Facebook, Inc. v. Pragmatus Av, LLC , 582 F. App'x 864 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FACEBOOK, INC.,
Appellant,
v.
PRAGMATUS AV, LLC,
Appellee.
______________________
2013-1350
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,715.
----------------------
FACEBOOK, INC.,
Appellant,
v.
PRAGMATUS AV, LLC,
Appellee.
______________________
2013-1351
______________________
2 FACEBOOK, INC. v. PRAGMATUS AV, LLC
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,716.
______________________
Decided: September 11, 2014
______________________
HEIDI L. KEEFE, Cooley LLP, of Palo Alto, California,
argued for appellant. With her on the brief were MARK R.
WEINSTEIN and REUBEN H. CHEN; and SCOTT A. COLE, of
Reston, Virginia.
TILLMAN J. BRECKENRIDGE, Reed Smith LLP, of Wash-
ington, DC, argued for appellee. With him on the brief
was GERARD M. DONOVAN.
______________________
Before MOORE, O’MALLEY, and TARANTO, Circuit Judges.
MOORE, Circuit Judge.
Facebook, Inc. appeals from the Patent Trial and Ap-
peal Board’s decisions in two related inter partes reexam-
inations affirming the examiner’s confirmation of all
claims of Pragmatus AV, LLC’s U.S. Patent Nos.
7,421,470 and 7,433,921. Because the Board erred in
construing the relevant claim limitation, we vacate and
remand.
BACKGROUND
Facebook requested, and the Patent Office initiated,
inter partes reexaminations of the ’470 and ’921 patents.
The patents share the same parent, nearly identical
specifications, and similar claims (the ’470 patent recites
method claims and the ’921 patent recites system claims).
The patents are directed to facilitating real-time commu-
nications between users over computer networks. E.g.,
’470 patent, Abstract. All of the independent claims are
FACEBOOK, INC. v. PRAGMATUS AV, LLC 3
directed to providing a first user with a list of identifiers
of other users, allowing the first user to select an identifi-
er of a second user from the list, and establishing commu-
nications between the two users using the addressing
information of the second user’s communication device.
Id. claims 1, 16, 29, 43; ’921 patent claims 1, 13, 25.
Relevant to this appeal, each claim requires maintaining
associations between users and the addressing infor-
mation of the devices used by those users. For example,
claim 1 of the ’470 patent, which is representative, recites:
A method comprising:
maintaining a first association between a first us-
er and corresponding addressing information of a
first communication device used by the first user
to log in;
maintaining a second association between a sec-
ond user and corresponding addressing infor-
mation of a second communication device used by
the second user to log in . . . .
This appeal centers on the construction of the phrase
“addressing information of [the] device” that is common to
the two “maintaining” limitations reproduced above.
Facebook’s requests for inter partes reexamination
proposed various anticipation and obviousness rejections
of the claims, each relying on at least one of three prior
art references—Bowen, Bowen II, and Lichty—as the
primary reference. 1 Bowen and Bowen II are Com-
puServe user guides and Lichty is an America Online user
guide. The examiner determined that all claims were
1 Facebook proposed an additional rejection of cer-
tain claims using a fourth reference, Campbell, as the
primary reference, but does not appeal the Board’s con-
firmation of the claims over this proposed rejection.
4 FACEBOOK, INC. v. PRAGMATUS AV, LLC
patentable because Bowen, Bowen II, and Lichty do not
disclose the “maintaining a first association” limitation.
In particular, the examiner determined that the refer-
ences do not disclose the claimed “addressing information
of a first communication device” that is a part of the first
association.
The Board affirmed the examiner’s confirmation of all
claims. Facebook, Inc. v. Pragmatus AV, LLC, No. 2012-
010460, 2013 WL 5402217 (Patent Tr. & App. Bd. Jan. 11,
2013) (’470 patent); Facebook, Inc. v. Pragmatus AV, LLC,
No. 2012-010461, 2013 WL 5402218 (Patent Tr. & App.
Bd. Jan. 11, 2013) (’921 patent). 2 The Board construed
the phrase “addressing information of [the] device” as “the
physical location of a communication device . . . .” Bd. Op.
at *5. Based on this construction, it found that none of
the three references disclosed the “maintaining a first
association” limitation because it determined that the
alleged “addressing information” in each of the cited
references was not a “physical location” of the first com-
munication device. Bd. Op. at *6–11. Facebook appeals.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I. Claim Construction
When the Board reexamines an unexpired patent, it
construes the claims under the broadest reasonable
interpretation consistent with the specification. In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007). When the Board reexamines an expired
patent, it construes the claims in accordance with the
claim construction standard set forth in Phillips v. AWH
2 “Bd. Op.” citations herein are to the ’470 patent
decision.
