Prost, Circuit Judge.
SpeedTrack, Inc. ("SpeedTrack") appeals the United States District Court for the Northern District of California's final judgment of noninfringement, which hinged on the court's claim construction. We affirm.
SpeedTrack owns U.S. Patent No. 5,544,360 ("the '360 patent"), which discloses a "computer filing system for accessing files and data according to user-designated criteria." '360 patent Abstract.
This problem had prior-art solutions. But according to the '360 patent, those presented additional drawbacks. Some prior-art systems enabled a user to "search for files by file word content," id. at col. 2 ll. 54-64, but this method was subject to errors like mistyping search queries, id. at
Representative claim 1 recites a three-step method. First, a "category description table" containing "category descriptions" is created. Relevant to this appeal, the category descriptions "hav[e] no predefined hierarchical relationship with such list or each other" (the "hierarchical limitation").
Id. at claim 1 (emphasis added).
An example embodiment of a search filter is the virtual "file clerk" of Figure 5, which lists category descriptions (56) under headings called category types (54).
Id. Fig. 5. To find a desired file, the user "simply chooses the [category descriptions] in random order from pick lists, making mistyping impossible." Id. at col. 10 ll. 26-27. "[A]s the user builds the search filter definition, categories [that] would find no data are automatically excluded as pick list possibilities." Id. at col. 10 ll. 27-37; see also id. at col. 10 ll. 46-53. This "ensur[es] that the user defines a filter [that] will always find at least one file, thus avoiding wasting time in searching for data that cannot be matched." Id. at col. 10 ll. 21-24. And although the category descriptions appear under "category type" headings, "the column position of a category is not significant." Id. at col. 8 ll. 26-29 ("Columns are used for the convenience of the user in finding relevant categories and for no other reason.").
In September of 2009, SpeedTrack sued various retail website operators, alleging infringement of the '360 patent.
J.A. 4; see SpeedTrack, Inc. v. Amazon.com, Inc., No. 4:09-CV-04479, 2019 WL 5864630, at *6 (N.D. Cal. Nov. 8, 2019) ("Initial Order"). This parallels the construction adopted in one of SpeedTrack's prior infringement suits (the "Wal-Mart construction"). Initial Order, 2019 WL 5864630, at *4; see SpeedTrack, Inc. v. Wal-Mart Stores, Inc., No. C 06-7336, 2008 WL 2491701, at *9 (N.D. Cal. June 19, 2008). Along the way, the district court relied in part on "disclaimers made during prosecution." Initial Order, 2019 WL
SpeedTrack subsequently moved to (1) clarify the district court's construction regarding prosecution-history disclaimer, (2) preclude Cross-Appellants from introducing arguments based on prosecution-history disclaimer to the jury, and (3) strike portions of Cross-Appellants' noninfringement contentions regarding the same. J.A. 6. On February 26, 2020, the district court issued a second claim-construction order clarifying its prior construction. J.A. 4-16; cf. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it."). The court retained the construction presented in its initial order but appended the following clarification:
J.A. 15. The court noted also that, "[a]s used in the construction, the terms `field' and `value' mean nothing more complicated than `a category' and `an example of that category' (e.g., `language' and `French')." J.A. 15. In support of its clarified construction, the court analyzed SpeedTrack's prosecution statements, ultimately concluding that "[t]he prosecution history demonstrates clear and unambiguous disavowal of category descriptions based on hierarchical field-and-value systems." J.A. 10.
SpeedTrack then stipulated to noninfringement. J.A. 4217 ("[Cross-Appellants'] accused products and services use field-and-value relationships, as those terms are used in the Court's modified construction."). The district court entered final judgment of noninfringement. J.A. 3. SpeedTrack timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
It is undisputed that Cross-Appellants do not infringe under the district court's clarified construction. Therefore, we need only decide whether that construction is correct. We conclude that it is.
The words of a claim "are generally given their ordinary and customary meaning," which is "the meaning that the term would have to a person of ordinary skill in the art." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Claim terms "must be read in view of the specification." Id. at 1315. And "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. at 1317. "A patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope to which he would otherwise have an exclusive right by virtue of the claim language." Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
SpeedTrack acknowledges that the '360 patent applicants added the hierarchical limitation during prosecution "[t]o overcome" U.S. Patent No. 5,047,918 ("Schwartz"), Appellant's Br. at 48, and that the applicants "distinguished Schwartz as being different from the amended claims," id. at 38. But the parties disagree regarding the effect of this history on the claim scope—in particular, whether the claims cover predefined hierarchical field-and-value relationships. They do not.
