Cioffi v. Google, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

ALFONSO CIOFFI, THE ESTATE OF ALLEN

FRANK ROZMAN,

Plaintiffs-Appellants

v.

GOOGLE, INC.,

Defendant-Appellee

______________________

2015-1194

______________________

Appeal from the United States District Court for the

Eastern District of Texas in No. 2:13-cv-00103-JRG-RSP,

Judge J. Rodney Gilstrap.

______________________

Decided: November 17, 2015

______________________

ERIC W. BENISEK, Vasquez, Benisek & Lindgren, LLP,

Lafayette, CA, argued for plaintiffs-appellants. Also

represented by ROBERT MCARTHUR.

STEPHANIE SKAFF, Farella Braun & Martel LLP, San

Francisco, CA, argued for defendant-appellee. Also repre-

sented by EUGENE Y. MAR, ANDREW P. NGUYEN.

______________________

2 CIOFFI v. GOOGLE, INC.

Before O’MALLEY, PLAGER, and BRYSON, Circuit

Judges.

O’MALLEY, Circuit Judge.

Alfonso Cioffi and The Estate of Allen Rozman (collec-

tively “Appellants” or “Cioffi”) filed suit against Google,

Inc. (“Appellee” or “Google”) on February 5, 2013 in the

Eastern District of Texas alleging that the Google Chrome

web browser (the “Accused Products”) infringed four

reissue patents: U.S. Patent Nos. RE43,103 (the “’103

patent”); RE43,500 (the “’500 patent”); RE43,528 (the

“’528 patent”); and RE43,529 (the “’529 patent”). The

district court construed several disputed terms of the four

patents-at-issue. Based on these constructions, the

district court held claim 21 of the ’103 patent to be invalid

as indefinite, and the parties stipulated to non-

infringement of all of the other asserted claims.

On appeal, Cioffi challenges the construction of two

terms: (1) “web browser process” and (2) “critical file.”

Cioffi disputes the district court’s construction of the first

term as erroneously requiring a “direct” access capability

and the second term as erroneously including “critical

user files,” which renders the term indefinite. Because we

agree that the district court erred in construing both of

these terms, we reverse the district court’s claim con-

struction and remand for further proceedings.

I. BACKGROUND

A. The Reissue Patents

The four patents-at-issue are reissue patents originat-

ing from a patent issued as U.S. Patent No. 7,484,247 (the

“’247 patent”) on January 27, 2009. That patent, entitled

“System and Method For Protecting A Computer System

From Malicious Software,” was directed to a way of pro-

tecting a computer from malware by segregating the

suspected malware and directing it to execute and reveal

itself in a safe, isolated part of the computer. In March

CIOFFI v. GOOGLE, INC. 3

2010, thirteen months after the ’247 patent issued, Cioffi

surrendered the patent pursuant to 35 U.S.C. § 251 and

sought reissue claims. The resulting four reissue patents-

at-issue have the same abstract and, along with the ’247

patent, share substantially identical specifications.

The patents-at-issue describe computer processes,

separated either logically or physically (using separate

processors), into first and second browser processes.

Potential malware downloaded from the Internet is

directed to execute within the second browser process, but

is not allowed to execute outside of the second browser

process. Thus, the potential malware is insulated from

and cannot damage any other aspect of the computer’s

systems, including memory space accessible by the first

browser process.

Figure 1 of the ’528 patent (shown below) illustrates

one preferred embodiment, involving two physically

separate processors: (1) a first web browser process exe-

cuted within first processor 120 with access to important

files stored in first memory space 110, and (2) a second

web browser process executed within second processor

140 with access to its own expendable memory space 130.

Untrusted content downloaded from the Internet is exe-

cuted in the second web browser process running in 140,

where it cannot damage important files stored in first

memory space 110.

4 CIOFFI v. GOOGLE, INC.

’528 patent fig. 1.

