Core Wireless Licensing v. Lg Electronics, Inc. , 880 F.3d 1356 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
CORE WIRELESS LICENSING S.A.R.L.,
Plaintiff-Appellee
v.
LG ELECTRONICS, INC., LG ELECTRONICS
MOBILECOMM U.S.A., INC.,
Defendants-Appellants
______________________
2016-2684, 2017-1922
______________________
Appeals from the United States District Court for the
Eastern District of Texas in Nos. 2:14-cv-00911-JRG-RSP,
2:14-cv-00912-JRG-SP, Judge J. Rodney Gilstrap.
______________________
Decided: January 25, 2018
______________________
BENJAMIN T. WANG, Russ August & Kabat, Los Ange-
les, CA, argued for plaintiff-appellee. Also represented by
MARC AARON FENSTER, ADAM S. HOFFMAN, REZA MIRZAIE;
KAYVAN B. NOROOZI, Noroozi PC, Santa Monica, CA.
CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Wash-
ington, DC, argued for defendants-appellants. Also
represented by DANIEL HAY, RYAN C. MORRIS,
ANNA MAYERGOYZ WEINBERG; PETER H. KANG, Palo Alto,
CA; JAMES SUH, LG Electronics Inc., Seoul, Korea.
______________________
2 CORE WIRELESS LICENSING v. LG ELECS., INC.
Before MOORE, O’MALLEY, and WALLACH, Circuit Judges.
Opinion for the court filed by Circuit Judge MOORE.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge WALLACH.
MOORE, Circuit Judge.
LG Electronics, Inc. (“LG”) appeals the United States
District Court for the Eastern District of Texas’ decisions
(1) denying summary judgment that claims 8 and 9 of
U.S. Patent No. 8,713,476 (“’476 patent”) and claims 11
and 13 of U.S. Patent No. 8,434,020 (“’020 patent”) are
directed to patent ineligible subject matter under 35
U.S.C. § 101; (2) denying judgment as matter of law that
U.S. Patent No. 6,415,164 (“Blanchard”) anticipates the
asserted claims under 35 U.S.C. § 102; and (3) denying
judgment as a matter of law that the claims are not
infringed. For the reasons discussed below, we affirm.
BACKGROUND
The ’476 and ’020 patents disclose improved display
interfaces, particularly for electronic devices with small
screens like mobile telephones. ’020 patent 1 at 1:14–24.
The improved interfaces allow a user to more quickly
access desired data stored in, and functions of applica-
tions included in, the electronic devices. Id. at 2:20–44.
An application summary window displays “a limited list
of common functions and commonly accessed stored data
which itself can be reached directly from the main menu
listing some or all applications.” Id. at 2:55–59. The
application summary window can be reached in two steps:
“first, launch a main view which shows various applica-
1 The ’476 and ’020 patent specifications are effec-
tively identical. Unless otherwise specified, citations to
the ’020 patent refer to disclosures in both patents.
CORE WIRELESS LICENSING v. LG ELECS., INC. 3
tions; then, launch the appropriate summary window for
the application of interest.” Id. at 2:61–64. The patents
explain that the disclosed application summary window
“is far faster and easier than conventional navigation
approaches,” particularly for devices with small screens.
Id. at 2:64–65.
Core Wireless Licensing S.A.R.L. (“Core Wireless”)
sued LG, alleging LG infringed dependent claims 8 and 9
of the ’476 patent and dependent claims 11 and 13 of the
’020 patent. Claims 8 and 9 of the ’476 patent depend
from claim 1, which recites (emphases added):
1. A computing device comprising a display
screen, the computing device being configured to
display on the screen a menu listing one or more
applications, and additionally being configured to
display on the screen an application summary
that can be reached directly from the menu,
wherein the application summary displays a lim-
ited list of data offered within the one or more ap-
plications, each of the data in the list being
selectable to launch the respective application and
enable the selected data to be seen within the re-
spective application, and wherein the application
summary is displayed while the one or more ap-
plications are in an un-launched state.
Claims 11 and 13 of the ’020 patent depend from claim 1,
which recites (emphases added):
1. A computing device comprising a display
screen, the computing device being configured to
display on the screen a main menu listing at least
a first application, and additionally being config-
ured to display on the screen an application sum-
mary window that can be reached directly from
the main menu, wherein the application summary
window displays a limited list of at least one func-
tion offered within the first application, each func-
4 CORE WIRELESS LICENSING v. LG ELECS., INC.
tion in the list being selectable to launch the first
application and initiate the selected function, and
wherein the application summary window is dis-
played while the application is in an un-launched
state.
LG moved for summary judgment of invalidity of the
asserted claims under 35 U.S.C. § 101, which the court
denied. The district court found claim 1 of the ’476 patent
representative for the purposes of evaluating patent
eligibility. It held that the claims are not directed to an
abstract idea because, even crediting LG’s characteriza-
tion of the claims as directed to “displaying an application
summary window while the application is in an un-
launched state,” the concepts of “application,” “summary
window,” and “unlaunched state” are specific to devices
like computers and cell phones. J.A. 9561. The court
explained “LG identifie[d] no analog to these concepts
outside the context of such devices.” Id. It further noted
even “if claim 1 were directed to an abstract idea, it would
still be patent eligible at least because it passes the
machine-or-transformation test.” J.A. 9562.
The case proceeded to trial, and the district court, af-
ter hearing initial testimony, determined “an O2 Micro
situation” existed with respect to the claim terms “un-
launched state” and “reached directly,” and afforded both
sides an opportunity to argue constructions of these
terms. J.A. 10277–78; see O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008)
(“When the parties present a fundamental dispute regard-
ing the scope of a claim term, it is the court’s duty to
resolve it.”). The district court ruled that “un-launched
state” means “not displayed” and “reached directly”
means “reached without an intervening step.”
