WSOU Investments LLC v. Google LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A §

BRAZOS LICENSING AND §

DEVELOPMENT, §

§ CIVIL ACTION 6:20-CV-585-ADA

Plaintiff, §

§

v. §

§

GOOGLE LLC

Defendant.

Memorandum Opinion and Order

Granting Google’s Rule 50(a) Motion for Judgment as a Matter of Law

I. Introduction

Before the Court is Defendant Google LLC’s (“Google”) Motion for Judgment as a Matter of

Law under Federal Rule of Civil Procedure 50(a). On October 4th, 2023, the Court held arguments

on the Motion after Plaintiff WSOU Investments (“WSOU”) rested its case-in-chief in a jury trial.

Tr. at 545:1–18.1 After considering the relevant arguments, trial testimony, and evidence, the Court

orally granted Google’s Rule 50(a) Motion for Judgment as a Matter of Law. Tr. at 633:2–5. This

memorandum explains the Court’s basis for its decision.

II. Factual and Procedural Background

WSOU filed this case on March 12, 2020, alleging that Google infringed claims 1, 4, 5, 9, 11,

and 14 of U.S. Patent No. 8,737,961 (“the ’961 Patent”). ECF No. 242 at 4. WSOU claimed that

Google directly infringes the ’961 Patent by making and/or selling its Google Maps and Google

Pixel Products. Id. at 6. The ’961 Patent is aimed at “deriv[ing] or predict[ing] location context for

1 Citations to the trial transcript are from a rough draft of the transcript.

a user of a mobile device, or both, that scales well to many users, such as incrementally determining

location context.” ’961 Pat. at 1:33-36. Claim 1 of the 961 Patent is an independent method claim

which claims the following:

L.A method comprising:

causing at least in part a receiving of signal cata that indi-

cates a set of one of more distinct signal sources from

Which signals are received ata mobile device for each of

a plurality of different times;

determining whether the mobile device is moving outside a

specified area at a current ime of the plurality of differ-

enl Gimes based on the signal data:

ifthe mobile device is determined to be not moving outside

the specified area, then causing at least in part an incre-

menting of a count fora slationary slate associated with

the set of one or more distinct signal sources at the

current time,

delenmining a primary set of slalionary slates, each staton-

ary state in the poimary set associated with a frequently

incremented count for one or more similar sets of one or

more distinct signal sources When the mobile device is

not moving outside the specified arca anc

causing at least in part initiation of delivery of a service to

the mobile device based on the stationary state.

°961 Patent at 37:5—24.

Claims 4, 5, and 9 are dependent claims of Claim 1. /d. at 37:44—-51, 38:1-4. Claim 11 is an

independent apparatus claim that recites the same process for incrementally determining location

context through a processor, memory, and computer instructions to achieve the objective of the

invention. /d. at 38:12-38. Claim 14 depends on Claim 11. /d. at 38:62-67. During the claim

construction phase of this case, the parties only asked the Court to construe the terms “stationary

state,” “incrementing [of] a count[er] for a stationary state,” and “determin[e/ing] a primary set of

stationary states.” See ECF No. 49. The Court construed each term according to its plain and

ordinary meaning. /d. at 5.

When WSOU rested its case, Google moved for Judgment as a Matter of Law under Rule

50(a). Tr. at 545:1–18. At that point, Google made multiple arguments related to the sufficiency of

the evidence. This memorandum opinion and order addresses only one of those arguments: That

WSOU failed to show that the independent and dependent method claims of the ’961 Patent and

the corresponding apparatus claims are performed by the accused Google products in the order

stated in the Patent. WSOU did not respond to this argument by claiming that it had sufficient

evidence to show the steps are performed in the order claimed in the method. Instead, WSOU

argued that the ’961 Patent is not required to be performed in the order it is written. Thus, the only

question before the Court is whether the asserted claims must be read such that each step of the

method must be performed sequentially.