FACEBOOK, INC. v. PRAGMATUS AV, LLC 5
Corp., 415 F.3d 1303 (Fed. Cir. 2005). In re Rambus, Inc.,
753 F.3d 1253, 1256 (Fed. Cir. 2014).
These reexamination appeals come to us in an inter-
esting procedural posture. The ’470 and ’921 patents had
not expired at the time of the Board’s decisions, but are
both expired now. Because the patents were then unex-
pired, the Board construed the claims in accordance with
the broadest reasonable interpretation standard. Bd. Op.
at *5. We review the Board’s claim construction de novo.
Rambus Inc. v. Rea, 731 F.3d 1248, 1252 (Fed. Cir. 2013).
We hold that the Board erred by unduly limiting the
broadest reasonable interpretation of “addressing infor-
mation of [the] device” to the “physical location” of the
device. As an initial matter, it is not clear what the Board
meant by a “physical location.” It is not clear whether
this requirement in the Board’s construction refers to a
geographical location, a location on the network, or some
other location. We hold, however, that “physical location”
unduly narrows the claim term “addressing information of
[the] device,” because nothing in the plain language of the
claims or in the specification or prosecution history re-
quires such a limitation.
We start with the language of the claims themselves.
Phillips, 415 F.3d at 1314. The plain meaning of “ad-
dressing information of [the] device” is “information
specific to the device that enables communication with the
device.” The parties generally agree that the plain mean-
ing of the first half of the limitation at issue—“addressing
information”—is information that enables communication
with the device. Pragmatus argued to the Board that
“addressing information can be expressed in many forms.
And really need only allow the system to direct infor-
mation to the destination computer. That is what the
phrase, addressing information means.” J.A. 6905.
Similarly, Facebook argues on appeal that “‘addressing
6 FACEBOOK, INC. v. PRAGMATUS AV, LLC
information’ as used in the claims simply means infor-
mation that the system uses to send data to the communi-
cations device used to log in.” Appellant’s Br. at 14–15.
Moreover, the claims require that the “addressing infor-
mation” enables communication with the device because
each independent claim recites “using the addressing
information of the second communication device to allow
communication between the first and second users.” E.g.,
’470 patent claim 1.
The remaining portion the claim term, “of [the] de-
vice,” does not require the claimed “addressing infor-
mation” to be a physical location. The plain meaning of
“of [the] device” is that the “addressing information” is
specific to the device. Nothing about the phrase imparts a
physical location requirement. The use of the phrase “of
[the] device” in the claims makes this clear. For example,
claim 1 of the ’470 patent recites:
maintaining a first association between a first us-
er and corresponding addressing information of a
first communication device used by the first user
to log in;
maintaining a second association between a sec-
ond user and corresponding addressing infor-
mation of a second communication device used by
the second user to log in . . . .
Id. Viewing these two limitations together, “of the first
communication device” and “of the second communication
device” differentiate the two pieces of “addressing infor-
mation.” In particular, the “addressing information” in
the first limitation is specific to the first communication
device used by the first user to log in, whereas the “ad-
dressing information” in the second limitation is specific
to the second communication device used by the second
user to log in. Thus, the plain meaning of “addressing
FACEBOOK, INC. v. PRAGMATUS AV, LLC 7
information of [the] device” is “information specific to the
device that enables communication with the device.”
Neither the phrase “of [the] device” nor the corre-
sponding construction of “information specific to the
device” requires that the addressing information be
permanently associated with the device. For example,
certain addressing information, such as a dynamic IP
address, 3 may be temporarily assigned to a particular
device when the device connects to a network. If the
device disconnects and then later reconnects to the net-
work, a second dynamic IP address is assigned to the
device which may be different than the first dynamic IP
address. Oral Argument at 27:45–28:22, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
13-1350.mp3. These dynamic IP addresses are still
“specific to the device” while the device is logged in to the
network. The specifications of the patents at issue ex-
pressly contemplate using mobile devices, which could
access a network at different entry points and thus be
assigned different IP addresses, ’470 patent col. 15 ll. 10–
14, col. 18 ll. 22–37, and explain that certain embodi-
ments use “TCP/IP network protocols,” id. col. 20 ll. 17–
20. This is also supported by the claims themselves,
which recite “using the addressing information . . . to
allow communication between the first and second users”
“if the second user is logged in.” E.g., id. claim 1.
The remaining claim language does not limit the “ad-
dressing information of [the] device” beyond its plain
meaning. The claims require that the “associations”
between the first and second users and the corresponding
addressing information must be “dynamically changeable
3 The parties agree that IP addresses (of which dy-
namic IP addresses are a subset) are addressing infor-
mation. Appellant’s Br. at 15–16; Appellee’s Br. at 20.
