Personalized User Model, LLP v. Google Inc. , 797 F.3d 1341 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
PERSONALIZED USER MODEL, LLP,
Plaintiff-Cross-Appellant
YOCHAI KONIG,
Counterclaim Defendant-Cross-Appellant
v.
GOOGLE INC.,
Defendant-Appellant
______________________
2014-1841, 2015-1022
______________________
Appeals from the United States District Court for the
District of Delaware in No. 1:09-cv-00525-LPS, Chief
Judge Leonard P. Stark.
______________________
Decided: August 18, 2015
______________________
RICHARD SALGADO, Dentons US LLP, Dallas, TX,
argued for plaintiff-cross-appellant, counterclaim defend-
ant-cross-appellant. Also represented by MARC S.
FRIEDMAN, New York, NY. Plaintiff-Cross-Appellant also
represented by MARK CHRISTOPHER NELSON, Dallas, TX.
DAVID ANDREW PERLSON, Quinn Emanuel Urquhart &
Sullivan, LLP, San Francisco, CA, argued for defendant-
appellant. Also represented by CHARLES KRAMER
2 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
VERHOEVEN; JOSHUA L. SOHN, Washington, DC; ANDREA
PALLIOS ROBERTS, Redwood Shores, CA.
______________________
Before PROST, Chief Judge,
LOURIE and REYNA, Circuit Judges.
LOURIE, Circuit Judge.
Google Inc. (“Google”) appeals from the decision of the
United States District Court for the District of Delaware
granting judgment as a matter of law in favor of Personal-
ized User Model, LLP (“PUM”) and Yochai Konig (“Ko-
nig”) (collectively, “Appellees”) on Google’s breach of
contract counterclaim. Order, Personalized User Model
LLP v. Google Inc., C.A. No. 09-525-LPS (D. Del. Sept. 17,
2014), ECF No. 724. PUM cross-appeals from the district
court’s decision construing the claims of U.S. Patents
6,981,040 (“the ’040 patent”) and 7,685,276 (“the ’276
patent”). Personalized User Model LLP v. Google Inc.,
C.A. No. 09-525-LPS, 2012 WL 295048, at *15–16 (D. Del.
Jan. 25, 2012). Because the district court did not err in
granting judgment as a matter of law, we affirm the
district court’s decision appealed by Google. Moreover, we
dismiss the cross-appeal because we lack jurisdiction over
the issue as raised.
BACKGROUND
Konig was employed by SRI International (“SRI”)
from April 1996 to August 1999. At the beginning of his
employment, Konig signed an Employment Agreement,
which stated:
In consideration of my employment at SRI Inter-
national, I agree:
...
3. To promptly disclose to SRI all discoveries, im-
provements, and inventions, including software,
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 3
conceived or made by me during the period of my
employment, and I agree to execute such docu-
ments, disclose and deliver all information and
data, and to do all things which may be necessary
or in the opinion of SRI reasonably desirable, in
order to effect transfer of ownership in or to im-
part a full understanding of such discoveries, im-
provements and inventions to SRI . . . . I
understand that termination of this employment
shall not release me from my obligations hereun-
der . . . .
J.A. 1417 (emphases added).
In May 1999, while still employed by SRI, Konig and
a friend who was not employed by SRI started generating
documents marked confidential, relating to a personalized
information services idea that they called “Personal Web.”
J.A. 1281–1302, 1303–08. Konig and his friend then
formed a company named Utopy, incorporated in Dela-
ware on July 22, 1999, and Konig left SRI two weeks
later, on August 5, 1999. In 2001, while Konig was devel-
oping the Personal Web products at Utopy, he asked a
research scientist still at SRI to test the products. Appel-
lant’s Br. 15.
Meanwhile, Konig filed a provisional patent applica-
tion on December 28, 1999. On June 20, 2000, Konig filed
an application based on the provisional, which issued as
the ’040 patent on December 27, 2005, and listed Utopy,
Inc. as the assignee. Utopy then assigned the ’040 patent
to another party, who in turn assigned the patent to
PUM. Konig filed another patent application in 2008,
naming PUM as the assignee, and that application issued
as the ’276 patent on March 23, 2010.
