Federal Circuit Affirms Finding That Patent Challenger Failed To Show Claims Relating To Accessing Web Content Outside Of A Browser Unpatentable
On December 8, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the decision of the Patent Trial and Appeal Board (“Board”), finding that petitioner Lenovo Holding Company, Inc. (“Lenovo”) had failed to show by a preponderance of the evidence that the claims it challenged in an inter partes review (“IPR”) were unpatentable. Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC, __ F.4th __ (Fed. Cir. Dec. 8, 2021).
The three patents at issue in this appeal all relate to accessing and displaying Internet content in a graphical user interface, as opposed to using a web browser to access and display Internet content. According to the inventors, the problem with a typical web browser is the limited amount of control that content developers possess over the user experience, given that content is typically trapped within a frame of the browser. In response to an alleged growing desire for individual users to fully control the aggregation and presentation of Internet content and web applications that appear on a client computer, the inventors purport to utilize (instead of a web browser) a “Networked Information Monitor (NIM)” and “NIM template,” which allows users to access web content outside of a web browser and without the need for developing custom client applications.
Lenovo challenged the validity of these patents by filing three IPR petitions. The Board, in its three final written decisions, concluded that Lenovo had failed to prove by a preponderance of the evidence that the challenged claims were unpatentable over the prior art. Critical to all of the Board’s decisions—and the only issue presented on appeal—is the claim construction of the term “NIM template,” which the Board construed to mean “a data structure which defines characteristics of a NIM, including the NIM frame, view and control characteristics, and which excludes executable applications/compiled code.”
On appeal, Lenovo argued that the Board improperly construed “NIM template” because it allegedly imported from the specification a negative limitation—i.e., that the NIM template “excludes executable applications/compiled code.”
The law in this regard is that claims that include a negative limitation must find support in “the words of the claim” or through an “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003).
In analyzing the Board’s construction, the CAFC turned to the patent specifications for guidance, which state, for example, that “NIMs allow a developer to provide an application feel without developing custom client applications” and that there is an “eliminat[ion of] the need for compilers and consequently, downloading executables.” Other examples from the specification that the CAFC found persuasive include that “NIMs are extremely flexible, because the definition of the NIM is content, rather than compiled code” and that “[a]n ‘application’–type NIM, such as a web calendar or web mail, may be changed by the user, by the content provider, or by other content, while advantageously avoiding the need to distribute and support a hard-coded compiled application.” The CAFC found Lenovo’s argument that these examples did no more than describe a single embodiment unpersuasive because the key language—that “the definition of the NIM is content, rather than compiled code”—defines generally what a NIM is, and, therefore, is not limited to one embodiment.
Lenovo further argued that “executable applications” cannot be excluded (i) because the specification uses the word “execute” in a number of places to describe a NIM template, and (ii) because, during prosecution, the applicant distinguished certain prior art on the basis that it did “not teach or suggest executing, on a client device, a first [NIM] template.” The CAFC rejected these arguments on the ground that Lenovo was taking the word “execute” out of context. Specifically, the CAFC cited Lenovo’s failure to acknowledge that the markup languages described in the patents (e.g., XML) needs to be “executed” in some way, and that, according to unrebutted expert testimony, “execute/executing” does not refer, in this context, to “executable applications” but rather means “use/using the information from the NIM template in connection with specified operations.”
Accordingly, CAFC found that the various usages of the word “execute” in the patent specifications and prosecution history did not militate against excluding “executable applications” from the construction of “NIM template,” and that the repeated descriptions in the specification distinguishing the present invention over executable applications/compiled code sufficiently supported the Board’s construction and justified adding the negative limitation.