Impact Engine, Inc. v. Google LLC

Case: 22-2291 Document: 48 Page: 1 Filed: 07/03/2024

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

IMPACT ENGINE, INC.,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2022-2291

______________________

Appeal from the United States District Court for the

Southern District of California in No. 3:19-cv-01301-CAB-

DEB, Judge Cathy Ann Bencivengo.

______________________

Decided: July 3, 2024

______________________

JASON M. WILCOX, Kirkland & Ellis LLP, Washington,

DC, argued for plaintiff-appellant. Also represented by

STEPHEN DESALVO; GARRET A. LEACH, Chicago, IL; SHARRE

LOTFOLLAHI, Los Angeles, CA.

ANDREW DUFRESNE, Perkins Coie LLP, Madison, WI,

argued for defendant-appellee. Also represented by DAN L.

BAGATELL, Hanover, NH; JONATHAN IRVIN TIETZ, Washing-

ton, DC; DAVID A. NELSON, Quinn Emanuel Urquhart &

Case: 22-2291 Document: 48 Page: 2 Filed: 07/03/2024

2 IMPACT ENGINE, INC. v. GOOGLE LLC

Sullivan, LLP, Chicago, IL; DAVID ANDREW PERLSON,

ANTONIO R. SISTOS, San Francisco, CA.

______________________

Before REYNA, TARANTO, and HUGHES, Circuit Judges.

Opinion for the court filed by Circuit Judge TARANTO.

Opinion concurring-in-part, dissenting-in-part filed by

Circuit Judge REYNA.

TARANTO, Circuit Judge.

In the action now before us, Impact Engine, Inc. alleges

infringement by Google LLC of a family of Impact Engine’s

patents. Several orders of the district court are central to

addressing the disputes on appeal. First, the district court

entered two claim-construction orders: one that, e.g., con-

strued “compiling engine” to reflect the ordinary meaning

of “compiler,” Impact Engine, Inc. v. Google LLC, No. 19-

cv-01301, 2021 WL 5541942, at *4 (S.D. Cal. Feb. 5, 2021)

(First Claim Construction Order); the other that construed

“project viewer” elements in several asserted claims to be

means-plus-function elements under 35 U.S.C. § 112(f),

Impact Engine, Inc. v. Google LLC, No. 19-cv-01301, 2021

WL 9525522, at *3 (S.D. Cal. May 14, 2021) (Supplemental

Claim Construction Order). Second, acting under Fed. R.

Civ. P. 12(c), the district court held some asserted claims to

be invalid under 35 U.S.C. § 101. Impact Engine, Inc. v.

Google LLC, No. 19-cv-01301, 2021 WL 5234415, at *3–6

(S.D. Cal. Nov. 10, 2021) (Rule 12(c) Order). Third, acting

under Fed. R. Civ. P. 56, the district court held that (a) ad-

ditional asserted claims are invalid under § 101, (b) Impact

Engine had presented no basis on which a reasonable jury

could find infringement of two asserted claims containing

the “project viewer” phrase, and (3) one asserted claim is

invalid under § 112(a)’s written-description and enable-

ment requirements. Impact Engine, Inc. v. Google LLC,

624 F. Supp. 3d 1190, 1193–96 (S.D. Cal. 2022) (Summary

Judgment Order). Under those rulings, all asserted claims

Case: 22-2291 Document: 48 Page: 3 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 3

were either invalid or not infringed, so the district court

entered final judgment for Google. Impact Engine appeals.

We have jurisdiction under 28 U.S.C. § 1295(a)(1), and we

affirm.

I

A

Seven patents are at issue here: U.S. Patent No.

7,870,497 and six others that, descending from the ’497 pa-

tent through continuation applications, have the same

specification, named inventors, and April 2005 priority

date as the ’497 patent. 1 J.A. 29–215. The patents describe

and claim “systems and methods for creating, editing, shar-

ing and distributing high-quality, media-rich web-based

communications”—i.e., “presentation[s], banner advertise-

ment[s], website[s] or brochure[s]”—which “can be created

in a layered fashion that integrates text, colors, back-

ground patterns, images, sound, music, and/or video.” ’497

patent, col. 1, lines 13–14, 30–35. The specification ex-

plains that such communications, in the prior art, were de-

veloped by a “professional graphic designer,” “typically part

of a professional agency,” and that hiring such profession-

als was “usually cost-prohibitive for small enterprises . . .

and can be unnecessarily costly for larger enterprises.” Id.,

col. 1, lines 15–20. The specification describes, as a

1 By the time the district court entered final judg-

ment, Impact Engine asserted the following sixteen claims

from seven patents: claims 1 and 9 of U.S. Patent No.

7,870,497; claims 14, 16, 22, and 23 of U.S. Patent No.

10,565,618; claims 1, 7, and 12 of U.S. Patent No.

10,068,253; claims 14 and 18 (both dependent on claim 1)

of U.S. Patent No. 8,930,832; claims 4, 21, and 25 (all de-

pendent on claim 1) of U.S. Patent No. 9,361,632; claim 1

of U.S. Patent No. 8,356,253; and claim 30 of U.S. Patent

No. 10,572,898. Impact Engine Opening Br. at 15.

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4 IMPACT ENGINE, INC. v. GOOGLE LLC

simplifying and cost-lowering advance, internet-accessible

“software as a service” (SaaS) that “automates the process

of creating and distributing professional quality, media-

rich communications” in a “logical step-by-step, start-to-

finish process that requires no programming intervention”

and instead involves “auto-determining the ‘look and feel’

[and/or ‘content’] of a communication based on a series of

interview questions and/or other meta data.” Id., col. 1,

lines 24–26, 43–44; id., col. 2, lines 12–18, 49–50. The prin-

cipal SaaS system described and claimed in the asserted

patents is a “communication builder engine” that “includes

a project builder . . . for generating a project viewer . . . via

which a user can view and assemble various media compo-

nents or assets into an integrated communication” and that

“further includes a media repository . . . for storing commu-

nication project templates, media assets, communication

project metadata, and any other data resources.” Id., col.

