United States District Court, W.D. Washington, Seattle
CLAIM CONSTRUCTION ORDER
L. ROBART, UNITED STATES DISTRICT JUDGE
an order on claim construction in a patent infringement
action involving U.S. Patent No. 6, 636, 803 (“the
Patent”), entitled “Real-Estate Information
Search and Retrieval System.” (See Compl.
(Dkt. # 1) ¶ 1; see also Id. ¶ 16, Ex. A
(“'803 Patent”).) Plaintiff Corus Realty
Holdings, Inc. (“Corus”) asserts that Defendants
Zillow Group, Inc. (“Zillow Group”), Zillow, Inc.
(“Zillow”), and Trulia, LLC
“Defendants”) directly infringe upon and induce
and contribute to the infringement of the Patent. (Compl.
¶¶ 42-44.) The parties dispute the construction of
six claim terms. (See Jt. Cl. Chart (Dkt. # 35-1).)
The court has reviewed the parties' claim construction
briefs (Pl. Br. (Dkt. # 36); Defs. Br. (Dkt. # 37); Pl. Resp.
(Dkt. # 41); Defs. Resp. (Dkt. # 44); Pl. Supp. Br. (Dkt. #
48); Defs. Supp. Br. (Dkt. # 49)), all materials filed in
support of and in opposition to the claim construction
briefs, the relevant portions of the record, and the
applicable law. The court also heard from counsel at a
Markman hearing on June 14, 2019. (See Min.
Entry (Dkt. # 46).) Being fully advised, the court construes
the disputed terms as set forth below.
Patent covers systems and methods that use digital technology
to locate property and provide information in connection with
a real-estate transaction (“the Invention”).
(See, e.g., '803 Patent at ¶
4:4-6.) The Invention operates on a digital device-such as a
web-enabled cell phone, laptop, tablet, or desktop
computer-and is displayed on that device's screen. As
shown in Figure 3, the Invention displays information about
residential property in a particular area that is offered for
sale, lease, or rent, which can help real-estate agents and
property buyers in the home buying process. (Id. at
B1 4:7-12.) The Invention is also a “mobile data
terminal”-such as a web-enabled cell phone, laptop, or
tablet-which may be used as a tool by real-estate agents and
buyers for displaying the system and method. (Id. at
Invention has two embodiments. In the first embodiment, the
Invention is a "stand-alone data terminal" equipped
with a map generation unit, a storage unit, a processor, and
a display. (Id. at B1 4:16-30.) The map generation
unit generates a map of an area of interest, the storage unit
stores property information, and the processor integrates the
data from these two units for presentation on the
terminal's display. (See Id. at Bl 4:31-5:43.)
The Invention also produces selectable property icons on the
digital map, which, upon selection by the user, provide real
estate information about that property from sources such as a
multiple listing service ("MLS"). (Id. at
Bl 4:16-5:18; PI. Br. at 6.) The first embodiment is depicted
in Figures 1 and 2.
second embodiment of the Invention is "not a stand-alone
data terminal, but rather is a mobile terminal connected to a
location-positioning system via a communications link."
('803 Patent at ¶ 6:45-59.) In addition to the map
generation unit, storage unit, processor, and display of the
first embodiment, the second embodiment also has a location
data receiver that can specify the current position of the
terminal in the digital map. (Id.) In some
variations of the second embodiment, the mobile terminal
(i.e., the web-enabled cell phone) connects to "a remote
storage device" such as "a remote server connected
to a network such as the Internet or a database."
(Id. at B110:1-6.) This feature allows the Invention
to provide updated property information from resources such
as MLS. (Id. atBl 10:1-16.) The second embodiment is
depicted in Figures 4 and 5.
parties dispute the meaning of six claim terms:
1. "cellular-based location data";
2. "a map generation unit for generating a digital map
covering an area of interest, wherein said area of interest
is obtained from the cellular-based location data";
3. "a storage unit for storing property information
which includes multiple listing service (MLS) data comprising
a location, a market price and a market status of an item of
property in said area of interest";
4. “a processor for determining information needed to
display a property icon for the item of property at the
location of the item of property on said digital map, and for
determining information needed to display property
information about the item of property of the property icon
upon selection of the property icon”;
5. “wherein said property information is obtained from
a remote data source and a database stored on said
data-enabled mobile phone”; and 6. “wherein said
property information is obtained from a remote data source
and stored in a database on the mobile computing
(See Jt. Cl. Chart at 2-34.)
court now construes these claims as described below.
Law on Claim Construction
court is solely responsible for construing patent claims.
