on June 11, 2013.

Each of these patents relates to an invention to make the process of providing access to searching resumes easier and more accurate.

On January 9, 2014, Monster counterclaimed for declarations of non-infringement and invalidity with regard to each of JobDiva's patents, and for infringement with regard to its own U.S. Patent No. 5, 832, 497 (the "'497 Patent"), titled "Electronic Automated Information Exchange and Management System, " issued on November 3, 1998. Monster's patent seeks provide a system to manage the exchange of information through two databases, particularly in the employment setting. It seeks to permit on-line storing and access to a jobs database through a search engine and to manage job applications and submissions of resumes.

Before the Court is the parties' request for claim construction with regard to the following terms in JobDiva's Patents[1]:

A. "using a computer to improve a precision ratio when searching a resume database, " as used in JobDiva's '573 and '823 Patents;
B. "each occurrence of the phrase"/"each occurrence of the... phrase, " as used in JobDiva's '573, '823, '715, and '221 Patents;
C. "required term of experience, " as used in JobDiva's '573, '823, '715, and '221 Patents;
D. terms referring to satisfying the "job description" or "search criteria, " namely:
a. "when the parsed resume satisfies the job description, " as used in JobDiva's '573 Patent;
b. "parsed resume... satisfying the search criteria, " as used in JobDiva's '823 Patent;
c. "matching resume that satisfies the job description, " as used in JobDiva's '221 Patent; and
d. "skill or experience-related phrase includes said at least one required skill or experience-related phrase, or at least one implying phrase for said at least one required skill or experience-related phrase, that satisfies the job description, " as used in JobDiva's '715 Patent;
E. "means for receiving a result set in response to the database query, " as used in JobDiva's '573, '823, and '715 Patents;
F. "means for sending a database query to the resume database, " as used in JobDiva's '573, '823, and '715 Patents;
G. "graphical user interface, comprising a first display region...; and a second display region, " as used in JobDiva's '221 Patent; and
H. "personal and business-related characteristics that the candidate believes to be relevant to a prospective employer, " as used in JobDiva's '221 Patent.

(See Joint Claim Construction and Prehearing Statement, ECF No. 34.)

With respect to Monster's Patent, the parties have requested that the Court construe the following term[2]:

I. "iterative database query engine, " as used in Monster's '497 Patent. (See Joint Claim Construction and Prehearing Statement for Monster Countercl., ECF No. 36.)

The Court held a Markman hearing over two days on July 11, 2014 and August 1, 2014.[3] At that hearing, experts for both sides testified and were subject to cross-examination.

JobDiva proffered the report and testimony of two experts: Michael Mitzenmacher, Ph.D., for the disputed terms appearing in JobDiva's '573, '715, '823, and '221 Patents, and Nathaniel Polish, Ph.D, with regard to the disputed term in Monster's '497 Patent. Monster also proffered the report and testimony of two experts: Jaime G. Carbonell, Ph.D., with regard to the disputed terms in JobDiva's '573, '715, '823, and '221 Patents, and James Allan, Ph.D., with regard to the disputed term in Monster's '497 Patent.

While Markman decisions are considered questions of law (as discussed below), see Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996); Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1284 (Fed. Cir. 2014) (en banc), it is impossible to ignore that when witnesses are examined and then cross-examined before the Court on their respective views as to how one of ordinary skill in the art at the time would understand the intrinsic evidence, the Court does and must assess the demeanor and weigh the credibility of those witnesses in determining which view to follow. The Court is not itself one of ordinary skill in the art in this or most cases. Accordingly, the Court cannot posit its own view.

Here, the parties' expert witnesses offered conflicting interpretations of terms based on their reading of intrinsic evidence from the perspective of one of ordinary skill in the art. The Court had to, and did, assess the strengths and weaknesses of those interpretations and, in doing so, weighed the evidence. There is no other way to describe this process-there are sometimes, and were here, plain factual aspects to claim construction. Thus, where indicated, the Court's determinations regarding the appropriate construction are mixed questions of law and fact.

The Court found a significant difference between the demeanor and credibility of Mitzenmacher and Carbonell. Mitzenmacher was argumentative and at times evasive. The Court was not left with the impression that his views were to be given great weight. In contrast, Carbonell was highly credible and informative. He was forthcoming and clear. The Court is entirely comfortable placing great weight on his views.[4]

The parties' experts regarding the '497 Patent, Polish and Allan, both seemed credible, though Allan provided significantly more detail than Polish did. As a result, the Court bases its determinations on the weight it gives to the support Polish and Allan presented in their declarations and at the live evidentiary hearing, as well as on the additional evidence in the record with regard to the disputed term in the '497 Patent.