III. Legal Standard

A. Judgment as a Matter of Law

Rule 50(a)(1) of the Federal Rules of Civil Procedure states that if, after a party has been fully

heard on an issue, there remains no legally sufficient evidentiary basis for a reasonable jury to find

for that party on that issue, the court may determine the issue and grant the opposing party’s motion

for judgment as a matter of law. Fed. R. Civ. P. 50(a)(1). Thus, a trial court may remove the case

from the jury’s consideration “when the facts are sufficiently clear that the law requires a particular

result.” Weisgram v. Marley Co., 528 U.S. 440, 448 (2000) (quoting 9A Charles Alan Wright &

Arthur R. Miller, Federal Practice And Procedure § 2521, at 240 (2d ed.1995)). Before doing so,

however, “the court must draw all reasonable inferences in favor of the nonmoving party.” Reeves

v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).

B. Claim Construction

“When the parties present a fundamental dispute regarding the scope of a claim term, it is the

court’s duty to resolve it.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362

(Fed. Cir. 2008). Claim construction is a legal question, and thus not for the jury. Id. Claim

construction begins with the words of the claim, which “must be read in view of the specification,

of which they are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir. 2005) (en

banc); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).

Limitations of method claims are ordinarily presumed that they can be performed in any order,

“[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to

require one.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (emphasis

added) (quoting Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1342-43 (Fed.

Cir. 2001)). “Interactive Gift recites a two-part test for determining if the steps of a method claim

that do not otherwise recite an order, must nonetheless be performed in the order in which they are

written.” Altiris, 318 F.3d at 1369. First, based on grammar or logic, do the claims recite an order?

(“First, we look to the claim language to determine if, as a matter of logic or grammar, they must

be performed in the order written.”), and second, does the specification implicitly or explicitly

require a specific order? Id. (“If not, the inquiry turns to whether the specification ‘directly or

implicitly requires such a narrow construction.’”)

IV. Discussion

A. Order of the Steps in Method Claims 1, 4, 5, and 9

The key question the Court must answer is whether the steps of the method described in Claim

1 of the ’961 Patent are required to be read in the order they are written. The Court believes they

are. The method's first step recites “causing at least in part a receiving of signal data that indicates

a set of . . . distinct signal sources from which signals are received at a mobile device for each of

a plurality of different times[.]” ’961 Patent at 37:6–9. The second step recites the method

“determining whether the mobile device is moving outside a specified area at a current time of the

plurality of different times based on the signal data[.]” Id. at 10–12 (emphasis added). The

receiving of signal data by the mobile device as mentioned in the first step must occur before any

determination of the mobile device’s location in a specified area can be made. The first two steps

in independent Claim 1 cannot be read in a logical manner unless they are performed in order.

Altiris, 318 F.3d at 1369.

After it is determined that a mobile device has not moved outside a specified area based on the

signal data, Claim 1 performs the third step of “causing . . . an incrementing of a count for a

stationary state associated with the set of one or more distinct signal sources at the current time[.]”

’961 Patent at 37:14–17. The logical question here is: could any increase in the stationary state

count occur before the mobile device receives the signal data and then the method determines

whether the mobile device is still within a specified area? The answer is no because if the mobile

device has not received a signal, its location cannot be determined. And if the mobile device’s

location has not been determined, the incremental counter would have nothing to count. So the

third step must occur after the first and second steps are performed sequentially.

The fourth step listed in Claim 1 contemplates “determining a primary set of stationary States,

each stationary state in the primary set associated with a frequently incremented count for one or

more similar sets of one or more distinct signal sources when the mobile device is not moving

outside the specified area[.]” WSOU argues that this method step is something that occurs “over

and over” frequently, whether the preceding steps occur. Trail Tr. at 576:1–7. Yet the Court need

not resolve this argument because the last step in the method relies on the completion of the first

four steps.