In prosecution remarks, the '360 patent applicants distinguished their invention from Schwartz, a system that "assigns user-definable attributes to ... data files," J.A. 1468, where each attribute has "a user-defined name," such as "author," and where "a user may assign a value to the file attribute," such as "Smith," J.A. 1474.
The applicants went on to illustrate Schwartz, using "Language" as an example of a field and "English" and "French" as examples of values.
J.A. 3185. The applicants explained that, in Schwartz, "the `hierarchical' relationship
Then the applicants differentiated the invention from Schwartz using the same example: "In contrast, the present invention allows a term like `French' to be defined as a category description, and then that category description can be directly associated with any file to mean anything that makes sense to the user." J.A. 3185. This time, the applicants included both "English" and "Language" on the same plane—as the "category descriptions" of the claims.
J.A. 3185. This is because, in the applicants' words, "[t]he invention is essentially `fieldless.'" J.A. 3185 ("[C]ategory descriptions are not fields; they are directly applied descriptors of files."). Further, the applicants explained, "[n]o pre-existing or pre-defined hierarchical relationship must exist between category descriptions and the list of category descriptions, or between each other." J.A. 3185. Lastly, the applicants stated that the hierarchical limitation was added to capture the distinction presented in these remarks. J.A. 3185 ("This distinction has been clarified in the claims as amended by the addition of the following language in all of the claims: `each category description comprising a descriptive name, the category descriptions having no predefined hierarchical relationships with such list or each other.'").
"Prosecution disclaimer can arise from both claim amendments and arguments." Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, we have both. On this prosecution record, we agree with the district court's assessment. In no uncertain terms, "the applicants argued that Schwartz had a `hierarchical' relationship between fields and values that fell outside the scope of the amended claims." J.A. 13. Therefore, the claims exclude predefined field-and-value relationships as explained by the district court. They are disclaimed.
SpeedTrack interprets the prosecution record differently. According to SpeedTrack, the applicants indicated merely that the "category descriptions" of the '360 patent are not the fields of Schwartz and that the hierarchical limitation precludes predefined hierarchical relationships only among category descriptions.
Further, SpeedTrack's interpretation leads to the paradoxical result that the claims cover hierarchical relationships between fields and values but not among values, even though Schwartz discloses that exact arrangement. See Appellant's Br. at 49 (stating that "the hierarchical limitation only applies to `category descriptions'" and likening category descriptions to values); Oral Arg. at 6:09-18 (recognizing that "Schwartz had a hierarchical relationship between the field and the values" but "did not have a hierarchical relationship between different values.").
SpeedTrack also contends that the applicants distinguished Schwartz on other grounds. But that changes nothing. "An applicant's argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well." Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007). Plus, as Cross-Appellants point out, SpeedTrack's position contradicts its other litigation statements. For example, SpeedTrack stated the following in a motion:
SpeedTrack protests that these litigation statements "are not the inventors' prosecution statements" and therefore do not demonstrate prosecution-history disclaimer. Appellant's Reply Br. at 10. True enough. But although we do not rest our conclusion of disclaimer on these statements, they are a further reason we are unmoved by SpeedTrack's contrary characterization of the prosecution history. "Ultimately, the doctrine of prosecution disclaimer ensures that claims are not `construed one way in order to obtain their allowance and in a different way against accused infringers.'" Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017) (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)). That is just what SpeedTrack tries here. Indeed, SpeedTrack made these statements in an attempt to strike Cross-Appellants' prosecution-history-estoppel defense to SpeedTrack's infringement theory. J.A. 1384.
In a similar vein, SpeedTrack contends that the district court's issuance of a second claim-construction order is evidence that there was no clear and unmistakable disclaimer. Not so. The Initial Order stated that the court's construction "accounts for the disclaimers made during prosecution." 2019 WL 5864630, at *4. The court's second order articulated the impact of that construction on field-and-value systems, at SpeedTrack's urging. Both orders acknowledged the disclaimer.
Cross-Appellants also argue that the claims recite patent-ineligible subject matter and are invalid for indefiniteness. Once we address infringement, we generally must address invalidity. See Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 102, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993). But we need not here. Cross-Appellants state that if we "affirm the judgment of noninfringement, [they] will voluntarily dismiss their cross-appeal, because the '360 patent expired more than six years ago." Cross-Appellants' Br. at 59. Therefore, we do not reach the cross-appeal.
We have considered SpeedTrack's remaining arguments and find them unpersuasive. For the reasons above, we hold that the district court's claim construction is correct. We therefore affirm the district court's final judgment of noninfringement.