NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`REMBRANDT PATENT INNOVATIONS, LLC,
`REMBRANDT SECURE COMPUTING, LP,
`Plaintiffs-Appellants
`
`v.
`
`APPLE, INC.,
`Defendant-Appellee
`______________________
`
`2016-2324
`______________________
`
`Appeal from the United States District Court for the
`Northern District of California in Nos. 3:14-cv-05093-
`WHA, 3:14-cv-05094-WHA, Judge William H. Alsup.
`______________________
`
`Decided: November 22, 2017
`______________________
`
`J. MICHAEL JAKES, Finnegan, Henderson, Farabow,
`
`Garrett & Dunner, LLP, Washington, DC, argued for
`plaintiffs-appellants. Also
`represented by EDWARD
`ROBERT YOCHES; JACOB ADAM SCHROEDER, Palo Alto, CA.
`
` MARK S. DAVIES, Orrick, Herrington & Sutcliffe LLP,
`Washington, DC, argued for defendant-appellee. Also
`represented by MELANIE L. BOSTWICK, KATHERINE M.
`KOPP, AMISHA R. PATEL; CHRISTOPHER JAMES GASPAR,
`
`

`

`
`2
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`ANDREW LICHTENBERG, Milbank, Tweed, Hadley &
`McCloy LLP, New York, NY; MARK C. SCARSI, Los Ange-
`les, CA.
`
`______________________
`
`Before PROST, Chief Judge, CHEN, and HUGHES, Cir-
`cuit Judges.
`
`CHEN, Circuit Judge.
`Plaintiffs (collectively, Rembrandt) sued Apple, Inc.
`(Apple) for infringement of U.S. Patent No. 6,185,678 (the
`’678 patent). The district court construed certain terms in
`the ’678 patent’s claims and granted Apple’s motion for
`summary judgment of noninfringement. Rembrandt
`appeals the district court’s claim construction and nonin-
`fringement rulings. We affirm.
`BACKGROUND
`I. The ’678 Patent
`The ’678 patent describes techniques for securely ini-
`tializing, or “bootstrapping,” a computer system. ’678
`patent col. 1 ll. 23–25. The asserted claims recite systems
`and methods for verifying the integrity of a computer’s
`boot components and recovering at least one boot compo-
`nent that is found to be corrupted. Verification involves a
`“chain of integrity checks,” executed by certain hardware
`and a computer’s Basic Input Output System (BIOS), to
`determine whether boot components have been corrupted.
`Id. col. 6 ll. 6–24. Recovery involves the replacement of
`any corrupted boot components. Apple’s noninfringement
`arguments hinge on whether the claimed recovery step
`must be performed automatically without human inter-
`vention, as Apple argues, or whether there is no such
`requirement, as Rembrandt argues.
`Figure 2a depicts the functional steps and components
`used in a preferred embodiment of the claimed invention:
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`REMBRANDT PATENT INNOVATIONS V. APPLE, INC.
`
`3
`3
`
`
`
`x.
`
`J INFINITE POST
`
`lJ-IBEND
`
`—"- CONTROL THfiNSITION
`— — * RECOVERY TRANSI'I'IEIN
`
`FIG. 20
`
`
`
`

