Kenexa Brassring Inc. v. Taleo Corp.., Civ. No. 07–521–SLR.

Citation751 F.Supp.2d 735
Decision Date18 November 2010
Docket NumberCiv. No. 07–521–SLR.
PartiesKENEXA BRASSRING INC., Plaintiff,v.TALEO CORPORATION, et al., Defendants.
CourtUnited States District Courts. 3th Circuit. United States District Court (Delaware)

OPINION TEXT STARTS HERE

Frederick L. Cottrell III, Esquire, Steven J. Fineman, Esquire and Sarah R. Stafford, Esquire of Richards, Layton & Finger, P.A., Wilmington, DE, of Counsel, Matthew B. Lowrie, Esquire, Robert J. Silverman, Esquire, and Lucas I. Silva, Esquire of Foley & Lardner LLP, Boston, MA, for Plaintiff.Thomas C. Grimm, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, of Counsel, Richard D. Rochford, Jr., Esquire of Nixon Peabody LLP, Rochester, NY, Jason C. Kravitz, Esquire, Mark D. Robbins, Esquire, and Gina M. McCreadie, Esquire of Nixon Peabody LLP, Boston, MA, David C. McKone, Esquire of Nixon Peabody LLP, Chicago, IL, for Defendants.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.I. INTRODUCTION

Plaintiff Kenexa Brassring, Inc (plaintiff) owns two patents directed to systems and methods for accurately entering information into a highly structured database from multiple non-uniformly formatted data sources. On August 27, 2007, plaintiff commenced this patent infringement action against defendants Taleo Corporation (Taleo) and Vurv Technology, Inc. (“Vurv”) (collectively defendants) alleging that multiple products sold by each company infringe U.S. Patent Nos. 5,999,939 (“the '939 patent”) and 6,996,561 (“the '561 patent”). (D.I. 1) Defendants have asserted various affirmative defenses and counterclaims in response to plaintiffs complaint, including noninfringement and invalidity of the patents in suit. (D.I. 6)

The parties have proffered meanings for the disputed claim limitations and move for summary judgment. Plaintiff seeks summary judgment of infringement, and defendants seek summary judgment of invalidity of the patents in suit. (D.I. 156; D.I. 153) The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338. For the reasons that follow, the court the motions.

II. BACKGROUNDA. The Parties and the Technology at Issue

The technology at issue concerns systems and methods for collecting and maintaining information about job applicants. (D.I. 156 at 2) The parties provide “applicant tracking systems” that permit job applicants to submit resumes in electronic form over the internet. ( Id.) Once an applicant has submitted his resume, the system scans the resume looking for key information such as telephone number, work history, or educational background. ( Id.) Once this information is identified, it is extracted and presented to the applicant for verification. ( Id. at 2–3) During this time, the applicant may be asked to submit supplemental information that was not collected by the resume processing. ( Id. at 3) After the applicant verifies that the extracted information is correct and responds to the supplemental inquiries, the information is stored in a structured database. ( Id. at 2) It is through this verification that the systems ensure the accuracy of the information contained in the database.

Defendants Taleo and Vurv both sell products that compete with plaintiff's applicant tracking systems. ( Id. at 3) During the pendency of this case, Taleo acquired Vurv, and this combined entity has emerged as the market leader. ( Id.)

B. The Patents in Suit

1. The '939 patent

The '939 patent is directed to a system and method for accurately entering information into a highly structured database from multiple non-uniformly formatted data sources by allowing the user to interactively modify data extracted by the algorithm before said data is stored in the database. ('939 patent, abstract) The '939 patent issued on December 7, 1999 and claims priority to a provisional application filed on December 21, 1997. Plaintiff alleges that defendants' products infringe every claim of the '939 patent. (D.I. 156 at 10)

The patent contains twenty claims, three of which are independent. Independent claim 1 is illustrative:

A method for facilitating the accurate transfer of information from each of a plurality of nonuniformly formatted source data streams into a structured database, said method comprising the steps of:

supplying digital data representing each of a plurality of source data streams from a plurality of users, each said source data stream containing data corresponding to multiple discernible source data strings;

processing said digital data for extracting selected ones of said source data strings and generating related target data strings;

displaying a structured form comprised of multiple fields, each field being capable of accommodating a data string and wherein one or more of said fields have said target data strings inserted within;

enabling each user to modify and/or accept said target data strings inserted within said displayed form corresponding to said source data stream originating from said user; and

storing data corresponding to said data strings from said form fields into a database.

('939 patent, col. 6:35–55)

The remaining independent claims slightly alter claim 1 by claiming “a system for facilitating” instead of “a method for facilitating.” 2.

The '561 patent

The '561 patent is a continuation of an abandoned application which was, in turn, a continuation-in-part of the '939 patent. The '561 patent issued February 7, 2006. The '561 and '939 patents are so similar that the '561 patent is subject to a terminal disclaimer; its abstract is a mirror of the ' 939's abstract. The '561 patent contains 36 claims, five of which are independent. Plaintiff alleges that Taleo's products infringe claims 1–3, 5–16, and 18–36 of the '561 patent, and that Vurv's products infringe them all. (D.I. 156 at 10)

Independent claim 1 is illustrative of the asserted claims, and reads as follows:

A method for facilitating the accurate transfer of information into a structured database, said method comprising the steps of:

receiving digital data from one or more users representing one or more nonuniformly formatted source data streams, each said source data stream containing digital data corresponding to one or more discernable source data strings, wherein said digital data includes first digital data that is personal information about a first user;

extracting selected ones of said source data strings from said source data streams and generating related target data strings;

sending a structured form to said first user comprised of multiple fields, each field being capable of accommodating a data string and wherein any said generated target data strings are inserted;

enabling said first user to modify and/or accept said target data strings inserted within said structured form;

receiving digital data from said first user corresponding to said target data strings from said structured form fields; and

storing said digital data corresponding to said target data strings from said structured form fields in said database.

