Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.

United States Court of Appeals

for the Federal Circuit

______________________

CORE WIRELESS LICENSING S.A.R.L.,

Plaintiff-Appellee

v.

LG ELECTRONICS, INC., LG ELECTRONICS

MOBILECOMM U.S.A., INC.,

Defendants-Appellants

______________________

2016-2684, 2017-1922

______________________

Appeals from the United States District Court for the

Eastern District of Texas in Nos. 2:14-cv-00911-JRG-RSP,

2:14-cv-00912-JRG-SP, Judge J. Rodney Gilstrap.

______________________

Decided: January 25, 2018

______________________

BENJAMIN T. WANG, Russ August & Kabat, Los Ange-

les, CA, argued for plaintiff-appellee. Also represented by

MARC AARON FENSTER, ADAM S. HOFFMAN, REZA MIRZAIE;

KAYVAN B. NOROOZI, Noroozi PC, Santa Monica, CA.

CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Wash-

ington, DC, argued for defendants-appellants. Also

represented by DANIEL HAY, RYAN C. MORRIS,

ANNA MAYERGOYZ WEINBERG; PETER H. KANG, Palo Alto,

CA; JAMES SUH, LG Electronics Inc., Seoul, Korea.

______________________

2 CORE WIRELESS LICENSING v. LG ELECS., INC.

Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE.

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

Circuit Judge WALLACH.

MOORE, Circuit Judge.

LG Electronics, Inc. (“LG”) appeals the United States

District Court for the Eastern District of Texas’ decisions

(1) denying summary judgment that claims 8 and 9 of

U.S. Patent No. 8,713,476 (“’476 patent”) and claims 11

and 13 of U.S. Patent No. 8,434,020 (“’020 patent”) are

directed to patent ineligible subject matter under 35

U.S.C. § 101; (2) denying judgment as matter of law that

U.S. Patent No. 6,415,164 (“Blanchard”) anticipates the

asserted claims under 35 U.S.C. § 102; and (3) denying

judgment as a matter of law that the claims are not

infringed. For the reasons discussed below, we affirm.

BACKGROUND

The ’476 and ’020 patents disclose improved display

interfaces, particularly for electronic devices with small

screens like mobile telephones. ’020 patent 1 at 1:14–24.

The improved interfaces allow a user to more quickly

access desired data stored in, and functions of applica-

tions included in, the electronic devices. Id. at 2:20–44.

An application summary window displays “a limited list

of common functions and commonly accessed stored data

which itself can be reached directly from the main menu

listing some or all applications.” Id. at 2:55–59. The

application summary window can be reached in two steps:

“first, launch a main view which shows various applica-

1 The ’476 and ’020 patent specifications are effec-

tively identical. Unless otherwise specified, citations to

the ’020 patent refer to disclosures in both patents.

CORE WIRELESS LICENSING v. LG ELECS., INC. 3

tions; then, launch the appropriate summary window for

the application of interest.” Id. at 2:61–64. The patents

explain that the disclosed application summary window

“is far faster and easier than conventional navigation

approaches,” particularly for devices with small screens.

Id. at 2:64–65.

Core Wireless Licensing S.A.R.L. (“Core Wireless”)

sued LG, alleging LG infringed dependent claims 8 and 9

of the ’476 patent and dependent claims 11 and 13 of the

’020 patent. Claims 8 and 9 of the ’476 patent depend

from claim 1, which recites (emphases added):

1. A computing device comprising a display

screen, the computing device being configured to

display on the screen a menu listing one or more

applications, and additionally being configured to

display on the screen an application summary

that can be reached directly from the menu,

wherein the application summary displays a lim-

ited list of data offered within the one or more ap-

plications, each of the data in the list being

selectable to launch the respective application and

enable the selected data to be seen within the re-

spective application, and wherein the application

summary is displayed while the one or more ap-

plications are in an un-launched state.

Claims 11 and 13 of the ’020 patent depend from claim 1,

which recites (emphases added):

1. A computing device comprising a display

screen, the computing device being configured to

display on the screen a main menu listing at least

a first application, and additionally being config-

ured to display on the screen an application sum-

mary window that can be reached directly from

the main menu, wherein the application summary

window displays a limited list of at least one func-

tion offered within the first application, each func-

4 CORE WIRELESS LICENSING v. LG ELECS., INC.

tion in the list being selectable to launch the first

application and initiate the selected function, and

wherein the application summary window is dis-

played while the application is in an un-launched

state.

LG moved for summary judgment of invalidity of the

asserted claims under 35 U.S.C. § 101, which the court

denied. The district court found claim 1 of the ’476 patent

representative for the purposes of evaluating patent

eligibility. It held that the claims are not directed to an

abstract idea because, even crediting LG’s characteriza-

tion of the claims as directed to “displaying an application

summary window while the application is in an un-

launched state,” the concepts of “application,” “summary

window,” and “unlaunched state” are specific to devices

like computers and cell phones. J.A. 9561. The court

explained “LG identifie[d] no analog to these concepts

outside the context of such devices.” Id. It further noted

even “if claim 1 were directed to an abstract idea, it would

still be patent eligible at least because it passes the

machine-or-transformation test.” J.A. 9562.

The case proceeded to trial, and the district court, af-

ter hearing initial testimony, determined “an O2 Micro

situation” existed with respect to the claim terms “un-

launched state” and “reached directly,” and afforded both

sides an opportunity to argue constructions of these

terms. J.A. 10277–78; see O2 Micro Int’l Ltd. v. Beyond

Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)

(“When the parties present a fundamental dispute regard-

ing the scope of a claim term, it is the court’s duty to

resolve it.”). The district court ruled that “un-launched

state” means “not displayed” and “reached directly”

means “reached without an intervening step.”