Markman, 517 U.S. at 372. The court construes claims
as a matter of law, although the court may make subsidiary
factual findings regarding extrinsic evidence. Teva
Pharm. USA, Inc. v. Sandoz, Inc., --- U.S. ---, 135
S.Ct. 831, 836-38, 840-42 (2015). In practice, executing the
Markman mandate means following rules that rank
various sources of evidence of the “true” meaning
of claim terms. See Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc).
evidence, which includes the patent and its prosecution
history, is the primary source from which to derive a
claim's meaning. Id. at 1314. The court's task
is to determine the “ordinary and customary
meaning” of the terms of a claim in the eyes of a
person of ordinary skill in the art on the filing date of the
patent. Id. at 1313 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). In its review of intrinsic evidence, the court should
begin with the language of both the asserted claim and other
claims in the patent. Id. at 1314; see also
Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)
(“[C]laim construction analysis must begin and remain
centered on the claim language itself.”).
court must read claim language in light of the remainder of
the patent's specification. Phillips, 415 F.3d
at 1316 (explaining that “the specification necessarily
informs the proper construction of the claims”). The
specification acts as a “concordance” for claim
terms and is thus the best source beyond the claim language
for understanding those terms. Id. at 1315. The
inventor is free to use the specification to define claim
terms as he or she wishes, and the court must defer to the
inventor's definitions. Id. at 1316
(“[T]he inventor's lexicography governs.”).
The court should “rely heavily” on the
specification in interpreting claim terms. Id. at
1317. The court should not, however, commit the
“cardinal sin” of claim
construction-impermissibly reading limitations from the
specification into the claims. Id. at 1320 (citing
SciMed Life Sys. v. Advanced Cardiovascular Sys.,
Inc., 242 F.3d 1337, 1340 (Fed. Cir. 2001)).
Additionally, although the patent's prosecution history
is also intrinsic evidence, it is generally “less
useful for claim construction purposes” than the
specification. Phillips, 415 F.3d at 1317.
Because the prosecution history documents an invention's
evolution from application to the issuance of the patent, it
usually “lacks the clarity of the specification.”
the court can consider extrinsic evidence, “including
expert and inventor testimony, dictionaries, and learned
treatises.” Id. (citing Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
1995), aff'd, 517 U.S. 370 (1996)). For a
variety of reasons, extrinsic evidence is usually “less
reliable than the patent and its prosecution history”
as a source for claim interpretation. Id. at 1318.
The court thus need not admit extrinsic evidence, but may do
so at its discretion. Id. at 1319.
Means-Plus-Function Claim Limitations
claiming occurs when a claim term is drafted in a manner that
invokes 35 U.S.C. § 112(f) (formerly 35 U.S.C. §
112, ¶ 6), which states:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof,
and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification
and equivalents thereof.
35 U.S.C. § 112(f); Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). In other
words, “[a] means-plus-function limitation recites a
function to be performed rather than definite structure or
materials for performing that function. Such a limitation
must be construed to cover the corresponding structure,
material, or acts described in the specification and
equivalents thereof.” Lockheed Martin Corp. v.
Space Sys./Loral, Inc., 324 F.3d 1308, 1318
(Fed. Cir. 2003) (internal citations omitted). “Whether
certain claim language invokes § 112, ¶ 6 is an
exercise in claim construction and is therefore a question of
law.” See Inventio AG v. ThyssenKrupp Elevator Ams.
Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011),
overruled on other grounds by Williamson, 792 F.3d
Federal Circuit explains the means-plus-function analysis as
The overall means-plus-function analysis is a two-step
process. Naturally, there is some analytical overlap between
these two steps. In the first step, we must determine if the
claim limitation is drafted in means-plus-function format. As
part of this step, we must construe the claim limitation to
decide if it connotes “sufficiently definite
structure” to a person of ordinary skill in the art,
which requires us to consider the specification (among other
evidence). In the second step, if the limitation is in
means-plus-function format, we must specifically review the
specification for “corresponding structure.”
Thus, while these two “structure” inquiries are
inherently related, they are distinct.
Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1296
(Fed. Cir. 2014), overruled on other grounds by
Williamson, 792 F.3d 1339.
one, in determining if § 112(f) applies, the
“essential inquiry” is “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.” Williamson, 792 F.3d at 1348
(citing Greenberg v. Ethicon Endo-Surgery, Inc., 91
F.3d 1580, 1583 (Fed. Cir. 1996)). If a disputed claim term
does not recite the word “means, ” a rebuttable
presumption arises that the term is not a means-plus-function
term. Id. at 1348-49. The challenger can overcome
this presumption by demonstrating, by a preponderance of the
evidence, that the claim term fails to “‘recite
sufficiently definite structure' or else recites
‘function without reciting sufficient structure for
performing that function.'” See Id.
(quoting Watts v. XL Sys., Inc., 232 F.3d
877, 880 (Fed. Cir. 2000)); Advanced Ground Info. Sys.,
Inc. v. Life360, Inc., 830 F.3d 1341, 1347 (Fed. Cir.
