Wsou Investments LLC v. Google LLC

Case: 22-1066 Document: 55 Page: 1 Filed: 09/25/2023

NOTE: This disposition is nonprecedential.

United States Court of Appeals

for the Federal Circuit

______________________

WSOU INVESTMENTS LLC, DBA BRAZOS

LICENSING AND DEVELOPMENT,

Plaintiff-Appellant

v.

GOOGLE LLC,

Defendant-Appellee

______________________

2022-1066, 2022-1067

______________________

Appeals from the United States District Court for the

Western District of Texas in No. 6:20-cv-00581-ADA, 6:20-

cv-00582-ADA, Judge Alan D. Albright.

______________________

Decided: September 25, 2023

______________________

BRIAN MATTHEW KOIDE, Koide IP Law PLLC, Arling-

ton, VA, argued for plaintiff-appellant. Also represented

by NATHAN K. CUMMINGS; SEAN D. BURDICK, Burdick Pa-

tents, PA, Boise, ID.

JENNIFER L. SWIZE, Jones Day, Washington, DC, ar-

gued for defendant-appellee. Also represented by JOHN R.

BOULE, III, EDWIN GARCIA, TRACY A. STITT; THARAN

Case: 22-1066 Document: 55 Page: 2 Filed: 09/25/2023

2 WSOU INVESTMENTS LLC v. GOOGLE LLC

GREGORY LANIER, Palo Alto, CA; ISRAEL SASHA

MAYERGOYZ, Chicago, IL.

______________________

Before LOURIE, LINN, and STOLL, Circuit Judges.

LOURIE, Circuit Judge.

WSOU Investments LLC, dba Brazos Licensing and

Development (“WSOU”) appeals from two final judgments

of invalidity of the United States District Court for the

Western District of Texas. In WSOU Investments, LLC

dba, Brazos Licensing and Development v. Google LLC, No.

6:20-CV-00581 (W.D. Tex. 2021), the district court granted

a joint stipulation of the parties, holding claims 1 and 16 of

U.S. Patent 7,304,563 (“the ’563 patent”), among others, in-

valid as indefinite under the court’s claim construction.

J.A. 1, 612–15. Similarly, in WSOU Investments, LLC dba,

Brazos Licensing and Development v. Google LLC, No.

6:20-CV-00582 (W.D. Tex. 2021), the district court granted

a joint stipulation of the parties, holding claims 1, 9, 16,

and 24 of U.S. Patent 8,238,681 (“the ’681 patent”) invalid

as indefinite under the court’s claim construction. J.A. 2,

1257–60. For the reasons articulated below, we affirm.

BACKGROUND

Although WSOU owns both the ’563 and ’681 patents,

the two patents disclose unrelated inventions. We there-

fore discuss each of the patents in turn, followed by a sum-

mary of the district court proceedings.

I. The ’563 Patent

The ’563 patent is directed to a mobile communication

terminal with an alarm clock facility. ’563 patent, Ab-

stract. The claims at issue use two types of alarms. The

first type is generated by the mobile communication device

initiating a connection to a second network-connected de-

vice. See id. col. 5 ll. 48–54, col. 7 ll. 1–5. For example, the

mobile communication device may call another phone or

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WSOU INVESTMENTS LLC v. GOOGLE LLC 3

turn on a stereo system to generate the first type of alarm.

Id. col. 5 ll. 22–26. The second type of alarm is signaled

locally by the mobile communication device. See id. col. 5

ll. 55–58, col. 7 ll. 6–10.

