Case: 20-1573 Document: 96 Page: 1 Filed: 06/03/2021
United States Court of Appeals
for the Federal Circuit
______________________
SPEEDTRACK, INC.,
Plaintiff-Appellant
v.
AMAZON.COM, INC., DELL, INC., BESTBUY.COM,
LLC, OFFICEMAX, INC., MACY’S, INC.,
MACYS.COM, LLC, OVERSTOCK.COM, INC.,
RECREATIONAL EQUIPMENT, INC., IMEDIA
BRANDS, INC., FKA VALUE VISION
INTERNATIONAL, INC., DBA SHOPNBC.COM,
B&H FOTO & ELECTRONICS CORP.,
Defendants-Cross-Appellants
HP INC., FKA HEWLETT-PACKARD COMPANY,
J&R ELECTRONICS, INC., NA TECH DIRECT, INC.,
POCAHONTAS CORP, SYX NORTH AMERICAN
TECH HOLDINGS LLC, NA TECH COMPUTER
SUPPLIES INC., BARNESANDNOBLE.COM, LLC,
BARNESANDNOBLE.COM, INC., SYSTEMAX, INC.,
Defendants
______________________
2020-1573, 2020-1660
______________________
Appeals from the United States District Court for the
Northern District of California in No. 4:09-cv-04479-JSW,
Judge Jeffrey S. White.
______________________
Case: 20-1573 Document: 96 Page: 2 Filed: 06/03/2021
2 SPEEDTRACK, INC. v. AMAZON.COM, INC.
Decided: June 3, 2021
______________________
ALAN PETER BLOCK, McKool Smith Hennigan, P.C., Los
Angeles, CA, argued for plaintiff-appellant. Also repre-
sented by JOHN BRUCE CAMPBELL, JAMES ELROY QUIGLEY,
McKool Smith, P.C., Austin, TX.
CARTER GLASGOW PHILLIPS, Sidley Austin LLP, Wash-
ington, DC, argued for all defendants-cross-appellants. De-
fendants-cross-appellants Amazon.com, Inc., Dell, Inc.,
BestBuy.com, LLC also represented by RICHARD ALAN
CEDEROTH, ROBERT N. HOCHMAN, NATHANIEL C. LOVE, Chi-
cago, IL. Defendant-cross-appellant Amazon.com, Inc. also
represented by JEFFREY H. DEAN, Amzaon.com, Inc., Seat-
tle, WA.
MICHAEL BERTA, Arnold & Porter Kaye Scholer LLP,
San Francisco, CA, for defendants-cross-appellants Office-
Max, Inc., Macy’s, Inc., Macys.com, LLC, Overstock.com,
Inc., Recreational Equipment, Inc., iMedia Brands, Inc.,
B&H Foto & Electronics Corp. Also represented by RYAN
CASAMIQUELA.
______________________
Before PROST*, BRYSON, and REYNA, Circuit Judges.
PROST, Circuit Judge.
SpeedTrack, Inc. (“SpeedTrack”) appeals the United
States District Court for the Northern District of Califor-
nia’s final judgment of noninfringement, which hinged on
the court’s claim construction. We affirm.
BACKGROUND
I
SpeedTrack owns
U.S. Patent No. 5,544,360 (“the
’360 patent”), which discloses a “computer filing system for
________________________________
* Sharon Prost vacated the position of Chief Judge on
May 21, 2021.
Case: 20-1573 Document: 96 Page: 3 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 3
accessing files and data according to user-designated crite-
ria.” ’360 patent Abstract. 1 The patent explains that prior-
art systems “employ a hierarchical filing structure.”
Id. at
col. 1 ll. 28–29. Those systems “emulate[] commonly[ ]used
paper filing systems” in that they “organize[] data into files
(analogous to papers in a paper filing system) and directo-
ries (analogous to file folders and hanging files).”
Id. at
col. 1 ll. 29–41; see
id. Fig. 1. According to the patent, such
systems could “become[] very cumbersome” when “the
number of files becomes large, or if the file categories are
not well-defined.”
Id. at col. 2 ll. 6–8. For example, “a doc-
ument may logically belong within many different folders.”
Id. at col. 2 ll. 20–21.
This problem had prior-art solutions. But according to
the ’360 patent, those presented additional drawbacks.
Some prior-art systems enabled a user to “search for files
by file word content,”
id. at col. 2 ll. 54–64, but this method
was subject to errors like mistyping search queries,
id. at
col. 3 ll. 20–25. Others permitted searching “relational da-
tabases,” but these were “usually restricted in two ways: by
the field of each data element and by the content of each
field.”
Id. at col. 3 ll. 35–45. The ’360 patent, by contrast,
discloses a method that uses “hybrid” folders, which “con-
tain those files whose content overlaps more than one phys-
ical directory.”
Id. at col. 2 ll. 40–42; see
id. Fig. 2.
According to the patent, this system “allows total freedom
from the restrictions imposed by hierarchical and other
1 The ’360 patent, entitled “Method for Accessing
Computer Files and Data, Using Linked Categories As-
signed to Each Data File Record on Entry of the Data File
Record,” issued on August 6, 1996. We assume general fa-
miliarity with its subject matter, which we addressed pre-
viously in SpeedTrack, Inc. v. Endeca Techs., Inc., 524 F.
App’x 651 (Fed. Cir. 2013), and SpeedTrack, Inc. v. Off. De-
pot, Inc.,
791 F.3d 1317 (Fed. Cir. 2015).
Case: 20-1573 Document: 96 Page: 4 Filed: 06/03/2021
4 SPEEDTRACK, INC. v. AMAZON.COM, INC.
present day computer filing systems.”
Id. at col. 3
ll. 63–65.
Representative claim 1 recites a three-step method.
First, a “category description table” containing “category
descriptions” is created. Relevant to this appeal, the cate-
gory descriptions “hav[e] no predefined hierarchical rela-
tionship with such list or each other” (the “hierarchical
limitation”). 2 Second, a “file information directory” is cre-
ated as the category descriptions are associated with files.
Third, a “search filter” is created, which enables searching
for files using their associated category descriptions. The
claim recites:
1. A method for accessing files in a data storage sys-
tem of a computer system having means for read-
ing and writing data from the data storage system,
displaying information, and accepting user input,
the method comprising the steps of:
(a) initially creating in the computer system a cat-
egory description table containing a plurality of
category descriptions, each category description
comprising a descriptive name, the category de-
scriptions having no predefined hierarchical rela-
tionship with such list or each other;
(b) thereafter creating in the computer system a file
information directory comprising at least one entry
corresponding to a file on the data storage system,
each entry comprising at least a unique file identi-
fier for the corresponding file, and a set of category
descriptions selected from the category description
table; and
2 Based on the parties’ consensus, “such list” refers
“to the lists or arrays in the category description table.”
J.A. 22 & n.1.
Case: 20-1573 Document: 96 Page: 5 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 5
(c) thereafter creating in the computer system a
search filter comprising a set of category descrip-
tions, wherein for each category description in the
search filter there is guaranteed to be at least one
entry in the file information directory having a set
of category descriptions matching the set of cate-
gory descriptions of the search filter.
Id. at claim 1 (emphasis added).
An example embodiment of a search filter is the virtual
“file clerk” of Figure 5, which lists category descrip-
tions (56) under headings called category types (54).
Id. Fig. 5. To find a desired file, the user “simply chooses
the [category descriptions] in random order from pick lists,
making mistyping impossible.”
Id. at col. 10 ll. 26–27.
“[A]s the user builds the search filter definition, categories
[that] would find no data are automatically excluded as
pick list possibilities.”
Id. at col. 10 ll. 27–37; see also
id. at
col. 10 ll. 46–53. This “ensur[es] that the user defines a fil-
ter [that] will always find at least one file, thus avoiding
wasting time in searching for data that cannot be
Case: 20-1573 Document: 96 Page: 6 Filed: 06/03/2021
6 SPEEDTRACK, INC. v. AMAZON.COM, INC.
matched.”
Id. at col. 10 ll. 21–24. And although the cate-
gory descriptions appear under “category type” headings,
“the column position of a category is not significant.”
Id. at
col. 8 ll. 26–29 (“Columns are used for the convenience of
the user in finding relevant categories and for no other rea-
son.”).
II
In September of 2009, SpeedTrack sued various retail
website operators, alleging infringement of the ’360 pa-
tent. 3 The district court construed the hierarchical limita-
tion on November 8, 2019. It adopted SpeedTrack’s
proposed construction:
The category descriptions have no predefined hier-
archical relationship. A hierarchical relationship
is a relationship that pertains to hierarchy. A hi-
erarchy is a structure in which components are
ranked into levels of subordination; each compo-
nent has zero, one, or more subordinates; and no
component has more than one superordinate com-
ponent.
J.A. 4; see SpeedTrack, Inc. v. Amazon.com, Inc., No. 4:09-
CV-04479,
2019 WL 5864630, at *6 (N.D. Cal. Nov. 8, 2019)
(“Initial Order”). This parallels the construction adopted
in one of SpeedTrack’s prior infringement suits (the “Wal-
Mart construction”). Initial Order,
2019 WL 5864630,
at *4; see SpeedTrack, Inc. v. Wal-Mart Stores, Inc., No.
C 06-7336,
2008 WL 2491701, at *9 (N.D. Cal. June 19,
2008). Along the way, the district court relied in part on
“disclaimers made during prosecution.” Initial Order,
3 Including Cross-Appellants: Amazon.com, Inc.,
Dell, Inc., BestBuy.com, LLC, OfficeMax, Inc., Macy’s, Inc.,
Macys.com, LLC, Overstock.com, Inc., Recreational Equip-
ment, Inc., iMedia Brands, Inc., and B&H Foto & Electron-
ics Corp.
Case: 20-1573 Document: 96 Page: 7 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 7
2019 WL 5864630, at *4. The court rejected Cross-Appel-
lants’ proposed construction, which consisted of the first
two sentences of the Wal-Mart construction and a further
requirement that “[a] data field and its associated values
have a predefined hierarchical relationship.”
Id. at *3.
Among other reasons, the district court explained that the
terms “field” and “value” were “likely to confuse the jury.”
Id. at *5.
SpeedTrack subsequently moved to (1) clarify the dis-
trict court’s construction regarding prosecution-history dis-
claimer, (2) preclude Cross-Appellants from introducing
arguments based on prosecution-history disclaimer to the
jury, and (3) strike portions of Cross-Appellants’ nonin-
fringement contentions regarding the same. J.A. 6. On
February 26, 2020, the district court issued a second claim-
construction order clarifying its prior construction.
J.A. 4–16; cf. 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 regarding the scope
of a claim term, it is the court’s duty to resolve it.”). The
court retained the construction presented in its initial or-
der but appended the following clarification:
Category descriptions based on predefined hierar-
chical field-and-value relationships are disclaimed.
“Predefined” means that a field is defined as a first
step and a value associated with data files is en-
tered into the field as a second step. “Hierarchical
relationship” has the meaning stated above. A field
and value are ranked into levels of subordination if
the field is a higher-order description that restricts
the possible meaning of the value, such that the
value must refer to the field. To be hierarchical,
each field must have zero, one, or more associated
values, and each value must have at most one as-
sociated field.
Case: 20-1573 Document: 96 Page: 8 Filed: 06/03/2021
8 SPEEDTRACK, INC. v. AMAZON.COM, INC.
J.A. 15. The court noted also that, “[a]s used in the con-
struction, the terms ‘field’ and ‘value’ mean nothing more
complicated than ‘a category’ and ‘an example of that cate-
gory’ (e.g., ‘language’ and ‘French’).” J.A. 15. In support of
its clarified construction, the court analyzed SpeedTrack’s
prosecution statements, ultimately concluding that “[t]he
prosecution history demonstrates clear and unambiguous
disavowal of category descriptions based on hierarchical
field-and-value systems.” J.A. 10.
SpeedTrack then stipulated to noninfringement.
J.A. 4217 (“[Cross-Appellants’] accused products and ser-
vices use field-and-value relationships, as those terms are
used in the Court’s modified construction.”). The district
court entered final judgment of noninfringement. J.A. 3.
