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Suffolk Techs., LLC v. AOL, Inc.

United States District Court, E.D. Virginia

April 18, 2013

SUFFOLK TECHNOLOGIES, LLC, Plaintiff,
v.
AOL, INC. AND GOOGLE INC., Defendants

Page 601

For Suffolk Technologies, LLC, Plaintiff, Counter Defendant: Craig Crandall Reilly, Law Office of Craig C. Reilly, Alexandria, VA.

For AOL Inc., Defendant, Counter Claimant: Stephen Edward Noona, LEAD ATTORNEY, Kaufman & Canoles, P.C., Norfolk, VA; Erica Nicole Andersen, Covington & Burling LLP (DC), Washington, DC; Matthew B. Chmiel, Kaufman & Canoles PC (Richmond), Richmond, VA.

For Google Inc., Defendant: Stephen Edward Noona, LEAD ATTORNEY, Kaufman & Canoles, P.C., Norfolk, VA; Matthew B. Chmiel, Kaufman & Canoles PC (Richmond), Richmond, VA.

OPINION

Page 602

MEMORANDUM OPINION

T. S. Ellis, III, United States District Judge.

In this patent infringement case, Suffolk Technologies LLC (" Suffolk" ), the sole owner of U.S. Patent No. 6,081,835 (" the '835 patent" ), sues defendant Google, Inc. (" Google" ) [1] for infringement and willful

Page 603

infringement of the '835 patent, which purports to cover several methods for controlling a server in response to requests for files from web pages. As is typical in a patent infringement suit, the parties dispute the meaning of several material claim terms and phrases, necessitating Markman [2] claim construction determinations.

On February 25, 2013, an Order issued setting forth the claim construction determinations. [3] This memorandum opinion sets forth the reasoning in support of the claim construction determinations.

I.

The genesis of the '835 patent is not in dispute. In September 1995, British Telecommunications, plc (" BT" ) learned that a webpage that disparaged BT was using a BT logo obtained from a BT server. It appears that the operator of the disparaging webpage was able to obtain the BT logo from the BT server simply by directing internet browsers accessing the disparaging website to obtain the BT logo from the BT server and then to display the BT logo as part of the disparaging webpage on the user's computer screen. The BT server was not capable of controlling access to the BT logo based on the source of the request for the BT logo and the disparaging webpage took advantage of this weakness.

To remedy this situation, the inventors, BT employees, devised the method that is claimed in the '835 patent. In essence, the '835 patent teaches a method for operating a file server that entails using information about a requesting webpage to decide whether the server should send the requested file to the requesting webpage. The first step in the method begins with a file, such as an HTML file for a webpage, requesting a file from a server. The method goes on to provide that the server looks at the identification signal of the requesting file, compares this received identification signal with a set of predetermined identification signals, and then decides whether or not to fulfill the request for a file. In addition to sending the requested file, the second server may also, based on the received identification signal, (i) send a 'dummy' file in place of the requested file or (ii) send a newly generated file--that is a file newly created, or an existing file that is tailored, based on the identification signal. Thus, the '835 patent solved BT's problem, as the BT server would be able to determine whether the request for the BT logo originated from a non-approved webpage and could either refuse to provide the BT logo or provide a dummy file instead.

The inventors, Stuart Antcliff, John Regnault, and Laurence Bradley, filed the original application for the '835 patent with the United States Patent and Trademark Office (" PTO" ) on July 19, 1996. The inventors claim priority based on an April 4, 1996 United Kingdom application for the same method. [4] On March 11, 1997, the inventors filed a continuation-in-part application with the PTO. On March 29,

Page 604

1999, the first Office Action issued, wherein the Examiner (i) rejected application claims 1, 2, 6, and 8-10 as having been anticipated by a patent to Graber, U.S. Patent No. 5,712,979, and (ii) rejected application claims 3-5 and 11-28 as being obvious over the Graber patents, in view of Weinman, " The CGI Book."

On July 28, 1999, the applicants responded to the Office Action by (i) cancelling claims 1-28 and, in place of those, (ii) adding application claims 29-46. More specifically, where application claim 1 required that the signal identify the 'origin' of the request, application claim 29 requires an identification signal to identify " an originating file from which said request originated." In addition to the new claims, the inventors argued that the obviousness rejection over the combination of Graber and the " CGI Book" was now addressed by the amended claims. In particular, the inventors argued that the " CGI Book" did not use identification signals; instead, it used an authorization process that required the manual entry of a user ID and password and, therefore, the " CGI Book" did not provide the identification element missing from the Graber patent.

On October 12, 1999, the Examiner allowed all of the pending claims of the amended application and, as a result, application claim 29 issued as independent claim 1 of the '835 patent. The remaining 17 claims are dependent on claim 1.

The '835 patent consists of eighteen claims. The claims in issue at the time of the issuance of the Order setting forth the Markman determinations read as follows:

1. A method of operating a file server, said method comprising the steps of:

receiving a request for a file;

determining if the request includes a received identification signal identifying an originating file from ...

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