District Court Uses Extrinsic Evidence to Define URI Since Specification Example Does Not Provide an Alternate Definition

In BEA Systems, Inc. v. Web Balance, Inc., 80 U.S.P.Q.2d 1317 (D.Mass. 2006), after defendant Web Balance, Inc. brought infringement actions against BEA’s corporate clients in Illinois for infringement of U.S. Patent No. 6,128,279 (the  ‘279 patent), BEA’s sought declaratory judgment of non-infringement, invalidity, and unenforceability of the ‘279 patent. The Massachusetts District Court granted BEA’s motion for summary judgment of non-infringement of Web Balance’s patent.

As background, BEA’s “Weblogic” software uses a session ID to track a user’s interaction with a particular website when a user does not allow a cookie to track the user’s usage.  The session ID begins with a semicolon and is appended or inserted into the requested web address of the user—“http://www.zzz.com/app;jsessionid=1234.” 

The ‘279 patent describes a method and apparatus for web site computer servers to handle incoming requests from client computers using Uniform Resource Identifiers (URIs).  As related to claim 4, the method is for handling user requests, where the server handles the request or forwards it to a different computer for processing, according to whether there is a URI in the request. 

BEA alleged that the Weblogic software did not infringe the ‘279 patent since the second embodiment of the ‘279 patent considered the URI to be the discrete portion of a URL.  In this example, in a request of  “http://www.zzz.com/application,” the URI is the “/application” and the URL is the “www.zzz.com”.  Thus, Weblogic’s session ID could not be considered the URI. 

Web Balance countered that common usage of the terms URI and URL (as evidenced in Internet Request for Comments (RFC)) indicated that the entire string of characters in a web address constituted the URI, including both URL and session ID. 

The District Court began by using the analysis of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and concluding that, although the claims must be read in light of the specification, it is improper to confine such claims to any preferred embodiment.  However, since the language of the ‘279 patent did not adequately define the term “URI,” and the prosecution history was unrevealing, the District Court considered extrinsic evidence in the form of the parties’ expert testimony. 

While the District Court noted that both experts offered similar definitions of URI, the ‘279 patent language provided that a particular server would handle all the requests for a particular resource (URI).  Weblogic’s system however allowed a particular server to handle all the requests from a specific user (session ID) (as opposed to a resource).  Further, both systems would be recognized as performing their respective functions by those skilled in the art.  Since the session ID did not specify a particular resource, rather only a specific user, it was fundamentally different than a URI as would be understood by one skilled in the art in the context of the ‘279 patent.  As such, the District Court granted plaintiff’s motion for summary judgment of non-infringement.

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s