The opinion
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNWIRED PLANET L.L.C.,
Plaintiff-Appellant
v.
GOOGLE, INC.,
Defendant-Appellee
______________________
2015-1966
______________________
Appeal from the United States District Court for the
District of Nevada in No. 3:12-cv-00504-MMD-VPC, Judge
Miranda M. Du.
______________________
Decided: November 21, 2016
______________________
PHILLIP AURENTZ, McKool Smith, PC, Dallas, TX, ar-
gued for plaintiff-appellant. Also represented by
THEODORE STEVENSON III; KEVIN LEE BURGESS, JOEL
LANCE THOLLANDER, Austin, TX.
GREGORY PAUL STONE, Munger, Tolles & Olson LLP,
Los Angeles, CA, argued for defendant-appellee. Also
represented by FRED ANTHONY ROWLEY, JR., ADAM R.
LAWTON, PETER GRATZINGER; PETER ANDREW DETRE, San
Francisco, CA.
2 UNWIRED PLANET LLC v. GOOGLE, INC.
______________________
Before WALLACH, HUGHES, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
Unwired Planet, L.L.C. appeals from a stipulated
judgment of noninfringement following adverse claim
construction and indefiniteness rulings from the United
States District Court for the District of Nevada. For the
reasons that follow, we affirm-in-part, vacate the court’s
grant of summary judgment, and remand for proceedings
consistent with this opinion.
BACKGROUND
Unwired originally asserted ten patents against
Google, Inc. in the district court, although only three are
at issue here on appeal: U.S. Patent Nos. 6,662,016,
6,895,240, and 6,684,087. Following the court’s claim
construction order concerning those patents and its inval-
idation of claims 17 and 31 of the ’087 patent for indefi-
niteness, Unwired stipulated to a judgment of
noninfringement.
The court granted the parties’ joint motion for sum-
mary judgment. The parties agreed that, with respect to
the ’016 patent, the court’s construction of “server node”
entitled Google to summary judgment of noninfringement
for claims 1–5. J.A. 57. For the same patent and asserted
claims, the parties further agreed that the court’s con-
struction of “network location information regarding a
mobile resource location” entitled Google to summary
judgment of noninfringement with respect to its accused
product My Location. J.A. 57. The parties further agreed
that, with respect to the ’240 patent, the court’s construc-
tion of “proxy server” / “proxy server module” entitled
Google to summary judgment of noninfringement for
claims 1–3, 5, 6, 13, 15–18, 27, 28, and 30. J.A. 56. Also
with regards to that patent, they agreed that the court’s
UNWIRED PLANET LLC v. GOOGLE, INC. 3
construction of “user account” entitled Google to summary
judgment of noninfringement for claims 6, 27, 28, and 30
of the ’240 patent. J.A. 56. And finally, with respect to
the ’087 patent, the parties agreed that the court’s con-
struction of “reduced image” entitled Google to summary
judgment of noninfringement for claims 1, 17, 27, and 31.
J.A. 57.
Unwired appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
DISCUSSION
“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015). We review a district court’s claim con-
struction based solely on intrinsic evidence de novo, while
we review subsidiary factual findings regarding extrinsic
evidence for clear error. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
Claim construction seeks to ascribe the “ordinary and
customary meaning” to claim terms as a person of ordi-
nary skill in the art would have understood them at the
time of invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–14 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“[T]he claims themselves provide substantial guidance as
to the meaning of particular claim terms.” Id. at 1314. In
addition, “the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the
particular claim in which the disputed term appears, but
in the context of the entire patent, including the specifica-
tion.” Id. at 1313. But “[w]hile we read claims in view of
the specification, of which they are a part, we do not read
limitations from the embodiments in the specification into
the claims.” Hill-Rom Servs., Inc. v. Stryker Corp., 755
F.3d 1367, 1371 (Fed. Cir. 2014).