The term at issue in claim 1 is “alerting unit configured

to issue an alert,” which appears in the claim as follows:

1. A mobile communication terminal, comprising:

a clock configured to maintain an indication of the

current time;

a memory configured to store a definition of an

alert time; and

an alerting unit configured to issue an alert when

the current time matches the alert time, the alert-

ing unit being configured to issue the alert by initi-

ating a connection to another communication

terminal over a network so as to cause that other

terminal to locally signal the incidence of the con-

nection incoming thereto,

wherein the alerting unit comprises a signaling

unit configured to locally signal to a user, and the

alerting unit is configured to issue the alert by

causing the signaling unit to locally signal to the

user,

wherein the memory is configured to store an indi-

cation of whether the alerting unit is configured to

issue the alert using the signaling unit, and the

alerting unit is configured to issue the alert using

the signaling unit in accordance with that indica-

tion, and

wherein the alerting unit is configured to issue the

alert by initiating the connection to the other com-

munication terminal at a predetermined time off-

set from signaling the user using the signaling

unit.

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4 WSOU INVESTMENTS LLC v. GOOGLE LLC

Id. col. 5 ll. 43–67 (emphases added).

Similarly, the term at issue in claim 16 is “issuing

means for issuing an alert,” which appears in the claim as

follows:

16. An apparatus for alerting a user by means of a

mobile communication terminal, the apparatus

comprising:

maintaining means for maintaining an indication

of the current time;

storing means for storing in a memory a definition

of an alert time; and

issuing means for issuing an alert when the current

time matches the alert time by initiating a connec-

tion to another communication terminal over a net-

work so as to cause that other terminal to locally

signal the incidence of the connection incoming

thereto

wherein the means for issuing an alert comprises

signaling means for locally signaling to the user,

wherein the means for issuing an alert issues the

alert by causing the signaling means to locally sig-

nal to the user,

wherein the storing means stores an indication of

whether the means for issuing an alert is to issue

the alert using the signaling means, and

wherein the means for issuing an alert issues an

alert by initiating a connection to the other commu-

nication terminal at a predetermined time offset

from signaling the user by the signaling means.

Id. col. 6 l. 62–col. 8 l. 7 (emphases added).

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WSOU INVESTMENTS LLC v. GOOGLE LLC 5

II. The ’681 Patent

The ’681 patent is directed to an autofocus feature in a

digital camera. ’681 patent, col. 1 ll. 8–12. The autofocus

feature separates images into windows of interest

(“WOIs”), id. col. 6 ll. 22–42, which the patent more specif-

ically refers to as “sub-WOIs,” id. col. 6 ll. 42–45. The

claimed invention further divides each sub-WOI into “a

plurality of parts,” which are each assigned a “focus value

mask.” Id. col. 12 ll. 53–58, col. 13 ll. 55–60, col. 14 l. 64–

col. 15 l. 3, col. 16 ll. 17–22. The invention then requires

the execution of an autofocus algorithm, using the assigned

focus value masks as inputs, wherein:

the plurality of parts of the at least one sub-window

of interest comprise a first part closest to a center

of the at least one sub-window of interest, a third

part farthest from the center of the at least one sub-

window of interest, and a second part in between

the first part and the second part, where the first

part has a weighted focus value of Value1, the sec-

ond part has a weighted focus value of Value2, and

the third part has a weighted focus value of Value3,

where Value1, Value2, and Value3 each represent a

rational value assigned to a corresponding focus

value.

Id. col. 12 l. 60–col. 13 l. 3, col. 13 l. 62–col. 14 l. 5, col. 15

ll. 6–16, col. 16 ll. 24–34 (emphasis added).

III. District Court Proceedings

WSOU filed suit against Google LLC (“Google”) for in-

fringement of fifteen patents owned by WSOU, including

the ’563 and ’681 patents. J.A. 45–71, 684–707. The dis-

trict court issued a single claim construction order that cov-

ered all fifteen cases, J.A. 3–10, and based on the court’s

constructions, the parties stipulated to final judgments of

invalidity for indefiniteness for claims 1 and 16 of the ’563

patent and claims 1, 9, 16, and 24 of the ’681 patent, among

Case: 22-1066 Document: 55 Page: 6 Filed: 09/25/2023

6 WSOU INVESTMENTS LLC v. GOOGLE LLC

others, J.A. 1–2, 612–15, 1257–60. After WSOU appealed,

the district court provided a memorandum in support of its

claim constructions. J.A. 638–83.

