Speedtrack, Inc. v. Amazon.com, Inc.

• Citation: 998 F.3d 1373
• Decision Date: 03 June 2021
• Docket Number: 2020-1573, 2020-1660
• Parties: SPEEDTRACK, INC., Plaintiff-Appellant v. AMAZON.COM, Inc., Dell, Inc., BestBuy.com, LLC, OfficeMax, Inc., Macy's, Inc., Macys.com, LLC, Overstock.com, Inc., Recreational Equipment, Inc., iMedia Brands, Inc., fka Value Vision International, Inc., dba ShopNBC.com, B&H Foto & Electronics Corp., Defendants-Cross-Appellants HP Inc., fka Hewlett-Packard Company, J&R Electronics, Inc., NA Tech Direct, Inc., Pocahontas Corp, SYX North American Tech Holdings LLC, NA Tech Computer Supplies Inc., Barnesandnoble.com, LLC, Barnesandnoble.com, Inc., Systemax, Inc., Defendants
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

998 F.3d 1373

SPEEDTRACK, INC., Plaintiff-Appellant

v. AMAZON.COM, Inc., Dell, Inc., BestBuy.com, LLC, OfficeMax, Inc., Macy's, Inc., Macys.com, LLC, Overstock.com, Inc., Recreational Equipment, Inc., iMedia Brands, Inc., fka Value Vision International, Inc., dba ShopNBC.com, B&H Foto & Electronics Corp., Defendants-Cross-AppellantsHP Inc., fka Hewlett-Packard Company, J&R Electronics, Inc., NA Tech Direct, Inc., Pocahontas Corp, SYX North American Tech Holdings LLC, NA Tech Computer Supplies Inc., Barnesandnoble.com, LLC, Barnesandnoble.com, Inc., Systemax, Inc., Defendants

2020-1573, 2020-1660

United States Court of Appeals, Federal Circuit.

Decided: June 3, 2021

Alan Peter Block, McKool Smith Hennigan, P.C., Los Angeles, CA, argued for plaintiff-appellant. Also represented by John Bruce Campbell, James Elroy Quigley, McKool Smith, P.C., Austin, TX.

Carter Glasgow Phillips, Sidley Austin LLP, Washington, DC, argued for all defendants-cross-appellants. Defendants-cross-appellants Amazon.com, Inc., Dell, Inc., BestBuy.com, LLC also represented by Richard Alan Cederoth, Robert N. Hochman, Nathaniel C. Love, Chicago, IL. Defendant-cross-appellant Amazon.com, Inc. also represented by Jeffrey H. Dean, Amazon.com, Inc., Seattle, WA.

Michael Berta, Arnold & Porter Kaye Scholer LLP, San Francisco, CA, for defendants-cross-appellants OfficeMax, Inc., Macy's, Inc., Macys.com, LLC, Overstock.com, Inc., Recreational Equipment, Inc., iMedia Brands, Inc., B&H Foto & Electronics Corp. Also represented by Ryan Casamiquela.

Before Prost^* , Bryson, and Reyna, Circuit Judges.

Prost, Circuit Judge.

SpeedTrack, Inc. ("SpeedTrack") appeals the United States District Court for the Northern District of California's final judgment of noninfringement, which hinged on the court's claim construction. We affirm.

BACKGROUND

I

SpeedTrack owns U.S. Patent No. 5,544,360 ("the ’360 patent"), which discloses a "computer filing system for accessing files and data according to user-designated criteria." ’360 patent Abstract.¹ The patent explains that prior-art systems "employ a hierarchical filing structure." Id. at col. 1 ll. 28–29. Those systems "emulate[ ] commonly[ ]used paper filing systems" in that they "organize[ ] data into files (analogous to papers in a paper filing system) and directories (analogous to file folders and hanging files)." Id. at col. 1 ll. 29–41; see id. Fig. 1. According to the patent, such systems could "become[ ] very cumbersome" when "the number of files becomes large, or if the file categories are not well-defined." Id. at col. 2 ll. 6–8. For example, "a document may logically belong within many different folders." Id. at col. 2 ll. 20–21.

This problem had prior-art solutions. But according to the ’360 patent, those presented additional drawbacks. Some prior-art systems enabled a user to "search for files by file word content," id. at col. 2 ll. 54–64, but this method was subject to errors like mistyping search queries, id. at col. 3 ll. 20–25. Others permitted searching "relational databases," but these were "usually restricted in two ways: by the field of each data element and by the content of each field." Id. at col. 3 ll. 35–45. The ’360 patent, by contrast, discloses a method that uses "hybrid" folders, which "contain those files whose content overlaps more than one physical directory." Id. at col. 2 ll. 40–42; see id. Fig. 2. According to the patent, this system "allows total freedom from the restrictions imposed by hierarchical and other present day computer filing systems." Id. at col. 3 ll. 63–65.