The jury found all asserted claims infringed and not

invalid. LG moved for judgment as matter of law of

noninfringement, arguing in part that a correct construc-

CORE WIRELESS LICENSING v. LG ELECS., INC. 5

tion of “un-launched state” means “not running” and that

under this construction, no reasonable jury could have

found infringement. LG also argued that the “reached

directly” limitation required user interaction with the

main menu, and no reasonable jury could have found

infringement under such a construction. The district

court declined to revisit claim construction, noting LG did

not preserve its claim construction arguments in a Rule

50(a) motion. The district court further denied LG’s

motion for judgment as a matter of law of noninfringe-

ment based on the court’s adopted constructions because

evidence was presented at trial from which the jury

reasonably could have found that the application sum-

mary window in the accused devices could be reached

directly from the main menu.

The district court also denied LG’s motion for judg-

ment of a matter of law of anticipation by Blanchard.

Although Core Wireless elected not to call an expert to

testify in rebuttal to LG’s validity expert, the district

court noted that the jury was not required to credit LG’s

expert testimony and concluded “LG failed to overcome

the presumption of validity accorded to the ’476 and ’020

Patents by clear and convincing evidence.” J.A. 18.

LG timely appeals. We have jurisdiction under 28

U.S.C. § 1295(a)(1). 2

2 Concern remains regarding whether we have ju-

risdiction to review the appeal of validity and infringe-

ment determinations while damages remains unresolved

and will be the subject of a future jury trial. This is

particularly true where, as here, no judgment under Rule

54(b) or otherwise has ever been entered. This panel,

however, is bound by the determination in Robert Bosch,

LLC v. Pylon Manufacturing Corp., 719 F.3d 1305, 1320

(Fed. Cir. 2013) (en banc) (holding that we retain jurisdic-

6 CORE WIRELESS LICENSING v. LG ELECS., INC.

DISCUSSION

For patent appeals, we apply the law of the regional

circuit, here the Fifth Circuit, to issues not specific to

patent law. LaserDynamics, Inc. v. Quanta Comput., Inc.,

694 F.3d 51, 66 (Fed. Cir. 2012). The Fifth Circuit re-

views motions for summary judgment and motions for

judgment as matter of law de novo. Id. The Fifth Circuit

views all evidence in a light most favorable to the verdict

and will reverse a jury’s verdict only if the evidence points

so overwhelmingly in favor of one party that reasonable

jurors could not arrive at any contrary conclusion. Bagby

Elevator Co. v. Schindler Elevator Corp., 609 F.3d 768,

773 (5th Cir. 2010). The ultimate determination of patent

eligibility under 35 U.S.C. § 101 is an issue of law we

review de novo. Intellectual Ventures I LLC v. Capital

One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017).

Anticipation and infringement are both questions of fact

reviewed for substantial evidence when tried to a jury.

Wi-Lan, Inc. v. Apple Inc., 811 F.3d 455, 461 (Fed. Cir.

2016).

I. Patent Eligibility

Anyone who “invents or discovers any new and useful

process, machine, manufacture, or composition of matter,

or any new and useful improvement thereof” may obtain a

patent. 35 U.S.C. § 101. Because patent protection does

not extend to claims that monopolize the “building blocks

of human ingenuity,” claims directed to laws of nature,

natural phenomena, and abstract ideas are not patent

eligible. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct.

2347, 2354 (2014). The Supreme Court instructs courts to

distinguish between claims that claim patent ineligible

tion “to entertain appeals from patent infringement

liability determinations when a trial on damages has not

yet occurred”).

CORE WIRELESS LICENSING v. LG ELECS., INC. 7

subject matter and those that “integrate the building

blocks into something more.” Id. First, we “determine

whether the claims at issue are directed to a patent-

ineligible concept.” Id. at 2355. If so, we “examine the

elements of the claim to determine whether it contains an

‘inventive concept’ sufficient to ‘transform’ the claimed

abstract idea into a patent-eligible application.” Id. at

2357 (quoting Mayo Collaborative Servs. v. Prometheus

Labs., Inc., 566 U.S. 66, 72, 79 (2012)). If the claims are

directed to a patent-eligible concept, the claims satisfy

§ 101 and we need not proceed to the second step. Visual

Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.

Cir. 2017).

At step one, we must “articulate what the claims are

directed to with enough specificity to ensure the step one

inquiry is meaningful.” Thales Visionix Inc. v. United

States, 850 F.3d 1343, 1347 (Fed. Cir. 2017). Although

there is “difficulty inherent in delineating the contours of

an abstract idea,” Visual Memory, 867 F.3d at 1259, we

must be mindful that “all inventions at some level em-

body, use, reflect, rest upon, or apply laws of nature,

natural phenomena, or abstract ideas.” Mayo, 566 U.S.

at 71. We also ask whether the claims are directed to a

specific improvement in the capabilities of computing

devices, or, instead, “a process that qualifies as an ‘ab-

stract idea’ for which computers are invoked merely as a

tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336

(Fed. Cir. 2016).

We previously have held claims focused on various

improvements of systems directed to patent eligible

subject matter under § 101. For example, in Enfish, we

held claims reciting a self-referential table for a computer

database eligible under step one because the claims were

directed to a particular improvement in the computer’s

functionality. 822 F.3d at 1336. That the invention ran

on a general-purpose computer did not doom the claims

because unlike claims that merely “add[] conventional

8 CORE WIRELESS LICENSING v. LG ELECS., INC.

computer components to well-known business practices,”

the claimed self-referential table was “a specific type of

data structure designed to improve the way a computer

stores and retrieves data in memory.” Id. at 1338–39. In

Thales, we held claims reciting an improved method of

utilizing inertial sensors to determine position and orien-

tation of an object on a moving platform not directed to an

abstract idea or law of nature. 850 F.3d at 1349. We

noted that even though the system used conventional

sensors and a mathematical equation, the claims specified

a particular configuration of the sensors and a particular

method of utilizing the raw data that eliminated many of

the complications inherent in conventional methods. Id.

at 1348–49. In Visual Memory, we held claims directed to

an improved computer memory system with programma-

ble operational characteristics defined by the processor

directed to patent-eligible subject matter. 867 F.3d

at 1259. The claimed invention provided flexibility that

prior art processors did not possess, and obviated the need

to design a separate memory system for each type of

processor. Id. And most recently, in Finjan, Inc. v. Blue

Coat Systems, Inc., we held claims directed to a behavior-

based virus scanning method directed to patent eligible

subject matter because they “employ[] a new kind of file

that enables a computer security system to do things it

could not do before,” including “accumulat[ing] and uti-

liz[ing] newly available, behavior-based information about

potential threats.” 2018 WL 341882 (Fed. Cir. Jan. 10,

2018). The claimed behavior-based scans, in contrast to

prior art systems which searched for matching code,

enabled more “nuanced virus filtering” in analyzing

whether “a downloadable’s code . . . performs potentially

dangerous or unwanted operations.” Id. at 6–7. We held

the claims “therefore directed to a non-abstract improve-

ment in functionality, rather than the abstract idea of

computer security writ large.” Id. at 8.

