Function Media, L.L.C v. Google Inc.

United States Court of Appeals

for the Federal Circuit

______________________

FUNCTION MEDIA, L.L.C.,

Plaintiff-Appellant,

v.

GOOGLE INC.,

Defendant-Appellee,

AND

YAHOO! INC.,

Defendant.

______________________

2012-1020

______________________

Appeal from the United States District Court for the

Eastern District of Texas in No. 07-CV-0279, Magistrate

Judge Charles Everingham IV.

______________________

Decided: February 13, 2013

______________________

JUSTIN A. NELSON, Susman Godfrey L.L.P, of Seat-

tle, Washington, argued for plaintiff-appellant. With him

on the brief were MAX L. TRIBBLE, JR. and JOSEPH S.

GRINSTEIN, of Houston, Texas.

CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart

& Sullivan LLP, of San Francisco, California, argued for

defendant-appellee. With him on the brief were AMY H.

2 FUNCTION MEDIA v. GOOGLE

CANDIDO and CARL G. ANDERSON; and EDWARD J. DE

FRANCO, of New York, New York.

______________________

Before RADER, Chief Judge, NEWMAN, and REYNA, Circuit

Judges.

REYNA, Circuit Judge.

In this patent case, Function Media, L.L.C. (“FM”)

appeals the district court’s invalidation of one of FM’s

patents as indefinite and the jury’s verdict that two other

FM patents are invalid and also not infringed. FM raises

several other issues on appeal, including a claim that the

district court abdicated to the jury its responsibility to

construe disputed claim terms, an argument that the

district court incorrectly denied its motion for a new trial

on the grounds that the verdict was against the great

weight of the evidence, and an argument that the verdicts

of infringement and invalidity are irreconcilable. For the

reasons explained below, we affirm.

BACKGROUND

FM sued Google, Inc. (“Google”)1 in the United States

District Court for the Eastern District of Texas for in-

fringing U.S. Patent Nos. 6,446,045 (the “’045 Patent”),

7,240,025 (the “’025 Patent”), and 7,249,059 (the “’059

Patent”). 2 The purpose of the invention disclosed in all

three patents is to facilitate advertising on multiple

advertising outlets such as newspapers and websites.

The specification characterizes the prior art as inefficient

because, among other reasons, it requires advertisers to

manually ensure that their ads conform to the differing

1 Yahoo!, Inc. and FM settled before trial.

2 The ’025 Patent is a continuation of the ’045 Patent

and they share identical specifications. The ’059 Patent is

a continuation-in-part of the ’045 Patent.

FUNCTION MEDIA v. GOOGLE 3

requirements of each advertising venue. ’025 Patent col.

1 ll. 36-47. For example, if one website required square

ads with red borders, while another required rectangular

ads with blue borders, the prior art systems required the

advertiser to manually create both ads. Id. The inven-

tion is designed to eliminate this inefficiency by automati-

cally formatting the ads to fit each publisher’s

requirements and sending them out for publication. Id.

col. 3 ll. 28-40.

In each of the patents, a “central computer” coordi-

nates interactions between sellers, media venues, and

buyers. A “seller” is an entity that wishes to place ads,

and is sometimes referred to as an “advertiser.” ’025

Patent col. 12 ll. 21-27. “Media venues” are locations

where ads can be placed, sometimes called “publishers”;

in this case, the publishers are websites. Id. col. 10 ll. 61-

67. “Buyers” are the targets of the ads, i.e., the people

viewing the websites. Id. col. 8 ll. 35-40. The central

computer hosts a number of databases and software

processes, including the presentation rules database and

the Presentation Generating Program (“PGP”). See ’025

Patent fig. 2a.

Claim 1 of the ’025 Patent is representative of the as-

serted claims:

1. A computer system for creating and publishing

customized electronic advertisements, for a

seller, to internet media venues owned or con-

trolled by other than the seller, comprising:

a first interface to the computer system through

which each of the internet media venues is

prompted to input presentation rules for the

internet media venue for displaying electronic

advertisements on the internet media venue;

4 FUNCTION MEDIA v. GOOGLE

a first database storing the presentation rules in-

put by the internet media venues through the

first interface;

a second interface to the computer system through

which a seller is prompted to input infor-

mation to select one or more of the internet

media venues and prompted to input infor-

mation to create an electronic advertisement

for publication to the selected internet media

venues;

a second database storing the information input

by the seller through the second interface; and

a computer controller of the computer system pro-

cessing and publishing the electronic adver-

tisement to one or more of the selected internet

media venues in compliance with the presen-

tation rules of the internet media venue,

whereby the electronic advertisement is dis-

played on each of the one or more of the se-

lected internet media venues in compliance

with the presentation rules of the internet

media venue.

’025 Patent col. 64 l. 59 to col. 65 l. 17 (emphases added).

Thus, the invention requires: rule setting by the media

venues to inform the system how the ads must be format-

ted; storage of the rules; inputting information to select

media venues where the ads will be displayed; inputting

information to create an ad; storing the ad information;

processing the ad; and publishing the ad to the internet

media venue. The disputed elements are the “creation

and processing,” “selection,” and “publishing” elements.

FM asserted that Google’s AdSense for Content and

AdSense for Mobile products infringed when used in

FUNCTION MEDIA v. GOOGLE 5

conjunction with Google’s AdWords interface. 3 AdSense

for Content is a system that selects relevant ads to dis-

play to buyers viewing web pages containing certain

embedded Google code. Every time a buyer visits a site,

the embedded code prompts Google’s system to run an

auction. Which ads are displayed is determined by a

proprietary Google algorithm that considers the amount

of money the seller (advertiser) is willing to spend per

click when weighed against the relevancy, or “quality,” of

the ad. Generally, to get a less relevant ad displayed, an

advertiser must bid more money than another advertiser

supplying a more relevant ad. Once the ad is chosen it is

sent directly to the buyer’s browser—not to the website

publisher—and is displayed in such a way that it appears

to be part of that webpage.

AdWords Front End is a site where sellers input the

content of an ad, how much they are willing to pay, key-

words with which the ad should be associated, and re-

quests for the ad to be placed on specific sites. Sellers

cannot customize the “look” of the ads, so all ads look the

same except for the actual text displayed. Sellers can

request placement on specific sites but they have no way

to guarantee they will be placed on those sites—they still

have to win the auction (even after requesting placement

on specific sites), be relevant, and be allowed to advertise

on the site by the publisher. See Transcript of Jury Trial

at 138, Function Media, L.L.C. v. Google, Inc., No. 2:07-

CV-279 (E.D. Tex. Oct. 9, 2009), 2009 WL 3260566 (ex-

plaining that Coca-Cola can prevent Pepsi from advertis-

ing on its site).

