Tomtom, Inc. v. Adolph , 790 F.3d 1315 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
TOMTOM, INC.,
Plaintiff/Counterclaim Defendant-Appellee
v.
MICHAEL ADOLPH,
Defendant/Counterclaimant-Appellant
______________________
2014-1699
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:12-cv-00528-TSE-
IDD, Judge T. S. Ellis III.
______________________
Decided: June 19, 2015
______________________
BRIAN PANDYA, Wiley Rein, LLP, Washington, DC, ar-
gued for plaintiff/counterclaim defendant-appellee. Also
represented by JAMES HAROLD WALLACE, JR., KARIN A.
HESSLER, MATTHEW JAMES DOWD, GREGORY ROBERT
LYONS.
ANTIGONE GABRIELLA PEYTON, Cloudigy Law PLLC,
McLean, VA, argued for defendant/counterclaimant-
appellant. Also represented by CLYDE E. FINDLEY.
______________________
2 TOMTOM, INC. v. ADOLPH
Before WALLACH AND HUGHES, Circuit Judges, and FOGEL
District Judge. *
WALLACH, Circuit Judge.
Appellant Dr. Michael Adolph appeals the claim con-
struction of several terms of U.S. Patent No. 6,356,836(“the ’836 patent”), for which he is the inventor, by the
United States District Court for the Eastern District of
Virginia. For the reasons set forth below, this court
reverses and remands.
BACKGROUND
I. The ’836 Patent
The ’836 patent describes “[a] method and device for
generating, merging and updating data” that can then be
used to provide a mobile unit with current, and continu-
ously updated, accurate road network, route, and traffic
information. ’836 patent Abstract; id. col. 4 ll. 52–65. As
stated in the Brief Summary of the Invention, a purpose
of the invention is “to establish a method to generate
appropriate data utilizable for a practical destination
tracking system which carries out a permanent self
updating and with data generation which requires little
effort. The method is also appropriate for deriving desti-
nation tracking data from the data generated in accord-
ance with the aforesaid method.” Id. col. 3 ll. 38–44.
Claim 1 of the ’836 patent is the only asserted inde-
pendent claim:
* Honorable Jeremy Fogel, District Judge, United
States District Court for the Northern District of California,
and Director of the Federal Judicial Center, sitting by
designation.
TOMTOM, INC. v. ADOLPH 3
1. A method for generating and updating data for
use in a destination tracking system of at least one
mobile unit comprising:
generating and storing traveled distance data in
at least one storage device provided in said mobile
unit at least at predetermined time intervals,
wherein the traveled distance data represent
traveled sections by at least a series of nodes Pi
and to each node Pi geographical coordinates xi
and yi are assigned;
generating and storing section data in the storage
device provided in the mobile unit, said section da-
ta being generated by selecting, from the traveled
distance data, nodes Pj and Pk, which define con-
tiguous sections PjPk, to which at least their geo-
graphical starting point and end point are
assigned; and
generating a section data file from the section da-
ta and storing the section data file in the storage
device provided in the mobile unit, said section da-
ta file being continuously supplemented and/or
updated with section data newly generated by the
mobile unit.
Id. col. 17 ll. 36–55 (emphases added to disputed claim
terms).
In other words, as the mobile unit (e.g., an automo-
bile) travels, its location is determined at set time inter-
vals and it generates and stores the data measured at
each node. Id. col. 3 ll. 52–65. The location’s x and y
coordinates (for example, longitude and latitude), ac-
quired using the Global Positioning System (“GPS”), are
then assigned to that node. See, e.g., id. col. 3 l. 66–col. 4
l. 1 (“In addition to the geographical coordinates xi, yi, of
the points Pi, the direction of the movement i of the mobile
unit can be recorded when generating the traveled dis-
4 TOMTOM, INC. v. ADOLPH
tance data.”); id. col. 5 ll. 17–23 (explaining a destination
node as “given by its geographical coordinates”). 1
The second step of claim 1 involves generating and
storing “section data,” which is generated from “traveled
distance data” by selecting nodes that form contiguous
1 Figure 2 in Appellant’s brief depicts its argument
that the step in claim 1 involves “traveled distance data”
representing a series of nodes. Appellant’s Figure 3
depicts an example of section data (e.g., P1P2, P2P3).