4 UNWIRED PLANET LLC v. GOOGLE, INC.
On appeal, Unwired challenges seven claim construc-
tions and the court’s indefiniteness ruling. Of the seven
challenged constructions, we disagree with the district
court on three and agree on four. We disagree with the
court’s construction of the terms “marker info” and “server
node” in the ’016 patent. We also disagree with its con-
struction of “user account” in the ’240 patent. We agree
with the remainder of the challenged constructions,
including all of the challenged constructions in the ’087
patent. Finally, we affirm the court’s ruling that claims
17 and 31 of the ’087 patent are invalid as indefinite.
I.
We begin with Unwired’s argument that the district
court misconstrued the terms “marker information,”
“network location information,” and “server node” in the
’016 patent. 1 The ’016 patent describes technology for
transmitting and displaying location information of a
mobile device. The specification describes particular
methods and systems for the “delivery of graphical loca-
tion information regarding mobile resources.” ’016 patent
col. 2 ll. 25–26. In the claimed method, a “server node”
separately sends “mapping information” and “marker
information” to a “client node,” which processes the “map-
ping information” and “marker information” to “generate
a graphical display indicating said mobile resource loca-
1 We adopt the parties’ shorthand for the first two
terms. The parties use the shorthand “marker infor-
mation” to refer to the construed term “processing said
network location information regarding said mobile
resource location, at said server node, to generate marker
information defining a graphical representation of said
mobile resource location.” The shorthand “network loca-
tion information” stands for “network location information
regarding a mobile resource location.”
UNWIRED PLANET LLC v. GOOGLE, INC. 5
tion.” Id. col. 12 l. 61 – col. 14 l. 4. Claim 1 is representa-
tive and is reproduced below:
1. A method for use in providing location infor-
mation regarding mobile resources in a data ena-
bled network, comprising the steps of:
providing a server node associated
with at least one wireless communication
network assisted location finding system;
said server node being in selective
communication with a client node via the
data enabled network;
receiving, at the server node, network
location information regarding a mobile
resource location, said network location in-
formation being obtained using said at
least one network assisted location finding
system, wherein said network location in-
formation is based on the location of said
mobile resource in relation to at least one
fixed ground-based wireless network
structure having a known geographic loca-
tion;
accessing at the server node, geograph-
ical mapping information for an area in-
cluding said mobile resource location;
processing said network location in-
formation regarding said mobile resource
location, at said server node, to generate
marker information defining a graphical
representation of said mobile resource loca-
tion, wherein said marker information
represents said network location infor-
mation so as to permit graphical combina-
tion of said marker information with said
mapping information;
6 UNWIRED PLANET LLC v. GOOGLE, INC.
first transmitting in a first message
set, said mapping information from said
server node to said client node;
second transmitting in a second mes-
sage set, said marker information from
said server node to said client node; and
wherein said mapping information
and said marker information can be com-
bined at said client node to generate a
graphical display indicating said mobile
resource location.
Id. col. 12 l. 57 – col. 14 l.4 (emphases added).
A.
Unwired argues that the court’s construction of
“marker information” in the ’016 patent improperly
imports a graphical output requirement into the claim,
and we agree. 2 The central dispute between the parties
was whether marker information must be information
“sufficient to render” a graphical marker on a screen, as
Google argued, or whether the marker information simply
“permits rendering” of an identifier on a map, as Unwired
proposed. Unwired Planet, LLC v. Google Inc., No. 3:12-
CV-00504, 2014 WL 7012497, at *27–28 (D. Nev. Dec. 12,
2014). The court adopted Google’s construction of the
term, finding that the claim requires the following: “at
said server node, processing said network location infor-
2 The entire disputed “marker information” term
requires “processing said network location information
regarding said mobile resource location, at said server
node, to generate marker information defining a graphical
representation of said mobile resource location.”
’016 patent col. 13 ll. 10–13.
UNWIRED PLANET LLC v. GOOGLE, INC. 7
mation regarding said mobile device location to generate
graphical location information sufficient to render an
identifier and including coordinates indicating the posi-
tion of said mobile device on a map.” Id. at *27, *29. In
short, the court found that marker information defines a
graphical representation and must include information
sufficient to render a graphical identifier. We disagree.
