Summary: CAFC confirms ruling of no infringement, indefiniteness, and infringement in summary judgment appeal.

Case: Augme Techs., Inc. v. Yahoo! Inc., No. 2013-1121, -1195 (Fed. Cir. Jun. 20, 2014) (precedential). On appeal from N.D. Cal. Before Moore, Schall, and Reyna.

Procedural Posture: Plaintiff Augme appealed the district court’s summary judgment of no infringement by defendant Yahoo!, the court’s ruling that certain claims of one of plaintiff’s patents were indefinite, and the parties’ stipulated judgment that Augme infringed the defendant’s asserted patent under the district court’s claim construction. CAFC affirmed.

  • Infringement: Augme’s asserted patents claimed a method of adding functionality, such as media or advertisements, to a web page by using a first code module “embedded” in a web page downloaded by a web browser to issue a command to retrieve from a server a second code module, which includes a “service response.” The district court erred by granting summary judgment of no infringement because there were disputed issues of fact as to whether the responses provided by Yahoo!’s accused systems, which either contained a suitable advertisement if one could be found or were blank, were an indication of “permission” to download the added functionality, as required by the “service response” claim limitation.
  • Claim Construction: The district court did not err in construing the claim limitation requiring a first code module “embedded” in a web page to exclude “linked” code, as the patent claims distinguished between “embedded” and “retrieved” or “downloaded” code, and the specification did not deviate from the plain and ordinary meaning of “embedded” code, which was code that is written into the code of the web page.
  • Infringement: The accused Yahoo! systems did not literally include the claim limitations requiring an “embedded” first code module that issues a command to retrieve a second code module, because they included one set of code that is embedded but does not retrieve, and a second set of code that retrieves but is not embedded. The Yahoo! system did not infringe under the doctrine of equivalents because the court’s construction of ”embedded” explicitly excludes linked code, which is a structural features that is the opposite of the recited claim limitation, and therefore the two systems were not insubstantially different. Moreover there was no evidence that the accused system performed the recited functions the same way as the claimed system, as required to meet the “function-way-result” test.
  • Indefiniteness: The district court correctly held that two patent claims asserted by Augme were indefinite. The claim language requiring a “means for assembling, at said server system, said second readable module” was indefinite under Section 112(2) because the specification did not disclose any algorithm for assembling the second code module.
  • Claim Construction: The district court did not err in holding that Augme infringed Yahoo!’s patent asserted in a counterclaim. The district court properly construed the claim term a “server hostname” to mean the “network name of a server” based on the plain meaning of the claim term, when neither the specification nor the prosecution history supported the narrower construction proposed by Augme.
  • Indefiniteness: The district court did not err in finding one claim of the Yahoo! patent to not be indefinite based on Augme’s argument that the claimed feature was not described in the specification, because this argument confused the written description or enablement doctrine with indefiniteness, and under the proper legal standard for indefiniteness the scope of the claims would have been clear on its face to a person of ordinary skill in the art.

Christopher Gresalfi