2016). In determining whether a term recites sufficient
structure, the court examines whether the term has “an
understood meaning in the art.” Apex Inc. v.
Raritan Computer, Inc., 325 F.3d 1364, 1372 (Fed. Cir.
2003). “In the absence of sufficient evidence, the
presumption stands.” Id. at 1373. The court
conducts this analysis “under the traditional claim
construction principles, on an element-by-element basis, and
in light of evidence intrinsic and extrinsic to the asserted
patents.” Zeroclick, LLC v. Apple Inc., 891
F.3d 1003, 1007 (Fed. Cir. 2018).
court notes the tension in this analysis. At step one, the
court must “look to the specification, prosecution
history, and relevant external evidence” to determine
if a claim term connotes sufficiently definite structure to a
person of ordinary skill in the art such that § 112(f)
does not apply. See Apple, 757 F.3d at 1296. The
court only gets to step two if a claim term, in light of the
intrinsic and extrinsic evidence, does not connote
sufficiently definite structure. Then, at step two, the court
goes back to the specification to look for
“corresponding structure”-the same specification
that the court found lacked sufficiently definite structure
at step one. See Id. The dissent in Apple Inc.
v. Motorola, Inc. explains this analytical
In effect, what the majority has done is imported the second
step of the analysis (where you define the scope of a
means-plus-function claim term based on the corresponding
structure in the specification) into the first step (where
you identify whether the term is drafted in
means-plus-function format). The majority's analysis
implies that so long as a claim term has corresponding
structure in the specification, it is not a
means-plus-function limitation. But such a rule would render
every means-plus-function claim term indefinite.
Under the majority's approach, a term would only be
deemed a means-plus-function limitation if it has no
corresponding structure-an absurd result that would
eviscerate means-plus-function claiming.
Apple, 757 F.3d at 1335 (Prost, J., dissenting).
Defendants have highlighted this aspect of
Apple's dissent throughout these proceedings,
asserting that the court should only consult the “claim
language” at step one. (See, e.g., Defs. Supp.
Br. at 4-8.) Indeed, Defendants argue that this is the
analysis the Federal Circuit has employed all along, even
though the Federal Circuit expressly says otherwise. (See
court appreciates Defendants' concern, as well as the
difficulty in separating steps one and two in a meaningful
way. However, the Federal Circuit has squarely addressed this
issue, even if it has not clarified the analysis. For
example, the majority in Apple responded to the
dissent's argument and acknowledged that, although the
structure inquiries at steps one and two are
“inherently related, they are distinct.” 757 F.3d
at 1296. Thus, the majority explained, while looking at the
intrinsic and extrinsic evidence at step one “may be
similar to looking for corresponding structure in the
specification [at step two], our precedent requires it when
deciding whether a claim limitation lacking means connotes
sufficiently definite structure to a person of ordinary skill
in the art.” Id. at 1296-97. Further, courts
have been following this framework despite Defendants'
argument to the contrary. See, e.g.,
Williamson, 792 F.3d at 1350-51 (consulting the
specification and prosecution history in finding that
“distributed learning control module” did not
connote sufficient structure to avoid § 112(f)
application); Inventio, 649 F.3d at 1358-59 (relying
on both the claim language and the written descriptions to
determine that “modernizing device” is not a
purely functional limitation); Avocent Huntsville, LLC v.
ZPE Sys., Inc., No. 17-CV-04319-WHO, 2018 WL 4677437, at
*9 (N.D. Cal. Aug. 23, 2018) (examining “the claim
language, [and] the specification” to determine that
“management module” and “management
application” are drafted in means-plus-function
members of the Supreme Court have had occasion to recently
rearticulate, “[a]dherence to precedent ‘is a
foundation stone of the rule of law.'” Knick v.
Twp. of Scott, Pa., No. 17-647, 2019 WL 2552486, at *20
(June 21, 2019) (Kagan, J., dissenting) (quoting Michigan
v. Bay Mills Indian Cmty., 572 U.S. 782, 798 (2014));
see also Franchise Tax Bd. of Cal. v. Hyatt, 587
U.S. ---, ---, 139 S.Ct. 1485, 1504-06 (2019) (Breyer, J.,
dissenting). Further, ignoring precedent demands a
“special justification- over and above the belief that
the precedent was wrongly decided.” Kimble v.
Marvel Entm't, LLC, 576 U.S. ---, ---, 135 S.Ct.
2401, 2409 (2015) (internal quotation marks omitted).
Defendants have not offered a “special
justification” for altering the means-plus-function
test, but rather state-incorrectly-that the cases already
apply their preferred analysis. Defendants are mistaken and,
although the court appreciates their intellectual venture,
the court declines their invitation to ignore the law.
cellular-based location data
claim term “cellular-based location data” appears
in Claims 1, 14, and 30 of the Patent. ('803 Patent at
¶ 11:26-33, 2:47-53; 4:34-37, 4:57-59.) Claim 1 is
representative of how the Patent uses the term: “A
method of generating and displaying a digital map of current
market information to prospective buyers about residential
real-estate property in a geographical area of interest on a
data-enabled mobile phone configured to obtain cellular-based
location data, comprising: obtaining said area of interest
from the cellular-based location data . . . .”
