Creative Internet Advertising v. Yahoo! (CAFC 2010-1215) nonprecedential; Newman, Clevenger (dissent-in-part), Bryson (author)

The '432 patent primarily describes a system in which references to advertisements are inserted at a server between end users of the instant messaging software... The central dispute in this appeal is whether claim 45 reads on Yahoo!'s [] system. Claim 45 recites the following (emphasis added):

45. A computer program embodied on a computer-readable medium for inserting a background reference to a stored advertisement into an end user communication message, said computer program comprising:

logic configured to receive an end user communication message from a first site;

logic configured to insert a background reference to a stored advertisement into said end user communication message, wherein said logic configured to insert the background reference is further configured to insert said background reference responsive to an overwrite authorization; and

logic configured to transmit said end user communication message with the background reference to a second site.

Judge Clevenger, in dissent, explains.

Claim 45 is drawn to a computer program which contains logic configured to do things to an "end user communication message." The "things" for which the logic is configured are: (a) receipt of "an" end user communication message from a first site; (b) insertion of a background reference to a stored advertisement in "said" end user communication message, with the logic further configured for insertion of the background reference in response to an overwrite authorization; and (c) transmission of "said" end user communication message with the background reference to a second site.

Yahoo! sought unsuccessfully to have the claim treated in essence as a method claim, with the things for which the logic is configured necessarily being performed as steps in the order claimed. The district court instead held that the claim is to an apparatus with no requirement for sequential configuration of the required logic. Yahoo! also sought to have "end user communication message" be construed to mean "a written communication intended for an end user." The district court disagreed, and defined the term as "a set of data transmitted over a network." Yahoo! does not appeal either point.

Coming back to claim 45, the "end user communication message" is just "a set of data transmitted over a network." And an infringing computer program need only have logic configured to permit (a) receipt of a set of data from a first site; (b) insertion of the claimed background reference in a set of data in response to an overwrite authorization; and (c) transmission of a set of data with the background reference to a second site. The logic does not have to be executed in any particular order.

The jury heard testimony that Yahoo!'s Messenger computer program has logic configured to do each of the three things called for by claim 45. Nonetheless, the majority reverses the jury verdict of infringement on two grounds. First, the majority revises the district court's claim construction to require the limitations of claim 45 to act upon a single message. Second, the majority reverses the jury's finding of infringement under the doctrine of equivalents.

Whereupon Judge Clevenger parted company from Judges Newman and Bryson.

The claim clearly requires the claimed logic act on the same message. The receive logic cites "an end user communication message," while the succeeding logic elements cite antecedent basis to the same message with "said end user communication message." On his first objection, Judge Clevenger is stunningly wrong. We'll get to Judge Clevenger's second objection in due course.

The majority opinion:

Yahoo! sought a construction requiring the three elements of claim 45 to occur in the same sequence as written, i.e., first receive, then insert, then transmit. Creative contended that the claim did not require sequential action because it was an apparatus claim. Under Creative's construction, claim 45 would read on a program that inserted a background reference into a message, transmitted the message, and then received the message at another site. After a Markman hearing, the district court rejected Yahoo!'s proposed construction and construed claim 45 as a purely structural claim without any spatial or sequential limitations.

The case proceeded to trial, but the parties still disputed whether claim 45 required all three elements to act on the same message. Yahoo! contended that an infringing program had to be configured to perform all three actions (receipt, insertion, and transmittal) on the same message. Accordingly, Yahoo! moved for supplementary claim construction of the term "said."

Creative disagreed with Yahoo!'s interpretation of the claim as requiring that all three actions be performed on the same message. It contended that the claim would be infringed by a program that performed all three actions, even if all three actions were not performed on the same message.

Both Yahoo! and Creative were wrong on different points. Same message: Creative wrong. Apparatus with three program logics: Yahoo! wrong on necessarily being sequential.

The district court did not resolve that dispute; instead, it linked the dispute to the construction of the term "an" preceding the first instance of "end user communication message" in the body of the claim. The district court decided to provide the jury with an additional paragraph at the end of the claim construction chart, which included standard constructions of the terms "an" and "said" along with its earlier ruling that claim 45 did not require sequential ordering. That paragraph stated:

The use of the article "a" or "an" in a patent claim means "one or more" in claims containing the transitional phrase "comprising." Use of the word "said" in the beginning of a phrase indicates that it is referring to a previous use of the same or similar phrase. Further, claim 45 is an apparatus claim, which means that the claim recites structure--logic or source code--comprising a computer program. The claim does not recite steps or processes that must take place in a particular order.

Right. Except, like a pig in the poke, the district court didn't even understand what it was instructing.