In July 2009, PUM sued Google in the District Court
for the District of Delaware, asserting infringement of the
’040 and ’276 patents. During discovery, PUM provided
interrogatory responses that asserted that the conception
4 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
date for the invention claimed in the asserted patents was
in July 1999, while Konig was still at SRI, and produced
documents to prove that. Google subsequently contacted
SRI and acquired “any rights” that SRI had in the assert-
ed patents, J.A. 1410–11, and brought a counterclaim for
breach of contract in February 2011. Google asserted that
Konig owed a duty to transfer ownership to SRI of any
inventions conceived during his employment with SRI;
that Konig breached the employment agreement by
failing to assign his interest in the related patents to SRI;
and that Google (by way of SRI) therefore was a rightful
co-owner. J.A. 504–20. PUM and Konig responded that
the counterclaim was time-barred as filed more than
three years after the claim first accrued. J.A. 728, 740;
see 10 Del. C. § 8106. Before trial, the court construed
several claim terms in the ’040 and ’276 patents, includ-
ing the term “document.” Personalized User Model v.
Google, 2012 WL 295048, at *15–16.
The district court then presided over a jury trial on
the issues of infringement, validity, and breach of con-
tract. The jury found that Google did not infringe any
asserted claim of the ’040 and ’276 patents and that all
asserted claims were invalid. The jury was also instruct-
ed concerning two means by which the three-year statute
of limitations could have been tolled, such that Google’s
claim would not be time-barred: the discovery rule and
the Delaware tolling statute, 10 Del. C. § 8117. The jury
then found that the three-year statute of limitations for
Google’s breach of contract claim was tolled, and that
Konig breached the employment contract. J.A. 1482.
After the court entered judgment on the verdict, PUM
and Konig moved for judgment as a matter of law
(“JMOL”) on the breach of contract counterclaim. The
district court issued a letter with preliminary thoughts,
informing the parties that the court was inclined to grant
PUM’s and Konig’s motion on Google’s contract counter-
claim on the basis that the claim was time-barred. Letter,
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 5
Apr. 7, 2014, ECF No. 677. The court stated that the
statute of limitations was not extended beyond three
years because, in its view, no reasonable jury could have
found that the injury was “inherently unknowable.” Id. at
6–7. The court noted that the evidence at trial showed
that SRI had reason to investigate Konig’s potential
breach of contract. Id. at 7.
The district court then held a hearing on PUM’s and
Konig’s JMOL motion on the breach of contract counter-
claim. J.A. 9–31 (transcript). The court again stated its
determination that no reasonable juror could have found
that the injury, the basis for the counterclaim, was “in-
herently unknowable” and that SRI was not on inquiry
notice. J.A. 30. The court also noted that there was no
evidence that SRI exercised any diligence, finding that,
had SRI undertaken any reasonable investigation, it
would have discovered that the invention was conceived
during Konig’s employment at SRI. J.A. 30. The court
concluded that no reasonable juror could find that SRI
was “blamelessly ignorant.” J.A. 30.
The district court also rejected Google’s argument
that § 8117 allows “an action that had no connection to
Delaware [to be brought], as long as no more than three
years have passed since the time that the defendant . . .
became subject to service of process.” J.A. 31. The court
expressed its concern that such an interpretation would
“permit any party sued in Delaware to respond with
counterclaims having no connection to Delaware, no
matter how stale those claims are, no matter that the
statute of limitations in the state in which those claims
arose had expired long ago.” J.A. 31. The court therefore
granted JMOL in favor of PUM and Konig on the breach
of contract counterclaim. J.A. 31; J.A. 47.
Google timely appealed from the district court’s grant
of JMOL on the counterclaim, and PUM cross-appealed
from the district court’s claim construction. PUM did not
6 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
appeal from the district court’s judgment of invalidity and
noninfringement. We have jurisdiction pursuant to 28
U.S.C. § 1295(a)(1).
DISCUSSION
In an appeal of a case that has been tried to a jury, we
review the district court’s grant of JMOL under the law of
the regional circuit. Lisle Corp. v. A.J. Mfg. Co., 398 F.3d
1306, 1312 (Fed. Cir. 2005). Applying the law of the
Third Circuit, we review the court’s grant of JMOL de
novo. Pitts v. Delaware, 646 F.3d 151, 155 (3d Cir. 2011);
LePage’s Inc. v. 3M, 324 F.3d 141, 145 (3d Cir. 2003) (en
banc). In reviewing the grant of JMOL after a jury trial,
the relevant question is “whether there is evidence upon
which a reasonable jury could properly have found its
verdict.” Gomez v. Allegheny Health Servs., Inc., 71 F.3d
1079, 1083 (3d Cir. 1995); see also Fed. R. Civ. P. 50(a)
(JMOL is appropriate when “a reasonable jury would not
have a legally sufficient evidentiary basis to find for the
[prevailing] party on that issue.”). We must view the
record in the light most favorable to the verdict winner,
drawing all reasonable inferences in its favor, Sheridan v.