Set forth below are the Court's determinations regarding each of the terms as to which construction has been sought.

I. THE PATENTS

JobDiva's '573, '823, and '715 Patents share a common specification (the "'573 Specification" or the "Specification"). The '823 and '715 Patents are divisional patents from the application underlying the '573 Patent. The '221 Patent issued from a continuation-in-part application that has substantial overlap with the specification shared by JobDiva's other Patents here at issue.

Resume searching has been in existence for as long as employers have been receiving and reviewing multiple resumes for employment positions. Manual search was the initial method. With the advent of computers, electronic systems were able to improve upon the manual process, resulting in increased speed and improved accuracy.

There were, however, certain limitations in prior electronic systems- limitations which both Monster and JobDiva sought to address in their patents. JobDiva's '573 Patent describes the invention as a computer system and method for managing access to a resume database.

The '573 Specification describes certain limitations of prior resume-searching systems, including text-based searching, which did not account for alternative terminology or the length and duration of experience. As a result, the prior systems retrieved a large number of what the Specification refers to as "irrelevant resumes." (Compl. Ex. A, Col. 2, line 4.) "[T]he precision ratio of prior systems has been extremely low. For certain technical jobs and jobs that require more than minimal experience, the precision ratio can be under 5% and at times even below 1%." (Id. Ex. A, Col. 2, lines 9-13.) To address this issue, certain systems required candidates "to input the duration of experience that they have in a skill or experience-related phrase." (Id. Ex. A, Col. 2, lines 17-18.) The Specification describes three principal disadvantages of these systems: they prolonged the set-up process (id. Ex. A, Col. 2, lines 28-38), they were not dynamic (id. Ex. A, Col. 2, lines 39-47), and they utilized the processor-intensive operation of tallying the duration of experience for a skill or experience-related phrase at search time (id. Ex. A, Col. 2, lines 48-56).

JobDiva's invention was designed to provide tools to reduce the number of resumes returned from searches "by identifying a set of candidates who can possibly satisfy the qualifications and requirements sought by a hiring manager." (Id. Ex. A, Col. 2, lines 60-62.) The invention seeks to provide a method of identifying "most resumes that can possibly include the sought after qualification or requirement" (id. Ex. A, Cols. 2-3, lines 66-1) and "avoid identifying resumes that cannot possibly include the sought after qualification or requirement" (id. Ex. A, Col. 3, lines 1-2).

The system or method involves receiving a resume that includes at least one skill or experience-related phrase; storing the resume in a resume database; parsing the resume into searchable segments; computing a term of experience for each skill or experience-related phrase; and storing a parsed resume in the resume database (which involves, inter alia, converting the natural-language resume into XML format). (Id. Ex. A, Col. 3, lines 11-17, 35-39.) Because resumes typically contain date ranges on a job-by-job basis, and each job typically requires employees to practice more than one skill, a candidate's term of experience for a particular skill is referred to as a "maximum duration." (See, e.g., Compl. Ex. A, Col. 25, lines 42-46 ("[T]he maximum possible duration... of experience of an experience-related phrase is the total duration of all the jobs during which the experience-related phrase appeared in [the resume].").) A hiring manager can query the resume database to receive resumes matching his or her search criteria, including a skill or experience-related phrase and a required minimum duration of experience. (Id. Ex. A, Col. 5, lines 14-18.) That is, the hiring manager can search for only those candidates with particular skills and experience level in those skills.

The figures in the '573 specification provide further description of the invention. Figure 2 shows a recruiter and candidate on opposite sides of a network that feeds into a common "resume management and recruitment workflow system." Figure 4 illustrates a process of converting a natural-language resume into an XML file that then resides in the memory of a database. Figure 5 shows a number of tables flowing out of the database: (1) a candidate table, containing, inter alia, work experience data; (2) a mapping table, containing boxes for "phrase, " "related broad phrases, " and "related narrow phrases"; (3) a job table, containing information regarding, inter alia, job requirements; (4) an XML table, containing searchable data extrapolated from the resume as laid out in Figure 4; and (5) a resume table, containing the text of the resume and accompanying documents.