The specification defines the term “marker” as the
“cursor or other identifier, indicating the position of a
mobile resource.” ʼ016 patent col. 1 ll. 41–42. In contrast,
the specification describes “marker information” as in-
cluding “information identifying the mobile resource
location.” Id. col. 9 l. 66 – col. 10 l. 1. The specification
states that “the marker information includes information
sufficient to define a graphical representation of the
mobile resource location” and that “such information may
simply include coordinates which may be represented by a
cursor, cross hairs, a point or other identifier or the
location information may include coordinates which an
uncertainty radius or other defined uncertainty region.”
Id. col. 10 ll. 13–19.
While “marker information” may include a graphical
representation, the specification and prosecution history
make clear that “marker information” need not always
include graphical information. Rather, the intrinsic
evidence confirms that “marker information” may be
information about the mobile resource’s location, without
graphical information. The specification describes, for
example, non-graphical “marker information,” such as
coordinates and uncertainties. Id. col. 10 ll. 14–19. The
prosecution history further supports an interpretation of
“marker information” that need not include a graphical
representation. And in response to an office action, the
applicant explained that marker information may simply
reflect coordinates: “The marker information represents
the network information so as to permit combination with
the mapping data, e.g., the marker information may
8 UNWIRED PLANET LLC v. GOOGLE, INC.
reflect a longitude and latitude coordinate with an uncer-
tainty parameter.” J.A. 2683. With these remarks, the
applicant explained unequivocally that marker infor-
mation may simply represent coordinate values.
Read in the context of the prosecution history and the
specification, we conclude that marker information need
not include a graphical representation. We thus disagree
with the district court and adopt Unwired’s proposed
construction, construing the term as follows: “at said
server node, processing said network location information
regarding said mobile device location to generate location
information that permits rendering on the client node an
identifier indicating the position of said mobile device on a
map.” Unwired, 2014 WL 7012497, at *27.
B.
Unwired also disputes the meaning of the term “net-
work location information regarding a mobile resource
location” in the ’016 patent. In the district court, the
parties disputed whether location information may be
general coordinates, i.e., from a GPS, or whether location
information must provide the mobile resource’s location
within a network. The district court found that the
network location information must be “information
providing the location of a mobile device within a net-
work.” Unwired, 2014 WL 7012497, at *29–30.
Unwired argues that, to the contrary, network infor-
mation must only be “information relating to the location
of a mobile resource” and that Google’s construction
introduced redundancy into the claims. Id. at 29. We
disagree. The district court correctly determined that
network location information, as used in the patent
claims and specification, requires reference to the loca-
tion’s device within a network. The prosecution history
confirms this interpretation. There, the applicant distin-
guished the patented invention from a reference using
GPS-based location systems. The applicant stated that,
UNWIRED PLANET LLC v. GOOGLE, INC. 9
in contrast to GPS-based systems, the claimed “network
location information provides a mobile resource location
that is based at least in part upon the location of that
mobile resource relative to one or more fixed ground-
based wireless network structures that have a known
geographic location.” J.A. 2683. The applicant therefore
made clear that network location information must in-
clude information about a mobile resource within a net-
work. It cannot now seek a different interpretation.
Thus, we agree with the court’s construction.
C.
Finally, we turn to Unwired’s argument that the dis-
trict court misconstrued “server node” in the ’016 patent
by improperly importing a limitation into the claims. On
appeal, Unwired argues that the claim permits the server
node to comprise one or more computers or programs.
The district court construed the term “server node” as
“one or more computers, each performing the receiving,
accessing, processing, and transmitting services specified
in the claims.” Unwired, 2014 WL 7012497, at *32. The
court’s construction thus required that each computer
perform each and every one of the claimed functions—
receiving, accessing, processing, and transmitting.