The jury found all asserted claims infringed and not
invalid. LG moved for judgment as matter of law of
noninfringement, arguing in part that a correct construc-
CORE WIRELESS LICENSING v. LG ELECS., INC. 5
tion of “un-launched state” means “not running” and that
under this construction, no reasonable jury could have
found infringement. LG also argued that the “reached
directly” limitation required user interaction with the
main menu, and no reasonable jury could have found
infringement under such a construction. The district
court declined to revisit claim construction, noting LG did
not preserve its claim construction arguments in a Rule
50(a) motion. The district court further denied LG’s
motion for judgment as a matter of law of noninfringe-
ment based on the court’s adopted constructions because
evidence was presented at trial from which the jury
reasonably could have found that the application sum-
mary window in the accused devices could be reached
directly from the main menu.
The district court also denied LG’s motion for judg-
ment of a matter of law of anticipation by Blanchard.
Although Core Wireless elected not to call an expert to
testify in rebuttal to LG’s validity expert, the district
court noted that the jury was not required to credit LG’s
expert testimony and concluded “LG failed to overcome
the presumption of validity accorded to the ’476 and ’020
Patents by clear and convincing evidence.” J.A. 18.
LG timely appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1). 2
2 Concern remains regarding whether we have ju-
risdiction to review the appeal of validity and infringe-
ment determinations while damages remains unresolved
and will be the subject of a future jury trial. This is
particularly true where, as here, no judgment under Rule
54(b) or otherwise has ever been entered. This panel,
however, is bound by the determination in Robert Bosch,
LLC v. Pylon Manufacturing Corp., 719 F.3d 1305, 1320
(Fed. Cir. 2013) (en banc) (holding that we retain jurisdic-
6 CORE WIRELESS LICENSING v. LG ELECS., INC.
DISCUSSION
For patent appeals, we apply the law of the regional
circuit, here the Fifth Circuit, to issues not specific to
patent law. LaserDynamics, Inc. v. Quanta Comput., Inc.,
694 F.3d 51, 66 (Fed. Cir. 2012). The Fifth Circuit re-
views motions for summary judgment and motions for
judgment as matter of law de novo. Id. The Fifth Circuit
views all evidence in a light most favorable to the verdict
and will reverse a jury’s verdict only if the evidence points
so overwhelmingly in favor of one party that reasonable
jurors could not arrive at any contrary conclusion. Bagby
Elevator Co. v. Schindler Elevator Corp., 609 F.3d 768,
773 (5th Cir. 2010). The ultimate determination of patent
eligibility under 35 U.S.C. § 101 is an issue of law we
review de novo. Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017).
Anticipation and infringement are both questions of fact
reviewed for substantial evidence when tried to a jury.
Wi-Lan, Inc. v. Apple Inc., 811 F.3d 455, 461 (Fed. Cir.
2016).
I. Patent Eligibility
Anyone who “invents or discovers any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof” may obtain a
patent. 35 U.S.C. § 101. Because patent protection does
not extend to claims that monopolize the “building blocks
of human ingenuity,” claims directed to laws of nature,
natural phenomena, and abstract ideas are not patent
eligible. Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct.
2347, 2354 (2014). The Supreme Court instructs courts to
distinguish between claims that claim patent ineligible
tion “to entertain appeals from patent infringement
liability determinations when a trial on damages has not
yet occurred”).
CORE WIRELESS LICENSING v. LG ELECS., INC. 7
subject matter and those that “integrate the building
blocks into something more.” Id. First, we “determine
whether the claims at issue are directed to a patent-
ineligible concept.” Id. at 2355. If so, we “examine the
elements of the claim to determine whether it contains an
‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Id. at
2357 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72, 79 (2012)). If the claims are
directed to a patent-eligible concept, the claims satisfy
§ 101 and we need not proceed to the second step. Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
At step one, we must “articulate what the claims are
directed to with enough specificity to ensure the step one
inquiry is meaningful.” Thales Visionix Inc. v. United
States, 850 F.3d 1343, 1347 (Fed. Cir. 2017). Although
there is “difficulty inherent in delineating the contours of
an abstract idea,” Visual Memory, 867 F.3d at 1259, we
must be mindful that “all inventions at some level em-
body, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We also ask whether the claims are directed to a
specific improvement in the capabilities of computing
devices, or, instead, “a process that qualifies as an ‘ab-
stract idea’ for which computers are invoked merely as a
tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
We previously have held claims focused on various
improvements of systems directed to patent eligible
subject matter under § 101. For example, in Enfish, we
held claims reciting a self-referential table for a computer
database eligible under step one because the claims were
directed to a particular improvement in the computer’s
functionality. 822 F.3d at 1336. That the invention ran
on a general-purpose computer did not doom the claims
because unlike claims that merely “add[] conventional
8 CORE WIRELESS LICENSING v. LG ELECS., INC.
computer components to well-known business practices,”
the claimed self-referential table was “a specific type of
data structure designed to improve the way a computer
stores and retrieves data in memory.” Id. at 1338–39. In
Thales, we held claims reciting an improved method of
utilizing inertial sensors to determine position and orien-
tation of an object on a moving platform not directed to an
abstract idea or law of nature. 850 F.3d at 1349. We
noted that even though the system used conventional
sensors and a mathematical equation, the claims specified
a particular configuration of the sensors and a particular
method of utilizing the raw data that eliminated many of
the complications inherent in conventional methods. Id.
at 1348–49. In Visual Memory, we held claims directed to
an improved computer memory system with programma-
ble operational characteristics defined by the processor
directed to patent-eligible subject matter. 867 F.3d
at 1259. The claimed invention provided flexibility that
prior art processors did not possess, and obviated the need
to design a separate memory system for each type of
processor. Id. And most recently, in Finjan, Inc. v. Blue
Coat Systems, Inc., we held claims directed to a behavior-
based virus scanning method directed to patent eligible
subject matter because they “employ[] a new kind of file
that enables a computer security system to do things it
could not do before,” including “accumulat[ing] and uti-
liz[ing] newly available, behavior-based information about
potential threats.” 2018 WL 341882 (Fed. Cir. Jan. 10,
2018). The claimed behavior-based scans, in contrast to
prior art systems which searched for matching code,
enabled more “nuanced virus filtering” in analyzing
whether “a downloadable’s code . . . performs potentially
dangerous or unwanted operations.” Id. at 6–7. We held
the claims “therefore directed to a non-abstract improve-
ment in functionality, rather than the abstract idea of
computer security writ large.” Id. at 8.
