Zapmedia Services, Inc. v. Apple, Inc. , 482 F. App'x 533 ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
ZAPMEDIA SERVICES, INC.,
Plaintiff-Appellant,
v.
APPLE, INC.,
Defendant-Appellee.
__________________________
2011-1546
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in Case No. 08-CV-0104, Chief
Judge David J. Folsom.
____________________________
Decided: April 25, 2012
____________________________
STEVEN G. HILL, Hill Kertscher & Wharton LLP, of
Atlanta, Georgia, argued for plaintiff-appellant. With
him on the brief were BLAKE H. FRYE and MARTHA L.
DECKER.
WILLIAM C. ROOKLIDGE, Jones Day, of Irvine, Califor-
nia, argued for defendant-appellee. With him on the brief
were ALYSON G. BARKER; and GEORGE A. CASTANIAS, of
Washington, DC. Of counsel on the brief were LOUIS
ZAPMEDIA SERVICES v. APPLE 2
BRUCCULERI, Wong, Cabello, Lutsch, Rutherford & Bruc-
culeri, of Houston, Texas, and DANNY L. WILLIAMS, Wil-
liams Morgan & Amerson, P.C., of Houston, Texas.
__________________________
Before LOURIE, LINN, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
ZapMedia Services, Inc. (“ZapMedia”) appeals from
the final judgment of the United States District Court for
the Eastern District of Texas, which granted summary
judgment of noninfringement of claims 1, 4, 7, 8, 10, and
14 of U.S. Patent 7,343,414 (the “’414 patent”) by Apple,
Inc.’s (“Apple”) iTunes product. ZapMedia Servs., Inc. v.
Apple, Inc., No. 2:08-CV-104-DF-CE (E.D. Tex. Jul. 20,
2011) (the “Summary Judgment Op.”). ZapMedia also
challenges the underlying claim construction relied on by
the district court. ZapMedia Servs., Inc. v. Apple, Inc.,
No. 2:08-CV-104-DF-CE (E.D. Tex. Aug. 19, 2010) (the
“Claim Construction Op.”). Because the court did not err
in granting summary judgment of non-infringement or in
its underlying claim construction, we affirm.
BACKGROUND
The ’414 patent, owned by ZapMedia, discloses and
claims a system and method for distributing media assets
to user devices and managing user rights of the media
assets. In the preferred embodiment, a user obtains an
account on a server, is issued a password, and a virtual
private media asset database is created:
[A] user becomes a member or subscriber to a por-
tal 300, . . . and he/she is issued a user-specific
password. Once a membership exists, a virtual
private media asset database is created and asso-
3 ZAPMEDIA SERVICES v. APPLE
ciated with the user’s login account and password
in the portal.
’414 patent col.10 ll.26–31. That account keeps track of
the licensed media assets (e.g., songs and video) and the
various media player devices registered by the user. Id.
col.9 ll.60–62, col.10 ll.31–34, col.10 ll.61–64. Claim 1 is
representative:
1. A method of managing access to a plurality of
media assets comprising the steps of:
providing a user with a user account;
storing references to a plurality of media as-
sets which the user has a license to use; and
authorizing over a network a plurality of me-
dia player devices with the user account,
wherein the plurality of referenced media as-
sets can be accessed by any one of the author-
ized plurality of media player devices.
Id. col.13 ll.13–22.
During the prosecution of the ’414 patent and its par-
ent, U.S. Patent 7,020,704 (the “’704 patent”), ZapMedia
made several arguments to overcome a rejection based on
U.S. Patent 6,345,256 (“Milsted”). Milsted describes a
single-download, digital rights management (“DRM”)
protected digital media delivery system that allows any
media player with the necessary software to copy and use
the media asset. In amending its claims, ZapMedia
explained that unlike application claim 84 (later issued as
’414 patent claim 1), Milsted “does not describe, suggest
or teach the provision of a user account to a user as re-
cited in claim 84.” J.A. 708. Pointing to the pending
claims that required “associat[ing] a plurality of media
player devices with the user account,” ZapMedia noted
ZAPMEDIA SERVICES v. APPLE 4
that claim 84 “recites that a user can enable a plurality of
media player devices, on a user account basis, to access
assets licensed to the user.” J.A. 708. ZapMedia then
distinguished Milsted, by noting that “Milsted does not
disclose this element of claim 84” and that Milsted func-
tions “without regard to the device being associated with
the user account.” J.A. 708–09. ZapMedia concluded that
Milsted’s media assets “can be copied and used by ANY
player device, not a subset of player devices that are
associated with a user account.” J.A. 710 (emphasis in
original). ZapMedia added a caveat: “Although the em-
bodiments that are covered by claim 84 do not preclude
technology such as described in Milsted, the applicants
point out that the Milsted reference does not disclose . . . a
plurality of media assets that may be accessed by any one
of the media player devices that are associated with the
user account.” J.A. 711.
