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Unbridled "Optimization" Term in Software Patent Claim Leads to Finding of Indefiniteness

By Peter Zura

Data Retrieval Technology v. Sybase, Inc. et al., No. 3-08-cv-05481 (N.D. Ca., Nov. 8, 2010)

DRT sued defendants on patents directed to computer-implemented methods for retrieving information stored in databases without the need for human analysis of the source data.  One of the claims in the patent recited a driver that automatically obtains information about the data structure of a data source "wherein said information about the data structure leads to optimization of a new database in which information from said first database is to be stored."

One of the defendants moved for summary judgment of invalidity under 112(2), arguing that the claimed optimization feature rendered the claim insolubly ambiguous.  Under DRT's proposed claim construction, a database would be "optimized" when its performance ?with respect to a given characteristic? is superior to that of the data source from which it was created.  The problem here was that a specific "characteristic" was not provided in the patent.

The district court found this fatal to the patent:

The fundamental flaw here is that no such characteristic is in fact given. Thus, if one could identify a single characteristic of a database that is superior to that of the original source, the database would be ?optimized? within the meaning of the claim. As DRT?s expert Paul Bertucci stated in his deposition, ?[t]here are hundreds of [] potential characteristics? of a database that may be improved. . . . Further, Mr Bertucci admitted in his second declaration that ?the process of optimization involves tradeoffs -  i e, one design/configuration may provide improved performance for certain types of queries while at the same time, diminishing performance for other types of queries and database operations.?

It is clear that DRT?s proposed construction of ?optimization? fails to define any meaningful limitation. . . . The claim [] requires that the new database be ?optimiz[ed],? id, but under the proposed construction any such database could be considered optimized. One must only identify one of the hundreds of possible characteristics of the new database that performs better than that of the original data source. And because optimization necessarily involves tradeoffs, a database that is demonstrably inferior to the original data source with respect to the most important characteristics would still be superior with respect to some characteristic and therefore ?optimized.? A competitor would have no way to know whether a process for transforming a data source into a new database led to ?optimization? and would be subject to an infringement suit if the patent holder could locate a single characteristic of the database that is superior to that of the data source. Accordingly, DRT?s proposed construction is indefinite.

With regard to a narrowing construction of "optimization", the opinion noted that

The court is unable to adopt any narrowing construction of ?optimization? that is consistent with the language of the claim. DRT notes that ?the patent provides a number of examples of characteristics for which a database may be optimized? and suggests that ?the claim term is further limited when read in light of the specification by the examples provided by the specification.?  This suggestion fails to grasp ?the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim.? Phillips, 415 F3d at 1323. Although the specification can be used to help define unclear claim terms, it cannot be used to limit them. The patent specification provides examples of ?different systems which are optimized for different purposes,? specifically those ?optimized for data entry or storage vs speed or flexibility or data analysis and reporting, optimized for accounting data vs company data, and the like.? ?392 Patent at 1:34-37. But DRT does not argue that these examples actually define ?optimize,? which, as discussed above, means to improve performance with respect to any of a large number of possible characteristics. . . . Informatica?s motion for summary judgment of indefiniteness is supported by clear and convincing evidence and is accordingly GRANTED.

Read/download the opinion here (link)

Source: Docket Navigator

Full post as published by Two-Seventy-One Patent Blog on November 10, 2010 (boomark / email).