CORE WIRELESS LICENSING v. LG ELECS., INC. 9
The asserted claims in this case are directed to an im-
proved user interface for computing devices, not to the
abstract idea of an index, as argued by LG on appeal. 3
Although the generic idea of summarizing information
certainly existed prior to the invention, these claims are
directed to a particular manner of summarizing and
presenting information in electronic devices. Claim 1 of
the ’476 patent requires “an application summary that
can be reached directly from the menu,” specifying a
particular manner by which the summary window must
be accessed. The claim further requires the application
summary window list a limited set of data, “each of the
data in the list being selectable to launch the respective
application and enable the selected data to be seen within
the respective application.” This claim limitation re-
strains the type of data that can be displayed in the
summary window. Finally, the claim recites that the
summary window “is displayed while the one or more
applications are in an un-launched state,” a requirement
that the device applications exist in a particular state.
These limitations disclose a specific manner of displaying
a limited set of information to the user, rather than using
conventional user interface methods to display a generic
index on a computer. Like the improved systems claimed
in Enfish, Thales, Visual Memory, and Finjan, these
claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic
devices.
The specification confirms that these claims disclose
an improved user interface for electronic devices, particu-
3 This articulation of the purported abstract idea
was advanced for the first time on appeal. Because we do
not find this theory or the theory offered below to be well-
taken, we do not decide whether the argument was
waived, as Core Wireless argues.
10 CORE WIRELESS LICENSING v. LG ELECS., INC.
larly those with small screens. It teaches that the prior
art interfaces had many deficits relating to the efficient
functioning of the computer, requiring a user “to scroll
around and switch views many times to find the right
data/functionality.” ’020 patent at 1:47–49. Because
small screens “tend to need data and functionality divided
into many layers or views,” id. at 1:29–30, prior art inter-
faces required users to drill down through many layers to
get to desired data or functionality. Id. at 1:29–37. That
process could “seem slow, complex and difficult to learn,
particularly to novice users.” Id. at 1:45–46.
The disclosed invention improves the efficiency of us-
ing the electronic device by bringing together “a limited
list of common functions and commonly accessed stored
data,” which can be accessed directly from the main
menu. Id. at 2:55–59. Displaying selected data or func-
tions of interest in the summary window allows the user
to see the most relevant data or functions “without actual-
ly opening the application up.” Id. at 3:53–55. The speed
of a user’s navigation through various views and windows
can be improved because it “saves the user from navi-
gating to the required application, opening it up, and then
navigating within that application to enable the data of
interest to be seen or a function of interest to be activat-
ed.” Id. at 2:35–39. Rather than paging through multiple
screens of options, “only three steps may be needed from
start up to reaching the required data/functionality.” Id.
at 3:2–3. This language clearly indicates that the claims
are directed to an improvement in the functioning of
computers, particularly those with small screens.
Because we hold that the asserted claims are not di-
rected to an abstract idea, we do not proceed to the second
step of the inquiry. The claims are patent eligible under
§ 101.
CORE WIRELESS LICENSING v. LG ELECS., INC. 11
II. Anticipation
The Blanchard reference teaches a display screen for
mobile phones that “provides an arrangement for dynami-
cally varying how space on a small display is allocated for
presentation of various types of user information.”
J.A. 13097 at 1:53–57. It discloses hierarchical menu
screens displaying a series of selectable sub-level menu
choices through which a user can cycle. The display
changes dynamically as the user makes selections; for
example, selecting a function, such as “phone book,” will
display options related to that function, such as “add
entry.”
LG argues it established by clear and convincing evi-
dence that Blanchard discloses each element of the as-
serted claims. It first submits that Core Wireless based
its arguments distinguishing the asserted claims from
Blanchard during closing argument and post-trial briefing
on elements not recited by the asserted claims. It further
submits that, because it presented a prima facie case of
anticipation and Core Wireless failed to present any
affirmative evidence in rebuttal, it is entitled to judgment
as a matter of law that Blanchard anticipates the assert-
ed claims. We disagree.
A patent is presumed valid, and the burden of estab-
lishing invalidity of a claim rests on the party asserting
invalidity by clear and convincing evidence. 35 U.S.C.
§ 282; Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95
(2011). An alleged infringer asserting a defense of inva-
lidity also has “the initial burden of going forward with
evidence to support its invalidity allegation.” Titan Tire
Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1376
(Fed. Cir. 2009). Once that evidence has been presented,
the “burden of going forward shifts to the patentee to
present contrary evidence and argument.” Id. at 1376–77.
Ultimately, however, the outcome of an alleged infringer’s
invalidity defense at trial depends on whether the alleged
12 CORE WIRELESS LICENSING v. LG ELECS., INC.
infringer “has carried its burden of persuasion to prove by
clear and convincing evidence that the patent is invalid.”
Id. at 1377. Because the burden rests with the alleged
infringer to present clear and convincing evidence sup-
porting a finding of invalidity, granting judgment as a
matter of law for the party carrying the burden of proof is
generally “reserved for extreme cases,” such as when the
opposing party’s witness makes a key admission. 9B Fed.
Prac. & Proc. Civ. § 2535 (3d ed.); see Grey v. First Nat’l
Bank in Dall., 393 F.2d 371, 380 (5th Cir. 1968) (“[W]hen
the party moving for a directed verdict has such a burden,
the evidence to support the granting of the motion must
be so one-sided as to be of over-whelming effect.”).
