# Wanker v. United States

> United States Court of Federal Claims · January 29, 2021

URL: https://www.frixlaw.com/law-library/cases/4656253

## Case

- **Court:** United States Court of Federal Claims
- **Decided:** January 29, 2021
- **Precedential status:** Published
- **Opinion:** Opinion
- **Judges:** Ryan T. Holte
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/4656253

## How later opinions describe it (automated extraction)

- finding no literal infringement because patentee did not claim the element in its application
- holding the term “can and should be construed in a way that encompasses the preferred embodiment” because the construction should “neither exclude nor ignore the preferred embodiment”

## Opinion text

In the United States Court of Federal Claims
No. 18-1660
29 January 2021

***************************************
WILLIAM PAUL WANKER, *
*
Plaintiff, *
* Patent infringement; claim construction;
v. * Markman hearing; plain and ordinary
* meaning; prosecution disclaimer.
THE UNITED STATES, *
*
Defendant, *
*
***************************************

Cabrach J. Connor, of Connor Kudlac Lee PLLC, with whom was Jennifer Tatum Lee,
both of Austin, TX, for plaintiff.

Brian N. Gross, Trial Attorney, Commercial Litigation Branch, Civil Division,
Department of Justice, with whom were Jeffrey Bossert Clark, Acting Assistant Attorney
General, Gary L. Hausken, Director, and Scott Bolden, of counsel, all of Washington, DC, for
defendant.

CLAIM CONSTRUCTION OPINION AND ORDER

Plaintiff William Paul Wanker accuses the government of patent infringement. The
Court previously denied the government’s motion to dismiss alleging the asserted patents are
invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. The Court set a
briefing schedule for the parties to resolve all claim construction disputes. The parties were able
to resolve the construction of several terms amongst themselves. After briefing on the remaining
nine claim terms, the Court held a Markman hearing on claim construction. This Claim
Construction Opinion and Order construes the disputed terms.

I. Background

A. Overview

Plaintiff William Paul Wanker is the “inventor and sole owner” of four U.S. patents:
7,302,429 (the ‘429 patent); 8,126,779 (the ‘779 patent); 8,204,797 (the ‘797 patent); and
9,595,041 (the ‘041 patent) (collectively, “the asserted patents”). Compl. ¶¶ 2, 10, ECF No. 1.
The asserted patents are all part of a single patent family, with the ‘429 patent serving as the
parent application. See id. ¶ 39. The ‘797 and ‘041 patents are each divisional applications of
the ‘429 patent, while the ‘779 patent is a continuation-in-part of the ‘429 patent. Id.
The asserted patents relate generally to consumer information systems, providing a
method for comparing products and services through the use of various weighting factors to
assign each merchant a relative ranking. See U.S. Pat. No. 7,302,429 to Wanker, at Abstract.
This allows for easier comparison and contrasting of various merchants according to weighted
factors specific to the consumer, resulting in the presentation of a ranking relative to other
merchants. See Compl. ¶ 49. Plaintiff commercializes technology covered by the asserted
patents through his company, Legit Services Corporation, to “design[], manufacture[], and sell[]
online software solutions to aid product and service purchasing analysis using selection criteria
with variable weighting factors.” Id. ¶ 9.

The government uses the Past Performance Information Retrieval System (“PPIRS”), a
web-based enterprise application for gathering, processing, and displaying data regarding the
performance of entities and organizations supplying goods and services to the United States. Id.
¶ 11. Plaintiff alleges various government agencies, including the Department of Defense
(“DoD”) and General Services Administration (“GSA”), infringe the asserted patents through
their use of PPIRS. See id. ¶¶ 4, 97, 100. According to plaintiff, “[t]he GSA directs and controls
PPIRS.” Id. ¶ 97. The DoD E-Business Office sponsors PPIRS, which is then “administered by
the Naval Sea Logistics Center Detachment Portsmouth.” Id. ¶ 100. PPIRS is used for “ranking
merchants that sell products and services to the United States Government,” by “stor[ing] in a
database information regarding individual government contractors, the products and services
offered by each contractor, and the corresponding contract performance data for each
contractor.” Compl. ¶¶ 109, 115.

B. Procedural History

Plaintiff filed his complaint on 26 October 2018. See Compl. The government filed a
motion to dismiss on 1 April 2019, alleging the asserted patents are invalid as a matter of law
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. See Defendant
United States of America’s Motion to Dismiss Under Rule 12(b)(6) (“Gov’t’s MTD”), ECF No.
11. Following an oral argument on 6 November 2019, the Court denied the government’s
motion to dismiss. See Op. and Order, ECF No. 30. The government subsequently filed its
Answer on 30 March 2020. See Answer, ECF No. 33.

The parties jointly proposed a claim construction schedule in accordance with the “Order
Governing Proceedings – Patent Case” of the Honorable Judge Albright of U.S. District Court for the
Western District of Texas (Waco Division). See Joint Revised Proposed Schedule Governing
Claim Construction, ECF No. 41. Accordingly, the Court issued an order on 9 June 2020 setting
a schedule for claim construction proceedings. See Order, ECF No. 42. Plaintiff and the
government each filed their opening claim construction briefs on 7 October 2020 (“Pl.’s Op. Cl.
Constr. Br.,” ECF No. 46 and “Gov’t’s Op. Cl. Constr. Br.,” ECF No. 45), responsive claim
construction briefs on 21 October 2020 (“Pl.’s Resp. Cl. Constr. Br.,” ECF No. 48 and “Gov’t’s
Resp. Cl. Constr. Br.,” ECF No. 47), and reply claim construction briefs on 2 November 2020
(“Pl.’s Reply Cl. Constr. Br.,” ECF No. 51 and “Gov’t’s Reply Cl. Constr. Br.,” ECF No. 50).
The parties filed a joint claim construction statement on 23 October 2020. See Joint Cl. Constr.
Stmt., ECF No. 49. After providing the parties a preliminary construction for all terms-in-

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dispute, the Court held an oral argument on 18 November 2020. Transcript, ECF No. 54 (“Tr.”)
at 7:14–15.

C. Factual History and Technology

Plaintiff filed the ‘429 patent, the parent application of plaintiff’s asserted patent family,
on 11 April 1999. See ‘429 Patent at Cover Page. Originally filed as application number
09/290,006, the ‘429 patent does not claim priority to any previously filed applications. See id.
Plaintiff asserts infringement of 61 total claims: 15 claims of the ‘429 patent, including
independent claims 1, 8, 17, and 18; 2 claims of the ‘779 patent, including independent claim 1;
28 claims of the ‘797 patent, including independent claims 1, 8, and 9; and 16 claims of the ‘041
patent, including independent claims 1, 14, 25, and 29.

“The Asserted Patents are directed to an online information system and methods of
collecting, processing and analyzing information regarding merchants and the products and
services offered to establish a weighting of comparison information.” Compl. ¶ 49. The
merchant information is then presented to the consumer “in the form of a ranking based on
multiple, independently definable criteria.” Id.

Figure 1, reproduced below, provides an “illustrative block diagram of the comparison
shopping system.” ‘429 Patent at col. 2 ls. 66–67.

Id. at fig.1.

The database stores information “relating to products offered by merchants[,] . . .
information on the merchants[,] . . . [and] an initial set of weighting factors.” Id. at col. 4 ls. 5–8.
The server connects the database to the consumer by receiving “queries from consumers’ [sic] []
who are located at remote locations and access the server through the internet.” Id. at col. 4 ls.
9–11 (reference numerals omitted). “In response to a query forwarded by the consumer the
server requests comparison information from the database relating to both the product specified
in the query and the merchants offering the specified product.” Id. at col. 4 ls. 29–32.

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Additionally, the server “retrieves weighting factor information from the database” and “applies
the weighting factor information to the merchant information and the comparison information on
the specified product to calculate weighted comparison factors relating to product and merchant
information.” ‘429 Patent at col. 4 ls. 33–37.

The weighting factors are “arranged into four categories: product information;
merchant’s business information; merchant specific information on the specified product; and
merchant specific information on the merchant’s business history.” Id. at col. 4 ls. 48–52
(reference numerals omitted). The weighted comparison factors are “summed to an aggregate
score for each merchant.” Id. at col. 4 ls. 40–41. The aggregate score is used to rank the various
merchants being analyzed. Id. at col. 4 ls. 41–43. The consumer then receives the ranking of
merchants from the server “through the internet as a response to the consumer’s query.” Id. at
col. 4 ls. 43–45.

Figure 3, reproduced below, shows a “flow diagram illustrating the process of applying
the weighting factors to calculate the ranking of merchants.” Id. at col. 3 ls. 22–24.

‘429 Patent at fig.3.

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Viewed in connection with Figure 1, Figure 3 illustrates the process beginning with the
server’s request for comparison information in response to a consumer’s query. Id. at col. 6 ls.
36–40. “The server checks whether comparison information is available on the product specified
in the consumer’s query.” Id. at col. 6 ls. 40–42. If comparison information is not available, the
query is returned. See id. at fig.3.

When comparison information is available, the “process proceeds [to the next step] where
the database [] responds to the server’s request by providing the comparison information,
including weighting factors.” Id. at col. 6 ls. 43–46. When comparison information is not
available or is insufficient to perform a ranking, the server returns the query to the consumer for
modification. Id. at col. 6 ls. 53–59. If the information is sufficient to calculate a ranking, the
system proceeds to a final series of steps. Id. at col. 6 ls. 63–64. This final series of steps:
screens merchants not meeting selected criteria via a filter; screens comparison information not
common to all surviving merchants; calculates an aggregate score for each merchant as a sum of
applied weighting factors; and ranks the merchants based upon their aggregate score. See ‘429
Patent at col. 6 l . 64 – col. 8 l. 14. A “ranking of the merchants who are offering the [specified]
goods” is finally returned to the consumer. Id. at col. 8 ls. 10–14.

The comparison shopping system disclosed in the asserted patents has “the ability to
include information from multiple merchants,” which “marked ‘a significant improvement over
single-vendor systems’ in the prior art.” Op. and Order at 18 (quoting Plaintiff’s Supplemental
Response in Opposition to Defendant’s Motion to Dismiss Under Rule 12(b)(6) (“Pl.’s Suppl.
Resp.”) at 18, ECF No. 22). Moreover, at the time of the invention, “many of the prior art
systems provided ranking based solely on price or were not customizable,” whereas the asserted
patents enable “a weighted-factor analysis pre-query” based on multiple weighting factors. Id. at
18–19 (quoting Pl.’s Suppl. Resp. at 9). The asserted patents also solve a problem in the prior art
“regarding merchants’ ability to skew search results in their favor” “by requiring the weighting
factors to be ‘entered by a consumer.’” Id. at 20 (quoting ‘429 Patent at col. 22 l. 27). In
contrast to “prior art systems performing filtering functions after the generation of results,” the
systems in the asserted patents “provide an online product purchasing system with increased
functionality over those available in the prior art.” Id. at 22.

D. Overview of Claims

Plaintiff asserts infringement of claims 1, 2, 5–10, and 14–20 of the ‘429 patent, with
claims 1, 8, 17, and 18 being independent claims; claims 1–6, 8, 13–17, 19, 24, 25, and 29 of the
‘779 patent, with claim 1, 14, 25, and 29 being independent claims; claims 1 and 2 of the ‘797
patent, with claim 1 being an independent claim; and claims 1–6, 9, 11–13, 26–29, and 31–36 of
the ‘041 patent, with claims 1 and 9 being independent claims. See Gov’t’s Op. Cl. Constr. Br at
7. Based on the Court's detailed review of the patents, the disputed claim terms appear in the
claims as follows: 1

1
For claim term construction, the Court conducted a full review of the patents for claims containing disputed terms.
The Court’s review resulted in minor differences of claims here as compared to those in the parties’ briefs. See
generally Pl.’s Op. Cl. Constr. Br. For example, in plaintiff’s brief, claims 1, 3, 8, 14, 19, 25, and 29 of the ‘429
patent include the disputed claim “plurality.” Id. at 3. The Court, however, recognizes claims 3 and 25 of the ‘429
patent neither include “plurality” nor are asserted against the government, and the ‘429 patent does not have a claim

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Disputed Term Claims Disputed Term Appears in
“plurality” claims 1, 8, 17, and 18 of the ‘429 patent
claims 1, 3, 8, 14, 19, 25, and 29 of the ‘779 patent
claims 1 and 2 of the ‘797 patent
claims 1–3, 6, 9, 11–12, 26–27, 32–34 of the ‘041
patent

“category” claims 1 and 15–18 of the ‘429 patent
claims 8 and 19 of the ‘779 patent
claims 1 and 2 of the ‘797 patent
claims 6, 11–12, and 32–34 of the ‘041 patent

“configured to” claims 9, 29, 31–32, 34, and 36 of the ‘041 patent

“merchant comparison claims 1, and 17–18 of the ‘429 patent
information” and “product claims 1, 4, 8, 14–15, 19, 25, and 29 of the ‘779
comparison information” and patent
“stored comparison data” claim 1 of the ‘797 patent

“non-opinion data” claims 1 and 8 of the ‘429 patent
claims 2, 14, and 29 of the ‘779 patent
claims 2 and 26 of the ‘041 patent

“merchant comparison claims 17–18 of the ‘429 patent
information excluding opinion
data and survey result data” and
“merchant comparison
information excludes
information obtained from
surveys and information
specifying the opinion of a
person”

Accordingly, the Court finds claims 1 and 17 of the ‘429 patent useful for illustrating the
disputed claims. Claims 1 and 17 of the ‘429 patent are reproduced below, with emphasis on
each of the disputed claim terms:

1. In an online comparison system, a method of ranking merchants,
comprising:

29. ‘429 patent at col. 22 ls. 60–63, col. 26 ls. 11–12 (The ‘429 patent has 25 claims). In subsequent sections,
where the Court addresses construction of each term, the Court cites to plaintiff’s brief for claims with disputed
terms. See infra at Sections III–VIII. The difference between the Court’s list here, and the parties’ briefs, is
assumed to be minor typographical errors in brief writing.

