Personalized User Model, LLP v. Google Inc.

United States Court of Appeals

for the Federal Circuit

______________________

PERSONALIZED USER MODEL, LLP,

Plaintiff-Cross-Appellant

YOCHAI KONIG,

Counterclaim Defendant-Cross-Appellant

v.

GOOGLE INC.,

Defendant-Appellant

______________________

2014-1841, 2015-1022

______________________

Appeals from the United States District Court for the

District of Delaware in No. 1:09-cv-00525-LPS, Chief

Judge Leonard P. Stark.

______________________

Decided: August 18, 2015

______________________

RICHARD SALGADO, Dentons US LLP, Dallas, TX,

argued for plaintiff-cross-appellant, counterclaim defend-

ant-cross-appellant. Also represented by MARC S.

FRIEDMAN, New York, NY. Plaintiff-Cross-Appellant also

represented by MARK CHRISTOPHER NELSON, Dallas, TX.

DAVID ANDREW PERLSON, Quinn Emanuel Urquhart &

Sullivan, LLP, San Francisco, CA, argued for defendant-

appellant. Also represented by CHARLES KRAMER

2 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

VERHOEVEN; JOSHUA L. SOHN, Washington, DC; ANDREA

PALLIOS ROBERTS, Redwood Shores, CA.

______________________

Before PROST, Chief Judge,

LOURIE and REYNA, Circuit Judges.

LOURIE, Circuit Judge.

Google Inc. (“Google”) appeals from the decision of the

United States District Court for the District of Delaware

granting judgment as a matter of law in favor of Personal-

ized User Model, LLP (“PUM”) and Yochai Konig (“Ko-

nig”) (collectively, “Appellees”) on Google’s breach of

contract counterclaim. Order, Personalized User Model

LLP v. Google Inc., C.A. No. 09-525-LPS (D. Del. Sept. 17,

2014), ECF No. 724. PUM cross-appeals from the district

court’s decision construing the claims of U.S. Patents

6,981,040 (“the ’040 patent”) and 7,685,276 (“the ’276

patent”). Personalized User Model LLP v. Google Inc.,

C.A. No. 09-525-LPS, 2012 WL 295048, at *15–16 (D. Del.

Jan. 25, 2012). Because the district court did not err in

granting judgment as a matter of law, we affirm the

district court’s decision appealed by Google. Moreover, we

dismiss the cross-appeal because we lack jurisdiction over

the issue as raised.

BACKGROUND

Konig was employed by SRI International (“SRI”)

from April 1996 to August 1999. At the beginning of his

employment, Konig signed an Employment Agreement,

which stated:

In consideration of my employment at SRI Inter-

national, I agree:

...

3. To promptly disclose to SRI all discoveries, im-

provements, and inventions, including software,

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 3

conceived or made by me during the period of my

employment, and I agree to execute such docu-

ments, disclose and deliver all information and

data, and to do all things which may be necessary

or in the opinion of SRI reasonably desirable, in

order to effect transfer of ownership in or to im-

part a full understanding of such discoveries, im-

provements and inventions to SRI . . . . I

understand that termination of this employment

shall not release me from my obligations hereun-

der . . . .

J.A. 1417 (emphases added).

In May 1999, while still employed by SRI, Konig and

a friend who was not employed by SRI started generating

documents marked confidential, relating to a personalized

information services idea that they called “Personal Web.”

J.A. 1281–1302, 1303–08. Konig and his friend then

formed a company named Utopy, incorporated in Dela-

ware on July 22, 1999, and Konig left SRI two weeks

later, on August 5, 1999. In 2001, while Konig was devel-

oping the Personal Web products at Utopy, he asked a

research scientist still at SRI to test the products. Appel-

lant’s Br. 15.

Meanwhile, Konig filed a provisional patent applica-

tion on December 28, 1999. On June 20, 2000, Konig filed

an application based on the provisional, which issued as

the ’040 patent on December 27, 2005, and listed Utopy,

Inc. as the assignee. Utopy then assigned the ’040 patent

to another party, who in turn assigned the patent to

PUM. Konig filed another patent application in 2008,

naming PUM as the assignee, and that application issued

as the ’276 patent on March 23, 2010.