Google responds that extrinsic evidence supports the
district court’s requirement that the server node consist of
computers where each performs all of the claimed func-
tions. It argues that, under Teva, we owe the district
court deference on its factual findings. Appellee Br. 48
(citing Teva, 135 S. Ct. at 842). While Google is correct
that we owe deference to factual findings, the district
court made no such findings here. In resolving the par-
ties’ dispute as to the meaning of “server node,” the court
discussed each party’s submitted evidence. Google offered
a 1999 technical dictionary, and Unwired offered contrary
testimony concerning the implementation of the patented
technology. Unwired, 2014 WL 7012497, at *32. The
10 UNWIRED PLANET LLC v. GOOGLE, INC.
court explained that these sources of evidence conflicted,
but did not resolve this conflict of evidence. Indeed, the
only other mention of extrinsic evidence came by way of
the court’s concluding sentence: “Considering the intrinsic
and extrinsic evidence, the Court adopts, in part, both
parties’ proposed constructions.” Id. The court’s adop-
tion-in-part of both parties’ constructions left the conflict
between the parties’ extrinsic evidence unresolved. In
turn, the district court’s opinion on this claim term con-
tains no reviewable factual findings. So although we owe
deference to the district court’s factual findings as a
general matter, Teva, 135 S. Ct. at 842, we cannot lend
such deference here.
On the merits of the claim construction dispute, we
agree with Unwired’s contention that the district court
improperly imported a limitation into the claim. See Hill-
Rom Servs., 755 F.3d at 1371. The claim requires the
server node to perform receiving, accessing, processing,
and transmitting services. It does not specify that the
node must be one or more computers with each perform-
ing every one of the computers’ functions. Nor does the
claim rule out multiple computers or programs working in
concert to operate as the claimed server node. The claim
merely requires that a single server node perform every
claimed function.
Moreover, the specification does not require that the
server node be a single computer, nor does it rule out an
embodiment where the node consists of a collection of
computers. For instance, figure 1 and its accompanying
text describe a “server,” but none of this text describes a
server or server node as consisting solely of a single
computer. ’016 patent col. 9 ll. 14–61. The server acts as
“a common platform for supporting services in various
operating environments.” Id. col. 9 ll. 60–61. But the text
does not limit this feature-set to a particular hardware
configuration. And it certainly does not limit this feature-
set to one computer. Thus, the district court’s construc-
UNWIRED PLANET LLC v. GOOGLE, INC. 11
tion improperly imported a limitation into the claim. We
agree instead with Unwired’s proposed construction, in
which a server node is “one or more computers or pro-
grams that provide access to resources to client nodes.”
II.
We turn next to the ’240 patent, where Unwired chal-
lenges the district court’s construction of “proxy server”
and “user account.” The ’240 patent generally describes a
system for facilitating communication between the wired
internet and mobile phones, referred to by the specifica-
tion as “landnet” and “airnet,” respectively. ’240 patent
col. 4 ll. 36–39, col. 5 ll. 6–9. The specification provides an
example of such a system in figure 1, reproduced below:
As shown in figure 1, landnet 100 communicates with
airnet 102 through a proxy server 114. The specification
explains that “[g]enerally, the communication protocol in
airnet 102 is different from that in landnet 100.”
’240 patent col. 5 ll. 33–34. For example, in one embodi-
12 UNWIRED PLANET LLC v. GOOGLE, INC.
ment the communication protocol on the landnet is “the
well known HyperText Transfer Protocol (HTTP) or
HTTPS,” while the airnet’s protocol is “Handheld Device
Transport Protocol (HDTP).” Id. col. 5 ll. 41–58. “Hence,
one of the functions proxy server 114 performs is to map
or translate one communication protocol to anoth-
er, thereby mobile station 106 coupled to airnet 102 can
communicate with any of the devices coupled to landnet
100 via proxy server 114.” Id. col. 5 ll. 35–39.
In the claimed system, a proxy server “enable[s]”
communication between a wireless network and a land-
net. Representative claim 1 is reproduced below:
1. A system comprising:
a proxy server coupled to a wireless
network, to enable a plurality of mobile
stations on the wireless network to com-
municate with processing systems on a
landnet, the proxy server communicating
with the mobile stations over the wireless
network; and
a fleet server coupled to communicate
with the proxy server, to store and control
access to fleet data, and to authenticate a
request from a provisioning entity to push
the fleet data to the plurality of the mobile
stations;
wherein the proxy server pushes the
fleet data to the plurality of mobile sta-
tions over the wireless network only if the
request is authenticated by the fleet serv-
er.