After the claim construction hearing, the district court

found the ’045 patent to be indefinite and therefore inva-

lid because the specification did not disclose sufficient

3 AdWords itself, which puts the familiar blue text

ads next to Google search results, is not alleged to in-

fringe.

6 FUNCTION MEDIA v. GOOGLE

structure for its sole independent claim’s means plus

function term, “means for transmitting.” Function Media

L.L.C. v. Google, Inc., No. 07-CV-0279, slip op. at 10-11

(E.D. Tex. Oct. 9, 2009), ECF No. 218 (“Markman Order”).

The court construed the other disputed terms and denied

Google’s motion for summary judgment of noninfringe-

ment. The case was tried to a jury on claims 1, 20, 37, 52,

63, 90, 179, and 231 of the ’025 Patent and claim 1 of the

’059 Patent, and the jury found these claims to be both

invalid and not infringed. 4 Function Media L.L.C. v.

Google, Inc., No. 07-CV-0279 (E.D. Tex. Jan. 26, 2010),

ECF No. 413 (“Verdict Form”).

After trial, FM filed for a motion for judgment as a

matter of law (“JMOL”) on validity and also moved for a

new trial on the grounds that the verdict was against the

great weight of the evidence and otherwise irreconcilable.

The district court granted JMOL for claims 52, 63, 90,

and 231 of the ’025 Patent, finding that Google had not

4 The asserted claims from these patents have re-

cently been held invalid by the United States Patent and

Trademark Office (“PTO”) during reexamination. Google

requested reexamination of the ’025, ’059, and ’045 pa-

tents, including all asserted claims. The examiner reject-

ed all claims, and the Board of Patent Appeals and

Interferences affirmed. Google requests that we take

judicial notice of this fact. It is proper to take judicial

notice of a decision from another court or agency at any

stage of the proceeding, even if it was not available to the

lower court. See Old Reliable Wholesale, Inc. v. Cornell

Corp., 635 F.3d 539, 549 (Fed. Cir. 2011) (“Although the

results of the PTO reexamination proceedings were not

available to the district court, this court can take judicial

notice [of them].”). The ’045 patent was invalid for indefi-

niteness but FM may be allowed to file an amendment,

while the other rejections have been appealed to this

court.

FUNCTION MEDIA v. GOOGLE 7

submitted sufficient evidence for the jury to find that

those claims were invalid. Function Media L.L.C. v.

Google, Inc., No. 07-CV-0279, slip op. at 1 (E.D. Tex. Oct.

9, 2011), ECF No. 492 (“Final Judgment”). Thus, of the

asserted claims, only these four remained valid, but none

of them were found to be infringed.

FM appeals, and Google does not cross-appeal the dis-

trict court’s JMOL regarding those four claims. We have

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

STANDARD OF REVIEW

Claim construction and indefiniteness determinations

are reviewed without deference. Markman v. Westview

Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en

banc) aff’d, 517 U.S. 370 (1996); see also Typhoon Touch

Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1383 (Fed. Cir.

2011). If there is an error in claim construction,

we independently construe the claim to determine

its correct meaning, and then determine if the

facts presented at trial can support the appealed

judgment. We may affirm the jury’s findings on

infringement or validity issues if substantial evi-

dence appears in the record supporting the jury’s

verdict and if correction of the errors in a jury in-

struction on claim construction would not have

changed the result, given the evidence presented.

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328

(Fed. Cir. 2002) (internal quotation marks and citations

omitted).

“For issues not unique to patent law, we apply the law

of the regional circuit in which this appeal would other-

wise lie. Thus, we apply Fifth Circuit law when review-

ing . . . denials of motions for JMOL or new trial.” i4i Ltd.

P’ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir.

2010), aff’d, 131 S. Ct. 2238 (2011). The Fifth Circuit

“review[s] the denial of a motion for new trial brought on

8 FUNCTION MEDIA v. GOOGLE

the ground that the verdict is against the great weight of

the evidence for abuse of discretion, which . . . mean[s]

that the denial will be affirmed unless there is a clear

showing of an absolute absence of evidence to support the

jury’s verdict.” Rivera v. Union Pac. R.R. Co., 378 F.3d

502, 506 (5th Cir. 2004) (internal quotation marks and

citations omitted).

DISCUSSION

FM raises several issues it maintains require a new

trial. First, FM argues that the district court incorrectly

found the ’045 patent’s means plus function limitation to

be indefinite. With regard to the claims that went to the

jury, FM contends that the district court’s claim construc-

tions were incorrect, and that the district court improper-

ly allowed claim construction disputes to be decided by

the jury. FM also argues that the jury’s verdict was

against the great weight of the evidence, was based upon

an incorrect statement of the law, and was irreconcilable.

Google responds that FM’s arguments are really factual

questions disguised as claim construction arguments, that

the district court did construe all of the disputed terms,

and that FM has waived many of its arguments.

I. The ’045 Patent: Indefiniteness

We begin with FM’s argument that the district court

erred in granting summary judgment that the ’045 patent

was invalid for indefiniteness because it did not disclose a

structure for the means plus function term “means for

transmitting.” FM agrees that the recited function here is

“transmitting said presentations to a selected media

venue of the media venues,” Markman Order, slip op. at 9,

and that the “means for transmitting” is the PGP, a piece

of software. FM disagrees with the district court’s conclu-

sion that, as in Blackboard, Inc. v. Desire2Learn, Inc., 574

F.3d 1371 (Fed. Cir. 2009), the specification of the ’045

patent “does not describe the means or steps taken to

accomplish the end result,” and that “the PGP is merely a

FUNCTION MEDIA v. GOOGLE 9

black box that accomplishes the claimed function.” J.A.

10.

It is axiomatic that claims must “particularly point[]

out and distinctly claim[] the subject matter which the

applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2

(2006). 5 Section 112, paragraph 6 allows for a limited

exception, permitting “a claim [to] state the function of

the element or step, and the ‘means’ covers the ‘structure,

material, or acts’ set forth in the specification and equiva-

lents thereof.” Typhoon, 659 F.3d at 1383. The trade-off

for allowing such claiming is that “the specification must

contain sufficient descriptive text by which a person of

skill in the field of the invention would ‘know and under-

stand what structure corresponds to the means limita-

tion.’” Id. at 1383-84 (quoting Finisar Corp. v. DirecTV

Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).