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entering by a consumer a set of weighting factors prior to receiving
query information related to a potential consumer purchase, the
weighting factors corresponding to categories of merchant
comparison information data;

receiving the query information related to the potential consumer
purchase;

receiving a plurality of merchant comparison information data for
a plurality of merchants related to completing the potential
consumer purchase, the merchant comparison information data for
a merchant organized into a plurality of categories, wherein the
merchant comparison information data includes non-opinion data
from at least two categories from price category, product
availability category, product inventory category, time to deliver
product category, payment terms category, payment method
category, merchant creditworthiness category, and inventory
category information;

calculating a plurality of respective merchant data weight resultant
values for each merchant of the plurality of merchants by
multiplying each weighting factor from the entered set of
weighting factors by a data value of the merchant comparison
information data from a corresponding merchant data category;

calculating an aggregate score for each merchant by summing the
plurality of calculated merchant data weight resultant values;

ranking the merchants based on the aggregate scores to produce a
ranking result; and

returning the ranking result to the consumer, the ranking result
corresponding to the received query information.

17. A method of ranking merchants in an online comparison
system, comprising:

receiving from a consumer a set of weighting factors prior to
receiving query information specifying a product or service, the
weighting factors corresponding to categories of merchant
comparison information, wherein each said weighting factor is
entered as a numerical value and represents the relative importance
to be given to corresponding merchant comparison information in
ranking the merchants;

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receiving the query information related to a product or service
from the consumer;

retrieving merchant comparison information data of merchants
offering said product or service from a database, the retrieved
merchant comparison information data corresponding to the
entered query information, the merchant comparison information
excluding opinion data and survey result data;

calculating a plurality of weighted category scores for each
merchant by, for each of the weighting factors, multiplying the
weighting factor by a corresponding data value of the retrieved
merchant comparison information data to calculate a weighted
category score, and

summing the weighted category scores to calculate a merchant
overall score of each merchant;

ranking the merchants according to the calculated merchant overall
score of each merchant to produce a ranking result; and

returning the ranking result to the consumer, the ranking result
corresponding to the received query information.

‘429 Patent col. 22 ls. 25–56, col. 24 ls. 17–46 (emphasis added).

II. Construction of Disputed Claim Terms

A. Applicable Law

1. Construction of Claim Terms

“[T]he interpretation and construction of patents claims, which define the scope of the
patentee’s rights under the patent, is a matter of law exclusively for the court.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995). “To construe a claim term,
the trial court must determine the meaning of any disputed words from the perspective of one of
ordinary skill in the pertinent art at the time of filing.” Chamberlain Grp. v. Lear Corp., 516
F.3d 1331, 1335 (Fed. Cir. 2008). “[T]he words of a claim ‘are generally given their ordinary
and customary meaning,’” which “is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date
of the patent application.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “There are
only two exceptions to this general rule: (1) when a patentee sets out a definition and acts as his
own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the
specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012).

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The analysis of any disputed claim terms begins with the intrinsic evidence of record, as
“intrinsic evidence is the most significant source of the legally operative meaning of disputed
claim language.” Vitronics, 90 F.3d at 1582. Additional claims, whether asserted or not, “can
also be valuable sources of enlightenment as to the meaning of a claim term.” Phillips, 415 F.3d
at 1314. This includes consistent use throughout the patent, differences amongst particular
terms, and various limitations added throughout the dependent claims. Id. at 1314–15. The
claims do not stand on their own; “they are part of ‘a fully integrated written instrument,’
consisting principally of a specification that concludes with the claims.” Id. at 1315 (quoting
Markman, 52 F.3d at 978). The claims are therefore “read in view of the specification.”
Markman, 52 F.3d at 979. It is important that limitations from preferred embodiments are not
read “into the claims absent a clear indication in the intrinsic record that the patentee intended
the claims to be so limited.” Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir.
2004).

The Federal Circuit’s case law “instructs that different claim terms are presumed to have
different meanings.” MicroStrategy Inc. v. Business Objects Americas, 238 F. App’x 605, 609
(Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d
1308, 1317 (Fed.Cir.2000) (“In the absence of any evidence to the contrary, we must presume
that the use of these different terms in the claims connotes different meanings.”); Applied Med.
Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n. 3 (Fed.Cir.2006) (“[T]he use of two
terms in a claim requires that they connote different meanings....”)).

2. Prosecution History

The prosecution history may serve as an additional source of intrinsic evidence.
Markman, 52 F.3d at 980. The prosecution history “consists of the complete record of the
proceedings before the [United States Patent and Trademark Office (“USPTO”)] and includes the
prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. The
prosecution history “represents an ongoing negotiation between the [US]PTO and the applicant,
rather than the final product of that negotiation.” Id. This results in the prosecution history often
“lack[ing] the clarity of the specification,” making it “less useful for claim construction
purposes.” Id. After considering all intrinsic evidence of record, the court has discretion to
consider sources of extrinsic evidence, such as dictionaries, treatises, and expert and inventor
testimony, if the court “deems it helpful in determining ‘the true meaning of language used in the
patent claims.’” Id. at 1317–18 (quoting Markman, 52 F.3d at 980). While sometimes helpful,
extrinsic evidence is “less significant than the intrinsic record in determining the legally
operative meaning of claim language.” Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 862 (Fed Cir. 2004) (internal quotation marks and citations omitted)).

“Prosecution disclaimer ‘preclud[es] patentees from recapturing through claim
interpretation specific meanings disclaimed during prosecution.’” Aylus Networks, Inc. v. Apple
Inc., 856 F.3d 1353, 1359 (Fed. Cir. 2017) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334
F.3d 1314, 1323 (Fed. Cir. 2003)). Federal Circuit caselaw “requires that the alleged disavowing
actions or statements made during prosecution be both clear and unmistakable” in order to apply
the principles of prosecution disclaimer. Id. (quoting Omega Eng’g, 334 F.3d at 1325–26).

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“[W]hen the patentee unequivocally and unambiguously disavows a certain meaning to obtain a
patent, the doctrine of prosecution history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered.” Biogen Idec, Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090, 1095 (Fed. Cir. 2013). “Where the alleged disavowal is ambiguous, or even
‘amenable to multiple reasonable interpretations,’ [the Federal Circuit has] declined to find
prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir.
2016) (quoting Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003)).

In Iridescent Networks, Inc. v. AT&T Mobility, L.L.C., the district court construed the
term “high quality of service connection,” partially relying on the patentee’s own statements
during prosecution of the parent application. 933 F.3d 1345 at 1349–50 (Fed. Cir. 2019). On
appeal, plaintiff contended that “the prosecution history is irrelevant to the claim construction
question because there is no clear and unmistakable disavowal of claim scope.” Id. at 1352. The
Federal Circuit rejects this argument, stating “[a]ny explanation, elaboration, or qualification
presented by the inventor during patent examination is relevant, for the role of claim construction
is to ‘capture the scope of the actual invention’ that is disclosed, described, and patented.” Id. at
1352–53 (quoting Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015)
(internal citation omitted)). The Federal Circuit also notes “the disputed term [“high quality of
service connection”] is a coined term, meaning it has no ordinary and customary meaning.” Id.
at 1353. The Federal Circuit holds that courts “may look to the prosecution history for guidance
without having to first find a clear and unmistakable disavowal” for terms which do not have
ordinary and customary meaning. Id.

B. Terms Resolved by the Parties

The parties filed a joint claim construction statement on 23 October 2020 indicating they
“have reached agreement on certain terms’ proposed constructions as detailed in the following
table:”

Claim Term Agreed-Upon Construction
“consumer” person or entity seeking information on a
good or service
“merchant” any provider of a good or service
“product” any good or service which is the subject
of commerce

Joint Claim Construction Statement, ECF No. 49 at 1–2.

C. Disputed Terms

The Court will construe the disputed terms in the following order:

No. Term
1 “merchant comparison information” “stored comparison information”
4a “non-opinion data”
4b “merchant comparison information excluding

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opinion data and survey result data” / “merchant comparison information
excludes information obtained from surveys and information specifying the
opinion of a person”
2 “plurality”
3 “category”
5 “configured to”

The term numbering is adopted from the parties’ Joint Claim Construction Statement
chart. See Exhibit A of Joint Claim Construction Statement, ECF No. 49-a. Term #4 in the
parties’ joint statement includes three terms: “non-opinion data,” “merchant comparison
information excluding opinion data and survey result data,” and “merchant comparison
information excludes information obtained from surveys and information specifying the opinion
of a person.” Id. at 2–3. The parties dispute whether “non-opinion data” has the same meaning
as “merchant comparison information excluding opinion data and survey result data” / “merchant
comparison information excludes information obtained from surveys and information specifying
the opinion of a person.” Id. The Court labels “non-opinion data” as term #4a, and the other two
terms as term #4b. The disputed terms discussed in this order follows the same sequence agreed
during the Markman hearing, as earlier terms build into later terms. See Tr. at 7:1–8:24.

III. Disputed Claim Term #1: “Merchant Comparison Information” / “Stored
Comparison Information” 2

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “the actual data on the merchant or the
product”
Alternatively, “information used to compare
products or merchants” 3

Plaintiff lists this disputed term in the following claims: claims 1 and 17–18 of the ‘429
patent; claims 1, 13, 14, 24, and 29 of the ‘779 patent; and claims 1 and 2 of the ‘797 patent. See
Pl.’s Op. Cl. Const. Br. at 8. For example, claim 1 of the ‘429 patent recites “entering by a
consumer a set of weighting factors prior to receiving query information related to a potential
consumer purchase, the weighting factors corresponding to categories of merchant comparison
information data.” ‘429 Patent at 22:27–30 (emphasis added).

A. Parties Arguments

2
The parties jointly list “product comparison information” along with “merchant comparison information” and
“stored comparison data” as one term in dispute. See Exhibit A of Joint Claim Construction Statement, ECF No. 49-
a, at 1. Plaintiff lists claims 1 and 17–18 of the ’429 patent, claims 1, 13, 14, 24, and 29 of the ’779 patent, and
claims 1 and 2 of the ’797 patent to include this term. See Pl.’s Op. Cl. Const. Br. at 8. During oral argument,
parties clarified the term “product comparison information” does not appear in the alleged claims. Tr. at 27:12–28:6.
Accordingly, the Court is not construing “product comparison information.”
3
Plaintiff argues no construction is necessary for this term if the Court finds (1) comparison information includes
weighting factors; and (2) comparison information does not include prior purchaser feedback and survey results. Pl.
Op. Cl. Constr. Br. at 8. Plaintiff does not state in the opening brief why the alternate construction is “information
used to compare products or merchants” but simply states its construction “naturally aligns with the nature and use
of the recited comparison information and data.” Id. at 10.

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Plaintiff states “[t]here are two aspects to the parties’ dispute: (1) whether comparison
information includes only actual data and excludes weighting factors; and (2) whether ‘actual
data’ limits the comparison information by type or source,” or more specifically, “does
comparison information include prior purchaser feedback and survey results?” Pl.’s Op. Cl.
Constr. Br. at 8. Plaintiff argues comparison information should not exclude weighting factors
or prior purchaser feedback and survey results. See id. The government characterizes the
parties’ dispute as “whether the terms . . . [are] limited to data specific to a particular merchant or
product or rather encompasses more generally any information used for comparison.” Gov’t’s
Op. Cl. Constr. Br. at 12.

1. Whether “Actual Data” Limits the Comparison Information by Type
or Source

Plaintiff alleges “actual data” in the government’s construction limits the comparison
information by type or source. See Pl.’s Resp. Cl. Constr. Br. at 6 (“[A]pplying the
Government’s construction to ‘Banking History and Credit Information 261’ [in Fig. 2E]
suggests that the ‘actual data’ underlying a merchant’s credit rating or length of credit accounts
is required to meet the claim limitation.”). According to plaintiff, the specification describes
comparison information as:

The comparison information retrieved from the database includes
information relating to the merchant and information relating to the
product specified in the query, as well as weighting factors to be
applied to this information to produce a ranking or evaluation of
each merchant’s offering of the product.