SpeedTrack timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
DISCUSSION
It is undisputed that Cross-Appellants do not infringe
under the district court’s clarified construction. Therefore,
we need only decide whether that construction is correct.
We conclude that it is.
The words of a claim “are generally given their ordi-
nary and customary meaning,” which is “the meaning that
the term would have to a person of ordinary skill in the
art.” Phillips v. AWH Corp.,
415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc). Claim terms “must be read in
view of the specification.”
Id. at 1315. And “the prosecu-
tion history can often inform the meaning of the claim lan-
guage by demonstrating how the inventor understood the
invention and whether the inventor limited the invention
in the course of prosecution, making the claim scope nar-
rower than it would otherwise be.”
Id. at 1317. “A patentee
may, through a clear and unmistakable disavowal in the
prosecution history, surrender certain claim scope to which
he would otherwise have an exclusive right by virtue of the
claim language.” Vita-Mix Corp. v. Basic Holding, Inc.,
Case: 20-1573 Document: 96 Page: 9 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 9
581 F.3d 1317, 1324 (Fed. Cir. 2009). We review claim con-
struction based on intrinsic evidence de novo and review
any findings of fact regarding extrinsic evidence for clear
error. Teva Pharms. USA, Inc. v. Sandoz, Inc.,
574 U.S.
318, 331–32 (2015).
I
SpeedTrack acknowledges that the ’360 patent appli-
cants added the hierarchical limitation during prosecution
“[t]o overcome”
U.S. Patent No. 5,047,918 (“Schwartz”),
Appellant’s Br. at 48, and that the applicants “distin-
guished Schwartz as being different from the amended
claims,”
id. at 38. But the parties disagree regarding the
effect of this history on the claim scope—in particular,
whether the claims cover predefined hierarchical field-and-
value relationships. They do not.
In prosecution remarks, the ’360 patent applicants dis-
tinguished their invention from Schwartz, a system that
“assigns user-definable attributes to . . . data files,”
J.A. 1468, where each attribute has “a user-defined name,”
such as “author,” and where “a user may assign a value to
the file attribute,” such as “Smith,” J.A. 1474. 4 “Unlike
prior art hierarchical filing systems,” the applicants ex-
plained, “the present invention does not require the 2-part
hierarchical relationship between fields or attributes, and
associated values for such fields or attributes.” J.A. 3183.
The applicants continued: “At the most basic level, the pre-
sent invention is a non-hierarchical filing system that al-
lows essentially ‘free-form’ association of category
descriptions to files without regard to rigid definitions of
distinct fields containing values.” J.A. 3183. In contrast,
the applicants observed, Schwartz is a hierarchical system
that uses predefined field-and-value relationships:
4 The ’360 patent applicants and the parties use “at-
tributes” interchangeably with “fields.”
Case: 20-1573 Document: 96 Page: 10 Filed: 06/03/2021
10 SPEEDTRACK, INC. v. AMAZON.COM, INC.
Schwartz teaches a data file management machine
that enables a user to characterize stored data files
according to user-defined “file attributes” (which
are the same as conventional fields). Each file at-
tribute is a variable having a user-defined name
such as “author” or “subject matter.” A user may
assign a value to the file attribute for each file. . . .
Thus, Schwartz is simply a variation of conven-
tional hierarchical file systems, in which fields/at-
tributes are defined in a first step, and values
associated with data files are entered into such
fields/attributes in a second step. Importantly,
there is also a “hierarchical” relationship between
values and fields. That is, each value MUST corre-
spond to an associated field type.
J.A. 3184.
The applicants went on to illustrate Schwartz, using
“Language” as an example of a field and “English” and
“French” as examples of values.
J.A. 3185. The applicants explained that, in Schwartz, “the
‘hierarchical’ relationship between field values and
fields/attributes means that the term ‘French’ MUST refer
to language, and not to any other characteristics of the file
(such as food type, culture, travel, etc.).” J.A. 3185. “That
is,” the applicants emphasized, “the values associated with
each field have a pre-defined relationship to each other—
they must all be of the same type as the field.” J.A. 3185.