Regarding the ’563 patent, the parties agreed that the

“issuing means for issuing an alert” limitation of claim 16

was subject to 35 U.S.C. § 112, ¶ 6. 1 J.A. 653. The court

determined that the claimed functions of the “issuing

means” were (1) “initiating a connection to another commu-

nication terminal over a network” and (2) “causing the sig-

naling means to locally signal the user.” J.A. 656 (quoting

’563 patent, col. 7 ll. 2–3, 8–10). As for the first function,

the court held that the specification did not provide an ad-

equate structure corresponding to the claimed function,

but rather (1) only provided additional functional lan-

guage, (2) merely disclosed a general-purpose computer,

and/or (3) improperly relied on a person of ordinary skill in

the art’s knowledge as a gap-filler for actual disclosure in

the specification. J.A. 656–57. As for the second function,

the court acknowledged (1) that “the means for issuing an

alert” comprises signaling means for locally signaling to

the user and (2) that WSOU “point[ed] out structure for lo-

cally signaling the user.” J.A. 657. However, the court

found that disclosure of structure was inadequate for “is-

suing means” because it failed to include structure for “how

the issuing means causes the signaling means to locally sig-

nal the user.” Id. (emphasis in original). The court ex-

plained that the issuing means may indeed include the

structure for the signaling means; however, additional

1 The America Invents Act of 2011 changed the num-

bering of the relevant subsection from “§ 112, ¶ 6” to

“§ 112(f).” Because the substance of the subsection did not

change, this decision will refer to the relevant subsection

as “§ 112, ¶ 6,” in keeping with the numeration at the time

of the patent filing.

Case: 22-1066 Document: 55 Page: 7 Filed: 09/25/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 7

structure is required to show the steps for causing the sig-

naling means to do so. Id.

Additionally, the district court determined that the

“alerting unit” limitation of claim 1 was a means-plus-func-

tion term subject to 35 U.S.C. § 112, ¶ 6, despite WSOU’s

arguments to the contrary. J.A. 678–79. After finding that

“alerting unit” in claim 1 performed the same two functions

as “means for issuing an alert” in claim 16, the court deter-

mined that “the term ‘unit’ is defined only by the function

it performs” and that the ’563 patent uses the terms “unit,”

“processor,” and “means” interchangeably. J.A. 679. The

court then held that the ’563 patent failed to disclose suffi-

cient structure for “alerting unit” for the same reasons that

it failed to disclose sufficient structure for “means for issu-

ing an alert.” J.A. 679–80.

Regarding the ’681 patent, the district court deter-

mined that the phrase “second part in between the first

part and the second part” was indefinite because it was

nonsensical. J.A. 650–52. The court noted that the self-

contradictory language of that term “does not allow a

reader to differentiate between the first instance of ‘a sec-

ond part’ from the second,” even in the context of the spec-

ification and prosecution history. J.A. 651.

WSOU timely appealed. We have jurisdiction under

28 U.S.C. § 1295(a)(1).

DISCUSSION

“Regarding questions of claim construction, including

whether claim language invokes 35 U.S.C. § 112, [¶] 6, the

district court’s determinations based on evidence intrinsic

to the patent as well as its ultimate interpretations of the

patent claims are legal questions that we review de novo.”

Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346

(Fed. Cir. 2015) (en banc) (citing Teva Pharms. USA, Inc.

v. Sandoz, Inc., 574 U.S. 318, 331 (2015)). “Indefiniteness

is a question of law that is also reviewed de novo.” Robert

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8 WSOU INVESTMENTS LLC v. GOOGLE LLC

Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1098 (Fed. Cir.

2014) (citing Atmel Corp. v. Info. Storage Devices, Inc., 198

F.3d 1374, 1378 (Fed. Cir. 1999)).

We will address the WSOU’s arguments regarding the

’563 patent first, before considering its arguments concern-

ing the ’681 patent.

I. The ’563 Patent

WSOU raises two issues concerning the district court’s

determinations regarding the ’563 patent. First, WSOU

argues that the court erred in determining that the “alert-

ing unit configured to issue an alert” limitation of claim 1

was subject to means-plus-function treatment under

35 U.S.C. § 112, ¶ 6. Appellant’s Br. at 31–40. Second,

WSOU asserts that the ’563 patent discloses adequate

structure corresponding to the claimed functions per-

formed by the “alerting unit” of claim 1 and the “means for

issuing an alert” of claim 16. Id. at 40–44. Those issues

will be discussed in turn.

A. The Applicability of 35 U.S.C. § 112, ¶ 6 to “Alerting

Unit”

“The first step [of a means-plus-function analysis] is to

determine whether a claim limitation is drafted in means-

plus-function format, which requires us to construe the

limitation to determine whether it connotes sufficiently

definite structure to a person of ordinary skill in the art.”

Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir.

2022) (citing Williamson, 792 F.3d at 1349 (“The standard

is whether the words of the claim are understood by per-

sons of ordinary skill in the art to have a sufficiently defi-

nite meaning as the name for structure.”)). As we have

previously explained, “the use of the word ‘means’ in a

claim element creates a rebuttable presumption that § 112,

[¶] 6 applies.” Williamson, 792 F.3d at 1348 (internal cita-

tion omitted). The converse also holds true, as “the failure

to use the word ‘means’ also creates a rebuttable

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WSOU INVESTMENTS LLC v. GOOGLE LLC 9

presumption . . . that § 112, [¶] 6 does not apply.” Id. (in-

ternal citation omitted).

As claim 1 here does not include the term “means,” the

presumption against mean-plus-function treatment ap-

plies. To rebut that presumption, Google argues (1) that

“‘unit’ serves as a placeholder for almost anything that can

perform a particular function,” (2) that the surrounding

language in the claim is purely functional and thus pro-

vides no structure, and (3) that the specification does not

ascribe any structure to “alerting unit,” only using that

term twice alongside the same purely functional language

that appears in the claim. Appellee’s Br. at 33–36.

We agree with Google and the district court that the

term “unit,” in a vacuum, is defined only by the function it

performs, much like terms such as “element” or “means.”

See J.A. 679; see also M.P.E.P. § 2181 (including “unit for”

on its list of “non-structural generic placeholders that may

invoke 35 U.S.C. § 112[, ¶ 6]”). A “unit” could be almost

anything. Despite WSOU’s arguments on the contrary, we

also agree that, in the context of claim 1, the terms sur-

rounding and modifying “unit” such as “alerting,” “config-

ured to issue an alert,” “initiating a connection,” and

“locally signal” are purely functional and do not connote

any structure, much less a “sufficiently definite” structure,

as required by Williamson and Dyfan. None of that lan-

guage “endows the claimed [term] with a physical or struc-

tural component.” Welker Bearing Co. v. PHD, Inc., 550

F.3d 1090, 1096 (Fed. Cir. 2008). Likewise, the instances

of “alerting unit” in the specification share that same

flaw—the additional surrounding language only indicates

additional function, rather than structure.

Furthermore, we agree with the district court’s reason-

ing that “nothing in the patent differentiates [‘alerting unit

configured to issue an alert’ and ‘means for issuing an

alert’]” and that the interchangeable use of “unit” and

“means” leads to the conclusion that neither term discloses

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10 WSOU INVESTMENTS LLC v. GOOGLE LLC

sufficient structure. J.A. 679. We thus conclude that

Google has successfully rebutted the presumption against

means-plus-function treatment, as it has “demonstrate[d]

that the claim term fails to recite sufficiently definite struc-

ture.” Williamson, 792 F.3d at 1349 (internal citation and

quotations omitted).