3, lines 9–15; see also id., col. 2, line 65, through col. 3, line

29; id., fig.1.

Claims 1 and 9 of the ’497 patent and claim 30 of the

’898 patent are representative for purposes of appeal:

’497 patent, claim 1. A multimedia communication

system comprising:

a media repository storing communication

project templates and media assets of a

number of content types, the project tem-

plates and media assets being accessible by

a graphical user interface on a client com-

puter via a network; and

a project builder providing the graphical

user interface for the client computer via

the network for local display of the graph-

ical user interface on the client computer,

the graphical user interface comprising

controls to receive user input for selecting

at least one communication project

Case: 22-2291 Document: 48 Page: 5 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 5

template from the media repository and

one or more media assets, and assembling

a communication based on the at least one

communication project template, the pro-

ject builder further including an interac-

tive interview for display on the graphical

user interface, the interactive interview

providing a plurality of questions to a user

for eliciting a user response pertaining to

user preferences, and further receiving the

user preferences about the at least one

communication project template and one or

more media assets to assemble the commu-

nication.

’497 patent, claim 9. A multimedia communication

system in accordance with claim 1, further com-

prising a project viewer that renders an assembled

communication and transmits the rendered com-

munication via the network to the client computer

for viewing in the graphical user interface.

’898 patent, claim 30. An online advertisement

generation system for autonomously generating

and broadcasting a communication to a graphical

user interface of a recipient device, the communi-

cation capable of being rendered, the online adver-

tisement generation system comprising:

a media repository for storing media con-

tent comprising a plurality of online adver-

tisement templates and a plurality of

media assets;

a communications system server coupled to

the media repository, the communications

system server being connectable to an in-

ternet network, the communications sys-

tem server being configured for receiving,

via the internet network, one or more of

Case: 22-2291 Document: 48 Page: 6 Filed: 07/03/2024

6 IMPACT ENGINE, INC. v. GOOGLE LLC

user data, keyword data, and geographic

data, and comprising:

an advertisement generation engine for au-

tonomously generating the communication,

the advertisement generation engine for

accessing the media repository and select-

ing, based on one or more of the user data,

keyword data, and geographic data, at

least one of the plurality of online adver-

tisement templates and at least one of the

plurality of media assets to generate the

communication, the communication includ-

ing a collection of slides comprising a

grouping of design layers, design elements,

and content containers;

a compiling engine for integrating the at

least one selected media asset with the at

least one selected online advertisement

template, and for grouping the design lay-

ers, design elements, and content contain-

ers into the collection of slides so as to

generate the communication capable of be-

ing rendered in a manner so as to be con-

tent specific to the user data, keyword data,

and geographic data;

a formatting engine for formatting the com-

munication; and

a distribution engine wherein once the

communication is generated and format-

ted, the communications system server au-

tonomously broadcasts the one or more

communications via the distribution en-

gine to the recipient device so as to be ren-

dered at the graphical user interface

thereof, the slides being displayable in an

auto-play on or an auto-play off format.

Case: 22-2291 Document: 48 Page: 7 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 7

B

In July 2019, Impact Engine filed a complaint against

Google in the United States District Court for the Southern

District of California alleging that Google was and is in-

fringing six of Impact Engine’s patents, J.A. 280–307, and

in March 2020, Impact Engine added allegations of in-

fringement of two more patents from the ’497 patent fam-

ily, J.A. 1250–80. As relevant here, the litigation produced

rulings on claim construction, the invalidity of several as-

serted claims under § 101, infringement of certain surviv-

ing claims, and the invalidity of one claim under § 112.

1

The district court entered two claim-construction or-

ders of relevance to this appeal. In a February 2021 order,

the district court construed the “compiling engine” claim

phrase—relying on the agreed-on “commonly understood

meaning” of “compiler” (as used in the specification) to one

“in the computer arts at the time the patent was filed”—as

a program that does “back-end processing of source code

into machine or object code.” First Claim Construction Or-

der, at *4. In the same order, the district court construed

the “project builder” claim phrase as “server-side software

and hardware that obtains user information, selects appro-

priate template(s) and asset(s) and obtains user formatting

and transmission information,” noting that “program con-

structs” that “provide this function of the system would be

tools familiar to one of skill.” Id. at *4–5.

In May 2021, the district court issued a supplemental

claim-construction order addressing limitations containing

the phrase “project viewer.” The court explained that the

“claims and the specification describe the patents’ Project

Viewer limitation as much more than an application to dis-

play a file created by another application.” Supplemental

Claim Construction Order, at *3. Rather, “the functions

performed by the Project Viewer” across the asserted

claims “include rendering [serializing] the communication

Case: 22-2291 Document: 48 Page: 8 Filed: 07/03/2024

8 IMPACT ENGINE, INC. v. GOOGLE LLC

[i.e., collection of slides]; displaying slides in auto-play on

or auto-play off modes; sending the communication to the

client computer; [and] allowing the user to view templates

and media assets.” Id. (first two alterations in original). In

particular, rendering is something the project viewer does

to material provided to the project viewer by the project

builder (project slides and other content), and “render[ing]”

means “serializing the project slides and content into a for-

mat that can be stored or transmitted.” Id. at *1; see id. at

*2 (“The Project Viewer renders, or serializes, the commu-

nication using the selected templates and assets provided

by the Project Builder into the collection of slides and

transmits or sends the rendered communication to the cli-

ent user for viewing and editing.”); ’497 patent, col. 4, lines

27–30 (“The project viewer . . . is an application that ren-

ders or ‘serializes’ the communication project slides and

content, and provides them with functionality.”).

Because a “project viewer” performs more than display

functions, the court concluded, “project viewer” would not

be understood by a relevant artisan as itself identifying a

structure. Supplemental Claim Construction Order, at *3

(emphasizing the lack of evidence that “known ‘viewer’ ap-

plications” could “render or serialize the communication

project slides and provide them with functionality as de-

scribed by the patents”). Accordingly, the presence of “pro-

ject viewer” in relevant claims, accompanied by

identification of functions it must perform, made the “pro-

ject viewer” element at issue a means-plus-function ele-

ment under 35 U.S.C. § 112(f). Id. The district court then

stated that, in the aggregate, the corresponding “structures

disclosed to perform the functions of the Project Viewer are

described at Col. 4:27 through Col. 9:19.” Id.