`

`
`4
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`In Figure 2a, verification begins when a computer is
`powered on and executes a “Power on Self Test” (POST) at
`functional layer 200, which tests the computer’s processor
`and initiates other tests controlled by the BIOS. Id. col. 7
`l. 61 – col. 8 l. 11. Components at layer 200 are “assumed
`to be valid.” Id. col. 8 ll. 48–49. Control is subsequently
`passed from one functional layer to the next, but only
`after each layer cryptographically verifies the integrity of
`components in the next layer. Once initialized, each layer
`adds correspondingly higher levels of capability to the
`system. Verification of all boot layers ensures the sys-
`tem’s integrity before control is passed to the computer’s
`operating system.
`Recovery takes place only if verification detects an in-
`tegrity failure. “Once an integrity failure is detected, the
`invention uses a secure protocol to inform a trusted
`repository that a failure has occurred and to obtain a
`valid replacement component.” Id. col. 4 ll. 49–51. As
`depicted in Figure 2a, the claimed “trusted repository”
`may be implemented via the “AEGIS ROM” component
`for “secure recovery of any integrity failures found during
`the initial bootstrap.” Id. col. 10 ll. 47–67.
`The specification describes the ’678 patent’s invention
`as “relat[ing] to an architecture for initializing a computer
`system and more particularly to a secure bootstrap pro-
`cess and automated recovery procedure.” ’678 patent col.
`1 ll. 23–25. According to the specification, the invention
`achieves a reduction in the total cost of owning a personal
`computer by “automatically detecting and repairing
`integrity failures,” without requiring a user to call tech-
`nical support staff or suffer any machine downtime.
`Id. col. 4 ll. 60–65.
`Rembrandt asserted claims 1, 3, 4, and 7 of the ’678
`patent. Independent claim 1 recites:
`
`An architecture for initializing a computer
`system comprising:
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`5
`
`a processor;
`
`an expansion bus coupled to said processor;
`
`a memory coupled to said expansion bus, said
`
`memory storing a system BIOS for execution by
`said processor upon power up of the computer sys-
`tem;
`
`a plurality of boot components coupled to said
`expansion bus and accessed by said processor
`when said system BIOS is executed;
`
`a trusted repository coupled to said expansion
`bus; and
` means for verifying the integrity of said boot
`components and said system BIOS wherein integ-
`rity failures are recovered through said trusted
`repository.
`Id. col. 21 l. 39 – col. 22 l. 11.
`Claim 3 depends from claim 1 and recites:
`
`An architecture for initializing a computer
`system according to claim 1, wherein said trusted
`repository is a host computer communicating with
`said computer system through a communications
`interface coupled to said expansion bus.
`Id. col. 22 ll. 15–19.
`Independent claim 4 recites:
`
`A method for initializing a computer system
`comprising the steps of:
`
`(1) invoking a Power on Self Test (POST);
`
`(2) verifying the integrity of a system BIOS;
`
`(3) verifying the integrity of a boot component;
`and
`
`

`

`
`6
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`(4) when said boot component fails, recovering
`
`said failed boot component.
`Id. col. 22 ll. 20–26.
`Claim 7 depends from claim 4 and recites:
`
`The method of claim 4, wherein step (4) em-
`ploys a secure protocol to obtain a replacement
`boot component from a trusted repository to re-
`place said failed boot component.
`Id. col. 22 ll. 37–40.
`II. The Accused Products
`Rembrandt accuses various models of Apple’s iPhone,
`iPad, and iPod Touch devices of infringing the asserted
`claims. Each of the accused products runs Apple’s operat-
`ing system for mobile devices, iOS. When products run-
`ning iOS are powered on, their processors initiate a
`verification procedure that uses a chain of integrity
`checks, starting with the execution of software stored in a
`SecureROM component. Additional software components
`in the boot sequence include, in order of access: the LLB,
`iBoot, and iOS kernel. Each of the boot components,
`other than the iOS kernel, checks the integrity of the next
`boot component by comparing a measured cryptographic
`value of the next component with a value obtained from a
`stored digital signature. When iOS’s boot process suc-
`ceeds, each component in the boot chain is verified, and
`the iOS kernel loads the iOS operating system.
`When the integrity of a boot component cannot be ver-
`ified, the accused mobile devices enter one of two recovery
`modes: Device Firmware Update (DFU) Mode or Recovery
`Mode. The devices enter DFU Mode when SecureROM
`fails to verify the integrity of LLB or when LLB fails to
`verify the integrity of iBoot. The devices enter Recovery
`Mode when iBoot fails to verify the integrity of the iOS
`kernel. Upon entering a recovery mode, Apple’s devices
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`7
`
`will display either a blank screen (in DFU Mode) or an
`image prompting users to restore their devices using
`Apple’s iTunes software (in Recovery Mode).
`In either recovery mode, Apple’s customer support
`web pages and service guides instruct a user to connect
`the corrupted mobile device to a computer running
`iTunes. The corrupted device will be unusable unless the
`user connects it to a computer running iTunes and initi-
`ates the recovery process. When installed on a computer,
`iTunes generally launches itself automatically when it
`detects a connection to an iOS device that is in recovery
`mode. Once connected, iTunes displays a dialog box
`prompting the user to select “OK” or “Restore” to proceed
`with the recovery process. After a user opts to initiate
`recovery, iTunes contacts a remote Apple server, down-
`loads replacement boot components, cryptographically
`verifies the replacement components’
`integrity, and
`installs the new components on the corrupted device to
`complete recovery.
`III. Procedural History
`Rembrandt filed suit in January 2014 in the United
`States District Court for the Eastern District of Texas.
`The case was later transferred to the Northern District of
`California. Apple moved for summary judgment of nonin-
`fringement in May 2016, contending that the asserted
`claims require automatic recovery and that Apple’s mobile
`products “cannot recover without manual intervention.”
`J.A. 1030. Rembrandt opposed, arguing that (1) the
`asserted claims do not require automatic recovery; and
`(2) even if the claims require automatic recovery, Apple’s
`products still infringe, either literally or under the doc-
`trine of equivalents.
`The district court granted Apple’s motion, holding
`that (1) the asserted claims, when read in light of the
`specification, require automatic recovery; and (2) Apple’s
`devices do not infringe because they do not use automatic
`
`

`

`
`8
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`recovery. Although the asserted claims do not recite the
`word “automatic,” the district court placed weight on,
`inter alia, the specification’s characterization of the
`invention as “relat[ing] to . . . a secure bootstrap process
`and automated recovery procedure.” J.A. 8 (quoting ’678
`patent col. 1 ll. 23–25) (emphasis added). The district
`court also noted the specification’s disparagement of prior
`art recovery processes that require human interaction. It
`further observed that the specification repeatedly refers
`to automatic recovery processes as advantageously elimi-
`nating the need for phone calls to technical support staff
`and associated downtime. In addition, the district court
`found significant that “[t]here is not a single reference to
`recovery with human intervention” in the patent. J.A. 9.
`In light of its claim construction opinion, the district
`court granted summary judgment of no literal infringe-
`ment. The district court opined that, contrary to Rem-
`brandt’s arguments, “[a]utomatic recovery simply cannot
`mean recovery started manually, even if the technical
`restoration of a new component is ultimately performed
`automatically (after a human has commenced the pro-
`cess).” J.A. 13. The district court acknowledged that the
`specification discloses “circumstances in which human
`interaction may be necessary to recover a device,” but
`determined that these circumstances “are clearly limited
`to instances when several attempts at automatic recovery
`have failed, and in fact, they do not provide for recovery
`at all,” as required in the claims. Id.
`The district court also granted summary judgment of
`no infringement by equivalents. The district court held
`that Apple’s recovery process did not solve the same
`problem purported to be solved by the ’678 patent. For
`example, the district court noted that the accused prod-
`ucts are “bricked,” i.e., rendered inoperable “from the time
`they enter recovery mode until they are recovered,” such
`that “a user will still experience a denial of service until
`he is able to reach a computer running iTunes.” J.A. 14.
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`9
`
`As noted, supra, the ’678 patent’s specification repeatedly
`identifies the avoidance of this downtime as an advantage
`of the ’678 patent’s automated solution. According to the
`district court, “[i]f Apple’s recovery procedure that re-
`quired human intervention could be equivalent to auto-
`matic recovery even though the former failed to address
`all of the problems solved by the latter, that would vitiate
`the automatic limitation present in the properly con-
`strued claims.” J.A. 15.
`Rembrandt appeals. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(1).
`STANDARD OF REVIEW
`We apply the law of the regional circuit when review-
`ing a district court’s grant of summary judgment. Classen
`Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892,
`896 (Fed. Cir. 2015). The Ninth Circuit reviews a grant of
`summary judgment de novo. Ariz. Dream Act Coalition v.
`Brewer, 818 F.3d 901, 908 (9th Cir. 2016). A “judge’s
`function at summary judgment is not to weigh the evi-
`dence and determine the truth of the matter but to de-
`termine whether there is a genuine issue for trial.” Tolan
`v. Cotton, 134 S. Ct. 1861, 1866 (2014) (internal quotation
`marks and citation omitted). The evidence, and infer-
`ences drawn therefrom, must be viewed in the light most
`favorable to the opposing party. Matsushita Elec. Indus.
`Co. v. Zenith Radio Corp., 475 U.S. 574, 587–88 (1986).
`DISCUSSION
`I. Claim Construction
`The “ultimate issue of the proper construction of a
`claim” is “a question of law.” Teva Pharms. USA, Inc. v.
`Sandoz, Inc., 135 S. Ct. 831, 839 (2015). “[W]hen the
`district court reviews only evidence intrinsic to the patent
`(the patent claims and specifications, along with the
`patent’s prosecution history), the judge’s determination
`will amount solely to a determination of law, and the
`
`