During prosecution, the examiner initially rejected all

of the claims of the applications that ultimately issued as

the ’500, ’528, and ’529 patents (“the ’500, ’528, and ’529

patent applications”) under 35 U.S.C. § 102(b) in view of

U.S. Patent Application No. 2002/0002673 (“Narin”). J.A.

212-14. The examiner determined that Narin taught a

method of operating a computer system with a first logical

process capable of accessing data in a first memory space

and a second logical process capable of accessing data in a

second memory space. Id. The examiner found that the

second logical process of Narin hosts non-secure software

objects, and the data residing in the first memory space is

protected from corruption by malware downloaded from

the network and operating as part of the second logical

process. Id.

Cioffi responded with the argument that “Narin

teaches away from the closed process [corresponding to

the first browser process] being a browser process.” J.A.

256. In other words, Cioffi argued that Narin is distin-

guishable from the claimed invention because Narin does

not allow a browser program to be a part of the secure

application, which Cioffi describes as a “first browser

process.”

On November 14, 2011, the examiner issued a Final

Rejection Office Action maintaining its rejection of all the

claims of the ’500, ’528, and ’529 patent applications. The,

the examiner stated that:

Despite the Applicant’s arguments that the

claimed browser is a web browser, the specifica-

tion . . . describe[s] the first logical process as be-

ing a video game and ‘including but not [being]

limited to a word processor,’ respectively. Accord-

ing to the Applicant’s specification, the claimed

first logical process or first browser process could

include a web browser, such as Internet Explorer

CIOFFI v. GOOGLE, INC. 5

or Netscape; a video game; or a word processor.

At the very least, the prior art’s disclosure reads

on the Applicant’s video game and word processor

interpretations of browser. . . . It is noted that fea-

tures upon which applicant relies, such as the

first browser process accessing Internet sites

and/or data, are not recited in the rejected claims.

Id. at 285-6 (¶¶6-8).

In response, Cioffi amended all of the pending claims

of the ’500, ’528, and ’529 patent applications to narrow

the first and second “browser process” to the first and

second “web browser process.” J.A. 798-810. Cioffi also

added a limitation, “capable of accessing data of a website

via the network,” to the first web browser process. J.A.

314. Cioffi then explained, “Narin fails to disclose . . . a

first web browser process capable of accessing data of a

website via a network of one or more computers (e.g., the

internet).” J.A. 332. The examiner allowed the claims.

B. Procedural History

On February 5, 2013, Cioffi filed suit against Google

asserting infringement of the ’500, ’528, ’529, and ’103

reissue patents by the Google Chrome web browser avail-

able for the Windows, Mac, Android, and Linux operating

systems. The claims originally asserted were:

’500 patent: claims 21, 23, 25, 29, 30, 31, 32, 37,

38, 39, 41, 42, 43, 52, 66, 67 and 70.

’528 patent: claims 1, 2, 5, 21, 23, 25, 30, 44, 46,

52, 53, 55, 57, 58, 64, 65, 66, 67 and 70.

’529 patent: claims 21, 23, 28, 30, 36, 38, 45, and

49.

’103 patent: claim 21.

Cioffi v. Google Inc., 2:13-cv-103, 2014 U.S. Dist. LEXIS

123760, *8 (E.D. Tex. Aug. 28, 2014). Following a Mark-

6 CIOFFI v. GOOGLE, INC.

man hearing, the district court issued its Claim Construc-

tion Order on August 28, 2014. Id.

The district court adopted its preliminary construc-

tion of “web browser process” as a “process that can access

data on websites.” Id. at *21. The court found that Cioffi

had distinguished Narin during patent prosecution by

arguing that Narin discloses a “secure” or “closed” appli-

cation that controls a separate process that runs an “open

or untrusted application,” and that the “secure” applica-

tion cannot be a web browser. Id. at *14-15. The court

noted that, in response to the examiner’s rejection stating

that the features relied upon to overcome Narin were not

recited in the claims, Cioffi amended the claims to add

“web” before “browser” and “capable of accessing data of a

website via the network” before “first web browser pro-

cess.” Id. at *17. The court found that the patentees

relied on the added “web” limitation to overcome the

examiner’s rejection, and “that reliance should be given

effect by requiring that the ‘web browser process’ is capa-

ble of accessing data on websites.” Id. at *18-19.