2

In November 2021, the district court, acting on Google’s

motion under Fed. R. Civ. P. 12(c) (framed and treated as

a motion to dismiss), held that claims 14, 16, 22, and 23 of

Case: 22-2291 Document: 48 Page: 9 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 9

the ’618 patent and claim 1 of the ’497 patent—none of

which contain “project viewer” language—are invalid un-

der 35 U.S.C. § 101. Rule 12(c) Order, at *3–6, *8. The

district court reasoned that those claims “are directed at

the abstract idea of a system for generating customized or

tailored computer communications based on user infor-

mation,” id. at *4 (citing Intellectual Ventures I LLC v. Cap-

ital One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir.

2015)), and “recite only generic computer components func-

tioning in their known conventional manner,” which “does

not amount to inventive concept,” id. at *6; see also id. at

*5 (first citing Alice Corp. v. CLS Bank International, 573

U.S. 208, 225–26 (2014); and then citing Intellectual Ven-

tures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed.

Cir. 2016)).

3

In August 2022, the district court granted summary

judgment to Google on the remainder of Impact Engine’s

asserted claims, disposing of each remaining asserted

claim under one of three rationales.

a

Certain remaining claims recite both a “project builder”

that generates a communication and a “project viewer” that

merely sends or displays, but does not “render,” the com-

munication: claims 1, 7, and 12 of the ’8,253 patent; claims

1, 14, and 18 of the ’832 patent; and claims 1, 4, 21, and 25

of the ’632 patent. For those claims, the district court

granted summary judgment of invalidity under § 101 for

reasons similar to those expressed in its Rule 12(c) opinion.

Summary Judgment Order, at 1194–96. The court rea-

soned that “in the scope of these asserted claims,” the pro-

ject viewer “operate[s] in its known and familiar capacity,”

which does not amount to an inventive concept. Id. at

1194–95; see also Supplemental Claim Construction Order,

at *3 (distinguishing the project viewer’s disclosed function

“to render or serialize the communication project slides and

Case: 22-2291 Document: 48 Page: 10 Filed: 07/03/2024

10 IMPACT ENGINE, INC. v. GOOGLE LLC

provide them with functionality as described by the pa-

tents” as potentially nonconventional in the art, in contrast

with the routine and well-known function of “display[ing]

a file created by another application”).

b

For claim 9 of the ’497 patent and claim 1 of the ’6,253

patent, each of which requires the “project viewer” to “ren-

der” a communication, the district court granted summary

judgment of noninfringement. Impact Engine does not dis-

pute that those claims are materially similar for present

purposes, that the “project viewer” language is means-plus-

function language, or that the analysis is properly focused

on the “render” function those claims require the “project

viewer” to perform. Accordingly, for its infringement case,

Impact Engine had to identify structure in the specifica-

tion—here, algorithms for what is undisputedly software—

corresponding to the claimed rendering function.

Impact Engine relied on the analysis provided by its

expert, Dr. Wicker. In its summary-judgment briefing, Im-

pact Engine stated that “[t]he Court left it to the parties—

and their experts—to determine which of those disclosed

structures are necessary to perform each claimed func-

tion.” J.A. 9856 (emphasis in original). Impact Engine ex-

plained that Dr. Wicker had therefore performed an

infringement analysis that “organized the [five-column

specification] passage identified by the Court [in the Sup-

plemental Claim Construction Order] into nine algorithmic

structures” and then “identified which structures are nec-

essary to perform each claimed function.” J.A. 9856 (citing

J.A. 8352–54 ¶¶ 250–51, 253–54; J.A. 8393 ¶ 296; J.A.

8486 ¶ 379). Dr. Wicker asserted that, for the project

viewer’s rendering functionality, the corresponding struc-

ture consisted of three of the nine algorithmic structures

he had identified, and those three were located in aggre-

gate at fifteen lines of column 4 of the ’497 patent, namely

lines 27–42: “(1) receiving a project object as input, the

Case: 22-2291 Document: 48 Page: 11 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 11

project object containing information necessary for render-

ing; (2) loading and interpreting the project object; [and] (3)

determining a load sequence for the communication pro-

ject.” J.A. 8352–53 ¶¶ 250, 253.

The district court held that Impact Engine had “based

its infringement analysis on a construction that does not

comport with the Court’s claim construction” and therefore

“[could not] sustain its burden to prove infringement.”

Summary Judgment Order, at 1194. The district court

noted that it had earlier “identified a significant portion of

the specification that describes how the project viewer ren-

ders a communication based on the user’s selections, start-

ing at Col. 4:27 through Col. 9:19” and explained that

“[w]ithin these columns, the specification discloses in detail

how the project viewer loads the content and design ele-

ments selected by the user into containers at various layers

to render a communication.” Id. at 1193–94 (citing ’497 pa-

tent, col. 5, line 7, through col. 8, line 59). The court then

observed that “Impact Engine’s expert did not apply any of

this detailed description of how the project viewer uses the

information it is provided to render a communication” but

instead relied for the rendering functionality only on one

paragraph in column 4. Id. at 1194. The district court con-

cluded, however, that all the cited passage discloses is

“simply receipt by the project viewer of the ‘project object,’

the information necessary for the project viewer to render

the communication as configured by the end user” and that

the “receipt of the information to render a communication

as configured by the end user is not the structure for the

actual rendering of the communication as required by the

claims and the Court’s construction.” Id. (emphasis added).

For that reason, the district court granted Google summary

judgment of noninfringement of the two claims at issue.

c

One more claim had to be addressed: claim 30 of the

’898 patent, which recites a “compiling engine.” For that

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12 IMPACT ENGINE, INC. v. GOOGLE LLC

claim, the district court granted Google summary judg-

ment of invalidity under § 112(a), citing both the enable-

ment and written-description requirements. Id. at 1195.