Figure 9 shows an exemplar search process. A search is "receive[d], " "including skills or experience related phrases and a duration of experience for each." Further in the process, the Figure states: "in a split-screen, view the candidate attributes and resumes of each candidate in the list of candidates meeting the search criteria."[5]

Monster's '497 Patent is a computer-implemented system for posting and searching job advertisements online. It provides a platform for both employers posting job positions and individuals searching for jobs. It also manages the applications for such jobs and submission of resumes, application letters, and other relevant documents. (Monster Worldwide's Answer and Counterclaims Ex. A ("'497 Patent"), Col. 1, lines 7-18, ECF No. 19.) The invention allows the database to be updated to relate candidates to jobs-that is, to reflect that a candidate has applied for a particular position. Figure 1 shows a schematic of the system.

II. LEGAL STANDARDS FOR CLAIM CONSTRUCTION

As stated above, claim construction is generally a question of law for the Court. See Markman, 52 F.3d at 979. Determining the meaning of terms within a claim assists the fact finder in making subsequent and ultimate decisions as to whether an invention has in fact been infringed, or is in fact valid. From time to time, the Court's determination of disputed factual issues is necessary to the determination of the appropriate construction of a term. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996) ("[C]redibility judgments have to be made about the experts who testify in patent cases, and in theory there could be a case in which a simple credibility judgment would suffice to choose between experts whose testimony was equally consistent with a patent's internal logic."); Dow Corning Wright Corp. v. Osteonics Corp., 939 F.Supp. 65, 68 (D. Mass. 1996) ("Although [plaintiff] contends that certain credibility questions... remain, Markman seems to place such determinations, insofar as they relate to claim construction, entirely within the province of the trial judge."). Resolution of some factual disputes cannot wait until trial. The purpose of claim construction is to define terms so that, inter alia, the jury may be properly instructed. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004) ("[T]he trial court in a patent case must at minimum take steps to assure that the jury understands that it is not free to consider its own meanings for disputed claim terms and that the district court's claim construction, determined as a matter of law, is adopted and applied by the jury in its deliberation of the facts."). If there are disputed factual issues the resolution of which is required for claim construction, a court should hold an evidentiary hearing during which each side has an opportunity to present evidence and to examine and cross-examine witnesses. The Court held such an evidentiary hearing here.

For instance, in construing the meaning of a term, the issue is not what that term would mean to an average layperson, but what that term would have meant to one "of ordinary skill in the art in question at the time of the invention, i.e., as of he effective filing date of the patent application." Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citations omitted). A determination as to the type and level of skill of one of ordinary skill in the art is a factual determination. See Buzzelli v. Minn. Mining & Mfg. Co., 480 F.2d 541, 542 (6th Cir. 1973) (explaining that ascertaining "the level of ordinary skill in the art during the questioned period" is a "factual inquir[y]"). If two experts qualified to present the view of one of ordinary skill in the art differ in their views (which is frequently the case and is here), the Court's choice between the two views is a factual determination. See Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F.Supp. 329, 333 n.7 (D. Del. 1995) ("When two experts testify differently as to the meaning of a technical term, and the court embraces the view of one, the other, or neither while construing a patent claim as a matter of law, the court has engaged in weighing evidence and making credibility determinations. If those possessed of a higher commission wish to rely on a cold written record and engage in de novo review of all claim constructions, that is their privilege. But when the Federal Circuit Court of Appeals states that the trial court does not do something that the trial court does and must do to perform the judicial function, that court knowingly enters a land of sophistry and fiction.").

Although terms are generally construed as they would be understood by one of ordinary skill in the art, it is possible for a patentee to have set forth a particular and different meaning for a term within a claim; in such a case, the lexicography of the patentee governs. See, e.g., Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 789 (Fed. Cir. 2010); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995) ("The terms in a claim... are not given their ordinary meaning to one of skill in the art when it appears from the patent and file history that the terms were used differently by the applicant.").

A. Evidence Used in Claim Construction

A court may use intrinsic-and, if necessary, extrinsic-evidence in construing claims. See Nazomi Commc'ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1368 (Fed. Cir. 2005) (instructing courts to look to intrinsic evidence first).