It is well settled that “[s]imply disclosing software,

however, ‘without providing some detail about the means

to accomplish the function[,] is not enough.’” Noah Sys.,

Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)

(quoting Finisar, 523 F.3d at 1340-41). When dealing

with a “special purpose computer-implemented means-

plus-function limitation,” we require the specification to

disclose the algorithm for performing the function. The

“specification can express the algorithm in any under-

standable terms including as a mathematical formula, in

prose, or as a flow chart, or in any other manner that

provides sufficient structure.” Id. Importantly, we have

said that “[w]hile it is true that the patentee need not

5 Since this suit was filed in 2007, Congress has

passed the Leahy-Smith America Invents Act (“AIA”),

Pub. L. No. 112-29, 125 Stat. 284 (2011). The AIA refor-

matted the paragraphs of § 112 as subsections and made

other changes not relevant to this appeal. The citations to

§ 112 in this opinion refer to the statute as it existed prior

to the AIA.

10 FUNCTION MEDIA v. GOOGLE

disclose details of structures well known in the art, . . .

the specification must nonetheless disclose some struc-

ture.” Default Proof Credit Card Sys., Inc. v. Home Depot

U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) (empha-

sis added) (explaining that even “the testimony of one of

ordinary skill in the art cannot supplant the total absence

of structure from the specification.”); see also Noah Sys.,

675 F.3d at 1313 (distinguishing between software means

plus function claims in which no algorithm is disclosed,

which are indefinite, and claims in which an algorithm is

disclosed, whose sufficiency is judged based on what a

person of ordinary skill in the art would have understood

them to disclose); Blackboard, 574 F.3d at 1384 (finding a

means plus function claim to be indefinite because the

specification language simply described the function to be

performed without explaining how the function was to be

performed).

Here, there is no specific algorithm disclosed in prose,

as a mathematical formula, in flow charts, or otherwise.

FM cites to several places in the specification that it

contends describe the software. These citations all ex-

plain that the software automatically transmits, but they

contain no explanation of how the PGP software performs

the transmission function. For example, the specification

states only that the PGP “either transmits the presenta-

tion to the appropriate destination or holds it for a publi-

cation date to be submitted for a particular deadline or

predetermined promotional market.” ’045 Patent col. 3 ll.

31-32; see also id. col. 51 ll. 16-23 (same); id. col. 17 ll. 7-

17 (noting vaguely that the PGP is involved in processing

and transmitting data); id. col. 20 ll. 23-28 (“[T]he Com-

munication and Transport Program 1760 monitors, di-

rects, and controls the receiving and transmitting of

messages . . . .”); id. col. 57 ll. 36-39 (“presenta-

tions . . . are automatically transmitted”). At most, the

’045 Patent specification discloses that the structure

behind the function of transmitting is a computer pro-

FUNCTION MEDIA v. GOOGLE 11

gram that transmits. Beyond the program’s function,

however, no algorithm is disclosed. As in Blackboard, the

PGP is “simply an abstraction that describes the function”

to be performed. 574 F.3d at 1383.

FM’s citation to the flow charts as sufficient structure

is similarly unavailing because the charts also do not

describe how the transmitting function is performed.

Both charts cited by FM indicate transmission with a line,

or lines, connecting the Central Processor to the Media

Interface. See ’045 Patent figs. 1a, 4f. These lines do not

explain how the software performs the transmission

function. And although FM acknowledges that the struc-

ture is software, not hardware, FM also recites as struc-

ture the types of connections over which the transmission

could occur, such as phone lines and data networks.

Appellant’s Br. 27 (citing ’045 Patent col. 13 l. 55 to col. 14

l. 2). But the issue is not whether the ’045 patent disclos-

es a physical structure over which the PGP transmits, it

is whether the patent discloses the algorithm by which

the PGP performs the transmission function. The flow

charts make no such disclosure.

Having failed to provide any disclosure of the struc-

ture for the “transmitting” function, FM cannot rely on

the knowledge of one skilled in the art to fill in the gaps.

FM argues that “‘in view of the existing knowledge in the

field of the invention,’ it is unnecessary and extraneous to

provide any more detail,” and that the disclosure “has

more than ‘sufficient structure for a person of skill in the

field to provide an operative software program for the

specified function.’” Appellant’s Br. 28 (quoting Typhoon,

659 F.3d at 1385). In Typhoon, however, the “means for

cross-referencing” was explained in prose as “entail[ing]

the matching of entered responses with a library of possi-

ble responses, and, if a match is encountered, displaying

the fact of the match, otherwise alerting the user, or

displaying information stored in memory fields associated

with that library entry.” 659 F.3d at 1386 (quoting U.S.

12 FUNCTION MEDIA v. GOOGLE

Patent No. 5,379,057 col. 3 ll. 43-48). Here, in contrast,

there is no explanation of how to transmit. Furthermore,

it is well established that proving that a person of ordi-

nary skill could devise some method to perform the func-

tion is not the proper inquiry as to definiteness—that

inquiry goes to enablement. See Blackboard, 574 F.3d at

1385. Simply put,

[a] patentee cannot avoid providing specificity as

to structure simply because someone of ordinary

skill in the art would be able to devise a means to

perform the claimed function. To allow that form

of claiming under section 112, paragraph 6, would

allow the patentee to claim all possible means of

achieving a function.

Id. “Section 112, paragraph 6, is intended to prevent such

pure functional claiming.” Id. (citing Aristocrat Techs.

Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,

1333 (Fed. Cir. 2008)). We therefore affirm the district

court’s judgment that that claim 1 of the ’045 Patent is

invalid for indefiniteness.

II. Claim Construction

FM contends that the district court erred in constru-

ing the terms “ad creation/processing,” “selection,” and

“publishing,” and that these errors require a new trial.

We address each of these arguments in turn.

A. “Creating” and “Processing”

Claim 1 of the ’025 Patent recites an interface through

which a seller is “prompted to input information to create

an electronic advertisement.” ’025 Patent col. 65 ll. 4-7.

The parties stipulated that the “create” term means to

“create an electronic advertisement for publication in a

form customized to each of the selected internet media

venue’s presentation rules.” The system of claim 1 also

includes a controller that processes the advertisement in

compliance with the media venues’ presentation rules:

FUNCTION MEDIA v. GOOGLE 13

a computer controller of the computer system pro-

cessing and publishing the electronic advertise-

ment to one or more of the selected internet media

venues in compliance with the presentation rules

of the internet media venue, whereby the electron-

ic advertisement is displayed on each of the one or

more of the selected internet media venues in

compliance with the presentation rules of the in-

ternet media venue.

’025 Patent col. 65 ll. 10-17 (emphases added).

The parties disagreed on whether this claim requires

the system to take previously created ads and process

them in order to make them comply with the publishers’

rules, or whether the system processes raw information

entered by the seller in order to create compliant ads in

the first instance. FM proposed that processing meant

operating “upon the inputted information to create an

electronic advertisement customized for each selected

internet media venue in a form that complies with the

presentation rules set by that media venue.” Markman

Order, slip op. at 17 (emphasis added). Google proposed

that it meant operating “upon the electronic advertisement

to process it in compliance with the presentation rules of

the internet media venues.” Id. (emphasis added). The

district court ruled that the processing term means “exe-

cuting a systematic sequence of mathematical and/or

logical operations upon the customized electronic adver-

tisement to make it comply with the presentation rules of

the internet media venues.” Id. (emphasis added).

FM now argues that the district court’s interpreta-

tions of “creating” and “processing” are internally incon-

sistent. According to FM, the central computer has the

final role in the creation and formatting of ads so that

they comply with the publisher’s requirements. FM

argues that by stating that the system processes a “cus-

tomized . . . advertisement,” the court has said, in essence,

14 FUNCTION MEDIA v. GOOGLE

that “processing” means to take an ad that already com-

plies with the publisher’s rules and change it so that it

complies with the publisher’s rules. Google responds that

the district court’s construction properly reflects that the

“processing” is performed on the “electronic advertise-

ment” rather than the “inputted information” because, as

the court pointed out, the “inputted information” lan-

guage from the creation element does not reappear in the

computer controller limitation. Id. 44-45.

We begin our analysis with the language of the claim.

See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.

2005) (en banc) (“[T]he claims themselves provide sub-

stantial guidance as to the meaning of particular claim

terms.”). “The words of a claim ‘are generally given their

ordinary and customary meaning,’” which “is the meaning

that the term would have to a person of ordinary skill in

the art in question at the time of the invention.” Id. at

1312-13 (internal citations omitted). “The claims, of

course, do not stand alone. Rather, they are part of ‘a fully

integrated written instrument,’ consisting principally of a

specification that concludes with the claims. For that

reason, claims ‘must be read in view of the specification,

of which they are a part.’” Id. at 1315 (quoting Markman,

52 F.3d at 978, 979).

The claim clearly states that the “processing” is done

to the “electronic advertisement,” not the inputted infor-

mation. It follows that the creation of the ad must hap-

pen before the processing begins. If “processing” included

“creating,” the act of processing would have been per-

formed on the inputted information, which would then

lead to the creation of the rule-compliant ad. The claim

terms themselves rule out the possibility that “processing”

is done to the inputted information because a custom ad is

created before the processing step. Thus, we find that the

court’s construction of taking the “customized” ad and

then “processing” it to make it comply with the presenta-

tion rules was correct.

FUNCTION MEDIA v. GOOGLE 15

This construction is consistent with the parties’ stipu-

lated definition for the term “create.” The parties agreed

that the “creation” limitation prompts the seller to “input

information to create an electronic advertisement for

publication to the selected internet media venues.”

Markman Order, slip op. at 8 (emphasis added). The

claims do not explicitly state whether it is the seller or

central computer that actually creates the ad. On one

hand, entering information to create the ad could mean

the seller creates the ad herself by entering the infor-

mation. On the other, the seller could simply be required

to enter information which is then used by the central

computer to create the ad itself. We conclude that the

district court correctly declined to interpret the claim as

requiring either, and that creation by either the seller or

the central computer would satisfy the claim terms. What

matters for our purposes is that either way, the ad is

created before it is processed.

FM’s citations to the portions of the specification deal-

ing with the PGP do not persuade us otherwise. The

specification says that the PGP, which is part of the

central controller and presentation processor, “utilizes the

information submitted by the Sellers and held in [various

databases] . . . to create the requested presentations for

the various . . . media . . . using the Presentation Rules

Database 1650 for style and control guidelines.” ’025

Patent col. 19 ll. 46-55 (emphasis added). FM argues that

this shows that the PGP is the entity that creates the ads.

However, the specification goes on to refer to the Seller

Interface described in Figure 2c, stating:

It should be noted that in the preferred embodi-

ment of the present invention, the same rules and

guidelines contained in the Presentation Rules

Database 1650 are also held in the Presentation

Rules Database 4650 Fig. 2c, which is part of the

Seller Interface 4000 Fig. 2c. With the same rules

and guidelines as those in the Presentation Rules

16 FUNCTION MEDIA v. GOOGLE

Database 1650 applied and enforced during data

input at the Seller Interface . . . no modification or

editing should be necessary at the Central Control-

ler and Presentation Processor 1000 Module.

Id. col. 19 ll. 55-65 (emphases added). The specification

then states that although the same rules are applied at

both the seller interface and central controller, “both

processes should be utilized to ensure consistency.” Id.

col. 19 l. 65 to col. 20 l. 2. Thus, at least in the preferred

embodiment, the same rules are applied twice to ensure

compliant ads are created; no changes to the original ad

should be necessary when it reaches the point of pro-

cessing. These portions of the specification further sup-

port the district court’s interpretation, which requires the

ad to be created before it is “processed,” and illustrate

why it would be improper to read FM’s proposed limita-

tion into the claim. See Phillips, 415 F.3d at 1324 (cau-

tioning against “strictly limiting the scope of the claims to

the embodiments disclosed in the specification or divorc-

ing the claim language from the specification”). We

therefore affirm the district court’s construction of these

terms.

B. “Selection”

Claim 1 of the ’025 Patent also recites an interface

“through which a seller is prompted to input information

to select one or more of the internet media venues.” FM

proposed, and the district court accepted, that this means

“software that enables the seller user to interact with the

computer system through which the seller user is prompt-

ed to enter information to select one or more internet

media venues.” 6 Markman Order, slip op. at 12-14.

6 Similarly, the ’059 Patent states “the third party

professional is prompted to input information to select one

or more of the internet media venues.” ’059 Patent col. 88

l. 56-58. The court accepted FM’s construction, which

FUNCTION MEDIA v. GOOGLE 17

Google proposed that this term meant “software or hard-

ware at the seller location through which the seller is

prompted to enter information to the computer system to

enable the seller to select one or more internet media

venues,” a construction it urges us to adopt here. Under

Google’s proposed construction, there could be no in-

fringement, because the Google system—not individual

sellers—matches ads with media venues.

Although the district court accepted FM’s construction

of the “selecting” term, FM now argues that a new trial is

required because the court effectively applied a different

construction to the term at summary judgment. Prior to

the issuance of the district court’s Markman order, Google

moved for summary judgment of non-infringement, argu-

ing that in the asserted patents the sellers must be able to

choose the media venues and they cannot do so under the

Google system. FM responded that whether the sellers in

Google’s system have the final say on selection is irrele-

vant because the FM patents do not require the sellers to

have the final say. The district court denied summary

judgment, stating:

In Google’s placement targeting, advertisers re-

quest specific web pages on which their ads will

appear, but Google’s systems ultimately deter-

mine which advertisements appear on which

webpage. The court finds that there is a genuine

issue of material fact as to whether Google’s key-

words and placement targeting constitute infor-

mation to select. A reasonable jury may

determine that keywords identifying the adver-

tisement’s topic could be used as information to

select media venues on which to publish the ad-

tracks the construction for the ’025 Patent by stating “the

third-party professional is prompted to input information

to select one or more internet media venues.”

18 FUNCTION MEDIA v. GOOGLE

vertisement. A question of fact also exists regard-

ing Google’s placement targeting.

Order at 6, Function Media, No. 2:07-CV-278, 2009 WL

3260566, ECF No. 325. We understand the district

court’s statement to mean that there is a question of fact

as to whether the claims read on Google’s systems. But

FM contends that this passage “nullif[ied] the very claim

construction” the court had adopted, rendering the court’s

claim construction a “nullity” and requiring a new trial.

We see no error in the district court’s denial of sum-

mary judgment. The district court construed this term,

adopting FM’s proposed construction. To the extent that

FM raises a claim construction argument here, FM may

not object to the court’s decision to instruct the jury to

apply the claim construction that FM itself proposed. See

Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628

F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly

explained, ‘litigants waive their right to present new

claim construction disputes if they are raised for the first

time after trial.’” (quoting Broadcom Corp. v. Qualcomm

Inc., 543 F.3d 683, 694 (Fed. Cir. 2008))). To the extent

that FM attempts to couch as a claim construction issue

the denial of summary judgment of infringement, we note

that “a denial of summary judgment is not properly

reviewable on an appeal from the final judgment entered

after trial.” Glaros v. H.H. Roberson Co., 797 F.2d 1564,

1573 (Fed. Cir. 1986); accord Johnson v. Sawyer, 120 F.3d

1307, 1316 (5th Cir. 1997) (“[The Fifth Circuit has] held

repeatedly that orders denying summary judgment are

not reviewable on appeal where final judgment adverse to

the movant is rendered on the basis of a subsequent full

trial on the merits.”).

C. “Publishing”

Lastly, claim 1 requires “publishing the electronic ad-

vertisement to one or more of the selected internet media

venues.” ’025 Patent col. 65 ll. 10-17. The district court

FUNCTION MEDIA v. GOOGLE 19

construed this term to mean “placing or making available

the customized electronic advertisement within the

framework of and at each internet media venue so that it

is accessible by the end users, consumers, viewers, or

buyers.” Markman Order, slip op. at 15-16 (emphasis

added). FM argues that the district court erred by includ-

ing the “and at” language requested by Google, which it

believes improperly removes from the scope of the claim

any system (including Google’s systems here) which sends

ads directly to the buyer’s computers. Without those two

words, FM argues, the claim would encompass the pub-

lishing of ads directly to buyers so long as the displayed

ads look like they are “within the framework” of the

website.

We see no error in the district court’s construction.

Claim 1 requires “publishing the electronic advertisement

to one or more of the selected internet media venues . . .

whereby the electronic advertisement is displayed on each

of the one or more of the selected internet media venues.”

’025 Patent col. 65 ll. 11-16 (emphases added). Thus, the

terms of the claim require the ads to be sent to the inter-

net media venue, not simply made to look like they are on

the internet media venue on the buyer’s computer as in

Google’s system. And the claim language makes it clear

that internet media venues are different than the buyers’

web browsers. Claim 1 requires an interface for specify-

ing different presentation rules for each internet media

venue, not for each buyer or each web browser. Further-

more, the parties agreed that internet media venues are

“internet locations where presentations are placed or

made available” such that they may be “accessible by the

end users, consumers, viewers, or [b]uyers.” Markman

Order, slip op. at 8. The claim terms thus require ads to

be published to internet media venues, where they are

accessible to buyers using web browsers.

Although FM identifies various portions of the specifi-

cation that it claims show that the patent contemplates

20 FUNCTION MEDIA v. GOOGLE

delivering ads directly to buyers, we are not persuaded.

For example, FM relies on a sentence in the specification

stating that the PGP “creates presentations that can be

accessed by the buying public . . . through . . . the Buyers

Interface.” ’025 Patent col. 52 ll. 28-35. But the fact that

ads may be accessed in browsers does not remove the

requirement that they must be published to internet

media venues. FM also argues that figure 1b shows the

option of sending the ad directly to the buyer:

Figure 1b does not show ads going directly to the buy-

er. Instead, ads are made available through the “Inde-

pendent Presentation[s], Directories and Indexes or

Independent Standalone Presentations,” shown in box

3000. See ’025 Patent fig. 1b. Indeed, FM acknowledges

this—as it must—in its argument. Appellant’s Br. 39

(arguing that the path “from block 1000 to block 3000 and

corresponding line extending from block 5000 to block

3000” supported its theory that ads could be sent directly

to the web browser). But box 3000 does not include the

buyer’s web browser or computer. See id. col. 10 ll. 8-15

FUNCTION MEDIA v. GOOGLE 21

(limiting the definition of “Internet Browser” to “[c]lient-

side program[s] that reside[] on the [b]uyer [i]nterface

5000”). The specifications reinforce the district court’s

construction, not FM’s.

We affirm the district court’s construction of the “pub-

lishing” element because the addition of the word “at” to

the definition correctly indicates that the ads must be

sent to the internet media venues, not to buyers.

III. O2 Micro

In addition to arguing the district court’s claim con-

structions were incorrect, FM maintains that the court

improperly sent these constructions to the jury. FM

argues that this runs afoul of O2 Micro International v.

Beyond Innovation Technology Co., in which we said,

“[w]hen the parties present a fundamental dispute re-

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

resolve it.” 521 F.3d 1351, 1362 (Fed. Cir. 2008). FM

raises these arguments for each of the three terms we

have construed above, and once again we address each in

turn.

FM makes two arguments in support of its contention

that the construction of the terms “create” and “pro-

cessing” was submitted to the jury. First, FM contends

that the district court’s order denying Google’s request for

summary judgment of non-infringement shows that there

was an unresolved dispute over claim scope that the

district court left to be decided by the jury. This argu-

ment has little merit. Even assuming FM may complain

about the denial of Google’s motion for summary judg-

ment, we have already explained that the subsequent jury

verdict renders the denial of this motion non-final and

non-appealable under Fifth Circuit law. We hold that the

denial of a pre-trial motion for summary judgment of non-

infringement does not, by itself, show that the district

court delegated claim construction to the jury. This is

22 FUNCTION MEDIA v. GOOGLE

especially true where, as here, the jury was instructed to

apply the district court’s claim constructions.

FM’s second argument focuses on a point during trial

when Google objected to the testimony of FM’s expert.

The expert testified that the customization step is sepa-

rate from the processing step; in Google’s view, this

statement ran afoul of the court’s claim construction.

FM’s counsel responded that it was Google that was

misstating the court’s construction. The court overruled

Google’s objection and indicated that it would check the

construction and would make correcting statements if the

witness was misstating the court’s claim construction.

