H-W Tech., L.C. v. Overstock.Com, Inc.

• Citation: 758 F.3d 1329
• Decision Date: 11 July 2014
• Docket Number: Nos. 2014–1054,2014–1055.,s. 2014–1054
• Parties: H–W TECHNOLOGY, L.C., Plaintiff–Appellant, v. OVERSTOCK.COM, INC., Defendant–Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

758 F.3d 1329

H–W TECHNOLOGY, L.C., Plaintiff–Appellant,

v.OVERSTOCK.COM, INC., Defendant–Appellee.

Nos. 2014–1054, 2014–1055.

United States Court of Appeals,Federal Circuit.

July 11, 2014.

Winston O. Huff, W.O. Huff & Associates, PLLC, of Dallas, TX, argued for plaintiff-appellant. With him on the brief was Deborah Jagai.

John H. Barr, Jr., Bracewell & Giuliani LLP, of Houston, TX, argued for defendant-appellee. With him on the brief was Christopher A. Shield.

Before PROST,^* Chief Judge and O'MALLEY, Circuit Judge. ^**

PROST, Chief Judge.

H–W Technology, L.C., (“H–W”) appeals from an order of the United States District Court for the Northern District of Texas granting summary judgment in favor of defendant Overstock.com, Inc., (“Overstock”). Specifically, H–W challenges the district court's holding that claims 9 and 17 of H–W's U.S. Patent No. 7,525,955 (“'955 patent”) are invalid. We conclude that the district court correctly held claim 17 invalid but erred to the extent it held corrected claim 9 invalid. Because this lawsuit involves only uncorrected claim 9, however, the judgment in favor of Overstock is affirmed as modified.

Background

H–W, the owner of the '955 patent, sued Overstock, alleging that Overstock's smartphone application infringed claims 9 and 17 of the '955 patent. Those claims relate to an apparatus and method for performing “contextual searches on an Internet Protocol (IP) Phone” (“IP Phone”). '955 patent col.28 ll.11–28, col.28 l.61–col.29 l.15. According to the specification of the '955 patent, “[a]n IP Phone is a telephone which can operate and execute voice communication in the same way as conventional telephones either via a Plain Old Telephone System (POTS) or an IP network.” Id. col.1 ll.37–40.

H–W filed this suit in March 2012 and submitted infringement contentions in July of that year. That October, Overstock notified H–W that claim 9, as issued, was missing a limitation. It was not until late May 2013 that H–W obtained a certificate of correction from the U.S. Patent and Trademark Office (“PTO”) and subsequently submitted it to the district court. In the meantime, the parties had completed their summary judgment and claim construction briefing. A few months later, the district court construed the claims and granted summary judgment of invalidity, holding that claims 9 and 17 were indefinite. H–W Tech., LC v. Overstock.com. Inc., 973 F.Supp.2d 689, 690 (N.D.Tex.2013); J.A. 3.

H–W timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Analysis

H–W appeals the district court's (1) construction of “user of said phone” and “said user”; (2) holding that claim 9 is invalid; and (3) holding that claim 17 is invalid. Issues (1) and (3) are related in that the construction of the disputed terms affects the invalidity analysis of claim 17. We address each issue in turn.

I. Claim Construction

H–W appeals the district court's construction of the claim terms “user of said phone” and “said user” to mean “a consumer operating the IP Phone.” H–W Tech., LC v. Overstock.com., Inc., No. 12–cv–0636, 2013 WL 5314355, at *1 (N.D.Tex. Sept. 23, 2013) (“ Claim Construction Order ”). H–W argues that the correct construction is “a person or thing that uses an IP phone.” Appellant's Br. 17.

Claim construction is a question of law that we review without deference. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744 F.3d 1272, 1276–77 (Fed.Cir.2014) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc). In construing claims, this court relies primarily on the claim language, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1314–17 (Fed.Cir.2005) (en banc). After considering this intrinsic evidence, a court may also seek guidance from extrinsic evidence such as expert testimony, dictionaries, and treatises. Id. at 1317–18.