Intrinsic evidence includes the claims and the specification in the patent itself, as well as the patent's prosecution history. "Foremost among the tools of claim construction is of course the claim language itself, but other portions of the intrinsic evidence are clearly relevant, including the patent specification and prosecution history." All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 780 (Fed. Cir. 2002); see also Phillips, 415 F.3d at 1312 ("It is a bedrock principle' of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.'" (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). The specification is the "single best guide to the meaning of a disputed term." Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)) (internal quotation mark omitted); see also On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338, 1340 (Fed. Cir. 2006) ("[T]he scope and outer boundary of claims is set by the patentee's description of his invention, " id. at 1338, and "the claims cannot be of broader scope than the invention that is set forth in the specification, " id. at 1340). However, although specifications contain one or more examples of the embodiment of an invention, they need not contain every possible embodiment. Therefore, courts should not read into the claims limitations based on the embodiments in the specification. See Phillips, 415 F.3d at 1323; see also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1371-72 (Fed. Cir. 2008) ("[The defendant] argues that a patent can never be literally infringed by embodiments that did not exist at the time of filing. Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough."). In patents with multiple claims using similar terms, such terms should be construed consistently across claims. Southwall Techs., Inc., 54 F.3d at 1579 ("[C]laim terms must be interpreted consistently.").

Intrinsic evidence must be read from the perspective of one skilled in the art. One skilled in the art is "deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at 1313. In many patent cases, the parties proffer expert statements (in the form of reports) and testimony (either live or by deposition) as to how one of ordinary skill in the art would interpret a claim or specification. In effect, a form of what is typically considered extrinsic evidence is utilized to enable interpretation of the intrinsic evidence. If, as part of an evidentiary hearing in which the experts are exposed to cross-examination-i.e., they are not merely providing a "tutorial" not subject to cross-examination (which can have no true evidentiary value)-the experts do not agree, then the Court's determination regarding which of the competing interpretations is correct constitutes a factual finding. Thus, factual findings may be part of claim construction even when the Court's determination is based solely on intrinsic evidence.

Several aspects of the patent prosecution history can be of significant use during claim construction. Statements the patentee may have made in connection with patent prosecution are binding if used to obtain patentability. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002) ("[T]he prosecution history (or the file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)) (internal quotation marks omitted)); see also Kripplez v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012) ("A patentee's statements during reexamination can be considered during claim construction, in keeping with the doctrine of prosecution disclaimer."). The prosecution history provides evidence of how the patentee understood and explained his invention to the patent office.[6] Phillips, 415 F.3d at 1317.

In connection with patents that are part of an extended family of patents, a patentee's disclaimers made during prosecution are relevant with regard to both the patent at issue and related or "sibling" patents. See Microsoft Corp., v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1349-50 (Fed. Cir. 2004). Statements made by a patentee during prosecution prevent claim terms from becoming ever-changing as the need and situation changes. See Southwall Techs., 54 F.3d at 1578 ("A patentee may not proffer an interpretation for the purposes of litigation that would alter the indisputable public record consisting of the claims, the specification and the prosecution history, and treat the claims as a nose of wax.'").[7]

Parties do not always agree, as is the case here, that a particular claim requires construction. There are numerous instances in which one party asserts that the plain and ordinary meaning informs one of ordinary skill in the art of all that he or she needs to know, while an opposing party strongly disputes that position. In such cases, the Court ordinarily should construe the claim. "A determination that a claim term needs no construction' or has the plain and ordinary meaning' may be inadequate when... reliance on a term's ordinary' meaning does not resolve the parties' dispute.... In this case, ... claim construction requires the court to determine what claim scope is appropriate in the context of the patents-in-suit." O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008).

B. The Preamble of a Patent

Generally, a preamble does not limit a claim. Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010). Under certain circumstances, however, preambles are deemed limitations. See Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1366 (Fed. Cir. 2010) ("A preamble to a claim may or may not be limiting, depending on the circumstances."), abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014); Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ("Whether to treat a preamble as a limitation is a determination resolved only on review of the entire[ ]... patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.'" (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989))). "No litmus test defines when a preamble limits claim scope." Catalina, 289 F.3d at 808 (citing Corning Glass, 868 F.2d at 1257). Generally, a preamble limits an invention when it recites essential structure or steps, or when it gives "life, meaning, and vitality" to a claim. Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)) (internal quotation mark omitted); see also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1306 (Fed. Cir. 2005) ("When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention." (quoting Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003))); Pitney Bowes, 182 F.3d at 1305.