Case: 20-1573 Document: 96 Page: 11 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 11
Then the applicants differentiated the invention from
Schwartz using the same example: “In contrast, the pre-
sent invention allows a term like ‘French’ to be defined as
a category description, and then that category description
can be directly associated with any file to mean anything
that makes sense to the user.” J.A. 3185. This time, the
applicants included both “English” and “Language” on the
same plane—as the “category descriptions” of the claims.
J.A. 3185. This is because, in the applicants’ words, “[t]he
invention is essentially ‘fieldless.’” J.A. 3185 (“[C]ategory
descriptions are not fields; they are directly applied de-
scriptors of files.”). Further, the applicants explained, “[n]o
pre-existing or pre-defined hierarchical relationship must
exist between category descriptions and the list of category
descriptions, or between each other.” J.A. 3185. Lastly,
the applicants stated that the hierarchical limitation was
added to capture the distinction presented in these re-
marks. J.A. 3185 (“This distinction has been clarified in
the claims as amended by the addition of the following lan-
guage in all of the claims: ‘each category description com-
prising a descriptive name, the category descriptions
having no predefined hierarchical relationships with such
list or each other.’”).
II
“Prosecution disclaimer can arise from both claim
amendments and arguments.” Tech. Props. Ltd. v. Huawei
Techs. Co.,
849 F.3d 1349, 1357 (Fed. Cir. 2017). Here, we
have both. On this prosecution record, we agree with the
district court’s assessment. In no uncertain terms, “the ap-
plicant[]s argued that Schwartz had a ‘hierarchical’ rela-
tionship between fields and values that fell outside the
scope of the amended claims.” J.A. 13. Therefore, the
Case: 20-1573 Document: 96 Page: 12 Filed: 06/03/2021
12 SPEEDTRACK, INC. v. AMAZON.COM, INC.
claims exclude predefined field-and-value relationships as
explained by the district court. They are disclaimed.
SpeedTrack interprets the prosecution record differ-
ently. According to SpeedTrack, the applicants indicated
merely that the “category descriptions” of the ’360 patent
are not the fields of Schwartz and that the hierarchical lim-
itation precludes predefined hierarchical relationships
only among category descriptions. 5 Appellant’s Br.
at 49, 59. We disagree. The ’360 patent applicants repeat-
edly highlighted predefined hierarchical field-and-value
relationships as a difference between Schwartz and the
’360 patent.
Further, SpeedTrack’s interpretation leads to the par-
adoxical result that the claims cover hierarchical relation-
ships between fields and values but not among values, even
though Schwartz discloses that exact arrangement. See
Appellant’s Br. at 49 (stating that “the hierarchical limita-
tion only applies to ‘category descriptions’” and likening
category descriptions to values); Oral Arg. at 6:09–18 (rec-
ognizing that “Schwartz had a hierarchical relationship be-
tween the field and the values” but “did not have a
hierarchical relationship between different values.”). 6 This
could not have distinguished Schwartz. But that is the im-
port of SpeedTrack’s position. E.g., Oral Arg. at 3:45–4:18
(“‘Language’ would be a category and ‘French’ would be an
5 On this theory, SpeedTrack contends, Cross-Appel-
lants infringe under the district court’s initial claim-con-
struction order but not its second one. Appellant’s Br.
at 34–35. Because SpeedTrack does not dispute nonin-
fringement under the second order and we agree with that
order, we do not reach Cross-Appellants’ alternative argu-
ment that SpeedTrack cannot show infringement even un-
der the initial order. See Cross-Appellants’ Br. at 57–59.
6 No. 20-1573, http://www.cafc.uscourts.gov/oral-ar-
gument-recordings.
Case: 20-1573 Document: 96 Page: 13 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 13
example of that category. That relationship becomes ex-
cluded because of the court’s construction. It shouldn’t
have been excluded. It wasn’t disclaimed.”); see Appellant’s
Br. at 34–35. That can’t be right.