The fifth and final step recites the signal data of a user’s mobile device having incremented a

count showing whether a user has remained or left a specified area, and it serves the mobile device

an advertisement or other piece of information. The Claim 1 method’s last step teaches “causing

at least in part initiation of delivery of a service to the mobile device based on the stationary state.”

’961 Patent at 37:23–24. The “service” delivered by this step used the preceding steps to determine

whether the mobile device should receive that delivery. Even if Google’s accused products might

have performed each step, this does not change the fact that the steps of Claim 1, read as a matter

of . . . logic . . . must be performed in the order written.” Altiris, 318 F.3d at 1369.

The only question the Court needs to address here is whether that reading is required by the

claim language. And while it may be true that the fourth step of Claim 1 is not required to come

after the third or second step, the Court finds that logic demands that the first three steps occur in

sequence, and the fifth step must occur last. Id.; see also Mantech Envtl. Corp. v. Hudson Envtl.

Servs., Inc., 152 F.3d 1368, 1375–76 (Fed. Cir. 1998) (holding that the method requires an

sequential order where each step relied on the preceding step’s completion); Loral Fairchild Corp.

v. Sony Electronics Corp., 181 F.3d 1313, 1321 (Fed. Cir. 1999) (finding a first step of a method

must occur before the second because the second step required the alignment of a second structure

with a first structure formed by the prior step). The outcome of this motion is resolved no matter

where in the order the fourth step must occur. See infra Part IV.C; see also Vivid Techs., Inc. v. Am.

Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed

that are in controversy, and only to the extent necessary to resolve the controversy.”). Claims 4, 5,

and 9, are dependent method claims which depend on Claim 1. The Court finds that the ordering

requirement is also present from a plain reading of each of the asserted dependent method claims.

Under the test articulated in Altiris, the first part of the test controls when the claim language

itself requires the method to be performed in order. Altiris, 318 F.3d at 1369 (citing /nteractive

Gift, 256 F.3d at 1342-43). Thus, analysis of the specification is not controlling in the Cout’s ruling

here. For ease of understanding, however, below is an illustrative figure of the method:

FIG. 3 300

INCREMENTAL STATE

Cw PREDICTION

wo

se

305

UPDATE oo UPDATE

STATIONARY TRANSITION 309

STATES STATES

311

UFFICIENT DATE

PREDICT NEXT

TRANSITION 315

STATE

DELIVER SERVICE BASED ON

317

—<BONE yg

Figure 3 shows the steps of the method as an ordered flow chart. But the specification includes

boilerplate language that would seem to contradict this Court’s ruling: “Although particular steps

are shown in FIG. 3 and subsequent flowcharts (FIG. 4, FIG. 5, FIG. 6A and FIG. 7A) in a

particular order for purposes of illustration, in other embodiments one or more steps are omitted

or performed in a different order or overlapping in time[.]” Nonetheless, this Court is bound to

enforce the plain meaning of the claims, and only look to the specification where it finds ambiguity.

Altiris, 318 F.3d at 1369. Here, Claim 1 unambiguously teaches a sequential order.

During the JMOL hearing, WSOU argued requiring the claim to be read sequentially was a

problem of perspective. Trial Tr. at 569:17–20 (WSOU’s counsel arguing, “Google is viewing the

claim from the perspective of the individual user. [WSOU] view[s] the claim from the perspective

of Google up at the server level.”). WSOU went on to explain that its infringement theory was one

that viewed the method as being performed “in aggregate” and without a particular sequence

requirement. Id. at 568:19–20. For instance, WSOU argued that the first step of Claim 1—“causing

at least in part receiving of a signal”—could be performed either from the mobile device or the

server sending the signal. Id. at 570:4–21. Yet the Court is not persuaded that reading the claims

logically depends on the perspective from which they are performed. Even if this step could be

read in way that the sever-side is “causing at least in part” receipt of signals, it still follows that no

determination of the mobile device location can occur before such signal is caused to be received.