The district court explained that the specification “does not

disclose any information or mechanism that would inform

a person of skill in the art how a compiler as construed”—

“a program that translates source code into machine or ob-

ject code”—also performs the claimed functions of the “com-

piling engine” of “group[ing] the claimed design layers,

design elements and content containers into a collection of

slides to generate a communication.” Id. at 1195 (emphasis

added).

II

On appeal, Impact Engine presents three issues for our

review. First, Impact Engine challenges the district court’s

holding that several asserted claims are invalid for ineligi-

bility under § 101. Second, Impact Engine challenges an

aspect of the district court’s “project viewer” claim con-

struction, particularly as it relates to the claimed “render-

ing” functionality, and on that basis challenges the two

noninfringement determinations. Third, Impact Engine

challenges the district court’s determination that claim 30

of the ’898 patent is invalid under § 112(a).

Following Ninth Circuit law, we decide de novo

whether the Rule 12(c) judgment and summary judgment

before us are correct. OIP Technologies, Inc. v. Ama-

zon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015); Kaneka

Corp. v. Xiamen Kingdomway Group Co., 790 F.3d 1298,

1303 (Fed. Cir. 2015); Fed. R. Civ. P. 12(c); Fed. R. Civ. P.

56(a). Subject-matter eligibility under § 101 is a legal issue

that we decide de novo where, as here, there are no under-

lying material factual determinations to review. Natural

Alternatives International, Inc. v. Creative Compounds,

LLC, 918 F.3d 1338, 1342 (Fed. Cir. 2019). We review a

district court’s claim construction, including identification

of any corresponding structure for a means-plus-function

Case: 22-2291 Document: 48 Page: 13 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 13

claim, without deference to the extent that it is based on

intrinsic evidence, but we review subsidiary fact-finding for

clear error. Teva Pharmaceuticals USA, Inc. v. Sandoz,

Inc., 574 U.S. 318, 331–32 (2015); Williamson v. Citrix

Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). In-

fringement is a factual issue. Lucent Technologies, Inc. v.

Gateway, Inc., 580 F.3d 1301, 1309 (Fed. Cir. 2009). Inva-

lidity under § 112(a) is a factual issue as to written descrip-

tion and a legal issue with subsidiary factual issues as to

enablement. Vasudevan Software, Inc. v. MicroStrategy,

Inc., 782 F.3d 671, 682, 684 (Fed. Cir. 2015).

We conclude that Impact Engine has identified no error

that warrants setting aside the district court’s judgment.

A

The district court ruled that the asserted claims inval-

idated as claiming patent-ineligible subject matter under

§ 101 are (1) “directed at the abstract idea of a system for

generating customized or tailored computer communica-

tions based on user information” and (2) “recite only ge-

neric computer components functioning in their known,

conventional manner” and therefore fail to recite an in-

ventive concept. Rule 12(c) Order, at *4–6; see also Sum-

mary Judgment Order, at 1194–95. We see no error in

those rulings and no need for additional claim construction

to draw that conclusion.

“[W]e have explained that ‘[i]nformation as such is an

intangible’; accordingly, ‘gathering and analyzing infor-

mation of a specified content, then displaying the results’

without ‘any particular assertedly inventive technology for

performing those functions’ is an abstract idea.” In re

Killian, 45 F.4th 1373, 1382 (Fed. Cir. 2022) (second alter-

ation in original) (quoting Electric Power Group, LLC v. Al-

stom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016)), cert.

denied sub nom. Killian v. Vidal, 144 S. Ct. 100 (2023),

reh’g denied, 144 S. Ct. 441 (2023); Trading Technologies

International, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed.

Case: 22-2291 Document: 48 Page: 14 Filed: 07/03/2024

14 IMPACT ENGINE, INC. v. GOOGLE LLC

Cir. 2019) (same); Two-Way Media Ltd. v. Comcast Cable

Communications, LLC, 874 F.3d 1329, 1338 (Fed. Cir.

2017) (same); Capital One, 792 F.3d at 1369 (“Providing

this minimal tailoring [of website information content

based on user-specific information] is an abstract idea.”).

Here, the claims held ineligible are directed to an ab-

stract idea in that well-established sense. Those claims re-

cite systems comprising an unordered list of generically

named elements (i.e., “project builder,” “media repository,”

“[formatting/compiling/distribution] engine”) each associ-

ated with high-level, broadly articulated, result-defined in-

formation-processing functionality. The focus of the claims

is the abstract idea of processing information—turning

user-provided input into user-tailored output—and not any

improved concrete tools or methods by which that pro-

cessing functionality is achieved. See FairWarning IP,

LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.

2016) (“Thus here, as in Electric Power, ‘the focus of the

claims is not on . . . an improvement in computers as tools,

but on certain independently abstract ideas that use com-

puters as tools.’” (alteration in original) (quoting Electric

Power, 830 F.3d at 1354)).

Nor do the relevant claims recite an inventive concept

that transforms them into a patent-eligible application of

that abstract idea. The relevant claims do not recite a spe-

cific improvement to computer components or standard

functionality; they recite unordered arrangements of ge-

neric functional components that, at best, use generic com-

puter-related components (i.e., “network[s],” “graphical

user interface[s],” “server[s]”) as tools in a routine and con-

ventional sense to practice the above-defined abstract in-

formation-processing idea. See Hawk Technology Systems,

LLC v. Castle Retail, LLC, 60 F.4th 1349, 1358–59 (Fed.

Cir. 2023) (“Simply stated, ‘[n]othing in the claims, under-

stood in light of the specification, requires anything other

than off-the-shelf, conventional computer, network, and

display technology for gathering, sending, and presenting

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IMPACT ENGINE, INC. v. GOOGLE LLC 15

the desired information.’” (alteration in original) (quoting

Electric Power, 830 F.3d at 1355)); Symantec Corp., 838

F.3d at 1315 (“[T]hese claims use generic computers to per-

form generic computer functions.”).