Pl.’s Resp. Cl. Constr. Br. at 6 (citing ‘429 Patent at col. 6 ls. 48–53). Figs. 2A-2G illustrate
“examples of comparison information items.” Id. (citing ‘429 Patent at col. 14 ls. 48–49).
Plaintiff cites Fig. 2E as an example to show the government’s “interpretation imposing such a
requirement [of actual data] on comparison information is inconsistent with the intrinsic record.”
Id. at 6–7. According to plaintiff, “applying the [g]overnment’s construction to ‘Banking
History and Credit Information 261’ [in Fig. 2E] suggests that the ‘actual data’ underlying a
merchant’s credit rating or length of credit accounts is required to meet the claim limitation” of
“merchant comparison information.” Id. at 6.

The government emphasizes its construction “only requires that the data be specific to the
particular merchant or particular product, excluding only general data used in the comparison
process.” Gov’t’s Resp. Cl. Constr. Br. at 2. The government argues the specification provides
“specific examples . . . of ‘merchant comparison information data’” and “identifies these types of
‘merchant comparison information data’ as ‘specific’ to the product or merchant.” Gov’t’s Op.
Cl. Constr. Br. at 12 (citing, e.g., ‘429 Patent at col. 5 ls. 33–35 (identifying price and payment
options as “merchant specific information”) (emphasis original)). The government’s reply brief
contends it “has never alleged, nor does its proposed construction impose any requirement,” to
limit the type or source of “merchant comparison information.” Gov’t’s Reply Cl. Constr. Br. at
2.

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2. Whether Comparison Information Includes Only Actual Data and
Excludes Weighting Factors

Plaintiff contends the specification “explicitly described [weighting factors] as part of the
comparison information.” Pl.’s Op. Cl. Constr. Br. at 9 (citing ‘429 Patent at col. 6 ls. 34–53
(“the database (10) responds to the server’s request by providing the comparison information,
including weighting factors, to the server”)). Plaintiff cites Table 1 of the ‘429 Patent as
providing “examples of weighting factors used in comparing and ranking merchants.” Pl.’s
Resp. Cl. Constr. Br. at 7 (citing ‘429 Patent at col. 8 ls. 15–16). Plaintiff objects to the
government’s reliance on prosecution history for construing the claim, because “[patentee’s]
explanation during prosecution did not define or otherwise effect a disavowal of claim scope.”
Id. at 4. According to plaintiff, patentee’s prosecution statement was to distinguish prior art:
“the prior art relied on professional ‘expert’ opinions or reviews,” whereas in patentee’s
invention, “[t]he merchant comparison information data is the actual data on the merchant or
their product or services.” Pl.’s Op. Cl. Constr. Br. at 9 (citing Request for Continued
Examination under 37 C.F.R. §1.114 for U.S. Application No. 09/290,006 (Issued as U.S. Pat.
No. 7,302,429) Dated 25 August 2004 (“the 25 August 2004 RCE of the ‘429 patent”) at 7); also
see Pl.’s Resp. Cl. Constr. Br. at 4–5. Plaintiff states the patentee “stressed the meaning of
‘merchant comparison information’ as used in the specification and in so doing did not express a
clear and unmistakable disavowal of claim scope.” Pl. Resp. Cl. Constr. Br. at 4. The relevant
prosecution history cited by plaintiff is reproduced below:

The Application is quite clear, as demonstrated by the excerpt of
the Specification reproduced above, that weighting factors
represent the relative importance of a category of merchant
comparison information data. These weighting factors are
multiplied against merchant comparison data to calculate a
weighted comparison value. The merchant comparison information
data is the actual data on the merchant or their product or
services. . . . These weighted comparison values are then summed
to calculate a merchant aggregate score. Represented as a formula:

aggregate score = (weighting factor 1) (merchant data from
category 1) + (weighting factor 2) (merchant data from category 2)
+ .... + (weighting factor N) (merchant data from category N)

Rewriting this formula in a cleaner format:

Merchant Score = WF 1 x (Data 1) + WF 2 x (Data 2) + ... + WF 3 x
(Data 3)

Id. at 5 (emphasis added) (citing the 25 August 2004 RCE of the ‘429 patent at 7).

Plaintiff’s reply brief contends the specification supports both scenarios when “weighting
factors” are or are not a part of “merchant comparison information.” Pl.’s Reply Cl. Constr. Br.

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at 2. Plaintiff agrees “weighting factors” that are “stored weighting factors,” i.e., “historical
settings by a consumer that can be re-used,” are excluded from “merchant comparison
information.” Id. Plaintiff, however, argues “the specification provides support for rejecting the
Government’s negative limitation,” as “[i]n addition to storing merchant and product
information, ‘the database stores an initial set of weighting factors.’” Id. (citing ‘429 Patent at
col. 4 ls. 7–8.).

The government contends the patentee distinguished “merchant comparison information”
from “weighting factors” in the following prosecution statement:

Thus, the Office Action’s contention that weighting factors may be
entered is factually incorrect, as the only values that may be
entered on the cited pages of BizRate.com are grades which ARE
NOT equivalent to weighting factors. The grades entered in
BizRate.com are a form of merchant comparison information,
and not a form of weighting factor. The grades are a form of data
on the merchant, however, subjective, and represent a reviewers
[sic] subjective opinion on that aspect of a merchant.

Gov’t’s Resp. Cl. Constr. Br. at 3 (citing the 25 August 2004 RCE of the ‘429 patent at 13). The
government further argues the patentee “defined and explained the relationship between
‘weighting factors’ and ‘merchant comparison information’” citing the same portion in the
prosecution history as plaintiff. Id. (citing the 25 August 2004 RCE of the ‘429 patent at 7 (“The
merchant comparison information data is the actual data on the merchant or their product or
services.”)).

The government asserts the language of claim 17 of the ‘429 patent distinguishes
between “weighting factors” and “merchant comparison information.” Id. at 4. Claim 17 recites
“receiving from a consumer a set of weighting factors,” “retrieving merchant comparison
information data . . [sic] from a database,” and “multiplying the weighting factor by a
corresponding data value of the retrieved merchant comparison information data.” Id. (citing
‘429 Patent at col. 24 ls. 19–36). The government alleges “the patent clearly distinguishes
between ‘weighting factors’ and ‘comparison information’” by teaching:

In response to a query forwarded by the consumer the server
requests comparison information from the database relating to both
the product specified in the query and the merchants offering the
specified product. The server also retrieves weighting factor
information from the database.

Id. at 5 (citing ‘429 Patent at col. 4 ls. 29–33) (emphasis original).

The government alleges there are ample disclosures “within the specification that
distinguish between weighting factors and comparison information.” Gov’t’s Reply Cl. Constr.
Br. at 3 (citing, e.g., ‘429 Patent at col. 4 ls. 34–37 (“The server applies the weighting factor
information to the merchant information and the comparison information on the specified

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product to calculate weighted comparison factors relating to product and merchant
information.”)). The government argues plaintiff wrongly relies on Table 1 to support its
contention, as “Table 1 itself contains examples of various types of comparison information that
each can have a weighting factor associated with them.” Id. at 4 (citing ‘429 Patent col. 7 l. 18 –
col. 13 l. 47). The government further explains “the calculation of the aggregate score using the
stored merchant weighting factors” demonstrates weighting factors are not part of the merchant
comparison information. Id. at 4 (citing ‘429 Patent col. 18 ls. 22–24, col. 19 ls. 1–6)
(explaining “the system applies the weighting factors to the corresponding comparison
information” and “[t]he weighting factors, represented as percentage values reflecting the
respective contribution of the corresponding weighting factor data, are multiplied by their
corresponding comparison information item”).

Regarding plaintiff’s argument against the government’s reliance on prosecution history
to construe this term, the government agrees the patentee’s statement does not constitute a “clear
and unmistakable disavowal,” thus “the Court need not apply the doctrine of prosecution history
disclaimer to construe the term.” Id. at 5. The government argues, however, it should be
allowed to rely on prosecution history in interpreting the term because “the prosecution history is
relevant as it illustrates the precise invention claimed.” Id. at 5–6 (“Accordingly, it is entirely
appropriate to ‘look to the prosecution history for guidance without having to first find a clear
and unmistakable disavowal.’” (quoting Iridescent Networks, Inc. v. AT&T Mobility, L.L.C., 933
F.3d 1345 at 1355 (Fed. Cir. 2019))).

B. Analysis

1. The Court’s Preliminary Construction

Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction. Tr. at 7:4–8. In reaching the preliminary construction, the Court considered both
parties’ claim construction briefs and all referenced materials in full.

The specification does not explicitly define “merchant comparison information.” Claim 1
provides “merchant comparison information” data includes data from “at least two categories
from price category, product availability category, product inventory category, time to deliver
product category, payment terms category, payment method category, merchant creditworthiness
category, and inventory category information.” ‘429 Patent at col. 22 ls. 37–43. The
specification characterizes information data in these categories as “merchant specific
information.” See id. at col. 5 ls. 33–35, 47 (identifying price and payment options as “merchant
specific information”); id. at col. 5 ls. 62–64 (identifying time in business as “merchant specific
information”); id. at col. 6 ls. 26–32 (identifying merchant’s service rating and response rating as
“merchant specific information”). Additionally, the specification discloses the invention uses
four categories of comparison information: product information; merchant’s business
information; merchant specific information on the specified product; and merchant specific
information on the merchant’s business history. See id. at col. 4 ls. 46–52.

The government construes this term as “the actual data on the merchant or the product.”
Gov’t’s Op. Cl. Constr. Br. at 11. The government’s proposed construction emphasizes

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“merchant comparison information” / “stored comparison information” need to be specific to the
particular merchant or particular product, “excluding only more general data used in the
comparison process.” Gov’t’s Resp. Cl. Constr. Br. at 2; see also Gov’t’s Op. Cl. Constr. Br. at
12. The government’s construction language is based on patentee’s prosecution statement “[t]he
merchant comparison information data is the actual data on the merchant or their product or
services.” Gov’t’s Op. Cl. Constr. Br. at 12 (citing the 25 August 2004 RCE of the ‘429 patent at
7).

Based on the claim language and the specification, the Court’s preliminary construction
adopted the government’s position that construction of this term “requires that the data be
specific to the particular merchant or particular product.” Gov’t’s Resp. Cl. Constr. Br. at 2.
The Court’s preliminary construction also incorporated the language “merchant specific
information” contained in the specification over the government’s proposed language included
from the prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
(“[P]rosecution history represents an ongoing negotiation between the PTO and the applicant,
rather than the final product of that negotiation, it often lacks the clarity of the specification and
thus is less useful for claim construction purposes.”). The Court’s preliminary construction
further adopted the government’s position that this term should not be construed to encompass
“weighting factors.” See Gov’t’s Resp. Cl. Constr. Br. at 3. Accordingly, the Court proposed to
the parties the term “Merchant Comparison Information” /“Stored Comparison Information” is
construed as “merchant or product specific information not including weighting factors.”

At the commencement of the Markman hearing, the government agreed to the Court’s
preliminary construction in full. See Tr. at 26:2–4; 28:14–17. Plaintiff agreed to the language
“merchant or product specific information” but contended the term does not exclude “weighting
factors.” See Tr. at 11:6–15; 15:10–16:6. Accordingly, after reviewing the Court’s proposed
preliminary construction, the only dispute between the parties was whether “merchant or product
specific information” includes “weighting factors.” See Tr. at 16:1–6; 28:17–25.

2. The Court’s Final Construction

To support the argument “weighting factors” are a part of “merchant comparison
information,” plaintiff relies on certain specification language which implies “weighting factors”
are included in information retrieved from the database in response to a user’s query. See Pl.’s
Op. Cl. Constr. Br. at 9; see also Tr. at 11:21–12:12. Plaintiff also asserts the invention has two
operation mechanisms, including one where “weighting factors” are a part of “merchant or
product specific information.” See also Tr. at 18:15–22; 24:21–25:1 (“I believe [the
specification] shows . . . that the term [“merchant comparison information”] does not exclude
that, and depending upon the implementation allows for [“weighting factors”] to be included in
[“merchant comparison information”] or not, depending upon the implementer.”).

Plaintiff argues the specification “explicitly described [weighting factors] as part of the
comparison information.” Pl.’s Op. Cl. Constr. Br. at 9 (citing ‘429 Patent at col. 6 ls. 34–53
(“the database (10) responds to the server’s request by providing the comparison information,
including weighting factors, to the server”)). During oral argument, plaintiff focused on the
following specification language: “[t]he comparison information . . . includes information

- 16 -
relating to the merchant and information relating to the product specified in the query, as well as
weighting factors to be applied to this information . . . .” Tr. at 16:7–16; ‘429 Patent at col. 6 ls.
37–54. Plaintiff reads the language as mandating “weighing factors” to be a part of “comparison
information.” See Tr. at 16:20–17:2.

