Neutral
`As of: July 15, 2023 12:56 AM Z
`
`Lenovo Holding Co. v. DoDots Licensing Solutions LLC
`
`United States Court of Appeals for the Federal Circuit
`
`December 8, 2021, Decided
`
`2021-1247, 2021-1521, 2021-1580
`
`Reporter
`2021 U.S. App. LEXIS 36126 *; 2021 U.S.P.Q.2D (BNA) 1203; 2021 WL 5822248
`construction standard to be the same claim construction
`standard that is used to construe the claim in a civil
`action in federal district court.
`
`LENOVO HOLDING COMPANY, INC., LENOVO
`(UNITED STATES) INC., MOTOROLA MOBILITY LLC,
`Appellants v. DODOTS LICENSING SOLUTIONS LLC,
`Appellee
`
`Notice: THIS DECISION WAS
`AS
`ISSUED
`UNPUBLISHED OR NONPRECEDENTIAL AND MAY
`NOT BE CITED AS PRECEDENT. PLEASE REFER TO
`FEDERAL RULES OF APPELLATE PROCEDURE
`RULE 32.1 GOVERNING THE CITATION TO
`UNPUBLISHED OPINIONS.
`
`Prior History: [*1] Appeals from the United States
`Patent and Trademark Office, Patent Trial and Appeal
`Board
`in Nos.
`IPR2019-00988,
`IPR2019-01278,
`IPR2019-01279.
`
`Disposition: AFFIRMED.
`
`Core Terms
`
`template, user, web, patents, execute, frame,
`specification, compiled, prior art, browser, viewer,
`configurable
`
`Case Summary
`
`Overview
`ISSUE: In this case where the three patents at issue
`related to a method for accessing and displaying
`Internet content in a graphical user interface (GUI), the
`sole question before the court was whether the Board
`erred in construing the term "NIM template" (NIM stands
`for a "Networked Information Monitor") in the challenged
`claims to exclude "executable applications/ compiled
`code." HOLDINGS: [1]-The Board did not commit legal
`error in construing the term "NIM template"; [2]-The
`court applied the Phillips standard because appellant
`filed
`its
`inter partes review (IPR) petitions after
`November 13, 2018, when the PTO changed the claim
`
`Outcome
`The court affirmed the Board's decision finding that the
`challenged claims of the '083, '545, and '407 patents
`were not shown to be unpatentable.
`
`LexisNexis® Headnotes
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Aids & Extrinsic Evidence
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > De Novo Review
`
`Patent Law > Jurisdiction & Review > Standards of
`Review > Substantial Evidence
`
`HN1[
`]
`Evidence
`
` Claim
`
`Interpretation, Aids & Extrinsic
`
`The court reviews the Board's claim construction de
`novo and
`its underpinning
`factual determinations
`involving extrinsic evidence for substantial evidence.
`Claim construction requires a determination as to how a
`person of ordinary skill in the art would understand a
`claim term in the context of the entire patent, including
`the specification. To understand the meaning of the
`claim language, the court looks to the entire intrinsic
`record, including the words of the claims themselves,
`the remainder of the specification, and the prosecution
`history, as well as to extrinsic evidence concerning
`relevant scientific principles, and
`the meaning of
`technical terms.
`
`Cathy Pampinella
`
`

`

`2021 U.S. App. LEXIS 36126, *1
`
`Page 2 of 5
`
`Patent Law > ... > Specifications > Description
`Requirement > Written Description Versus
`Enablement
`
`DYK, Circuit Judge.
`
`Lenovo Holding Company, Inc. ("Lenovo") petitioned for
`inter partes review of claims 1-16 of U.S. Patent No.
`8,020,083 (the "'083 patent"), claims 1-10 and 12-15 of
`U.S. Patent No. 9,369,545 (the "'545 patent"), and
`claims 1, 8-13, and 20-24 of U.S. Patent No. 8,510,407
`(the "'407 patent"), owned by DoDots Licensing
`Solutions LLC ("DoDots"). The United States Patent and
`Trademark Office Patent Trial and Appeal Board (the
`"Board"), in three separate Final Written Decisions,
`found
`that Lenovo had
`failed
`to show by a
`preponderance of the evidence that the challenged
`claims were unpatentable. See Lenovo Holding Co. v.
`DoDots Licensing Sols., LLC, Nos. IPR2019-00988
`(Sept. 9, 2020),
`IPR2019-01279
`(Jan. 5, 2021),
`IPR2019-01278 (Jan. 19, 2021). Lenovo challenges the
`Board's decisions, arguing only that the Board erred in
`its construction [*2] of the claim term "NIM template."
`We affirm.
`
`BACKGROUND
`
`I T
`
`he three patents at issue relate to a method for
`accessing and displaying Internet content in a graphical
`user interface ("GUI"). In the prior art, users "typically
`accesse[d] the Internet by using a viewer application,
`such as a browser[,] to view web content provided at a
`destination address, typically a web page." '407 patent,
`col. 1, ll. 56-59. Although the web page could be
`personalized so that there could be a separate page for
`a specific topic, such as "stock information, weather
`information[,] and sports information," each page was
`assembled on a "full web page and [] served through a
`full-screen browser." Id. at col. 1, l. 62-col. 2, l. 3. The
`problem with that construct, according to the inventors,
`was that "[w]eb content and application developers []
`ha[d] limited control over the user experience" because
`"content [wa]s typically trapped within the frame of the
`browser." Id. at col. 2, ll. 3-5.
`
`The inventors claimed to have invented a solution to "a
`growing desire for individual users to fully control the
`aggregation and presentation of content and web
`applications that appear[] on a client computer." Id. at
`col. 2, ll. 14-16. [*3] The patents utilize what the
`inventors called a "Networked
`Information Monitor
`(NIM)" and "NIM template," '545 patent, col. 2, ll. 35-36;
`
`Requirement, Written
` Description
`HN2[
`]
`Description Versus Enablement
`
`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.
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Aids & Extrinsic Evidence
`
`HN3[
`]
`Evidence
`
` Claim
`
`Interpretation, Aids & Extrinsic
`
`The court thus turns to the specification for guidance on
`the meaning of a term as used in a particular patent.
`The specification is always highly relevant and usually
`dispositive; it is the single best guide to the meaning of
`a disputed term.
`
`Patent Law > Infringement Actions > Claim
`Interpretation > Aids & Extrinsic Evidence
`
`HN4[
`]
`Evidence
`
` Claim
`
`Interpretation, Aids & Extrinsic
`
`The specification acts as a dictionary when it expressly
`defines terms used in the claims or when it defines
`terms by implication.
`
`Counsel: MITCHELL G. STOCKWELL, Kilpatrick
`Townsend & Stockton LLP, Atlanta, GA, argued for
`appellants. Also represented by DAVID A. REED; JOHN
`C. ALEMANNI, Raleigh, NC; STEVEN MOORE, San
`Francisco, CA.
`
`PERRY GOLDBERG, Progress LLP, Los Angeles, CA,
`argued for appellee.
`
`Judges: Before NEWMAN, DYK, and REYNA, Circuit
`Judges.
`
`Opinion by: DYK
`
`Opinion
`
`Cathy Pampinella
`
`

`

`2021 U.S. App. LEXIS 36126, *3
`
`Page 3 of 5
`
`id., col. 6, l. 35,1 to allow users to access web content
`outside of a web browser without
`the need
`for
`developing custom client applications, see, e.g., '083
`patent, col. 12, ll. 45-48 ("Without the present invention,
`an alternative available to the Internet content developer
`is to develop a custom application that must be
`downloaded each time it is changed or alternate content
`is desired to be displayed.").
`
`Under the systems and methods disclosed by the
`patents, a user logs into a server by providing a login
`identifier, which is used to obtain the user's profile. The
`user profile includes references to NIMs. A "NIM refers
`to a fully configurable frame with one or more controls;
`the
`frame
`through which content
`is optionally
`presented." '545 patent, col. 4, ll. 56-59. This "fully
`configurable frame . . . stands in contrast to web
`browsers, which are branded by the browser vendor and
`which have limited means by which to alter the controls
`associated with the browser." Id., col. 4, ll. 59-63. An
`example of a NIM (or Dot) provided in the figures of the
`three patents is Figure 5 of [*4] the '083 patent:
`
`After the user is logged in and has clicked on the NIM,
`an applications server retrieves a NIM definition (or
`template) from a NIM template database. See, e.g., '545
`patent, col. 20, ll. 26-30. A "NIM template" defines the
`characteristics of a specific NIM,
`including
`fully
`
`configurable frame characteristics, viewer and control
`characteristics, and NIM content references. See id.,
`col. 6, ll. 34-37. After the user accesses the user profile
`and the NIM template defines the characteristics of the
`NIM frame, the content is placed in the NIM viewer
`defined by the frame for viewing. Id. at col. 2, ll. 30-34.
`These steps are completed by a "client parser
`application" (or "home NIM" or "Home Dot") that resides
`on the user's client computing device. See, e.g., id., col.
`10, ll. 8-10, 29-31.
`
`II
`
`Lenovo petitioned for inter partes review of claims 1-16
`of the '083 patent, claims 1-10 and 12-15 of the '545
`patent, and claims 1, 8-13, and 20-24 of the '407 patent,
`arguing that they were rendered obvious by prior art.
`The Board, in three Final Written Decisions, construed
`the term "NIM template" as a "data structure which
`defines the characteristics of a NIM, including the NIM
`frame, view and control characteristics, and which
`excludes [*5] executable applications/compiled code."
`J.A. 19; see also id. at 55, 90. Based on that
`construction, the Board concluded that Lenovo had
`failed to prove by a preponderance of the evidence that
`the challenged claims were unpatentable over the prior
`art.
`
`Lenovo appealed. The sole question before us is
`whether the Board erred in construing the term "NIM
`template"
`in
`the challenged claims
`to exclude
`"executable applications/ compiled code." We have
`jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`HN1[
`] "We review the Board's claim construction[] de
`novo and
`its underpinning
`factual determinations
`involving extrinsic evidence for substantial evidence."
`Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d
`1272, 1278 (Fed. Cir. 2017). Claim construction requires
`a determination as to how a person of ordinary skill in
`the art would understand a claim term "in the context of
`the entire patent, including the specification." Phillips v.
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
`banc).2 To understand the meaning of the claim
`
`1 Whereas the '407 and '545 patents speak exclusively in
`terms of the NIM and NIM template, the '083 patent also uses
`the analogous terms "Dot" and "Dot definition." See '083
`patent, col. 24, ll. 12-14.
`
`2 We apply the Phillips standard because Lenovo filed its IPR
`petitions after November 13, 2018, when the PTO changed
`the claim construction standard to be the "same claim
`construction standard that is used to construe the claim in a
`civil action in federal district court." Changes to the Claim
`
`Cathy Pampinella
`
`