ZapMedia filed a complaint against Apple alleging
that Apple’s iTunes system infringes the ’414 patent.
Based on the statements in the prosecution history and,
in particular, the claim language regarding “authorized”
media player devices with “access” to media assets, the
court found that all the asserted claims require that
access to the media assets be limited only to those media
players specified in the user account. See Claim Con-
struction Op., at 14, 17–18; Summary Judgment Op., at 9.
In other words, if a system allowed access to media assets
through the user account by an unauthorized device, it
would not infringe. The court construed: (1) “user ac-
count” to mean “a record, including a login and password,
indicating that the user has the right to access the media
assets and indicating which media player devices may
access referenced media assets”; (2) “authorizing . . . a
plurality of media player devices with the user account” to
mean “specifying two or more media players in the user
5 ZAPMEDIA SERVICES v. APPLE
account, whereby referenced media assets can be copied
(and/or used) through the user account only by those
media players”; and (3) “a plurality of media player de-
vices as being authorized with the user account” to mean
“two or more media players specified in the user account,
whereby referenced media assets can be copied (and/or
used) through the user account only by those media
players.” See Summary Judgment Op., at 22; Claim
Construction Op., at 22.
In its motion for summary judgment of noninfringe-
ment, Apple submitted evidence in the form of expert
testimony that an unauthorized media player could
download a media asset from iTunes. In this experiment,
Apple’s expert used an undisputedly unauthorized device
to download a pre-purchased media asset after logging in
to an iTunes store account. The experiment also showed
that, to enable that download, iTunes provides a URL
directing the user to a third party server to download the
media asset.
Based on the claim construction and the download ex-
periment, the court held that there was no genuine issue
of material fact that iTunes could infringe because it
allowed an unauthorized media player device to download
and use files through an iTunes user account. Summary
Judgment Op., at 21. In other words, iTunes did not meet
the authorization-related limitations. The court also held
that a user account is not limited only to that part of the
iTunes store account that contains the media asset and
device data and rejected ZapMedia’s argument that there
was an issue of fact whether downloading from a third
party server was “through the user account.” Id. at 14–
17. The court also held that the “user account” requires
login and password information. Id. at 15–17. ZapMedia
timely appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
ZAPMEDIA SERVICES v. APPLE 6
DISCUSSION
I.
We review de novo the district court’s grant of sum-
mary judgment, drawing all reasonable inferences in
favor of the nonmovant. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986); Hologic, Inc. v. SenoRx, Inc., 639
F.3d 1329, 1334 (Fed. Cir. 2011). Summary judgment is
appropriate when there is “no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law.” FED. R. CIV. P. 56(a). We address claim
construction as a matter of law, which we review without
formal deference on appeal, although we give respect to
the judgments of the district courts. See Cybor Corp. v.
FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en
banc).
ZapMedia argues that the court erroneously con-
strued a negative “exclusivity” limitation requiring copy-
ing and usage of licensed media through the user account
only by media players specified in the user account.
ZapMedia contends that the use of the term “plurality”
suggests a broader number of authorized and unauthor-
ized devices. In addition, ZapMedia posits that the writ-
ten description and statements in the prosecution history
regarding Milsted cover “access” to media assets other
than through the user account (e.g., by using watermark-
ing and encryption). ZapMedia argues that Milsted was
distinguished, not based on access, but because it did not
teach: (1) the association of media player devices with a
user account; and (2) authorizing a plurality of media
players.
In addition, ZapMedia argues that there is a genuine
issue of material fact as to whether the downloading
experiments Apple submitted actually illustrate copying
or use of media assets “through the user account.” Ac-
7 ZAPMEDIA SERVICES v. APPLE
cording to ZapMedia, the copying on iTunes occurs after
purchase, and the download does not occur through the
Apple user account, but from a third party server, without
traversing the account. Alternatively, ZapMedia also
argues that a user account does not require a
login/password, contrary to the court’s construction, and
that the district court conflated the iTunes store account
with the claimed “user account,” which is more narrowly
limited to the list of media and devices.