In July 2009, PUM sued Google in the District Court

for the District of Delaware, asserting infringement of the

’040 and ’276 patents. During discovery, PUM provided

interrogatory responses that asserted that the conception

4 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

date for the invention claimed in the asserted patents was

in July 1999, while Konig was still at SRI, and produced

documents to prove that. Google subsequently contacted

SRI and acquired “any rights” that SRI had in the assert-

ed patents, J.A. 1410–11, and brought a counterclaim for

breach of contract in February 2011. Google asserted that

Konig owed a duty to transfer ownership to SRI of any

inventions conceived during his employment with SRI;

that Konig breached the employment agreement by

failing to assign his interest in the related patents to SRI;

and that Google (by way of SRI) therefore was a rightful

co-owner. J.A. 504–20. PUM and Konig responded that

the counterclaim was time-barred as filed more than

three years after the claim first accrued. J.A. 728, 740;

see 10 Del. C. § 8106. Before trial, the court construed

several claim terms in the ’040 and ’276 patents, includ-

ing the term “document.” Personalized User Model v.

Google, 2012 WL 295048, at *15–16.

The district court then presided over a jury trial on

the issues of infringement, validity, and breach of con-

tract. The jury found that Google did not infringe any

asserted claim of the ’040 and ’276 patents and that all

asserted claims were invalid. The jury was also instruct-

ed concerning two means by which the three-year statute

of limitations could have been tolled, such that Google’s

claim would not be time-barred: the discovery rule and

the Delaware tolling statute, 10 Del. C. § 8117. The jury

then found that the three-year statute of limitations for

Google’s breach of contract claim was tolled, and that

Konig breached the employment contract. J.A. 1482.

After the court entered judgment on the verdict, PUM

and Konig moved for judgment as a matter of law

(“JMOL”) on the breach of contract counterclaim. The

district court issued a letter with preliminary thoughts,

informing the parties that the court was inclined to grant

PUM’s and Konig’s motion on Google’s contract counter-

claim on the basis that the claim was time-barred. Letter,

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 5

Apr. 7, 2014, ECF No. 677. The court stated that the

statute of limitations was not extended beyond three

years because, in its view, no reasonable jury could have

found that the injury was “inherently unknowable.” Id. at

6–7. The court noted that the evidence at trial showed

that SRI had reason to investigate Konig’s potential

breach of contract. Id. at 7.

The district court then held a hearing on PUM’s and

Konig’s JMOL motion on the breach of contract counter-

claim. J.A. 9–31 (transcript). The court again stated its

determination that no reasonable juror could have found

that the injury, the basis for the counterclaim, was “in-

herently unknowable” and that SRI was not on inquiry

notice. J.A. 30. The court also noted that there was no

evidence that SRI exercised any diligence, finding that,

had SRI undertaken any reasonable investigation, it

would have discovered that the invention was conceived

during Konig’s employment at SRI. J.A. 30. The court

concluded that no reasonable juror could find that SRI

was “blamelessly ignorant.” J.A. 30.

The district court also rejected Google’s argument

that § 8117 allows “an action that had no connection to

Delaware [to be brought], as long as no more than three

years have passed since the time that the defendant . . .

became subject to service of process.” J.A. 31. The court

expressed its concern that such an interpretation would

“permit any party sued in Delaware to respond with

counterclaims having no connection to Delaware, no

matter how stale those claims are, no matter that the

statute of limitations in the state in which those claims

arose had expired long ago.” J.A. 31. The court therefore

granted JMOL in favor of PUM and Konig on the breach

of contract counterclaim. J.A. 31; J.A. 47.

Google timely appealed from the district court’s grant

of JMOL on the counterclaim, and PUM cross-appealed

from the district court’s claim construction. PUM did not

6 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

appeal from the district court’s judgment of invalidity and

noninfringement. We have jurisdiction pursuant to 28

U.S.C. § 1295(a)(1).

DISCUSSION

In an appeal of a case that has been tried to a jury, we

review the district court’s grant of JMOL under the law of

the regional circuit. Lisle Corp. v. A.J. Mfg. Co., 398 F.3d

1306, 1312 (Fed. Cir. 2005). Applying the law of the

Third Circuit, we review the court’s grant of JMOL de

novo. Pitts v. Delaware, 646 F.3d 151, 155 (3d Cir. 2011);

LePage’s Inc. v. 3M, 324 F.3d 141, 145 (3d Cir. 2003) (en

banc). In reviewing the grant of JMOL after a jury trial,

the relevant question is “whether there is evidence upon

which a reasonable jury could properly have found its

verdict.” Gomez v. Allegheny Health Servs., Inc., 71 F.3d

1079, 1083 (3d Cir. 1995); see also Fed. R. Civ. P. 50(a)

(JMOL is appropriate when “a reasonable jury would not

have a legally sufficient evidentiary basis to find for the

[prevailing] party on that issue.”). We must view the

record in the light most favorable to the verdict winner,

drawing all reasonable inferences in its favor, Sheridan v.