The claims also do not limit the arrangement of the

claimed components in any way that recites an inventive

concept. Although an “inventive concept can be found in

the non-conventional and non-generic arrangement of

known, conventional pieces,” BASCOM Global Internet

Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350

(Fed. Cir. 2016), the relevant claims before us merely list

the constituent elements of the claimed systems without

providing any concrete or specific nonconventional manner

in which those constituent parts are arranged or a noncon-

ventional mode of operation that the claimed arrangement

might achieve. See Internet Patents Corp. v. Active Net-

work, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015).

Last, for those invalidated claims reciting a “project

viewer” associated with the functionality of merely sending

or displaying a communication but not “rendering” it, Sum-

mary Judgment Order, at 1194–95, no different conclusion

is warranted. Although Impact Engine asserts that the

project viewer, when performing the sending/displaying

functionality, “limits the claims to a ‘specific, discrete im-

plementation’ of the allegedly ‘abstract idea,’” Impact En-

gine cites no material evidence demonstrating that the

project viewer, in that context, performs anything other

than well-known, routine, and conventional computer func-

tionality. Impact Engine Opening Br. at 49–50 (quoting

BASCOM, 827 F.3d at 1350). And Impact Engine’s argu-

ments on appeal are undercut by the positions it took be-

fore (and the evidence it provided to) the district court,

where Impact Engine argued that the “project viewer” (at

least where no rendering functionality is required) is a

well-known, routine software construct. Compare J.A.

7561, 12533 (Impact Engine arguing that the “project

viewer” should be construed as “a known program

Case: 22-2291 Document: 48 Page: 16 Filed: 07/03/2024

16 IMPACT ENGINE, INC. v. GOOGLE LLC

construct that would be familiar to one of skill in the art”),

and J.A. 7609–11 (Dr. Wicker’s report in support of Impact

Engine’s proposed claim constructions, stating that a “pro-

ject viewer” as used in the asserted patents would be un-

derstood by a relevant artisan as “a known programming

construct”), with J.A. 12379–80 (Impact Engine arguing

that the rendering functionality associated with the “pro-

ject viewer” potentially provides an inventive concept).

B

Impact Engine next challenges the district court’s rul-

ing, on Google’s motion for summary judgment, that Im-

pact Engine lacked evidence to permit a reasonable finding

that claim 9 of the ’497 patent and claim 1 of the ’6,253

patent, both of which claim a “project viewer” that performs

the function of “render[ing]” a communication, are in-

fringed. Summary Judgment Order, at 1194. Impact En-

gine does not challenge the conclusion that the materially

indistinguishable claim elements consisting of “project

viewer” with the identified “render[ing]” function are

means-plus-function elements. Impact Engine Opening

Br. at 51, 66–67. Nor does Impact Engine dispute that the

district court’s noninfringement determination must stand

if Impact Engine’s relied-on passages of the specification

fail to supply an algorithm for carrying out the claimed ren-

dering function under our precedents governing “special

purpose computer-implemented means-plus-function limi-

tation[s].” Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302,

1312 (Fed. Cir. 2012). We conclude that the relied-on spec-

ification passages do fail to supply the required algorithm,

and so we affirm on this issue without having to resolve

other disputes about ultimately immaterial aspects of the

course of litigation and adjudication regarding various

“project viewer” claims.

On appeal, Impact Engine relies entirely on column 4,

lines 27–42, as setting out the required algorithm. Impact

Case: 22-2291 Document: 48 Page: 17 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 17

Engine Opening Br. at 59–63, 66, 69–70; Impact Engine

Reply Br. at 31–32. 2 That passage reads:

The project viewer, such as the project viewer

118 shown in FIG. 1, is an application that renders

or “serializes” the communication project slides

and content, and provides them with functionality.

When the project viewer is launched, it is passed a

data structure and associated software programs

called the project object. The project object con-

tains the information necessary for the communi-

cation project to render and playback as configured

by the end user. Slides are represented in the pro-

ject object as elements in an array. Once the pro-

ject object is loaded and interpreted, the project

viewer determines a load sequence for the commu-

nication project content. The project object is ag-

nostic as to the type of file it is rendering and is,

2 Although Impact Engine argues that its expert ad-

dressed other specification passages assertedly reciting

other algorithmic structures for the “project viewer,” Im-

pact Engine Opening Br. at 72–74, the only passages it re-

lies on for the rendering function are those in column 4,

lines 27–42, id. at 59, 66. Impact Engine recognizes, cor-

rectly, that the proper focus of analysis for these means-

plus-function claims is on structures performing the

claimed functions, not the “project viewer” without further

qualification. Id. at 73 (noting that many specification de-

tails assertedly addressed by its expert are “not pertinent

to any project viewer function claimed in the ’497 and

’6,253 patents”). The claims at issue for noninfringement

require the rendering function. We therefore may focus on

that requirement. Because we conclude that the infringe-

ment proof fails (under summary-judgment standards) re-

garding that requirement, and that conclusion requires no

additional claim construction, we need not go further.

Case: 22-2291 Document: 48 Page: 18 Filed: 07/03/2024

18 IMPACT ENGINE, INC. v. GOOGLE LLC

therefore, able to produce a wide variety of commu-

nications such as websites, dynamically created

websites, Flash™ banner ads, presentations, bro-

chures, advertisements on third party websites,

and/or the like.

’497 patent, col. 4, lines 27–42. As noted, the specification

proceeds beyond that paragraph to add several columns’

worth of specifics, see id., cols. 4–9, but Impact Engine in-

sists on disregarding those additional descriptions and in-

stead relying entirely on the paragraph quoted above. We

therefore limit our analysis to the adequacy of that para-

graph.

The paragraph is inadequate. Recognizing the need for

genuine structure in the specification over and above the

claimed function, we have repeatedly explained that

“purely functional language, which simply restates the

function associated with the means-plus-function limita-

tion, is insufficient to provide the required corresponding

structure.” Noah Systems, 675 F.3d at 1317; see Black-

board, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.

Cir. 2009); Aristocrat Technologies Australia Pty Ltd. v. In-

ternational Game Technology, 521 F.3d 1328, 1333–35

(Fed. Cir. 2008). In this case, the specification paragraph

Impact Engine relies on for the required algorithm adds

nothing of substance to what the claim-expressed function

of “render[ing]” the communication itself requires under

the unchallenged construction of that claim term.