E.I. DuPont de Nemours & Co., 100 F.3d 1061, 1072 (3d
Cir. 1996) (en banc), but JMOL “must be sustained if the
record is critically deficient of the minimum quantum of
evidence from which the jury might reasonably afford
relief,” Gomez, 71 F.3d at 1083.
I. Discovery Rule Tolling
We first address the district court’s holding that the
discovery rule did not toll the statute of limitations peri-
od, because if the limitations period was not tolled, then
Google’s suit is time-barred. “Application of the ‘time of
discovery’ rule is limited, and each case must stand or fall
on its own facts.” Isaacson, Stolper & Co. v. Artisans’ Sav.
Bank, 330 A.2d 130, 133–34 (Del. 1974). The discovery
rule in Delaware provides that the statute of limitations
period is tolled while “the injury is inherently unknowa-
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 7
ble” and “the claimant is blamelessly ignorant of the
wrongful act and the injury complained of.” Coleman v.
PriceWaterhouseCoopers, LLC, 854 A.2d 838, 842 (Del.
2004). Even if an injury is inherently unknowable, the
discovery rule does not toll the limitations period unless
the claimant is blamelessly ignorant. See Kaufman v.
C.L. McCabe & Sons, Inc., 603 A.2d 831, 835 (Del. 1992)
(stating that discovery rule requires both elements to toll
statute of limitations); accord David B. Lilly Co. v. Fisher,
18 F.3d 1112, 1117 (3d Cir. 1994). A claimant can show
blameless ignorance with evidence that its reasonably
diligent investigation would not have uncovered facts
sufficient to enable it to discover the basis for its claim.
Coleman, 854 A.2d at 842–43; Layton v. Allen, 246 A.2d
794 (Del. 1968) (finding plaintiff to be blamelessly igno-
rant “before she knew, or by reasonable diligence could
know” of her claims); cf. Studiengesellschaft Kohle, mbH
v. Hercules, Inc., 748 F. Supp. 247, 252–53 (D. Del. 1990)
(finding claimant not blamelessly ignorant where it had a
right of inspection, was entitled to hire an independent
accountant, and was an experienced business entity).
Google argues that the breach of contract injury that
SRI suffered was inherently unknowable, and therefore
that SRI was not on inquiry notice to investigate a possi-
ble claim. According to Google, Delaware precedent
requires a “red flag” that “clearly and unmistakably”
should have led a party to investigate a potential claim.
Because there were competing inferences that could have
been drawn from the evidence provided at trial, Google
asserts that a reasonable jury could have found that none
of the information available to SRI would have made SRI
suspicious of a breach of contract. Alternatively, Google
argues that SRI was blamelessly ignorant because a jury
could have reasonably inferred that any investigation that
SRI could have done would not have uncovered the con-
ception of the invention at SRI, which provides the basis
for the claim. Google contends that under Delaware law,
8 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
reasonable diligence does not require that an investiga-
tion be conducted if such an effort would have been futile.
Appellees respond that Google bore the burden of
proving that both elements of the discovery rule were
satisfied to toll the statute of limitations. Even if SRI
would not have uncovered the conception during the
period of employment, Appellees assert that SRI had
sufficient cause to investigate even after Konig was no
longer employed by SRI. Appellees argue that the ex-
tremely high bar for establishing that an injury was
“inherently unknowable” was not met because Google
failed to show that it was “practically impossible” for SRI
to discover the injury. Appellees also claim that proof of
“blameless ignorance” is independently essential for
tolling under the discovery rule to apply, and counters
that Google presented no evidence to show that SRI tried
to protect its rights or otherwise exercised reasonable
diligence. Because Google failed to meet its burden on
either element, Appellees maintain, the district court did
not err in concluding that no reasonable jury could have
found that the discovery rule tolled the limitations period.