This is not one such extreme case. While LG present-
ed the testimony of Dr. Rhyne, the only expert who testi-
fied regarding anticipation, Core Wireless cross-examined
Dr. Rhyne, illuminating for the jury reasons why
Dr. Rhyne’s opinion was incorrect. For example,
Dr. Rhyne testified that Blanchard discloses the “limited
list” of data and functions recited in the asserted claims
because Blanchard Figure 3 displays only three of the five
functions of the phone book application. But on cross-
examination, when asked if all five functions were “avail-
able through this menu,” Dr. Rhyne admitted that all five
functions of the phone book application were available
through Blanchard’s disclosed menus: “You can reach all
of them—you can bring them all to the face of the screen,
if that’s what you mean.” J.A. 10741. Viewing the evi-
dence in the light most favorable to the verdict, we cannot
say that this is a case in which the evidence points so
strongly and overwhelming in favor of LG that reasonable
jurors could not arrive at any contrary conclusion. A
reasonable jury could have heard the cross-examination of
Dr. Rhyne and concluded Blanchard did not disclose the
“limited list” limitation in the claims because a user could
access the additional functions in Blanchard by keying
down within the summary display window. Core Wireless
CORE WIRELESS LICENSING v. LG ELECS., INC. 13
had the right to choose to use its limited trial clock for
other purposes where it believed—perhaps at its own
risk—that LG’s evidence had been adequately impeached.
And the jury was entitled to evaluate Dr. Rhyne’s testi-
mony and determine whether LG clearly and convincingly
established that Blanchard anticipates the claims.
The district court, in denying LG’s motion for judg-
ment as a matter of law, did not hold that the presump-
tion of validity “saved” the claims in the face of
unrebutted evidence. The court merely made the unre-
markable observation that the jury was not required “to
give full credit and acceptance to the testimony of
Dr. Rhyne.” J.A. 17. We agree with the district court and
affirm its denial of LG’s motion for judgment as a matter
of law of anticipation.
III. Infringement
LG presents two noninfringement arguments on ap-
peal. First, LG argues the correct construction of “un-
launched state” is “not running,” rather than “not dis-
played” as the district court held, and the accused devices
do not infringe under its proposed construction. 4 Second,
LG argues that no reasonable jury could find that the
accused devices satisfy the “reached directly from the
[main] menu” limitations in the claims because the ac-
cused application summary window is reached from the
status bar, which is not part of the menu. We reject both
arguments.
“[T]he ultimate issue of the proper construction of a
claim should be treated as a question of law,” which we
review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
4 On appeal, LG does not dispute that under the
court’s construction of “un-launched state,” substantial
evidence supports the jury’s verdict that the accused
devices meet this limitation.
14 CORE WIRELESS LICENSING v. LG ELECS., INC.
135 S. Ct. 831, 838 (2015). Any subsidiary factual find-
ings related to claim construction are reviewed under the
clearly erroneous standard. Id. In construing the claims,
we consider “the words of the claims themselves, the
specification, the prosecution history, and if necessary,
any relevant extrinsic evidence.” Advanced Steel Recov-
ery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed.
Cir. 2015). “[W]hen the district court reviews only evi-
dence intrinsic to the patent (the patent claims and
specifications, along with the patent’s prosecution histo-
ry), the judge’s determination will amount solely to a
determination of law.” Teva Pharm. USA, Inc., 135 S. Ct.
at 841.
First, we consider the construction of “un-launched
state.” While this is a close case for which the intrinsic
evidence could plausibly be read to support either party,
we see no error in the district court’s construction of “un-
launched state” to mean “not displayed.” Such a construc-
tion encompasses both applications that are not running
at all and applications that are running, at least to some
extent, in the background of the electronic device. See
J.A. 10283 (Core Wireless’ expert testifying that an un-
launched application is “either not executing code or not
visible to the user”).
The stated focus of the invention is to “allow the user
to navigate quickly and efficiently to access data and
activate a desired function” on devices with small screens.
’020 patent at 1:26–29. The invention identifies as prob-
lematic the conventional user interfaces in which “a user
may need to scroll around and switch views many times to
find the right data/functionality.” Id. at 1:47–49. For
instance, the specification does not identify the memory
drain that running applications may have on the system
as a problem it aims to solve—it only concerns itself with
maximizing the benefit of the “common functions and
commonly accessed data” actually displayed to the user.
Id. at 2:26–30; see id. at 4:36–39 (“The mobile telephone
CORE WIRELESS LICENSING v. LG ELECS., INC. 15
may be able to learn what functionality and/or stored data
types are most likely to be of interest to a given user and
which should therefore be included in a summary view to
any given user.”).
The terms “display” and “launch” are used throughout
the specification to convey that a particular view is dis-
played to the user. The specification states the following
when describing the advantages in user navigation
achieved by the invention:
[A] user can get to the summary window in just
two steps—first, launch a main view which shows
various applications; then, launch the appropriate
summary window for the application of interest.
This is far faster and easier than conventional
navigation approaches. Once the summary win-
dow is launched, core data/functionality is dis-
played and can be accessed in more detail can
typically be reached simply by selecting that da-
ta/functionality.
Id. at 2:59–3:2 (emphases added). In this passage,
“launch” is used to describe what is displayed to the user
when they select various menu options, not to indicate
that an application is running.
This understanding is confirmed by the patents’ use of
the word “running.” While the specification uses the term
“display” throughout, it only uses the term “running” (or
any modification of the term) one time: “there is a com-
puter program which when running on a computing
device (such as a mobile telephone), enables the device to
operate in accordance with the above aspects of the inven-
tion. The program may be an operating system.” Id. at
2:40–44. Therefore, when the patent teaches that a user
“launch[es] a main view” or “launch[es] the appropriate
summary window,” the computer program or operating
system implementing the summary program is already
running. Id. at 2:59–3:2. Similarly, each patent only has
16 CORE WIRELESS LICENSING v. LG ELECS., INC.
one independent claim which uses the term “running,”
and it is used to describe the overall “computer program
product” that implements the claimed functionality, not a
device application. ’020 patent at 6:20–32 (claim 16); ’476
patent at 6:30–43 (claim 11). These claims further recite
an application “in an unlaunched state.” If the patentee
intended “unlaunched” to mean “not running,” it knew
how to express as much.