The district court then addressed a statement that

Google made at the Markman hearing that it would agree

to the court’s preliminary construction with an under-

standing that the claim term requires “direct” access to

website data. While the court did not seek further brief-

ing or argument on this issue, it did address it. The court

stated that introducing the word “direct” would confuse

rather than clarify the scope of the claims, but continued:

To be clear, “can” in the Court’s construction does

not mean “must” and instead refers to a capabil-

ity. For this capability to be meaningful and con-

sistent with the prosecution history, however, a

“web browser process” must be capable of access-

ing a website without using another web browser

process. In other words, although the Court’s con-

struction does not preclude a web browser process

CIOFFI v. GOOGLE, INC. 7

from accessing websites by using another web

browser process, a web browser process’s capabil-

ity of accessing websites must not require using

another web browser process.

Id. at *20-21 (emphasis in original).

The district court also adopted its preliminary finding

that the term “critical file” from the ’103 patent is indefi-

nite, and held, therefore, that claim 21 of the ’103 patent

is invalid. The court found that references to “critical

user files” found in the specification and prosecution

history suggest that the term “critical file” includes criti-

cal “user” files. Id. at *60. It held that what is critical to

a user is “entirely subjective,” and that “critical file,”

therefore, fails to inform a person of skill in the art about

the scope of the invention with reasonable certainty under

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,

2122 (2014). Id. at *61.

The parties filed objections to aspects of the Claim

Construction Order. Cioffi then served its Final Election

of Asserted Claims, in which it narrowed the asserted

claims to:

’500 patent: claims 21, 30, 32, 39, 43, 66, and 70

’528 patent: claims 5, 21, 23, 30, 44, 64, and 67

’529 patent: claims 23, 30, 36, 38, 45, and 49

See Final Judgment at 2-3, Cioffi, 2014 U.S. Dist. LEXIS

123760 (2:13-cv-103), ECF No. 104. The district court

overruled the parties’ objections. Order, Cioffi, 2014 U.S.

Dist. LEXIS 123760 (2:13-cv-103), ECF No. 97.

The parties then agreed that, based on the court’s

claim constructions, Cioffi could not prevail on the issue of

infringement. Cioffi’s First Amended Infringement Con-

tentions had identified the browser kernel of the Accused

Products as reading on the “first web browser process” of

the asserted claims and the rendering engine of the

8 CIOFFI v. GOOGLE, INC.

Accused Products as reading on the “second web browser

process” of the asserted claims. The district court found

that the rendering engine of the Accused Products “is not

capable of and cannot access data of websites without

using the browser kernel in the Accused Products,” and,

therefore, the rendering engine cannot meet the “web

browser process” limitation under the Claim Construction

Order. Final Judgment at 2-3, Cioffi, 2014 U.S. Dist.

LEXIS 123760 (2:13-cv-103), ECF No. 104. The district

court entered a final judgment of non-infringement on

December 2, 2014. Id.

Cioffi timely appealed the district court’s judgment,

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

II. DISCUSSION

Cioffi challenges the district court’s construction of

two claim terms: (1) “web browser process” and (2) “criti-

cal file.” Claim construction is a matter of law, which we

review de novo, but we review underlying factual findings

by the district court for clear error. Teva Pharms. USA,

Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837-38 (2015). Gener-

ally, claim terms should be given their ordinary and

customary meaning from the perspective of a person

having ordinary skill in the art at the time of the effective

date of the patent application. Phillips v. AWH Corp., 415

F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). To ascer-

tain the scope and meaning of the asserted claims, we

look to the words of the claims themselves, the specifica-

tion, the prosecution history, and any relevant extrinsic

evidence. Id. at 1315-17. This inquiry, at times, begins

and ends with the intrinsic evidence. In fact, the specifi-

cation is the single best guide to the meaning of the claim

terms; it is often dispositive. Id. at 1318 (“[T]he specifica-

tion ‘is always highly relevant to the claim construction

analysis. Usually, it is dispositive . . . .’”) (citation omit-

ted).