CORE WIRELESS LICENSING v. LG ELECS., INC. 9

The asserted claims in this case are directed to an im-

proved user interface for computing devices, not to the

abstract idea of an index, as argued by LG on appeal. 3

Although the generic idea of summarizing information

certainly existed prior to the invention, these claims are

directed to a particular manner of summarizing and

presenting information in electronic devices. Claim 1 of

the ’476 patent requires “an application summary that

can be reached directly from the menu,” specifying a

particular manner by which the summary window must

be accessed. The claim further requires the application

summary window list a limited set of data, “each of the

data in the list being selectable to launch the respective

application and enable the selected data to be seen within

the respective application.” This claim limitation re-

strains the type of data that can be displayed in the

summary window. Finally, the claim recites that the

summary window “is displayed while the one or more

applications are in an un-launched state,” a requirement

that the device applications exist in a particular state.

These limitations disclose a specific manner of displaying

a limited set of information to the user, rather than using

conventional user interface methods to display a generic

index on a computer. Like the improved systems claimed

in Enfish, Thales, Visual Memory, and Finjan, these

claims recite a specific improvement over prior systems,

resulting in an improved user interface for electronic

devices.

The specification confirms that these claims disclose

an improved user interface for electronic devices, particu-

3 This articulation of the purported abstract idea

was advanced for the first time on appeal. Because we do

not find this theory or the theory offered below to be well-

taken, we do not decide whether the argument was

waived, as Core Wireless argues.

10 CORE WIRELESS LICENSING v. LG ELECS., INC.

larly those with small screens. It teaches that the prior

art interfaces had many deficits relating to the efficient

functioning of the computer, requiring a user “to scroll

around and switch views many times to find the right

data/functionality.” ’020 patent at 1:47–49. Because

small screens “tend to need data and functionality divided

into many layers or views,” id. at 1:29–30, prior art inter-

faces required users to drill down through many layers to

get to desired data or functionality. Id. at 1:29–37. That

process could “seem slow, complex and difficult to learn,

particularly to novice users.” Id. at 1:45–46.

The disclosed invention improves the efficiency of us-

ing the electronic device by bringing together “a limited

list of common functions and commonly accessed stored

data,” which can be accessed directly from the main

menu. Id. at 2:55–59. Displaying selected data or func-

tions of interest in the summary window allows the user

to see the most relevant data or functions “without actual-

ly opening the application up.” Id. at 3:53–55. The speed

of a user’s navigation through various views and windows

can be improved because it “saves the user from navi-

gating to the required application, opening it up, and then

navigating within that application to enable the data of

interest to be seen or a function of interest to be activat-

ed.” Id. at 2:35–39. Rather than paging through multiple

screens of options, “only three steps may be needed from

start up to reaching the required data/functionality.” Id.

at 3:2–3. This language clearly indicates that the claims

are directed to an improvement in the functioning of

computers, particularly those with small screens.

Because we hold that the asserted claims are not di-

rected to an abstract idea, we do not proceed to the second

step of the inquiry. The claims are patent eligible under

§ 101.

CORE WIRELESS LICENSING v. LG ELECS., INC. 11

II. Anticipation

The Blanchard reference teaches a display screen for

mobile phones that “provides an arrangement for dynami-

cally varying how space on a small display is allocated for

presentation of various types of user information.”

J.A. 13097 at 1:53–57. It discloses hierarchical menu

screens displaying a series of selectable sub-level menu

choices through which a user can cycle. The display

changes dynamically as the user makes selections; for

example, selecting a function, such as “phone book,” will

display options related to that function, such as “add

entry.”

LG argues it established by clear and convincing evi-

dence that Blanchard discloses each element of the as-

serted claims. It first submits that Core Wireless based

its arguments distinguishing the asserted claims from

Blanchard during closing argument and post-trial briefing

on elements not recited by the asserted claims. It further

submits that, because it presented a prima facie case of

anticipation and Core Wireless failed to present any

affirmative evidence in rebuttal, it is entitled to judgment

as a matter of law that Blanchard anticipates the assert-

ed claims. We disagree.

A patent is presumed valid, and the burden of estab-

lishing invalidity of a claim rests on the party asserting

invalidity by clear and convincing evidence. 35 U.S.C.

§ 282; Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95

(2011). An alleged infringer asserting a defense of inva-

lidity also has “the initial burden of going forward with

evidence to support its invalidity allegation.” Titan Tire

Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376

(Fed. Cir. 2009). Once that evidence has been presented,

the “burden of going forward shifts to the patentee to

present contrary evidence and argument.” Id. at 1376–77.

Ultimately, however, the outcome of an alleged infringer’s

invalidity defense at trial depends on whether the alleged

12 CORE WIRELESS LICENSING v. LG ELECS., INC.

infringer “has carried its burden of persuasion to prove by

clear and convincing evidence that the patent is invalid.”

Id. at 1377. Because the burden rests with the alleged

infringer to present clear and convincing evidence sup-

porting a finding of invalidity, granting judgment as a

matter of law for the party carrying the burden of proof is

generally “reserved for extreme cases,” such as when the

opposing party’s witness makes a key admission. 9B Fed.

Prac. & Proc. Civ. § 2535 (3d ed.); see Grey v. First Nat’l

Bank in Dall., 393 F.2d 371, 380 (5th Cir. 1968) (“[W]hen

the party moving for a directed verdict has such a burden,

the evidence to support the granting of the motion must

be so one-sided as to be of over-whelming effect.”).

This is not one such extreme case. While LG present-

ed the testimony of Dr. Rhyne, the only expert who testi-

fied regarding anticipation, Core Wireless cross-examined

Dr. Rhyne, illuminating for the jury reasons why

Dr. Rhyne’s opinion was incorrect. For example,

Dr. Rhyne testified that Blanchard discloses the “limited

list” of data and functions recited in the asserted claims

because Blanchard Figure 3 displays only three of the five

functions of the phone book application. But on cross-

examination, when asked if all five functions were “avail-

able through this menu,” Dr. Rhyne admitted that all five

functions of the phone book application were available

through Blanchard’s disclosed menus: “You can reach all

of them—you can bring them all to the face of the screen,

if that’s what you mean.” J.A. 10741. Viewing the evi-

dence in the light most favorable to the verdict, we cannot

say that this is a case in which the evidence points so

strongly and overwhelming in favor of LG that reasonable

jurors could not arrive at any contrary conclusion. A

reasonable jury could have heard the cross-examination of

Dr. Rhyne and concluded Blanchard did not disclose the

“limited list” limitation in the claims because a user could

access the additional functions in Blanchard by keying

down within the summary display window. Core Wireless

CORE WIRELESS LICENSING v. LG ELECS., INC. 13

had the right to choose to use its limited trial clock for

other purposes where it believed—perhaps at its own

risk—that LG’s evidence had been adequately impeached.

And the jury was entitled to evaluate Dr. Rhyne’s testi-

mony and determine whether LG clearly and convincingly

established that Blanchard anticipates the claims.

The district court, in denying LG’s motion for judg-

ment as a matter of law, did not hold that the presump-

tion of validity “saved” the claims in the face of

unrebutted evidence. The court merely made the unre-

markable observation that the jury was not required “to

give full credit and acceptance to the testimony of

Dr. Rhyne.” J.A. 17. We agree with the district court and

affirm its denial of LG’s motion for judgment as a matter

of law of anticipation.

III. Infringement

LG presents two noninfringement arguments on ap-

peal. First, LG argues the correct construction of “un-

launched state” is “not running,” rather than “not dis-

played” as the district court held, and the accused devices

do not infringe under its proposed construction. 4 Second,

LG argues that no reasonable jury could find that the

accused devices satisfy the “reached directly from the

[main] menu” limitations in the claims because the ac-

cused application summary window is reached from the

status bar, which is not part of the menu. We reject both

arguments.

“[T]he ultimate issue of the proper construction of a

claim should be treated as a question of law,” which we

review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,

4 On appeal, LG does not dispute that under the

court’s construction of “un-launched state,” substantial

evidence supports the jury’s verdict that the accused

devices meet this limitation.

14 CORE WIRELESS LICENSING v. LG ELECS., INC.

135 S. Ct. 831, 838 (2015). Any subsidiary factual find-

ings related to claim construction are reviewed under the

clearly erroneous standard. Id. In construing the claims,

we consider “the words of the claims themselves, the

specification, the prosecution history, and if necessary,

any relevant extrinsic evidence.” Advanced Steel Recov-

ery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed.

Cir. 2015). “[W]hen the district court reviews only evi-

dence intrinsic to the patent (the patent claims and

specifications, along with the patent’s prosecution histo-

ry), the judge’s determination will amount solely to a

determination of law.” Teva Pharm. USA, Inc., 135 S. Ct.

at 841.

First, we consider the construction of “un-launched

state.” While this is a close case for which the intrinsic

evidence could plausibly be read to support either party,

we see no error in the district court’s construction of “un-

launched state” to mean “not displayed.” Such a construc-

tion encompasses both applications that are not running

at all and applications that are running, at least to some

extent, in the background of the electronic device. See

J.A. 10283 (Core Wireless’ expert testifying that an un-

launched application is “either not executing code or not

visible to the user”).

The stated focus of the invention is to “allow the user

to navigate quickly and efficiently to access data and

activate a desired function” on devices with small screens.

’020 patent at 1:26–29. The invention identifies as prob-

lematic the conventional user interfaces in which “a user

may need to scroll around and switch views many times to

find the right data/functionality.” Id. at 1:47–49. For

instance, the specification does not identify the memory

drain that running applications may have on the system

as a problem it aims to solve—it only concerns itself with

maximizing the benefit of the “common functions and

commonly accessed data” actually displayed to the user.

Id. at 2:26–30; see id. at 4:36–39 (“The mobile telephone

CORE WIRELESS LICENSING v. LG ELECS., INC. 15

may be able to learn what functionality and/or stored data

types are most likely to be of interest to a given user and

which should therefore be included in a summary view to

any given user.”).

The terms “display” and “launch” are used throughout

the specification to convey that a particular view is dis-

played to the user. The specification states the following

when describing the advantages in user navigation

achieved by the invention:

[A] user can get to the summary window in just

two steps—first, launch a main view which shows

various applications; then, launch the appropriate

summary window for the application of interest.

This is far faster and easier than conventional

navigation approaches. Once the summary win-

dow is launched, core data/functionality is dis-

played and can be accessed in more detail can

typically be reached simply by selecting that da-

ta/functionality.

Id. at 2:59–3:2 (emphases added). In this passage,

“launch” is used to describe what is displayed to the user

when they select various menu options, not to indicate

that an application is running.

This understanding is confirmed by the patents’ use of

the word “running.” While the specification uses the term

“display” throughout, it only uses the term “running” (or

any modification of the term) one time: “there is a com-

puter program which when running on a computing

device (such as a mobile telephone), enables the device to

operate in accordance with the above aspects of the inven-

tion. The program may be an operating system.” Id. at

2:40–44. Therefore, when the patent teaches that a user

“launch[es] a main view” or “launch[es] the appropriate

summary window,” the computer program or operating

system implementing the summary program is already

running. Id. at 2:59–3:2. Similarly, each patent only has

16 CORE WIRELESS LICENSING v. LG ELECS., INC.

one independent claim which uses the term “running,”

and it is used to describe the overall “computer program

product” that implements the claimed functionality, not a

device application. ’020 patent at 6:20–32 (claim 16); ’476

patent at 6:30–43 (claim 11). These claims further recite

an application “in an unlaunched state.” If the patentee

intended “unlaunched” to mean “not running,” it knew

how to express as much.

Figure 3, which is identical for both patents, further

confirms this construction of “un-launched state.” In

Figure 3, the summary window indicates that under the

“Messages” application there are “3 unread emails,” “2

new SMS” messages, and “1 Chat ongoing.” ’020 patent

at Fig. 3 (emphasis added). The use of the word “ongoing”

(as opposed to a word like “received”) indicates that, in at

least some embodiments of the invention, at least some

subset of processes of the Messages application are al-

ready running. The specification confirms that the appli-

cation summary window reflects information that is

something more than mere notifications from an applica-

tion: “App Snapshots are not intended to replace notifica-

tions, but to complement them by providing non-intrusive

reminders for the user, as well as rapid shortcuts to key

application functionality.” Id. at 4:32–35.

The specification also describes a preferred embodi-

ment in which “the constituency of the App Snapshot may

vary with the environment in which the mobile telephone

finds itself.” Id. at 4:47–49 (emphasis added). It explains

“if the telephone is Bluetooth enabled, then there may be

a Bluetooth application which has associated with it a

summary window which lists the other Bluetooth devices

in the vicinity.” Id. at 4:49–52. Moreover, claim 6 of the

’020 patent and claim 5 of the ’476 patent both require

that the data or functionality displayed “varies with the

environment of the device.” LG has not articulated how

an application with data in the application summary

window that varies as the location of the device changes

CORE WIRELESS LICENSING v. LG ELECS., INC. 17

can operate without having the application “running” in

some manner. While the full Bluetooth application may

not be “running,” at least some subset of that application’s

processes must be running in order to update the availa-

ble devices in the application summary window.

The Bluetooth embodiment and the Messages embod-

iment displayed in Figure 3 are consistent with Core

Wireless’ argument during the O2 Micro hearing that a

launched application is executing code and visible to the

user. An unlaunched application, therefore, is “either not

executing code or not visible to the user.” J.A. 10283

(emphases added). The specification does not teach that

the application summary window performs limited pro-

cesses on behalf of the unlaunched applications. LG’s

proposed construction of “un-launched” as “not running”

would impermissibly read these preferred embodiments

out of the claims.

LG argues that the specification uses “launch” and

“display” to express different ideas. For example, the

specification explains: “The App Snapshot can therefore

display data from an application and functions of that

application without actually opening the application up:

only once a user has selected an item in the App Snapshot

associated with a given application does that application

have to be opened.” ’020 patent at 3:53–58 (emphases

added). This passage does not contradict the district

court’s construction. The passage does not state that the

application summary window displays the application

without actually opening the application up. The specifi-

cation’s statement that the App Snapshot “display[s]”

data without the selected application being “opened” does

not, without more, indicate that a previously unopened

application was not running at least some subset of

processes. Similarly, the dissent’s interpretation assumes

that displaying an application necessarily requires dis-

play of particular data. Wallach Op. at 3–5. The specifi-

cation demonstrates this not to be true. When a user

18 CORE WIRELESS LICENSING v. LG ELECS., INC.

selects data from the summary window, e.g., a commonly

emailed contact, “the display then changes to a new email

form seeded with [the] email address and all the user

need do is input some body text and hit a ‘Do It’ button.”

’020 patent at 5:5–19. This is different from displaying an

email application without this pre-loaded data, which

does not “enable the selected data to be seen within the

respective application.” ’476 patent claim 1.

The patentee did not clearly and unmistakably dis-

claim or limit the construction of “un-launched state”

during prosecution, as LG argues. The doctrine of prose-

cution disclaimer precludes patentees from recapturing

the full scope of a claim term only when the patentee

clearly and unmistakably disavows a certain meaning in

order to obtain the patent. Mass. Inst. of Tech. v. Shire

Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). When

the alleged disclaimer is ambiguous or amenable to mul-

tiple reasonable interpretations, we decline to find prose-

cution disclaimer. Id.

The patentee’s statements during prosecution do not

amount to a clear and unmistakable disclaimer restricting

the meaning of “un-launched state” only to those applica-

tions that are not running any processes. During prose-

cution, the patentee distinguished the claims from prior

art U.S. Patent No. 6,781,611 (“Richard”). Richard teach-

es a method “for switching between multiple open win-

dows in multiple applications on a computer desktop.”

J.A. 14461 at 1:38–40. The examiner pointed to Richard

Figure 6, in which “the user has two applications, AppA

and AppB . . . open on a desktop,” the top window being

AppA. J.A. 14459, 14462 at 3:20–26. A plurality of

windows are open within AppB, and when the user clicks

and holds the arrow on the application button for AppB

on the taskbar, a pop-up menu appears, displaying the

three open windows within AppB. In distinguishing the

invention from Richard, the patentee stated that the main

menu of Richard is “a menu of open windows within a

CORE WIRELESS LICENSING v. LG ELECS., INC. 19

single application, i.e., a launched application. It follows

from the fact the windows are open within the application

that the application must be running and therefore has

been launched.” J.A. 12764 (emphases in original). This

statement is consistent with the district court’s construc-

tion. Both AppA and AppB in Richard Figure 6 are

displayed to the user. While AppA takes up most of the

display area in this figure, AppB is also displayed to the

user in the form of the application button on the taskbar.

Indeed, Richard specifically teaches that the arrow on the

application button for AppB “serves as a visual indicator

that there are a plurality of windows open in AppB.”

J.A. 14462 at 3:35–37 (emphasis added). Core Wireless

admits that an application that is displayed must be

running. Oral Arg. at 20:32–40. Because AppB in Rich-

ard Figure 6 is displayed and running, the patentee’s

statement during prosecution that AppB must be

“launched” is fully consistent with the construction that

“un-launched state” means “not displayed.”

Because the claim language, specification, and prose-

cution history all support the district court’s construction,

we agree with the district court that the correct construc-

tion of “un-launched state” is “not displayed.”

Second, substantial evidence supports the jury’s ver-

dict of infringement based on the “reached directly from

the [main] menu” claim limitation. LG argues no reason-

able jury could find the accused devices satisfy this limi-

tation because the evidence at trial established that the

status bar was distinct from a “main menu.” We do not

agree.

There is no dispute on appeal how the accused devices

work. The devices have a primary home screen display,

comprising a series of icons along the bottom of the dis-

play, corresponding to applications like Gmail and Phone.

The entire home screen display is the accused “main

menu.” Along the top of the home screen display, a status

20 CORE WIRELESS LICENSING v. LG ELECS., INC.

bar displays the time, battery status, signal strength, and

other data. The accused application summary window is

the LG devices’ notification shade, which the user access-

es by swiping down from the status bar.

The jury heard conflicting evidence regarding whether

the status bar is part of the accused “home screen.”

Dr. Rhyne testified that the status bar is “not part of the

home screen” because the home screen is the part of the

screen between the status bar at the top and the naviga-

tion bar at the bottom of the display. J.A. 10603–04. He

further testified that the user “can open [the notification

shade] up in almost any application,” not just the main

home screen view. J.A. 10604–05. Core Wireless’ in-

fringement expert agreed that a user can reach the notifi-

cation shade from the status bar while any application is

displayed in the central view. Core Wireless presented

evidence, however, that the status bar is part of the home

screen. Core Wireless’ expert, Dr. Zeger, acknowledged

that when an application is open and displayed, the user

does not reach the notification shade directly from the

main menu “because there was an intervening step” of

opening up the application from the main menu.

J.A. 10315. But he testified that when the main menu is

displayed and the user pulls down the notification shade,

the user reaches the accused application summary win-

dow directly from the main menu. Core Wireless also

presented LG’s user manual to the jury, which expressly

identifies the status bar as part of the home screen.

The parties’ dispute boils down to whether the status

bar is part of the accused “home screen.” This is a fact

question that we presume the jury resolved in favor of

Core Wireless, and substantial evidence supports the

jury’s finding. In the LG user manual, the status bar is

the first section of the view identified as the home screen.

The jury was also entitled to credit Dr. Zeger’s testimony

on this issue. Indeed, Dr. Rhyne admitted that if the

status bar is part of the home screen, the user can reach

CORE WIRELESS LICENSING v. LG ELECS., INC. 21

the accused application summary window directly from

the main menu. We conclude that substantial evidence

supports the jury’s finding of infringement.

CONCLUSION

For the foregoing reasons, we affirm the district

court’s denial of summary judgment that the claims are

ineligible under 35 U.S.C. § 101. We also affirm the

district court’s denial of judgment as a matter of law that

the claims are anticipated by Blanchard and the claims

are not infringed.

AFFIRMED

United States Court of Appeals

for the Federal Circuit

______________________

CORE WIRELESS LICENSING S.A.R.L.,

Plaintiff-Appellee

v.

LG ELECTRONICS, INC., LG ELECTRONICS

MOBILECOMM U.S.A., INC.,

Defendants-Appellants

______________________

2016-2684, 2017-1922

______________________

Appeals from the United States District Court for the

Eastern District of Texas in Nos. 2:14-cv-00911-JRG-RSP,

2:14-cv-00912-JRG-RSP, Judge J. Rodney Gilstrap.

______________________

WALLACH, Circuit Judge, concurring-in-part and dissent-

ing-in-part.

I agree with the majority that the U.S. District Court

for the Eastern District of Texas (“District Court”) did not

err either in determining that claims 11 and 13 of U.S.

Patent No. 8,434,020 (“the ’020 patent”) and claims 8−9 of

U.S. Patent No. 8,713,476 (“the ’476 patent”) (collectively,

the “Asserted Claims”) (together, the “Patents-in-Suit”)

are patent eligible or in construing the “reached directly”

claim limitation for purposes of its infringement and

anticipation analyses. See Core Wireless Licensing

S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-911-JRG, 2016 WL

4440255, at *1 (E.D. Tex. Aug. 23, 2016) (ruling on antici-

pation and infringement); Core Wireless Licensing

2 CORE WIRELESS LICENSING v. LG ELECS., INC.

S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-911-JRG-RSP

(E.D. Tex. Mar. 20, 2016) (J.A. 9555−62) (ruling on eligi-

bility). I disagree, however, with the majority’s ruling

affirming the District Court’s construction of the “un-

launched state” limitation. See ’476 patent col. 6 ll. 2−3;

’020 patent col. 5 l. 43. I would find the term “un-

launched state” to mean “not running,” as proposed by

Appellant LG Electronics, Inc. (“LG”), and remand the

case to the District Court for review of whether this

construction alters its findings on infringement and

anticipation. 1 I therefore respectfully dissent-in-part

from today’s judgment. I review the legal standard for

claim construction and then turn to my analysis.

I. Legal Standard

Claim construction focuses on the wording of the

claims, “read in view of the specification, of which they

are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315

(Fed. Cir. 2005) (en banc) (internal quotation marks and

citation omitted). Prosecution history may also be exam-

ined to supply additional context to support a claim term’s

intended meaning. See Home Diagnostics, Inc. v.

Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).

While courts may consider extrinsic evidence in claim

construction, “such evidence is generally of less signifi-

cance than the intrinsic record.” Wi-LAN, Inc. v. Apple

Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted).

Extrinsic evidence may not be used “to contradict claim

meaning that is unambiguous in light of the intrinsic

evidence.” Phillips, 415 F.3d at 1324 (citation omitted).

The District Court did not analyze extrinsic evidence in

making its determination. See J.A. 10277−97. When the

district court reviews only evidence intrinsic to the pa-

1 Neither party argued that a different claim con-

struction would affect our analysis of eligibility. See

generally Appellant’s Br.; Appellee’s Br.

CORE WIRELESS LICENSING v. LG ELECS., INC. 3

tent, that determination will amount solely to a determi-

nation of law that we review de novo. See Teva Pharm.

USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

II. The District Court Erred in Its Claim Construction of

“Un-Launched State”

The District Court construed the term “un-launched

state” during a pretrial conference to mean “not dis-

played” and maintained that construction in its post-trial

denial of judgment as a matter of law. See Core Wireless,

2016 WL 4440255, at *4−5; J.A. 10297. LG argues that

the term “un-launched state” should mean “not running.”

Appellant’s Br. 30; see id. at 30−48. I agree with LG.

Consistent with claim construction principles, I look first

to the language of the claims, followed by the remainder

of the specification’s language and prosecution history.

See Phillips, 415 F.3d at 1315.

First, the claims state in part that: an application

summary “displays” certain data offered in applications;

each of the data is “selectable to launch the respective

application and enable the selected data to be seen”; and

the application summary is “displayed while the one or

more applications are in an un-launched state.” ’476

patent col. 5 l. 60−col. 6 l. 3 (claim 1). 2 “Display” is used

differently and independently from “launch” in the claims,

which indicates these terms have different meanings. In

addition, by separating “launch” and “enable the selected

data to be seen,” the claims contemplate a difference

between launching and displaying data. See Chi. Bd.

Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361,

1369 (Fed. Cir. 2012) (applying a “general presumption

2 Claim 1 of the ’020 patent is substantively similar

to the relevant portions of the ’476 patent and the specifi-

cations are effectively identical, so I refer only to claim 1

of the ’476 patent for ease of reference.

4 CORE WIRELESS LICENSING v. LG ELECS., INC.

that different [claim] terms have different meanings”).

Further, the claim language distinguishes between

“launch[ing] the respective application” itself, and “en-

ab[ling] the selected data . . . within” the application to be

seen. ’476 patent col. 5 l. 66−col. 6 l. 1 (emphasis added).

Such a distinction would be rendered meaningless if

launch were construed to mean “display.” See Merck &

Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed.

Cir. 2005) (“A claim construction that gives meaning to all

the terms of the claim is preferred over one that does not

do so.” (citation omitted)). Moreover, I do not understand

what “displaying” the application itself would mean in

this context, where the claim language more specifically

directs the invention to enable only certain “data” pre-

viewed in the application summary to be seen. See Inno-

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

381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[W]hen an appli-

cant uses different terms in a claim it is permissible to

infer that he intended his choice of different terms to

reflect a differentiation in meaning of those terms.”).

Second, the specification uses the terms “launch” and

“display” distinctly. See ’476 patent col. 3 ll. 10–11 (“Once

the summary window is launched, core data/functionality

is displayed.”). This could either mean the terms are

distinct, or, as the majority finds, that launch is synony-

mous with display. See Maj. Op. at 14−17. As stated

previously, based on claim differentiation principles, I

find it more likely that “launch” is a first step of inde-

pendent meaning, and “display” is a step that comes

second, after the “summary window” has been launched.

Appellee Core Wireless Licensing S.A.R.L. (“Core Wire-

less”) contends that the statement “a user can . . . launch

a main view which shows various applications,” ’476

patent col. 3 ll. 5−7, supports its argument that “launch”

refers to granting “visual access,” because the language of

the specification uses the term “view,” Appellee’s Br. 21.

However, the term “main view” refers to and is synony-

CORE WIRELESS LICENSING v. LG ELECS., INC. 5

mous with the summary application window. See ’476

patent col. 3 ll. 5−7, 17−33; id. figs.1−3. Referring to this

particular page using the term “view” does not confer

additional meaning on the verb “launch.”

Additional language in the specification in support of

LG’s construction states that previously, users would

“locate,” “then start/open the required application,” “and

then may need to . . . cause the required stored data . . . to

be displayed.” Id. col. 1 ll. 51−55 (emphasis added).

Again, the specification contemplates display and opening

as two separate steps in the user’s process, which leads

me to the conclusion that “display” and “open” are not

synonymous, and that the drafters of the Patents-in-Suit

knew how to use the term “display” when conveying

visual access to an application’s contents. 3 I also note

that the specification explicitly defines the term “idle

screen” as “a display which is shown when the mobile

telephone is switched on but not in use,” id. col. 2

ll. 10−12, which indicates the drafters of the Patents-in-

Suit knew how to define a single term that contained two

separate meanings (here, one related to display, and one

related to operation), and believed such an explanation

would be necessary for terms that on their face did not

contain a dual meaning. For that reason, I am skeptical

of the majority’s understanding that the term “un-

launched” “encompasses both applications that are not

running at all and applications that are running, at least

3 For the same reason, I do not agree with the ma-

jority’s conclusion that certain passages in the specifica-

tion use “launch” to describe “what is displayed to the

user when they select various menu options.” Maj. Op. at

15 (citing ’020 patent col. 2 l. 59−col. 3 l. 2).

6 CORE WIRELESS LICENSING v. LG ELECS., INC.

to some extent, in the background of the electronic de-

vice.” 4 Maj. Op. at 14.

I also agree with LG’s contention that the specifica-

tion teaches the invention was directed to a problem in

line with its construction of the term “un-launched state,”

or, at least, that the problems in the field are inconclusive

to weigh in favor of either party’s proposed construction.

LG asserts that the invention is directed to saving “the

user from navigating to the required application, opening

it up, and then navigating within that application.”

Appellant’s Br. 32 (quoting ’476 patent col. 2 ll. 46−50).

Again, construction hinges on our understanding of the

term “open” in this phrase and whether it refers to run-

ning or displaying an application. No matter the con-

struction of launch though, the claimed invention seeks to

improve access to the large amount of information stored

in small computing devices. See, e.g., ’476 patent col. 2

l. 66−col. 3 l. 6 (discussing invention’s “advantages in ease

and speed of navigation, particularly on small screen

devices”). It seems to me that the default state of the

applications storing this information when a user navi-

gates through the claimed summary application menu

does not affect the utility of the claimed invention.

4 While the majority additionally supports its ar-

gument by referring to the single use of the term “run-

ning” in the specification, see Maj. Op. at 15−16 (quoting

’020 patent col. 2 ll. 40−44 (“[T]here is a computer pro-

gram which when running on a computing device . . . .”)),

I note that neither party made arguments with respect to

this language, and it is not clear to me from the record

that “running” when referring to the computer program

itself equates to use of the term as applied to applications

within the device.