`

`
`10
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`Court of Appeals will review that construction de novo.”
`Id. at 841. “[S]ubsidiary factfinding in patent claim
`construction” is reviewed for “clear error.” Id. at 840.
`“The process of construing a claim term begins with
`the words of the claims themselves.” Virnetx, Inc. v. Cisco
`Sys., Inc., 767 F.3d 1308, 1316 (Fed. Cir. 2014). However,
`the claims “do not stand alone. Rather, they are part of ‘a
`fully integrated written instrument,’ . . . consisting prin-
`cipally of a specification that concludes with the claims.”
`Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
`2005) (quoting Markman v. Westview Instruments, Inc., 52
`F.3d 967, 978 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996)).
`“For that reason, claims ‘must be read in view of the
`specification, of which they are a part.’” Phillips, 415 F.3d
`at 1315 (quoting Markman, 52 F.3d at 979). Indeed, the
`specification “is always highly relevant to the claim
`construction analysis. Usually, it is dispositive; it is the
`single best guide to the meaning of a disputed term.”
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`(Fed. Cir. 1996).
`In this case, the district court relied primarily on
`statements in the ’678 patent’s specification when con-
`struing the claims and expressly declined to rely on
`testimony from Rembrandt’s expert that contradicted the
`claims’ meaning established by the intrinsic record. See
`J.A. 5–6. We agree with the district court that the intrin-
`sic evidence clearly limits the scope of the ’678 patent’s
`invention to automatic recovery. We likewise agree with
`the district court’s decision to disregard testimony from
`Rembrandt’s expert that contradicts the claims’ meaning
`established by
`the
`intrinsic evidence.
` Vitronics,
`90 F.3d at 1583.
`The asserted claims do not recite the word “automat-
`ic” or any variation thereof and do not appear to require
`automated recovery when read in isolation. However, as
`explained in Phillips, claims should be construed in
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`11
`
`conjunction with the specification. In Verizon Services
`Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308
`(Fed. Cir. 2007), we held that, when a patent “describes
`the features of the ‘present invention’ as a whole, this
`description limits the scope of the invention.” The ’678
`patent repeatedly characterizes the recovery process of
`the “present invention” as being “automated.”
`For example, the patent’s abstract explains that “the
`bootstrap process of the present invention can be aug-
`mented with automated recovery procedures” (emphasis
`added).
`In defining the field of the invention, the patent
`states: “[t]his invention relates to an architecture for
`initializing a computer system and more particularly to a
`secure bootstrap process and automated recovery proce-
`dure.” ’678 patent col. 1 ll. 23–25 (emphasis added).
`In addition, the Summary of the Invention explains
`that the total cost of ownership is reduced “through
`automatically detecting and repairing integrity failures,
`thereby permitting the user to continue to work without
`the nuisance of a trouble call to support staff and the
`associated down time.” Id. col. 4 ll. 60–65 (emphasis
`added).
`Finally, the Detailed Description of the Preferred
`Embodiments describes only a single embodiment of the
`claimed recovery functionality—referred to as “AEGIS.”
`This embodiment recovers from an integrity failure auto-
`matically, without human intervention. According to the
`specification, “[a]utomatically detecting and repairing
`integrity failures,” using AEGIS, “permits the user to
`continue to work without the nuisance of a trouble call to
`the support staff and the associated down time spent
`waiting.” Id. col. 20 ll. 45–48. Elsewhere, the specifica-
`tion explains that the invention’s “entire” AEGIS recovery
`process “occurs without user intervention.” Id. col. 6 l. 24,
`see also col. 10 l. 8 (“This entire [AEGIS boot] process
`
`