Id. col. 13 ll. 49–62 (emphases added). Claim 6, which
ultimately depends from claim 1, adds the requirement
that “the proxy server comprises an account manager to
manage a plurality of user accounts, each corresponding
UNWIRED PLANET LLC v. GOOGLE, INC. 13
to one of the mobile stations, wherein the proxy server
pushes the fleet data to the plurality of mobile stations
over the wireless network only if the request is authenti-
cated by the provisioning interface and verified by the
account manager.” ’240 patent col. 14 ll. 22–28 (emphasis
added). Claim 27 is an independent claim that similarly
involves “verifying the plurality of the mobile stations
against a plurality of user accounts using the fleet server.”
Id. col. 16 ll. 16–28 (emphasis added).
A.
Unwired argues that the district court’s claim con-
struction of “proxy server” improperly imported a limita-
tion into the claims. The court construed “proxy server” 3
to require “mapping or translation functions to enable
communication between two networks that could other-
wise not communicate.” Unwired, 2014 WL 7012497, at
*7. Unwired concedes that the specification describes
proxy servers as enabling otherwise incompatible net-
works to communicate. But Unwired argues that the
proxy server need not be limited to this role. Rather, it
contends the proxy server may connect two networks that
use the same protocol. It explains that the specification
does not rule out the airnet and landnet operating with
the same protocol. It argues that, while the specification
states that “[g]enerally,” the communication protocols are
different, id. col. 5 ll. 32–33, the use of the term “general-
ly” implies that the landnet and airnet might employ the
same communication protocol.
3 During the Markman hearing, the parties agreed
that the Court’s construction of “proxy server” would
control the construction of “proxy server module.” Un-
wired, 2014 WL 7012497, at *1 n.3.
14 UNWIRED PLANET LLC v. GOOGLE, INC.
We disagree with Unwired’s claim construction argu-
ment. The district court properly found that a person of
ordinary skill would understand “proxy server,” as used in
the context of the ’240 patent claims, to enable communi-
cation between otherwise uncommunicative networks.
The claim expressly requires the “proxy server” to “enable
a plurality of mobile stations on the wireless network to
communicate with processing systems on a landnet.” Id.
col. 13 ll. 50–52. If the wireless network and landnet
were already able to communicate—i.e., without the proxy
server—the claim language “enable communication”
would have no meaning. The claims could have recited
“facilitating communication” or “assisting communica-
tion,” but the patent owner instead limited the proxy
server to enabling communication, which, in the context
of the patent specification, requires mapping or transla-
tion functions. Indeed, as the specification describes, “one
of the functions proxy server 114 performs is to map or
translate one communication protocol to another, thereby
mobile station 106 coupled to airnet 102 can communicate
with any of the devices coupled to landnet 100 via proxy
server 114.” Id. at col. 5 ll. 35–36.
Unwired nevertheless contends that the court’s con-
struction renders claim 7 meaningless and thus violates
the doctrine of claim differentiation. Appellant Br. 58
(citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
910 (Fed. Cir. 2004)). “As this court has frequently stat-
ed, the presence of a dependent claim that adds a particu-
lar limitation raises a presumption that the limitation in
question is not found in the independent claim.” Liebel-
Flarsheim, 358 F.3d at 910. Claim 7, which ultimately
depends from claim 1, adds a mapper that performs
protocol mapping between a first and second communica-
tion protocol. The claim adds the following limitations:
“wherein the proxy server comprises a mapper to perform
protocol mapping from the first communication protocol to
the second communication protocol and from the second
UNWIRED PLANET LLC v. GOOGLE, INC. 15
communication protocol to the first communication proto-
col.” ’240 patent col. 14 ll. 29–33. Unwired argues that
the court’s construction imports these limitations into
claim 1. But Google responds that claim 7 also requires
“a mapper,” a limitation not present in claim 1 or the
district court’s construction. We agree. The district
court’s construction, which we adopt, does not render
claim 7 meaningless, as claim 7 does not simply require
that the proxy server enable communications between two
otherwise uncommunicative networks. At minimum,
claim 7 adds a mapper requirement.