Figure 3, which is identical for both patents, further
confirms this construction of “un-launched state.” In
Figure 3, the summary window indicates that under the
“Messages” application there are “3 unread emails,” “2
new SMS” messages, and “1 Chat ongoing.” ’020 patent
at Fig. 3 (emphasis added). The use of the word “ongoing”
(as opposed to a word like “received”) indicates that, in at
least some embodiments of the invention, at least some
subset of processes of the Messages application are al-
ready running. The specification confirms that the appli-
cation summary window reflects information that is
something more than mere notifications from an applica-
tion: “App Snapshots are not intended to replace notifica-
tions, but to complement them by providing non-intrusive
reminders for the user, as well as rapid shortcuts to key
application functionality.” Id. at 4:32–35.
The specification also describes a preferred embodi-
ment in which “the constituency of the App Snapshot may
vary with the environment in which the mobile telephone
finds itself.” Id. at 4:47–49 (emphasis added). It explains
“if the telephone is Bluetooth enabled, then there may be
a Bluetooth application which has associated with it a
summary window which lists the other Bluetooth devices
in the vicinity.” Id. at 4:49–52. Moreover, claim 6 of the
’020 patent and claim 5 of the ’476 patent both require
that the data or functionality displayed “varies with the
environment of the device.” LG has not articulated how
an application with data in the application summary
window that varies as the location of the device changes
CORE WIRELESS LICENSING v. LG ELECS., INC. 17
can operate without having the application “running” in
some manner. While the full Bluetooth application may
not be “running,” at least some subset of that application’s
processes must be running in order to update the availa-
ble devices in the application summary window.
The Bluetooth embodiment and the Messages embod-
iment displayed in Figure 3 are consistent with Core
Wireless’ argument during the O2 Micro hearing that a
launched application is executing code and visible to the
user. An unlaunched application, therefore, is “either not
executing code or not visible to the user.” J.A. 10283
(emphases added). The specification does not teach that
the application summary window performs limited pro-
cesses on behalf of the unlaunched applications. LG’s
proposed construction of “un-launched” as “not running”
would impermissibly read these preferred embodiments
out of the claims.
LG argues that the specification uses “launch” and
“display” to express different ideas. For example, the
specification explains: “The App Snapshot can therefore
display data from an application and functions of that
application without actually opening the application up:
only once a user has selected an item in the App Snapshot
associated with a given application does that application
have to be opened.” ’020 patent at 3:53–58 (emphases
added). This passage does not contradict the district
court’s construction. The passage does not state that the
application summary window displays the application
without actually opening the application up. The specifi-
cation’s statement that the App Snapshot “display[s]”
data without the selected application being “opened” does
not, without more, indicate that a previously unopened
application was not running at least some subset of
processes. Similarly, the dissent’s interpretation assumes
that displaying an application necessarily requires dis-
play of particular data. Wallach Op. at 3–5. The specifi-
cation demonstrates this not to be true. When a user
18 CORE WIRELESS LICENSING v. LG ELECS., INC.
selects data from the summary window, e.g., a commonly
emailed contact, “the display then changes to a new email
form seeded with [the] email address and all the user
need do is input some body text and hit a ‘Do It’ button.”
’020 patent at 5:5–19. This is different from displaying an
email application without this pre-loaded data, which
does not “enable the selected data to be seen within the
respective application.” ’476 patent claim 1.
The patentee did not clearly and unmistakably dis-
claim or limit the construction of “un-launched state”
during prosecution, as LG argues. The doctrine of prose-
cution disclaimer precludes patentees from recapturing
the full scope of a claim term only when the patentee
clearly and unmistakably disavows a certain meaning in
order to obtain the patent. Mass. Inst. of Tech. v. Shire
Pharm., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). When
the alleged disclaimer is ambiguous or amenable to mul-
tiple reasonable interpretations, we decline to find prose-
cution disclaimer. Id.
The patentee’s statements during prosecution do not
amount to a clear and unmistakable disclaimer restricting
the meaning of “un-launched state” only to those applica-
tions that are not running any processes. During prose-
cution, the patentee distinguished the claims from prior
art U.S. Patent No. 6,781,611 (“Richard”). Richard teach-
es a method “for switching between multiple open win-
dows in multiple applications on a computer desktop.”
J.A. 14461 at 1:38–40. The examiner pointed to Richard
Figure 6, in which “the user has two applications, AppA
and AppB . . . open on a desktop,” the top window being
AppA. J.A. 14459, 14462 at 3:20–26. A plurality of
windows are open within AppB, and when the user clicks
and holds the arrow on the application button for AppB
on the taskbar, a pop-up menu appears, displaying the
three open windows within AppB. In distinguishing the
invention from Richard, the patentee stated that the main
menu of Richard is “a menu of open windows within a
CORE WIRELESS LICENSING v. LG ELECS., INC. 19
single application, i.e., a launched application. It follows
from the fact the windows are open within the application
that the application must be running and therefore has
been launched.” J.A. 12764 (emphases in original). This
statement is consistent with the district court’s construc-
tion. Both AppA and AppB in Richard Figure 6 are
displayed to the user. While AppA takes up most of the
display area in this figure, AppB is also displayed to the
user in the form of the application button on the taskbar.
Indeed, Richard specifically teaches that the arrow on the
application button for AppB “serves as a visual indicator
that there are a plurality of windows open in AppB.”
J.A. 14462 at 3:35–37 (emphasis added). Core Wireless
admits that an application that is displayed must be
running. Oral Arg. at 20:32–40. Because AppB in Rich-
ard Figure 6 is displayed and running, the patentee’s
statement during prosecution that AppB must be
“launched” is fully consistent with the construction that
“un-launched state” means “not displayed.”
Because the claim language, specification, and prose-
cution history all support the district court’s construction,
we agree with the district court that the correct construc-
tion of “un-launched state” is “not displayed.”
Second, substantial evidence supports the jury’s ver-
dict of infringement based on the “reached directly from
the [main] menu” claim limitation. LG argues no reason-
able jury could find the accused devices satisfy this limi-
tation because the evidence at trial established that the
status bar was distinct from a “main menu.” We do not
agree.