Additionally, Appellant’s Figures 2 and 3 depict traveled
distance data (P1, P2, P3, etc.) having a series of nodes (xi,
yi), (x2, y2), etc. Appellant’s Br. 17.
TOMTOM, INC. v. ADOLPH 5
segments of road. Id. col. 17 ll. 45–50. A section may
include more than two nodes. Id. col. 10 ll. 25–29.
According to Appellant, the data is converted using a
binary format in order to be written to a file. The section
data file is updated with new section data as the “mobile
unit” continues traveling and generating new section
data. “Claim 1 does not specify any particular storage
medium used for practicing the multi-step method besides
a ‘storage device.’” Appellant’s Br. 19. 2
During prosecution of the ’836 patent, the patent
examiner identified a prior art reference that resulted in
anticipatory rejections under 35 U.S.C. § 102(b) (2000).
The reference, U.S. Patent No. 4,982,332 (“Saito”), dis-
closed destination tracking systems similar to Dr.
Adolph’s initially-claimed system.
On February 28, 2001, when responding to the antici-
pation rejections, Dr. Adolph stated that “the method
disclosed in Saito and the method of the present invention
have several significant differences.” J.A. 212–13. Dr.
2 Appellant’s Figure 5 illustrates its argument that
the third step of method claim 1 involves generating,
storing, and updating a “section data file.” Appellant’s Br.
19; see ’836 patent col. 17 ll. 51–55.
6 TOMTOM, INC. v. ADOLPH
Adolph distinguished claim 1 from Saito on the ground
that “Saito requires that [(1)] an initial database repre-
senting road data or road ways be loaded into the system
before the additional acquisition of data can take place,”
and (2) “the step[s] of previously expressing each point on
the roads in a map.” J.A. 213 (internal quotation marks
and citation omitted). Relatedly, Dr. Adolph argued Saito
teaches a method that requires a CD-ROM, integrated
circuit card, or another storage device having a large
capacity. J.A. 213. Thus, the Saito system “require[s], for
[its] operation, the initial input of road data collected and
generated by some external means.” J.A. 213 (emphasis
added). Finally, Dr. Adolph contended that the ’836
patent collects not only the geographic points of the areas
traveled, but also the direction and distance traveled, as
well as “the time relationship between the traveled
points, and the fact that the traveled points are contigu-
ous.” J.A. 5.
On April 2, 2001, the examiner again rejected claim 1
as anticipated by Saito and U.S. Patent No. 5,214,757(“Thad”). Dr. Adolf responded by again distinguishing
Saito for the reasons stated above. Dr. Adolph then
stated that “Thad only utilizes a GPS receiver to deter-
mine and store point coordinates according to a predeter-
mined criteria but, does not generate or store any
information relating to the contiguous sections.” J.A. 882
(internal quotation marks and citation omitted). On
August 29, 2001, the patent examiner allowed all claims
of the ’836 patent, which issued on March 12, 2002.
II. TomTom’s Cayman Data
Appellee TomTom, Inc.’s personal navigation devices
(“PND”) use a “proprietary data format” called Cayman
Data Format. Appellee’s Br. 13; J.A. 550. Cayman Data is
essentially a GPS trail data record. According to
TomTom’s expert, the data collection operates as follows:
When a trip begins, the starting GPS latitude and longi-
TOMTOM, INC. v. ADOLPH 7
tude readings are recorded by the PND in the Cayman log
file. J.A. 429–30. Subsequently, in either one- or five-
second intervals (depending on the device model and the
software it uses), the device records the absolute value of
the change in position from the first reading, called a
delta value. J.A. 429. It will also record subsequent
changes in position, called a delta-delta value. J.A. 437;
Appellee’s Br. 13–14. When either the trip is completed
or the GPS signal is lost, the device stops recording delta-
delta values. When a new trip begins, or the GPS signal
is regained, the process starts over by recording new
starting latitude and longitude readings and subsequent
delta and delta-delta values.
