The Software IP Report

Federal Circuit Reverses Software System Patent Claim Construction

In an opinion authored by Chief Judge Rader, and joined by Judges Dyk and Taranto, the Federal Circuit has reversed and vacated a summary judgment of non-infringement in favor of Google, finding that the district court based its finding of non-infringement on an erroneous claim construction.  Vederi, LLC v. Google, Inc., No. 13-1057 (Fed. Cir. March 14, 2014).  In the wake of Lighting Ballast Control LLC v. Philips Electronics N.A. Corp., which reaffirmed that the Federal Circuit will subject district court claim constructions to de novo review, this decision provides a clear illustration of how claim construction contributes to making patent litigation such a high-risk and expensive enterprise.

At issue here were claim terms from U.S. Patent Nos. 7,239,760, 7,577,316, 7,805,025, and 7,813,596, which shared a common specification, and claimed priority to a common provisional application.  The patents were generally directed to “to methods for creating synthesized images of a geographic area through which a user may then visually navigate via a computer.”  The images were captured by a car-top recording device or devices, e.g., one or more cameras.  In other words, Google’s famed “Street View” was at issue.

The meaning of the term “substantially elevations” was at issue on appeal, as used, for example, in claim 1 of the ’760 patent: “the image source providing a plurality of images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area.”  The district court’s finding of non-infringement was based on “construing the term ‘images depicting views of objects in a geographic area, the views being substantially elevations of the objects in the geographic area’ as ‘vertical flat (as opposed to curved or spherical) depictions of front or side views.”  Google contended that “it does not infringe the Asserted Patents because it’s product produces images and views that are curved or spherical, and never flat.”

The district court had adopted Google’s construction of the disputed claim term based on a conclusion that the Asserted Patents included no disclosure “about spherical views.”  Further, in granting Google’s motion for summary judgment of non-infringement, the district court concluded that the 360 degree panning disclosed in the provisional patent application would not have included up and down panning that is possible in Google’s Street View.

Turning to its review of the district court’s claim construction, the court of course first noted that its review would be conducted de novo.  The court then stated its conclusion “that the district court erred by excluding all curved or spherical views and images.”

The district court had used extrinsic evidence relating to the meaning of the term “elevation” in the field of architecture.  The district court’s error lay in not “sufficiently considering the intrinsic evidence.”  The specification here disclosed using a fish-eye lens that would provide “a curved, as opposed to vertical, projection, and almost certainly reflects curvature and perspective.”  Therefore, “the photographic image is not flat and not an elevation.”

The court also disagreed with Google’s argument that “substantially” meant that photographic images “could not depict true elevations as that would require a camera lens as large as the object being photographed (here, buildings, cars, and the like).”  However, Google’s interpretation would mean that “substantially” received “no independent operative effect other than to account for the specification’s disclosure of cameras as a means for capturing images.”  The “fish-eye lens embodiment” would not be covered by the claims.  Accordingly, the district court had ignored “important parts of the intrinsic record” in providing its “confining claim construction.”

The Federal Circuit also rejected the district court’s statement that its construction was warranted because the patent’s method would only create flat vertical views and not spherical views.  The provisional application, incorporated by reference, noted “that’s 360 degree synthetic panoramas may be created if a sufficient number of cameras are used.”  Further, the specification was not limited to vertical flat views, nor was there any disavowal of such.

Accordingly, the court vacated the district court’s entry of summary judgment, and remanded the case for further proceedings.