('561 patent, col. 8:45–9:3) As with the '939 patent, subsequent independent claims slightly alter claim 1 by claiming “a system for facilitating,” instead of “a method for facilitating.” (See, e.g., '561 patent, col. 9:21–45)

Other independent claims require the “data stream” to be a digital representation of a resume. Independent claim 21 highlights this change:

A method for facilitating the accurate transfer of resume information from a nonuniformly formatted source data stream to a structured database, said method comprising the steps of:

receiving a digital representation of a resume from a first job applicant;

extracting data strings from said digital representation and generating related target data strings;

sending at least a portion of said target data strings to said first job applicant; and

enabling said first job applicant to modify said target data strings to create modified data strings;

receiving said modified data strings from said first job applicant; and storing said modified data strings in the database.

('561 patent, col. 10:48–63)

C. The Accused Products

1. Vurv vs. Taleo

The accused products sold by defendants fall into two general groups: (1) those created by Taleo, e.g., Taleo's “Enterprise Edition,” “Business Edition,” and “Edge Edition;” and (2) those created by Vurv, e.g., Vurv's “Corporate Edition,” “Staffing Edition,” and “Express.” It is undisputed that the two groups of products function with at least one major difference: the Taleo products include a hyperlink that shows the user his or her original resume when clicked on, whereas the Vurv products include the user's original resume in a text box below where the fields containing the extracted strings are displayed. (D.I. 193 at 41:15–42:10)

2. Differentiation of products within the Vurv and Taleo product lines

The parties disagree as to whether plaintiff has shown that the products within the Taleo and Vurv lines operate in the same manner, i.e., do Taleo's “Enterprise Edition,” “Business Edition,” and “Edge Edition” all operate in the same manner for purposes of this suit, and do Vurv's “Corporate Edition,” “Staffing Edition,” and “Express” also function in the same way? Plaintiff claims that, in response to its contention interrogatories and questions to 30(b)(6) designees, defendants did not identify any manner in which the products operate differently. (D.I. 179 at 2–3) Defendants stress that plaintiff has the burden to demonstrate equivalent functionality. (D.I. 170 at 6–8) Plaintiff argues that defendants should be estopped from making this argument in view of their interrogatory and 30(b)(6) designee responses. (D.I. 179 at 2–3)

Specifically, plaintiffs interrogatory 10 asked:

For each Resume Product identified in the answer to Interrogatory 2, and for each claim of each of the patents-in-suit, identify any claim limitation that Vurv contends is not met, and for such limitation (i) state Vurvs interpretation of the claim limitation, (ii) explain why the limitation is not...

To continue reading

Request your trial
12 cases
  • Ultratec, Inc. v. Sorenson Commc'ns, Inc., 13–cv–346–bbc.
    • United States
    • United States District Courts. 7th Circuit. Western District of Wisconsin
    • August 28, 2014
    ...they were not directly implicated in determining whether infringer performed method steps); Kenexa Brassring, Inc. v. Taleo Corp., 751 F.Supp.2d 735, 751 (D.Del.2010) (fact that third party user uploaded resumes in first instance did not relieve defendant of responsibility for infringement ......
  • Ultratec, Inc. v. Sorenson Commc'ns, Inc.
    • United States
    • United States District Courts. 7th Circuit. Western District of Wisconsin
    • August 28, 2014
    ...they were not directly implicated in determining whether infringer performed method steps); Kenexa Brassring, Inc. v. Taleo Corp., 751 F.Supp.2d 735, 751 (D.Del.2010) (fact that third party user uploaded resumes in first instance did not relieve defendant of responsibility for infringement ......
  • Ultratec, Inc. v. Sorenson Commc'ns, Inc., 13-cv-346-bbc
    • United States
    • United States District Courts. 7th Circuit. Western District of Wisconsin
    • August 28, 2014
    ......Dkt. #165. Defendants explain that Fed. R. Civ. P. Rule 56(f)(1) gives the court discretion to ...AWH Corp. , 415 F.3d 1303, 1313 (Fed. Cir. 2005), for the ... infringer performed method steps); Kenexa Brassring, Inc. v. Taleo Corp. , 751 F. Supp. 2d ......
  • Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC, Case No: 6:12-cv-33-Orl-28DAB
    • United States
    • United States District Courts. 11th Circuit. United States District Court of Middle District of Florida
    • August 22, 2014
    ...... MALIBU BOATS, LLC, MARINE HARDWARE, INC., TRESSMARK, INC., MH WINDOWS, LLC, and JOHN F. ...R. Civ. P. 56(a). In other words, '"summary judgment may ...Cir. 1997) (quoting O.I. Corp. v. Tekmar Co. , 115 F.3d 1576, 1580 (Fed. Cir. ...(Doc. 211 at 14 (citing Kenexa Brassrinq. Inc. v. Taleo Corp. , 751 F. Supp. 2d ......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT