Wsou Investments LLC v. Google LLC

Opinion

Case: 22-1064 Document: 53 Page: 1 Filed: 10/06/2023

NOTE: This disposition is nonprecedential.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 ______________________

2022-1064 ______________________

Appeal from the United States District Court for the Western District of Texas in No. 6:20-cv-00577-ADA, Judge Alan D. Albright. ______________________

Decided: October 6, 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.

ISRAEL SASHA MAYERGOYZ, Jones Day, Chicago, IL, ar- gued for defendant-appellee. Also represented by JOHN R. BOULE, III, EDWIN GARCIA, TRACY A. STITT, JENNIFER L. Case: 22-1064 Document: 53 Page: 2 Filed: 10/06/2023

SWIZE, Washington, DC; THARAN GREGORY LANIER, Palo Alto, CA. ______________________

Before LOURIE, LINN, and STOLL, Circuit Judges. LINN, Circuit Judge WSOU Investments LLC (“WSOU”) appeals from a fi- nal judgment of invalidity of independent claim 9, and claims 10–16 dependent therefrom, of WSOU’s U.S. Patent 8,751,585 (“’585 patent”) by the United States District Court for the Western District of Texas. WSOU Invests., LLC dba, Brazos Licensing and Dev. v. Google LLC, No. 6:20-CV-00577 (W.D. Tex. 2021). The district court con- strued several limitations in independent claim 9 to be in- definite as means-plus-function limitations without sufficient corresponding structure, and the parties jointly stipulated to a final judgment of invalidity of claims 9–16 under the district court’s construction. J.A. 598. The dis- trict court granted the stipulation and entered final judg- ment of invalidity. WSOU timely appeals the relevant constructions. We have jurisdiction under 28 U.S.C. § 1295(a)(1). Because the district court correctly construed the limi- tation “a collaborative application management processor configured to manage collaborative applications” to be in means-plus-function form, and because the specification lacks corresponding structure, we affirm. We need not and do not address the district court’s holding of indefiniteness of the remaining limitations at issue. BACKGROUND I. The ’585 Patent The ’585 patent, filed March 31, 2009, is directed to a management method for electronic messages in a user’s in- box integrated into a communications system. ’585 patent, Abstract. The method comprises filtering electronic Case: 22-1064 Document: 53 Page: 3 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 3

messages using user-created archiving rules that respond to the user’s carrying out actions responsive to the content of the email message. ’585 patent, col. 2, ll. 1–54. The ’585 patent includes a single image showing an overview of the system:

’585 patent, FIG. 1. Independent claim 9, which contains the limitations that are the subject of this appeal, reads as follows, with the contested limitations italicized: Case: 22-1064 Document: 53 Page: 4 Filed: 10/06/2023

9. Communication system, comprising an electronic message client configured to enable a user to use the electronic message client to manage one or more electronic message of a plurality of electronic messages in an inbox associated with the user, the plurality of electronic messages stored in a message storage database, the electronic mes- sage client comprising: a client management processor configured to enable the user to select an electronic message from the in- box, assign an archiving rule to the selected elec- tronic message that includes a definition of an action that can be subsequently carried out using at least some portion of the communication system, wherein the action defined in the archiving rule is selected by the user from a list of actions that can be detected by the communication system, wherein the action defined in the archiving rule is based at least in part on content of the selected electronic message, and define an archive location within the communication system to which the selected elec- tronic message is moved after the action is de- tected, and the communication system further comprising: a detection processor configured to detect the action defined in the archiving rule assigned to the se- lected electronic message was carried out, an event management processor configured to gen- erate an archiving command to move the selected electronic message from the inbox to the archive lo- cation after detection of the action defined in the archiving rule; and a collaborative application management processor configured to manage collaborative applications; Case: 22-1064 Document: 53 Page: 5 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 5