To the extent that WSOU argues that evidence regard-

ing a skilled artisan is necessary in that analysis, see Ap-

pellant’s Br. at 33–34, it improperly attempts to substitute

a skilled artisan’s knowledge for the actual disclosure of

sufficient structure in the claims or specification. “[T]he

fact that one of skill in the art could program a computer

to perform the recited functions cannot create structure

where none otherwise is disclosed.” Williamson, 792 F.3d

at 1351 (emphasis added) (citing Function Media, L.L.C. v.

Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013)); see also

Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291,

1299 (Fed. Cir. 2018) (“[N]one of our cases mandate that a

party seeking to overcome the presumption against appli-

cation of § 112, [¶] 6 can only do so by presenting extrinsic

evidence that one of ordinary skill would fail to understand

that a term connotes a definite structure.” (emphasis in

original)).

Moreover, both parties seem to argue that precedent

dictates the outcome of this case, see Appellant’s Br. at 34–

40 (arguing strict adherence to Dyfan); Appellee’s Br. at 38

(arguing that Fiber, LLC v. Ciena Corp., 792 F. App’x 789

(Fed. Cir. 2019) should apply), but these arguments are of

little value given how contextually dependent the first step

of the means-plus-function analysis is, as the outcome

turns on the specific patent at issue. Neither Dyfan nor

Fiber discusses the term “unit,” much less in the context of

the ’563 patent.

Accordingly, we affirm the district court’s holding that

“alerting unit configured to issue an alert” in claim 1 of the

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WSOU INVESTMENTS LLC v. GOOGLE LLC 11

’563 patent is a means-plus-function limitation subject to

35 U.S.C. § 112, ¶ 6.

B. Disclosure of Corresponding Structure for the Means-

Plus-Function Terms in Claims 1 and 16

Pursuant to the foregoing analysis, “alerting unit con-

figured to issue an alert” in claim 1 is a means-plus-func-

tion limitation. Furthermore, neither party disputes that

“issuing means for issuing an alert” in claim 16 is also

claimed in means-plus-function format. Having thus de-

termined that both of those terms are subject to 35 U.S.C.

§ 112, ¶ 6, we proceed to the second step of the of the

means-plus-function analysis, in which we “determine

whether the specification discloses sufficient structure that

corresponds to the claimed function.” Williamson, 792 F.3d

at 1351.

In making that determination, “[t]he court must first

identify the claimed function.” Id. (internal citation omit-

ted). “Then, the court must determine what structure, if

any, disclosed in the specification corresponds to the

claimed function.” Id. “Where there are multiple claimed

functions, . . . the patentee must disclose adequate corre-

sponding structure to perform all of the claimed functions.”

Id. at 1351–52 (citing Noah Sys., Inc. v. Intuit Inc., 675

F.3d 1302, 1318–19 (Fed. Cir. 2012)). We have elaborated

that “[w]hile the specification must contain structure

linked to claimed means, this is not a high bar.” Biome-

dino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed.

Cir. 2007). However, “[i]t is not enough simply to list a cer-

tain structure in the specification; that structure must also

be clearly linked to a claimed function in order to be a cor-

responding structure for that function.” Med. Instrumen-

tation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,

1218 (Fed. Cir. 2003).

In this case, the district court identified the two undis-

puted claimed functions performed by both the “alerting

unit” and the “issuing means for issuing an alert” as “(1)

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12 WSOU INVESTMENTS LLC v. GOOGLE LLC

initiating a connection to another communication terminal

over a network; and (2) causing the signaling means to lo-

cally signal to the user.” J.A. 656, 679–80 (internal cita-

tions and quotations omitted). We begin by discussing the

first identified claimed function below.

The ’563 patent’s specification discloses that a

“[m]obile phone 1 comprises a central processing unit 10,

which controls the operation of the phone in accordance

with software stored in a read only memory 11.” ’563 pa-

tent, col. 3 ll. 21–23. Nevertheless, we agree with Google

that that passage is merely a general description of the mo-

bile phone depicted in Figure 1. Nothing in that passage

or the surrounding language clearly links the disclosed

structure, if it is that, to the claimed function of “initiating

a connection to another communication terminal over a

network.” Moreover, even if there were some clear link be-

tween that language and the claimed function, we have

“consistently required that the structure disclosed in the

specification be more than simply a general[-]purpose com-

puter or microprocessor.” Net MoneyIN, Inc. v. VeriSign,

Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) (quoting Aristo-

crat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d

1328, 1333 (Fed. Cir. 2008).

