Microsoft v. ITC: Circumstances of Claim Construction in view of the Specification and based on plain meaning

Category: Claim Construction 
By: Christian Hannon, Contributor   
TitleMicrosoft Corp. v. International Trade Commission, No. 2012-1445, -1535 (Fed. Cir. Oct. 3, 2013).
[1] Microsoft argues on appeal that the ALJ improperly “construed [resource state information] to require additional information about the version of the resource, akin to a version number [which was not recited in the claims].”
Microsoft Corp. at *7 (text added).
[2] The ALJ determined that Microsoft failed to make that domestic-industry showing because it did not offer sufficient proof of articles that were actually protected by the patent.
Id. at *10.
[3] The Commission’s grounds for finding no infringement rest ultimately on its view of what the claims require [which include: i. that the “a menu selection relating to a class of objects” requires specific classes of objects not recited in the claims, and ii. that "menu positioned in the proximate of a graphical representation" requires the positioning to be 'deliberate,' though not recited in the claims].
Id. at *19 (text added).
[1] [T]he term “state” [in "resource state information"] is so general on its face that it begs for clarification from the specification regarding what aspect of the resource is to be identified. We conclude that the ALJ correctly understood “state” in the context of the whole patent as requiring information about the version of the resource.
Microsoft Corp. at *7-8 (text added).
[2] "Although Dr. Olivier [Microsoft's expert] purported to identify “client applications” in an example application that Microsoft provides to third- party phone manufacturers, Microsoft failed to show that any such “client applications” are actually implemented on any third-party mobile device." Id. at *10. "The Commission did not lack substantial evidence to support its finding that Microsoft simply failed to identify any actual phones with the required components performing as required." Id. at *11.
[3] There is no dispute here about how the accused products work, only about what the claims require. […] On a correct understanding of the claim requirements, we conclude, the main group of accused products infringe [because the ALJ read into the claims features that are not specifically recited or inherently required by the claims]
Id. at *19 (text added).
Procedural HistoryMicrosoft Corporation appeals from an order of the United States International Trade Commission that found no violation of 19 U.S.C. § 1337 insofar as Microsoft’s alleged that Motorola Mobility, Inc. (Motorola), infringed four of Microsoft’s patents, U.S. Patent Nos. 6,578,054; 6,826,762; 7,644,376; and 5,664,133.
Microsoft Corp. at *2.