The district court, construing the rendering language,

ruled that “render[ing]” means “serializing the project

slides and content into a format that can be stored or trans-

mitted,” Supplemental Claim Construction Order, at *1,

adding: “The Project Viewer renders, or serializes, the com-

munication using the selected templates and assets pro-

vided by the Project Builder into the collection of slides and

transmits or sends the rendered communication to the cli-

ent user for viewing and editing,” id. at *2. The function-

Case: 22-2291 Document: 48 Page: 19 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 19

defining language of the claim, as construed, itself requires

presentation of material from the project builder to the pro-

ject viewer for the latter to take in and process into a form

for a serial output for storage or transmission to the user

for the latter’s viewing or editing. Impact Engine has pro-

vided no basis for us to read the above-quoted paragraph—

including its general reference to receiving a project object

from the project builder, which is loaded and interpreted

by the project viewer and then processed into an output—

as saying anything substantial beyond what is required by

the construction of the claimed rendering function. The

district court so concluded, Summary Judgment Order, at

1194, and we agree. As Google argues, “those sixteen lines

contain no specific algorithm, just a high-level description

of the rendering function as an introduction to the detailed

algorithmic structure in the following columns.” Google

Response Br. at 53. Those lines are not enough. And Im-

pact Engine eschews reliance on the succeeding columns

containing actual how-to algorithms, 3 thus avoiding the

§ 112(f) inquiry into whether the accused Google processes

are equivalents to the specifics of those columns.

3 See, e.g., ’497 patent, col. 5, lines 14–18 (“All of the

complex programming needed to govern content loading,

playback, and functionality has been incorporated into the

project viewer and container components. The system in-

cludes a number of core design files.”); id., col. 4, line 45–

46 (“[T]he project viewer . . . loads the content into the con-

tainers.”); id., col. 7, lines 11–13 (“The image component is

a multimedia module that is used inside the core design

files to load and display images and/or .swf files.”); id., col.

7, lines 36–37 (“The video component is used inside the core

design files to load and display .flv video.”); id., col. 8, lines

8–9 (“The text component is used inside the core design

files to load and display HTML formatted text.”).

Case: 22-2291 Document: 48 Page: 20 Filed: 07/03/2024

20 IMPACT ENGINE, INC. v. GOOGLE LLC

Arguing for a contrary conclusion, Impact Engine

points to our decision in University of Pittsburgh of Com-

monwealth System of Higher Education v. Varian Medical

Systems, Inc., 561 F. App’x 934, 941 (Fed. Cir. 2014). Even

aside from the fact that the decision is not precedential,

University of Pittsburgh does not save Impact Engine’s

case. At most, the decision indicates that one specification

passage can suffice to serve as corresponding structure if it

adequately discloses structure itself, even if other passages

in the specification provide additional implementation de-

tails. Here, Impact Engine’s problem is that the sole spec-

ification passage it relies on is an inadequate disclosure of

corresponding structure, for the reasons stated. We there-

fore affirm the district court’s ruling that claim 9 of the ’497

patent and claim 1 of the ’6,253 patent are not infringed.

C

We also affirm the district court’s ruling that claim 30

of the ’898 patent is invalid under § 112(a) for lack of writ-

ten-description support (so we need not reach the enable-

ment issue). For the ’898 patent’s written description to be

adequate for claim 30, the written description itself must

show a relevant artisan that the inventors were in posses-

sion of the subject matter claimed in claim 30, where “[o]ne

shows that one is in possession of the invention by describ-

ing the invention, with all its claimed limitations.” Lock-

wood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.

Cir. 1997) (emphasis in original) (internal quotation marks

omitted); see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.,

598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“[T]he hall-

mark of written description is disclosure. Thus, ‘possession

as shown in the disclosure’ is a more complete formula-

tion.”). On appeal, Impact Engine does not challenge the

district court’s construction of a “compiler” or a “compiling

engine” as a program for “back-end processing of source

code into machine or object code.” First Claim Construction

Order, at *4. For the written description to be adequate,

therefore, it must describe the claimed “compiling engine,”

Case: 22-2291 Document: 48 Page: 21 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 21

under that construction, as performing the claimed func-

tions of “integrating the at least one selected media asset

with the at least one selected online advertisement tem-

plate” and “grouping the design layers, design elements,

and content containers into the collection of slides so as to

generate the communication capable of being rendered in

a manner so as to be content specific to the user data, key-

word data, and geographic data.” ’898 patent, col. 19, line

39, through col. 20, line 27.

The ’898 patent’s specification nowhere contains that

description. Impact Engine identifies sections of the ’898

patent’s specification that, at best, treat a “compiler” as a

black-box functionality, see Impact Engine Opening Br. at

76–77 (citing ’898 patent, figs.1, 3; id., col. 12, lines 52–54),

and otherwise provide no description of a “compiling en-

gine” that processes source code into machine code and also

performs the claimed functions. To the extent that the

specification refers to “compil[ing]” a communication, it is

merely referring to putting “customized communication

project(s) . . . into a format suitable for transmission,” not

to compiling source code into machine code. ’898 patent,

col. 12, lines 52–54. Impact Engine has identified nothing

in the specification that describes a program that performs

the defining function of a “compiling engine” (source-code-

into-machine-code processing) as also performing the other

functions required by claim 30. That deficiency is a suffi-

cient basis for affirming the district court’s invalidity de-

termination.

A contrary conclusion is not supported by the testi-

mony of Dr. Wicker that a skilled artisan “would have un-

derstood how to implement this functionality in software.”

