Docket Nos. 2013-1121, -1195
MOORE, SCHALL, REYNA
June 20, 2014
Brief Summary: DC decision regarding claim construction (means-plus-function limitation indefinite) and noninfringment of Augme’s patents affirmed. Yahoo! patent found not indefinite because the meaning is “clear on its face”.
Summary: Augme appealed DC grant of SJ to Yahoo! that it does not infringe the U.S. Pat. Nos. 6,594,691 or 7,269,636 (which share a common specification) either literally or under the DOE and the two means-plus-function claims of the ‘691 patent are indefinite. The patents relate to adding functionality (e.g., media or advertising) to a web page using code modules (first code embedded in a web page downloaded by a browser, the second encoding the added functionality and a “service response”). The system also includes a “denial of service” function “if the web page content is objectionable or ‘unacceptable to be displayed with’ the requested media”. Yahoo’s accused systems include “smart tags” that set parameters to determine suitable advertisements and then send an “ad code” for that ad or a “blank ad code” if a suitable advertisement cannot be identified. The DC concluded Yahoo!’s system did not meet the “service response” or “embedded first code module” limitations of the Augme’s claims. The FC disagreed with the DC definition of “service response” and found “there is a genuine issue of material fact regarding whether Yahoo!’s “ad codes” meet the limitation, finding this point not to be “a basis upon which we can affirm summary judgment of noninfringement.” The DC also found that Augme’s claimed “embedded first code module” was not met by Yahoo!’s systems “do not include an ‘embedded’ first code module that ‘initiates retrieval’ of a second code module” but Augme argued that the second code could be included in the embedded code as a “linked code” (not written into the web page but retrieved, downloaded and incorporated into it). But the FC panel found “[t]he asserted claims support the distinction between the embedded code and the linked code” (Helmsderfer, FC 2008 and Applied Med. Res. Corp., FC 2006) and that the specification did not deviate from the plain and ordinary meaning of the term “embedded” (Thorner, FC 2012). It also agreed, therefore, that there was no literal infringement or infringement under the DOE (“the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims”, Dolly, FC 1994; see also SciMed, FC 2001). The DC determineation that the means-plus-function claims was also affirmed as indefinite “because the patent does not disclose any structure or algorithm for performing the recited assembling function” (NetMoneyIN, FC 2008; Finisar, FC 2008 (“any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides a sufficient structure”). The FC also concluded the DC construction of “server hostname” was “consistent with the term’s plain meaning” and that Augme’s “attempts to add two limitations to this plain meaning construction are improper.” Yahoo! counterclaimed that Augme infringed claim 7 of US 7,640,320 and the DC determined it was not indefinite. The FC panel agreed, finding “[t]he limitation at issue here…clear on its face” (Bancorp, FC 2004; Nautilus, FC 2014).