The Cayman log files remain on the device until the
user either directly uploads the data over a cellular
connection or manually connects the PND to a computer
using a USB cable and uploads the files to TomTom’s
servers in the Netherlands using TomTom HOME soft-
ware. J.A. 430. In the Netherlands, the data is validated,
analyzed, and merged. This postprocessed data is com-
bined with historical traffic data obtained from other
sources to create speed profiles for each roadway. J.A.
785, 814.
III. Proceedings
This dispute began in 2011 when Dr. Adolph’s Ger-
man company, AOT Systems GmbH (“AOT”), accused
TomTom of infringing EP 0 988 508 B1 (“EP ’508”), the
’836 patent’s European counterpart. In June 2011, repre-
sentatives of TomTom and Dr. Adolph met in person to
discuss the infringement allegations.
On February 3, 2012, AOT filed suit in Germany
against one of TomTom’s customers, seeking damages and
injunctive relief. Thereafter, TomTom filed a declaratory
judgment action in the Eastern District of Virginia,
alleging the ’836 patent was invalid as obvious and antic-
ipated, and there was no infringement. On October 3,
8 TOMTOM, INC. v. ADOLPH
2012, Dr. Adolph filed a counterclaim, alleging TomTom
directly and indirectly infringed the ’836 patent.
On February 25, 2014, the district court issued its
claim construction opinion and order. TomTom, Inc. v.
AOT Sys. GmbH, No. 1:12-cv-528 (E.D. Va. Feb. 25, 2014)
(claim construction memorandum opinion) (J.A. 1–29)
(the “Opinion”); TomTom, Inc. v. AOT Sys. GmbH, No.
1:12-cv-528 (E.D. Va. Feb. 25, 2014) (J.A. 30–31) (the
“Order”). The court construed four claim terms relevant
to this appeal: (a) “destination tracking system of at least
one mobile unit,” (b) “generating and updating data for
use in,” (c) “node,” and (d) “the storage device.” Order at
1–2. Based on the claim constructions, TomTom moved
for summary judgment and Dr. Adolph moved for recon-
sideration of the claim construction.
On April 15, 2014, the district court denied Dr.
Adolph’s motion and instead issued another written
opinion in line with its previous opinion, “in the interest
of ensuring that the claim constructions . . . are correct.”
J.A. 1094. Accordingly, Dr. Adolph stipulated that he
“will not be able to sustain [his] burden of proof to estab-
lish infringement of the ’836 patent against TomTom”
because of the court’s claim constructions. J.A. 1102. The
parties stipulated that several of the terms would “actual-
ly affect” an infringement analysis. The parties thus
requested entry of final judgment of non-infringement.
On July 8, 2014, the district court entered judgment of
noninfringement in favor of TomTom. J.A. 32–35.
Dr. Adolph appeals; this court has jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(1) (2012).
DISCUSSION
I. Standard of Review
“[W]hen the district court reviews only evidence in-
trinsic to the patent (the patent claims and specification[],
along with the patent’s prosecution history), the judge’s
TOMTOM, INC. v. ADOLPH 9
determination will amount solely to a determination of
law, and the Court of Appeals will review that construc-
tion de novo.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135
S. Ct. 831, 841 (2015) (italics omitted). “On the other
hand, in considering extrinsic evidence, we review the
subsidiary factual findings underlying the district court’s
claim construction for clear error.” Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 676 (Fed. Cir.
2015).
II. This Court Can Consider All Claim Constructions
on Appeal
As a threshold matter, Dr. Adolph argues this court
must remand if “any claim construction is altered upon
appellate review.” Appellant’s Br. 32. TomTom counters
that “each claim construction provides a separate, inde-
pendent basis for affirming the judgment of non-
infringement, or else that claim construction is not
properly before this court.” Appellee’s Br. 27. It is true
this court has recognized it does not have subject matter
jurisdiction to review a claim construction if that con-
struction does not affect the issue of infringement. See,
e.g., Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1336 (Fed.
