WALLACH, Circuit Judge.
Appellant Dr. Michael Adolph appeals the claim construction of several terms of U.S. Patent No. 6,356,836 ("the '836 patent"), for which he is the inventor, by the United States District Court for the Eastern District of Virginia. For the reasons set forth below, this court reverses and remands.
I. The '836 Patent
The '836 patent describes "[a] method and device for generating, merging and updating data" that can then be used to provide a mobile unit with current, and continuously updated, accurate road network, route, and traffic information. '836 patent Abstract; id. col. 4 ll. 52-65. As stated in the Brief Summary of the Invention, a purpose of the invention is "to establish a method to generate appropriate data utilizable for a practical destination tracking system which carries out a permanent self updating and with data generation which requires little effort. The method is also appropriate for deriving
Claim 1 of the '836 patent is the only asserted independent claim:
Id. col. 17 ll. 36-55 (emphases added to disputed claim terms).
In other words, as the mobile unit (e.g., an automobile) travels, its location is determined at set time intervals and it generates and stores the data measured at each node. Id. col. 3 ll. 52-65. The location's x and y coordinates (for example, longitude and latitude), acquired using the Global Positioning System ("GPS"), are then assigned to that node. See, e.g., id. col. 3 l. 66-col. 4 l. 1 ("In addition to the geographical coordinates x
According to Appellant, the data is converted using a binary format in order to be written to a file. The section data file is updated with new section data as the "mobile unit" continues traveling and generating new section data. "Claim 1 does not specify any particular storage medium used for practicing the multi-step method besides a `storage device.'" Appellant's Br. 19.
On February 28, 2001, when responding to the anticipation rejections, Dr. Adolph stated that "the method disclosed in Saito and the method of the present invention have several significant differences." J.A. 212-13. Dr. Adolph distinguished claim 1 from Saito on the ground that "Saito requires that [(1)] an initial database representing road data or road ways be loaded into the system before the additional acquisition of data can take place," and (2) "the step[s] of previously expressing each point on the roads in a map." J.A. 213 (internal quotation marks and citation omitted). Relatedly, Dr. Adolph argued Saito teaches a method that requires a CD-ROM, integrated circuit card, or another storage device having a large capacity. J.A. 213. Thus, the Saito system "require[s], for [its] operation, the initial input of road data collected and generated by some external means." J.A. 213 (emphasis added). Finally, Dr. Adolph contended that the '836 patent collects not only the geographic points of the areas traveled, but also the direction and distance traveled, as well as "the time relationship between the traveled points, and the fact that the traveled points are contiguous." J.A. 5.
On April 2, 2001, the examiner again rejected claim 1 as anticipated by Saito and U.S. Patent No. 5,214,757 ("Thad"). Dr. Adolf responded by again distinguishing Saito for the reasons stated above. Dr. Adolph then stated that "Thad only utilizes a GPS receiver to determine and store point coordinates according to a predetermined criteria but, does not generate or store any information relating to the contiguous sections." J.A. 882 (internal quotation marks and citation omitted). On August 29, 2001, the patent examiner allowed all claims of the '836 patent, which issued on March 12, 2002.
II. TomTom's Cayman Data
Appellee TomTom, Inc.'s personal navigation devices ("PND") use a "proprietary
The Cayman log files remain on the device until the user either directly uploads the data over a cellular connection or manually connects the PND to a computer using a USB cable and uploads the files to TomTom's servers in the Netherlands using TomTom HOME software. J.A. 430. In the Netherlands, the data is validated, analyzed, and merged. This postprocessed data is combined with historical traffic data obtained from other sources to create speed profiles for each roadway. J.A. 785, 814.
This dispute began in 2011 when Dr. Adolph's German company, AOT Systems GmbH ("AOT"), accused TomTom of infringing EP 0 988 508 B1 ("EP '508"), the '836 patent's European counterpart. In June 2011, representatives of TomTom and Dr. Adolph met in person to discuss the infringement allegations.
On February 3, 2012, AOT filed suit in Germany against one of TomTom's customers, seeking damages and injunctive relief. Thereafter, TomTom filed a declaratory judgment action in the Eastern District of Virginia, alleging the '836 patent was invalid as obvious and anticipated, and there was no infringement. On October 3, 2012, Dr. Adolph filed a counterclaim, alleging TomTom directly and indirectly infringed the '836 patent.