CIOFFI v. GOOGLE, INC. 9

A. “Web Browser Process”

Cioffi argued in its opening brief on appeal that the

district court erred by construing “web browser process”

at all, rather than maintaining the term’s plain and

ordinary meaning. Appellant Br. 27. Cioffi has since

conceded, however, that the district court’s construction of

“web browser process” as a “process that can access data

on websites” is not reversible error. 1

Given this concession, the sole remaining dispute with

respect to “web browser process” is whether the district

court erred by reading into that limitation a “direct”

access requirement. Under the district court’s construc-

tion, a “web browser process” does not have to access data

on websites without using another “web browser process,”

but “must be capable of accessing a website without using

another web browser process.” Cioffi, 2014 U.S. Dist.

LEXIS 123760 at *20-21 (emphasis added). Simply put,

the district court held that the “first web browser process”

must be capable of accessing the Internet directly without

the assistance of the “second web browser process,” and

the “second web browser process” must be capable of

accessing the Internet directly without the assistance of

the “first web browser process.”

1 See Appellant Reply Br. 2 (“Had the district court

stopped with its preliminary construction of ‘web browser

process’ to mean a ‘process that can access data on web-

sites’ its error in deciding to construe the term would have

been harmless . . . .”); Oral Argument at 1:20-2:03, avail-

able at http://oralarguments.cafc.uscourts.gov/default

.aspx?fl=2015-1194.mp3 (“what’s shown [at *21 of the

Claim Construction Order] is the court’s definition that a

‘web browser process’ is a ‘process that access data on

websites.’ That definition, as a practical matter, is ac-

ceptable to us.”).

10 CIOFFI v. GOOGLE, INC.

Claim construction starts with the claim language.

Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,

Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Differences

among claims can [ ] be a useful guide in understanding

the meaning of particular claim terms.” Phillips, 415

F.3d at 1314. “[T]he presence of a dependent claim that

adds a particular limitation gives rise to a presumption

that the limitation in question is not present in the inde-

pendent claim.” Phillips, 415 F.3d at 1314-15 (citing

Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910

(Fed. Cir. 2004)).

Cioffi asserts that, under these claim differentiation

principles, the term “web browser process” alone cannot

be read to require a “direct” access capability. Cioffi first

points to independent claim 21 of the ’528 patent, claim-

ing it demonstrates that the “second web browser process”

does not need to be capable of directly accessing data on

websites without using another web browser. Claim 21

states that the “first web browser process” needs to be

“capable of passing data to the second web browser pro-

cess.” ’528 patent col. 21 ll. 12-14. Thus, this claim

implies that the “second web browser” can access data on

websites indirectly with assistance from the “first web

browser process.” Nothing in the language of claim 21

requires that either the first or the second web browser

process have direct access capability; instead, the claim

requires only that the second process: (1) execute website

data and (2) retrieve data that it executes. Id. In con-

trast, dependent claim 24 of the ’528 patent requires the

“second web browser process” to be “capable of directly

exchanging data with the network interface and with the

first web browser process.” ’528 patent col. 21 ll. 26-30. 2

2 Claims 21 and 24 of the ‘528 patent are repre-

sentative. In its Reply Brief and at oral argument, Cioffi

clarifies that the same argument applies to claims 36 and

CIOFFI v. GOOGLE, INC. 11

Cioffi asserts that the “directly exchanging data with the

network interface” limitation of claim 24 would be super-

fluous if claim 21 already required direct web access

capability.