Even viewing the record in the light most favorable to
Google and drawing all reasonable inferences in its favor,
we agree with the district court that Google did not pro-
vide legally sufficient evidence for the jury to find that the
injury was inherently unknowable or that SRI was blame-
lessly ignorant, and therefore could not invoke the discov-
ery rule to toll the limitations period.
First, Google failed to prove that the injury was in-
herently unknowable. Unlike a situation in which a
patient after surgery has virtually no way of knowing that
a surgical instrument was negligently left inside, cf.
Layton, 246 A.2d at 796, SRI knew that Konig was leav-
ing to immediately work at a start-up technology compa-
ny. Considering the competitiveness of companies and
institutes in the technical world and, as Google has ar-
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 9
gued, that the technology was related to Konig’s work at
SRI, his departure and new venture could well have been
a “red flag” that should have generated an inquiry wheth-
er Konig had conceived an invention during his employ-
ment with SRI that he might intend to develop and
commercialize with his new company.
More importantly, Google failed to show that SRI was
blamelessly ignorant of Konig’s alleged breach of contract.
Google’s attempts to dispense with its burden of proof for
the blamelessly ignorant element of the discovery rule by
arguing the futility of any inquiry do not compensate for
its failure of proof. Despite the opportunities for SRI to
have inquired about Konig’s departure and his new ven-
ture—the obvious one being an exit interview, at which
an inquiry might have been made regarding whether
Konig had made any inventions at SRI that had not been
reported to SRI—the record is critically deficient on the
minimum quantum of evidence necessary to show that
SRI did anything to protect its interests. One might have
asked, even if an answer might not have been forthcom-
ing, what was Konig going to do in his new company? SRI
might have learned of the Personal Web products by
asking other SRI employees, such as the scientist who
tested the products in 2001, or by monitoring the new
start-up for a period of time after Konig’s departure.
Companies can also watch competitive patent filings.
Even if a reasonable investigation might not have given
SRI definitive proof of a breach of contract, we agree with
the district court that such actions could have uncovered
clues as to a potential claim. In fact, neither party pre-
sented any evidence about whether a reasonable investi-
gation would have revealed that Konig invented the
Personal Web products during his employment at SRI.
We therefore agree with the district court that there
is insufficient evidence in the record to support findings
that any breach was inherently unknowable and that SRI
was blamelessly ignorant. Employers do not need to track
10 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
a former employee’s every movement for an indefinite
period of time to look for potential claims, but there
should be some basic level of diligence in looking after
one’s interests. Cf. Layton, 246 A.2d at 799; Coleman, 854
A.2d at 842. Whether that is satisfied by evidence of a
standard exit interview wherein the departing employee
is asked if all contractual obligations have been met, or of
inquiring unobtrusively about the employee’s new startup
company, should be determined on a fact-specific basis.
See Isaacson, 330 A.2d at 133–34; Brown v. E.I. duPont de
Nemours & Co., 820 A.2d 362, 368 (Del. 2003) (“To apply
the discovery exception, the court must conduct a fact-
intensive inquiry to determine whether a plaintiff was
blamelessly ignorant of a potential claim or dilatory in
pursuing the action.”); Coleman, 854 A.2d at 842 (“The
application of [the discovery] rule is necessarily based on
the facts of each case.”).
We thus see no error in the district court’s findings
that Google failed to prove that any breach of Konig’s
employment agreement was inherently unknowable or
that SRI was blamelessly ignorant, and we therefore
agree with the district court that the discovery rule did
not toll the statute of limitations period.
II. Statutory Tolling
We next address the district court’s holding that the
Delaware tolling statute also did not toll the statute of
limitations period. Section 8117 of Title 10 of the Dela-
ware Code, titled “Defendant’s absence from State,” reads
as follows:
If at the time when a cause of action accrues
against any person, such person is out of the State,
the action may be commenced, within the time
limited therefor in this chapter, after such person
comes into the State in such manner that by rea-
sonable diligence, such person may be served with
process. If, after a cause of action shall have ac-
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 11
crued against any person, such person departs
from and resides or remains out of the State, the
time of such person’s absence until such person
shall have returned into the State in the manner
provided in this section, shall not be taken as any
part of the time limited for the commencement of
the action.