wherein the list of actions includes at least one of the following actions: update to a page associated with a collaborative ap- plication by the user or another user associated with the communication system in which the col- laborative application is hosted by the communica- tion system; and update to a page associated with a collaborative ap- plication in which the collaborative application is hosted outside the communication system. ’585 patent, col. 9, l. 37–col. 10, l. 32 (emphases added). II. District Court Proceedings WSOU filed suit against Google LLC (“Google”) for in- fringement of fifteen patents owned by WSOU, including the ’585 patent. The district court issued a single claim construction order that covered all fifteen cases. J.A. 2–9. The constructions relevant to this appeal are as follows: “client management proces- Subject to 35 U.S.C. § 112, ¶ 6 sor configured to enable the Function: to enable the user user to select an electronic to select an electronic mes- message from the inbox” sage from the inbox Structure: indefinite “a detection processor config- Subject to 35 U.S.C. § 112, ¶ 6 ured to detect the action de- Function: to detect [when] the fined in the archiving rule action defined in the archiv- assigned to the selected elec- ing rule assigned to the se- tronic message was carried lected electronic message was out” carried out Structure: indefinite “a collaborative application Subject to 35 U.S.C. § 112, ¶ 6 management processor con- Function: to manage collabo- figured to manage collabora- rative applications tive applications” Structure: indefinite J.A. 5–6. Case: 22-1064 Document: 53 Page: 6 Filed: 10/06/2023

The district court held that the “collaborative applica- tion management processor” limitation and the other con- tested processor limitations did not use the word “means,” and therefore were subject to the presumption against a means-plus-function construction. J.A. 659 (citing Wil- liamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in applicable part)). The district court then held that the presumption was overcome for each lim- itation. In particular, the district court held that words of the “collaborative application management” limitation did not have “a generally understood structural meaning in the art or on their own provide structural significance.” J.A. 668. Specifically, the district court held that the word “‘processor’ in the context of the ’585 patent is used as a nonce word,” that is “used generically as an equivalent to ‘means,’” based on the claim language and the lack of any description of a collaborative application management pro- cessor in the specification. J.A. 669. Moreover, the district court found that the phrase “managing collaborative appli- cations” was a statement of function, J.A. 660, and con- cluded that the functional characterization of the limitation at issue was “bolstered by the self-referential language of the claim.” J.A. 669. The district court then held that the specification failed to provide adequate corresponding structure because it failed to provide an algorithm for achieving the special-pur- pose computer function of managing collaborative applica- tions. J.A. 669. The databases identified as comprising the “collaborative application management means” in the spec- ification did not constitute an algorithm because they were merely a list of components and did not describe structure for the processor. Id. The district court thus held the lim- itation to be indefinite. Id. Case: 22-1064 Document: 53 Page: 7 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 7

DISCUSSION I. Standard of Review “Regarding questions of claim construction, including whether claim language invokes 35 U.S.C. § 112, para. 6, the district court’s determinations based on evidence in- trinsic to the patent as well as its ultimate interpretations of the patent claims are legal questions that we review de novo.” Williamson, 792 F.3d 1346 (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015)). “In- definiteness is a question of law that is also reviewed de novo.” Robert 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)). II. The applicability of 35 U.S.C. § 112, ¶ 6 to “collabora- tive application management processor” If the limitation does not use the term “means,” it is subject to a rebuttable presumption that it is not in means- plus-function form. Williamson, 792 F.3d at 1348. The presumption may be overcome “if the challenger demon- strates that the claim term fails to recite sufficiently defi- nite structure or else recites function without reciting sufficient structure for performing that function.” Id. (cleaned up). We determine whether a limitation is in means-plus-function form by the following standard: “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id. at 1349. WSOU argues that the district court erred in constru- ing “collaborative application management processor con- figured to manage collaborative applications” as a means- plus-function limitation. WSOU argues both procedural and substantive error. We address each argument in turn. Case: 22-1064 Document: 53 Page: 8 Filed: 10/06/2023