According to Google, Cioffi’s claim differentiation ar-

gument fails because the court’s construction requiring

that the web browser process have the capability to access

data on a website directly does not render claims 21 and

24 of the ’528 patent identical in scope. Claim differentia-

tion principles do not apply here, according to Google,

because claim 24 has two additional limitations as com-

pared to claim 21. Dependent claim 24 not only adds a

“directly exchanges data with the network interface”

limitation, but also a “directly exchanges data with” “the

first web browser process” limitation. Id. Thus, according

to Google, only the first of these limitations would be

subsumed by the court’s construction.

We are not persuaded by Google’s arguments. If

claim 21 already required a capability for “direct” access

to the network, then the language of claim 24, which

recites that the “second web browser process is capable of

directly exchanging data with the network interface,”

would be entirely duplicative. Thus, the language of the

claims indicates that only in claim 24 does the second web

browser have to have a “direct” access capability. While

Google is correct that claim 24 adds another limitation

compared to claim 21, that argument does not change the

fact that the “directly exchanges data with a network”

limitation would be rendered superfluous. See Mfor-

mation Techs., Inc. v. Research in Motion Ltd., 764 F.3d

39 of the ’529 patent. See Appellant Reply Br. 5-7; Oral

Argument at 3:23-3:59, available at http://oralarguments

.cafc.uscourts.gov/default.aspx?fl=2015-1194.mp3. The

same argument also applies to claims 21 and 24 of the

’500 patent.

12 CIOFFI v. GOOGLE, INC.

1392, 1399 (Fed. Cir. 2014) (favoring a construction that

does not render another limitation “superfluous”). Thus,

we find Cioffi’s claim differentiation argument compelling

and find that the addition of the direct access capability

limitation in claim 24 gives rise to a presumption that

claim 21 lacks such a limitation.

We do not find, moreover, that anything in the prose-

cution history overcomes the presumption created by

these claim differentiation principles. Google argues that,

during prosecution, Cioffi disclaimed a construction of

“web browser process” that is broad enough to cover

indirect access to website data in order to overcome

anticipation by Narin. And Google is correct that,

“[a]lthough claim differentiation is a useful analytic tool,

it cannot enlarge the meaning of a claim beyond that

which is supported by the patent documents, or relieve

any claim of limitations imposed by the prosecution

history. See, e.g., Retractable Techs., 653 F.3d at 1305

(‘[A]ny presumption created by the doctrine of claim

differentiation “will be overcome by a contrary construc-

tion dictated by the written description or prosecution

history.”’).” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d

1320, 1327 (Fed. Cir. 2015). “The doctrine of prosecution

disclaimer attaches where an applicant, whether by

amendment or by argument, ‘unequivocally disavowed a

certain meaning to obtain his patent.’” Schindler Elevator

Corp. v. Otis Elevator Co., 593 F.3d 1275, 1285 (Fed. Cir.

2010) (quoting Omega Eng'g, Inc. v. Raytek Corp., 334

F.3d 1314, 1324 (Fed. Cir. 2003)).

According to Google, Cioffi would not have been able

to distinguish its claims from Narin if its “web browser

process” was permitted to indirectly access data on web-

sites through another browser process. Google contends

that the examiner rejected Cioffi’s initial, unamended

claim for a “browser process” because it would encompass

prior art video games in which a renderer (i.e., the first

process) relies on a second process to receive interactive

CIOFFI v. GOOGLE, INC. 13

network data. ’247 patent col. 14 ll. 28-45. Google argues

that Cioffi thus surrendered indirect access to website

data when it amended “browser process” to “web browser

process” to exclude video game and word processing

applications from the prior art. Appellee Br. 32.

Cioffi responds that it never suggested in the course of

amending “browser process” to “web browser process” that

the “web browser process” must be capable of “directly”

accessing website data without the assistance of another

“web browser process.” Appellant Reply Br. 14. Instead,

Cioffi says the key to overcoming Narin was not that the

first “web browser process” could “directly” access website

data, but, rather, was that the first “web browser process”

could access website data at all.