In addition, clear reliance on a preamble during patent prosecution transforms the preamble into a claim limitation. See Hearing Components, 600 F.3d at 1366; Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1347 (Fed. Cir. 2002); Catalina, 289 F.3d at 808; Interwoven, Inc. v. Vertical Computer Sys., Inc., No. CV 10-04645 RS, 2014 WL 490996, at *3 (N.D. Cal. Feb. 4, 2014). By contrast, a preamble phrase is not a claim limitation if the applicant did not rely on it to define the invention or to distinguish the prior art, and the phrase is not necessary to understanding the claim body. See Catalina, 289 F.3d at 810. Preambles merely describing the use of an invention generally do not limit claims. Id. at 809. This is because an inventor is entitled to the benefit of all of the uses to which his or her invention may be put. Id.

C. Claims

The Patent Act provides that a "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as his invention." 35 U.S.C. § 112(b).

1. Means-plus-function claims

Section 112(f) of the Patent Act provides for means-plus-function claims: "An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure... in support thereof, and such claim shall be construed to cover the corresponding structure... described in the specification and equivalents thereof." Id. § 112(f); see also Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).

"Claims written in means-plus-function form are interpreted to cover the structure set forth in the specification and its equivalents." Kahn v. G.M. Corp., 135 F.3d 1472, 1476 (Fed. Cir. 1998). However, in order to get the benefit of an invention which covers equivalents, the applicant must disclose a structure that performs that function. See Med. Instrumentation, 344 F.3d at 1210-11 ("If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee has not paid [the price of a means-plusfunction claim] but is rather attempting to claim in functional terms unbounded by any reference to structure in the specification." Id. at 1211.). For means-plusfunction claims involving data processing performed by a general purpose computer, the structure must be an outline of an algorithm or its equivalent, teaching how to implement the function. See Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). One skilled in the art understands the "structure" of computer software through "an outline of an algorithm, a flowchart, or a specific set of instructions or rules." Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014); see also id. at 1299 ("Structure may also be provided by describing the claim limitation's operation, such as its input, output, or connections.").

2. Indefiniteness

"[A] patent's claims, viewed in light of the specification and prosecution history, [must] inform those skilled in the art about the scope of the invention with reasonable certainty." Nautilus, 134 S.Ct. at 2129; see also Interval Licensing LLC v. AOL, Inc., No. 20131282, 2014 WL 4435871, at *5 (Fed. Cir. Sept. 10, 2014) ("Although absolute or mathematical precision is not required, it is not enough, as some of the language in our prior cases may have suggested, to identify some standard for measuring the scope of the phrase.'").

This requirement is referred to as "definiteness." It embodies the important function of "appris[ing] the public of what is still open to them." Id. (quoting Markman, 517 U.S. at 373) (internal quotation marks omitted). The requirement that a claim be precise enough to afford clear notice of what is claimed thereby eliminates the temptation to later inject ambiguity into the scope of a patent. Id. ("[A]bsent a meaningful definiteness check, ... patent applicants face powerful incentives to inject ambiguity into their claims."). A claim which fails to meet the "reasonable certainty" requirement is indefinite, id., and thus not entitled to patent protection, see United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 233 (1942) ("To sustain claims so indefinite as not to give the notice required by the statute would be in direct contravention of the public interest which Congress therein recognized and sought to protect.").

Patents entitle the holder to a presumption of validity of its claims. See 35 U.S.C. § 282 ("A patent shall be presumed valid."). As a result, a party seeking to have a claim declared "indefinite" must present clear and convincing evidence. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) ("To the extent there are any factual findings upon which a trial court's indefiniteness conclusion depends, they must be proven by the challenger by clear and convincing evidence.").

III. THE COURT'S CLAIM CONSTRUCTION

A. "using a computer to improve a precision ratio when searching a resume database"

The term "using a computer to improve a precision ratio when searching a resume database" appears in the preambles of claims in the '573 and '823 Patents.[8] Monster argues that it is both a claim limitation and indefinite. JobDiva argues that it is neither.

The preamble of claim 1 in the '573 Patent states as follows:

A system for using a computer to improve a precision ratio when searching a resume database, comprising:...

(Compl. Ex. A, Col. 36, lines 39-40.)[9]

JobDiva concedes that the term "computer" is a claim limitation, but asserts that the remainder of the preamble, namely "improve a precision ratio when searching a resume database, " is not. However, to the extent the Court finds it is a limitation, JobDiva proposes the following construction:

achieve a precision ratio greater than 5%, where the precision ratio is the number of documents retrieved that satisfy any of the search criteria to the total number of documents retrieved.