The specification language cited by plaintiff states comparison information includes three
components: “information relating to the merchant,” “information relating to the product,” and
“weighting factors to be applied to this information.” ‘429 Patent at col. 6 ls. 37–54. The first
two components of comparison information are merchant specific or product specific
information, and the third component, “weighting factors,” are values to be applied to
“merchants specific or product specific information.” The specification language separates
“weighting factors” from “information relating to the merchant” and “information relating to the
product.” Accordingly, a plain reading of the specification language does not support plaintiff’s
contention “weighting factors” are a part of “merchant or product specific information.”

Plaintiff also cites Table 1 of the specification to demonstrate “weighting factors” are a
part of “merchant comparison information.” See Tr. at 13:1–10. Table 1 “shows examples of
weighting factors used in comparing and ranking merchants.” ‘429 Patent at col. 8 ls. 15–16.
For example, “time in business” is one of the weighting factors listed in Table 1 under the
category of “history.” Id. at cols. 7–8. Plaintiff argues the specification discloses “time in
business” is an example of merchant specific information used in the invention as comparison
information, thus the weighting factor of “time in business” in Table 1 is merchant specific
information. Tr. at 13:5–6. Plaintiff’s argument, however, is not supported by the specification.
The specification teaches Table 1 is used in step (309) of the invention, “where the weighting
factors are applied to the comparison information.” ‘429 Patent at col. 7 l. 16 – col. 8 l. 8 (“Step
(309) produces an aggregate score for each merchant which is the sum of the weighting factors
applied to the relevant category of comparison information corresponding to the weighting
factor. Examples of weighting factors . . . are discussed in greater detail below in connection
with Table 1.”). While plaintiff is correct “time in business” is merchant specific information,
see id. at col. 5 ls. 62–64 (“FIG. 2E illustrates examples of merchant specific information . . .
including time in business.”), the weighting factor of “time in business” is a value corresponding
to the merchant specific information of “time in business,” instead of being a part of merchant
specific information.

Patentee’s statements made during patent prosecution also support “weighting factors” as
values to be applied to corresponding “merchant or product specific information.” See supra
Section III(A)(2) for the relevant prosecution history describing the use of weighting factors in
calculating merchant scores. As explained in the prosecution history, weighting factors
“represent the relative importance of a category of merchant comparison information data.” Id.
The invention operates by multiplying a weighting factor of a category with the corresponding
merchant data in that category to produce an aggregate score for each category, followed by
adding all categories’ aggregate scores to have a Merchant Score for that merchant, and then
ranking merchants based on their Merchant Scores. See id. Patentee created a formula to
represent how the invention works, which shows “weighting factor 1” and “merchant data from
category 1” are two numbers to be multiplied together. See id. Accordingly, the prosecution

- 17 -
history does not support plaintiff’s argument that “weighting factors” are a part of “merchant or
product specific information.”

As discussed supra in Section III(A)(2), plaintiff contends the specification supports both
scenarios where comparison information does or does not include “weighting factors.” See Pl.’s
Reply Cl. Constr. Br. at 2. Plaintiff supplemented this position during oral argument by asserting
the invention has two operations: one is the mechanism presented by patentee during
prosecution, and the other a multi-tier mechanism where one group of weighting factors are
applied to another group of weighting factors. See Tr. at 18:15–16 (“So weighting factors can be
used in more than one way.”); 19:2–5 (“And that [embodiment] gives an indication there that
you can use weighting factors to modify other weighting factors, if you will, in a multitiered
comparison by having weighting factors as a form of comparison of each.)”; 24:21–25:1 (“I
believe [the specification] shows . . . that the term [“merchant comparison information”] does
not exclude that, and depending upon the implementation allows for [“weighting factors”] to be
included in [“merchant comparison information”] or not, depending upon the implementer.”). 4
According to plaintiff, “weighting factors” are a part of “merchant or product specific
information” in the second operation. See id.

Unlike the first operation method which has ample support and discussion in the
specification and prosecution history, plaintiff cannot specify sufficient intrinsic evidence
teaching the second method. 5 Plaintiff does not contend there are two types of “weighting
factors.” See Tr. at 24:7–17. Plaintiff alleges the invention encompasses two operation
mechanisms, including one where “weighting factors” are a part of “merchant or product specific
information.” See Tr. at 18:15–16; 19:2–5; 24:21–25:1. Regarding this second operation,
however, plaintiff does not cite specific intrinsic evidence. See Tr. at 24:7–17. Additionally,
plaintiff agrees “merchant or product specific information” is a proper construction of the term
“Merchant Comparison Information” / “Stored Comparison Information.” See Tr. at 11:6–15;
15:10–16:6. Even assuming the invention has a second operation method in which one
“weighting factor” is applied to another “weighting factor,” both weighting factors are still
values corresponding to a category of “merchant or product specific information.” A weighting
factor cannot be “merchant specific” or “product specific” when it is a value being applied to one
category of information from every merchant or product.

C. Court’s Construction

4
During oral argument, when asked if the invention functions as “multiplying weighting factors with corresponding
merchant data to receive a number for each category and then adding all categories together,” counsel for plaintiff
stated: “[s]o weighting factors can be used in more than one way. They can be used as comparison information,
and they then are also or can also be used as the items that - - where you do this multiplication and then resulting
summing. So you can have those weighting factors as something that can be an input to the comparison or as input
by virtue of the comparison information.” Tr. at 17:22–18:22.
5
During oral argument, when asked whether the specification supports two scenarios “where weighting factors are
or are not included in merchant comparison information,” plaintiff’s counsel relied on language in column 6 of the
‘429 patent and Table 1 in column 8 of the ‘429 patent. Tr. at 24:7–17. As discussed supra, the Court finds the
specification at column 6:37–54 and Table 1 are not sufficient to prove “weighting factors” are a part of “merchant
comparison information.”

- 18 -
As agreed by the parties during the Markman hearing, “Merchant Comparison
Information” / “Stored Comparison Information” should be construed as “merchant or product
specific information.” The only dispute between the parties is whether “merchant or product
specific information” includes “weighting factors.” See Tr. at 11:1–6; 28:17–25. Intrinsic
evidence, including the claim language, the specification, and the prosecution history,
demonstrates “weighting factors” are not a part of “merchant or product specific information.”
Phillips, 415 F.3d at 1317 (“[W]hile extrinsic evidence can shed useful light on the relevant art,
we have explained that it is less significant than the intrinsic record in determining the legally
operative meaning of claim language.” (internal quotation marks omitted)); see also C.R. Bard,
Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004), Vanderlande Indus. Nederland
BV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir. 2004); AstraZeneca AB v. Mutual
Pharm. Co., 384 F.3d 1333, 1337 (Fed. Cir .2004). Accordingly, the Court construes the term
“Merchant Comparison Information” / “Stored Comparison Information” to be “merchant or
product specific information not including weighting factors.”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “the actual data on the merchant or the
product”
Alternatively, “information used to compare
products or merchants”
Court’s Construction
merchant or product specific information not including weighting factors

IV. Disputed Claim Term #4a: “Non-Opinion Data”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary. “factual data or information that excludes data
based on survey information, opinion
Alternatively, “objective or statistical information, evaluation ratings by another
information (i.e., not subjective judgments entity or person, or weights entered by an
like ‘expert evaluations’)” 6 entity or person other than the consumer”

Plaintiff lists this disputed term in the following claims: claims 1 and 8 of the ‘429
patent, claims 2, 15, and 26 of the ‘041 patent, and claims 2, 14, and 29 of the ‘779 patent. Pl.’s
Op. Cl. Constr. Br. at 10. For example, claim 1 of the ‘429 patent recites “wherein the merchant
comparison information data includes non-opinion data.” The ‘429 patent at 22:37–38
(emphasis added).

As discussed supra in Section II(C), the Court split Term #4 in the parties’ Joint Claim
Construction Statement into Term #4a and Term #4b. During the Markman hearing, the parties
agreed to the Court’s approach of construing Term #4a and Term #4b as two discrete terms. See
Tr. at 36:12–22.

6
Plaintiff argues the term should include statistical information and does not need to be construed, but plaintiff does
not state in the opening brief regarding why the alternate construction is “objective or statistical information (i.e.,
not subjective judgments like ‘expert evaluations’).” Pl.’s Op. Cl. Constr. Br. at 10.

- 19 -
A. Parties’ Arguments

The parties dispute whether “non-opinion data” has the same meaning as “merchant
comparison information excluding opinion data and survey result data” / “merchant comparison
information excludes information obtained from surveys and information specifying the opinion
of a person” (the latter two collectively “the terms excluding opinion data”). See Exhibit A of
Joint Claim Construction Statement, ECF No. 49-a at 2–3. Plaintiff disagrees with the
government’s “one-size-fits-all” construction for the three terms, arguing the same construction
for all three terms “improperly rewrites the claims.” Pl.’s Resp. Cl. Constr. Br. at 13. Plaintiff
does not dispute all three limitations were added during prosecution to “distinguish the present
claimed invention from the opinion systems of [prior art].” Id. Plaintiff, however, asserts the
amendments should be applied to each claim differently as demonstrated by patentee’s statement
during prosecution. Id. at 14 (citing Response to Office Action for U.S. Application No.
09/290,006 (Issued as U.S. Pat. No. 7,302,429) Dated 18 April 2005 (“the 18 April 2005 ROA of
the ‘429 patent”) at 9–10). Plaintiff argues “[the patentee’s] claim amendments added
substantially different limitations to clarify a fundamental distinction over the prior art expressed
in various different claims having different scope, [which] manifest the inventor’s intent to claim
different inventions using different language resulting in claims having different scope.” Id. at
15.

Plaintiff contends the term “non-opinion data” does not need to be construed, or,
alternatively, means “objective or statistical information (i.e., not subjective judgments like
‘expert evaluations’).” Pl.’s Op. Cl. Constr. Br. at 10. Plaintiff disputes the meaning of “survey
information” and objects to the government’s exclusion of “survey information” from non-
opinion data. Id. Plaintiff maintains non-opinion data should not exclude survey information,
because the patent and prosecution history distinguish “survey information” from “opinion data.”
See id. Plaintiff cites the language of claims 17 and 18 of the ‘429 patent as “mak[ing] clear that
survey result data and opinion data are two different things.” Id. at 10–11 (citing ‘429 Patent at
cols. 24:29–34 and 25:1–3) (claim 17 reciting “merchant comparison information excluding
opinion data and survey result data;” and claim 18 reciting “merchant comparison information
excludes information obtained from surveys and information specifying the opinion of a
person.”). Plaintiff contends the specification “describes ‘prior purchaser and consumer
feedback information (274),’ [which is a type of survey information], as comparison information
supplied by third parties.” Id. at 11 (citing ‘429 Patent at col. 6 ls. 11–25). Plaintiff asserts,
based on prosecution history, opinion data means “‘expert’ opinions (i.e., professional reviews)
such as those that were substituted for ‘needs, priorities, and preferences’ of the consumer in
[prior art], while “[s]urvey information, however, does not include so-called expert opinions.”
Id. at 11–12.

Plaintiff alleges the government’s construction excludes embodiments of the
specification. Pl.’s Resp. Cl. Constr. Br. at 17. According to plaintiff, usage of survey
information and evaluation rating by another are within the scope of the claims and are embodied
in the specification: “Figure 2G describes an exemplary set of ‘merchant specific information
collected by third parties’ including ‘merchant service rating 281,’ and ‘history of customer

- 20 -
complaints 283,’” and “‘boycott information 285,’” and Figure 2F “describes ‘prior purchaser
and consumer feedback information’ as a type of comparison information.” Id.

Plaintiff argues the government wrongly applies prosecution history disclaimer in its
construction because “[t]he prosecution history does [not] reflect statements of unambiguous
surrender of claim scope.” Id. at 15. According to plaintiff, “survey result data and information
obtained from surveys are explicitly excluded in ‘429 claims 17 and 18,” but these exclusions are
only for claims 17 and 18 of the ‘429 patent and “should [not] be read into ‘non-opinion data.’”
Id. at 16. Plaintiff asserts the prosecution history distinguishes between opinion information and
survey information. Id. (citing the 18 April 2005 ROA of the ‘429 patent at 9 (“the claims have
been amended to specifically recite merchant data in a manner that could not be interpreted to
cover survey information, opinion information, or ‘evaluation ratings.’”)). Plaintiff maintains
“the distinction of [prior art from the current claims] was based upon how survey information
was used (and manipulated) exclusively [in the prior art] rather than the fact that survey
information was used [in the prior art but not included in the current claims].” Id. Plaintiff
further explains in its reply brief how the patentee distinguished prior art, BizRate and Geller,
during prosecution: “BizRate used only opinion data for ranking,” and “Geller used only ‘expert
evaluation ratings’ to generate a rank, not ‘actual information.’” Pl.’s Reply. Cl. Constr. Br. at 7
(citing Request for Continued Examination under 37 C.F.R. §1.114 for U.S. Application No.
09/290,006 (Issued as U.S. Pat. No. 7,302,429) Dated 22 January 2007 (“the 22 January 2007
RCE of the ‘429 patent”) at 7–8). According to plaintiff, “neither of these distinctions [between
prior art and the current claims] ruled out using transparent, reliable survey data. Where
[patentee] intended to exclude all survey data, he explicitly claimed it (in ‘429 claims 17 and
18).” Id.