CORE WIRELESS LICENSING v. LG ELECS., INC. 7

The majority identifies the stated focus of the inven-

tions as to “allow the user to navigate quickly and effi-

ciently to access data and activate a desired function” on

small screens. Maj. Op. at 14 (quoting ’020 patent col. 1

ll. 26−29). Therefore, it finds the absence of an explicitly

stated goal such as “memory drain,” a problem which

appears to be of the majority’s own creation, to be instruc-

tive in its construction of the term “un-launched,” because

the invention “only concerns itself with maximizing the

benefit of the ‘common functions and commonly accessed

data’ actually displayed to the user.” Id. at 15 (quoting

’020 patent col. 4 ll. 36−39). In our claim construction

analysis, we look not to what is absent from the specifica-

tion or what could have been written, but rather to what

is included. See Merck & Co. v. Teva Pharm. USA, Inc.,

347 F.3d 1367, 1371 (Fed. Cir. 2003) (“A fundamental rule

of claim construction is that the terms in a patent docu-

ment are construed with the meaning with which they are

presented in the patent document. Thus claims must be

construed so as to be consistent with the specifica-

tion . . . .” (emphasis added) (citations omitted)). Here, as

mentioned above, the focus of the invention identified by

the majority can support either party’s construction of the

disputed term. The use of an application summary menu

to congregate data from myriad applications on a small

screen computing device benefits users in the manner

stated, regardless of whether the applications are running

in the background. Moreover, in other parts of the speci-

fication, the invention is directed towards “effectively

enabling the user to understand th[e device’s] changing

internal state” through offering on the application menu

page a list of “common functions offered within an appli-

cation and/or . . . data stored in that application.” ’476

patent col. 2 ll. 22−24, 34−36. Here again, enabling a user

to better understand options offered by applications and

data stored within them are goals that are successfully

8 CORE WIRELESS LICENSING v. LG ELECS., INC.

achieved with applications that are not running until

selected from the main menu.

Third, the prosecution history further supports LG’s

proffered construction. Even if Core Wireless did not

disclaim its professed interpretation that “launch” means

“display,” 5 I would nevertheless find LG’s interpretation

of “un-launched” comports more closely with the overall

language of the Patents-in-Suit and prosecution history.

See Phillips, 415 F.3d at 1316. Indeed, during prosecu-

tion, Core Wireless distinguished the Asserted Claims

from those in the prior art because, unlike the prior art,

its claims did not “only ever display[]” the summary

application menu “within a running instance of the pro-

gram, i.e., only when the program is in a launched state.”

J.A. 12764 (emphasis added). Thus, Core Wireless used

the term “launch” to mean running, not merely displayed.

See J.A. 12765 (stating, in another portion of Core Wire-

less’s amendment, that 1) the “underlying purpose” of the

claimed invention is that it overcomes the prior art in

which information about applications in the summary

application menu “is not displayed until after the applica-

tion is already running” and 2) the prior art “relate[s] to

running applications and combining them does nothing to

satisfy the requirement of the present claims that the

application summary window is displayed without

launching the application” (emphasis added)).

The majority adopts Core Wireless’s argument that

construing “un-launched” to mean “not running” would

5 Both the majority and the District Court interpret

LG’s arguments as prosecution disclaimer arguments and

determine that LG does not meet the high bar to prove

that Core Wireless “clearly disavowed claim scope during

prosecution.” Core Wireless, 2016 WL 4440255, at *4; see

Maj. Op. at 18–19.

CORE WIRELESS LICENSING v. LG ELECS., INC. 9

exclude certain preferred embodiments in the specifica-

tion, see Maj. Op. at 16−17; see also Appellee’s Br. 28−29,

contrary to our court’s instruction that a construction

“that excludes a preferred embodiment from the scope of

the claim is rarely, if ever, correct,” MBO Labs., Inc. v.

Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir.

2007) (internal quotation marks and citation omitted).

Specifically, Figure 3 illustrates an application window

that indicates there is an ongoing chat not seen on the

screen. See ’020 patent fig.3; ’476 patent fig.3. The

majority states that “use of the word ‘ongoing’ (as opposed

to a word like ‘received’) indicates that, in at least some

embodiments of the invention, at least some subset of

processes of the Messages application are already run-

ning.” Maj. Op. at 16. Yet Core Wireless has not present-

ed evidence, in the form of expert testimony or otherwise,

to suggest that the display in the application menu of new

messages or the use of the term ongoing in the summary

menu would be understood by a person having ordinary

skill in the art to indicate the underlying application is

running. Core Wireless presents only attorney argument,

not evidence. See Gemtron Corp. v. Saint-Gobain Corp.,

572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney

argument . . . is not evidence and cannot re-

but . . . admitted evidence.” (citation omitted)); Appellee’s

Br. 28−29. Moreover, I do not believe construing “un-

launched” to mean “not running” would be inconsistent

with this preferred embodiment, since the requirements

of claim 1 only state that “one or more applications” are in

an un-launched state. ’476 patent col. 6 ll. 2−3; see ’020

patent col. 5 ll. 35, 43 (requiring “at least a first applica-

tion” that is “in an un-launched state”). Therefore, even if

“ongoing” were to imply a running application, the appli-

cation menu display of messages from a non-running

10 CORE WIRELESS LICENSING v. LG ELECS., INC.

message application would still satisfy the requirements

of claim 1 of the Patents-in-Suit. 6

Accordingly, I would reverse the District Court’s claim

construction of “un-launched state” and construe the term

to mean “not running.” Given this claim construction, I

would remand for further findings on infringement and

anticipation. I respectfully dissent.

6 I would not read lines in the specification stating

that “App Snapshots are not intended to replace notifica-

tions, but to complement them by providing non-intrusive

reminders for the user” to support “launch” meaning

“display,” as the majority contends. See Maj. Op. at 16;

’476 patent col. 4 ll. 43−46; ’020 patent col. 4 ll. 32−35.

Such language could just as easily be understood to refer

to a summary application menu’s presentation of infor-

mation from applications that are not currently running.