There is no dispute on appeal how the accused devices
work. The devices have a primary home screen display,
comprising a series of icons along the bottom of the dis-
play, corresponding to applications like Gmail and Phone.
The entire home screen display is the accused “main
menu.” Along the top of the home screen display, a status
20 CORE WIRELESS LICENSING v. LG ELECS., INC.
bar displays the time, battery status, signal strength, and
other data. The accused application summary window is
the LG devices’ notification shade, which the user access-
es by swiping down from the status bar.
The jury heard conflicting evidence regarding whether
the status bar is part of the accused “home screen.”
Dr. Rhyne testified that the status bar is “not part of the
home screen” because the home screen is the part of the
screen between the status bar at the top and the naviga-
tion bar at the bottom of the display. J.A. 10603–04. He
further testified that the user “can open [the notification
shade] up in almost any application,” not just the main
home screen view. J.A. 10604–05. Core Wireless’ in-
fringement expert agreed that a user can reach the notifi-
cation shade from the status bar while any application is
displayed in the central view. Core Wireless presented
evidence, however, that the status bar is part of the home
screen. Core Wireless’ expert, Dr. Zeger, acknowledged
that when an application is open and displayed, the user
does not reach the notification shade directly from the
main menu “because there was an intervening step” of
opening up the application from the main menu.
J.A. 10315. But he testified that when the main menu is
displayed and the user pulls down the notification shade,
the user reaches the accused application summary win-
dow directly from the main menu. Core Wireless also
presented LG’s user manual to the jury, which expressly
identifies the status bar as part of the home screen.
The parties’ dispute boils down to whether the status
bar is part of the accused “home screen.” This is a fact
question that we presume the jury resolved in favor of
Core Wireless, and substantial evidence supports the
jury’s finding. In the LG user manual, the status bar is
the first section of the view identified as the home screen.
The jury was also entitled to credit Dr. Zeger’s testimony
on this issue. Indeed, Dr. Rhyne admitted that if the
status bar is part of the home screen, the user can reach
CORE WIRELESS LICENSING v. LG ELECS., INC. 21
the accused application summary window directly from
the main menu. We conclude that substantial evidence
supports the jury’s finding of infringement.
CONCLUSION
For the foregoing reasons, we affirm the district
court’s denial of summary judgment that the claims are
ineligible under 35 U.S.C. § 101. We also affirm the
district court’s denial of judgment as a matter of law that
the claims are anticipated by Blanchard and the claims
are not infringed.
AFFIRMED
United States Court of Appeals
for the Federal Circuit
______________________
CORE WIRELESS LICENSING S.A.R.L.,
Plaintiff-Appellee
v.
LG ELECTRONICS, INC., LG ELECTRONICS
MOBILECOMM U.S.A., INC.,
Defendants-Appellants
______________________
2016-2684, 2017-1922
______________________
Appeals from the United States District Court for the
Eastern District of Texas in Nos. 2:14-cv-00911-JRG-RSP,
2:14-cv-00912-JRG-RSP, Judge J. Rodney Gilstrap.
______________________
WALLACH, Circuit Judge, concurring-in-part and dissent-
ing-in-part.
I agree with the majority that the U.S. District Court
for the Eastern District of Texas (“District Court”) did not
err either in determining that claims 11 and 13 of U.S.
Patent No. 8,434,020 (“the ’020 patent”) and claims 8−9 of
U.S. Patent No. 8,713,476 (“the ’476 patent”) (collectively,
the “Asserted Claims”) (together, the “Patents-in-Suit”)
are patent eligible or in construing the “reached directly”
claim limitation for purposes of its infringement and
anticipation analyses. See Core Wireless Licensing
S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-911-JRG, 2016 WL
4440255, at *1 (E.D. Tex. Aug. 23, 2016) (ruling on antici-
pation and infringement); Core Wireless Licensing
2 CORE WIRELESS LICENSING v. LG ELECS., INC.
S.A.R.L. v. LG Elecs., Inc., No. 2:14-cv-911-JRG-RSP
(E.D. Tex. Mar. 20, 2016) (J.A. 9555−62) (ruling on eligi-
bility). I disagree, however, with the majority’s ruling
affirming the District Court’s construction of the “un-
launched state” limitation. See ’476 patent col. 6 ll. 2−3;
’020 patent col. 5 l. 43. I would find the term “un-
launched state” to mean “not running,” as proposed by
Appellant LG Electronics, Inc. (“LG”), and remand the
case to the District Court for review of whether this
construction alters its findings on infringement and
anticipation. 1 I therefore respectfully dissent-in-part
from today’s judgment. I review the legal standard for
claim construction and then turn to my analysis.
I. Legal Standard
Claim construction focuses on the wording of the
claims, “read in view of the specification, of which they
are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc) (internal quotation marks and
citation omitted). Prosecution history may also be exam-
ined to supply additional context to support a claim term’s
intended meaning. See Home Diagnostics, Inc. v.
Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).
While courts may consider extrinsic evidence in claim
construction, “such evidence is generally of less signifi-
cance than the intrinsic record.” Wi-LAN, Inc. v. Apple
Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (citation omitted).
Extrinsic evidence may not be used “to contradict claim
meaning that is unambiguous in light of the intrinsic
evidence.” Phillips, 415 F.3d at 1324 (citation omitted).
The District Court did not analyze extrinsic evidence in
making its determination. See J.A. 10277−97. When the
district court reviews only evidence intrinsic to the pa-
1 Neither party argued that a different claim con-
struction would affect our analysis of eligibility. See
generally Appellant’s Br.; Appellee’s Br.
CORE WIRELESS LICENSING v. LG ELECS., INC. 3
tent, that determination will amount solely to a determi-
nation of law that we review de novo. See Teva Pharm.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
II. The District Court Erred in Its Claim Construction of
“Un-Launched State”
The District Court construed the term “un-launched
state” during a pretrial conference to mean “not dis-
played” and maintained that construction in its post-trial
denial of judgment as a matter of law. See Core Wireless,
2016 WL 4440255, at *4−5; J.A. 10297. LG argues that
the term “un-launched state” should mean “not running.”