`

`
`12
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`occurs without user intervention.”) (emphasis added).
`The clear takeaway from reviewing the ’678 patent is that
`its process for detecting and recovering failed boot compo-
`nents is necessarily an automated one, i.e., conducted
`without human intervention.
`That understanding of the patent is reinforced by its
`criticism of prior art recovery methods that involved
`human intervention. In Poly-America, L.P. v. API Indus-
`tries, Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016), we
`acknowledged that “an inventor may disavow claims
`lacking a particular feature when the specification distin-
`guishes or disparages prior art based on the absence of
`that feature.” See also Openwave Sys., Inc. v. Apple Inc.,
`808 F.3d 509, 513 (Fed. Cir. 2015); SightSound Techs.,
`LLC v. Apple Inc., 809 F.3d 1307, 1317 (Fed. Cir. 2015).
`This case presents such a situation. The ’678 patent
`disparages prior art recovery procedures that “required
`human interaction.” See ’678 patent col. 3 ll. 42–45. For
`example, the ’678 patent discusses a prior art procedure
`that requires a user to boot from a floppy disk and ex-
`plains that this procedure is “inferior to the present
`invention,” because repairing corrupted boot components
`using unverified floppy disks may introduce “unauthor-
`ized” software into the system. Id. col. 3 ll. 45–57. “This
`is in contrast to the present invention [of the ’678 patent]
`which provides automatic recovery of all of the bootstrap
`components including ROM chips.” Id. col. 3 ll. 57–59.
`According to the ’678 patent, avoiding human participa-
`tion makes the ’678 patent’s recovery process more secure
`in comparison to prior art methods.
`Rembrandt argues that there is no clear and unmis-
`takable disclaimer because the ’678 patent refers to the
`terms “human interaction” or “user intervention” only
`three times, and none of these references literally pro-
`claims a disclaimer of claim scope. But disclaimer does
`not require express statements by the patentee identify-
`ing the surrendered claim scope. Rather, it may be im-
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`13
`
`plicit, so long as it is sufficiently clear. See, e.g., Straight
`Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356,
`1361 (Fed. Cir. 2015).
`The clear, repetitive, and uniform nature of the ’678
`patent’s description of the automated recovery process, in
`combination with its rejection of prior art methods that
`require some human involvement, “limit[] the scope of the
`invention.” Verizon, 503 F.3d at 1308; see also Honeywell
`Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed.
`Cir. 2006) (“On at least four occasions, the written de-
`scription refers to the fuel filter as ‘this invention’ or ‘the
`present invention’ . . . . The public is entitled to take the
`patentee at his word and the word was that the invention
`is a fuel filter.”).
`According to Rembrandt, the specification describes
`human intervention as falling within the scope of what
`the patent describes as automatic recovery. Rembrandt
`points to a statement in the specification that, “[o]nce the
`repair is completed [by the claimed recovery process], the
`system is restarted (warm boot) to ensure that the system
`boots.” Open. Br. 32 (quoting ’678 patent col. 10 ll. 6–8).
`Rembrandt then argues that the aforementioned “warm
`boot” is defined in the specification as resulting from user
`intervention—specifically, a user’s simultaneous pressing
`of the ctrl, alt, and del keys. Id. (citing ’678 patent col. 8
`ll. 3–5). However, this latter portion of the specification
`merely describes prior art methods for invoking a POST
`on an IBM PC and does not suggest that the ctrl-alt-del
`command is the only way to initiate a warm boot. See
`’678 patent col. 7 l. 63 – col. 8 l. 5. Indeed, the warm boot
`that takes place after completion of the claimed recovery
`
`