The government’s construction primarily relies on the prosecution history of the ‘429
patent. See Gov’t’s Op. Cl. Constr. Br. at 19–23. The government argues the requirement of
“factual data or information” reflects patentee’s statement made during prosecution to
distinguish prior art: “patentee argues ‘there is a qualitative difference between asking an
opinion of another person who will provide their opinion of your needs and preferences,’ i.e. the
system disclosed in [prior art], and ‘actually being able to check facts and weight the importance
of facts to make an objective determination according to a buyer’s own priorities,’ i.e. the alleged
invention of the Asserted Patents.” Id. at 19.

The government construes “non-opinion data” as having the same scope as “merchant
comparison information excluding opinion data and survey result data” / “merchant comparison
information excludes information obtained from surveys and information specifying the opinion
of a person” in view of patentee’s statements during prosecution of the ‘429 patent. See id. at
18–19. In particular, the government alleges the patentee “repeatedly and expressly” excluded
“survey information, opinion information, evaluation ratings by another entity or person, or
weights entered by an entity or person other than the consumer” from all the three terms. Id. at
20. The government cites the following prosecution statements to support its position:

Prosecution History Patentee’s Statements (all emphasis original from the
government’s brief)

- 21 -
The 18 April 2005 ROA Applicant amended the claims “[t]o clarify this distinction over
of the ‘429 patent at 9. the Geller reference and the Bizrate.com refences,” that the
recited merchant data did not “cover survey information, opinion
information, or ‘evaluation ratings.’”
The 18 April 2005 ROA “As specified in the claims (as amended), data of a merchant
of the ‘429 patent at 11. specifically excludes opinion data and weights entered by a
second person.”

The 18 April 2005 ROA distinguishing Geller because it multiplies the consumer-selected
of the ‘429 patent at 8. weight by a “product evaluation rating,” which is “a number
entered by a second person . . . , which expresses the ‘expert’s
[sic] opinion on how well the product fits a desired attribute or
answers a question.”

The 22 January 2007 RCE distinguishing Bizrate.com because it “actually refers to opinions
of the ‘429 patent at 7–8. of previous customers or staff held regarding the price they paid
or their opinion on availability of the product” rather than “the
use of actual price or other nonopinion [sic] data in the ranking of
merchants.”

The 22 January 2007 RCE distinguishing Geller because “the evaluation rating represents
of the ‘429 patent at 9. the expert’s opinion’ [sic] on what the consumer needs or wants,
and does not correspond to actual information on the product.”

Response to Notice of distinguishing Bizrate.com because it relied on ratings and
Non-Compliant evaluations from customers or Bizrate.com staff in the ranking
Amendment for U.S. process, rather than “the use of actual price or other nonopinion
Application No. [sic] data in the ranking of merchants.”
09/290,006 (Issued as
U.S. Pat. No. 7,302,429)
Dated 4 June 2007 (“the 4
June 2007 Response of
the ‘429 patent”) at 19.
The 4 June 2007 “The evaluation rating represents the expert’s opinion on what
Response of the ‘429 the consumer needs or wants, and does not correspond to actual
patent” at 21. information on the product.”

Id. at 20–21 (emphasis in original).

The government asserts non-opinion data cannot encompass survey information, because
patentee added the limitation of “non-opinion data” during prosecution to “distinguish the
present claimed invention from the opinion systems of BizRate.com,” and BizRate is a reference
patentee described as “us[ing] customer satisfaction surveys as the foundation of a business
reputation system that it presents to buyers.” Id. at 23 (citing the 18 April 2005 ROA of the ‘429
patent at 9–10; the 22 January 2007 RCE of the ‘429 patent at 8–9) (emphasis original).
According to the government, patentee amended the claims during prosecution to distinguish the

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prior art in a way that meant the claims “could not be interpreted to cover survey information,
opinion information, or ‘evaluation ratings.’” Id. (emphasis in original) (internal citation
omitted). The government also argues the patentee expressly distinguished survey response data
from “objective information” by referencing them as two separate terms. Id. at 23–24 (citing the
25 August 2004 RCE of the ‘429 patent at 10 (“This example uses both objective data (price and
time to delivery) and survey response data (ease of return rating) for merchant comparison
information data.”). The government claims plaintiff’s construction would improperly
encompass BizRate.com which patentee sought to distinguish, as “patentee specifically
characterized Bizrate.com as using opinion data because of its use of consumer feedback.”
Gov’t’s Resp. Cl. Constr. Br. at 12–13.

The government argues “patentee did not distinguish Bizrate [sic] because of how the
survey information was used, but rather because survey information is in itself opinion data.”
Gov’t’s Reply Cl. Constr. Br. at 15. The government also contends its reliance on prosecution
history to construe the terms “does not implicate prosecution history disclaimer.” Id. at 15–16.
According to the government, “[t]he term ‘opinion data’ does not have a generally agreed-upon
definition, and the specification never uses, much less discusses, the words ‘opinion’ or ‘non-
opinion,’” thus the government is relying on “the prosecution history, and patentee’s own
explanations of the terms, to understand the meaning of the claim language.” Id. at 16. The
government further notes patentee relies on the wrong Response in its argument: “[p]laintiff
cites to the patentee’s August 30, 2004 Request for Continued Examination for its
characterization of the distinction over Bizrate [sic], but the relevant amendments adding the
limitations, and accompanying argument, were not made until patentee’s April 21, 2005
Response.” Id. (internal citation omitted).

According to the government, the Federal Circuit has repeatedly noted “the claims of the
patent need not encompass all disclosed embodiments.” Gov’t’s Reply Cl. Constr. Br. at 17
(citing e.g., TIP Sys., L.L.C. v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir.
2008) (“Our precedent is replete with examples of subject matter that is included in the
specification, but is not claimed.”)). The government alleges “[p]laintiff’s reliance on Sandisk
Corp. v. Memorex Prods., Inc. is misplaced” because this decision “addressed the exclusion of
preferred embodiments, not the exclusion of any embodiments generally.” Id. (citing Sandisk
Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005)) (emphasis original). The
government argues “Figures 2F and 2G are described merely as ‘examples’ of merchant
comparison information that may be used, and are not preferred embodiments.” Id. (internal
citation omitted).

B. Analysis

1. The Court’s Preliminary Construction

Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction. Tr. at 7:9–17. In reaching the preliminary construction, the Court considered both
parties’ claim construction briefs and all referenced materials in full.

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The government proposes “non-opinion data” is construed to be “factual data or
information that excludes data based on survey information, opinion information, evaluation
ratings by another entity or person, or weights entered by an entity or person other than the
consumer.” Gov’t’s Op. Cl. Constr. Br. at 18–19. The government argues the requirement of
“factual data or information” reflects patentee’s statements during prosecution to distinguish
prior art. See id. Plaintiff’s reply brief agrees “non-opinion data” should be factual data or
information. See Pl.’s Resp. Cl. Constr. Br. at 17. Accordingly, the Court’s preliminary
construction adopted the government’s construction as “non-opinion data” is “factual data or
information” with certain exclusions.

The parties’ claim construction briefs focus their dispute on whether “survey
information” should be excluded from “non-opinion data.” Plaintiff argues neither the
specification nor the prosecution history supports excluding “survey information” from “non-
opinion data.” See Pl.’s Resp. Cl. Const. Br. at 15–17. The government asserts “survey
information” should be excluded because patentee distinguished the prior art by removing usage
of “survey information” from the claim scope. See Gov’t’s Op. Cl. Constr. Br. at 19. The
Court’s preliminary construction adopted plaintiff’s position that “survey information” should
not be excluded from “non-opinion data.”

The Court’s preliminary construction for this term was “factual data or information that
excludes data based on opinion information, evaluation ratings by another entity or person or
weight[s] entered by an entity or person other than the consumer.” Tr. at 7:13–17. The Court’s
preliminary construction adopted the government’s proposed language but removed “survey
information” from the list of exclusions.

At the commencement of discussing this term during the Markman hearing, plaintiff
proposed to clarify “weights entered by an entity or person other than the consumer” as “fixed
weights entered by an entity or person other than the consumer.” Tr. at 55:10–13. The
government accepted the plaintiff’s proposed change to “fixed weights entered by an entity or
person other than the consumer.” Tr. at 55:21–56:9. Plaintiff agreed to the revised preliminary
construction, “factual data or information that excludes data based on opinion information,
evaluation ratings by another entity or person, or fixed weights entered by an entity or person
other than the consumer,” in entirety. See Tr. at 56:9–12. The government agreed to the
language of the Court’s revised preliminary construction. See Tr. at 38:9–16; 55:21–56:2. The
government, however, insists “survey information” should be excluded from “non-opinion data.”
Id. Accordingly, after reviewing the Court’s proposed preliminary construction, the only dispute
between the parties is whether “non-opinion data” excludes “survey information.”

2. The Court’s Final Construction

a. Embodiments in the Specification

The parties dispute whether “survey information” should be excluded from “non-opinion
data.” See Tr. at 38:9–16; 56:13–15. The government argues “survey information” cannot be
included in “non-opinion data” because patentee distinguished “survey information” from “non-
opinion data” during prosecution to overcome the prior art. See Gov’t’s Op. Cl. Constr. Br. at

- 24 -
20–21. Plaintiff alleges a construction excluding “survey information” from “non-opinion data”
improperly eliminates embodiments disclosed in the specification. Pl.’s Resp. Cl. Constr. Br. at
17.

There is little guidance from the specification regarding the scope of “non-opinion data”
as the specification neither defines nor explains what “non-opinion data” is. Indeed, the term
“non-opinion data” does not appear once in the specification. Certain embodiments included in
the specification, though not explicitly delineating the scope of “non-opinion data,” help describe
what the inventor considers as “non-opinion data” used in the invention. See the ‘429 patent at
14: 48–49 (“Examples of comparison information items are illustrated in FIGS. 2A-2G.”).
Figure 2F illustrates examples of information “collected or created by third party agencies and
institutions including product evaluation and testing by third parties” and “prior purchaser and
consumer feedback information.” Id. at 6:11–25. Figure 2G describes an exemplary set of
“merchant specific information collected or created by third party agencies” including
“merchant’s service rating,” and “history of complaints by customers,” and boycott information.
Id. at 6:26–33.

According to plaintiff, Figures 2F and 2G embody the usage of survey information. Pl.’s
Resp. Cl. Constr. Br. at 17. If “non-opinion data” is construed to exclude survey information, the
construction would improperly exclude the two embodiments of Figures 2F and 2G. Id. (citing
SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1285 (Fed. Cir. 2005) (“[a] claim
construction that excludes a preferred embodiment . . . ‘is rarely, if ever correct.’”)). The
government does not dispute the embodiments of Figures 2F and 2G use survey information, or
its proposed construction would exclude the two embodiments. See Gov’t’s Reply Cl. Constr.
Br. at 17. The government argues the exclusion of embodiments in Figures 2F and 2G is not
improper because SanDisk “specifically addressed the exclusion of preferred embodiments, not
the exclusion of any embodiments generally,” while “Figures 2F and 2G are described merely as
‘examples’ of merchant comparison information.” Id. (emphasis original). According to the
government, the Federal Circuit has noted “the claims of the patent need not encompass all
disclosed embodiments.” Id. (quoting TIP Sys., L.L.C. v. Phillips & Brooks/Gladwin, Inc., 529
F.3d 1364, 1373 (Fed. Cir. 2008) (“Our precedent is replete with examples of subject matter that
is included in the specification, but is not claimed.”)). During the oral argument, plaintiff argued
all embodiments disclosed in the specification should correspond to the scope of certain
claims—patentee would not have included the two embodiments exemplifying usage of survey
information in the specification if patentee did not intend the invention to use survey
information. Tr. at 62:2–16.