FM urges that the court should have stepped in to correct

any misunderstanding at that point because the proper

interpretation of “creation” was unresolved. As additional

evidence of the confusion, FM asserts that after FM

rested its case, Google’s expert pursued differing interpre-

tations of the “creation” element depending on whether he

was offering testimony on infringement or anticipation.

As a preliminary matter, we must address Google’s

argument that FM has waived this issue. Citing Lazare,

628 F.3d at 1376, Google argues that FM waived any

complaint about Google’s trial tactics by failing to object.

Google asserts that FM may not claim Google’s objection

as its own, and that if FM believed that the claim con-

struction order or any other order created ambiguity, it

was FM’s responsibility to object.

We disagree. In Lazare, the parties stipulated to the

meaning of a claim term but presented differing argu-

ments at trial about what it meant to satisfy that term.

628 F.3d at 1375. Nevertheless, this court found that the

issue had been waived because neither party had ad-

vanced its O2 Micro argument until after trial. See 628

F.3d at 1376 (finding waiver when “[u]nlike O2 Micro

where the appellant presented its claim construction

argument to the district court during a Markman hearing,

FUNCTION MEDIA v. GOOGLE 23

Lazare first asserted the claim construction argument it

presses on appeal in a post-trial motion”). Lazare is

distinguishable because in this case, the dispute was

brought to the district court’s attention during trial and

the court heard arguments from both sides. It would

hardly make sense to require FM to object to its own

testimony on a point that was in accord with the claim

construction that it had proposed and that the court had

adopted.

On the merits, Google responds with a single argu-

ment covering all three of the O2 Micro problems alleged

by FM: that this is not a case, like O2 Micro, in which the

parties disputed the scope of the claims, but rather a post-

trial attempt to re-characterize improper arguments as

issues of claim construction, like Verizon Services Corp. v.

Cox Fibernet Virginia, Inc., 602 F.3d 1325 (Fed. Cir.

2010).

In O2 Micro, the parties disagreed during claim con-

struction about whether the term “only if” included two

specific exceptions. 521 F.3d at 1361-62. The “district

court acknowledged that this dispute over the scope of the

asserted claims ‘boil[ed] down to whether . . . there can be

an exception,’” but refused to construe the term and

determine whether there were exceptions because “only

if” “ha[d] a well-understood definition, capable of applica-

tion by both the jury and this court in considering the

evidence submitted in support of an infringement or

invalidity case.” Id. at 1361. Because the district court

did not settle the dispute, the parties presented their

arguments to the jury. Id. at 1362. Examining these

arguments, this court concluded that “the parties disput-

ed not the meaning of the words themselves, but the scope

that should be encompassed by this claim language.” Id.

Because “determining the meaning and scope of the

patent claims” is a question that “the court, not the jury,

must resolve,” id. at 1360, we held that the submission of

these differing claim scope arguments to the jury was

24 FUNCTION MEDIA v. GOOGLE

error and remanded for the district court to construe the

claim in the first instance. Id. at 1363.

In Verizon, a patent owner relied on O2 Micro to sup-

port its argument that a new trial was required. The

relevant claims had been construed before trial, and

neither party argued that the constructions were incor-

rect. 602 F.3d at 1332. After trial, the owner sought an

instruction that the scope of the claim terms did not

depend on the subjective intent of the inventor in using

those terms. Id. As grounds for this request, the owner

pointed to “places where [defense] counsel and its experts

referred to statements of the inventors and then distin-

guished [the defendant’s] system from the asserted claims

based on those statements.” Id. This court distinguished

O2 Micro in two ways: (1) that the parties did not bring a

dispute about claim scope to the district court’s attention

prior to the close of evidence, and (2) that the parties did

not “not invite the jury to choose between alternative

meanings of technical terms or words of art or to decide

the meaning of a particular claim term.” Id. at 1334. We

concluded that “[w]hile [the owner] attempts to character-

ize the issue as one of claim construction, its argument is

more accurately about whether [the defendant’s] argu-

ments to the jury . . . were improper.” Id. In other words,

Verizon presented a question of improper attorney argu-

ments, not an O2 Micro problem. See id.

We conclude that, as in Verizon, this issue in this case

is whether there were improper arguments, not whether

questions of claim scope were submitted to the jury. As in

Verizon, the jury was explicitly told by the court to use

only the court’s claim constructions. Additionally, like the

appellant in Verizon, FM had the opportunity to object

during trial or request limiting instructions, but never did

so. See 602 F.3d at 1335. The only difference here is that

during its closing arguments, FM accused Google of

playing “word games.” J.A. 19172-74, 19213. Nearly

every patent case will involve some amount of “word

FUNCTION MEDIA v. GOOGLE 25

games,” because claims and claim constructions are, after

all, just words. But FM’s argument, if accepted, would

make almost every case in which the parties’ arguments

did not directly quote the court’s claim construction ripe

for remand and new trial. We are confident that such

situations should be rare. See Kinetic Concepts, Inc. v.

Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1019 n.4 (Fed.

Cir. 2009) (“While [O2 Micro] permits a remand for fur-

ther claim construction, it does not require one.”).

As with the “creation” and “processing” terms, FM al-

so argues that the court left the “selection” term for the

jury. As evidence, FM cites a situation similar to what

happened with the “creation” and “processing” terms in

which Google objected to the form of FM’s expert’s testi-

mony on claim construction grounds, the judge overruled

the objection, and the judge did not revisit its construction

later. FM suggests that Google’s objections “forced” FM to

argue claim differentiation to the jury by questioning

Google’s expert on claim 90 and its relationship to the

other claims.

FM also argues the claim construction problem went

to the jury because Google argued in closing that “the

Court has said that the ad must be displayed on each of

the selected media venues” which “does not happen on the

Google system.” Appellant’s Br. 50 (quoting J.A. 19198-

99).

These arguments too are belied by our decision in Ver-

izon. The court accepted FM’s proposed claim construc-

tion and FM neither identified a problem with the

construction nor requested further interpretation during

trial. See Verizon, 602 F.3d at 1334 (“Unlike O2 Micro,

where the scope of a specific claim term was in dispute

beginning at the Markman hearing and continuing

throughout the trial, [the appellant] never identified at

any time during the proceedings before the district court

any specific claim term that was misconstrued or that

26 FUNCTION MEDIA v. GOOGLE

needed further construction.”). FM’s complaint about

Google’s closing is irrelevant because that statement had

to do with whether ads are published, not which entity

selects where ads are published. Thus, FM is not entitled

to a new trial when it failed to request further construc-

tion of the “selection” term. See Cordis Corp. v. Boston

Scientific Corp., 561 F.3d 1319, 1338-39 (Fed. Cir. 2009)

(finding waiver when the party failed to ask for further

construction of a term within a previously construed

element).

