Augme Tech. v. Yahoo! Inc.: Claim Construction of "Embedded Code"

Category: Claim Construction  
By: Roy Rabindranath, Contributor 
TitleAugme Tech., Inc. v. Yahoo! Inc. (Fed. Circ. June 20, 2014).
Issue[Whether] the district court's determination [in its summary judgment ruling] that Yahoo!'s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents [was erroneous].
Augme Tech., at *2 (text added).
Holding[Because the district court correctly concluded that the] plain and ordinary meaning of ["]embedded code["] is code written into the HTML code of the web page [, and not linked to another web page, it properly ruled that Yahoo! 's accused system did not infringe the Augme patent literally or under the doctrine of equivalents].
Id. at *10 (text added). 

Procedural HistoryAugme Techolonogies [...] sued Yahoo! [...] alleging infringement of certain claims of U.S. Patent Nos. 6,594,691 and 7,269,639 (collectively the Augme patents), and Yahoo! counterclaimed that Augme and World Talk Radio, LLC (collectively the Appellants) infringed certain claims of U.S. Patent No. 7,640,320. After claim construction, the court granted Yahoo! summary judgment of noninfringement. The district court also entered judgment that certain means-plus-function terms in claims 19 and 20 of Augme's '691 patent were indefinite. Finally, Appellants stipulated to infringement of the asserted claims of Yahoo!'s '320 patent based on the court's claim construction. This appeal followed. We have jurisdiction under 28 U.S.C. 1295(a)(1).
Augme Tech., at *2 (Text added). 


Legal Reasoning (Moore, Schall, and Reyna)
Standard of ReviewWe review summary judgment decisions under regional circuit law. The Ninth Circuit reviews the grant of summary judgment de novo. Summary judgment is appropriate if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." At the summary judgment stage, we credit all of the nonmovant's evidence and draw all justifiable inferences in its favor.
Augme Tech., at *3 (internal citations omitted).
Representative ClaimClaim 1 of the '636 patent is representative:

A method of operating a computer network to add function to a Web page comprising:

downloading said Web page at a processor platform, said downloading step being performed by a Web browser;

when said Web page is downloaded, automatically executing a first code module embedded in said Web page;

said first code module issuing a first command to retrieve a second code module;

assembling, in response to said issuing operation, said second code module having a service response;

said first code module issuing a second command to initiate execution of said second code module; and

initiating execution of said second code module at said processor platform in response to said second command.