8 FACEBOOK, INC. v. PRAGMATUS AV, LLC
. . . so that the first and second users, if logged in, can be
found no matter where they are located.” E.g., id. How-
ever, requiring the associations to be dynamic so that
users can be found “no matter where they are located”
does not require that the addressing information included
in that association is, itself, a physical location.
Of course, under Phillips, the claim terms must be
construed in light of the specification and the prosecution
history, and not in isolation. 415 F.3d at 1313. We only
depart from the plain meaning where the patentee has
acted as his own lexicographer by clearly setting forth a
definition of the disputed claim term or where he has
disavowed the full scope of the claim term using clear and
unmistakable statements of disclaimer. GE Lighting
Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
(Fed. Cir. 2014).
Nothing in the specifications or prosecution histories
of the patents at issue rises to the “exacting” level of
lexicography or disavowal. See id. Nowhere does the
patentee define the term “addressing information” (let
alone the more complete “addressing information of [the]
device”) or otherwise disclaim its full scope. To the con-
trary, the specifications support the plain-meaning con-
struction. For example, the Abstract and Summary of the
Invention of both patents describe retrieving addressing
information of a second user so that a connection between
a first and second user on their respective communication
devices can be established. E.g., ’470 patent, Abstract,
col. 6, ll. 1–13. They do not limit the recited addressing
information to a physical location or impose any other
requirement beyond the plain meaning of the phrase.
In fact, except for the claims, the patent specifications
do not mention the phrase, “addressing information of
[the] device.” They describe “addressing information of a .
. . user,” such as an e-mail address. E.g., id. col. 6 ll. 8–9,
FACEBOOK, INC. v. PRAGMATUS AV, LLC 9
col. 19 ll. 54–59, col. 22 ll. 2–8. As demonstrated by the
exemplar e-mail address, the disclosed addressing infor-
mation “of a user” is not the physical location of that user,
or of that user’s device.
The patent specifications do describe “location infor-
mation” of a device that is stored as part of a “service
record.” E.g., id. col. 19 ll. 59–65, col. 21 ll. 7–17, col. 22
ll. 9–16. These portions of the specifications, however, do
not support limiting “addressing information of [the]
device” to a “physical location.” They do not describe the
disclosed “location information” as “addressing infor-
mation.” Thus, even if the specification somehow limited
the disclosed “location information” to a “physical loca-
tion,” there is nothing in the specification that requires
the claimed “addressing information” to be of identical
scope.
We thus conclude that the correct construction of “ad-
dressing information of [the] device” is “information
specific to the device that enables communication with the
device.” We reach this conclusion after applying the
Phillips claim construction framework, as the patents are
now expired. We note that the Board’s construction—
limited to the physical location of the device—is narrower
than ours. The broadest reasonable interpretation of a
claim term may be the same as or broader than the con-
struction of a term under the Phillips standard. But it
cannot be narrower. Thus, the Board’s construction
cannot be the broadest reasonable one.
II. Validity
Because the Board analyzed the claims and the prior
art under an erroneous construction, we vacate the
Board’s decision and remand for the Patent Office to
assess the validity of these claims under the correct
construction. The record does not include the factual
findings necessary for us to assess validity in the first
10 FACEBOOK, INC. v. PRAGMATUS AV, LLC
instance. For example, the Board’s analyses of Bowen,
Bowen II, and Lichty focus primarily on whether those
references disclose maintaining associations of “address-
ing information” under the Board’s construction requiring
a physical location. Similarly, the examiner did not
perform an element-by-element analysis of what each
reference disclosed because the examiner determined in
the first office action that the claims were patentable
based on the “maintaining a first association” limitations,
making it unnecessary to determine whether the refer-
ences disclosed the remaining limitations.
We do not agree with Facebook that we ought to infer
the presence of the remaining limitations in the refer-
ences based on the examiner’s findings in the Orders
granting the requests for inter partes reexamination. In
those Orders, the examiner was determining whether
there was a substantial new question of patentability
with regard to the claims at issue; the examiner was not
determining whether the references disclosed or suggest-
ed each claimed limitation. See, e.g., J.A. 6623–24, 6634.
The examiner made certain limited findings in the Order
about what Bowen disclosed. J.A. 6623. However, these
findings were made to support the examiner’s ultimate
conclusion that Bowen was “important in deciding the
patentability” of the claims at issue; they were not a part
of an element-by-element invalidity analysis. Id. Thus,
to the extent the examiner on remand determines that
one or more of the prior art references disclose the “main-
taining a first association” limitation (we take no position
on this point), the examiner will also have to address, in
the first instance, whether the prior art discloses the
remaining limitations.
FACEBOOK, INC. v. PRAGMATUS AV, LLC 11
CONCLUSION
Because the Board erred in construing “addressing in-
formation of [the] device,” as recited in each independent
claim, we vacate and remand.
VACATED AND REMANDED