With regard to the final term, “publishing,” FM ar-

gues Google incorrectly argued throughout the trial that

the claims require the ad be published to the media

venue’s physical servers. We disagree with FM that claim

construction was decided by the jury because the district

court’s construction was correct, and the district court

never refused to construe any disputed terms. Moreover,

as with the other terms, FM never objected to any sup-

posed improper argument or testimony.

In Verizon, we turned to the relevant circuit’s law to

determine whether improper arguments to which no

objection was made required a new trial. 602 F.3d at

1334-35. In this case, we look to the law of the Fifth

Circuit, which has held that the “Court will consider

errors to which no objections were made at trial but will

exercise this power only in exceptional cases where the

interest of substantial justice is at stake. To reverse, this

Court must find plain error.” Shipman v. Cent. Gulf

Lines, Inc., 709 F.2d 383, 388 (5th Cir. 1983) (internal

citations omitted). FM has not demonstrated that mis-

statements during trial by Google’s counsel or witnesses

were sufficiently erroneous to make this case exceptional.

Nor has FM argued that substantial interests of justice

are at stake. Thus, we cannot say that the district court

plainly erred in denying a new trial.

FUNCTION MEDIA v. GOOGLE 27

We have evaluated FM’s arguments and find that

none of them compel us to remand for a new trial. The

district court correctly construed the terms and instructed

the jury to apply its constructions. FM has not persuaded

us that any issues of claim scope were submitted to the

jury, and we therefore conclude that no O2 Micro prob-

lems are present in this case.

IV. Irreconcilability

FM urges that the verdicts of non-infringement and

invalidity are irreconcilable. For example, it argues the

prior art references published ads directly to buyers, as

opposed to publishing them to the internet media venues

as required by the claims, and Google did not attempt to

reconcile this problem below despite arguing it did not

infringe because its technology also delivers ads straight

to the buyers. In other words, FM argues the jury had to

rely on differing claim constructions for infringement and

invalidity to reach its invalidity and noninfringement

decisions because Google’s technology works the same

way as the prior art. Google argues FM has waived any

argument on the basis of irreconcilability because FM did

not object to the jury’s verdict before the jury was dis-

missed.

We apply the law of the regional circuit to determine

whether an argument that the verdict is irreconcilable

has been waived. See Mycogen Plant Sci. v. Monsanto

Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (explaining that

this court applies the law of the regional circuit to the

issue of inconsistent verdicts because the issue is not

unique to patent law). In the Fifth Circuit, a party need

not object to the jury’s inconsistent verdict before the jury

is dismissed in order to avoid waiver when the verdict is

special and falls under Federal Rule of Civil Procedure

Rule 49(a). Mercer v. Long Mfg. N.C., Inc., 671 F.2d 946,

947-48 (5th Cir. 1982) (“We know of no case in this Circuit

holding that inconsistencies in special verdicts pursuant

28 FUNCTION MEDIA v. GOOGLE

to Rule 49(a) are waived if not raised prior to release of

the jury.”); see also id. at 948 n.1 (explaining waiver does

not apply to verdicts under Rule 49(a), but it does apply to

verdicts under Rule 49(b)). If the verdict falls under Rule

49(b), which covers general verdicts and general verdicts

“with written questions on one or more issues of fact,”

waiver applies if no objection is raised before the jury is

dismissed. Stancill v. McKenzie Tank Lines, Inc., 497

F.2d 529, 533-35 (5th Cir. 1974) (“By failing to object to

the form of the verdict and answers at the time they were

announced by the jury, both parties waived any objection

to inconsistencies under Rule 49(b).”).

Because FM failed to object to the verdict’s irreconcil-

ability at the time the jury returned the verdict, FM can

only avoid waiver if the verdict form is considered special.

FM argues that the verdict was special because the ver-

dict form asked the jury specific questions about validity

and infringement. FM emphasizes that we have found

similar forms to be “special” in Comaper Corp. v. Antec,

Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010) and L&W, Inc.

v. Shertech, Inc., 471 F.3d 1311, 1319 (Fed. Cir. 2006).

Google urges that this verdict was general because it

consisted of simple yes or no questions on infringement,

anticipation, and obviousness. It says we have said such

forms are general in i4i, 589 F.3d at 1265 and O2 Micro,

521 F.3d at 1358. It distinguishes the form in Comaper,

which was labeled as a special verdict and included

“special questions” such as whether the prior art was in

public use before the critical date.

None of the cases cited by either party are helpful.

Google’s reliance on i4i and O2 Micro is unhelpful because

neither of those cases squarely addressed what is or is not

a special verdict. See i4i, 589 F.3d at 1265; O2 Micro, 521

F.3d at 1358. Similarly, the cases cited by FM provide

little guidance. In L&W, we held that the appellant had

waived its claim of inconsistency in the verdict by not

asserting it prior to the discharge of the jury. Because

FUNCTION MEDIA v. GOOGLE 29

Sixth Circuit law supported waiver regardless of whether

the verdict was general or special, we did not question the

parties’ assertions that the verdict was special. See 471

F.3d at 1314, 1318-19. Similarly, in Comaper, we accept-

ed without analysis that the “Special Verdict Form” was a

special verdict. See 596 F.3d at 1350. This court’s analy-

sis in those cases therefore does not compel the conclusion

that the simple verdict form used in this case must be

regarded as a special verdict.

“The theoretical distinction between general and spe-

cial verdicts is that general verdicts require the jury to

apply the law to facts, and therefore require legal instruc-

tion, whereas special verdicts compel the jury to focus

exclusively on its fact finding role.” Charles Alan Wright

& Arthur R. Miller, 9B Federal Practice and Procedure

§ 2503 n.1 (3d ed. 2008). Under the special verdict, the

jury finds the facts while the court applies the law, and it

is typically unnecessary to even instruct the jury on the

law. Id. § 2503. “The special verdict is thought to bring

the jury determination into the open, so that all can see

what has been done.” Id. In contrast, “[i]n a general

verdict, the jury announces only the prevailing party on a

particular claim, and may announce damages.” Id. § 2503

n.1. “[T]he general verdict accompanied by special inter-

rogatories gives the jury an opportunity to express itself

broadly through the general verdict—the historic medi-

um—while at the same time turning the jury’s attention

to important issues that should be resolved by responding

to particular questions before a general verdict is

reached.” Id. § 2503; see Fed. R. Civ. P. 49(b).