On February 25, 2014, the district court issued its claim construction opinion and order. TomTom, Inc. v. AOT Sys. GmbH, No. 1:12-cv-528, 56 F.Supp.3d 767 (E.D.Va. Feb. 25, 2014) (claim construction memorandum opinion) (J.A. 1-29) (the "Opinion"); TomTom, Inc. v. AOT Sys. GmbH, No. 1:12-cv-528, 56 F.Supp.3d 767 (E.D.Va. Feb. 25, 2014) (J.A. 30-31) (the "Order"). The court construed four claim terms relevant to this appeal: (a) "destination tracking system of at least one mobile unit," (b) "generating and updating data for use in," (c) "node," and (d) "the storage device." Order at 1-2. Based on the claim constructions, TomTom moved for summary judgment and Dr. Adolph moved for reconsideration of the claim construction.
On April 15, 2014, the district court denied Dr. Adolph's motion and instead issued another written opinion in line with its previous opinion, "in the interest of ensuring that the claim constructions ... are correct." J.A. 1094. Accordingly, Dr. Adolph stipulated that he "will not be able to sustain [his] burden of proof to establish infringement of the '836 patent against TomTom" because of the court's claim constructions. J.A. 1102. The parties stipulated
Dr. Adolph appeals; this court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012).
I. Standard of Review
"[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specification, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo." Teva Pharm. USA, Inc. v. Sandoz, Inc., ___ U.S. ___, 135 S.Ct. 831, 841, ___ L.Ed.2d ___ (2015) (italics omitted). "On the other hand, in considering extrinsic evidence, we review the subsidiary factual findings underlying the district court's claim construction for clear error." Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 676 (Fed.Cir.2015).
II. This Court Can Consider All Claim Constructions on Appeal
As a threshold matter, Dr. Adolph argues this court must remand if "any claim construction is altered upon appellate review." Appellant's Br. 32. TomTom counters that "each claim construction provides a separate, independent basis for affirming the judgment of noninfringement, or else that claim construction is not properly before this court." Appellee's Br. 27. It is true this court has recognized it does not have subject matter jurisdiction to review a claim construction if that construction does not affect the issue of infringement. See, e.g., Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1336 (Fed.Cir.2008) (explaining that "Article III does not permit the courts to resolve issues when it is not clear that the resolution of the question will resolve a concrete controversy between interested parties," and "[i]f we did not require clarification of the stipulated judgment in this case, we would risk rendering an advisory opinion as to claim construction issues that do not actually affect the infringement controversy between the parties").
Here, the parties' stipulated judgment explicitly states, and provides detailed explanations for why, the claim constructions actually affect the infringement analysis. J.A. 1101-07. Furthermore, the parties' summary judgment and reconsideration briefs (filed after the claim construction order) detail the effect the district court's claim construction has on the issue of infringement. J.A. 805-23, 974-75. Accordingly, under Jang, this court will consider all of the district court's claim constructions.
III. Claim Constructions
A. The District Court Incorrectly Construed the Preamble Term "Method for Generating and Updating Data" As a Limitation
The preamble of claim 1 of the '836 patent recites "[a] method for generating and updating data for use in [("the generating language")] a destination tracking system of at least one mobile unit comprising." '836 patent col. 17 ll. 36-38. The district court held that because the phrase "at least one mobile unit" provides an antecedent
Dr. Adolph contends the district court erred in determining that because it relied "on one portion of [the] preamble [i.e., `at least one mobile unit'] to resolve an antecedent basis concern" it should also convert "other unrelated portions of the preamble [i.e., the generating language] into new ... substantive [claim] limitations." Appellant's Br. 46. TomTom counters "the preamble provides both antecedent basis for later claim elements and gives life, meaning, and vitality to the claims. The district court thus properly construed the entire preamble." Appellee's Br. 34-35.
If a preamble "recites essential structure or steps, or if it is `necessary to give life, meaning, and vitality' to the claim," then the preamble can limit the scope of a claim. Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002) (citation omitted). "Conversely, a preamble is not limiting `where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.'" Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997)). "`[W]hether to treat a preamble as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.'" Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir.2006) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir.2003)).