Apple responds that the plain language of the claims
requires “authorizing” the “plurality of media players
devices with the user account,” linking “authorization”
with both the device and the user account. In other
words, access through a user account for unauthorized
media players is contrary to the claim language, and the
use of the term “plurality” does not negate this require-
ment. Apple notes that the specification expressly states
that each user account has a media player device associ-
ated with it and that only those devices can access the
media assets associated with that account. The presence
of DRM technology, according to Apple, does not change
this requirement, since those devices must still be associ-
ated with an account. Apple also relies on the statements
made by ZapMedia during the prosecution history distin-
guishing Milsted as supporting the construction that only
authorized media player devices can access media
through a user account.
Apple also argues that the grant of summary judg-
ment was based entirely on a question of law (claim
construction) with no factual disputes. According to
Apple, the issue raised by ZapMedia—whether media
assets are copied through a user account in iTunes—is a
claim construction issue because the functionality of
iTunes is not disputed. Apple notes that a user must still
interact with the user account to retrieve the media from
ZAPMEDIA SERVICES v. APPLE 8
the third party servers via logging in and receiving a URL
from iTunes. Apple notes that ZapMedia’s expert even
admitted that the iTunes store account is a “user account”
under the court’s original construction. Finally, Apple
contends that the court does not need to reach the ques-
tion whether a “user account” requires a login/password,
because the opinion below was based solely on the au-
thorization-related limitations.
We agree with Apple and the district court that in
light of the claim language, written description, and the
prosecution history, the authorizing limitations limit
“access” to media assets only to “authorized” media player
devices by way of the user account. To ascertain the scope
and meaning of the asserted claims, we look to the words
of the claims themselves, the specification, the prosecu-
tion history, and, if necessary, any relevant extrinsic
evidence. See Phillips v. AWH Corp., 415 F.3d 1303,
1315–17 (Fed. Cir. 2005) (en banc). As the district court
noted, the claim limitations focused on whether author-
ized media players can access media assets from the asset
management system, not on whether unauthorized de-
vices can play those assets. Claim Construction Op., at
12–13. For example, claim 4 of the ’414 patent requires
“enabling the at least one authorized media player device
to access one or more of the media assets associated with
the user account.” Claims 1 and 10 have similar lan-
guage: “wherein the plurality of referenced media assets
can be accessed by any one of the authorized plurality of
media player devices” (claim 1) and “providing access to at
least one of the plurality of licensed media assets by any
one of the plurality of authorized media player devices”
(claim 10). The relevant inquiry for infringement is
therefore whether authorized devices are accessing media
assets, not whether those devices can play them.
9 ZAPMEDIA SERVICES v. APPLE
The claim language by itself suggests that access
must be exclusively limited to authorized devices by way
of the user account. Claim terms of course should not be
interpreted “in a vacuum, devoid of the context of the
claim as a whole.” Kyocera Wireless Corp. v. Int’l Trade
Comm’n, 545 F.3d 1340, 1347 (Fed. Cir. 2008). But the
claims each require authorization prior to access, as the
access is given to “authorized” devices, and each of the
claims links both the media assets and the authorization
“with the user account.” For example, claim 1 requires
that authorization of the media player devices be “with
the user account . . . wherein the . . . media assets can be
accessed.” Claims 4 and 10 similarly require a previously
authorized media player to access media assets that are
associated with the user account. Taking the claim terms
as a whole, as the authorization of the devices is with the
user account and the media assets are associated with
that user account, the access given to the authorized
devices must therefore be by way of the user account. In
addition, because the claims require access to media
assets by an authorized media player device, logically an
unauthorized media player device cannot access the
media assets. The authorization would be superfluous if
unauthorized devices had the same access functionality as
authorized devices. And contrary to ZapMedia’s argu-
ment, the claim’s use of the term “plurality” does not
negate this fact, instead only specifying that there can be
a number of authorized media player devices.
Supporting this reading, the written description iden-
tifies a preferred embodiment limiting access to author-
ized media players:
The system according to the present invention
permits users to download their licensed digital
media assets to secure client media player devices
and to use their licensed digital media assets on
ZAPMEDIA SERVICES v. APPLE 10
those devices. As with the physical use of a CD in
the bricks and mortar world, a user will have ac-
cess to use his or her licensed assets on other info-
tainment devices that he or she owns or uses,
provided those other client media player devices
are registered within the portal as being author-
ized to use the user’s licensed assets.