10 Del. C. § 8117 (emphases added). The Delaware Su-
preme Court has stated that “the purpose and effect of
Section 8117 is to toll the statute of limitations as to
defendants who, at the time the cause of action accrues,
are outside the state and are not otherwise subject to
service of process in the state.” Saudi Basic Indus. Corp.
v. Mobil Yanbu Petrochem. Co., 866 A.2d 1, 18 (Del. 2005)
(citing Hurwitch v. Adams, 155 A.2d 591, 594 (Del. 1959)).
At the JMOL hearing, as indicated, the district court
briefly addressed the issue of statutory tolling. The court
rejected Google’s proffered interpretation of § 8117, stat-
ing that it did not understand the statute to mean that
any party sued in Delaware could assert stale counter-
claims with no connection to Delaware.
Google argues that because the plain language of
§ 8117 does not restrict its application to claims with a
connection to Delaware, the limitations period was tolled
for claims against Konig, who was not physically in or
subject to service of process in Delaware before PUM’s
infringement suit. Google relies on Saudi Basic for the
propositions that the claims need not be under Delaware
law and that neither the plaintiff nor the defendant needs
a connection to Delaware. Even so, Google asserts that
the claim does have ties to Delaware and therefore that
the district court’s public policy concern was inapt in this
case. Google also insists that SRI’s rights could not have
been vindicated anywhere else at an earlier time.
Appellees respond that § 8117 is meant to protect
Delaware residents who have a cause of action against a
12 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
potential defendant who has evaded Delaware’s jurisdic-
tion. Appellees counter that Google’s interpretation of the
statute would effectively abolish the statute of limitations
for claims against non-Delaware residents, which would
be an absurd result. Appellees maintain that the breach
of contract counterclaim had no connection to Delaware,
and that neither SRI nor Konig were Delaware residents.
We have not found a Delaware Supreme Court deci-
sion explicitly holding that § 8117 requires a particular
connection to Delaware, but our understanding of the
statute’s meaning in light of Delaware case law supports
the district court’s decision. See Litton Indus. Prods., Inc.
v. Solid State Sys. Corp., 755 F.2d 158, 165 (Fed. Cir.
1985) (noting that when there is no decision by the high-
est state court on a specific state law issue, the Federal
Circuit must decide whether the district court properly
predicted applicable state law).
We agree with the district court that § 8117 should
not apply to toll the statute of limitations period in this
case. Although the statute on its face does not require
any connection to Delaware, we agree with the district
court’s disinclination to interpret the statute so broadly as
to apply to any claim, claimant, or defendant. The Dela-
ware Supreme Court has held that the tolling statute does
not necessarily apply “in any action in which the defend-
ant is a non-resident”; such an application “would result
in the abolition of the defense of statutes of limitation in
actions involving non-residents.” Hurwitch, 155 A.2d at
593–94 (citing Lewis v. Pawnee Bill’s Wild West Co., 66 A.
471 (Del. 1907) as rejecting such an interpretation).
Accordingly, to read § 8117 as granting Delaware courts
the ability to hear cases with no ties to Delaware whatso-
ever, without any limits in time, as long as the defendant
at some point enters the state of Delaware or otherwise
becomes subject to service of process, and the plaintiff
brings suit within the associated statute of limitations
period, would result in untoward results. See, e.g., City of
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 13
Tacoma v. Richardson, 163 F.3d 1337, 1339 (Fed. Cir.
1998) (“When a statute suggests an absurd result, howev-
er, we must look beyond its plain meaning.”); accord
United States v. Am. Trucking Ass’ns, 310 U.S. 534, 543
(1940) (rejecting “plain meaning” interpretation that
would lead to “absurd or futile results” or “an unreasona-
ble result” clearly at odds with legislative policy).
Saudi Basic involved a foreign claim and a foreign
counterclaim-defendant who was not amenable to service
of process in the United States, but it also involved claim-
ants who were residents of Delaware at the time the cause
of action originally accrued. Saudi Basic, 866 A.2d at 16.
That is not true in this case.
Other cases that discuss § 8117 and its previous in-
carnations also have some connection to Delaware, as
would be logical for the application of a Delaware law.
See, e.g., Brossman v. FDIC, 510 A.2d 471, 473 (Del. 1986)
(cause of action originally arose in favor of Delaware
resident); D’Angelo v. Petroleos Mexicanos, 398 F. Supp.
72, 80 (D. Del. 1975) (plaintiff and predecessor were
Delaware residents); United Indus. Corp. v. Nuclear Corp.
of Am., 237 F. Supp. 971, 973 (D. Del. 1964) (plaintiff was
Delaware corporation); Klein v. Lionel Corp., 130 F. Supp.