The district court correctly concluded — and the parties do not seem to dispute — the phrase "destination tracking system of at least one mobile unit" is limiting because the claims do not concern just any "mobile unit," but rather "generating and updating data for use in a destination tracking system of at least one mobile unit." '836 patent col. 17 ll. 36-37 (emphasis added). However, the court erred in determining that it had to construe the entire preamble if it construed a portion of it. See, e.g., Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed.Cir.1985), overruled in part on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed.Cir.1998) (en banc in part). That the phrase in the preamble "destination tracking system of at least one mobile unit" provides a necessary structure for claim 1 does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.
Thus, the generating language is not limiting and does not provide an antecedent
Additionally, the invention claimed in the '836 patent is structurally complete without the generating language. "A preamble is not regarded as limiting... when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.'" Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed.Cir.2010) (quoting Catalina, 289 F.3d at 809). "If the preamble `is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a [prior art] rejection), we do not construe it to be a separate limitation.'" Id. at 1359 (quoting Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1288-89 (Fed.Cir.2008)).
Claim 1 is directed to a method for generating and updating travel-related data and does not require the data to be used later as the district court found. It requires only that the data be generated, selected, stored, and continuously updated. All of these steps are performed within the body of claim 1. Though the collected data could at some point be used in the context of a navigation system, this is not required of claim 1, and does not convert it into a claim limitation.
The phrase "generating and updating data for use in" does not recite essential structure or steps, or give necessary life, meaning, and vitality to the claim. It was therefore error for the district court to use an antecedent basis rationale to justify converting this independent part of the preamble into a new claim limitation.
B. The Court Incorrectly Construed the Phrase "Destination Tracking System of at Least One Mobile Unit"
In construing the phrase "destination tracking system of at least one mobile unit," the district court concluded Dr. Adolph disclaimed methods performed on "systems that (i) contain information relating to existing road networks, (ii) rely on an initial database, and (iii) require for operation the initial input of road data." J.A. 1099. After reviewing the specification, file history, and prior art, the court explained: "Dr. Adolph overcame the Saito prior art by limiting claim 1 to a method that necessarily does not include an initial map database." Opinion at 782. The court thus construed the phrase to be "a destination tracking system of at least one mobile unit that does not contain initial information relating to existing road networks." Order at 2 (emphasis added to language the court found to be disclaimed).
Dr. Adolph argues the court incorrectly interpreted the prosecution history, and therefore misconstrued the phrase, and should replace "does not contain" maps with "does not require" maps. Appellant's Br. 51. Specifically, Dr. Adolph contends that during prosecution he stated that the invention described by claim 1 does not require an initial map database, not that it does not contain one. Id. Appellees counter the district court correctly found prosecution history disclaimer when Dr. Adolph differentiated his invention from Saito. See Appellee's Br. 31.
In response to the patent examiner's October 27, 2000, office action rejecting
J.A. 213 (emphasis added).
TomTom accurately argues that "one skilled in the art is entitled to rely on disclaimers made during prosecution to interpret patent claims." Appellee's Br. 29 (citing Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003) ("The doctrine of prosecution disclaimer is well established in Supreme Court precedent, precluding patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.")). This court has
Omega, 334 F.3d at 1324.
The district court's construction was based on the prosecution history of the '836 patent, but, as demonstrated above, nowhere does Dr. Adolph actually assert that the invention described by claim 1 does not contain an initial map database. Because there is no "clear and unambiguous" disclaimer that the tracking system does not contain an initial map database, we reverse the district court's construction. Instead, there is a disclaimer that the system does not require an initial map database. Accordingly, we construe the phrase "destination tracking system of at least one mobile unit" to mean "a destination tracking system of at least one mobile unit that does not require initial information relating to existing road networks."
C. The District Court Incorrectly Construed "Node"
The district court construed the term "node" to mean an "intersection, origin, destination, or point at which the vehicle changes direction by more than a given predetermined value in a grid or road network." Opinion at 778. Dr. Adolph contends the court's construction "not only excludes the collection of travel data at predetermined time intervals, but it is wholly inconsistent with that basic requirement of Dr. Adolph's invention." Appellant's Br. 34. According to Dr. Adolph,
We disagree with Dr. Adolph that "[c]laim 1 specifically requires travel data, in the form of nodes, to be collected `at least at predetermined time intervals.'" Id. at 33. The claim requires "generating and storing traveled distance data ... at least at predetermined time intervals, wherein the traveled distance data represent traveled sections by at least a series of nodes P
Dr. Adolph alternatively argues that "[a] node is simply a geographic location" because the '836 patent does not explicitly define the term "node." Appellant's Br. 41. TomTom counters that this definition "renders the term meaningless and is inconsistent with the specification." Appellee's Br. 47. We agree a "node" means a "geographic location." For instance, the specification states:
'836 patent col. 10 ll. 8-21 (emphases added).