B.
Finally, Unwired challenges the court’s construction
of “user account” in claims 6 and 27 of the ’240 patent.
The court construed “user account” to mean “an estab-
lished relationship between a user of a mobile device and
a wireless carrier authorizing the mobile device to use the
carrier’s network.” Unwired, 2014 WL 7012497, at *16.
Unwired argues that a “user account” need not be limited
to accounts of mobile devices with wireless carriers, but
rather could include other accounts, such as those be-
tween mobile devices and corporations, businesses, or
even individuals.
Google defends the court’s construction on the basis
that a person of ordinary skill in the art would under-
stand the claims to describe user accounts associated with
a wireless carrier. It reasons that the specification de-
scribes a verification process that ensures the mobile
stations receive data sent over a wireless network.
Google points to the specification’s description of an
embodiment where a user account includes a “device ID”
that is assigned to a mobile device, and a “subscriber ID”
that is “typically initiated and authorized by a carrier in a
proxy server device 240 as part of the procedures to
activate a subscriber account for a mobile station.”
’240 patent col. 8 l. 66 – col. 9 l. 2. The user ID enables
16 UNWIRED PLANET LLC v. GOOGLE, INC.
the system to determine whether the customer has an
account with a wireless carrier before pushing the infor-
mation out to that user. The specification further de-
scribes this process of verifying the user’s identification
with the carrier. It explains that “the selected mobile
stations are determined if all are authorized and serviced
by the proxy server. Typically, the selected mobile sta-
tions are examined against their corresponding user
accounts.” ’240 patent col. 13 ll. 25–28. Google argues
that these embodiments suggest that a “user account” is
limited to mobile accounts with wireless carriers.
We agree with Unwired, however, that the district
court’s claim construction improperly excludes at least
one disclosed embodiment in the specification. For exam-
ple, one embodiment describes corporations having mobile
fleets that employ corporate user accounts. Id. col. 6 l. 66
– col. 7 l. 4. The specification explains that there will be
times where corporations wish to directly communicate
with particular mobile devices through these accounts.
Id. col. 1 ll. 47–48. The corporation may wish, for exam-
ple, “to update a call list to a selective group of [] mobile
devices” or “to propagate an urgent proprietary message
to its sales team.” Id. col. 1 ll. 47–58. In this embodi-
ment, corporations directly communicate with mobile
users by utilizing “user accounts.” This embodiment
envisions user accounts that do not correspond to the
relationship between the mobile user and the carrier. As
such, the district court erred by incorrectly limiting the
term “user account” to accounts with carriers. We instead
adopt Unwired’s construction of “user account” as “an
established account with a user of a mobile device.”
III.
We turn last to Unwired’s contention that the district
court misconstrued the terms “reduced image” and “key in
the mobile device corresponding to a subarea in the
reduced image” in the ’087 patent. The ’087 patent gen-
UNWIRED PLANET LLC v. GOOGLE, INC. 17
erally discloses a method of using a mobile device to
display and navigate images having “larger dimensions
than that of the [device’s] display screen.” ’087 patent
col. 1 ll. 12–13. The patent discusses “transform[ing]” the
image into a “reduced version that fits well into the
screen,” and that “reduced version is displayed on the
mobile device.” Id. col. 2 ll. 13–19. Claim 1 is reproduced
below:
1. A method for recursively displaying on a
screen of a mobile device an image having dimen-
sions much larger than the dimension of the
screen; the method comprises:
displaying on the screen of the mobile
device a reduced image forwarded from a
server device, the reduced image trans-
formed from the image with respect to a
set of parameters associated with the
screen;
generating a new request when a key
in the mobile device corresponding to a
subarea in the reduced image is activated;
and
receiving a detailed image of the sub-
area from the server device when the
server device renders the new request.