Similarly, the ’563 patent’s specification discloses a

“communication subsystem 18,” which comprises “an an-

tenna 19 and a communication engine 20.” ’563 patent, col.

3 ll. 32–35. Although “antenna” may be structural, we

agree with Google and the district court that “communica-

tion engine” is described with purely functional language.

The surrounding language provides that “[t]he communi-

cation engine 20 is connected between the antenna and the

processor 10.” Id. col. 3 ll. 35–36. However, that language

merely describes the location of the communication engine,

rather than what it is or how it operates. The lack of spe-

cific structure is confirmed by the disclosure that “[a]t least

some functional elements of the communication engine

may be implemented on a common chip with one or more

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WSOU INVESTMENTS LLC v. GOOGLE LLC 13

parts of the central processing unit.” Id. col. 3 ll. 39–42.

We therefore agree with the district court’s determination

that “[s]uch ‘high level’ disclosure of results to be obtained,

but no detail as to how to perform the operation to achieve

those results, does not satisfy [§] 112, ¶ 6.” J.A. 656 (citing

In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011)).

Even though the ’563 patent mentions two exemplary

communication protocols, neither provides sufficient struc-

ture corresponding to the claimed function. In particular,

the specification discloses that “[t]he mobile phone may be

operable in accordance with any suitable communication

protocol. Examples include GSM and 3G (UMTS).” ’563

patent, col. 3 ll. 45–47 (emphasis added). Google and the

district court rely on Biomedino, properly characterizing

that communication protocol language as “a bare state-

ment that known techniques or methods can be used [that]

does not disclose structure.” 490 F.3d at 953; J.A. 657.

“The inquiry is whether one of skill in the art would under-

stand the specification itself to disclose a structure, not

simply whether that person would be capable of imple-

menting a structure.” Id. In any case, the communication

protocol language in the ’563 patent merely corresponds to

the general operation of the mobile phone and is not

“clearly linked” to the claimed function of “initiating a con-

nection to another communication terminal over a net-

work.”

The ’563 patent’s specification contains one additional

passage relevant to this issue:

The . . . alarm is an alarm generated by means of a

call to another phone. In the alarm setting mode

the user can select a telephone number for use in

the second type of alarm. The telephone number is

stored in non-volatile memory 21. . . . When the

alarm is active and the clock matches the entered

time and optionally date the processor generates

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14 WSOU INVESTMENTS LLC v. GOOGLE LLC

the alarm of the second type by calling the tele-

phone number.

’563 patent, col. 4 ll. 9–20. However, Google correctly

notes that that language is also not “clearly linked” to the

claimed function. That leaves a skilled artisan uncertain

whether the “processor,” the “communication engine,” or

some other component (or combination thereof) described

in the specification is the structure corresponding to the

claimed function of “initiating a connection to another com-

munication terminal over a network.”

To the extent that WSOU argues that the “interpreta-

tion of what is disclosed in the specification must be made

in the light of knowledge of one skilled in the art,” Appel-

lant’s Br. at 43 (quoting Biomedino, 490 F.3d at 950), it in-

vites us to improperly use the knowledge of a skilled

artisan as a gap-filler, rather than a lens for interpretation,

see Function Media, 708 F.3d at 1319 (“Having failed to

provide any disclosure of the structure for the [claimed]

function, [the patentee] cannot rely on the knowledge of

one skilled in the art to fill in the gaps.”). WSOU argues

that a skilled artisan would “understand the structure in-

volved with a mobile phone using GSM and/or 3G (UMTS)

mobile telephony standard(s)” and “know how to program

the processor to have the phone place a call with GSM/3G

(UMTS) mobile telephony chip.” Appellant’s Br. at 43.