1 First, WSOU argues that the district court procedur- ally erred by failing to give effect to the presumption against means-plus-function claiming. The district court, however, expressly applied the presumption, J.A. 640, 659, explaining that the presumption may be overcome if the petitioner “demonstrates that the claim term fails to recite sufficiently definite structure or else recites function with- out reciting sufficient structure for performing that func- tion,” J.A. 569 (quoting Williamson, 792 F.3d at 1349), and explained that “processor” does not categorically provide sufficient structure, J.A. 663. The district court then held that, in this case, the claimed processor limitation was written in means-plus-function form because nothing in the claim or the specification describes structure. J.A. 668– 69. We identify no error. WSOU argues that the district court was required to expressly state that the presumption was overcome rather than just explain why it was construing the limitation as a means-plus-function limitation. We are unaware of any such requirement, and WSOU cites no authority to support that proposition. To the extent that WSOU argues that some extrinsic evidence is always required to overcome the presumption, WSOU is incorrect. 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 over- come the presumption against application of § 112, para. 6 can only do so by presenting extrinsic evidence that one of ordinary skill would fail to understand that a term con- notes a definite structure.” (emphasis in original)). Just as a district court may construe structural claims without re- sort to extrinsic evidence, so too it may construe functional limitations without the aid of expert testimony. Intrinsic evidence alone may suffice to do so. See Dyfan, LLC v. Tar- get Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Intrinsic evidence, such as the claims themselves and the prosecu- tion history, can be informative in determining whether Case: 22-1064 Document: 53 Page: 9 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 9

the disputed claim language recites sufficiently definite structure or was intended to invoke § 112, ¶ 6.”). 2 We next turn to whether the district court was substan- tively correct that Google overcame the presumption. Google argues that the presumption was overcome be- cause: (1) “processor” here is used as a generic equivalent to “means”; (2) neither “configured to manage collaborative applications” nor the adjectival description “collaborative application management processor” provide structure be- cause they simply refer to the overarching functions of the “processor,” citing Rain Computing, Inc. v. Samsung Elec- trs. Am., 989 F.3d 1002, 1006 (Fed. Cir. 2021); and (3) the specification of the ’585 patent does not describe any “pro- cessor,” much less a “collaborative application manage- ment processor configured to manage collaborative applications” that can inform the structural meaning of the claim term. We agree with Google. There is no categorical rule that “processor” is or is not structural, as the district court rec- ognized. J.A. 663. WSOU appears to agree, Appellant’s Opening Br. at 21–22. We must look to the case-specific record here to determine whether the phrase “collaborative application management processor configured to manage collaborative applications” is “understood by persons of or- dinary skill in the art to have a sufficiently definite mean- ing as the name for structure.” Williamson, 792 F.3d at 1349. The phrases “collaborative application management processor” and “configured to manage collaborative appli- cations” both describe the same purely functional charac- teristics of an undefined and uncertain “processor.” As the district court noted, that makes the claim limitation self- referential. J.A. 669. What manages the collaborative ap- plications? The processor. What structures will the claim limitation read on? Any that fulfill the function of Case: 22-1064 Document: 53 Page: 10 Filed: 10/06/2023

managing collaborative applications. This is the epitome of functional claiming: a black box that captures any and all structures that fulfill the function, just as if “means” was used. See Williamson, 792 F.3d at 1350. In William- son, we explained that “distributed learning control mod- ule” failed to describe sufficiently definite structure because “the claim does not describe how the ‘distributed learning control module’ interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation-in- question or otherwise impart structure[.]” Id. at 1351. The same is true for the “collaborative application management processor” here: there is no indication of how the processor manages collaborative applications, and the claims do not describe how this processor interacts with the other claimed components in a way that might inform the struc- tural character of the limitation. The specification confirms the non-structural nature of the limitation. As WSOU acknowledged during oral argu- ment, 1 the specification nowhere actually discusses a “col- laborative application management processor,” a “processor configured to manage collaborative applica- tions,” or any “processor” whatsoever. Indeed, the closest passage in the specification discussing collaborative appli- cation management describes only a “collaborative applica- tion management means.” ’585 patent, col. 3, ll. 21–31 (emphasis added). The full passage of the specification WSOU cites for support reads: The communication system 1 may also comprise collaborative application management means such as, in particular: databases 107, 108, 109 enabling recording of data related to Wiki pages,