(Id. at C11:26-33; see also Id. at C1
2:47-53, 4:34-37, 4:57-59.)
parties propose the following constructions of the claim term
“cellular-based location data”:
Proposed Construction: “location data based on
a cellular positioning system capable of tracking the
position of a device in an area of interest.” (Pl. Br.
Proposed Construction: “data relating to a
cellular-based positioning system used to determine the
location of a device.” (Defs. Br. at 16.)
court construes this claim term as “location data from
a cellular-based positioning system capable of tracking the
position of a device in an area of interest.” See
Bancorp Servs., LLC, v. Sun Life Assurance Co. of Canada
(U.S.), 687 F.3d 1266, 1274 (Fed. Cir. 2012) (holding
that “a district court may construe the claims in a way
that neither party advocates” (citing Exxon Chem.
Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555
(Fed. Cir. 1995))). This construction reflects the
parties' agreement that the term refers to location data
from a cellular (or cellular-based) positioning system.
(See Pl. Br. at 12; Defs. Br. at 16.) This
construction also reflects the definition of location data
that is provided in the Patent's specification, which
explains that cellular-based location data must be
“capable of tracking the position of an object in an
area of interest.” ('803 Patent at ¶ 1
the language of the asserted claims supports construing the
term to mean “tracking” as opposed to
Defendants' proposed construction of
“determining.” See Phillips, 415 F.3d at
1313 (explaining that the court should begin with the
language of both the asserted claim and other claims in the
patent). Claim 30 describes a “code section for
receiving cellular-based location data of a current
location of the mobile computing device in said area of
interest.” ('803 Patent at ¶ 1 4:34-37,
4:57-59 (emphasis added).) The “current location”
language implies that the Invention updates the location of
the device-i.e., tracking-as the device moves through the
area of interest.
the specification supports this construction. In one
embodiment of the Invention:
[T]he terminal is equipped with a receiver for acquiring
location data from an external positioning system, which may
be satellite-based, cellular-based, or any other type capable
of tracking the position of an object in an area of interest.
Preferably, the receiver is a GPS [Global Positioning System]
receiver linked to the data terminal processor.
('803 Patent at ¶ 1 3:8-18.) The structure of this
sentence implies that location data that is
“cellular-based” must be “capable of
tracking the position of an object in an area of
refute this reading and argue that the catch-all reference to
“any other type capable of tracking the position of an
object in an area of interest” does not apply to
“cellular-based.” (Defs. Resp. at 7.) Defendants
cite Helsinn Healthcare S.A. v. Teva Pharm. USA,
Inc., --- U.S. ---, 139 S.Ct. 628 (2019), in which the
Supreme Court construed part of the America Invents Act
(“AIA”), 35 U.S.C. § 102, which precludes a
person from obtaining a patent if the claimed invention was
“. . . in public use, on sale, or otherwise available
to the public before the effective filing date of the claimed
invention.” Helsinn, 139 S.Ct. at 633-34; 35
U.S.C. § 102(a)(1); (Defs. Resp. at 7-8.) In
Helsinn, the court determined that the “or
otherwise available to the public” phrase did not
modify “on sale.” Helsinn, 139 S.Ct. at
633-34. The Court cited many factors in reaching its
Court noted that the statute in effect prior to passage of
the AIA included the same “public use or on sale”
language but did not include the “or otherwise
available to the public” phrase. Id. at 632.
Further, the Court referenced the “substantial body of
law interpreting § 102's on-sale bar” that
focused on whether an invention had been sold, not whether
that sale was public. Id. at 633. The Court further
presumed that when Congress passed this section of the AIA
that only added the “or otherwise” phrase,
“it adopted the earlier judicial construction” of
“on sale.” Id. at 633-34. Considering
all of this, the Court concluded that the addition of
“or otherwise available to the public” phrase
“is simply not enough of a change for us to conclude
that Congress intended to alter the meaning of the reenacted
term ‘on sale.'” Id. at 634
evidenced by the Supreme Court's extensive discussion in
Helsinn, the most natural reading of a sentence that
includes a catch-all phrase at the end is that the phrase
modifies what comes before it. Otherwise, it would have been
unnecessary for the Court to so thoroughly justify a
different reading. Here, in contrast, the court is not
constrained by a “substantial body of law”
interpreting “cellular-based location data” or
previous enactments of the term that did not include the
catch-all phrase “or any other type capable of tracking
the position of an object in an area of interest.” The
court therefore adopts the natural reading of this