However, those arguments are irrelevant as “[t]he indefi-

niteness inquiry is concerned with whether the bounds of

the invention are sufficiently demarcated, not with

whether one of ordinary skill in the art may find a way to

practice the invention.” ePlus, Inc. v. Lawson Software,

Inc., 700 F.3d 509, 519 (Fed. Cir. 2012) (citing Aristocrat,

521 F.3d at 1337). “[T]he understanding of one skilled in

the art in no way relieves the patentee of adequately dis-

closing sufficient structure in the specification.” Atmel, 198

F.3d at 1380.

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WSOU INVESTMENTS LLC v. GOOGLE LLC 15

Because we have determined that the ’563 patent’s

specification does not disclose sufficient structure that cor-

responds to the first claimed function performed by the

“alerting unit configured to issue an alert” and the “issuing

means for issuing an alert,” we need not discuss the second

claimed function, as “the patentee must disclose adequate

corresponding structure to perform all of the claimed func-

tions.” Williamson, 792 F.3d at 1351–52 (emphasis added)

(internal citation omitted). In the context of a claim gov-

erned by § 112, ¶ 6, “if the patentee fails to disclose ade-

quate corresponding structure, the claim is indefinite.” Id.

at 1352 (citing Noah Sys., 675 F.3d at 1311–12). Accord-

ingly, we affirm the district court’s determination that

claims 1 and 16 of the ’563 patent are invalid as indefinite.

II. The ’681 Patent

WSOU raises two issues concerning the district court’s

determination regarding the ’681 patent. First, WSOU ar-

gues that the court erred in determining that claims 1, 9,

16, and 24 of the ’681 patent were invalid as indefinite

based on the nonsensicality of the claim limitation “second

part in between the first part and the second part.” Appel-

lant’s Br. at 45–56. Second, WSOU asserts that the ’681

patent discloses adequate structure corresponding to the

claimed function performed by the “means for assigning”

limitation of claim 24. Id. at 56–62. We begin by discuss-

ing the “second part” claim limitation.

A patent is invalid as indefinite if “its claims, read in

light of the specification delineating the patent, and the

prosecution history, fail to inform, with reasonable cer-

tainty, those skilled in the art about the scope of the inven-

tion.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.

898, 901 (2014). One circumstance in which claims are in-

definite is where the claims, as properly construed, are

nonsensical. Trustees of Columbia Univ. in City of New

York v. Symantec Corp., 811 F.3d 1359, 1367 (Fed. Cir.

2016) (“The claims are nonsensical in the way a claim to

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16 WSOU INVESTMENTS LLC v. GOOGLE LLC

extracting orange juice from apples would be, and are thus

indefinite.” (internal citation omitted)). Generally, the

terms of a claim are properly construed when they are

given their ordinary and customary meaning, which is the

meaning that the terms would have to a skilled artisan at

the time of invention. Phillips v. AWH Corp., 415 F.3d

1303, 1312–13 (Fed. Cir. 2005).

Neither party disputes that “second part in between

the first part and the second part” should be given its plain

and ordinary meaning, as understood by a skilled artisan

in light of the specification and prosecution history. How-

ever, Google contends that the plain and ordinary meaning

of the claim is nonsensical, given the self-referential nature

of a “second part” existing “in between the first part” and

itself. Appellee’s Br. at 47. Google notes that the specifi-

cation and claims use that exact phrasing on multiple oc-

casions, leading one to believe that it was not a mere

typographical error or mistake. Id. at 47–48. Conversely,

WSOU insists that the specification and prosecution his-

tory imparts a plain and ordinary meaning of “second part

in between [the boundary of] the first part and [the outer

boundary of] the second part” to a skilled artisan. Appel-

lant’s Br. at 48 (bracketed portions indicating WSOU’s pro-

posed clarifications to the claim language). WSOU relies

largely on Figure 3 of the ’681 patent, id. at 47–49, and the

examiner’s allowance of the contested language in an office

action during prosecution, id. at 49–51.