E.I. DuPont de Nemours & Co., 100 F.3d 1061, 1072 (3d

Cir. 1996) (en banc), but JMOL “must be sustained if the

record is critically deficient of the minimum quantum of

evidence from which the jury might reasonably afford

relief,” Gomez, 71 F.3d at 1083.

I. Discovery Rule Tolling

We first address the district court’s holding that the

discovery rule did not toll the statute of limitations peri-

od, because if the limitations period was not tolled, then

Google’s suit is time-barred. “Application of the ‘time of

discovery’ rule is limited, and each case must stand or fall

on its own facts.” Isaacson, Stolper & Co. v. Artisans’ Sav.

Bank, 330 A.2d 130, 133–34 (Del. 1974). The discovery

rule in Delaware provides that the statute of limitations

period is tolled while “the injury is inherently unknowa-

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 7

ble” and “the claimant is blamelessly ignorant of the

wrongful act and the injury complained of.” Coleman v.

PriceWaterhouseCoopers, LLC, 854 A.2d 838, 842 (Del.

2004). Even if an injury is inherently unknowable, the

discovery rule does not toll the limitations period unless

the claimant is blamelessly ignorant. See Kaufman v.

C.L. McCabe & Sons, Inc., 603 A.2d 831, 835 (Del. 1992)

(stating that discovery rule requires both elements to toll

statute of limitations); accord David B. Lilly Co. v. Fisher,

18 F.3d 1112, 1117 (3d Cir. 1994). A claimant can show

blameless ignorance with evidence that its reasonably

diligent investigation would not have uncovered facts

sufficient to enable it to discover the basis for its claim.

Coleman, 854 A.2d at 842–43; Layton v. Allen, 246 A.2d

794 (Del. 1968) (finding plaintiff to be blamelessly igno-

rant “before she knew, or by reasonable diligence could

know” of her claims); cf. Studiengesellschaft Kohle, mbH

v. Hercules, Inc., 748 F. Supp. 247, 252–53 (D. Del. 1990)

(finding claimant not blamelessly ignorant where it had a

right of inspection, was entitled to hire an independent

accountant, and was an experienced business entity).

Google argues that the breach of contract injury that

SRI suffered was inherently unknowable, and therefore

that SRI was not on inquiry notice to investigate a possi-

ble claim. According to Google, Delaware precedent

requires a “red flag” that “clearly and unmistakably”

should have led a party to investigate a potential claim.

Because there were competing inferences that could have

been drawn from the evidence provided at trial, Google

asserts that a reasonable jury could have found that none

of the information available to SRI would have made SRI

suspicious of a breach of contract. Alternatively, Google

argues that SRI was blamelessly ignorant because a jury

could have reasonably inferred that any investigation that

SRI could have done would not have uncovered the con-

ception of the invention at SRI, which provides the basis

for the claim. Google contends that under Delaware law,

8 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

reasonable diligence does not require that an investiga-

tion be conducted if such an effort would have been futile.

Appellees respond that Google bore the burden of

proving that both elements of the discovery rule were

satisfied to toll the statute of limitations. Even if SRI

would not have uncovered the conception during the

period of employment, Appellees assert that SRI had

sufficient cause to investigate even after Konig was no

longer employed by SRI. Appellees argue that the ex-

tremely high bar for establishing that an injury was

“inherently unknowable” was not met because Google

failed to show that it was “practically impossible” for SRI

to discover the injury. Appellees also claim that proof of

“blameless ignorance” is independently essential for

tolling under the discovery rule to apply, and counters

that Google presented no evidence to show that SRI tried

to protect its rights or otherwise exercised reasonable

diligence. Because Google failed to meet its burden on

either element, Appellees maintain, the district court did

not err in concluding that no reasonable jury could have

found that the discovery rule tolled the limitations period.