Without further reiterating the explanation of the steps above and the requirement they be read in

order, it suffices to say that even WSOU agrees that the method requires at least some order to be

read logically. WSOU’s counsel rhetorically asked “[n]ow, as a matter of basic logic… do some of

the actions in the earlier elements have to happen before some of the actions in the later elements?”

to which he replied “Yes. That is correct.” Id. at 568:9–15.

B. Apparatus Claims 11 and 14

The Court finds that the asserted apparatus Claims 11 and 14 also teach a device that is

configured to perform the same steps in the same order found in the method claims discussed

above. Claim 11 recites an apparatus that includes “at least one processor, and at least one memory

including computer instructions[.]” ’961 Patent at 38:13–17. Claim 11 then recites the steps

contemplated in Claim 1 almost verbatim. Nothing in the language of apparatus Claims 11 or 14

indicate that the recited steps could be performed in a manner other than in sequential order.

WSOU’s argument against that reading is the same as the one mentioned above: “Again, from the

perspective of the single user/single transaction reading of the claim that Google urges and

apparently the Court adopts, we would say the same thing. . . . [T]hat is not the case we tried.”

Trial Tr. at 629:25, 630:1–4. The Court finds that Claims 11 and 14 also require sequential

performance as a matter of logic and plain reading.

C. Judgment as a Matter of Law for Non-Infringement

Because of the ordering requirements discussed above, the Court finds that WSOU failed to

present evidence sufficient to support a jury verdict that Google’s accused products infringe the

method of Claim 1. WSOU’s infringement case was explained though the testimony of Dr. Tamas

Budavári—a qualified expert witness. His testimony was devoid of any opinion that Claim 1 is

performed by Google’s accused products in the order it is written. But Dr. Budavári did

acknowledge the ordering requirement was necessary if Google’s accused products infringed.

Budavári was asked on cross-examination:

Q:Now, you have to do the steps like they're

claimed in order to infringe, right?

A. Yes.

. . . .

Q. Okay. If you don't do the steps that are

claimed in the order—if there's an order set forth,

if you don't do them in that order, do you infringe?

A. I don't think so.

Trial Tr. 280:1–14.

Indeed, once the Court informed the parties that it decided the ordering issue above, WSOU’s

Counsel informed the Court “we have not put on evidence about the method steps being performed

in order [a] through [e]. That is not the case we tried.” Trial Tr. at 628:15-18.

While WSOU did introduce evidence that Google’s accused products performed steps of the

method, its case lacked any evidence to show that the steps were performed in the order required

by a plain reading of the claims. After drawing all reasonable inferences for WSOU, the Court

finds that there was not a legally sufficient basis for a reasonable jury to find infringement. Fed.

R. Civ. P. 50(a).

D. Conclusion

The Court regrets this claim construction issue could not be resolved until after WSOU rested

its case at trial, and WSOU’s objection to the timeliness of this decision is understandable. Trial

Tr. at 636:8—14. Still, WSOU was on notice that Google’s non-infringement contentions included

the argument that the steps of the asserted claims must be performed in the order they are written

in. The jury would have unavoidably been confronted by this ordering problem had this motion

been denied, and it is not the province of the jury to decide issues of claim construction. O2 Micro,

521 F.3d at 1362 (“When the parties present a fundamental dispute regarding the scope of a claim

term, it is the court's duty to resolve it.”); TMS Media Rsch., LLC v. Tivo Rsch. & Analytics, Inc.,

629 F. App’x 916, 938 (Fed. Cir. 2015) “Generally, when a determinative claim construction

dispute arises, a district court must resolve it.”). For the reasons above, the Court GRANTS

Google’s Rule 50(a) Motion for Judgment as a Matter of Law on all claims of infringement alleged.

All other relief not expressly granted is denied.

SIGNED this 6th day of December, 2023.

ALAN D ALBR: T

UNITED STATES DISTRICT JUDGE

10