Cir. 2008) (explaining that “Article III does not permit the
courts to resolve issues when it is not clear that the
resolution of the question will resolve a concrete contro-
versy between interested parties,” and “[i]f we did not
require clarification of the stipulated judgment in this
case, we would risk rendering an advisory opinion as to
claim construction issues that do not actually affect the
infringement controversy between the parties”).
Here, the parties’ stipulated judgment explicitly
states, and provides detailed explanations for why, the
claim constructions actually affect the infringement
analysis. J.A. 1101–07. Furthermore, the parties’ sum-
mary judgment and reconsideration briefs (filed after the
claim construction order) detail the effect the district
10 TOMTOM, INC. v. ADOLPH
court’s claim construction has on the issue of infringe-
ment. J.A. 805–23, 974–75. Accordingly, under Jang,
this court will consider all of the district court’s claim
constructions.
III. Claim Constructions
A. The District Court Incorrectly Construed the Pream-
ble Term “Method for Generating and Updating Data” As
a Limitation
The preamble of claim 1 of the ’836 patent recites “[a]
method for generating and updating data for use in [(“the
generating language”)] a destination tracking system of at
least one mobile unit comprising.” ’836 patent col. 17 ll.
36–38. The district court held that because the phrase “at
least one mobile unit” provides an antecedent basis for
the later use of the terms “said mobile unit” and “the
mobile unit” in the body of the claim, the entire preamble
must be construed. Opinion at 17 (“Thus, because claim 1
relies on its preamble for antecedent basis [for the mobile
unit], the [other] disputed claim terms in the preamble
must be construed.”); see also J.A. 1101 ¶ 1 (In the Stipu-
lation for Entry of Final Judgment, the parties stipulated
that “[t]he Court determined that two phrases found in
the preamble of claim 1 (‘generating and updating data
for use in’ and ‘destination tracking system of at least one
mobile unit’) must both be construed, in order to provide
antecedent basis for the term ‘mobile unit,’ a term that is
used in the body of claim 1. The [c]ourt construed these
two preamble phrases separately.”). The court adopted
TomTom’s construction and determined that the phrase
“generating and updating data for use in” means “the
data generated and updated by the mobile unit is used by
that unit.” Opinion at 17 (emphasis added).
Dr. Adolph contends the district court erred in deter-
mining that because it relied “on one portion of [the]
preamble [i.e., ‘at least one mobile unit’] to resolve an
antecedent basis concern” it should also convert “other
TOMTOM, INC. v. ADOLPH 11
unrelated portions of the preamble [i.e., the generating
language] into new . . . substantive [claim] limitations.”
Appellant’s Br. 46. TomTom counters “the preamble
provides both antecedent basis for later claim elements
and gives life, meaning, and vitality to the claims. The
district court thus properly construed the entire pream-
ble.” Appellee’s Br. 34–35.
If a preamble “recites essential structure or steps, or if
it is ‘necessary to give life, meaning, and vitality’ to the
claim,” then the preamble can limit the scope of a claim.
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 808 (Fed. Cir. 2002) (citation omitted). “Con-
versely, a preamble is not limiting ‘where a patentee
defines a structurally complete invention in the claim
body and uses the preamble only to state a purpose or
intended use for the invention.’” Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). “‘[W]hether to
treat a preamble as a claim limitation is determined on
the facts of each case in light of the claim as a whole and
the invention described in the patent.’” Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (quot-
ing Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823,
831 (Fed. Cir. 2003)).
The district court correctly concluded—and the par-
ties do not seem to dispute—the phrase “destination
tracking system of at least one mobile unit” is limiting
because the claims do not concern just any “mobile unit,”
but rather “generating and updating data for use in a
destination tracking system of at least one mobile unit.”
’836 patent col. 17 ll. 36–37 (emphasis added). However,
the court erred in determining that it had to construe the
entire preamble if it construed a portion of it. See, e.g.,
Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed.
