Boesen v. Garmin International, Inc. , 455 F. App'x 974 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
PETER V. BOESEN,
Plaintiff-Appellant,
v.
GARMIN INTERNATIONAL, INC.,
Defendant-Appellee,
and
TOMTOM, INC.,
Defendant-Appellee.
__________________________
2010-1488
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in case no. 08-CV-3248, Judge
Rebecca R. Pallmeyer.
___________________________
Decided: December 15, 2011
___________________________
PETER V. BOESEN, of Des Moines, Iowa, pro se.
B. TRENT WEBB, Shook, Hardy & Bacon, LLP, of Kan-
sas City, Missouri, for defendant-appellee Garmin Inter-
BOESEN v. GARMIN INTL 2
national, Inc. On the brief were ABRAM P. SEITZ and
ABRAN J. KEAN.
JAMES H. WALLACE, JR., Wiley Rein L.L.P., of Wash-
ington, DC, for defendant-appellee TomTom, Inc. With
him on the brief was BRIAN H. PANDYA. Of counsel was
KEVIN P. ANDERSON.
__________________________
Before RADER, Chief Judge, LINN and MOORE, Circuit
Judges.
PER CURIAM.
Dr. Peter V. Boesen appeals the district court’s grant
of summary judgment holding claims 1, 2, 4, 9, and 10 of
United States Patent No. 6,784,873 (’873 patent) antici-
pated by a prior art Acura navigation system. Because
there is no genuine issue of material fact and summary
judgment of invalidity is appropriate, we affirm.
BACKGROUND
The ’873 patent is generally directed to a method and
medium for a computer readable keyboard display inca-
pable of user termination. ’873 patent Abstract. The
patent purports to solve the problem of prior art touch
screen keyboards which could accidentally be moved,
resized, minimized, or altered on the screen. ’873 patent
col.1 ll.34-39. The solution is to “provide an on-screen
keyboard which is incapable of alteration or termination
by a user.” ’873 patent col.1 ll.43-45. An application asks
for user input through the use of fields, and the user
provides that input via the displayed keyboard. ’873
patent col.3 ll.14-20. The keyboard, however, “may not be
moved, maximized, or minimized” and therefore “provides
the user with a constant input area to which the user may
3 BOESEN v. GARMIN INTL
become accustomed and becomes an integral component.”
’873 patent col.3 ll.21-26.
While the specification suggests that the keyboard is
a persistent (or in the words of the patent, “immutable,”
’873 patent col.3 ll.43-46) presence on the display, the
claims are not so limited. Claim 1 is typical of the claims
at issue in this litigation:
1. A method of entering data on a touch screen
display, the method comprising: invoking a com-
puter program in which user input is sought; in-
voking an input area, including a plurality of data
input fields; invoking a graphical keyboard area
incapable of user termination independent of ter-
mination of the input area, the graphical key-
board area having a plurality of keys on the
display; selecting keys on the keyboard to provide
the desired input; and automatically terminating
the graphical keyboard area after the desired input
is received in the input area.
Independent claim 10, includes “removing the graphical
keyboard” after “determining that further input from the
user is no longer needed in the input area.” Hence, both
independent claims allow for the removal of the keyboard.
It is axiomatic that the claims define the metes and
bounds of the invention. Arlington Indus., Inc. v. Bridge-
port Fittings, Inc., 632 F.3d 1246, 1252 (Fed. Cir. 2011).
On summary judgment, the district court held all as-
serted claims of the ’873 patent invalid as anticipated by
the prior art Acura navigation system. The Acura naviga-
tion system had a touch screen that could be used to input
information. It was flanked by additional “hard” buttons
that could be used to control the cursor on the screen and
operate the system. The Acura navigation system is
pictured below:
BOESEN v. GARMIN INTL 4
J.A. 4 (citing GARM00616367).
The court explained that the “only argument that
Plaintiff raise[d] on the merits of anticipation relates to
the hard buttons that are always present on both sides of
the screen.” J.A. 6. SP Technologies, L.L.C., the named
plaintiff at the time, argued that because the hard but-
tons flanking the Acura navigation system’s touch screen
could be used to, e.g., cancel the display, the system
cannot anticipate the patent. J.A. 6. 1 The court acknowl-
edged that the hard buttons could lead to on-screen
results, J.A. 6-7, but held this did not prevent the Acura
navigation system from anticipating the asserted claims
since the Acura system “discloses a computer program
that seeks user input by displaying an input area and
invoking an on-screen keyboard that cannot be termi-
nated independently of the input area.” J.A. 7.
The court pointed to various display screens, as evi-
denced by the Acura navigation system manual, that
1 The plaintiff also argued that the evidence related
to the Acura navigation system was “inadmissible and
that it does not establish the workings of a single device
that was publicly available.” J.A. 3. The court disagreed
and this issue was not appealed.