`

`2021 U.S. App. LEXIS 36126, *5
`
`Page 4 of 5
`
`language, we look to the entire intrinsic record, including
`"the words of the claims themselves, the remainder of
`the specification, [and] the prosecution history," as well
`as to "extrinsic evidence concerning relevant scientific
`principles, [and] the meaning of technical terms." Id.
`(quoting
`Innova/Pure Water,
`Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
`2004)).
`
`Lenovo argues that the Board erred by importing a
`negative limitation (that the NIM template excludes
`executable applications/compiled code)
`from an
`embodiment in the specification. HN2[
`] 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).
`
`Claim 1 of the '545 patent states in relevant part that a
`NIM template comprises "a definition of a viewer [GUI]
`within which content
`in a web browser-readable
`language may be presented on the display of the client
`computing device." '545 patent, col. 42, ll. 36-41. The
`term "NIM template" has no plain and ordinary meaning.
`As the Board observed, from the claim language it is
`clear only
`that a NIM
`template
`"defines
`the
`characteristics of the viewer and the content on the
`viewer." J.A. 13. HN3[
`] We
`thus
`turn
`to
`the
`specification for guidance on the meaning of a term as
`used in a particular patent. See Phillips, 415 F.3d at
`1313; see also
`id. at 1315 (explaining
`that
`the
`specification "'is always highly relevant'" and "'[u]sually .
`. . dispositive; it is the single best [*7] guide to the
`meaning of a disputed term.'" (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
`1996)); see also Trs. of Columbia Univ. v. Symantec
`Corp., 811 F.3d 1359, 1362-63 (Fed. Cir. 2016)
`(applying Phillips).
`
`The specification states that "NIMs allow a developer to
`provide an application feel without developing custom
`client applications." '545 patent, col. 26, ll. 33-35
`(emphasis added); see also '083 patent, col. 40, ll. 24-
`28 ("A Dot developer can [] author a new Dot application
`by developing web content (HTML, GIF files, etc.) and
`by packaging that content in a Dot Definition, eliminating
`
`the need for compilers and consequently, downloading
`executables." (emphasis added)). Figure 13 of the '407
`and '545 patents "illustrates a data structure for a NIM
`definition." '545 patent, col. 21, l. 42. The accompanying
`discussion of Figure 13 in the specification states:
`
`In one embodiment, the NIM definitions are defined
`using Extensible Markup Language (XML), so that
`the NIM as a whole-the frame and the content
`within the viewer--is advantageously as flexible as
`standard web content. NIMs are extremely flexible,
`because the definition of the NIM is content, rather
`than compiled code. The NIM definition defines the
`structure of the NIM, and everything that is visible in
`a NIM is based on standard Internet content, such
`as HTML, dHTML, or GIFs, and is referenced or
`pointed [*8]
`to by
`the NIM definition. An
`"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
`definition of a NIM thus includes everything that is
`needed for the NIM to be rendered and filled with
`Internet content.
`
`Id., col. 21, l. 55-col. 22, l. 3 (emphasis added).
`
`Lenovo argues that this language does no more than
`describe a single embodiment implementing a NIM
`template as XML rather than compiled code. That
`argument is unpersuasive. The key language in the
`specification—that "the definition of the NIM is content,
`rather than compiled code," '545, col. 21, ll. 59-60—is
`not limited to the "one embodiment" in Figure 13. HN4[
`] It defines, generally, what a NIM is.3See Vitronics,
`90 F.3d at 1582 ("The specification acts as a dictionary
`when it expressly defines terms used in the claims or
`when it defines terms by implication.").
`
`Lenovo contends that because Claim 1 in the '083
`patent states
`that a NIM
`template comprises
`"instructions configured . . . to cause the first [NIM] to
`generate the [GUI]," and further recites "one or more
`processors configured . . . [*9] to execute the first [NIM]
`template," that the NIM template is plainly executable.
`Appellant's Br. 18, 25. It also points to the summary of
`
`Construction [*6] Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (codified at 37
`C.F.R. § 42.100(b) (2020)).
`
`3 Notably, Lenovo misleadingly represents the specification's
`discussion of Figure 13, altering its meaning by tweaking the
`quote from the specification to read "[i]n one embodiment . . .
`the definition of the NIM is content rather than compiled code."
`Appellant's Br. 28.
`
`Cathy Pampinella
`
`

