DCT
0:17-cv-01231
MONKEYmedia Inc v. West Publishing Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MONKEYmedia, Inc. (Texas)
- Defendant: West Publishing Corp (Minnesota)
- Plaintiff’s Counsel: Winthrop & Weinstine, P.A.; Graves, Dougherty, Hearon & Moody
- Case Identification: 0:17-cv-01231, D. Minn., 04/19/2017
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota because Defendant is incorporated and has its headquarters in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Westlaw online legal research platforms infringe four patents related to a computer user interface that de-emphasizes non-salient information to highlight salient content for the user.
- Technical Context: The technology concerns methods for managing information overload in digital documents by variably displaying content, allowing users to view summaries or important excerpts in the context of a larger document.
- Key Procedural History: The complaint alleges that all four patents-in-suit are expired, indicating the action is for past damages only. Plaintiff also alleges that Defendant had pre-suit knowledge of the patents and infringement, and that Defendant stated it was not interested in licensing unless Plaintiff filed a lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 1992-12-14 | Earliest Priority Date for '938, '052, '730, and '126 Patents |
| 2001-01-23 | U.S. Patent No. 6,177,938 Issues |
| 2001-04-17 | U.S. Patent No. 6,219,052 Issues |
| 2002-01-01 | U.S. Patent No. 6,335,730 Issues |
| 2009-01-01 | Westlaw Classic platform in operation (approximate start date) |
| 2010-02-08 | WestlawNext platform introduced |
| 2013-02-19 | U.S. Patent No. 8,381,126 Issues |
| 2017-04-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,177,938 - "Computer User Interface with Non-Salience Deemphasis"
- Issued: January 23, 2001
The Invention Explained
- Problem Addressed: The patent addresses the difficulty users face when navigating large amounts of digital information, where it is challenging to see a detailed region of interest while maintaining the context of the entire information structure (’938 Patent, col. 1:12–26).
- The Patented Solution: The invention is a "relativity controller" that allows a user to mark "salient" segments of information (e.g., text, audio, video). The system then "shrinks" the non-salient portions to emphasize or magnify the salient ones within a single window display (’938 Patent, Abstract; col. 2:9-24). A corresponding scroll bar is modified to visually reflect this non-linear display, showing the relative positions and scope of the salient segments within the whole document (’938 Patent, col. 2:35-40).
- Technical Importance: The technology provides a method for users to cope with information overload by creating dynamic, context-aware summaries, or "fisheye views," without losing a sense of the overall document structure (’938 Patent, col. 2:16-18, 45-48).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 3 (Compl. ¶14).
- Independent Claim 1 contains four essential elements:
- A first means for selectively shrinking the display of a first segment of objects to emphasize a second segment.
- A second means for displaying a scroll bar alongside the objects.
- A third means connecting the first and second means, such that shrinking content causes a corresponding change in the scroll bar's appearance.
- A fourth means, a "perspective scalar button," for modifying the level of shrinkage and magnification.
U.S. Patent No. 6,219,052 - "Computer User Interface with Non-Salience Deemphasis"
- Issued: April 17, 2001
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’938 Patent, the ’052 Patent addresses the same problem of enabling users to navigate large information spaces by focusing on salient information while retaining overall context (’052 Patent, col. 1:13-27).
- The Patented Solution: The solution is materially the same as that described in the ’938 Patent: a system that shrinks non-salient information to emphasize salient segments, with a scroll bar that visually represents this modified, non-linear view (’052 Patent, Abstract; col. 2:10-44).
- Technical Importance: The invention provides a user-friendly tool to manage and visualize large data sets by modifying the "perceptual space that that information takes up" (’052 Patent, col. 2:20-22).
Key Claims at a Glance
- The complaint asserts infringement of "at least claim 2" (Compl. ¶18).
- Claim 2 of the issued patent is a dependent claim that relies on the limitations of claim 1. The complaint does not assert infringement of independent claim 1.
- Claim 2 adds the limitation that the means for changing the scroll bar's appearance does so by "changing the density of the appearance of the scroll bar," corresponding to the shrunken and non-shrunken segments.
U.S. Patent No. 6,335,730 - "Computer User Interface with Non-Salience Deemphasis"
- Issued: January 1, 2002
- Technology Synopsis: Belonging to the same patent family, the '730 Patent is directed to a computer user interface that allows for variable display of text based on its salience. The system de-emphasizes less important content to allow a user to focus on salient information while maintaining the context of the whole document (Compl. ¶8).
- Asserted Claims: The complaint asserts infringement of claims 1, 6, 7, and 8 (Compl. ¶22).
- Accused Features: The functionality of the Accused Products that displays salient excerpts from legal documents in response to a user's search query (Compl. ¶¶10-11).
U.S. Patent No. 8,381,126 - "Computer User Interface with Non-Salience Deemphasis"
- Issued: February 19, 2013
- Technology Synopsis: The '126 Patent claims computer-readable media and computer-implemented methods for controlling the display of information. The methods involve identifying salient text segments based on user-defined preferences and varying the display to make those segments more prominent by reducing the display space allocated to non-salient segments (Compl. ¶9; ’126 Patent, Abstract).
- Asserted Claims: The complaint asserts direct and indirect infringement of numerous claims, including independent claims 1, 46, 52, 61, 67, 70, and 77 (Compl. ¶¶26-27).
- Accused Features: The Accused Products themselves (as computer-readable media) and the methods they perform to summarize and display search results by showing salient excerpts (Compl. ¶¶10-11, 26).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are West Publishing's legal research platforms, including "Westlaw Classic," "WestlawNext" (later renamed "Thomson Reuters Westlaw"), "Westkm," and "West Case Notebook" (collectively, the "Accused Products") (Compl. ¶10).