’087 patent col. 9 ll. 27–39 (emphases added).
A.
The district court construed “reduced image” to mean
“an uncropped version of the image with smaller dimen-
sions.” Unwired, 2014 WL 7012497, at *24. The court
adopted this construction over Unwired’s proposed con-
struction, which would have defined “reduced image” as
“a version of the image with smaller dimensions.” Id.
at *23. The court explained that, while the patent does
18 UNWIRED PLANET LLC v. GOOGLE, INC.
not explicitly define the term “reduced image,” “the claims
and specification discuss a reduced image in the context of
preprocessing or transforming an original image for
display on a mobile device.” Id. (internal quotation marks
and alterations omitted). The court found that “[t]he
intrinsic evidence, however, does not specify whether a
reduced image may be produced by cropping an original
image.” Id. The court then looked to extrinsic evidence in
the form of an inventor’s testimony as to the scope of the
term. The inventor testified that “reduced image” did not
mean cropping. Id. at *24. In light of both the extrinsic
and intrinsic evidence, the court adopted Google’s pro-
posed construction.
We first note that the district court wrongly relied on
the inventor’s testimony about his subjective understand-
ing of the meaning of “reduced image.” “[I]nventor testi-
mony as to the inventor’s subjective intent is irrelevant to
the issue of claim construction.” Howmedica Osteonics
Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347
(Fed. Cir. 2008). Because this testimony is irrelevant as a
matter of law, we do not review the court’s findings on
this evidence.
We nevertheless agree with the district court that the
correct construction of “reduced image” is “an uncropped
version of the image with smaller dimensions.” Unwired,
2014 WL 7012497, at *24. We find that the claims and
specification make clear that the image cannot be reduced
by cropping. As the court noted, the claimed method
reduces the size of a large image so that the mobile device
can display the reduced image. The specification de-
scribes transforming the size of an image by “prepro-
cessing . . . to reduce or decimate [the] image” to a smaller
pixel size. ’087 patent, col. 7 ll. 17–18. This transfor-
mation shrinks a larger image for display on a small
screen, but it does not crop out portions of that image.
Read in the context of the specification, we find no indica-
tion that the term “reduced image” incorporates a cropped
UNWIRED PLANET LLC v. GOOGLE, INC. 19
image. See Phillips, 415 F.3d at 1313. We thus agree
with the district court’s construction of “reduced image.”
B.
The court also construed “key in the mobile device
corresponding to a subarea in the reduced image” as
Google had suggested, requiring it to be “a button, either
physical or depicted on the screen, corresponding to
a subarea of the reduced image.” Unwired, 2014 WL
7012497, at *24. Unwired argued that, to the contrary,
the key should simply be “a button or touch input corre-
sponding to a subarea of the reduced image.” Id. But the
district court explained that the specification describes
keys as buttons, rather than touch inputs generally. It
quoted portions of the specification stating that “some of
the mobile devices sometimes have no physical keys at all,
such as those palm-size computing devices that . . . use
soft keys or icons for users to activate them by using a
finger or a pseudo-pen.” ’087 patent col. 4 ll. 40–43. The
court then explained that “[t]he specification goes on to
clarify that ‘unless otherwise specifically described, keys
or buttons are generally referred to as either the physical
keys or soft keys.’” Unwired, 2014 WL 7012497, at *24
(quoting ’087 patent col. 4 ll. 43–45). The court concluded
that, “[a]lthough these statements indicate that ‘key’
covers more than a physical button or physical key, they
do not suggest that a ‘key’ includes any form of touch
input, as Unwired contends.” Id. Thus, the court adopted
Google’s construction for this term. We agree with the
court’s construction.
C.
Finally, with respect to the ’087 patent, Unwired chal-
lenges the district court’s judgment that claims 17 and 31
are invalid as indefinite under 35 U.S.C. § 112. The court
held the preamble term “an image having dimensions
much larger than the dimension of the screen” indefinite.