Representative claim 1 recites a three-step method. First, a "category description table" containing "category descriptions" is created. Relevant to this appeal, the category descriptions "hav[e] no predefined hierarchical relationship with such list or each other" (the "hierarchical limitation").² Second, a "file information directory" is created as the category descriptions are associated with files. Third, a "search filter" is created, which enables searching for files using their associated category descriptions. The claim recites:

1. A method for accessing files in a data storage system of a computer system having means for reading and writing data from the data storage system, displaying information, and accepting user input, the method comprising the steps of:

(a) initially creating in the computer system a category description table containing a plurality of category descriptions, each category description comprising a descriptive name, the category descriptions having no predefined hierarchical relationship with such list or each other ;

(b) thereafter creating in the computer system a file information directory comprising at least one entry corresponding to a file on the data storage system, each entry comprising at least a unique file identifier for the corresponding file, and a set of category descriptions selected from the category description table; and

(c) thereafter creating in the computer system a search filter comprising a set of category descriptions, wherein for each category description in the search filter there is guaranteed to be at least one entry in the file information directory having a set of category descriptions matching the set of category descriptions of the search filter.

Id. at claim 1 (emphasis added).

An example embodiment of a search filter is the virtual "file clerk" of Figure 5, which lists category descriptions (56) under headings called category types (54).

Id. Fig. 5. To find a desired file, the user "simply chooses the [category descriptions] in random order from pick lists, making mistyping impossible." Id. at col. 10 ll. 26–27. "[A]s the user builds the search filter definition, categories [that] would find no data are automatically excluded as pick list possibilities." Id. at col. 10 ll. 27–37; see also id. at col. 10 ll. 46–53. This "ensur[es] that the user defines a filter [that] will always find at least one file, thus avoiding wasting time in searching for data that cannot be matched." Id. at col. 10 ll. 21–24. And although the category descriptions appear under "category type" headings, "the column position of a category is not significant." Id. at col. 8 ll. 26–29 ("Columns are used for the convenience of the user in finding relevant categories and for no other reason.").

II

In September of 2009, SpeedTrack sued various retail website operators, alleging infringement of the ’360 patent.³ The district court construed the hierarchical limitation on November 8, 2019. It adopted SpeedTrack's proposed construction:

The category descriptions have no predefined hierarchical relationship. A hierarchical relationship is a relationship that pertains to hierarchy. A hierarchy is a structure in which components are ranked into levels of subordination; each component has zero, one, or more subordinates; and no component has more than one superordinate component.

J.A. 4; see SpeedTrack, Inc. v. Amazon.com, Inc. , No. 4:09-CV-04479, 2019 WL 5864630, at *6 (N.D. Cal. Nov. 8, 2019) (" Initial Order "). This parallels the construction adopted in one of SpeedTrack's prior infringement suits (the " Wal-Mart construction"). Initial Order , 2019 WL 5864630, at *4 ; see SpeedTrack, Inc. v. Wal-Mart Stores, Inc. , No. C 06-7336, 2008 WL 2491701, at *9 (N.D. Cal. June 19, 2008). Along the way, the district court relied in part on "disclaimers made during prosecution."

Initial Order , 2019 WL 5864630, at *4. The court rejected Cross-Appellants’ proposed construction, which consisted of the first two sentences of the Wal-Mart construction and a further requirement that "[a] data field and its associated values have a predefined hierarchical relationship." Id. at *3. Among other reasons, the district court explained that the terms "field" and "value" were "likely to confuse the jury." Id. at *5.

SpeedTrack subsequently moved to (1) clarify the district court's construction regarding prosecution-history disclaimer, (2) preclude Cross-Appellants from introducing arguments based on prosecution-history disclaimer to the jury, and (3) strike portions of Cross-Appellants’ noninfringement contentions regarding the same. J.A. 6. On February 26, 2020, the district court issued a second claim-construction order clarifying its prior construction. J.A. 4–16; cf. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. , 521 F.3d 1351, 1362 (Fed. Cir. 2008) ("When the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it."). The court retained the construction presented in its initial order but appended the following clarification:

Category descriptions based on predefined hierarchical field-and-value relationships are disclaimed. "Predefined" means that a field is defined as a first step and a value associated with data files is entered into the field as a second step. "Hierarchical relationship" has the meaning stated above. A field and value are ranked into levels of subordination if the field is a higher-order description that restricts the possible meaning of the value, such that the value must refer to the field. To be hierarchical, each field must have zero, one, or more associated values, and each value must have at most one associated field.

J.A. 15. The court noted also that, "[a]s used in the construction, the terms ‘field’ and ‘value’ mean nothing more complicated than ‘a category’ and ‘an example of that category’ (e.g., ‘language’ and ‘French’)." J.A. 15. In support of its clarified construction, the court analyzed SpeedTrack's prosecution statements, ultimately concluding that "[t]he prosecution history demonstrates clear and unambiguous disavowal of category descriptions based on hierarchical field-and-value systems." J.A. 10.

SpeedTrack then stipulated to noninfringement. J.A. 4217 ("[Cross-Appellants’] accused products and services use field-and-value relationships, as those terms are used in the Court's modified construction."). The district...