5 BOESEN v. GARMIN INTL
included an input for a city name along with an on-screen
keyboard that allowed the user to input letters to the city
name field. The court explained that “the user selects
keys on the keyboard to provide the desired input and the
on-screen keyboard automatically terminates once the
desired input is received” and the user presses the “find”
key on the display. J.A. 8. While the court explained that
the “Acura Navigation System’s joystick can be used
instead of the touch screen to select the on-screen key-
board’s keys,” it concluded that this additional functional-
ity was “immaterial” to the anticipation analysis since the
touch screen portion of the Acura system contained every
limitation of the claim. J.A. 8. After analyzing the addi-
tional limitations in dependent claims 2, 4, and 9, and the
other asserted independent claim, claim 10, the court held
there was no genuine dispute of material fact and that the
defendants were entitled to summary judgment of invalid-
ity based on anticipation by the Acura navigation system.
J.A. 9.
The district court’s judgment was initially appealed
by SP Technologies. Dr. Boesen is now the real party of
interest, and pursues the appeal pro se. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295.
DISCUSSION
A patent claim is anticipated if each and every limita-
tion is found in a single prior art reference. 35 U.S.C.
§ 102. Although anticipation is a question of fact, sum-
mary judgment may be appropriate if the record reveals
no genuine dispute of material fact. Encyclopaedia Bri-
tannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345,
1349 (2010). We review the trial court’s grant of sum-
mary judgment de novo. Billups-Rothenberg, Inc. v.
Assoc. Reg’l & Univ. Pathologists, Inc., 642 F.3d 1031,
1036 (Fed. Cir. 2011). Summary judgment is appropriate
BOESEN v. GARMIN INTL 6
when, drawing all reasonable inferences in favor of the
non-movant, there is no genuine issue as to any material
fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986); Fed.R.Civ.P. 56(c).
On appeal, Dr. Boesen raises a number of arguments
that were not raised below. We typically do not consider
arguments raised for the first time on appeal: “With a
few notable exceptions, such as some jurisdictional mat-
ters, appellate courts do not consider a party’s new theo-
ries, lodged first on appeal. If a litigant seeks to show
error in a trial court’s overlooking an argument, it must
first present that argument to the trial court.” Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426
(Fed. Cir. 1997).
Regardless, Dr. Boesen’s arguments on appeal are
unavailing. Though framed as factual issues regarding
the disclosure of the prior art, Dr. Boesen’s arguments are
primarily directed to claim interpretation. For example,
Dr. Boesen argues that the Acura system does not disclose
“a graphical keyboard area incapable of user termination
independent of termination of the input area” because in
some screens the “done” button remains in the same place
after the input is complete. Pl.-Appellant’s Br. 19-44.
Thus, after entering in, e.g., the user’s pin and hitting the
“done” button on the screen, the subsequent screen has
different input fields but maintains a “done” button in the
same place. Id. at 26-27. Dr. Boesen also argues that the
possibility of additional inputs using the Acura navigation
system’s joystick precludes anticipation since this is an
“alternative means of input.” Id. at 44-49. This same
argument is essentially repeated by Dr. Boesen when he
argues that claim 10 is not anticipated because “the user
can at any time otherwise provide input through the hard
buttons and the joystick.” Id. at 50; see also, e.g., id. at 51
(system “never requires input within the input area” since
7 BOESEN v. GARMIN INTL
it “can always be entered into the Acura Navigation
System using alternative means”). Likewise, Dr. Boesen
claims the preamble should be limiting, and that “all data
flow must be able to move through the touch screen.” Id.
at 57. Dr. Boesen argues that the Acura system cannot
anticipate because it does not require input solely through
the on-screen keyboard at all times – and in some in-
stances only allows input through the hard buttons. Id.
at 60-63.
These are not factual disputes regarding the scope or
content of the prior art navigation system, but rather
disputes over claim scope. The claims at issue do not
preclude additional inputs beyond use of the touch sensi-
tive on-screen keyboard. Both independent claims 1 and
10 are open ended “comprising” claims. “‘Comprising’ is a
term of art used in claim language which means that the
named elements are essential, but other elements may be
added and still form a construct within the scope of the
claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1997). The district court correctly explained
that as long as the Acura navigation system can – and
does – perform the claimed input method, it is of no
consequence that it can also perform other input methods.
Contrary to Dr. Boesen’s arguments, the claims have no
other language to suggest that the input must always
come via the on-screen keyboard. Moreover, even if the
preamble were to be limiting, this would not narrow the
scope of the claims in a way that avoids invalidity: the
Acura navigation system still practices these claims when
a user inputs information using the on-screen keyboard,
followed by pressing an on-screen acceptance key such as
“done” or “find” which dismisses the input field. The fact
that the user of the Acura system could also make the
input using the joystick or that the subsequent screen has
a different input field with the same acceptance key in the
BOESEN v. GARMIN INTL 8
same location simply does not take it outside the scope of
these broad claims.
Even assuming the Acura navigation system func-
tioned as described in Dr. Boesen’s brief, use of the sys-
tem still falls within the scope of the asserted claims. It is
axiomatic that a product which would “infringe if later in
time anticipates if earlier than the date of the invention.”
Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747
(Fed. Cir. 1987). The district court therefore correctly
concluded that no genuine issue of material fact precluded
summary judgment of invalidity based on the Acura
navigation system. We have considered Dr. Boesen’s
additional arguments on appeal and find them to be
without merit.
AFFIRMED