`

`
`14
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`process is initiated “without user intervention,” as de-
`scribed in the specification. Id. col. 10 l. 8.1
`Referring to the patent’s abstract, Rembrandt notes
`that it uses permissive language to explain that “the
`bootstrap process of the present invention can be aug-
`automated
`recovery
`procedures.”
`mented with
`Open. Br. 33 (quoting ’678 patent abstract). Rembrandt
`argues that automation of the recovery process is there-
`fore optional in view of this language. Apple responds
`that the abstract does not define automation as an op-
`tional feature, but instead describes recovery as an
`optional “addition to the integrity check.” See Resp. Br.
`35. As noted by Apple, the “can be augmented” language
`refers to optional augmentation of the verification func-
`tionality with recovery functionality, with the latter
`always being “automated” when it is included.2
`Rembrandt contends that the district court “over-
`looked” several examples of human intervention discussed
`in the specification. Open. Br. 35. For example, Rem-
`brandt refers us to the following excerpt:
`In each case, AEGIS attempts to recover from a
`trusted repository, step 298, as discussed below.
`Should a trusted repository be unavailable after
`several attempts, then the client’s further action
`depends on the security policy of the user. For in-
`stance, a user may choose to continue operation in
`
`
`1 Moreover, the fact that a warm boot takes place
`after completion of the claimed recovery process is irrele-
`vant to whether the recovery process may include human
`involvement, because whatever takes place after the
`recovery process cannot reasonably be considered to be a
`part of that process.
`2 All of the asserted claims require recovery.
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`15
`
`a limited manner or may choose to halt operations
`altogether.
`Open. Br. 36 (quoting ’678 patent col. 10 ll. 19–25).
`Rembrandt contends that this passage “requires the user
`to choose how to proceed” when the trusted repository
`cannot be reached for a replacement component, and
`leaves open the possibility that the user may be able to
`“finish the recovery process” after intervention. Open. Br.
`36. However, as Apple points out, the above-quoted
`portion of the specification does not describe any recovery
`process. It therefore falls outside the scope of the claims,
`because no component is recovered if the system is halted
`or if a defective boot component is simply ignored and the
`system operates in a limited manner. Moreover, Rem-
`brandt cites no evidence to support its speculation that
`recovery could be completed after further user interven-
`tion.
`Rembrandt also calls our attention to the specifica-
`tion’s discussion of manual repair of ROM chips. The
`relevant excerpt reads:
`Automatically detecting and repairing integrity
`failures permits the user to continue to work
`without the nuisance of a trouble call to the sup-
`port staff and the associated down time spent
`waiting. A system administrator can monitor the
`log of the AEGIS trusted repository and identify
`those workstations that require “hands on” re-
`pairs, e.g. ROM failure, and schedule the work to
`be done when the user is not using the computer.
`’678 patent col. 20 ll. 45–52. Rembrandt argues that the
`above-quoted statements, in combination with the specifi-
`cation’s teaching that “the present invention . . . provides
`automatic recovery of all of the bootstrap components[,]
`including ROM chips,” indicate that manual repairs are
`encompassed within the patent’s conception of “automatic
`recovery.” Open. Br. 37 (quoting ’678 patent col. 3 ll. 57–
`
`

`

`
`16
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`59). As argued by Apple, however, the referenced “hands
`on” repairs are simply “additional work, separate from
`recovery,” that have nothing to do with the claimed recov-
`ery process. Resp. Br. 43. The preambles of the patent’s
`independent claims 1 and 4 respectively recite “[a]n
`architecture for initializing a computer system” and “[a]
`method for initializing a computer system.” ’678 patent
`col. 21 l. 38, col. 22 l. 19 (emphases added). Hands-on
`repair of ROMs, which are hardware components requir-
`ing physical removal, see id. col. 12 ll. 14–16, would not
`occur while the computer is “initializing,” as recited in the
`claims’ preambles, but would
`instead occur during
`“schedule[d]” downtime. See id. col. 20 ll. 48–52. Moreo-
`ver, the specification repeatedly distinguishes recovery
`processes that require downtime from the ’678 patent’s
`invention. See, e.g., ’678 patent col. 4 ll. 60–65 (describing
`a prior art embodiment that required “a trouble call to
`support staff” and associated downtime).
`In Rembrandt’s view, the U.S. Patent and Trademark
`Office (PTO) “believed the claimed ‘recovery’ included
`human activity, and the inventors never disagreed”
`during prosecution of the application that led to the ’678
`patent. Open. Br. 38. The PTO rejected claims of the ’678
`patent over a prior art U.S. patent to Bramnick, which,
`according to Rembrandt, used a recovery process that
`required human intervention. The inventors did not
`distinguish Bramnick on the basis that it used a non-
`automatic recovery procedure. Thus, Rembrandt urges
`that “the inventors tacitly agreed by not distinguishing
`the art on this basis” that non-automatic processes fall
`within the scope of the claims. Apple responds that (1)
`Rembrandt waived this argument by not raising it before
`the district court and, (2) even if the argument were
`preserved, Rembrandt is wrong when it says that Bram-
`nick used a non-automatic recovery procedure. We agree
`with Apple on the latter point and therefore decline to
`resolve the waiver dispute. The relevant portions of
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`17
`
`Bramnick cited in the PTO’s rejection disclose an auto-
`mated recovery procedure. See, e.g., J.A. 1902, col. 3 ll.
`13–15 (stating that it is an “object of the [Bramnick]
`invention to recover from a failure during a boot process
`without user intervention”); see also id. col. 3 ll. 24–35
`(describing Bramnick’s recovery process as designed to
`automatically recover a computer to a functional state
`such that, after recovery, a user may manually perform
`other tasks).
`Finally, Rembrandt argues that the specification’s
`disparagement of non-automated recovery processes is
`“[m]ere criticism of a particular embodiment encompassed
`in the plain meaning of a claim term.” Open. Br. 32
`(quoting Thorner v. Sony Computer Entm’t Am. LLC, 669
`F.3d 1362, 1366 (Fed. Cir. 2012)). We disagree. The
`exclusion of non-automated recovery processes is inextri-
`cably interwoven into descriptions of the primary purpos-
`es of the invention and how the invention overcomes
`problems in the prior art. Under these circumstances,
`where the patent clearly distinguishes non-automated
`processes from the ’678 patent’s invention and makes
`clear that non-automated processes do not accomplish the
`invention’s stated objectives of improved security and
`lower cost of ownership, the district court correctly con-
`strued the claims to require automated recovery.3
`
`
`3 The district court opined that the claims would be
`invalid for lack of written description if they covered non-
`automatic recovery. See J.A. 12–13. Rembrandt argues
`that the district court’s decision on this issue credited an
`argument raised by Apple for the first time in its reply
`brief in support of its motion for summary judgment, and
`that we should consider the argument waived. See Open.
`Br. 45–46; Resp. Br. 52–54. We do not rely on Apple’s
`written description argument in reaching our decision on
`claim construction.
`
`