In this case, the portion of the verdict in which the ju-

ry applied facts to law on the question of obviousness was

clearly a general verdict because it is a legal question

resting on underlying factual questions. See Structural

Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 720

(Fed. Cir. 1984) (explaining that “a trial court may, with

proper instructions, . . . ask for a general answer on one or

30 FUNCTION MEDIA v. GOOGLE

more specific legal issues, such as obviousness, a practice

not specifically provided for in the Federal Rules”); Kinetic

Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,

1359 (Fed. Cir. 2012) (“Because the ultimate conclusion of

obviousness is a legal question, there is strength to the

argument that by including that question on its verdict

form the court chose to employ a general verdict with

answers to written questions governed by Rule 49(b).”).

The closer question is on the verdicts regarding anticipa-

tion and invalidity, in which the jury answered yes or no

questions on each asserted claim. For example, the jury

was asked, “Do you find that Google has proven, by clear

and convincing evidence, that any of the following claims

of the ’025 patent are invalid for the following reasons?

[Yes or No?] A. Because it was anticipated by the prior

art?” J. A. 17371. The form then listed each claim with a

line for the answer. Because anticipation and infringe-

ment are questions of fact, the question is whether the

jury returned special findings of fact on each claim.

We have previously set forth examples of what should

and should not be considered a special verdict. In Rail-

Road Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1516

(Fed. Cir. 1984), the jury was asked ten yes or no ques-

tions, two of which are very similar to those asked in this

case. The jury was asked, “Do you find that the plaintiff

has proved by clear and convincing evidence that [the

patent] is invalid on the ground of obviousness?” Id. app.

A question 1. It was also asked about anticipation: “Do

you find that plaintiff has proved by clear and convincing

evidence that [the patent] is invalid on the ground that

the invention claimed was known, in public use or on sale

more than one year prior to the effective date of the

patent application?” Id. question 3A. We explained that

although the verdicts did not state only the prevailing

party, the ten verdicts should properly be considered a

general verdict:

FUNCTION MEDIA v. GOOGLE 31

The jury’s responses were not special verdicts, be-

cause they were not simply “written finding[s] up-

on each issue of fact”. Rule 49(a), Fed. R. Civ. P.

Nor was there a single general verdict, per se, ac-

companied by “written answers” to “one or more

issues of fact the decision of which is necessary to

a verdict”. Rule 49(b) Fed. R. Civ. P. Nonetheless,

as above indicated, the parties have correctly

viewed the jury’s ten responses as the equal of a

general verdict . . . .

Id. at 1516. We hold similarly here.

It would be impossible for lay juries to determine

whether a claim is anticipated or infringed without some

legal instruction, as evidenced by our ample case law

addressing the correctness of jury instructions. See, e.g.,

Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629,

641-42 (Fed. Cir. 2011) (rejecting an argument that a jury

instruction on anticipation contained legal errors). Alt-

hough the jury was technically finding only “facts,” we

hold that the verdict is a general verdict because like the

questions in Railroad Dynamics, the questions on antici-

pation and validity require legal instruction, the applica-

tion of legal principles, and are more than “simply

‘written finding[s] upon each issue of fact.’” See id.;

Wright & Miller, § 2503 n.1 (“[G]eneral verdicts require

the jury to apply the law to facts, and therefore require

legal instruction.”). Indeed, the questions are so general

that they do not bring the jury process into the open so

that “all can see what has been done” as expected in a

special verdict, which is what makes reviewing a general

verdict for consistency so difficult. FM, therefore, waived

its argument in favor of irreconcilability by failing to

object to the verdict before the jury was dismissed.

Stancill, 497 F.2d at 535.

While it may seem harsh, requiring objections to be

made before the jury is dismissed is the only way to

32 FUNCTION MEDIA v. GOOGLE

efficiently cure potential inconsistencies when there is not

a detailed special verdict to review:

[To] allow a new trial after the objecting party

failed to seek a proper remedy at the only possible

time would undermine the incentives for efficient

trial procedure and would allow the possible mis-

use of [the Federal Rules of Civil Procedure] . . . to

implant a ground for appeal should the jury’s

opinion prove distasteful.

Howard v. Antilla, 294 F.3d 244, 250 (1st Cir. 2002)

(quoting Skillin v. Kimball, 643 F.2d 19, 19-20 (1st Cir.

1981)). It would be improper to allow FM to now argue

inconsistencies require an entirely new trial when it

failed to object at the only time when an inconsistency

could have been cured.

V. Motion for New Trial

FM argues that it is entitled to a new trial because

the jury’s non-infringement verdict was against the great

weight of the evidence under either its construction or the

court’s. The district court’s decision to deny FM’s motion

is reviewed for abuse of discretion and “will be affirmed

unless there is a clear showing of an absolute absence of

evidence to support the jury’s verdict.” Rivera, 378 F.3d

at 506 (internal quotation marks omitted).

The record contains evidence to support the nonin-

fringement verdict. “To prove infringement, the patentee

must show that the accused device contains each limita-

tion of the asserted claim, or an equivalent of each limita-

tion.” Bowers v. Baystate Techs., Inc., 320 F.3d 1317,

1334 (Fed. Cir. 2003) (citations omitted). We have af-

firmed the court’s construction of the term “publishing,”

which excludes publishing ads directly to the buyer. But

it is undisputed that Google’s systems sends ads directly

FUNCTION MEDIA v. GOOGLE 33

to the buyer, and the jury could properly find that Google

does not infringe on that basis. 7

FM also argues that the jury verdict is the result of a

misapprehension of law, specifically that claims can have

one meaning for infringement and another for anticipa-

tion. It argues that Google’s expert’s “contradictory”

testimony caused the jury to rely on differing construc-

tions for anticipation and infringement. As we have

already explained, FM has waived this argument. In any

event, this argument does not amount to “a clear showing

of an absolute absence of evidence to support the jury’s

verdict” of infringement, see Rivera, 378 F.3d at 506

(internal quotation marks omitted), as it does not explain

which half of the allegedly irreconcilable verdict is incor-

rect. Nor has FM shown that the jury relied on an incor-

rect construction. Sufficient evidence supports the verdict

of non-infringement, and the district court did not abuse

its discretion when it denied FM’s motion for a new trial.

7 This is true for Ad Sense for Content and Ad Sense

for Mobile, except for certain types of older phones, which

do publish ads directly to internet media venues. Google

argues that FM never presented actual evidence of in-

fringement for the older phones so there can be no in-

fringement. FM does not contradict this claim in its

Reply Brief. Infringement requires specific instances of

direct infringement or a finding that every accused device

necessarily infringes. Ball Aerosol & Specialty Container,

Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed. Cir.

2009). FM has not carried that burden with respect to the

older phones so we affirm the district court’s denial of new

trial with respect to them as well.

34 FUNCTION MEDIA v. GOOGLE

CONCLUSION

As FM has not shown that reversible error occurred,

the decision of the district court is

AFFIRMED