Cir. 1985), overruled in part on other grounds by No-
belpharma AB v. Implant Innovations, Inc., 141 F.3d
1059, 1068 (Fed. Cir. 1998) (en banc in part). That the
phrase in the preamble “destination tracking system of at
12 TOMTOM, INC. v. ADOLPH
least one mobile unit” provides a necessary structure for
claim 1 does not necessarily convert the entire preamble
into a limitation, particularly one that only states the
intended use of the invention.
Thus, the generating language is not limiting and
does not provide an antecedent basis for any of the claims.
Rather, it is language stating a purpose or intended use
and employs the standard pattern of such language: the
words “a method for a purpose or intended use compris-
ing,” followed by the body of the claim, in which the claim
limitations describing the invention are recited.
Additionally, the invention claimed in the ’836 patent
is structurally complete without the generating language.
“A preamble is not regarded as limiting . . . ‘when the
claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect
the structure or steps of the claimed invention.’” Am.
Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358–59
(Fed. Cir. 2010) (quoting Catalina, 289 F.3d at 809). “If
the preamble ‘is reasonably susceptible to being construed
to be merely duplicative of the limitations in the body of
the claim (and was not clearly added to overcome a [prior
art] rejection), we do not construe it to be a separate
limitation.’” Id. at 1359 (quoting Symantec Corp. v.
Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288–89 (Fed.
Cir. 2008)).
Claim 1 is directed to a method for generating and
updating travel-related data and does not require the
data to be used later as the district court found. It re-
quires only that the data be generated, selected, stored,
and continuously updated. All of these steps are per-
formed within the body of claim 1. Though the collected
data could at some point be used in the context of a navi-
gation system, this is not required of claim 1, and does not
convert it into a claim limitation.
TOMTOM, INC. v. ADOLPH 13
The phrase “generating and updating data for use in”
does not recite essential structure or steps, or give neces-
sary life, meaning, and vitality to the claim. It was there-
fore error for the district court to use an antecedent basis
rationale to justify converting this independent part of the
preamble into a new claim limitation.
B. The Court Incorrectly Construed the Phrase “Destina-
tion Tracking System of at Least One Mobile Unit”
In construing the phrase “destination tracking system
of at least one mobile unit,” the district court concluded
Dr. Adolph disclaimed methods performed on “systems
that (i) contain information relating to existing road
networks, (ii) rely on an initial database, and (iii) require
for operation the initial input of road data.” J.A. 1099.
After reviewing the specification, file history, and prior
art, the court explained: “Dr. Adolph overcame the Saito
prior art by limiting claim 1 to a method that necessarily
does not include an initial map database.” Opinion at 19.
The court thus construed the phrase to be “a destination
tracking system of at least one mobile unit that does not
contain initial information relating to existing road net-
works.” Order at 2 (emphasis added to language the court
found to be disclaimed).
Dr. Adolph argues the court incorrectly interpreted
the prosecution history, and therefore misconstrued the
phrase, and should replace “does not contain” maps with
“does not require” maps. Appellant’s Br. 51. Specifically,
Dr. Adolph contends that during prosecution he stated
that the invention described by claim 1 does not require
an initial map database, not that it does not contain one.
Id. Appellees counter the district court correctly found
prosecution history disclaimer when Dr. Adolph differen-
tiated his invention from Saito. See Appellee’s Br. 31.
In response to the patent examiner’s October 27,
2000, office action rejecting the ’836 patent claims in light
of Saito, Dr. Adolph explained that “[t]he method dis-
14 TOMTOM, INC. v. ADOLPH
closed in Saito and the method of the present invention
have several significant differences.” J.A. 212–13. Dr.
Adolph continued, “Saito requires that an initial database
representing road data or road ways be loaded into the
system before the additional acquisition of data can take
place.” J.A. 213. However, according to Dr. Adolph,
unlike Saito, the ’836 patent “aims at overcoming this
significant limitation of Saito and other similar systems
which require, for their operation, the initial input of road
data collected and generated by some external means.”