In TIP Sys., L.L.C. v. Phillips & Brooks/Gladwin, Inc., the Federal Circuit construed the
terms “earpiece . . . and the mouthpiece . . . permanently extend[ing] out through the front wall”
and “mouthpiece ... and ... earpiece extending outward from said housing.” 529 F.3d at 1372.
TIP contended the district court erred in not construing the terms broadly enough to encompass
earpieces and mouthpieces inside the wall. Id. TIP asserted the broad construction was
supported by an alternative embodiment wherein “aural communication to earpiece and
mouthpiece is afforded through a sound transparent section of housing front wall, such as a
plurality of small holes.” Id. The Federal Circuit found “[t]he most natural reading of the claim
language . . . is that the earpiece and mouthpiece project out from the wall of the housing,” thus

- 25 -
“to construe the claim term to encompass the alternative embodiment in this case would
contradict the language of the claims.” Id. at 1373. Accordingly, the Federal Circuit held “the
mere fact that there is an alternative embodiment disclosed in the patent that is not encompassed
by district court’s claim construction does not outweigh the language of the claim, especially
when the court’s construction is supported by the intrinsic evidence.” Id. (citing Schoenhaus v.
Genesco, Inc., 440 F.3d 1354, 1359 (Fed. Cir. 2006) (holding the term “rigid” cannot be
construed to encompass “semi-rigid,” because the “semi-rigid” embodiment in the specification
was insufficient to overcome “the conventional usage of ‘rigid’ by ordinary practitioners in the
field” and the prosecution history does not support the broad construction); Maxwell v. J. Baker,
Inc., 86 F.3d 1098, 1108 n.3 (Fed. Cir. 1996) (adopting a narrower construction because patentee
dedicated certain embodiments to the public by not claiming them in the initial set of claims
submitting to the Patent Office for examination—“this situation is different from that where
prosecution history estoppel might apply, when broader claims were submitted and the claims
were narrowed during prosecution”); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562–63
(Fed. Cir. 1991) (finding no literal infringement because patentee did not claim the element in its
application)).

TIP Sys. does not support the government’s proposal to exclude the embodiments of
Figures 2F and 2G from “non-opinion data.” Rather than the government’s generalized assertion
“the claims of the patent need not encompass all disclosed embodiments,” Gov’t’s Reply Cl.
Constr. Br. at 17, the Federal Circuit’s conclusion in TIP Sys. is a result of carefully weighing the
plain language of the asserted claims and the disclosed embodiments. When a construction is
well supported by intrinsic evidence, the Federal Circuit allows the construction to exclude
certain embodiments if including the embodiments would contradict a plain reading of the claim
language. In other words, excluding embodiments from a claim construction is not a matter of
course and requires strong support. The context of TIP Sys. is not transferrable to the
construction of “non-opinion data.” Here, the government fails to allege any specific support to
exclude the embodiments of Figures 2F and 2G from the construction “non-opinion data.”
Unlike TIP Sys., including the embodiments of Figures 2F and 2G, which use survey information
as comparison information, does not contradict the plain reading of “non-opinion data.”

The government further argues plaintiff’s reliance on SanDisk Corp. v. Memorex Prods.,
Inc. is “misplaced” because SanDisk “specifically addressed the exclusion of preferred
embodiments, not the exclusion of any embodiments generally.” Gov’t’s Reply Cl. Constr. Br. at
17 (emphasis original). In SanDisk, the district court’s claim construction foreclosed possible
embodiments in the specification. 415 F.3d at 1285. The Federal Circuit held the district court
erred in its claim construction because “[its] speculative treatment of the preferred embodiment
is unsupported by the patent specification, not grounded in the record, and contrary to the
reading suggested by all parties.” Id. at 1285 and 1292. The Federal Circuit did not reject the
district court’s claim construction simply because the excluded embodiments are “preferred
embodiments.” Rather, the trial court treated those embodiments speculatively as the trial
court’s reasoning was “unsupported by the patent specification, not grounded in the record, and
contrary to the reading suggested by all parties.” Id. at 1285.

The government reads SanDisk as specifically addressing exclusion of preferred
embodiments. See Gov’t’s Reply Cl. Constr. Br. at 17. During oral argument, the government

- 26 -
argued Figures 2F and 2G can be excluded because the specification does not explicitly label
them as being “preferred,” and “[i]f everything is a preferred embodiment, then nothing is a
preferred embodiment.” Tr. at 64:9–15. The government misreads SanDisk by ignoring the
Federal Circuit’s reasoning. Based on SanDisk, the Court does not need to decide whether the
embodiments of Figures 2F and 2G are preferred embodiments, as the Court’s claim construction
is supported by intrinsic evidence and not treating the embodiments speculatively. The
specification teaches the embodiments of Figures 2F and 2G are “[e]xamples of comparison
information items.” The ‘429 patent at 14:48–49. The parties agree the embodiments of Figures
2F and 2G use survey information in the process of ranking merchants. See Pl.’s Resp. Cl.
Constr. Br. at 17; Gov’t’s Reply Cl. Constr. Br. at 17. Additionally, construing the term “non-
opinion data” to encompass embodiments of Figures 2F and 2G does not contradict a plain
reading of the claim language or any other part of the specification. Accordingly, the term “non-
opinion data” can and should be construed to encompass the two embodiments in the
specification. See PSN Ill., LLC v. Ivoclar Vivadent, Inc., 525 F.3d 1159, 1166 (Fed. Cir. 2008)
(holding the term “can and should be construed in a way that encompasses the preferred
embodiment” because the construction should “neither exclude nor ignore the preferred
embodiment”).

b. Prosecution History

The government asserts the prosecution history “repeatedly and expressly” identified
survey information as being excluded from the scope of “non-opinion data.” Gov’t’s Op. Cl.
Constr. Br. at 20. According to the government, patentee added the limitation of “non-opinion
data” during prosecution to distinguish the claims from “the opinion systems of BizRate.com.”
Id. at 23. Plaintiff contends the government’s characterizations of the prosecution history errs in
at least two aspects. First, the primary distinction of the current invention from the prior art is
“how survey information was used (and manipulated) exclusively [in the prior art] rather than the
fact that survey information was used [in the prior art].” Pl.’s Resp. Cl. Const. Br. at 16; see also
Tr. at 59:14–18. Second, patentee’s prosecution statements should not be treated as disclaiming
the claim scope encompassing using survey information. Pl.’s Resp. Cl. Constr. Br. at 15.

i. Prior Art

“Non-opinion data” first appeared in the prosecution history in the patentees’ response
dated 18 April 2015 to a non-final Office Action. Patentee amended claim 1 as:

1. (Amended Three Times) In an online comparison system, a
method of ranking prospective merchants comprising:
receiving information related to a potential consumer
purchase;
receiving a plurality of merchant comparison information
data for a plurality of merchants capable of completing the
potential consumer purchase, the merchant comparison
information data for a merchant organized into a plurality of
categories, wherein the merchant comparison information data

- 27 -
includes non-opinion data from at least two categories from: price
category . . . .

The 18 April 2005 ROA of the ‘429 patent at 2 (emphasis added) (Underlined language was
added by patentee for the first time in prosecution.). The amendment was prompted by the
Examiner’s non-final Office Acton issued on 16 November 2004 (“November 2004 Office
Action”), in which the Examiner cited BizRate and Geller as rendering the pending claims
obvious. See November 2004 Office Action at 6–7. Patentee distinguished Geller by
characterizing it as a “knowledgebase” system, which “relies upon experts who have entered
information about what the[y] perceive a consumer would find relevant.” The 18 April 2005
ROA of the ‘429 patent at 6–7. Patentee described Geller as “teach[ing] using opinion
information, in the form of expert ‘evaluation ratings,’” and BizRate as teaching “reliance on
survey response data.” Id. at 9. Patentee stated “[t]o clarify this distinction over the Geller
reference and the BizRate.com reference, the claims [1, 8, 17, and 18] have been amended to
specifically recite merchant data in a manner that could not be interpreted to cover survey
information, opinion information, or ‘evaluation ratings.’” Id.

The government asserts construing “non-opinion data” to include “survey information”
would lead to the claim scope improperly encompassing BizRate. Gov’t’s Resp. Cl. Constr. Br.
at 12–13. The government’s conclusion is premised on the assumption the use of “survey
information” is the only difference between patentee’s invention and BizRate. This assumption,
however, is not supported by prosecution history. If “non-opinion data” does not contain
“survey information,” patentee would have successfully removed BizRate as prior art against
claims 1 and 8 by amending them to recite “non-opinion data.” In contrast, the Examiner
maintained the same obviousness rejection against claims 1 and 8 based on BizRate in view of
Geller in the Office Action issued subsequent to patentee’s amendments. See Final Office
Action of the ‘429 Patent Dated 22 August 2006 at 9. Moreover, the Examiner recognized
BizRate differs from patentee’s invention as “BizRate does not explicitly teach the steps of
calculating a respective merchant data weight resultant value . . . .” November 2004 Office
Action at 6. During oral argument, counsel for plaintiff also explained the invention differs from
BizRate in more aspects: BizRate does not “disclose weighting factors” or apply weighting
factors to its use of opinion or non-opinion data; users cannot change any setting in BizRate as
all data in BizRate are “preset” by the system; BizRate uses “only opinion data” whereas the
present invention uses factual data. Tr. at 59:7–18, 69:3.

ii. Prosecution History Disclaimer

Plaintiff contends the government improperly relies on prosecution history to exclude
“survey information,” as, allegedly, “the prosecution history does [not] reflect statements of
unambiguous surrender of claim scope justifying these limitations.” Pl’s Resp. Cl. Constr. Br. at
15–16 (citing Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir.
2008) (“[A] patentee may limit the meaning of a claim term by making a clear and unmistakable
disavowal of scope during prosecution.”). The government contends it is not advancing a
prosecution history disclaimer argument, rather it merely relies on prosecution history to explain
what the term means. Gov’t’s Reply Cl. Constr. Br. at 16. The government, however, maintains
even if the Court is applying the standard for prosecution history disclaimer, patentee’s

- 28 -
statements during prosecution were a “clear and unmistakable disavowal” of the usage of
“survey information” in this invention. Id.; see also Tr. at 90:2–5.

During the oral argument, the government clarified it was not advancing prosecution
history disclaimer as the primary argument but using it in the alternative. 7 Tr. at 87:17–24.
Plaintiff’s counsel agreed prosecution history can be used to help explain the term without rising
to the level of prosecution history disclaimer. Tr. at 77:7–12. Plaintiff’s counsel, however,
alleged the government’s one-size-fits-all construction for Term #4a (“non-opinion data”) and
Term #4b (“merchant comparison information excluding opinion data and survey result data” /
“merchant comparison information excludes information obtained from surveys and information
specifying the opinion of a person”) was effectively arguing prosecution history disclaimer by
injecting patentee’s surrender made in Term #4b into “non-opinion data.” See Tr. at 76:6–23.

Patentee amended independent claims 1, 8, 17, and 18 in the 18 April 2005 response. 8
See the 18 April 2005 ROA of the ‘429 patent at 3–5. In claims 1 and 8, patentee added “non-
opinion data.” Id. at 3–4. In claims 17 and 18, patentee added “merchant comparison
information excluding opinion data or survey result data” and “merchant comparison information
exclud[ing] information obtained from surveys or specifying the opinion of a person,”
respectively. Id. at 4–5. In its remarks accompanying the amendments, patentee referenced the
claim amendments as a group. See id. at 9 (“To clarify this distinction over the Geller reference
and the BizRate.com reference, the claims have been amended to . . . .”) (emphasis added); id. at
11 (“As specified in the claims (as amended) . . . .”) (emphasis added). Nevertheless, patentee
stated the scope of claims 1 and 8 is different from the scope of claims 17 and 18 as claims 1 and
8 were “amended to emphasize this distinction between consumer preferences and expert
opinions, as well as non-opinion based and opinion-based data.” Id. at 10. In addition to
statements where patentee grouped the four independent claims, patentee also addressed the
amendment to each independent claim individually:

For example, Claim 1 has been amended to include “wherein the
merchant comparison information data includes non-opinion data
from at least two categories from: . . .”.

Claim 14 has been amended to point out that “the merchant data
entry values specifying non-opinion data” . . . .

7
During oral argument, when given time to argue with respect to prosecution history disclaimer, the government’s
counsel stated:
MR. GROSS: Yes, Your Honor. I think initially, I think you are correct that our
position -- I guess I would say it’s in the alternative. But our primary position is
that this is not prosecution history disclaimer.

Tr. at 87:17–24.
8
Claims 1, 10, 14, 36, and 39 were then pending independent claims. Claims 1, 14, 36, and 39 were issued into
claims 1, 8, 17, and 18 in the ‘429 patent. Claim 10 was canceled during prosecution. See Notice of Allowance for
the ‘429 patent dated 28 August 2007 at 2.

- 29 -
Claim 36 has been amended to specify that “the merchant
comparison information excluding opinion data or survey result
data” . . . .

Claim 39 has been amended to specify that “the retrieved merchant
comparison information excludes information obtained from
surveys or specifying the opinion of a person” . . . .

The 18 April 2005 ROA of the ‘429 patent at 9–10.

The government’s rationality for its one-size-fits-all construction of Term #4a and Term
#4b is that patentee treated claims 1, 8, 17, and 18 collectively during prosecution. See Gov’t’s
Op. Cl. Constr. Br at 21. The government, however, ignored the fact patentee deliberately chose
to use different language to amend claims 1 and 8 from claims 17 and 18. The government also
ignores patentee’s statements differentiating the scope of claims 1 and 8 from the scope of claims
17 and 18 as well as addressing the amendment to each independent claim individually. While
patentee intended to exclude “opinion data and survey result data” and “information obtained
from surveys and information specifying the opinion of a person” in claims 17 and 18, patentee
did not do so in claims 1 and 8. 9

Accordingly, the Court finds the government’s reliance on prosecution history for its one-
size-fits-all construction not supported by a comprehensive reading of patentee’s prosecution
statements. As to the government’s alternative argument based on prosecution history
disclaimer, the Court finds patentee did not make a “clear and unmistakable disavowal” of the
usage of “survey information” in claims 1 and 8 by merely referencing claims 1, 8, 17, and 18
collectively in some of its statements. See Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
1359 (Fed. Cir. 2017) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.
Cir. 2003)) (“[F]or prosecution disclaimer to attach, our precedent requires that the alleged
disavowing actions or statements made during prosecution be both clear and unmistakable.”).