Appellant’s Br. 30; see id. at 30−48. I agree with LG.
Consistent with claim construction principles, I look first
to the language of the claims, followed by the remainder
of the specification’s language and prosecution history.
See Phillips, 415 F.3d at 1315.
First, the claims state in part that: an application
summary “displays” certain data offered in applications;
each of the data is “selectable to launch the respective
application and enable the selected data to be seen”; and
the application summary is “displayed while the one or
more applications are in an un-launched state.” ’476
patent col. 5 l. 60−col. 6 l. 3 (claim 1). 2 “Display” is used
differently and independently from “launch” in the claims,
which indicates these terms have different meanings. In
addition, by separating “launch” and “enable the selected
data to be seen,” the claims contemplate a difference
between launching and displaying data. See Chi. Bd.
Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361,
1369 (Fed. Cir. 2012) (applying a “general presumption
2 Claim 1 of the ’020 patent is substantively similar
to the relevant portions of the ’476 patent and the specifi-
cations are effectively identical, so I refer only to claim 1
of the ’476 patent for ease of reference.
4 CORE WIRELESS LICENSING v. LG ELECS., INC.
that different [claim] terms have different meanings”).
Further, the claim language distinguishes between
“launch[ing] the respective application” itself, and “en-
ab[ling] the selected data . . . within” the application to be
seen. ’476 patent col. 5 l. 66−col. 6 l. 1 (emphasis added).
Such a distinction would be rendered meaningless if
launch were construed to mean “display.” See Merck &
Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed.
Cir. 2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not
do so.” (citation omitted)). Moreover, I do not understand
what “displaying” the application itself would mean in
this context, where the claim language more specifically
directs the invention to enable only certain “data” pre-
viewed in the application summary to be seen. See Inno-
va/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[W]hen an appli-
cant uses different terms in a claim it is permissible to
infer that he intended his choice of different terms to
reflect a differentiation in meaning of those terms.”).
Second, the specification uses the terms “launch” and
“display” distinctly. See ’476 patent col. 3 ll. 10–11 (“Once
the summary window is launched, core data/functionality
is displayed.”). This could either mean the terms are
distinct, or, as the majority finds, that launch is synony-
mous with display. See Maj. Op. at 14−17. As stated
previously, based on claim differentiation principles, I
find it more likely that “launch” is a first step of inde-
pendent meaning, and “display” is a step that comes
second, after the “summary window” has been launched.
Appellee Core Wireless Licensing S.A.R.L. (“Core Wire-
less”) contends that the statement “a user can . . . launch
a main view which shows various applications,” ’476
patent col. 3 ll. 5−7, supports its argument that “launch”
refers to granting “visual access,” because the language of
the specification uses the term “view,” Appellee’s Br. 21.
However, the term “main view” refers to and is synony-
CORE WIRELESS LICENSING v. LG ELECS., INC. 5
mous with the summary application window. See ’476
patent col. 3 ll. 5−7, 17−33; id. figs.1−3. Referring to this
particular page using the term “view” does not confer
additional meaning on the verb “launch.”
Additional language in the specification in support of
LG’s construction states that previously, users would
“locate,” “then start/open the required application,” “and
then may need to . . . cause the required stored data . . . to
be displayed.” Id. col. 1 ll. 51−55 (emphasis added).
Again, the specification contemplates display and opening
as two separate steps in the user’s process, which leads
me to the conclusion that “display” and “open” are not
synonymous, and that the drafters of the Patents-in-Suit
knew how to use the term “display” when conveying
visual access to an application’s contents. 3 I also note
that the specification explicitly defines the term “idle
screen” as “a display which is shown when the mobile
telephone is switched on but not in use,” id. col. 2
ll. 10−12, which indicates the drafters of the Patents-in-
Suit knew how to define a single term that contained two
separate meanings (here, one related to display, and one
related to operation), and believed such an explanation
would be necessary for terms that on their face did not
contain a dual meaning. For that reason, I am skeptical
of the majority’s understanding that the term “un-
launched” “encompasses both applications that are not
running at all and applications that are running, at least
3 For the same reason, I do not agree with the ma-
jority’s conclusion that certain passages in the specifica-
tion use “launch” to describe “what is displayed to the
user when they select various menu options.” Maj. Op. at
15 (citing ’020 patent col. 2 l. 59−col. 3 l. 2).
6 CORE WIRELESS LICENSING v. LG ELECS., INC.
to some extent, in the background of the electronic de-
vice.” 4 Maj. Op. at 14.
I also agree with LG’s contention that the specifica-
tion teaches the invention was directed to a problem in
line with its construction of the term “un-launched state,”
or, at least, that the problems in the field are inconclusive
to weigh in favor of either party’s proposed construction.
LG asserts that the invention is directed to saving “the
user from navigating to the required application, opening
it up, and then navigating within that application.”
Appellant’s Br. 32 (quoting ’476 patent col. 2 ll. 46−50).
Again, construction hinges on our understanding of the
term “open” in this phrase and whether it refers to run-
ning or displaying an application. No matter the con-
struction of launch though, the claimed invention seeks to
improve access to the large amount of information stored
in small computing devices. See, e.g., ’476 patent col. 2
l. 66−col. 3 l. 6 (discussing invention’s “advantages in ease
and speed of navigation, particularly on small screen
devices”). It seems to me that the default state of the
applications storing this information when a user navi-
gates through the claimed summary application menu
does not affect the utility of the claimed invention.
4 While the majority additionally supports its ar-
gument by referring to the single use of the term “run-
ning” in the specification, see Maj. Op. at 15−16 (quoting
’020 patent col. 2 ll. 40−44 (“[T]here is a computer pro-
gram which when running on a computing device . . . .”)),
I note that neither party made arguments with respect to
this language, and it is not clear to me from the record
that “running” when referring to the computer program
itself equates to use of the term as applied to applications
within the device.