H–W argues that a “user of said phone” could be a “thing.” The only significant evidence H–W supplies in support of this contention, other than conclusory and undeveloped citations to the specification, is a general purpose dictionary definition of “user” as “a person or thing that uses something.” J.A. 754.

In contrast, the district court's construction—that “user of said phone” is limited to a human consumer-finds plenty of support in the claims, specification, and extrinsic evidence. The claims, for example, reference “said user's contact and payment information.” '955 patent col.28 ll.25–28. Contact and payment information is not something one would expect a “thing” to possess. And the person using the IP Phone is a consumer because the person is purchasing products or services. E.g., id. col.28 ll.20–24 (“said user completes a transaction with at least one of said merchants”).

The specification contains further support for the proposition that a user is a person and not a thing. For example, the user of an IP Phone could enter information “by pressing certain areas in the screen with a finger.” Id. col.6 ll.65–66. Such reference to a finger indicates that the user is a person. Further, at times the specification even equates “user” with “consumer.” Id. col.16 l.17 (“ Consumers are the users of TADS client side elements 1002.” (emphasis added)); id. col.20 ll.35–38 (“A TA is a relatively small hosted application that enables the user of the VoIP agent (a consumer) to complete commercial transactions....” (emphasis added)).

As to extrinsic evidence, the inventors testified that a user is “whoever is operating the phone” and “the person that's ordering the pizza [completing the transaction]....” Claim Construction Order at *9. Overstock also counters H–W's dictionary evidence by pointing to the general purpose Merriam–Webster dictionary which defines “user” as “one who uses.” J.A. 751.

In sum, the only significant evidence that supports H–W's position is a single, arguably marginally applicable, dictionary definition. The district court's construction, on the other hand, is supported by the claims themselves, the specification, and the weight of the extrinsic evidence. We thus affirm the district court's construction of “user of said phone” and “said user” to mean “a consumer operating the IP Phone.”

II. Claim 9

H–W also appeals the district court's summary judgment holding that claim 9 is indefinite and thus invalid. Applying the law of the regional circuit, we review the grant of summary judgment de novo. E.g.,LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 66 (Fed.Cir.2012). Indefiniteness is a question of law that is also reviewed de novo. E.g., Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1376 (Fed.Cir.2001).

Claim 9, as approved by the PTO, reads as follows:

9. A method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:

receiving a command to perform a contextual search;

receiving search criteria from a user of said IP phone;

submitting said search criteria to a server coupled to said IP phone; and

receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list;

wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call;

wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and

wherein said user's contact and payment information is not transmitted to said one of said merchants listed, wherein said user's contact and payment information is available to said one of said merchants listed.

J.A. 1824 (emphasis added). When the PTO issued the patent, however, the italicized language was inadvertently omitted. As noted, in its complaint in this case H–W asserted the uncorrected claim.

A. The District Court Properly Did Not Correct Claim 9

H–W first argues that the district court itself had authority to correct the error in claim 9. A district court can correct a patent only if, among other things, “the error is evident from the face of the patent.” Grp. One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed.Cir.2005); see Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed.Cir.2003).

Here, the error is not “evident from the face of the patent.” Claim 9 reads coherently without the missing limitation. Nothing in the surrounding claim language indicates that the limitation was missing. Although other claims do contain the missing limitation, the inclusion of that limitation in one claim does not necessitate, or even fairly indicate, that the limitation should be included in all other claims. See SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1122 (Fed.Cir.1985) (“It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”).

Failing to find support for its position in the claims, H–W turns to the specification. Citing the italicized portion of the following excerpt, H–W argues that the omitted language “is clearly in the specification.” Appellant's Br. 24.

Premium listing services 1902 include, but are not limited to, top billing (priority placement) of a merchant's contact information in results provided in response to an end-user query (including multimedia content) and no-contact transactions (allows end-user to complete a transaction with the merchant without the need to generate a voice call).

'955 patent col.23 ll.10–15 (emphasis added).

Regardless of whether this excerpt clearly contains the missing limitation, “no-contact transactions” appear to be optional premium listing services. See id. col.22 ll.14–20 (“The services may be categorized according to baseline...