J.A. 213. Dr. Adolph also stated “Saito only stores data
relating to the physical location of nodes and segments or
roads connecting the nodes. The present invention in-
stead has the specific objective of generating and storing
section data that include other relevant information in
addition to the sole geographic location of nodes and
sections.” J.A. 214. Dr. Adolph underscored his assertion
that a map is not required by contrasting his invention
with Saito’s, stating, “[t]he present invention allows even
a single mobile unit to commence generating and storing
data without the need for any initial information relating
to existing road networks.” J.A. 213 (emphasis added).
Finally, he stated:
In fact[,] the present invention, even if the sys-
tems consist of a single mobile unit, can generate
and store data identifying the geographic location
of points or nodes, the length and other character-
istics of the sections containing nodes, constantly
update the data relating to both nodes and sec-
tions if changes occur in the road network, and
generate a complete road map with selected rele-
vant information representing all of the sections
traveled by the mobile unit over time. This can all
be accomplished without the need for any initial
network data.
J.A. 213 (emphasis added).
TOMTOM, INC. v. ADOLPH 15
TomTom accurately argues that “one skilled in the art
is entitled to rely on disclaimers made during prosecution
to interpret patent claims.” Appellee’s Br. 29 (citing
Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323
(Fed. Cir. 2003) (“The doctrine of prosecution disclaimer is
well established in Supreme Court precedent, precluding
patentees from recapturing through claim interpretation
specific meanings disclaimed during prosecution.”)). This
court has
declined to apply the doctrine of prosecution dis-
claimer where the alleged disavowal of claim
scope is ambiguous. . . . But where the patentee
has unequivocally disavowed a certain meaning to
obtain his patent, the doctrine of prosecution dis-
claimer attaches and narrows the ordinary mean-
ing of the claim congruent with the scope of the
surrender.
Omega, 334 F.3d at 1324.
The district court’s construction was based on the
prosecution history of the ’836 patent, but, as demon-
strated above, nowhere does Dr. Adolph actually assert
that the invention described by claim 1 does not contain
an initial map database. Because there is no “clear and
unambiguous” disclaimer that the tracking system does
not contain an initial map database, we reverse the
district court’s construction. Instead, there is a disclaimer
that the system does not require an initial map database.
Accordingly, we construe the phrase “destination tracking
system of at least one mobile unit” to mean “a destination
tracking system of at least one mobile unit that does not
require initial information relating to existing road net-
works.”
TomTom also argues “this [c]ourt should give defer-
ence to Judge Ellis’s fact findings regarding the distinc-
tions Dr. Adolph made in the specification and file history
between his invention and prior art.” Appellee’s Br. 29–
16 TOMTOM, INC. v. ADOLPH
30. However, the prosecution history is part of the intrin-
sic evidence, which this court reviews de novo. Enzo
Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1153 (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, and the Court of Appeals will
review that construction de novo.’”) (quoting Teva, 135 S.
Ct. at 841).
C. The District Court Incorrectly Construed “Node”
The district court construed the term “node” to mean
an “intersection, origin, destination, or point at which the
vehicle changes direction by more than a given predeter-
mined value in a grid or road network.” Opinion at 12.
Dr. Adolph contends the court’s construction “not only
excludes the collection of travel data at predetermined
time intervals, but it is wholly inconsistent with that
basic requirement of Dr. Adolph’s invention.” Appellant’s
Br. 34. According to Dr. Adolph,
[r]ather than permit a mobile unit to gather data
wherever it goes, the [court’s] construction ignores
the explicit language of Claim 1 (which collects
traveled distance data at predetermined time in-
tervals) and improperly limits the collection of
travel data to an “intersection, origin, destination,
or point at which the vehicle changes direction by
more than a predetermined value in a grid or road
network.”
Id.
We disagree with Dr. Adolph that “[c]laim 1 specifical-
ly requires travel data, in the form of nodes, to be collect-
ed ‘at least at predetermined time intervals.’” Id. at 33.
The claim requires “generating and storing traveled
distance data . . . at least at predetermined time intervals,
TOMTOM, INC. v. ADOLPH 17
wherein the traveled distance data represent traveled
sections by at least a series of nodes Pi.” ’836 patent col.