As recited above, the terms "points" and "nodes" are used in the specification to refer to the same data — "individual points P
According to TomTom, "[Dr.] Adolph presents no compelling evidence that `node' and `point' are the same, and therefore, the terms should be presumed to be different, as the district court's construction properly recognizes." Appellee's Br. 49. TomTom relies, in part, on Figure 4 in the '836 patent, reproduced below, to argue "points 1-16 are nodes, because they are starting points, end points, intersections, or places where the vehicle changes directions." Id. "On the other hand," TomTom argues, "each `x' along the route is a point ..., but those points are not nodes, as they are not characteristic of road segments." Id.
'836 patent fig. 4. TomTom misunderstands Dr. Adolph's use of the "x" notation in the figures of the '836 patent. The specification explains that the "x" notation is used in Figure 4 as indicating a recommended route from node S to node Z, not to distinguish points from nodes. Id.; id. col. 13 ll. 32-34 ("The recommended route S→ 2→ 6→ 7→ 8→ 12→ Z is represented by `x' in Fig. 4.").
"Claim terms are generally given their plain and ordinary meanings to one of skill in the art when read in the context of the specification and prosecution history." Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed.Cir.2013) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc)). "There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution." Id. (internal quotation marks and citation omitted). Here, there is neither lexicography nor disavowal. Rather, the '836 patent uses the term "node" to mean, simply, a "geographic location." This construction
C. The District Court Incorrectly Construed the Phrases "Storing Section Data/Section Data File in the Storage Device"
Claim 1 of the '836 patent recites "storing traveled distance data in at least one storage device." Id. col. 17 ll. 38-39 (emphasis added). The court construed this to mean "storing traveled distance data in at least one device used for storing data." Opinion at 785 (emphasis added). Dr. Adolph does not appeal this construction.
Claim 1 additionally recites "storing section data in the storage device" and "storing the section data file in the storage device." '836 patent col. 17 ll. 45, 52.
Relying on an embodiment described in the '836 patent's specification, the district court held that each type of data identified in claim 1 must be stored in a different storage device:
Opinion at 786-87 (referencing '836 patent col. 9 ll. 21-25). Accordingly, "storing section data in the storage device" was construed by the district court to mean "storing section data in a separate storage device than the traveled distance data," and "storing the section file data in the storage device" was construed as "storing the section data file in a separate storage device than the traveled distance data and section data." Opinion at 786-87 (emphases added). These constructions were erroneous.
As an initial matter, this court has repeatedly cautioned against importing limitations from an embodiment into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.Cir.2014) ("While we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims. We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.") (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed.Cir.2004); Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012)).
"The starting point for any claim construction must be the claims themselves." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.Cir.1999). As noted, claim terms are generally given their plain and ordinary meanings to one of skill in the art when read in the context of the specification and prosecution history; the only exceptions to this general rule are when the patentee acts as his own lexicographer or when he disavows claim scope. Golden Bridge, 758 F.3d at 1365. Here, claim 1 requires section data to be stored in "the storage device." '836 patent col. 17 l. 45 (emphasis added). Claim 1 also requires the section data file to be stored in "the storage device." Id. col. 17
Additionally, the specification discloses the different data types can be stored in the same storage device, contrary to the district court's interpretation. In explaining how one could interrupt the generation of both traveled distance data and section data if any of that data already exists in the storage unit, one portion of the specification recites:
Id. col. 4 ll. 6-13 (emphases added).
Therefore, these terms should be construed to reflect their plain and ordinary meaning: "storage device" means "storage device." It does not mean the claimed invention must use a different storage device for each type of data, as all three types of data can be stored on the same storage device as described in claim 1.
For the reasons set forth above, the appealed constructions of the district court are reversed, and the case is remanded for proceedings not inconsistent with this opinion.