1 Oral Arg. at 10:16–10:27, No. 22-1064, available at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22 -1064_09082023.mp3. Case: 22-1064 Document: 53 Page: 11 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 11

collaborative FAQs, or blogs, whether or not hosted by the communication system 1; a database 110, enabling storing of data related to RSS flows emit- ted by collaborative applications, whether or not hosted by the communication system 1; databases 111, 112 enabling, among other things, storage of task information or planning information shared by different users 3, 31. Id. As can be appreciated, the specification describes each of the “databases” WSOU links to the collaborative appli- cation management processor limitation in entirely func- tional terms. While the databases enable the storage of data related to collaborative applications, the specification says nothing about how the databases manage the collabo- rative applications or reveals that they might be under- stood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. WSOU presents a number of contrary arguments, none of which we find convincing. First, WSOU argues that the adjectival qualifier “collaborative application manage- ment” preceding “processor” renders the processor more definite, not less. Appellant’s Opening Br. at 23 (citing Per- sonalized Media Commc’ns, LLC v. I.T.C., 161 F.3d 696, 705 (Fed. Cir. 1998)). The argument is inapt as the adjec- tival qualifiers here add nothing more than the description of what functions the processor is configured to perform. Second, WSOU argues that Dyfan acknowledges that “the specific structure of software code and applications is partly defined by its function,” and that we should “look beyond” the “processor” term to “see if a person of ordinary skill would have understood the claim limitation as a whole to connote sufficiently definite structure.” See Dyfan, 28 F.4th at 1368 (citing Zeroclick LLC. v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)). Looking beyond “processor” as a bare term is precisely what the district court did Case: 22-1064 Document: 53 Page: 12 Filed: 10/06/2023

here—but there was no conventional code, like in Dyfan and Zeroclick, that could be identified as constituting a “collaborative application management processor” and no expert testimony, like in Dyfan, supporting a structural un- derstanding of “processor” in the context of the claim. See Dyfan, 28 F.4th at 1368–69; Zeroclick, 891 F.3d at 1008. Third, WSOU argues that the prosecution history fa- vors a structural reading of the processor term. The pa- tentee expressly amended the claims during prosecution to replace “means for management of collaborative applica- tions” in the original claims with “a collaborative applica- tion management processor configured to manage collaborative applications.” Accordingly, WSOU argues, “processor” cannot mean the same thing as “means.” Ap- pellant’s Opening Br. at 29–30 (citing Festo Corp. v. Sho- ketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 589 (Fed. Cir. 2000) (en banc), vacated and remanded on other grounds by 535 U.S. 722 (2002) (noting that “a claim amendment that replaces means-plus-function language with language reciting the corresponding structure nar- rows the literal scope of the claim”)). WSOU is incorrect. WSOU’s amendment here failed to recite the corresponding structure. The patentee cannot avoid a means-plus-func- tion construction by merely replacing the term “means” in the claims with other, equally functional language. This superficial change does not change the functional nature of the limitation. WSOU likewise argues that the recitation of “proces- sor” in the claims contrasts with the recitation of “means” in the specification, and that the claim term should thus be read differently. We do not agree. As discussed above, WSOU cites to the specification’s description of the “collab- orative application management means” as the only de- scription of the claimed “collaborative application management processor.” The intrinsic evidence links the two phrases—it does not contrast them. Moreover, as with the prosecution history argument discussed above, the Case: 22-1064 Document: 53 Page: 13 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 13

replacement of the phrase “means” with equally functional language does not avoid functional claiming. Finally, WSOU argues that the specification describes “how the function is achieved in the context of the inven- tion,” which can support a structural construction. See Dy- fan, 28 F.4th at 1366. As discussed above, the description in the specification refers solely to “means,” not the struc- ture of the claimed processor. Moreover, the functional de- scriptions of the databases in the specification does not describe how the management of collaborative applications is achieved. For the foregoing reasons, we affirm the district court’s construction of “collaborative application management pro- cessor configured to manage collaborative applications” as a means-plus-function limitation.