In Fenner, on which Google relies, we held that the

patent’s specification and prosecution history narrowed

the meaning of the term “personal identification number”

beyond the construction proffered by the patentee not-

withstanding the patentee’s claim differentiation argu-

ment. 778 F.3d at 1327. The patentee argued that

“personal identification number” should be construed

broadly and could be associated with a particular user or

a particular device. But the court held that the patentee

could not walk away from what it had clearly stated

during prosecution—that unlike the prior art, “[t]he

present invention, on the other hand, is centered around

the mobile user, not the mobile telephone. The user is

identified by a personal code.” Id. at 1325. The patentee’s

main argument on appeal was that the examiner did not

rely on these statements, a point which we found to be

irrelevant. Id.

Unlike Fenner, the alleged disavowal of claim scope is

far from unequivocal in Cioffi’s case. The prosecution

history reveals that Cioffi distinguished Narin by arguing

that its first browser process was not functionally equiva-

lent to Narin’s “secure” or “trusted” application because

14 CIOFFI v. GOOGLE, INC.

the first browser process of the reissue claims was capable

of accessing untrusted data from websites, which would

constitute “executable code from other sources that may

not be trusted.” J.A. 256-57. The examiner recognized

that Cioffi drew this distinction with Narin’s “secure”

application, but nevertheless rejected Cioffi’s claims

because “the features upon which applicant relies, such as

the first browser process accessing Internet sites and/or

data, are not recited in the rejected claims.” J.A. 286 (¶8).

Rather, the examiner felt that the first logical process

described in the specification was broad enough to encom-

pass non-web browsers such as a “video game” and a

“word processor.” Id. at ¶6. In response to this rejection,

Cioffi amended its claims to explicitly state that the “first

web browser” needed to be “capable of accessing data on

websites.” J.A. 314, 332.

Google refers to the following passage from the prose-

cution history, claiming that it shows that Cioffi dis-

claimed “indirect” access to website data by the first

browser process in order to overcome Narin:

As an example application 312 [the secure appli-

cation in Narin] may provide some type of web

browsing capability to its user, but rather than

performing the actual web browsing functions it-

self, application 312 may call upon a general-

purpose browsing program to perform the web

browsing.

J.A. 258, 590. See also Oral Argument at 18:01-19:18,

available at http://oralarguments.cafc.uscourts.gov/defau

lt.aspx?fl=2015-1194.mp3. This passage simply confirms

that the “secure” process of Narin cannot perform web

browsing functions itself, but can call upon the “open”

process to perform such functions. Nothing here suggests

that the “secure” process thereby gains access to website

data. Google further cites this passage:

CIOFFI v. GOOGLE, INC. 15

Narin provides a technique for allowing an open

or untrusted application to provide untrusted or

open features for a secure application that are not

directly implemented within the secure applica-

tion (or closed application). In accordance there-

with, an open or untrusted application is run in a

separate auxiliary process from the closed or pro-

tected application. . . . The auxiliary process is

started by the closed process; the closed process

controls the lifetime of the auxiliary process and

terminates it when the open features that it pro-

vides are no longer necessary.

J.A. 588 (emphasis added). Google focuses on the phrase

“not directly implemented,” but nothing contained in this

passage clarifies that the “untrusted or open features”

that the untrusted application provides the secure appli-

cation include anything more than general web browsing

capability, as opposed to website data. And even if such

“features” included data from websites, nothing suggests

that “are not directly implemented” equates to “are indi-

rectly accessed.” In addition, the third sentence—stating

that the untrusted process is started, controlled, and

stopped by the “closed process”—also falls short of sug-

gesting that the “closed process” thereby gains access to

website data. Finally, the paragraph immediately follow-

ing that passage affirmatively suggests that whatever the

“untrusted features” provided to the “secure” application

might include they cannot include “executable code from

unknown sources”:

Narin teaches away from the closed process [the

first browser process] being a browser process. If

the application is trusted, running a browser in-

proc may subvert the security scheme of the

trusted application. If trust is to be maintained,

executable code from unknown sources cannot be

given access to the address space of the trusted

16 CIOFFI v. GOOGLE, INC.

application and therefore cannot be run in pro-

cess.