Unwired limits its dispute on appeal to the district court’s
20 UNWIRED PLANET LLC v. GOOGLE, INC.
determination that this term has patentable weight. It
does not dispute that this term renders the claim indefi-
nite if it has patentable weight. Claim 17 is reproduced
below:
17. A method for recursively displaying on a
screen of a mobile device an image having dimen-
sions much larger than the dimension of the
screen, the mobile device having a keypad includ-
ing a number of keys; the method comprises:
fetching the image from a resource on
a landnet according to a request from the
mobile device; the request comprising an
address identifier identifying the resource;
generating from the image an image
hierarchy starting with a reduced image
equally divided into a number of subareas,
each of the subareas pointing to a detailed
version thereof; and
forwarding the reduced image to the
mobile device for display.
’087 patent col. 10 l. 61 – col. 11 l. 6 (emphases added).
Claim 31 is reproduced below:
31. An apparatus for recursively displaying on
a screen of a mobile device an image having
dimensions much larger than the dimension of
the screen; the mobile device having a keypad
including a number of keys; the apparatus
comprises:
a memory for storing code for a server
module; and
a processor coupled to the memory ex-
ecuting the code in the memory to cause
the server module to:
UNWIRED PLANET LLC v. GOOGLE, INC. 21
fetch the image from a resource on a
landnet according to a request from the
mobile device; the request comprising an
address identifier identifying the resource;
generate from the image an image hi-
erarchy starting with a reduced image
equally divided into a number of subareas,
each of the subareas pointing to a detailed
version thereof; and
forward the reduced image to the mobile
device for display.
’087 patent col. 12 ll. 25–42 (emphases added).
As we have explained, a term has patentable weight
where it “recites essential structure or steps, or if it is
necessary to give life, meaning, and vitality to the claim.”
Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367,
1372 (Fed. Cir. 2014) (internal quotation marks omitted).
Here, the preamble introduces the term “an image.” The
term provides antecedent basis for a term in the body of
the claims, “the image.” As the claims describe, an appa-
ratus fetches the image from the landnet and then, from
the image, generates an image hierarchy that includes a
reduced image that is forwarded to the mobile device for
viewing. As the district court noted, without the pream-
ble term, there is no requirement in the claims that the
image be much larger than the dimension of the screen.
The court explained that, absent the term, “[t]he claims
fail to indicate that the image hierarchy—or the reduced
image that it starts with—is a smaller version of the
image, or that the image had been reduced in size accord-
ing to the mobile device’s screen.” Unwired Planet LLC v.
Google Inc., 111 F. Supp. 3d 1120, 1128 (D. Nev. 2015). It
explained that the term is “‘essential to understand
limitations or terms in the claim body’—namely, the size
difference between an image and the screen of a mobile
device.” Id. (quoting Catalina Mktg. Int’l, Inc. v. Coolsav-
22 UNWIRED PLANET LLC v. GOOGLE, INC.
ings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). We
agree. Not only does “an image” provide antecedent basis
for “the image” later in the claims, it also “recites particu-
lar structure or steps that are highlighted as important by
the specification.” See Proveris, 739 F.3d at 1372. We
thus agree with the court’s finding that this has patenta-
ble weight.
Because Unwired does not challenge the court’s find-
ing that the term is indefinite once given patentable
weight, we affirm the court’s finding that claims 13 and
17 of the ’087 patent are invalid as indefinite.
CONCLUSION
For the foregoing reasons, we modify the court’s con-
structions with regard to the “marker information” and
“server node” terms in the ’016 patent and agree with the
district court’s constructions of the remaining challenged
terms in that patent. We modify the district court’s
construction of “user account” in the ’240 patent and
agree with its construction of the remaining challenged
terms. We agree with all of the court’s challenged con-
structions with regard to the ’087 patent. And we affirm
the court’s finding that claims 17 and 31 of the ’087
patent are invalid. Thus, we vacate the court’s grant of
stipulated summary judgment and remand for proceed-
ings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.