C. Court’s Construction

For Term #4a, the only dispute between the parties after the Markman hearing is whether
“non-opinion data” excludes “survey information.” Excluding “survey information” from “non-
opinion data” improperly excludes two embodiments in the ‘429 patent and is not support by
prosecution history. Accordingly, the Court finds Term #4a, “non-opinion data,” does not
exclude “survey information.”

Plaintiff’s Proposed Construction The Government’s Proposed Construction

9
During the oral argument, the government could not explain why patentee deliberately excluded “opinion data”
and “survey result data” as two separate terms in claim 17 if survey information is opinion data. See Tr. at 46:25–
47:8 (the Court asking “if survey information is opinion data, why did the patentee use two different terms in that
claim”). The Court is not persuaded by the government’s answer that patentee’s amendment to claim 1 would not
have distinguished BizRate if survey information is separate and distinct from opinion data. Id. at 47:9–48:1.

- 30 -
No construction necessary “factual data or information that excludes data
based on survey information, opinion
Alternatively, “objective or statistical information, evaluation ratings by another
information (i.e., not subjective judgments entity or person, or weights entered by an
like ‘expert evaluations’)” entity or person other than the consumer”
Court’s Construction
Term #4a: factual data or information that excludes data based on opinion information,
evaluation ratings by another entity or person, or fixed weights entered by an entity or person
other than the consumer

V. Disputed Claim Terms #4b-1 and #4b-2: “Merchant Comparison Information
Excluding Opinion Data and Survey Result Data” (#4b-1) / “Merchant Comparison
Information Excludes Information Obtained From Surveys and Information
Specifying the Opinion of a Person” (#4b-2)

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “factual data or information that excludes data
based on survey information, opinion
Alternatively, 10 plaintiff’s proposed information, evaluation ratings by another
construction of merchant comparison entity or person, or weights entered by an
information that does not include subjective entity or person other than the consumer”
judgments or survey result data.

Plaintiff lists this disputed term in the following claims: claims 1, 8, and 17–18 of the
‘429 patent; claims 2, 15, and 26 of the ‘041 patent; and claims 2, 14, and 29 of the ‘779 patent
as including. Pl.’s Op. Cl. Constr. Br. at 12. For example, claim 17 of the ‘429 patent recites
“[a] method of ranking merchants in an online comparison system, comprising . . . retrieving
merchant comparison information data of merchants offering said product or service from a
database, the retrieved merchant comparison information data corresponding to the entered query
information, the merchant comparison information excluding opinion data and survey result
data.” ‘429 Patent at col. 24 ls. 17–46. Claim 18 of the ‘429 patent recites “[a] method of
ranking merchants in an online comparison system, comprising . . . retrieving the merchant
comparison information of merchants . . . wherein the retrieved merchant comparison
information excludes information obtained from surveys and information specifying the opinion
of a person.” Id. at col. 24 l. 47 – col. 25 l. 7.

A. Parties Arguments

Plaintiff objects to the government’s inclusion of “factual data or information” in
construing Term #4b arguing it conflicts with how the government construes “merchant
comparison information:” the government’s proposed construction of Term #4b “implicitly”

10
Plaintiff argues “no construction is necessary” for these two terms, and “should the court find that construction is
appropriate,” plaintiff argues the construction of these terms should be consistent with the construction of “merchant
comparison information” when “merchant comparison information” is used as a “stand-alone term.” Pl.’s Op. Cl.
Constr. Br. at 13.

- 31 -
construes the “merchant comparison information” portion of the term to mean “factual data or
information,” whereas the government proposes the construction of “merchant comparison
information,” as a stand-alone term, is “the actual data on the merchant or the product.” Pl.’s
Op. Cl. Constr. Br. at 13.

The government construes Term #4b to have the same meaning as “non-opinion data.”
See Gov’t’s Op. Cl. Constr. Br. at 18–19. Plaintiff disagrees because “different claim terms are
presumed to have different meanings.” Pl.’s Resp. Cl. Constr. Br. at 13 (citing BASF Plant Sci.,
LP v. Commonwealth Sci. & Indus. Research Org., No. 2:17-cv-503, 2019 WL 1922521, at *7
(E.D. Va. Apr. 29, 2019) (quoting MicroStrategy Inc. v. Business Objects Americas, 238 F.
App’x, 605, 609 (Fed. Cir. 2007))).

The government acknowledges “the language of the terms . . . differs between claims”
but argues Terms #4a and #4b should have the same meaning because “the patentee treated the
claims as having the same scope in its arguments to the USPTO.” Gov’t’s Resp. Cl. Constr. Br.
at 12 (citing Desper Prods. v. QSound Labs., Inc., 157 F.3d 1325 (Fed. Cir. 1998) (holding two
claims reciting different terms have the same scope due to the patentee’s statement during
prosecution despite the differences in plain meaning of the two terms). The government also
alleges BASF does not support plaintiff’s position because BASF holds “the presumption of
different meanings [can be] rebutted” when the two different terms refer to the same thing.
Gov’t’s Reply Cl. Constr. Br. at 13 (citing BASF Plant Sci., LP at *8).

B. Analysis

1. The Court’s preliminary construction

Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction. Tr. at 7:18–8:2. In reaching the preliminary construction, the Court considered
both parties’ claim construction briefs and all referenced materials in full.

Plaintiff proposes the “merchant comparison information” portion of the terms should be
construed consistently with “merchant comparison information” as a stand-alone term. Pl.’s Op.
Cl. Constr. Br. at 13. The Court agrees the same term should have the same meaning. Phillips,
415 F.3d at 1314 (“Because claim terms are normally used consistently throughout the patent,
the usage of a term in one claim can often illuminate the meaning of the same term in other
claims.”) (internal citation omitted). The Court construes the stand-alone term “merchant
comparison information” as “merchant or product specific information.” See supra. Thus, the
“merchant comparison information” portion of the terms in the Court’s preliminary construction
had the same construction of “merchant or product specific information.” The Court’s
preliminary construction also adopted plaintiff’s position that the terms are clear and require no
construction.

The Court’s preliminary construction of Term #4b was plain and ordinary, i.e., “merchant
or product specific information excluding opinion data and survey result data” for Term #4b-1
and “merchant or product specific information excluding information obtained from surveys and

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information specifying the opinion of a person” for Term #4b-2. 11 Tr. at 7:18–8:2. During the
Markman hearing, the parties agreed Term #4b-1 and Term #4b-2 both are construed to have
their plain and ordinary meaning. See Tr. at 75:10–15, 78:16–79:2. As suggested by the
government and agreed by plaintiff, the scope of “opinion data” in Term #4b-1 is construed
consistently with Term #4a “non-opinion data.” Id. at 80:6–10, 92:16–93:4. Therefore, the
parties have no dispute regarding the scope of Term #4b-1. Id. at 92:25–93:11.

The parties, however, raised a dispute regarding whether Term #4b-2 has the same scope
as Term #4b-1. Id. at 95:14–96:2. In particular, the parties dispute whether “opinion data” has an
identical scope as “information specifying the opinion of a person.” Tr. at 102:6–13. Plaintiff
contends “information specifying the opinion of a person” is “within the set of opinion data.” Tr.
at 92:22–24. The government maintains “information specifying the opinion of a person is
coextensive with opinion data. Those two terms are the same.” Tr. at 95:18–20.

Accordingly, after reviewing the Court’s proposed preliminary construction, the only
dispute between the parties after the Markman hearing is the scope of Term #4b-2, in particular,
whether the scope of “information specifying the opinion of a person” is a subset within the
scope of “opinion data” or the two terms are identical. See Tr. at 95:16–24, 102:6–16.

2. The Court’s Final Construction

a. Whether Term #4b Has the Same Scope as Term #4a

During the Markman hearing, the parties agreed to the Court’s approach of construing
Term #4a and Term #4b as two discrete terms. See Tr. at 36:12–22. As the parties disagree on
whether Term #4a and Term #4b have the same meaning, the Court must resolve the dispute as
part of claim construction. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
1351, 1360 (Fed. Cir. 2008) (quoting Markman, 52 F.3d at 976) (“The purpose of claim
construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be
infringed.’”).

Federal Circuit precedent establishes different claims are presumed to have different
meanings. MicroStrategy Inc., 238 F. App’x at 609; see also CAE Screenplates Inc. v. Heinrich
Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), 224 F.3d at 1317 (“In the
absence of any evidence to the contrary, we must presume that the use of these different terms in
the claims connotes different meanings.”), Applied Med. Res. Corp. v. U.S. Surgical Corp., 448
F.3d 1324, 1333 n. 3 (Fed.Cir.2006) (“[T]he use of two terms in a claim requires that they
connote different meanings . . . .”). Based on the plain language of Term #4a and #4b, they are
presumed to have different meanings.

11
The Court’s preliminary construction sent to the parties before the Markman hearing was “merchant specific
information excluding opinion data and survey result data” and “merchant specific information excluding
information obtained from surveys and information specifying the opinion of a person.” During the Markman
hearing, the Court clarified with the parties the Court’s proposed preliminary construction includes “merchant or
product specific information.” Tr. at 84:8–85:1.

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The government relies on Desper to argue different terms can have the same meaning.
Gov’t’s Resp. Cl. Constr. Br. at 11–12 (citing Desper Prods., 157 F.3d at 1336–37). In Desper,
the district court construed “prior to” to have the same meaning as “following.” Id. at 1337. The
Federal Circuit held the district court’s “construction is supported by the written description
because this is precisely how the preferred embodiment of the invention works.” Id. at 1336. In
addition, the Federal Circuit agreed with the district court “the prosecution history tips the
balance in favor of construing ‘prior to’ in the same manner as ‘following.’” Id. at 1337.

Desper is not applicable to construction of Terms #4a and #4b. The government does not
identify any embodiment in the ‘429 patent where “non-opinion data” is precisely used in the
same way as “merchant comparison information excluding opinion data and survey result data”
or “merchant comparison information excludes information obtained from surveys and
information specifying the opinion of a person.” As to the consideration of prosecution history,
patentee amended independent claims 1, 8, 17, and 18 in the 18 April 2005 response. See the 18
April 2005 ROA of the ‘429 patent at 3–5. In claims 1 and 8, patentee added “non-opinion
data.” Id. at 3–4. In claims 17 and 18, patentee added “merchant comparison information
excluding opinion data or survey result data” and “merchant comparison information exclud[ing]
information obtained from surveys or specifying the opinion of a person,” respectively. Id. at 4–
5. Patentee stated the scope of claims 1 and 8 are different from claims 17 and 18 as claims 1
and 8 were “amended to emphasize this distinction between consumer preferences and expert
opinions, as well as non-opinion based and opinion-based data.” Id. at 10. Thus, unlike Desper,
the prosecution history here “tips the balance in favor of” construing Term #4a differently from
#4b.

The government also contends plaintiff’s reliance on BASF is misplaced because BASF
held “the presumption of different meanings [of different terms was] rebutted” by two different
terms referring to the same thing. Gov’t’s Reply Cl. Constr. Br. at 13 (citing BASF Plant Sci.,
LP at *8). The claim in BASF recites “a seed-specific promoter obtained from flax” following
by a recitation of second sequence “non-native to said flax seed-preferred promoter.” BASF
Plant Sci., LP at *8 (emphasis original). The BASF court found the claim language indicates
“seed-specific promoter” and “seed-preferred promoter,” “although different terms, refer to the
same thing.” Id. The BASF court thus held “the presumption of different meanings is rebutted”
by the claim language using “said.” Id. The situation in BASF does not resemble Terms #4a and
#4b here—the claims do not contain such a word as “said” connecting Terms #4a and #4b for
them to refer to the same thing.

b. Construction of Term #4b-2

During the Markman hearing, the parties agreed both terms within Term #4b have their
plain and ordinary meaning. See Tr. at 75:10–15; Tr. at 78:16–79:2. The parties, however,
cannot agree on the scope of “merchant comparison information excludes information obtained
from surveys and information specifying the opinion of a person.” In particular, the parties
dispute whether “information specifying the opinion of a person” has the identical scope as
“opinion data” in Term #4a or is a subset within “opinion data.” Id. at 95:16–24. The
government characterizes the dispute as “a quintessential O2 Micro question of what is the scope
of the claims.” Id. at 86:2–6. The Court therefore must resolve the parties’ dispute on the scope

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of “information specifying the opinion of a person” versus “opinion data.” O2 Micro, 521 F.3d
at 1362 (“When the parties present a fundamental dispute regarding the scope of a claim term, it
is the court’s duty to resolve it.”)