The trial court expressed skepticism that the claim required "the set of data where... the receipt, the insertion, the transmit, that has to be the same." The court asked why the claim would not read on a program that "receive[s] one set of data, inserts into another set of data, transmits maybe another set," and told Yahoo!'s counsel, "you've got to persuade me that your position on this claim, that it's the same set of data that's received, inserted and transmitted can be correct."

So the trial court (Magistrate Judge Love in EDT) was confused.

Following that exchange, the district court took the matter under advisement. After a recess, the court decided to give the jury a supplementary instruction defining the words "a" or "an" and "said." The court declined to instruct the jury on whether the claim required all three actions to apply to the same message; as to that issue, the court stated, "That, in my estimation, is infringement-- the question of infringement, that's for y'all to fight over and for the jury to resolve." Yahoo!'s counsel objected to the court's refusal to limit the scope of the claim to require that all the recited actions operate on a single message, but the court overruled the objection.

The district court's refusal to instruct the jury on the question whether the claim required all three elements to operate on the same message had the effect of leaving a critical question of claim construction to the jury. The court erred in leaving a central question of claim construction to the jury over Yahoo!'s objection. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351, 1360-62 (Fed. Cir. 2008).

The CAFC majority got that right.

The closing arguments demonstrate that the district court's instruction linking the construction of "an" and "said," and not addressing the "same message" issue raised by Yahoo! enabled Creative to argue to the jury that all three claim elements do not have to operate on the same message in order to infringe.

Creative's broader claim construction is incorrect. Although the antecedent phrase, "an end user communication message," is broad enough to cover multiple messages, each use of the phrase "said end user communication message" still refers to the antecedent phrase. See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008) ("The subsequent use of definite articles "the" or "said" in a claim to refer back to the same claim term does not change the general plural rule [of "an"], but simply reinvokes that non-singular meaning."). An infringing system must therefore contain logic configured to insert a background reference into the same messages that are received and transmitted by other logic in the program. That does not necessarily mean that the insertion logic must act on the message after it is received. And it does not mean that the every message in an infringing system must be received, inserted, and transmitted. Instead, it means that the claim does not cover a system that only receives a message, inserts a background reference into a different message, and then transmits a third message. Although the dissent adopts that interpretation, it is contrary to the claim language because it would render the word "said" a nullity. See Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."). The claim language makes clear that all three logical elements must act, at least once, on the same message or messages.

By linking the construction of "said" to the construction of "an" and the ruling on sequential limitations, the district court left that claim construction issue unresolved and allowed Creative to invite the jury to find infringement on a theory that is contrary to the proper construction of the asserted claim. Because the jury may have found infringement based on Creative's broader and incorrect theory of claim construction, it would be incorrect to rule that Yahoo! waived its right to challenge the district court's claim construction simply because Yahoo! received the construction of the term "said" that it proposed.

Under a proper construction, Creative couldn't get to literal infringement, however mightily it squealed (which it did, of course).

Having concluded that all of Creative's literal infringement theories fail, we turn to infringement under the doctrine of equivalents. Yahoo! contends that there was insufficient evidence to support a jury determination that Yahoo! Messenger has the equivalent of logic configured to "insert said background reference responsive to an overwrite authorization." Appellant's Br. at 41. To support a finding of infringement under the doctrine of equivalents, a patentee must provide particularized testimony and linking argument with respect to the "function, way, result" test. Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed. Cir. 1996).

Creative's expert didn't get there.

That testimony... does not address the broader issue of whether Yahoo! Messenger has the equivalent of logic configured to "insert said background reference responsive to an overwrite authorization." For reasons addressed in our discussion of literal infringement, Yahoo! Messenger does not insert background references into existing messages.

By reciting "logic configured to insert," the claims require replacement of existing background references in messages, and the only way the specification describes such replacement occurring is by intercepting the messages with a server. It is undisputed that Yahoo!'s system does not alter existing messages and does not intercept them with a server. Thus, there was insufficient evidence for a reasonable jury to conclude that Yahoo! Messenger infringed claim 45 under the doctrine of equivalents.

No infringement.

Yahoo!'s invalidity position failed for the same reason.

Yahoo! also appeals the district court's denial of its motion for JMOL of invalidity based on the prior art references known as Goldschmitt and the Gold Guide. We conclude that the evidence was sufficient to support the jury's conclusion that neither Goldschmitt nor the Gold Guide disclosed inserting a background reference into a message responsive to an overwrite authorization. Both references described inserting background advertisements whenever they were available to be inserted. Neither reference disclosed a system that let users selectively receive advertisements.

Affirmed in part and reversed in part.