Our examination of the ’681 patent’s specification

matches that of the district court. The self-contradictory

language of the limitation renders the claims indefinite be-

cause it “does not allow a reader to differentiate the first

instance of ‘a second part’ from the second.” J.A. 651.

Google is correct that “[t]he specification provides no fur-

ther explanation to escape the nonsensical [plain and ordi-

nary meaning of the] limitation.” Appellee’s Br. at 47.

Although WSOU points us to Figure 3, nothing in the fig-

ure supports importing WSOU’s “boundary” language into

Case: 22-1066 Document: 55 Page: 17 Filed: 09/25/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 17

the claim limitation. In fact, the term “boundary” does not

appear whatsoever in the ’681 patent’s specification.

Likewise, our analysis of the ’681 patent’s prosecution

history mirrors that of the district court. The office action

cited by WSOU was unrelated to any indefiniteness rejec-

tion and instead dealt with rejected dependent claims that

would become allowable if written in independent form.

J.A. 224. Furthermore, although the contested language

was listed in the examiner’s reasons for allowance, the lan-

guage was not “introduced” by the examiner as WSOU im-

plies. See Appellant’s Br. at 51. Indeed, WSOU admits

that the language appeared in the originally filed claim.

Id. at 50. We agree with the district court’s rejection of

WSOU’s argument on the basis that “if the [c]ourt were to

accept this argument, no party could ever raise an indefi-

niteness challenge because every claim term ever held in-

definite was originally approved by a patent examiner.”

J.A. 652 (quoting Arctic Cat Inc. v. Bombardier Recrea-

tional Prod. Inc., 2016 WL 6832623, at *16 (D. Minn.

2016)).

As we have explained repeatedly and consistently,

“courts may not redraft claims, whether to make them op-

erable or to sustain their validity.” Chef Am., Inc. v. Lamb-

Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (internal

citations omitted). “Even ‘a nonsensical result does not re-

quire the court to redraft the claims of the [patent at issue].

Rather, where as here, [when] claims are susceptible to

only one reasonable interpretation and that interpretation

results in a nonsensical construction of the claim as a

whole, the claim must be invalidated.’” Id. (citing Process

Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357

(Fed. Cir. 1999)). “[W]e do not redraft claims to contradict

their plain language in order to avoid a nonsensical result.”

Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d

776, 782 (Fed. Cir. 2010) (internal citations omitted). Fol-

lowing that longstanding practice, we decline to redraft the

Case: 22-1066 Document: 55 Page: 18 Filed: 09/25/2023

18 WSOU INVESTMENTS LLC v. GOOGLE LLC

claim limitation at issue to include WSOU’s additional

“boundary” language.

To the extent that WSOU again emphasizes the lack of

evidence regarding a skilled artisan’s knowledge in this

case, we again decline to accept that argument. “In some

cases, the ordinary meaning of claim language as under-

stood by a person of skill in the art may be readily apparent

even to lay judges, and claim construction in such cases in-

volves little more than the application of the widely ac-

cepted meaning of commonly understood words.” Phillips,

415 F.3d at 1314. In this case, we are not persuaded by

WSOU’s argument that a skilled artisan’s knowledge

would alter the plain and ordinary meaning of the “com-

monly understood” language of “second part in between the

first part and the second part,” even in the context of the

’681 patent’s specification and prosecution history.

Accordingly, we affirm the district court’s holding that

claims 1, 9, 16, and 24 of the ’681 patent are invalid as in-

definite. We therefore need not reach the parties’ argu-

ments concerning the means-plus-function limitation of

claim 24, as that claim includes the same “second part” lan-

guage that was discussed in the preceding analysis.

CONCLUSION

We have considered WSOU’s remaining arguments but

find them unpersuasive. For the foregoing reasons, the de-

cision of the district court is affirmed.

AFFIRMED