J.A. 256-57 (emphasis added). Thus, nothing from the

prosecution history constitutes a clear and unmistakable

disavowal of “indirect” access. “There is no ‘clear and

unmistakable’ disclaimer if a prosecution argument is

subject to more than one reasonable interpretation, one of

which is consistent with a proffered meaning of the dis-

puted term.” Sandisk Corp. v. Memorex Prods., 415 F.3d

1278, 1287 (Fed. Cir. 2005). Here, Cioffi has offered a

reasonable alternative interpretation—that it differenti-

ated Narin by explaining that its first web browser pro-

cess, unlike Narin’s “secure” process, had access to

website data. We find nothing in the prosecution history

sufficient to overcome the presumption that “web browser

process” alone does not have a “direct” access capability

requirement.

B. “Critical File”

We now turn to the dispute over the district court’s

construction of “critical file” as including “critical user

files,” which both parties agree would render the term

indefinite under Nautilus, 134 S. Ct. at 2129. Under

Nautilus, 35 U.S.C. § 112 ¶ 2 requires that “a patent’s

claims, viewed in light of the specification and prosecution

history, inform those skilled in the art about the scope of

the invention with reasonable certainty.” Id. A claim

“must be sufficiently definite to inform the public of the

bounds of the protected invention, i.e., what subject

matter is covered by the exclusive rights of the patent.”

Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 737 (Fed.

Cir. 2014) (quoting Halliburton Energy Servs., Inc. v. M-I

LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008)).

Google points out three references to “user” files in

the specification of the ’247 patent:

CIOFFI v. GOOGLE, INC. 17

With the network interface program constrained

in this way, malware programs are rendered una-

ble to automatically corrupt critical system and

user files located on the main memory storage ar-

ea.

...

It is an object of the present invention to provide a

computer system capable of preventing malware

programs from automatically corrupting critical

user and system files.

...

It is another object of the present invention to

provide a user with an easy and comprehensive

method of restoring critical system and user files

that may have been corrupted by a malware infec-

tion.

’247 patent col. 7 ll. 8-11, 40-44, 53-56 (emphasis added).

Google also points to the following references to “criti-

cal . . . user” files or data in the prosecution history:

Critical user data residing on the first electronic

memory space is thereby protected from corrup-

tion by a malicious (malware) process downloaded

from the network and executing on the second log-

ical process.

...

[M]alware programs are rendered unable to au-

tomatically corrupt critical system and user files

located on the main memory storage area.

J.A. 458-59 (emphasis added).

The question is whether these five references to “user”

files or data in the specification and prosecution history

are sufficient to require that we read a “user files” limita-

tion into the claim term “critical file.” On this point, our

18 CIOFFI v. GOOGLE, INC.

recent decision in Ancora, 744 F.3d at 732, is instructive.

Ancora states that “[a] claim term should be given its

ordinary meaning in the pertinent context, unless the

patentee has made clear its adoption of a different defini-

tion or otherwise disclaimed that meaning.” Id. at 734.

There, we upheld the district court’s ruling that the terms

“volatile memory” and “non-volatile memory” were not

indefinite because the parties did not dispute that there

were “clear, settled, and objective” meanings for those

terms in the art, and three “passing references” in the

specification inconsistent with the established meanings

were insufficient to overcome the clear ordinary meaning.

Id. at 738.

In this case, the experts from both sides agreed that

“critical file” had a well-understood and objective defini-

tion to one of skill in the art. Cioffi’s expert, Mr. H.E.