17 ll. 38–43. The specification also indicates that “at least
at predetermined time intervals” is an additional claim
limitation separate from “nodes.” Id. col. 18 ll. 35–41. As
TomTom notes, “[n]othing in the district court’s construc-
tion precludes collecting data at predetermined time
intervals, as that is a separate element of claim 1 that
was not construed.” Appellee’s Br. 25.
Dr. Adolph alternatively argues that “[a] node is simp-
ly a geographic location” because the ’836 patent does not
explicitly define the term “node.” Appellant’s Br. 41.
TomTom counters that this definition “renders the term
meaningless and is inconsistent with the specification.”
Appellee’s Br. 47. We agree a “node” means a “geographic
location.” For instance, the specification states:
After completion of a trip or even during the trip,
section data are generated from the traveled dis-
tance or route data stored in the trip storage unit
40, compressing the traveled distance data by
dropping individual points Pi and choosing those
points Pj and Pk which . . . are most characteristic
in defining a section of the route. For example,
characteristic route nodes Pj and Pk are nodes
where the vehicle direction i changes by more
than a given predetermined value, or nodes at the
intersection of sections oriented in different direc-
tions, or nodes that are otherwise conspicuous.
The sections PjPk calculated from the route nodes
Pi stored in the trip store are saved in the section
data storage unit 42 in the following manner.
’836 patent col. 10 ll. 8–21 (emphases added).
As recited above, the terms “points” and “nodes” are
used in the specification to refer to the same data—
“individual points Pi” and “route nodes Pi.” When “node”
appears in the patent and in its claims, the mathematical
18 TOMTOM, INC. v. ADOLPH
expression “Pi” often follows immediately. See, e.g., id.
col. 10, ll. 14–29; id. col. 17 ll. 43–44. And when “Pi”
appears in the patent, the phrase comprising (or contain-
ing) “geographical coordinates xi, yi” is often present. See,
e.g., id. col. 3 l. 66; id. col. 5 l. 51; id. col. 9 l. 53; id. col. 10
ll. 22–23.
According to TomTom, “[Dr.] Adolph presents no com-
pelling evidence that ‘node’ and ‘point’ are the same, and
therefore, the terms should be presumed to be different,
as the district court’s construction properly recognizes.”
Appellee’s Br. 49. TomTom relies, in part, on Figure 4 in
the ’836 patent, reproduced below, to argue “points 1–16
are nodes, because they are starting points, end points,
intersections, or places where the vehicle changes direc-
tions.” Id. “On the other hand,” TomTom argues, “each ‘x’
along the route is a point . . . , but those points are not
nodes, as they are not characteristic of road segments.”
Id.
’836 patent fig. 4. TomTom misunderstands Dr. Adolph’s
use of the “x” notation in the figures of the ’836 patent.
The specification explains that the “x” notation is used in
Figure 4 as indicating a recommended route from node S
TOMTOM, INC. v. ADOLPH 19
to node Z, not to distinguish points from nodes. Id.; id.
col. 13 ll. 32–34 (“The recommended route S→
2→6→7→8→12→Z is represented by ‘x’ in Fig. 4.”).
“Claim terms are generally given their plain and or-
dinary meanings to one of skill in the art when read in
the context of the specification and prosecution history.”
Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362,
1365 (Fed. Cir. 2013) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). “There are
only two exceptions to this general rule: 1) when a patent-
ee sets out a definition and acts as his own lexicographer,
or 2) when the patentee disavows the full scope of the
claim term either in the specification or during prosecu-
tion.” Id. (internal quotation marks and citation omitted).
Here, there is neither lexicography nor disavowal. Ra-
ther, the ’836 patent uses the term “node” to mean, simp-
ly, a “geographic location.” This construction is consistent
with the specification, which associates nodes with vari-
ous geographical locations, including origins and destina-
tions, and intersections. ’836 patent col. 7 ll. 41–44. The
district court’s construction is therefore reversed.
D. The District Court Incorrectly Construed the
Phrases “Storing Section Data/Section Data File in the
Storage Device”
Claim 1 of the ’836 patent recites “storing traveled
distance data in at least one storage device.” Id. col. 17 ll.