725, 726 (D. Del. 1955) (plaintiff was Delaware retail
merchant); Glassberg v. Boyd, 116 A.2d 711, 712 (Del. Ch.
1955) (derivative action brought by stockholder of Dela-
ware corporation); Hurwitch, 155 A.2d at 592 (accident
occurred in Delaware); Pawnee Bill’s, 66 A. at 472 (injury
occurred in Delaware).
Unlike Saudi Basic and the rest of the case law in
which § 8117 is applied or otherwise discussed, here there
was no tie to Delaware at the time the cause of action
accrued. While Google is incorporated in Delaware, and
hence is a Delaware resident, this cause of action accrued
in California, with a California claimant and a California
defendant. The employment agreement was executed in
14 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
California by two California residents, SRI and Konig.
The alleged breach occurred in California, during Konig’s
employment. Google’s argument that SRI’s contract
rights could not have been effectively vindicated earlier is
unpersuasive. This was not a situation in which Konig
was beyond the jurisdiction of California courts or other-
wise not amenable to service of process. SRI could have
brought suit against Konig in California. Google being a
Delaware resident is insufficient to bootstrap its claim
into having a Delaware connection; SRI was not a Dela-
ware resident at the time of the alleged breach, and
Google acquired the rights to the claim years later, well
after the limitations period had run. We thus find that
Google failed to prove that § 8117 should apply to its
counterclaim.
We therefore conclude that the district court reached
the correct result in finding that the statute of limitations
period for Google’s breach of contract counterclaim was
not tolled by § 8117 and affirm its conclusion that § 8117
did not toll the statute of limitations period.
III. Cross-Appeal
Finally, we address PUM’s cross-appeal regarding the
district court’s construction of the claim term “document.”
PUM has not challenged the jury’s verdict of nonin-
fringement on appeal.
PUM argues that the district court erred in constru-
ing the term by inserting the requirement of an “electron-
ic file” into the term “document” as used in the
specification and claims of the ’040 and ’276 patents.
PUM insists that the issue is not moot because that
construction may affect any future litigation involving the
claims that were not invalidated in this case, and claims
in related patents, and asserts that this court may rectify
that by vacating the district court’s claim construction.
PERSONALIZED USER MODEL, LLP v. GOOGLE INC. 15
Google responds that there is no longer a live in-
fringement controversy between the parties because the
district court found the claims not infringed, PUM did not
seek any further district court proceedings on infringe-
ment, and the U.S. Patent and Trademark Office can-
celled all asserted claims in inter partes reexamination.
Google asserts that this court lacks jurisdiction to issue a
claim construction opinion to ensure the proper construc-
tion of PUM’s patents in the future, where such an opin-
ion would not resolve a present infringement controversy.
We agree with Google that we lack jurisdiction over
PUM’s cross-appeal. Article III of the U.S. Constitution
limits the jurisdiction of federal courts to “cases” and
“controversies,” neither of which is presented by PUM’s
cross-appeal relating to the district court’s alleged error in
claim construction. See Jang v. Bos. Scientific Corp., 532
F.3d 1330, 1336 (Fed. Cir. 2008) (declining to render
advisory opinion as to claim construction issues that “do
not actually affect the infringement controversy between
the parties”). PUM in fact admitted that there is no live
controversy presented here and that modifying the claim
construction has no effect on the outcome of this case.
E.g., Oral Arg. at 28:40–42, 29:02–29:09, Personalized
User Model, LLP v. Google Inc., Nos. 2014-1841, 2015-
1022, available at http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2014-1841.mp3. Despite PUM’s concerns
that the construction might be given preclusive effect in
future litigation involving its related patents, we may not
provide an advisory opinion on the meaning of a claim
term that does not affect the merits of this appeal and
thus is not properly before us. We therefore decline to
review the district court’s claim construction.
CONCLUSION
Because neither the discovery rule nor § 8117 tolled
the statute of limitations period in this case, the district
court’s decision granting judgment as a matter of law in
16 PERSONALIZED USER MODEL, LLP v. GOOGLE INC.
favor of PUM and Konig on the breach of contract coun-
terclaim is affirmed. The cross-appeal relating to the
claim construction issue is dismissed.
AFFIRMED IN PART, DISMISSED IN PART
COSTS
No costs.