Netword v. Centraal Corp.

• Decision Date: 14 March 2001
• Citation: 242 F.3d 1347,58 USPQ2d 1076
• Parties: (Fed. Cir. 2001) NETWORD, LLC, Plaintiff-Appellant, v. CENTRAAL CORPORATION, Defendant-Appellee. 99-1257
• Court: U.S. Court of Appeals — Federal Circuit

Page 1347

242 F.3d 1347 (Fed. Cir. 2001)

NETWORD, LLC, Plaintiff-Appellant, v. CENTRAAL CORPORATION, Defendant-Appellee.

99-1257

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

March 14, 2001

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

Maxim H. Waldbaum, Pryor Cashman Sherman & Flynn LLP, of New York, New York, argued for plaintiff-appellant. With him on the brief were Lora A. Moffatt, and Xuan-Thao N. Nguyen.

Todd A. Noah, Dergosits & Noah LLP, of San Francisco, California, argued for defendant-appellee. Of counsel were Michael E. Dergosits, Dergosits & Noah LLP; and John F. Anderson, Richards, McGettigan Reilly & West, PC, of Alexandria, Virginia.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

Opinion for court filed by Newman, Dissenting opinion filed by Clevenger.

NEWMAN, Circuit Judge.

Netword, LLC, appeals the summary judgment of the United States District Court for the Eastern District of Virginia, ruling that claim 1 of Netword's United States Patent No. 5,764,906 (the '906 patent) is not infringed by Centraal Corporation's RealNames system, either literally or under the doctrine of equivalents.¹ We affirm the judgment of non-infringement.

I CLAIM CONSTRUCTION

An infringement analysis entails two steps. In the first step the court "construes" the patent claims by establishing the scope and boundaries of the subject matter that is patented, as a matter of law, and in the second step the trier of fact applies the construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976, 34 USPQ2d 1321, 1326 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996). The court's construction of the claims often decides the question of infringement, whether literal infringement or under the doctrine of equivalents. See Vivid Technologies, Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 803, 53 USPQ2d 1289, 1294 (Fed. Cir. 1999) ("It is well recognized that the construction of the claims may resolve some or all of the issues of infringement.")

The district court's claim construction, and the grant of summary judgment based thereon, receive plenary review on appeal. See EMI Group North America, Inc. v. Intel Corp., 157 F.3d 887, 891, 48 USPQ2d 1181, 1184 (Fed. Cir. 1998). If disputed questions of material fact underlie the summary judgment "the evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). The appellate tribunal must assure itself that the nonmovant could not prevail on any reasonable version of the facts as presented on the summary judgment record. See id. at 250 (the purpose of the summary judgment procedure is to avoid an unnecessary trial).

The '906 patent, entitled "Universal Electronic Resource Denotation, Request and Delivery System," describes and claims a system for locating and retrieving information on a distributed computer system or network, such as the Internet, using so-called "aliases" (informal or incomplete designations) to denote resources whose retrieval is sought. The accused Centraal system, having the brand name RealNames, also locates and retrieves Internet information using aliases. In both systems, when a user enters an informal designation (e.g. "IBM") the systems direct the user's computer to the corresponding resource (e.g. the web site of "International Business Machines, Inc.") The dispute concerns how these systems are structured and operate.

The '906 patent system is directed to a computer network as set forth in claim 1:

1. An electronic resource denotation, request and delivery system within a network which shares information resources among its user community, comprising:

a central registry computer whose action is directed by software components,

one or more local server computers whose actions are directed by software components and linked to the central registry computer;

one or more client computers whose actions are directed by software components, and linked to a local server computer;

wherein the software components in these computers operate in concert as a distributed entity to allow client computers to denote resources with aliases that are unique across said server computers and said client computers, and further allow client computers to retrieve information corresponding to said aliases; and

wherein said aliases are maintained in at least said central registry computer and one or more of said local server computers.

As described in the '906 patent, the central registry computer and local server computer maintain aliases and associated information such as resource addresses or Uniform Resource Locators (URLs), descriptions of designated resources, and update information. The specification states that the local server database "contains only certain of the Resource Aliases and their records" and that the central registry computer "maintains the entire collection of Resource Aliases in its database." Relying on this and other descriptive text in the specification and explanations presented by an expert witness, the district court construed claim 1 as directed to a system wherein the local server computer maintains a "cache" or limited database of aliases, and "pulls" information when needed from the central registry computer. On this claim construction, the district court granted Centraal's motion for summary judgment of non-infringement.

A

Netword argues that the functions of "caching" and "pulling" information by the local server are not required by claim 1, and that the district court impermissibly imported limitations into claim 1 from the specification and from claims 6 and 7. Centraal responds that the specification and the prosecution history stress the role of the local server as an intermediary computer with a limited database that stores frequently accessed alias records; the central registry computer updates this limited database on request from the local server. Centraal states that the district court correctly construed claim 1 as requiring that software components in the local server computer perform these functions.

Netword's argument that the district court improperly limited the scope of claim 1 by importing the caching and pulling functions from the specification misperceives the role of "claim construction" in infringement analysis. The role is neither to limit nor to broaden the claims, but to define, as a matter of law, the invention that has been patented. The claims are always construed in light of the specification, of which they are a part. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1118, 1 USPQ2d 1563, 1566 (Fed. Cir. 1987). The role of the specification includes presenting a description of the technologic subject matter of the invention, while the role of claims is to point out with particularity the subject matter that is patented. See 35 U.S.C. 112 PP 1, 2. The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose. Thus the claims are construed to state the legal scope of each patented invention, on examination of the language of the claims, the description in the specification, and the prosecution history. See Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("The interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim."). Although the specification need not present every embodiment or permutation of the invention and the claims are not limited to the preferred embodiment of the invention, see Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998), neither do the claims enlarge what is patented beyond what the inventor has described as the invention. "Claim construction" is the judicial statement of what is and is not covered by the technical terms and other words of the claims. See United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568, 41 USPQ2d 1225, 1236 (Fed. Cir. 1997).

The '906 specification states that the local server computer functions to "cache" or locally store frequently accessed alias records, to obtain updates from the central registry computer, and to transmit records from the cache to the client computer. The specification states that the client computer first searches its own limited database and, if the alias is not stored therein, then requests the information from the local server computer, which in turn has a limited database that may be updated by request to the central registry database. In the '906 system the local server computer only queries the central registry computer when the resource alias can not be found in the local server's database. The specification explains caching as encompassing the storage of Resource Alias-related information for a period of time or while this information continues to be accessed at a reasonable rate. That such storage is inherently limited is shown in the '906 specification's statement that "the aggregate of Resource Alias-related information at such a site directly reflects the level of use or access of a particular subset of the totality of Resource Aliases by Client computers and users which connect to such a site." Col. 6, lines 26-31. Thus the local server computer is a site containing a limited database of aliases reflecting the level of use or access of the totality of aliases maintained in the central registry.

Netword argues that the district court erred when it construed claim 1 to require the local server computer to maintain a cache of aliases, for claim 1 does not state this limitation. Netword...