Print

Claim terms

JobDiva, Inc. v. Monster Worldwide, Inc.

Case Number: 1:13-cv-08229-KBF

On October 3, 2014, Judge Forrest construed terms of four JobDiva patents and one Monster patent. The JobDiva patents are:

  • U.S. Patent No. 8,234,221 ( “Recruitment vendor management system and method”)
  • U.S. Patent No. 7,711,573 (“Resume management and recruitment workflow system and method”)
  • U.S. Patent No. 8,280,823 (same)
  • U.S. Patent No. 8,463,715 (same)

The Monster patent is U.S. Patent No. 5,832,497 entitled “Electronic automated information exchange and management system.”

On October 31, 2014, the parties stipulated to dismissal of all claims and counterclaims, and asked that the court dismiss the action with prejudice but retain jurisdiction over the settlement agreement. Judge Forrest approved those requests. However, the parties also requested that the court vacate the claim construction order in regards to the JobDiva patents. The court declined.

Before construing the terms, Judge Forrest emphasized that claim construction presents mixed questions of law and fact, a theme relevant to Teva Pharms. v. Sandoz now pending at the Supreme Court:

Here, the parties’ expert witnesses offered conflicting interpretations of terms based on their reading of intrinsic evidence from the perspective of one of ordinary skill in the art. The Court had to, and did, assess the strengths and weaknesses of those interpretations and, in doing so, weighed the evidence. There is no other way to describe this process—there are sometimes, and were here, plain factual aspects to claim construction. Thus, where indicated, the Court’s determinations regarding the appropriate construction are mixed questions of law and fact.

She buttressed this conclusion with a citation from Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329, 333 n.7 (D. Del. 1995):

When two experts testify differently as to the meaning of a technical term, and the court embraces the view of one, the other, or neither while construing a patent claim as a matter of law, the court has engaged in weighing evidence and making credibility determinations. If those possessed of a higher commission wish to rely on a cold written record and engage in de novo review of all claim constructions, that is their privilege. But when the Federal Circuit Court of Appeals states that the trial court does not do something that the trial court does and must do to perform the judicial function, that court knowingly enters a land of sophistry and fiction.

Given the need to make factual determinations, Judge Forrest’s perception of the experts is likely important. She stated the following about the expert witnesses who testified with respect to the JobDiva patents:

The Court found a significant difference between the demeanor and credibility of [JobDiva’s witness] and [Monster’s witness]. [JobDiva’s witness] was argumentative and at times evasive. The Court was not left with the impression that his views were to be given great weight. In contrast, [Monster’s witness]. was highly credible and informative. He was forthcoming and clear. The Court is entirely comfortable placing great weight on his views.

The Constructions

Claim term:  “using a computer to improve a precision ratio when searching a resume database,” as used in the preambles of JobDiva’s ‘573 and ‘823 Patents;

Judge Forrest sided with Monster, finding the preambles limiting and the claim term indefinite. The court said that the construed language was added to the preambles to secure issuance. Thus, she said, the claim was a limitation. In finding the term indefinite, she accepted each of Monster’s arguments:

  • the term “precision ratio” can only be defined with reference to “relevant” results—a subjective term
  • the term “improve” is without a defined baseline or benchmark
  • there is no guidance as to how to test for “precision ratio”

Claim term:  “required term of experience,” as used in JobDiva’s ‘573, ‘823, ‘715, and ‘221 Patents;

Judge Forrest accepted Monster’s proposal: the “specified minimum duration of experience for a required skill or experience-related phrase.”

For terms referring to satisfying the “job description” or “search criteria,” Judge Forrest accepted Monster’s constructions:

  • “when the parsed resume satisfies the job description,” means “when (1) at least one skill or experience-related phrase in the parsed resume matches the required skill or experience-related phrase of the job description; and (2) the term of experience for the skill or experience- related phrase that matches the required skill or experience-related phrase satisfies a specified minimum duration of experience”
  • “parsed resume . . . satisfying the search criteria” means “parsed resume that includes a specified minimum duration of experience for a required skill or experience-related phrase”
  • “matching resume that satisfies the job description” means “a resume for which: (1) at least one ‘skill or experience-related phrase’ in the resume matches a ‘searchable phrase’ of the job description; and wherein (2) the ‘term of experience’ for the ‘skill or experience-related phrase’ that matches the ‘required skill or experience-related phrase’ satisfies the ‘required term of experience’ [i.e. the specified minimum duration of experience]”
  • “skill or experience-related phrase includes said at least one required skill or experience-related phrase, or at least one implying phrase for said at least one required skill or experience-related phrase, that satisfies the job description” means “skill or experience-related phrase includes said at least one required skill or experience-related phrase, or at least one implying phrase for said at least one required skill or experience-related phrase, accompanied by a term of experience for it that meets the job description.”

Claim term:  “means for receiving a result set in response to the database query,” as used in JobDiva’s ‘573, ‘823, and ‘715 Patents;

The parties agreed that this is a means-plus-function limitation, and that the function is the recited function. For the structure, Judge Forrest accepted Monster’s position: the proposed structure is “an algorithm that requires receiving a result set in response to a query based on a specified minimum duration of experience for a required skill or experience-related phrase.”

Claim term: “means for sending a database query to the resume database,” as used in JobDiva’s ‘573, ‘823, and ‘715 Patents;

The parties agreed that this is a means-plus-function limitation, and that the function is the recited function. For the structure, Judge Forrest accepted Monster’s position:  the proposed structure is “an algorithm that requires a query based on a specified minimum duration of experience for a required skill or experience-related phrase.”

Claim term: “graphical user interface, comprising a first display region . . .;and a second display region,” as used in JobDiva’s ‘221 Patent;

Judge Forrest accepted JobDiva’s construction: “graphical user interface comprising a first region . . . and a second region displayed on a screen at the same time.”

Claim term:  “personal and business-related characteristics that the candidate believes to be relevant to a prospective employer,” as used in JobDiva’s ‘221 Patent;

Judge Forrest accepted JobDiva’s construction: “personal and professional information that the candidate included in his or her resume”

With respect to Monster’s Patent, only one term, “iterative database query engine,” was construed. The court adopted Monster’s construction: “software that allows searches on a database to narrow or broaden the set of results returned to better match what a user intended to find.”

The articles on our Website include some of the publications and papers authored by our attorneys, both before and after they joined our firm. The content of these articles should not be taken as legal advice.