CORE WIRELESS LICENSING v. LG ELECS., INC. 7
The majority identifies the stated focus of the inven-
tions as to “allow the user to navigate quickly and effi-
ciently to access data and activate a desired function” on
small screens. Maj. Op. at 14 (quoting ’020 patent col. 1
ll. 26−29). Therefore, it finds the absence of an explicitly
stated goal such as “memory drain,” a problem which
appears to be of the majority’s own creation, to be instruc-
tive in its construction of the term “un-launched,” because
the invention “only concerns itself with maximizing the
benefit of the ‘common functions and commonly accessed
data’ actually displayed to the user.” Id. at 15 (quoting
’020 patent col. 4 ll. 36−39). In our claim construction
analysis, we look not to what is absent from the specifica-
tion or what could have been written, but rather to what
is included. See Merck & Co. v. Teva Pharm. USA, Inc.,
347 F.3d 1367, 1371 (Fed. Cir. 2003) (“A fundamental rule
of claim construction is that the terms in a patent docu-
ment are construed with the meaning with which they are
presented in the patent document. Thus claims must be
construed so as to be consistent with the specifica-
tion . . . .” (emphasis added) (citations omitted)). Here, as
mentioned above, the focus of the invention identified by
the majority can support either party’s construction of the
disputed term. The use of an application summary menu
to congregate data from myriad applications on a small
screen computing device benefits users in the manner
stated, regardless of whether the applications are running
in the background. Moreover, in other parts of the speci-
fication, the invention is directed towards “effectively
enabling the user to understand th[e device’s] changing
internal state” through offering on the application menu
page a list of “common functions offered within an appli-
cation and/or . . . data stored in that application.” ’476
patent col. 2 ll. 22−24, 34−36. Here again, enabling a user
to better understand options offered by applications and
data stored within them are goals that are successfully
8 CORE WIRELESS LICENSING v. LG ELECS., INC.
achieved with applications that are not running until
selected from the main menu.
Third, the prosecution history further supports LG’s
proffered construction. Even if Core Wireless did not
disclaim its professed interpretation that “launch” means
“display,” 5 I would nevertheless find LG’s interpretation
of “un-launched” comports more closely with the overall
language of the Patents-in-Suit and prosecution history.
See Phillips, 415 F.3d at 1316. Indeed, during prosecu-
tion, Core Wireless distinguished the Asserted Claims
from those in the prior art because, unlike the prior art,
its claims did not “only ever display[]” the summary
application menu “within a running instance of the pro-
gram, i.e., only when the program is in a launched state.”
J.A. 12764 (emphasis added). Thus, Core Wireless used
the term “launch” to mean running, not merely displayed.
See J.A. 12765 (stating, in another portion of Core Wire-
less’s amendment, that 1) the “underlying purpose” of the
claimed invention is that it overcomes the prior art in
which information about applications in the summary
application menu “is not displayed until after the applica-
tion is already running” and 2) the prior art “relate[s] to
running applications and combining them does nothing to
satisfy the requirement of the present claims that the
application summary window is displayed without
launching the application” (emphasis added)).
The majority adopts Core Wireless’s argument that
construing “un-launched” to mean “not running” would
5 Both the majority and the District Court interpret
LG’s arguments as prosecution disclaimer arguments and
determine that LG does not meet the high bar to prove
that Core Wireless “clearly disavowed claim scope during
prosecution.” Core Wireless, 2016 WL 4440255, at *4; see
Maj. Op. at 18–19.
CORE WIRELESS LICENSING v. LG ELECS., INC. 9
exclude certain preferred embodiments in the specifica-
tion, see Maj. Op. at 16−17; see also Appellee’s Br. 28−29,
contrary to our court’s instruction that a construction
“that excludes a preferred embodiment from the scope of
the claim is rarely, if ever, correct,” MBO Labs., Inc. v.
Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed. Cir.
2007) (internal quotation marks and citation omitted).
Specifically, Figure 3 illustrates an application window
that indicates there is an ongoing chat not seen on the
screen. See ’020 patent fig.3; ’476 patent fig.3. The
majority states that “use of the word ‘ongoing’ (as opposed
to a word like ‘received’) indicates that, in at least some
embodiments of the invention, at least some subset of
processes of the Messages application are already run-
ning.” Maj. Op. at 16. Yet Core Wireless has not present-
ed evidence, in the form of expert testimony or otherwise,
to suggest that the display in the application menu of new
messages or the use of the term ongoing in the summary
menu would be understood by a person having ordinary
skill in the art to indicate the underlying application is
running. Core Wireless presents only attorney argument,
not evidence. See Gemtron Corp. v. Saint-Gobain Corp.,
572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney
argument . . . is not evidence and cannot re-
but . . . admitted evidence.” (citation omitted)); Appellee’s
Br. 28−29. Moreover, I do not believe construing “un-
launched” to mean “not running” would be inconsistent
with this preferred embodiment, since the requirements
of claim 1 only state that “one or more applications” are in
an un-launched state. ’476 patent col. 6 ll. 2−3; see ’020
patent col. 5 ll. 35, 43 (requiring “at least a first applica-
tion” that is “in an un-launched state”). Therefore, even if
“ongoing” were to imply a running application, the appli-
cation menu display of messages from a non-running
10 CORE WIRELESS LICENSING v. LG ELECS., INC.
message application would still satisfy the requirements
of claim 1 of the Patents-in-Suit. 6
Accordingly, I would reverse the District Court’s claim
construction of “un-launched state” and construe the term
to mean “not running.” Given this claim construction, I
would remand for further findings on infringement and
anticipation. I respectfully dissent.
6 I would not read lines in the specification stating
that “App Snapshots are not intended to replace notifica-
tions, but to complement them by providing non-intrusive
reminders for the user” to support “launch” meaning
“display,” as the majority contends. See Maj. Op. at 16;
’476 patent col. 4 ll. 43−46; ’020 patent col. 4 ll. 32−35.
Such language could just as easily be understood to refer
to a summary application menu’s presentation of infor-
mation from applications that are not currently running.