Even viewing the record in the light most favorable to

Google and drawing all reasonable inferences in its favor,

we agree with the district court that Google did not pro-

vide legally sufficient evidence for the jury to find that the

injury was inherently unknowable or that SRI was blame-

lessly ignorant, and therefore could not invoke the discov-

ery rule to toll the limitations period.

First, Google failed to prove that the injury was in-

herently unknowable. Unlike a situation in which a

patient after surgery has virtually no way of knowing that

a surgical instrument was negligently left inside, cf.

Layton, 246 A.2d at 796, SRI knew that Konig was leav-

ing to immediately work at a start-up technology compa-

ny. Considering the competitiveness of companies and

institutes in the technical world and, as Google has ar-

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 9

gued, that the technology was related to Konig’s work at

SRI, his departure and new venture could well have been

a “red flag” that should have generated an inquiry wheth-

er Konig had conceived an invention during his employ-

ment with SRI that he might intend to develop and

commercialize with his new company.

More importantly, Google failed to show that SRI was

blamelessly ignorant of Konig’s alleged breach of contract.

Google’s attempts to dispense with its burden of proof for

the blamelessly ignorant element of the discovery rule by

arguing the futility of any inquiry do not compensate for

its failure of proof. Despite the opportunities for SRI to

have inquired about Konig’s departure and his new ven-

ture—the obvious one being an exit interview, at which

an inquiry might have been made regarding whether

Konig had made any inventions at SRI that had not been

reported to SRI—the record is critically deficient on the

minimum quantum of evidence necessary to show that

SRI did anything to protect its interests. One might have

asked, even if an answer might not have been forthcom-

ing, what was Konig going to do in his new company? SRI

might have learned of the Personal Web products by

asking other SRI employees, such as the scientist who

tested the products in 2001, or by monitoring the new

start-up for a period of time after Konig’s departure.

Companies can also watch competitive patent filings.

Even if a reasonable investigation might not have given

SRI definitive proof of a breach of contract, we agree with

the district court that such actions could have uncovered

clues as to a potential claim. In fact, neither party pre-

sented any evidence about whether a reasonable investi-

gation would have revealed that Konig invented the

Personal Web products during his employment at SRI.

We therefore agree with the district court that there

is insufficient evidence in the record to support findings

that any breach was inherently unknowable and that SRI

was blamelessly ignorant. Employers do not need to track

10 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

a former employee’s every movement for an indefinite

period of time to look for potential claims, but there

should be some basic level of diligence in looking after

one’s interests. Cf. Layton, 246 A.2d at 799; Coleman, 854

A.2d at 842. Whether that is satisfied by evidence of a

standard exit interview wherein the departing employee

is asked if all contractual obligations have been met, or of

inquiring unobtrusively about the employee’s new startup

company, should be determined on a fact-specific basis.

See Isaacson, 330 A.2d at 133–34; Brown v. E.I. duPont de

Nemours & Co., 820 A.2d 362, 368 (Del. 2003) (“To apply

the discovery exception, the court must conduct a fact-

intensive inquiry to determine whether a plaintiff was

blamelessly ignorant of a potential claim or dilatory in

pursuing the action.”); Coleman, 854 A.2d at 842 (“The

application of [the discovery] rule is necessarily based on

the facts of each case.”).

We thus see no error in the district court’s findings

that Google failed to prove that any breach of Konig’s

employment agreement was inherently unknowable or

that SRI was blamelessly ignorant, and we therefore

agree with the district court that the discovery rule did

not toll the statute of limitations period.

II. Statutory Tolling

We next address the district court’s holding that the

Delaware tolling statute also did not toll the statute of

limitations period. Section 8117 of Title 10 of the Dela-

ware Code, titled “Defendant’s absence from State,” reads

as follows:

If at the time when a cause of action accrues

against any person, such person is out of the State,

the action may be commenced, within the time

limited therefor in this chapter, after such person

comes into the State in such manner that by rea-

sonable diligence, such person may be served with

process. If, after a cause of action shall have ac-

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 11

crued against any person, such person departs

from and resides or remains out of the State, the

time of such person’s absence until such person

shall have returned into the State in the manner

provided in this section, shall not be taken as any

part of the time limited for the commencement of

the action.