(Joint Claim Construction and Prehearing Statement at 6.) Monster takes the position that the entire preamble is a claim limitation, and that it is also indefinite. However, it, too, proposes a construction should the Court find that it is not indefinite:

Increase[e] the ratio of the number of relevant documents retrieved to the total number of documents retrieved when performing a search of a resume database based on a specified minimum duration of experience for a required skill or experience-related phrase.

(Id.)

1. Claim limitation

Monster argues that the context in which the preamble appears and the Patent's prosecution history show that the preamble is a claim limitation. According to Monster, the preamble gives "life and vitality" to the claims, contains an antecedent basis for terms in the claims, and was relied upon to overcome patentability rejections.

The Court agrees that the entire preamble is a claim limitation. The Court's determination in this regard is a mixed one of law and fact. It is based on the Court's assessment of the evidence-including the competing expert testimony- regarding how one of ordinary skill in the art would understand the claims, the Specification, and the prosecution history.

The prosecution history provides the most significant evidence that the preamble is a claim limitation. The applicant clearly relied on the preamble language for patentability of independent claims 1, 76, 203, 255, 333, and 466 of the '573 Patent, and independent claims 1, 44, 110, 133, 175, 217, and 239 of the '823 Patent. "Clear reliance" on the preamble during prosecution results in estoppel and renders the preamble a claim limitation. See, e.g., Catalina, 289 F.3d at 808; Cruciferous Sprout Litig., 301 F.3d at 1347.

There is no dispute that during the prosecution of the '573 Patent, the applicant received a § 101 rejection on the basis that independent claims 1, 76, 255, and 333 failed the machine-or-transformation test. (Fisher Decl. Ex. 4 at JD00002970.) See In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc) ("[T]he use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility.").[10] There is also no dispute that shortly after receiving this rejection, the applicant amended the preamble to all '573 Patent claims at issue to include the entire phrase "for using a computer to improve a precision ratio when searching." (See Fisher Decl. Ex. 4 at JD00003003.) Nothing in the prosecution history indicates that the patent examiner found that one portion of the amendment (namely, the term "computer") was all that was necessary to overcome the rejection.

In its response to the § 101 rejection, the applicant stated that it amended its independent claims "to identify the apparatus that accomplishes the limitations of the claims." (Id. Ex. 4 at JD00003162 ("Since the limitations of independent claims 1, 76, 255, and 333, as amended, identify the apparatus that accomplishes the limitations of the claims, the presently claimed invention meets the machine-ortransformation test.").)

Shortly after the Markman hearing, Monster deposed the patent attorney who prosecuted the patents in suit, Kenneth Waskiewicz, Esq. JobDiva has designated Waskiewicz as its corporate representative on the topic of prosecution of the same patents. Notably, Waskiewicz refused to state why the preamble was amended; he and JobDiva's attorneys (who represented him at the deposition) asserted that the reason was privileged. (Waskiewicz Dep. 62:06-12, 64:15-65:06, Aug. 22, 2014, ECF No. 145-1.) Because JobDiva did not allow Monster to examine Waskiewicz on the purpose of the amendment, the Court must ignore counsel's representation that "the purpose of the amendment was to identify a particular machine, i.e., a computer" (JobDiva's Letter at 2, ECF No. 131), that is, that the "improve a precision ratio" language was unnecessary to overcome the patentability rejection. Otherwise, counsel would obtain the benefit of an assertion on behalf of its client when the opposing party is unable to test that assertion-a classic sword/shield issue. In any event, cloaking the reason in privilege undermines the credibility of counsel's explanation.

Separately, claim 1 of the '823 Patent[11] was rejected during prosecution under § 102 as anticipated by prior art, specifically the Kurzius reference. (See Fisher Decl. Ex. 5 at JD00003903.) In response to the § 102 rejection, the applicant amended the preamble to the claim to include the phrase "using a computer to improve a precision ratio." (Id. Ex. 5 at JD00003985.) Waskiewicz admitted that the applicant made this amendment at least in part to overcome the § 102 rejection:

Q: So the amendment to the preamble of claim 521... was made in part to address the section 102 rejection and perhaps for a variety of other reasons; is that correct?
A: The rejection, as I said, the rejection-as I stated and as you stated, it was made in part to address the 102 rejections. It may have also included other reasons that are just a general practice type of ...

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