On March 14, 2014, the U.S. Court of Appeals for the Federal Circuit ruled in a patent appeal case involving Google's Street View technology on a topic in patent law that has received considerable attention recently—claim construction. In Vederi, LLC v. Google, Inc., the Federal Circuit reversed the Central District of California on a claim construction issue and vacated a summary judgment of non-infringement that had been entered in favor of Google.1 Apart from the popular interest in Google's well-known Street View product, this precedential appellate opinion authored by Chief Judge Rader is noteworthy from a patent law perspective. The decision explains the proper roles of intrinsic and extrinsic evidence for claim construction, yields insights for patent prosecutors and serves as a valuable data point in the ongoing policy debate about the Federal Circuit's exclusive jurisdiction in patent cases.
The case involved four patents directed to creating synthesized images of a geographic area through which a user may visually navigate via a computer. Vederi contended that Google infringed the patents with Google's Street View, a product that combines images from a range of views recorded by cameras mounted on a moving automobile. Specifically, Street View merges several captured images into a virtual spherical or curved composite image.
The district court's summary judgment of non-infringement and the appeal at the Federal Circuit involved the claim term "images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area."2 The trial court construed that term to mean "vertical flat (as opposed to curved or spherical) depictions of front or side views," because the court concluded that the asserted patents did not disclose anything about spherical views. The trial court then granted summary judgment of non-infringement because it agreed with Google that Street View's spherical or curved images do not meet the "substantially elevations" limitation, which appears in all the asserted claims.
The Federal Circuit explained the proper procedure for reviewing claim constructions on appeal. The court reviewed the claim construction issue de novo, citing the Cybor case that was recently confirmed by the Federal Circuit en banc in the Lighting Ballast case.3 The Federal Circuit found that the trial court erred in basing its construction of "substantially elevations" largely on extrinsic evidence (e.g., definitions of "elevation" from technical dictionaries) without sufficiently considering the intrinsic evidence (the claim language itself, the specification and the prosecution history) that should be primarily relied upon according to the seminal Phillips case.4 As the Federal Circuit noted, extrinsic evidence may be less reliable than the intrinsic evidence.
The Federal Circuit found that the claim term "substantially" takes on vital meaning in light of the intrinsic evidence. Although the word "substantially" can render a claim indefinite,5 that word in this case worked in favor of patentee Vederi. The Federal Circuit found that relying on dictionary definitions of "elevation" reads "substantially" out of the claims, which would be improper especially because the specification (disclosing images that are not flat and not elevations) and prosecution history conflicted with the district court's construction. Thus, patent prosecutors should be aware when drafting patent applications that the word "substantially" can serve a valuable purpose.
Similarly, the appellate court's discussion of the word "preferably" offers insight to patent practitioners. Although Google maintained that the specification of one of the asserted patents only discloses a method of creating composite images by combining vertical flat columns that would result in vertical flat images (supporting the trial court's claim construction), the Federal Circuit observed that the specification simply states that "preferably" the composite images are created on a column-by-column basis. Because the specification does not state that the method in that embodiment is the only way to create composite images, the Federal Circuit refused to limit its claim construction based on that embodiment. It may serve as a reminder for patent prosecutors seeking broad claim scope not to state that a particular approach is the "only" approach or that it "must" be taken.
Through its de novo analysis, the Federal Circuit reversed the district court on claim construction and ruled that the claim term "views being substantially elevations of the objects" means "front and side views of the objects" (as proposed by Vederi). Based on that construction, the Federal Circuit found that the asserted claims do not exclude curved or spherical images (as in Google's Street View product) and accordingly vacated the district court's summary judgment of non-infringement and remanded the case to the district court.
As a matter not directly relevant to the case, but relevant to a broader policy debate about patent law, the district court's summary judgment of non-infringement was granted by Chief Judge Kozinski of the Court of Appeals for the Ninth Circuit, who was sitting by designation in the Central District of California. After granting the summary judgment, Chief Judge Kozinski commented about the possibility of an appeal of his ruling: "[The Federal Circuit judges] talk to each other, they've got a lot of expertise that I don't have and the appellate courts are much better at making these complex decisions."6 That comment is significant because the Federal Circuit has come under fire recently for its exclusive jurisdiction in patent cases. Chief Judge Wood of the Court of Appeals for the Seventh Circuit recently criticized the Federal Circuit as being too "specialist" in patent matters, and she called for regional circuits to have a role in patent appeals.7 The foregoing comment by Chief Judge Kozinski—himself a respected jurist—about the expertise and capability of Federal Circuit judges in complex patent matters can be viewed as revealing. The Federal Circuit's reversal of Chief Judge Kozinski's claim construction ruling demonstrates the complexity of patent law issues and the need for uniformity and consistency in patent jurisprudence—key arguments in favor of the Federal Circuit's exclusive jurisdiction in patent cases.
Vederi, LLC v. Google, Inc., No. 2013-1057, -1296 (Fed. Cir. 2014).
This term is recited in claim 1 of U.S. Patent 7,239,760.
See Lighting Ballast Control LLC v. Philips Electronics North Am. Corp., No. 2012-1014 (Fed. Cir. 2014) (confirming de novo standard of review for claim construction set forth in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc)).
Phillips v. AWH Corp., 415 F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc).
See Manual of Patent Examining Procedure (MPEP) at § 2173.05(b) (accessible at http://www.bitlaw.com/source/mpep/2173_05_b.html).