38–39 (emphasis added). The court construed this to
mean “storing traveled distance data in at least one device
used for storing data.” Opinion at 25 (emphasis added).
Dr. Adolph does not appeal this construction.
Claim 1 additionally recites “storing section data in
the storage device” and “storing the section data file in
the storage device.” ’836 patent col. 17 ll. 45, 52.
Relying on an embodiment described in the ’836 pa-
tent’s specification, the district court held that each type
20 TOMTOM, INC. v. ADOLPH
of data identified in claim 1 must be stored in a different
storage device:
As stated above, the patent specification makes
clear that (i) traveled distance data is stored in a
“trip storage unit or motion storage unit,” (ii) sec-
tion data is stored in a “section data storage unit,”
and (iii) the section data file is stored in the “sec-
tion data file storage unit.” Thus, the portion of
TomTom’s construction that clarifies that each
type of data is stored in a different storage device
is the correct construction.
Opinion at 27 (referencing ’836 patent col. 9 ll. 21–25).
Accordingly, “storing section data in the storage device”
was construed by the district court to mean “storing
section data in a separate storage device than the traveled
distance data,” and “storing the section file data in the
storage device” was construed as “storing the section data
file in a separate storage device than the traveled distance
data and section data.” Opinion at 27–28 (emphases
added). These constructions were erroneous.
As an initial matter, this court has repeatedly cau-
tioned against importing limitations from an embodiment
into the claims. Hill-Rom Servs., Inc. v. Stryker Corp.,
755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read
claims in view of the specification, of which they are a
part, we do not read limitations from the embodiments in
the specification into the claims. We depart from the
plain and ordinary meaning of claim terms based on the
specification in only two instances: lexicography and
disavowal.”) (citing Liebel–Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 904 (Fed. Cir. 2004); Thorner v. Sony Com-
puter Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012)).
“The starting point for any claim construction must be
the claims themselves.” Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). As
TOMTOM, INC. v. ADOLPH 21
noted, claim terms are generally given their plain and
ordinary meanings to one of skill in the art when read in
the context of the specification and prosecution history;
the only exceptions to this general rule are when the
patentee acts as his own lexicographer or when he disa-
vows claim scope. Golden Bridge, 758 F.3d at 1365.
Here, claim 1 requires section data to be stored in “the
storage device.” ’836 patent col. 17 l. 45 (emphasis add-
ed). Claim 1 also requires the section data file to be
stored in “the storage device.” Id. col. 17 l. 52 (emphasis
added). “The storage device” can only refer to one thing:
the “at least one storage device” found in the first limita-
tion of claim 1. Id. col. 17 ll. 38–39 (emphasis added).
Nothing in the claim language suggests the section data
and the section data file would be stored in any storage
device other than “the storage device.” Id. col. 17 l. 45
(emphasis added). Certainly, the claims do not require
the data be stored on different devices.
Additionally, the specification discloses the different
data types can be stored in the same storage device,
contrary to the district court’s interpretation. In explain-
ing how one could interrupt the generation of both trav-
eled distance data and section data if any of that data
already exists in the storage unit, one portion of the
specification recites:
To avoid unnecessar[ily] overburdening the stor-
age device provided in the mobile unit, additional
provisions can be made to permit the generation
of traveled distance data and/or section data to be
interrupted if the newly generated data already
exist in the storage device of the mobile unit, and
to cause said generation to be restarted if the
newly generated data have not yet been stored in
the storage device of the mobile unit.
Id. col. 4 ll. 6–13 (emphases added).
22 TOMTOM, INC. v. ADOLPH
Therefore, these terms should be construed to reflect
their plain and ordinary meaning: “storage device” means
“storage device.” It does not mean the claimed invention
must use a different storage device for each type of data,
as all three types of data can be stored on the same stor-
age device as described in claim 1.
CONCLUSION
For the reasons set forth above, the appealed con-
structions of the district court are reversed, and the case
is remanded for proceedings not inconsistent with this
opinion.
REVERSED AND REMANDED