SpeedTrack also contends that the applicants distin-
guished Schwartz on other grounds. But that changes
nothing. “An applicant’s argument that a prior art refer-
ence is distinguishable on a particular ground can serve as
a disclaimer of claim scope even if the applicant distin-
guishes the reference on other grounds as well.” Andersen
Corp. v. Fiber Composites, LLC,
474 F.3d 1361, 1374
(Fed. Cir. 2007). Plus, as Cross-Appellants point out,
SpeedTrack’s position contradicts its other litigation state-
ments. For example, SpeedTrack stated the following in a
motion:
The purpose of the amendment was to clarify that
the claims, as amended, are distinguished from
Schwartz’s and Cochran’s “field”/“attribute” config-
uration, which requires a “hierarchical” relation-
ship between values and fields, i.e., each value
must correspond to an associated field type (e.g.,
the term “English” (a value) must be related to the
term “Language” (a field)).
...
This amendment further distinguished the “cate-
gory descriptions” from “fields”/“attributes,” which,
as the inventors explained, have a “hierarchical”
relationship between fields and their values, mean-
ing that “the values associated with each field have
a pre-defined relationship to each other—they
must all be of the same type as the field.”
J.A. 1383.
SpeedTrack protests that these litigation statements
“are not the inventors’ prosecution statements” and there-
fore do not demonstrate prosecution-history disclaimer.
Case: 20-1573 Document: 96 Page: 14 Filed: 06/03/2021
14 SPEEDTRACK, INC. v. AMAZON.COM, INC.
Appellant’s Reply Br. at 10. True enough. But although
we do not rest our conclusion of disclaimer on these state-
ments, they are a further reason we are unmoved by Speed-
Track’s contrary characterization of the prosecution
history. “Ultimately, the doctrine of prosecution disclaimer
ensures that claims are not ‘construed one way in order to
obtain their allowance and in a different way against ac-
cused infringers.’” Aylus Networks, Inc. v. Apple Inc.,
856 F.3d 1353, 1360 (Fed. Cir. 2017) (quoting Southwall
Techs., Inc. v. Cardinal IG Co.,
54 F.3d 1570, 1576
(Fed. Cir. 1995)). That is just what SpeedTrack tries here.
Indeed, SpeedTrack made these statements in an attempt
to strike Cross-Appellants’ prosecution-history-estoppel
defense to SpeedTrack’s infringement theory. J.A. 1384.
We also disagree that there was no clear and unmistak-
able disclaimer merely because the Wal-Mart court and
the patent office did not expressly find one. As to the first,
the parties in Wal-Mart stipulated to the Wal-Mart con-
struction and the Wal-Mart defendants obtained their
noninfringement judgment based on a different claim
term.
2008 WL 2491701, at *9. As to the second, we agree
with the district court that SpeedTrack has shown no in-
dication that the patent office addressed disclaimer of pre-
defined hierarchical field-and-value relationships during
reexamination. J.A. 14.
In a similar vein, SpeedTrack contends that the district
court’s issuance of a second claim-construction order is ev-
idence that there was no clear and unmistakable dis-
claimer. Not so. The Initial Order stated that the court’s
construction “accounts for the disclaimers made during
prosecution.”
2019 WL 5864630, at *4. The court’s second
order articulated the impact of that construction on field-
and-value systems, at SpeedTrack’s urging. Both orders
acknowledged the disclaimer.
Case: 20-1573 Document: 96 Page: 15 Filed: 06/03/2021
SPEEDTRACK, INC. v. AMAZON.COM, INC. 15
III
Cross-Appellants also argue that the claims recite pa-
tent-ineligible subject matter and are invalid for indefinite-
ness. Once we address infringement, we generally must
address invalidity. See Cardinal Chem. Co. v. Morton Int’l,
Inc.,
508 U.S. 83, 102 (1993). But we need not here. Cross-
Appellants state that if we “affirm[] the judgment of non-
infringement, [they] will voluntarily dismiss their cross-ap-
peal, because the ’360 patent expired more than six years
ago.” Cross-Appellants’ Br. at 59. Therefore, we do not
reach the cross-appeal.
CONCLUSION
We have considered SpeedTrack’s remaining argu-
ments and find them unpersuasive. For the reasons above,
we hold that the district court’s claim construction is cor-
rect. We therefore affirm the district court’s final judgment
of noninfringement.
AFFIRMED