J.A. 10494–95 ¶ 1192 (cited by Impact Engine Opening Br.

at 77–78). Our precedents rejecting the notion that an en-

abling disclosure always suffices to meet § 112(a)’s written-

description requirement make clear that, even if a skilled

artisan “would have understood how to implement” the

claimed functionality in software if the specification

Case: 22-2291 Document: 48 Page: 22 Filed: 07/03/2024

22 IMPACT ENGINE, INC. v. GOOGLE LLC

described a compiler containing the functionality, that does

not mean that the written description itself demonstrates

to a relevant artisan that the inventors possessed the in-

vention of that functionality in a compiler. See, e.g., Ariad,

598 F.3d at 1344–45, 1351–53; Boston Scientific Corp. v.

Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011);

University of Rochester v. G.D. Searle & Co., 358 F.3d 916,

927 (Fed. Cir. 2004); In re Barker, 559 F.2d 588, 591 (CCPA

1977) (“A specification may contain a disclosure that is suf-

ficient to enable one skilled in the art to make and use the

invention and yet fail to comply with the description of the

invention requirement.”). Because the specification fails to

describe any instance of the claimed “compiling engine,” as

construed, performing the claimed “integrating,” “group-

ing,” and “generat[ing]” functions, we conclude, as a matter

of law, that claim 30 is invalid for lack of written-descrip-

tion support.

III

We have considered Impact Engine’s remaining argu-

ments and find them unpersuasive. For the foregoing rea-

sons, the district court’s judgment is affirmed.

AFFIRMED

Case: 22-2291 Document: 48 Page: 23 Filed: 07/03/2024

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

IMPACT ENGINE, INC.,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2022-2291

______________________

Appeal from the United States District Court for the

Southern District of California in No. 3:19-cv-01301-CAB-

DEB, Judge Cathy Ann Bencivengo.

______________________

REYNA, Circuit Judge, concurring-in-part, dissenting-in-

part.

I concur in part with the majority opinion. I dissent

only to the majority’s non-infringement and ineligibility de-

terminations as to the “project viewer” claims. I would va-

cate the district court’s summary judgment grant of

(1) non-infringement of claim 9 of the ’497 patent and

claim 1 of the ’6,253 patent, and (2) Section 101 ineligibility

of the claims in the ’8,253 patent, ’832 patent, and ’632 pa-

tent, and remand for further proceedings.

Case: 22-2291 Document: 48 Page: 24 Filed: 07/03/2024

2 IMPACT ENGINE, INC. v. GOOGLE LLC

I

The district court erred in granting summary judgment

of non-infringement and ineligibility as to the “project

viewer” claims. These determinations were based on the

district court’s legally insufficient and underdeveloped

claim construction of “project viewer,” a term that no party

disputes is a means-plus-function claim term. As a result,

the district court left the parties, and us, with no basis to

determine whether the “project viewer” claims of the ’497

patent and the ’6,253 patent are infringed by Google’s ac-

cused products and whether the “project viewer” claims of

the ’8,253 patent, ’832 patent, and ’632 patent are ineligible

under Section 101. I would vacate the district court’s sum-

mary judgment grants, vacate the district court’s legally

insufficient claim construction order, and remand for fur-

ther proceedings, to include a new construction of “project

viewer” in line with our means-plus-function claim con-

struction case law. Playtex Prods., Inc. v. Procter & Gam-

ble Co., 400 F.3d 901, 909–10 (Fed. Cir. 2005) (vacating

summary judgment determination based on flawed claim

construction); Nazomi Commc’ns, Inc. v. Arm Holdings,

PLC, 403 F.3d 1364, 1366 (Fed. Cir. 2005) (same); Liquid

Dynamics Corp. v. Vaughan Co., 355 F.3d 1361, 1371 (Fed.

Cir. 2004) (same); Pickholtz v. Rainbow Techs., Inc., 284

F.3d 1365, 1374 (Fed. Cir. 2002) (same).

Our case law compels my dissent. Our case law is clear

that in order to review a district court’s claim construction,

this court “must be furnished sufficient findings and rea-

soning to permit meaningful appellate scrutiny.” Nazomi

Commc’ns, 403 F.3d at 1371 (citation omitted); Anchor

Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d

1298, 1311 (Fed. Cir. 2003); Gechter v. Davidson, 116 F.3d

1454, 1458 (Fed. Cir. 1997); Graco, Inc. v. Binks Mfg. Co.,

60 F.3d 785, 791 (Fed. Cir. 1995); Shuffle Master, Inc. v.

VendingData Corp., 163 F. App’x 864, 868–69 (Fed. Cir.

2005). For a means-plus-function claim term, this means

that a court must provide sufficient analysis under a two-

Case: 22-2291 Document: 48 Page: 25 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 3

step inquiry. First, a court must identify the claimed func-

tion. Williamson v. Citrix Online, LLC, 792 F.3d 1339,

1351 (Fed. Cir. 2015). Second, the court must determine

what structure, if any, disclosed in the specification corre-

sponds to the claimed function. Id. Stated differently, the

written description must recite corresponding structure for

the claimed function, otherwise the claim fails as indefi-

nite. Id. at 1352. At step two, courts must clearly identify

the structure in the specification that corresponds to the

claimed function. A court’s failure to do so may result in a

construction that inadvertently and inappropriately im-

ports structure that is not required for the claimed func-

tion. Northrop Grumman Corp. v. Intel Corp., 325 F.3d

1346, 1352 (Fed. Cir. 2003) (“A court may not import into

the claim features that are unnecessary to perform the

claimed function.”).

The district court did not provide a sufficient analysis

under this two-step inquiry in its claim construction order,

resulting in a seriously deficient and confusing construc-

tion of “project viewer.” Impact Engine, Inc. v. Google LLC,

No. 19-cv-01301, 2021 WL 9525522, at *3 (S.D. Cal. May

14, 2021) (Claim Construction Order). At step 1, and in one

sentence, the district court summarily concluded that a

“project viewer” performed the following four functions

across all ten asserted “project viewer” claims: rendering a

communication, displaying slides, sending a communica-

tion; and allowing a user to view templates. Id. This anal-

ysis was in error because it was divorced from the claims

at issue. The analysis, or lack thereof, did not specify

which function was associated with each of the “project

viewer” claims but rather associated all four functions with

all asserted “project viewer” claims. No party disputes that

the function of a “project viewer” differed depending on the

claim. Appellant Br. 17; Appellee Br. 21.