`

`
`18
`
` REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`II. Infringement
`A. Literal Infringement
`We apply a two-step analysis to determine whether
`accused devices literally infringe a patent’s claims. First
`the patent’s claims are “construed to determine their
`scope.” Telemac Cellular Corp. v. Topp Telecom, Inc.,
`247 F.3d 1316, 1330 (Fed. Cir. 2001). Second, “the claims
`must be compared to the accused device.” Id. “Literal
`infringement exists when every limitation recited in the
`claim is found in the accused device.” Akzo Nobel Coat-
`ings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1341 (Fed.
`Cir. 2016). “[O]n appeal from a grant of summary judg-
`ment of noninfringement, we must determine whether,
`after resolving reasonable factual inferences in favor of
`the patentee, the district court correctly concluded that no
`reasonable jury could find infringement.” Brilliant In-
`struments, Inc. v. GuideTech, LLC, 707 F.3d 1342, 1344
`(Fed. Cir. 2013).
`Rembrandt argues that, even if the district court
`adopted the correct claim construction, summary judg-
`ment of no literal infringement was improper, because
`Apple’s recovery process does not involve human interac-
`tion. The recovery process in Apple’s mobile devices
`starts “when the user chooses, in iTunes, to begin a soft-
`ware restore of an attached device” and completes without
`any further user involvement. Open. Br. 49 (quoting
`testimony from Apple’s corporate representative). Rem-
`brandt asserts that a user’s initiation of Apple’s recovery
`process is not part of recovery and, therefore, that the
`entire recovery process is automated. The ’678 patent,
`however, expressly distinguishes user-initiated recovery
`processes from the ’678 patent’s fully-automated process
`when it disparages prior art procedures that initiate
`recovery only after a user inserts and boots from a floppy
`disk.
`
`

`

`REMBRANDT PATENT INNOVATIONS v. APPLE, INC.
`
`19
`
`Rembrandt contends that waiting for user action after
`detecting a failure, as done in Apple’s accused recovery
`process, is “consistent with an embodiment in the specifi-
`cation”—specifically, the embodiment discussed, supra,
`that looks to a user’s “security policy” to determine what
`to do after a trusted repository cannot be contacted to
`complete recovery. Open. Br. 51–52 (quoting ’678 patent
`col. 10 ll. 21–23). However, as already discussed, the
`aforementioned embodiment falls outside the scope of the
`claims because no component is recovered if the system is
`halted or if a defective boot component is simply ignored
`while the system operates in a limited manner.
`Finally, Rembrandt argues that a user’s actions to ini-
`tiate Apple’s recovery process “do not jeopardize the
`integrity of the bootstrap process.” Id. at 53. This may be
`true, but it does change the meaning of “automatic” as
`understood in the context of the specification, which
`describes the invention as, inter alia, eliminating dow