Id. at *4-5.
The Accused Yahoo! Technology The accused Yahoo! systems distribute advertisments for display in web pages. For example, a web page publisher that wants to add advertisements to its web page may contract with Yahoo! to obtain "smart tags" which allow Yahoo!-distributed advertisements to be displayed in the web page. The smart tag (the alleged embedded first code module) is embedded into the developer's web page. Once the web page is downloaded, the browser executes the smart tag to download an intermediary piece of code called "smart code" from the Yahoo! server. The browser executes the smart code to send various parameters to the Yahoo! server and to request an "imp code" (the alleged second code module). The imp code returned to the browser includes an "ad code" (the alleged service response) that either includes an advertisment for display based on parameters sent by the smart code, then an advertisement is included in the ad code. On the other hand, if the Yahoo! systems are unable to locate a suitable advertisement, a blank code is returned.
Id. at *5.
"Embedded First Code Module"The district court construed "embedded" to mean "written into the HTML code of the web page," and explained that this construction was consistent with the plain meaning. The district court explained that this construction expressly excluded "a code module that is retrieved via external linking," i.e., code not actually in the web page HTML, but separately retrieved after the web page download.[...] Augme argues on appeal that the district court's construction is erroneous because embedded code can include linked code, i.e., code not actually in the web page HTML, but separately retrieved after the web page download. We agree with the district court's construction. The asserted claims support the distinction between embedded code and linked code. Each asserted claim recites that the first code module is "embedded" or "configured to be embedded" and that the second code module is "retrieve[d] or "download[ed]. This distinction creates a presumption that "embedded" means something different than "retrieved" or "downloaded."
Augme Tech., at *8-9 (text added, internal cItations omitted).
Literal InfringementWe affirm the district court's grant of summary judgment of no literal infringement based on the "embedded first code module" limitation. Yahoo!'s embedded smart tags do not initiate retrieval of the imp code (the alleged second code module); the non-embedded smart code does. In the accused Yahoo!'s systems, the embedded smart tag retreives an intermediary smart code. This smart code is not embedded under the district court's construction; it is separately downloaded. After it is retrieved, the smart code, in turn, retrieves the imp code (the alleged second code module). Thus, the Yahoo! systems cannot literally infringe because they contain two sets of code: one that is embedded but does not retrieve the alleged second code module and another that retrieves the allaged second code module but is not embedded. As the district court correctly concluded, the embedded smart tags do not "initiate retrieval of the second code module as required by the claims; rather [they issue] a command to download other code." Because Yahoo!'s non-embedded smart code initiates retrieval of the alleged second code module, there can be no literal infringement.
Id. at *12-13 (internal citations omitted).
Doctrine of EquivalentsWe affirm the district court's grant of summary judgment [on its doctrine of equivalents ruling]. As construed, embedded code does not include externally linked code. Augme's arguments that the Combined RMX Module is equivalent to the embedded first code module are essential identical to its claim construction agreements: namely that linked code can fall within the definition of embedded code. No reasonable jury could find equivalence here because doing so would require a determination that embedded code is substantially the same as linked code - the very thing that the construction of "embedded" excludes. [...] Because the Augme patents make clear that embedded and linked code are opposites, we agree with the district court that they "cannot possess only insubstantial differences."
Id. at *14 (text added, internal citations omitted).
We affirm the grant of summary judgment of no literal infringment and of no infringement under the doctrine of equivalents based on the "embedded" limitation.
Augme Tech., at *2. 



Contributor's Note (Other Issues Discussed by the Court)
Summary Judgment of Invalidity of Augme's Means- Plus- Function ClaimsThe district court held that claims 19 and 20 of [Augme's] '691 patent are indefinite. It determined that the phrase "means for assembling, at said server system, said second computer readable code module," is an indefnite means-plus-function limitation because the patent does not disclose any structure or algorithm for performing the recited assembling function. [...]We affirm the district court's conclusion of indefiniteness because the '691 patent does not disclose any algorithm for assembling the second computer readable code module.
Augme Tech., at *17,19 (text added).
Summary Judgment of Appellants' Infringement of the '320 PatentThe district court construed [the limitation] "server hostname" [of claim 1 of Yahoo's '320 Patent] to be a "network name of a server." Appellants stipulated to infringement based on this construction. On appeal, Appellants challenge that construction as overly broad and argue that "server hostname" should be construed as "the network name of the particular media server in a content management system from which the digital content is served to the end user." We agree with the district court's construction which is consistent with the term's plain meaning. [...] Therefore, we affirm the district court's entry of summary judgment that Appellants infringe the asserted claims of the '320 patent [....]
Id. at *20-23 (text added).
Appellants' Invalidty Challenge to Claim 7 of the '320 PatentFinally, Appellants challenge the district court's determiniation that the claim 7 limitation [of Yahoo's '320 patent] of "receiving, by an ingest server, the unique identifier to the digital content" does not render the claim indefeinite. Appellants argue that the limitation is indefinite because the '320 patent only discloses that teh ingenest server recieves digital content, not a unique identifier as required by the claims. Appellants' arguments appear to be based on the wrong legal standard, i.e., written description or enablement as opposed to indefiniteness. [...] The limitation at issue here is clear on its face and unquestionable meets this standard. We affirm the district court's determination that claim 7 is not indefinite.
Id. at *23 (text added, internal citations omitted). 


 Image Attribution statement: FIG. 1 of U.S. Patent No. 7,269,636 (image edited).




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