Legal Reasoning (Taranto, Rader, Prost)
[1] ‘054 Patent: “Method And System For Supporting Off-Line Mode of Operation And Synchronization Using Resource State Information”
ALJ Finding[Based on the Administrative Law Judge (ALJ) that was assigned to the construction of the Microsoft claims] the ALJ found that the accused products do not infringe the asserted claims of the ‘054 patent because they do not use “resource state information” for synchronization [as that term was construed by the ALJ].
Microsoft Corp. at *6 (text added).
CAFC Finding: ALJ properly constructed "resource stte information" in view of the specification
Claim 11 describes “resource state information” as “representing the state of the resource stored at the server at a selected moment.” ’054 patent, col. 16, lines 52-54. The specification defines what is meant by “state”: “The ‘state’ of the contents of a collection stored at a server refers to the identity of the current version of a resource stored at a server.” Id., col. 9, lines 19-21. The patent goes on to explain that “[a]s a particular resource stored at one or more servers undergoes a series of successive updates, the resource is considered to have passed through a corresponding series of states, each of which represents a single update version of the resource.” Id., col. 9, lines 23-27.
Id. at *8.
The specification [of the ‘054 Patent] makes clear that “resource state information” must provide information about the comparative recentness of a particular version. We therefore see no error in the ALJ’s construction…of “resource state information” [and] affirm the commission’s determination that the accused products do not infringe the ‘043 patent.
Id. at *8 (text added).
[2] ‘376 Patent “Flexible Architecture for Notifying Applications Of State Changes”
Legal Standard - Domestic InvestmentSection 337, though not requiring that an article protected by the patent be produced in the United States, unmistakably requires that the domestic company’s substantial investments relate to actual “articles protected by the patent.” 19 U.S.C. §§ 1337(a)(2), (3). A company seeking section 337 protection must therefore provide evidence that its substantial domestic investment—e.g., in research and development—relates to an actual article that practices the patent, regardless of whether or not that article is manufactured domestically or abroad. InterDigital Commc’ns v. Int’l Trade Comm’n, 707 F.3d 1295, 1299, 1304 (Fed. Cir. 2013).
Microsoft Corp. at *11.
ALJ FindingThe ALJ found that Microsoft’s expert, Dr. Olivier, failed to identify claim applications (or, at least, more than one client application) outside the notification broker he identified. For example, Dr. Olivier identified the battery service as a client application, but the battery service is also a component of the notification broker. Microsoft Corp. at *10 (internal citations omitted).
CAFC Finding: Microsoft never furnished evidence that claimed subject matter is in third party devices"Microsoft’s expert testified that “[a] mobile device running Windows Mobile includes client applications on the mobile device that are configured to automatically register notification requests . . . and receive notifications . . . .” He also testified that “client applications” automat- ically register notification requests that “indicate when the clients should receive notifications. . . .” But the evidence he cited in support of his opinion that Windows Mobile phones practice the “client applications” limitation is the source code that Microsoft provides to mobile-phone manufacturers, rather than specific code actually in- stalled and run on a particular third-party mobile device. Moreover, Microsoft provided no evidence that “Windows Mobile” phones always contain the entirety of Windows Mobile, rather than only portions.
Id. at *12.
[3] ‘133 Patent: “Context Sensitive Menu System/Menu Behavior”
i. "retreiving" step
Claim language"retrieving a menu selection relating to a class of objects to which the selected computer resource belongs […]"
Microsoft Corp. at *16.
ALJ findingsThe ALJ construed “a menu selection relating to a class of objects” as “a choice or option in a menu based upon or determined by the class of objects to which the selected computer resource belongs.” [...] He also construed “a menu selection associated with a container” as “a choice or option in a menu based upon or determined by the environment or context in which the selected computer resource resides.” Id.
Id. at *17 (internal citations omitted).
CAFC: No requirement in claim language to narrowly define claims "class of objects"
An application gives menu choices, one based on the type of object, another based on the container. Although the ALJ seemed to think otherwise, the object-based choice is no less object-based just because what makes it object-based is the action that selecting it will perform (call a number, say, or open a photo). And nothing in the claim language or the express construction requires an individual application itself to offer different menus for different objects or, what amounts to the same thing, to make an inquiry about a particular object once the application is launched to see which of several application-specific menus to display.
Id. at *20-21.
The ALJ’s non-infringement finding with respect to [these] limitations rested entirely on incorrectly imposing such extraneous restrictions [ as for example, requiring an individual application itself to offer different menus for different objects]. Without those unwarranted additions, the limitations encompass the accused products—both the main group of products and the alternative design.
Id. at *21.
ii. "displaying" step
Claim language"displaying upon the display the set of menu selec- tions in a menu positioned in the proximity of a graphical representation of the selected computer resource."
Microsoft Corp. at *16.
ALJ Findings[In construing the claim terms]The ALJ ultimately concluded…that it is not enough to meet [the claim construction requiring “displaying on the display the set of menu selections positioned at or near the location of a graphical representation”] that the context menu is actually close to the graphical representation of the selected computer resource; rather, the ALJ concluded, the placement of the context menu in relation to the graphical representation of the selected resource must be “deliberate.” [Based on this understanding the ALJ held the main group of allegedly infringing products and alternative designed products to be non-infringing.]
Id. at *18 (text added).
CAFC: No requirement in claim language to make menu positioning 'deliberate'
The “displaying” limitations also read on the main group of accused products, for which the Android operating system provides context menus that are centered on the screen and occupy most of it. It is undisputed that, at a minimum, the menu is often at or near the location of the selected object. On a small-screen device, that may always be so, because it may be effectively impossible to be anything but proximate, for lack of space.
Id. at *21.
The ALJ’s sole basis for finding the display-in- proximity requirement not to be met for the main group of products was a notion of “deliberate” positioning that cannot be justified. No such notion is fairly found in the claim or the agreed-on construction. The claim does not require a user’s choice about display; it plainly contemplates control of the display by built-in software, making the language of “deliberate” odd. […] Unavoidable proximity is still proximity.
Id. at *21-22.
The commission’s determination that Motorola does not infringe the ‘054 patent is affirmed, as is its determination that Microsoft failed to establish a domestic industry for the ‘376 and ‘762 patents. The decision of the Commission finding that Motorola does not infringe the ‘133 patent is reversed in part and the matter is remanded. Affirmed in Part, Reversed in Part, and Remanded.
Microsoft Corp. at*23-24
Editor's Note
The court also analyzed another patent (‘762 Patent) using a similar analysis as the '376 Patent in [2]. For further reading, click here.
Image Attribution Statement: Julio Reis, "Sopa de Letras," available under Creative Commons Attribution-Share Alike 3.0 Unported license, http://commons.wikimedia.org/wiki/File:Sopa_de_letras_3.svg (last visited Dec. 2, 2013). 

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