- Functionality and Market Context: The Accused Products are described as online legal research tools offered on a subscription basis (Compl. ¶10). The allegedly infringing functionality allows a user to search databases using defined parameters. Instead of returning the full text of documents, the system retrieves and displays "only the salient excerpts from each of the documents" (Compl. ¶11). This allows salient portions from multiple documents to be displayed simultaneously. The complaint provides an example of searching for "excited utterance" and the system displaying excerpts containing that highlighted phrase. The interface allegedly includes a "detail control" button that allows the user to control the level of detail in the results (Compl. ¶11).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 6,177,938 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first means... for selectively shrinking the display of a first segment of the objects displayed to emphasize the display of a second segment... | The Accused Products cause the computer to display "only the salient excerpts from each of the documents," thereby not displaying the full text of each document. | ¶11 | col. 2:10-15 |
| a second means for displaying alongside the displayed objects a scroll bar as part of the control device | The complaint does not provide sufficient detail for analysis of this element. | col. 2:6-9 | |
| a third means connecting the second means to the first means such that transformation of the object display into shrunken and non-shrunken segments causes a corresponding change in the appearance of those scroll bar portions... | The complaint does not provide sufficient detail for analysis of this element. | col. 2:35-40 | |
| a perspective scalar button... said computer having a fourth means responsive to activation of the perspective scalar button for modifying the level of shrinkage... | The WestlawNext interface included a "detail control" button by which the user can control the level of detail in the search results. | ¶11 | col. 2:25-30 |
Identified Points of Contention
- Scope Questions: Claim 1 is drafted in means-plus-function format, meaning its scope is limited to the corresponding structures described in the patent specification and their equivalents. A central question will be whether the accused functionality of displaying "excerpts" constitutes "selectively shrinking" other segments, as that term is enabled by the patent's disclosure. Further, it raises the question of whether the "detail control" button in the Accused Products is structurally equivalent to the "perspective scalar button" described in the patent.
- Technical Questions: The complaint does not allege any facts regarding how, or if, the scroll bar in the Accused Products changes its appearance to correspond with the display of salient excerpts, a required element of claim 1. This raises an evidentiary question about whether the Accused Products practice the "third means" of the claim.
- Pleading Sufficiency ('052 Patent): The complaint asserts claim 2 of the '052 Patent, which is a dependent claim, without asserting the independent claim 1 from which it depends. This raises a threshold legal question as to whether the complaint states a valid cause of action for infringement of the '052 Patent.
V. Key Claim Terms for Construction
The Term: "selectively shrinking" (from '938 Patent, Claim 1)
Context and Importance: This term is critical to the infringement analysis. The dispute may turn on whether displaying only selected excerpts (an act of omission) meets the definition of "shrinking" the remaining, non-displayed content.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes the object as providing "means to shrink less important or less significant portions of the information displayed, with the result of magnifying the portions that the user deems significant" (’938 Patent, col. 2:10–14). This language could support an interpretation where omitting content entirely is the ultimate form of "shrinking" it to emphasize other content.
- Evidence for a Narrower Interpretation: Figure 11 and its corresponding description show non-salient text being compressed into condensed lines that remain visible, suggesting "shrinking" implies a reduction in allocated space rather than complete removal from the display (’938 Patent, Fig. 11; col. 6:3–12).
The Term: "perspective scalar button" (from '938 Patent, Claim 1)
Context and Importance: Plaintiff maps this term to Defendant's "detail control" button. The construction of this means-plus-function term will be defined by the corresponding structure in the specification, determining whether a simple detail-control toggle infringes. Practitioners may focus on this term because its structural definition will be key to the scope of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the function as "modifying the level of shrinkage and thus the level of magnification" (’938 Patent, col. 10:38-40), a general description that could plausibly read on any user control that adjusts the amount of detail shown.
- Evidence for a Narrower Interpretation: The detailed description links this function to a specific "relativity controller box" and a specific user action: clicking and dragging the mouse perpendicular to the scroll bar to change the magnification level (’938 Patent, col. 5:24-34; col. 6:35-57). This specific embodiment could be used to argue for a narrower construction of the required structure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all four patents. Inducement is based on allegations that Defendant encouraged its customers to use the Accused Products in an infringing manner (Compl. ¶¶14, 18, 22, 27). Contributory infringement is based on allegations that Defendant sold features that were especially made for use in infringing the patents and are not staple articles of commerce (Compl. ¶¶15, 19, 23, 28).
- Willful Infringement: Willfulness is alleged for all four patents. The complaint asserts that "long before" the lawsuit, Defendant had "actual knowledge" of the patents and its infringement, engaged in licensing discussions, and told Plaintiff it would not license unless sued (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and equivalence: will the means-plus-function limitations of the asserted claims, when construed in light of the patent's specification, be broad enough to read on the accused Westlaw feature of displaying search "excerpts," or will the disclosed embodiments require a more literal visual compression of non-salient text that is absent from the accused systems?
- A dispositive threshold question for the '052 Patent will be one of pleading sufficiency: does the assertion of a dependent claim without its independent base claim constitute a failure to state a claim upon which relief can be granted, potentially leading to an early dismissal of that part of the case?
- A central evidentiary question will be one of factual proof: can Plaintiff provide evidence that the Accused Products, particularly their scroll bars, perform the claimed function of dynamically changing appearance to reflect the relationship between salient and non-salient content, a specific technical limitation that is not detailed in the complaint's allegations?