(“Buster”) Dunsmore, stated that a person of skill would

understand that a “‘critical file’ refers to files required for

the proper operation of the computer’s systems.” Dun-

smore Decl. ¶ 35, Exhibit 24 of Google’s Responsive Claim

Construction Br., Cioffi, 2014 U.S. Dist. LEXIS 123760

(2:13-cv-103), ECF No. 66 (“Dunsmore Decl.”). Similarly,

Google’s expert, Dr. William A. Arbaugh, testified that,

“[a] person of ordinary skill in the art knows that ‘system

files’ are synonymous with ‘critical file’ and ‘critical sys-

tem file.’” Arbaugh Decl. at 32, Exhibit 23 of Google’s

Responsive Claim Construction Br., Cioffi, 2014 U.S. Dist.

LEXIS 123760 (2:13-cv-103), ECF No. 66 (emphasis

added) (“Arbaugh Decl.”). 3

3 Based on this language, we disagree with Google’s

characterization of Dr. Arbaugh’s testimony as explaining

“that ‘system file’ can be a ‘critical file’ or a ‘critical system

file,’ not that ‘critical file’ means ‘system file’ or only

includes ‘system file.’” Appellee Br. 37.

CIOFFI v. GOOGLE, INC. 19

The surrounding text of the experts’ declarations does

not alter this finding. The experts agreed that “critical

user file” is entirely subjective. See Dunsmore Decl. ¶ 35

(“users may disagree [sic] what is and is not critical to

them); Arbaugh Decl. at 32 (“it is my opinion that a

‘critical user file’ is entirely subjective because what is

critical to one person may not be critical to another”).

And the experts disagreed about whether “critical file”

must be construed to include “critical user files” based on

references to such files in the specification. See Dunsmore

Decl. ¶ 35 (“One of skill would understand that a critical

file would not be a user file”); Arbaugh Decl. at 33 (stating

that, in light of the specification and prosecution history,

a proposed construction of “critical file” that “does not

include the concept of ‘critical user files’ . . . is under-

inclusive”). But neither party’s expert suggested that

“critical file” alone is subjective or indefinite.

Our analysis thus shows that, without taking into

consideration the few references to “user files” or “user

data” in the intrinsic evidence, both sides’ experts agreed

on an objective and well-understood meaning for “critical

file.” Ancora teaches that, if there is a well-understood

meaning for a term in the art, we do not allow a few

inconsistent references in the specification to change this

meaning. This is because, if the terms at issue have “so

clear an ordinary meaning[,] a skilled artisan would not

be looking for clarification in the specification.” Ancora,

744 F.3d at 738. As in Ancora, “[t]here is no facial ambi-

guity or obscurity in the claim term,” and any ambiguity

only arises from the specification. Id.

Google argues that, unlike Ancora, where the “passing

references” inconsistent with the ordinary meaning were

“perplexing,” here, Cioffi deliberately intended to protect

critical user data and critical user files from malware as

part of its invention. See id. While the specification

references upon which Google relies do reference the

advantage of protecting files with which a particular user

20 CIOFFI v. GOOGLE, INC.

might be concerned, we see nothing that indicates that

Cioffi intended its invention to do anything other than

protect “critical files” as that concept is widely understood

by those of skill in the art. We, thus, reject Google’s

argument, and find that the few “passing references” to

“user” files or data are insufficient to alter the well-

understood, objective meaning of “critical file” agreed

upon by the experts. We, therefore, reverse the district

court’s holding that “critical file” in claim 21 of the ’103

patent is indefinite.

III. CONCLUSION

For the foregoing reasons, we find that that the dis-

trict court incorrectly construed “web browser process” as

requiring a “direct” access capability and incorrectly

construed “critical file” as encompassing “critical user

files.” We, therefore, reverse the district court’s claim

constructions to the extent they are inconsistent with our

findings and reverse the district court’s finding that the

’103 patent is invalid as indefinite under 35 U.S.C. § 112

¶ 2. Because the parties stipulated to non-infringement

based on the district court’s erroneous constructions, we

also remand for further findings pursuant to this opinion.

REVERSED AND REMANDED