As discussed supra in Section IV(B)(2)(b)(ii), the government’s one-size-fits-all
construction for all three terms in Term #4a and #4b is not supported by intrinsic evidence.
Nevertheless, plaintiff’s claim construction briefs also treated the two terms within Term #4b to
have the same meaning. During the Markman hearing, the Court’s preliminary construction led
the parties to dispute whether the two terms within Term #4b should have identical scope. The
parties agree both terms of Term #4b should have their respective plain and ordinary meanings.
See Tr. at 75:10–15; Tr. at 78:16–79:2. The parties also agree on the scope of “merchant
comparison information excluding opinion data and survey result data.” Tr. at 93:7–21. Thus,
whether the two terms within Term #4b have the same scope depends on whether the plain and
ordinary meaning of “information specifying the opinion of a person” is the same as “opinion
data.”

As agreed by the parties during oral argument, the scope of “opinion data” in Term #4b-1
is construed consistently as in Term #4a “non-opinion data.” Tr. at 80:6–10, 92:16–93:4. The
Court construes “non-opinion data” as “factual data or information that excludes data based on
opinion information, evaluation ratings by another entity or person, or fixed weights entered by
an entity or person other than the consumer.” See supra. Given the parties’ agreement on the
consistent reading for “opinion data” between Term #4a and Term #4b-1, “opinion data” in Term
#4b-1 encompasses “data based on opinion information, evaluation ratings by another entity or
person, or fixed weights entered by an entity or person other than the consumer.” If the Court
accepts the government’s view that “opinion data” has the identical scope as “information
specifying the opinion of a person,” “information specifying the opinion of a person” would also
encompass “data based on opinion information, evaluation ratings by another entity or person, or
fixed weights entered by an entity or person other than the consumer.” This construction
contradicts a plain reading of the language, as “evaluation ratings” and “fixed weights” can be
entered by either a person or an entity. Accordingly, the scope of “information specifying the
opinion of a person” must alternatively be a subset of “opinion data.”

The government further maintains, because it construes Term #4b-1 and Term #4b-2 to
have the same scope, Term #4b-2 should also exclude “evaluation ratings by another entity or
person, or fixed weights entered by an entity or person other than the consumer.” Tr. at 78:21–
79:1; Tr. at 93:7–21. Plaintiff characterizes the government’s contention as a question for
infringement, not a question for claim construction. Tr. at 80:22–81:4 (plaintiff’s counsel: “If
the concern is that the government thinks that we are going to argue on infringement that an
evaluation rating by another entity or person is not the opinion of a person, we are not going to
do that. I mean, that would not be consistent with the claim language.”). The government
disagreed and viewed the dispute as “a quintessential O2 Micro question of what is the scope of
the claims.” Id. at 86:2–6. The Court determines the scope of Terms #4b-2 is broader than Term
#4b-1, as the excluded scope of “information specifying the opinion of a person” in Term #4b-2
is narrower than the excluded scope of “opinion data” in Term #4b-1. Accordingly, the parties’
O2 Micro question is resolved, and if the parties have disputes on whether a particular feature in
the alleged infringing product constitutes “evaluation ratings by another entity or person, or fixed

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weights entered by an entity or person other than the consumer” or “information specifying the
opinion of a person,” that is a question left for future infringement disputes. See O2 Micro, 521
F.3d at 1360 (quoting Markman, 52 F.3d at 976) (“The purpose of claim construction is to
‘determin[e] the meaning and scope of the patent claims asserted to be infringed.’”).

C. Court’s Construction

By agreement of the parties, Term #4b-1 is construed to have its plain and ordinary
meaning, in which the scope of “opinion data” in Term #4b-1 is construed consistently with
Term #4a “non-opinion data.” The parties also agree Term #4b-2 should be construed to have its
plain and ordinary meaning but disagree on whether the scope of “information specifying the
opinion of a person” in Term #4b-2 is identical with the scope of “opinion data” in Term #4b-1.
The Court resolves the dispute by finding the scope of “information specifying the opinion of a
person” is a subset within “opinion data.”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “factual data or information that excludes data
based on survey information, opinion
Alternatively, Plaintiff’s proposed information, evaluation ratings by another
construction of merchant comparison entity or person, or weights entered by an
information that does not include subjective entity or person other than the consumer”
judgments or survey result data.
Court’s Construction
Term #4b-1 (“merchant comparison information excluding opinion data and survey result
data”): as agreed by the parties—plain and ordinary, merchant or product specific information
excluding opinion data and survey result data, wherein the scope of “opinion data” is
consistent with Term #4a “non-opinion data.”

Term #4b-2 (“merchant comparison information excludes information obtained from surveys
and information specifying the opinion of a person”): as construed by the Court—plain and
ordinary, merchant or product specific information excluding information obtained from
surveys and information specifying the opinion of a person, wherein the scope of “information
specifying the opinion of a person” is a subset within “opinion data.”

VI. Disputed Claim Term #2: “plurality”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “two or more”

Plaintiff lists this disputed term in the following claims: claims 1, 3, 8, 14, 19, 25, and 29
of the ‘429 patent, claims 1 and 2 of the ‘797 patent, and claims 1–3, 6, 9, 11–12, 15, 26–27, and

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32–34 of the ‘041 patent. 12 See Pl.’s Op. Cl. Constr. Br. at 3. For example, claim 1 of the ‘429
patent recites “receiving a plurality of merchant comparison information data for a plurality of
merchants.” ‘429 Patent at col. 22 ls. 25–56.

A. Parties Arguments

Plaintiff contends “[a]lthough the parties do not dispute [plurality’s] ordinary meaning,”
the construction of “plurality” is not its ordinary meaning of “two or more” in view of the
context. Pl’s Op. Cl. Constr. Br. at 3 (citing Dayco Prods., Inc. v. Total Containment, Inc., 258
F.3d 1317, 1328 (Fed. Cir. 2001) (“[P]lurality, when used in a claim, refers to two or more items,
absent some indication to the contrary.”) (internal quotation omitted); Versa Corp. v. Ag-Bag
Int’l Ltd., 392 F.3d 1325, 1330 (Fed. Cir. 2004) (“[I]n context, the plural can describe a universe
ranging from one to some higher number, rather than requiring more than one item.”)). Plaintiff
argues “plurality” in claim 1 of the ‘429 patent encompasses one or more, as “plurality refers to
the plurality of merchants, not a plurality of data for each of the plurality of merchants.” Id. at 4.
In particular, “the claim does not require multiple sets of data for each merchant.” Pl’s Resp. Cl.
Constr. Br. at 9. Plaintiff’s reply brief tentatively agrees to the government’s construction,
because the government’s response brief “appears to resolve [patentee’s] concern that a strict
application of the Government’s proposed construction would result in this claim requiring
multiple pieces of data from each of the plurality of merchants.” Pl.’s Reply Cl. Constr. Br. at 3.

The government contends “[t]he Federal Circuit has repeatedly held that the plain and
ordinary meaning of the term ‘plurality’ is simply ‘two or more’.” Gov’t’s Op. Cl. Constr. Br. at
15 (citing, e.g., Helena Labs. Corp. v. Alpha Sci. Corp., 274 Fed. App’x 900, 903 (Fed. Cir.
2008) (holding claims reciting a “plurality of stabilizing supports” are not met by product with
“at most a single stabilizing support.”)). The government cites the dictionary meaning of
“plurality” as “the state of being plural,” i.e., “more than one.” Id. at 14 (citing, e.g., Webster’s
New Collegiate Dictionary (9th ed. 1984)). Furthermore, the government argues the patentee
intended “plurality” to have a different meaning than “one or more” because patentee amended
the claims from “the plurality of products” to “one or more products” during the prosecution of
the ‘041 patent. Id. at 15.

The government alleges plaintiff’s construction violates the canon “the same word
appearing in the same claim should be interpreted consistently.” Gov’t’s Resp. Cl. Constr. Br. at
6. (citing Digit. Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335 (Fed. Cir. 1998); Varma v. IBM
Corp., 816 F.3d 1352 (Fed. Cir. 2016)). The government also argues, even assuming plaintiff is
right about the claim encompassing “receiving only a single piece of merchant comparison
information data from each of the plurality of merchants,” the term plurality still means two or
more. Id. at 6–7 (stating “receiving a single piece of merchant comparison information data
from each of two or more merchants would result in receiving two or more pieces of merchant
comparison information data”). The government asserts plaintiff’s argument is “rewriting the

12
Plaintiff’s opening brief lists “plurality” in claims 1–3, 6, 8–9, 11–12, 15–16, 19, 21, 26–27, 32–34 of the ’041
patent. See Pl.’s Op. Cl. Constr. Br. at 3. During oral argument, the government informed the Court the parties had
removed claims 8, 16, 19, and 21 from the list of asserted claims after discussion. Tr. at 103:11–17.

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claim to recite ‘receiving a plurality of merchant comparison information data for each of a
plurality of merchants.’” Gov’t’s Reply Cl. Constr. Br. at 9 (emphasis original).

B. The Court’s Preliminary Construction

Before the Markman hearing, the Court provided the parties with the Court’s preliminary
construction. Tr. at 8:3–6. In reaching the preliminary construction, the Court considered both
parties’ claim construction briefs and all referenced materials in full.

The government proposes the term “plurality” should have a plain and ordinary meaning
of “two or more.” Gov’t’s Op. Cl. Constr. Br. at 15. Plaintiff agrees to the government’s
proposed construction provided it does not require “multiple pieces of data from each of the
plurality of merchants.” Pl.’s Reply Cl. Constr. Br. at 3. Accordingly, the Court proposed to the
parties the term “plurality” is construed to have its plain and ordinary meaning of “two or more.”
Tr. at 8:3–6. During Markman, both parties agreed to the Court’s proposed preliminary
construction in entirety. Tr. at 106:12–15. The parties also agreed “the claim encompasses
receiving a single piece of merchant comparison information from each of two or more
merchants,” but the claim is not read “to require only one category of merchant comparison
information.” Tr. at 104:16–23, 106:2–5. After reviewing the Court’s proposed preliminary
construction at the Markman hearing, there is no dispute between the parties regarding the
construction of “plurality.”

C. The Court’s Final Construction

As agreed by both parties at the Markman hearing, the Court construes “plurality” to
have its plain and ordinary meaning of “two or more.”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary* “two or more”
Court’s Construction
Plain and ordinary, “two or more”

VII. Disputed Claim Term #3: “category”

Plaintiff’s Proposed Construction The Government’s Proposed Construction
No construction necessary “a class or division of similar types of
information or comparison data”

Plaintiff lists this disputed term in the following claims: claims 1 and 16–18 of the ‘429
patent, claims 8 and 19 of the ‘797 patent, and claims 6, 11–12, and 32–34 of the ‘041 patent. 13
See Pl.’s Op. Cl. Constr. Br. at 5. For example, claim 1 of the ‘429 patent recites “the merchant

13
Plaintiff lists claims 6, 11–12, 19, 21, and 32–34 of the ’041 patent as including the term “category” in its opening
brief. See Pl.’s Op. Cl. Constr. Br. at 5. During oral argument, the government informed the Court the parties had
removed claims 19 and 21 from the list of applicable claims after discussion. Tr. at 103:11–17.

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comparison information data includes non-opinion data from at least two categories from price
category, product availability category . . . .” ‘429 Patent at col. 22 ls. 37–42.

A. Parties Arguments

Plaintiff contends “categories are simply an organization concept that requires no
construction or redefinition.” Pl.’s Resp. Cl. Constr. Br. at 11. Plaintiff argues the government
improperly injects an “undefined terminology (‘similar types’ of information)” in its
construction, which “practically introduces a qualitative limitation for which the specification
provides little guidance.” Id. Plaintiff alleges the government misunderstood the nature of the
invention as requiring similar types of information in each category. Pl’s Reply Cl. Constr. Br.
at 5. (“[T]he customizable nature of the invention [allows] the consumer [to] categorize
information as she pleases. There is no intrinsic support for a requirement that the consumer’s
preferences must adhere to a similar/class or division categorization scheme.”).

The government contends the term should be given its plain and ordinary meaning.
Gov’t’s Resp. Cl. Constr. Br. at 8. The government identifies the dispute between the parties as
“even when the parties agree on ‘plain and ordinary meaning,’ a dispute can still exist because
the parties do not agree on what that meaning is.” Id. at 8–9 (citing Holmberg v. United States,
124 Fed. Cl. 610 (2016)). The government argues the claim language of various claims in the
asserted patent repeatedly demonstrates there is a hierarchy between “comparison information”
and “category.” Gov’t’s Op. Cl. Constr. Br. at 16–17 (citing, e.g., the ‘429 patent at col. 22 ls.
35–39 (“the merchant comparison information data for a merchant organized into a plurality of
categories,

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/4656253. Public record. Not legal advice.