RetailMeNot, Inc. v. Honey Science LLC
1:18-cv-00937
| D. Del. | Nov 27, 2019Background
- RetailMeNot sued Honey alleging infringement of four RetailMeNot patents related to online coupon redemption; Honey counterclaimed alleging infringement of its own patent (the ’625 patent). The court conducted claim construction (Markman) and issued a Report & Recommendation to the district court.
- Disputed claim terms span RetailMeNot’s Header and Click-to-Copy patents (’688, ’853, ’335, ’769) and Honey’s ’625 patent; parties submitted a Joint Claim Construction Chart and argued at a Markman hearing.
- Several terms were agreed by the parties and adopted (e.g., “website,” certain offer/identifier phrases, “automatically” in one patent). The magistrate recommended constructions for multiple other contested terms.
- Key factual/prosecution records influenced constructions: (1) prosecution history of the ’688 parent application led to a prosecution disclaimer requiring spatial overlap of the flash object and coupon code; (2) amendments during prosecution of the ’625 patent removed antecedent references to a server, producing an indefiniteness finding for "the server" in certain dependent claims.
- The court resolved several indefiniteness challenges (rejecting indefiniteness for various "content item" terms and "the list" but finding "the server" indefinite) and clarified the meaning of terms like “feedback portion,” “secure sandbox,” and “webpage element of the merchant webpage.”
Issues
| Issue | RetailMeNot’s Argument | Honey’s Argument | Held |
|---|---|---|---|
| Meaning of “feedback portion” / whole phrase | Plain and ordinary meaning; phrase need not be split | "Feedback portion" invites user input; "indicative of historical user’s views" limited to previously posted comments | "feedback portion" = part of webpage inviting user input; "indicative of historical user’s views on the content" given its plain wording (not limited to comments) |
| “display portion overlaid with a coupon code and a flash object or other object” — spatial relation | Plain meaning; no requirement that coupon code and object overlap | Prosecution disclaimer requires the coupon code and the flash/other object together overlay the same part of the page | Construed to mean a coupon code and a flash object/other object together overlaying a part of the displayed webpage (disclaimer applied) |
| “secure sandbox” scope | Plain meaning or broader: prohibits clipboard or other similar user-accessible memory | Environment that at least prohibits access to the clipboard | "environment with restricted privileges which at least prohibits access to the clipboard of the client computing device" |
| “content item” / "content-item identifier" (RetailMeNot patents) | Plain meaning or "unit of information in a webpage" | Indefinite (no objective boundaries) | "content item" = unit of information in a webpage; "content-item identifier" = identifier of a unit of information in a webpage (not indefinite) |
| Definition of “webpage” | Patentee lexicography: collection of resources to be rendered, including execution scripts (e.g., JavaScript) | Should be limited to resources identified at one page/URL | Adopted patentee’s lexicographic definition: a collection of resources to be rendered by the browser and plug-ins, including execution of scripts such as JavaScript invoked by the webpage |
| “webpage element of the merchant webpage” — source and function | Plain and ordinary meaning; element can come from other servers | Must be from merchant’s server and limited to elements that display or receive input | No added narrowing; give the phrase its plain meaning as written (no merchant-server nor display/input limitation) |
| "communicating ... from content associated with the first domain to content associated with the second domain" | Plain meaning; occurs via client-side browser-accessible storage | Indefinite | Gave plain meaning as written (not indefinite) |
| "automatically" (’625) | Plain meaning | Means "without human intervention" | Construed as "without human intervention" |
| "the list [of digital codes]" (antecedent basis) | Indefinite for lack of antecedent | Implied antecedent: the list = the one or more digital codes received over the public network | Construed as "said one or more digital codes received over the public network" (antecedent implied) |
| "the server" in dependent claims (antecedent basis) | Indefinite (no antecedent) | Should be read to mean the server that transmitted the digital codes | Found indefinite — court will not reintroduce a term removed during prosecution |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (principles for claim construction; ordinary meaning to POSITA)
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.) (claim construction is a question of law for the court)
- O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (court may need to construe terms even when a party asks for plain meaning)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (specification is highly relevant and often dispositive in construction)
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (U.S.) (indefiniteness standard: claims must inform with reasonable certainty)
- Hakim v. Cannon Avent Grp., LLC, 479 F.3d 1313 (Fed. Cir.) (arguments made during prosecution of a parent application can bind the patentee)
- Mass. Inst. of Tech. v. Shire Pharms. Inc., 839 F.3d 1111 (Fed. Cir.) (requirements for clear and unmistakable prosecution disclaimer)