III. Indefiniteness of “collaborative application manage- ment processor” The next step of the means-plus-function inquiry re- quires identifying the function and the corresponding structure in the specification. Williamson, 792 F.3d at 1351. “If the patentee fails to disclose adequate corre- sponding structure, the claim is indefinite.” Id. at 1352. Both parties agree that the function of the “collabora- tive application management processor” here is to manage collaborative applications. J.A. 7; J.A. 425 (Plaintiff’s Re- ply in Support of Opening Claim Construction Brief); Ap- pellee’s Opening Br. at 56. The specification must identify “corresponding structure for performing the claimed func- tion and clearly link that structure to the function.” Triton Tech. of Tex., LLC v. Nintendo of Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014). Google carries the ultimate burden to show indefinite- ness due to lack of corresponding structure by clear and convincing evidence. Budde v. Harley-Davidson, Inc., 250 Case: 22-1064 Document: 53 Page: 14 Filed: 10/06/2023

F.3d 1369 1376–77 (Fed. Cir. 2001); Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365–66 (Fed. Cir. 2003). Google argues that there is no corresponding structure because the specification does not disclose an algorithm. WSOU responds that Google forfeited the argument that the specification must disclose an algorithm to provide cor- responding structure. WSOU also argues that the district court procedurally erred by placing the burden to show cor- responding structure on WSOU rather than Google. Fi- nally, WSOU argues that the specification disclosed sufficient algorithmic and other structure, pointing exclu- sively to its argument that the processor limitations should not have been construed in means-plus-function form. We are not persuaded by WSOU’s argument. First, Google did not forfeit its argument that the claim term was indefinite for failure to disclose an algorithm in the specifi- cation. Google argued to the district court that the ’585 specification “does not provide any algorithm or other structure for carrying out that specific function.” J.A.217; see also Appellant’s Opening Br. at 52 (acknowledging this argument). WSOU focuses on the phrase “or other struc- ture,” but this does not mean that Google forfeited its argu- ment that WSOU failed to provide an algorithm, and as discussed below, WSOU has not identified any structure or algorithm that would constitute corresponding structure for purposes of § 112, ¶ 6. Google demonstrated by clear and convincing evidence that the specification failed to provide sufficient structure to perform the function of managing collaborative applica- tions. As noted above, the specification nowhere actually discusses a “collaborative application management proces- sor.” When discussing collaborative application manage- ment as a function, the specification only refers to means for managing collaborative applications, such as databases that enable the recording and storing of data. ’585 patent, col. 3, ll. 21–31. This functional discussion does not Case: 22-1064 Document: 53 Page: 15 Filed: 10/06/2023

WSOU INVESTMENTS LLC v. GOOGLE LLC 15

describe structure. Moreover, as discussed above with re- spect to Step 1, the specification does not indicate how the databases “manage” collaborative applications. The data- bases do not constitute an “algorithm” for the execution of the function. See Alfred E. Mann Found. for Sci. Res. v. Cochlear Corp., 841 F.3d 1334, 1342 (Fed. Cir. 2016) (not- ing that an algorithm is “a step-by-step procedure for ac- complishing a given result,” and that an algorithm is required as supporting structure for “a general purpose computer or microprocessor” to “prevent[] pure functional claiming”). CONCLUSION For the foregoing reasons, we affirm the district court’s holding that claims 9–16 of the ’585 patent are invalid as indefinite based on its determination that the claim limita- tion “a collaborative application management processor configured to manage collaborative applications” is a means-plus-function limitation lacking corresponding structure in the specification. Because we affirm indefi- niteness of this limitation, and because all the claims on appeal include this limitation, we need not and do not ad- dress WSOU’s arguments regarding the other appealed limitations. AFFIRMED