`

`2021 U.S. App. LEXIS 36126, *9
`
`Page 5 of 5
`
`For the foregoing reasons, we conclude that the Board
`did not commit legal error in construing the term "NIM
`template." Accordingly, we affirm the Board's decision
`finding that the challenged claims of the '083, '545, and
`'407 patents were not shown to be unpatentable.
`
`AFFIRMED
`
`End of Document
`
`the invention in each patent, which includes reference to
`"executable modules," including a "second executable
`module" that "defines a NIM frame for the NIM using the
`definition." Appellant's Br. 30 (quoting '407 patent, col.
`3, ll. 4-12). Since the "second executable module"
`"defines a NIM frame," Lenovo contends, "it is a NIM
`template under its plain and ordinary meaning. And as
`an executable module, the NIM template cannot exclude
`executable code." Id.
`
`Each of Lenovo's arguments takes the word "execute"
`out of context. Lenovo fails to acknowledge that both
`markup language, such as the XML described in Figure
`13, and programming language, such as the Java used
`by the applications in the prior art, need to be
`"executed" in some way. The Board observed that
`DoDots's expert Dr. Sacerdoti testified that "execute"
`with respect to a NIM template has a different meaning
`than "execute" as used with respect to an application.
`Because a NIM template is a data structure, Dr.
`Sacerdoti explained, a skilled artisan would understand
`references [*10]
`that
`"execute/executing"
`in
`the
`specification would mean "use/using the information
`from the NIM template in connection with specified
`operations." See, e.g., J.A. 2425 ¶ 66. Lenovo failed to
`submit any rebuttal evidence on this point, and we find
`the Board's decision to credit the testimony of Dr.
`Sacerdoti
`in
`these
`respects was supported by
`substantial evidence.
`
`Finally, Lenovo turns to prosecution history to support
`its argument that "NIM template" includes executables.
`During prosecution of a patent application related to the
`three patents at issue, DoDots distinguished prior art as
`not teaching "executing" the NIM template. The related
`application—the '874 application--shares a specification
`with the parent of the three patents at issue. The
`pending claims in the '874 Application were the same in
`relevant part to those of the '083 patent, reciting
`"executing the first [NIM] template on the one or more
`processors . . . ." Appellant's Br. 33 (quoting J.A. 2287-
`89). Following a prior art rejection, DoDots distinguished
`the prior art on the basis that it did "not teach or suggest
`executing, on a client device, a first [NIM] template." Id.
`(quoting J.A. 2290); see also Appellee's Br. 22-23.
`Accordingly, Lenovo argues, DoDots [*11] "understood
`the recited NIM template to be executable." Appellant's
`Br. 33. This is not helpful to Lenovo, however, as it is
`merely a repackaging of the same argument we have
`already rejected, that the use of the word "execute"
`informs the meaning of the word "executable." In the
`related prosecution, DoDots was using "executing" the
`same way it uses it here: to mean "using."
`
`Cathy Pampinella
`
`