The district court also erred at step 2. Rather than

identify which structure in the specification corresponded

to each of the four functions, the district court pointed to

Case: 22-2291 Document: 48 Page: 26 Filed: 07/03/2024

4 IMPACT ENGINE, INC. v. GOOGLE LLC

over three hundred lines of specification, spanning five col-

umns, as the corresponding structure for “project viewer”

across all asserted claims. Id. (citing ’497 patent,

4:27–9:19). Based on this summary conclusion, the parties

nor this court can tell whether the five columns of structure

are required for all four functions or whether certain por-

tions of these five columns correspond to a specific function.

In other words, the district court left it to the parties, and

even worse, this court, to sort out which structure corre-

sponds to each of the four functions. This is not the parties’

job nor ours. As the majority even noted at oral argument,

“[w]hat the district court did here was really confusing by

identifying a whole bunch of material without specifically

mapping the structure in that to the functions. . . . It is []

not [our] job to read this and figure out what the structure

is in the first instance.” Oral Arg. 16:40–17:25 (emphasis

added).

In sum, the district court’s construction of “project

viewer” is inadequate. The district court does not set out

any basis for its reasoning sufficient for meaningful appel-

late review. This court must therefore vacate and remand

for further claim construction and subsequent infringe-

ment and Section 101 analyses of the “project viewer”

claims.

II

The district court’s grant of summary judgment of non-

infringement of the “project viewer” claims is also improper

for a separate, independent reason. Setting aside its un-

derdeveloped and insufficient construction of “project

viewer,” the district court also conducted a flawed infringe-

ment analysis, providing this court with no basis to deter-

mine whether there is a genuine factual dispute as to

whether Google’s accused products infringed the “project

viewer” claims at issue.

An infringement analysis involves a two-step frame-

work in which the court construes the disputed claim terms

Case: 22-2291 Document: 48 Page: 27 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 5

and then compares the properly construed claims to the ac-

cused devices. Markman v. Westview Instruments, Inc., 52

F.3d 967, 976 (Fed. Cir. 1995). Infringement is a question

of fact. Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942,

949 (Fed. Cir. 2016). Thus, a grant of summary judgment

of non-infringement is proper when no reasonable fact-

finder could find that the accused product contains every

claim limitation or its equivalent. Id.

Following the district court’s Claim Construction Or-

der, Google moved for summary judgment of non-infringe-

ment of two “project viewer” claims: claim 9 of the ’497

patent and claim 1 of the ’6,253 patent. In opposing this

motion, Impact Engine proposed two separate, alternative

infringement theories. The first theory relied on a con-

struction of “project viewer” which identified only a portion

of the five columns of specification as corresponding struc-

ture for the “project viewer” claims at issue. J.A. 9857–60

(summary judgment brief); Appellant Br. 66–67. The dis-

trict court rejected this theory because it did not identify

all five columns of specification as structure and entered

judgment of non-infringement on this ground. Impact En-

gine, Inc. v. Google LLC, 624 F. Supp. 3d 1190, 1193–94

(S.D. Cal. 2022) (Summary Judgment Order). In an effort

to retroactively clarify its Claim Construction Order, the

district court noted in its Summary Judgment Order that

the required structure for all “project viewer” claims was

contained in the five columns of specification at columns

4:27–9:19 of the ’497 patent. Id.

Impact Engine’s second theory, however, relied on a

construction of “project viewer” that identified all five col-

umns of specification as required structure. J.A. 9860–63

(summary judgment brief). Specifically, Impact Engine’s

expert noted that while all five columns of specification

were not necessary for the “project viewer” claims at issue,

Google’s accused products embodied the claimed “project

viewer” “even assuming that each of the nine algorithmic

structures described in the identified columns is required

Case: 22-2291 Document: 48 Page: 28 Filed: 07/03/2024

6 IMPACT ENGINE, INC. v. GOOGLE LLC

to be present.” J.A. 8354 ¶255; see also J.A. 8352–53

¶¶249–51; J.A. 8388–91 ¶¶283–87; J.A. 8395 ¶301;

J.A. 8660–69 ¶¶512–21; J.A. 8886–90 ¶¶744–54;

J.A. 10217–219 ¶¶151–52. Without explanation, the dis-

trict court did not consider this second theory, or the evi-

dence submitted by Impact Engine, which was in line with

its newly announced construction of “project viewer.” Sum-

mary Judgment Order, at 1193–94. This was error.

Given that Impact Engine’s second theory aligned with

the district court’s construction of “project viewer,” the dis-

trict court should have then evaluated the evidence in the

record and compared Google’s accused devices to the “pro-

ject viewer” claims at issue. The district court’s failure to

do so resulted in an incomplete infringement analysis, pre-

cluding a grant of summary judgment of non-infringement.

Additionally, without any analysis by the district court as

to this second step of the infringement analysis, this court

has no basis to determine whether there is a factual dis-

pute as to whether Google’s accused products infringe the

“project viewer” claims at issue. Remand is required under

these circumstances. Nazomi Commc’ns, 403 F.3d at

1372. 1

1 The majority errs by not acknowledging Impact

Engine’s second theory of infringement. The majority mis-

takenly believes that Impact Engine’s infringement case

turns solely on its first theory, which applied a construction

of “project viewer” that relied on a subset of the five col-

umns of specification. The majority considers Impact En-

gine’s proposed claim construction in the first instance,

rejects it, and affirms the district court’s summary judg-

ment grant of non-infringement. Maj. Op. at 16–20.

The majority also errs in asserting that Impact Engine

does not dispute affirmance of non-infringement if its pro-

posed construction of “project viewer” is incorrect. Maj. Op.

Case: 22-2291 Document: 48 Page: 29 Filed: 07/03/2024

IMPACT ENGINE, INC. v. GOOGLE LLC 7

For these reasons, I respectfully concur in part and dis-

sent in part.

at 16. Impact Engine clearly argued in its briefing on ap-

peal and at oral argument that a remand is required in

light of its second theory of infringement (which relies on

all five columns of specification). Appellant Br. 72–74; Re-

ply Br. 35–37; Oral Arg. 8:20–41; Oral Arg. 42:20–43:10.