10 Del. C. § 8117 (emphases added). The Delaware Su-

preme Court has stated that “the purpose and effect of

Section 8117 is to toll the statute of limitations as to

defendants who, at the time the cause of action accrues,

are outside the state and are not otherwise subject to

service of process in the state.” Saudi Basic Indus. Corp.

v. Mobil Yanbu Petrochem. Co., 866 A.2d 1, 18 (Del. 2005)

(citing Hurwitch v. Adams, 155 A.2d 591, 594 (Del. 1959)).

At the JMOL hearing, as indicated, the district court

briefly addressed the issue of statutory tolling. The court

rejected Google’s proffered interpretation of § 8117, stat-

ing that it did not understand the statute to mean that

any party sued in Delaware could assert stale counter-

claims with no connection to Delaware.

Google argues that because the plain language of

§ 8117 does not restrict its application to claims with a

connection to Delaware, the limitations period was tolled

for claims against Konig, who was not physically in or

subject to service of process in Delaware before PUM’s

infringement suit. Google relies on Saudi Basic for the

propositions that the claims need not be under Delaware

law and that neither the plaintiff nor the defendant needs

a connection to Delaware. Even so, Google asserts that

the claim does have ties to Delaware and therefore that

the district court’s public policy concern was inapt in this

case. Google also insists that SRI’s rights could not have

been vindicated anywhere else at an earlier time.

Appellees respond that § 8117 is meant to protect

Delaware residents who have a cause of action against a

12 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

potential defendant who has evaded Delaware’s jurisdic-

tion. Appellees counter that Google’s interpretation of the

statute would effectively abolish the statute of limitations

for claims against non-Delaware residents, which would

be an absurd result. Appellees maintain that the breach

of contract counterclaim had no connection to Delaware,

and that neither SRI nor Konig were Delaware residents.

We have not found a Delaware Supreme Court deci-

sion explicitly holding that § 8117 requires a particular

connection to Delaware, but our understanding of the

statute’s meaning in light of Delaware case law supports

the district court’s decision. See Litton Indus. Prods., Inc.

v. Solid State Sys. Corp., 755 F.2d 158, 165 (Fed. Cir.

1985) (noting that when there is no decision by the high-

est state court on a specific state law issue, the Federal

Circuit must decide whether the district court properly

predicted applicable state law).

We agree with the district court that § 8117 should

not apply to toll the statute of limitations period in this

case. Although the statute on its face does not require

any connection to Delaware, we agree with the district

court’s disinclination to interpret the statute so broadly as

to apply to any claim, claimant, or defendant. The Dela-

ware Supreme Court has held that the tolling statute does

not necessarily apply “in any action in which the defend-

ant is a non-resident”; such an application “would result

in the abolition of the defense of statutes of limitation in

actions involving non-residents.” Hurwitch, 155 A.2d at

593–94 (citing Lewis v. Pawnee Bill’s Wild West Co., 66 A.

471 (Del. 1907) as rejecting such an interpretation).

Accordingly, to read § 8117 as granting Delaware courts

the ability to hear cases with no ties to Delaware whatso-

ever, without any limits in time, as long as the defendant

at some point enters the state of Delaware or otherwise

becomes subject to service of process, and the plaintiff

brings suit within the associated statute of limitations

period, would result in untoward results. See, e.g., City of

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 13

Tacoma v. Richardson, 163 F.3d 1337, 1339 (Fed. Cir.

1998) (“When a statute suggests an absurd result, howev-

er, we must look beyond its plain meaning.”); accord

United States v. Am. Trucking Ass’ns, 310 U.S. 534, 543

(1940) (rejecting “plain meaning” interpretation that

would lead to “absurd or futile results” or “an unreasona-

ble result” clearly at odds with legislative policy).

Saudi Basic involved a foreign claim and a foreign

counterclaim-defendant who was not amenable to service

of process in the United States, but it also involved claim-

ants who were residents of Delaware at the time the cause

of action originally accrued. Saudi Basic, 866 A.2d at 16.

That is not true in this case.

Other cases that discuss § 8117 and its previous in-

carnations also have some connection to Delaware, as

would be logical for the application of a Delaware law.

See, e.g., Brossman v. FDIC, 510 A.2d 471, 473 (Del. 1986)

(cause of action originally arose in favor of Delaware

resident); D’Angelo v. Petroleos Mexicanos, 398 F. Supp.

72, 80 (D. Del. 1975) (plaintiff and predecessor were

Delaware residents); United Indus. Corp. v. Nuclear Corp.

of Am., 237 F. Supp. 971, 973 (D. Del. 1964) (plaintiff was

Delaware corporation); Klein v. Lionel Corp., 130 F. Supp.

725, 726 (D. Del. 1955) (plaintiff was Delaware retail

merchant); Glassberg v. Boyd, 116 A.2d 711, 712 (Del. Ch.

1955) (derivative action brought by stockholder of Dela-

ware corporation); Hurwitch, 155 A.2d at 592 (accident

occurred in Delaware); Pawnee Bill’s, 66 A. at 472 (injury

occurred in Delaware).

Unlike Saudi Basic and the rest of the case law in

which § 8117 is applied or otherwise discussed, here there

was no tie to Delaware at the time the cause of action

accrued. While Google is incorporated in Delaware, and

hence is a Delaware resident, this cause of action accrued

in California, with a California claimant and a California

defendant. The employment agreement was executed in

14 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

California by two California residents, SRI and Konig.

The alleged breach occurred in California, during Konig’s

employment. Google’s argument that SRI’s contract

rights could not have been effectively vindicated earlier is

unpersuasive. This was not a situation in which Konig

was beyond the jurisdiction of California courts or other-

wise not amenable to service of process. SRI could have

brought suit against Konig in California. Google being a

Delaware resident is insufficient to bootstrap its claim

into having a Delaware connection; SRI was not a Dela-

ware resident at the time of the alleged breach, and

Google acquired the rights to the claim years later, well

after the limitations period had run. We thus find that

Google failed to prove that § 8117 should apply to its

counterclaim.

We therefore conclude that the district court reached

the correct result in finding that the statute of limitations

period for Google’s breach of contract counterclaim was

not tolled by § 8117 and affirm its conclusion that § 8117

did not toll the statute of limitations period.

III. Cross-Appeal

Finally, we address PUM’s cross-appeal regarding the

district court’s construction of the claim term “document.”

PUM has not challenged the jury’s verdict of nonin-

fringement on appeal.

PUM argues that the district court erred in constru-

ing the term by inserting the requirement of an “electron-

ic file” into the term “document” as used in the

specification and claims of the ’040 and ’276 patents.

PUM insists that the issue is not moot because that

construction may affect any future litigation involving the

claims that were not invalidated in this case, and claims

in related patents, and asserts that this court may rectify

that by vacating the district court’s claim construction.

PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 15

Google responds that there is no longer a live in-

fringement controversy between the parties because the

district court found the claims not infringed, PUM did not

seek any further district court proceedings on infringe-

ment, and the U.S. Patent and Trademark Office can-

celled all asserted claims in inter partes reexamination.

Google asserts that this court lacks jurisdiction to issue a

claim construction opinion to ensure the proper construc-

tion of PUM’s patents in the future, where such an opin-

ion would not resolve a present infringement controversy.

We agree with Google that we lack jurisdiction over

PUM’s cross-appeal. Article III of the U.S. Constitution

limits the jurisdiction of federal courts to “cases” and

“controversies,” neither of which is presented by PUM’s

cross-appeal relating to the district court’s alleged error in

claim construction. See Jang v. Bos. Scientific Corp., 532

F.3d 1330, 1336 (Fed. Cir. 2008) (declining to render

advisory opinion as to claim construction issues that “do

not actually affect the infringement controversy between

the parties”). PUM in fact admitted that there is no live

controversy presented here and that modifying the claim

construction has no effect on the outcome of this case.

E.g., Oral Arg. at 28:40–42, 29:02–29:09, Personalized

User Model, LLP v. Google Inc., Nos. 2014-1841, 2015-

1022, available at http://oralarguments.cafc.uscourts.gov/

default.aspx?fl=2014-1841.mp3. Despite PUM’s concerns

that the construction might be given preclusive effect in

future litigation involving its related patents, we may not

provide an advisory opinion on the meaning of a claim

term that does not affect the merits of this appeal and

thus is not properly before us. We therefore decline to

review the district court’s claim construction.

CONCLUSION

Because neither the discovery rule nor § 8117 tolled

the statute of limitations period in this case, the district

court’s decision granting judgment as a matter of law in

16 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.

favor of PUM and Konig on the breach of contract coun-

terclaim is affirmed. The cross-appeal relating to the

claim construction issue is dismissed.

AFFIRMED IN PART, DISMISSED IN PART

COSTS

No costs.