’414 patent col.10 l.61–col.11 l.2 (emphases added). The
written description continues, describing the use of a
previously purchased media asset on authorized devices.
Id. col.11 ll.60–64 (“An asset stored locally on a media
player . . . can be identified and uploaded to the portal for
use on other authorized media player devices of that
user.”). The only other mention of authorized devices is in
the negative, describing a security lockout feature to
prevent unauthorized media players from using media
assets after synchronizing with the server. Id. col.12 l.54–
col.13 l.10 (“To protect the usage of a digital media asset
and a media player device, the security lockout procedure
is provided to lockout unauthorized media player de-
vices.”). These three references to authorized devices
show one common thread: authorized devices have access;
unauthorized devices do not.
If there were any lingering doubt, ZapMedia, during
the prosecution of the ’414 patent, made several state-
ments distinguishing Milsted on that very basis. Again,
Milsted describes a single-download, DRM-protected
digital media delivery system that allows any media
player (authorized or not) with the necessary software to
copy and use the media asset. ZapMedia, in response to a
rejection, noted that claim 1 “recites that a user can
enable a plurality of media player devices, on a user
account basis, to access assets licensed to the user” and
that “Milsted does not disclose this element” because
Milsted functions “without regard to the device being
11 ZAPMEDIA SERVICES v. APPLE
associated with the user account.” J.A. 708–09. ZapMe-
dia concluded that Milsted’s media assets “can be copied
and used by ANY player device, not a subset of player
devices that are associated with a user account.” J.A. 710.
These statements stand for the proposition in the ’414
patent that only the “subset of player devices associated
with the user account” can copy and use media assets. In
other words, if an unauthorized media player (one not
associated with the user account) can access a media
asset that system cannot infringe.
Consistent with this understanding, ZapMedia also
made similar statements in the prosecution and reexami-
nation of the parent ’704 patent. See TIP Sys., LLC v.
Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1371
(Fed. Cir. 2008) (“[P]rosecution history of a related patent
application may inform construction of a claim term,
when the two applications are directed to the same sub-
ject matter and a clear disavowal or disclaimer is made
during prosecution of the related application.”). In re-
sponse to a rejection over Milsted, ZapMedia stated that
the “user account” “manage[s] media assets across a
plurality of media player devices” by specifying “the
plurality of media player devices that may access the
media assets.” J.A. 808. ZapMedia also stated that that
is a requirement for both the ’414 and ’704 patents. J.A.
765–66.
In response, ZapMedia relies on its own statement in
the prosecution history that the ’414 patent does not
preclude using the technology of Milsted. J.A. 711 (“[T]he
embodiments that are covered by claim 84 do not preclude
technology such as described in Milsted . . . .”). In support
of this position, ZapMedia cites the written description’s
discussion that watermarking and encryption techniques
can be used with the ’414 patent. ’414 patent col.11 ll.12–
56. However, the use of watermarking, encryption, and
ZAPMEDIA SERVICES v. APPLE 12
other DRM technology as additional safeguards do not
preclude practicing the ’414 patent’s limited access by
only authorized devices. In other words, the fact that the
’414 patent discloses using watermarking and DRM
technologies does not mean that the claim term “access”
covers that technology for unauthorized devices. In fact,
ZapMedia during reexamination stated that such tech-
nologies were irrelevant to the authorization and access
claim language:
[R]egardless whether that particular media asset
is or is not protected by some kind of encryption,
the claims of the ’414 patent are directed to meth-
ods and systems that can further manage access
to media assets by requiring there to be a user ac-
count under which a plurality of media player de-
vices are authorized.
J.A. 752–53 (emphases in original). In other words, the
authorization and access claim language in the ’414
patent has nothing to do with watermarking or DRM
technology.
Neither party disputes that iTunes is capable of ac-
cessing a licensed media asset using an unauthorized
device, as shown in the downloading experiments con-
ducted by Apple. Instead, ZapMedia argues that because
the actual file is downloaded from a third party server,
the media asset is not copied “through the user account.”
Alternatively, ZapMedia argues that claimed “user ac-
count” is not coextensive with the iTunes store account,
and is more narrowly limited only to the list of licensed
media assets and authorized devices. The parties’ dispute
in this case thus comes down to the proper scope of the
disputed claims.
The asserted claims each require access to the “media
assets.” The written description states that the user
13 ZAPMEDIA SERVICES v. APPLE
account, which contains a list of these media assets, does
not have to actually store the media assets:
The master media library database 330 need not
locally store all of the media assets; in some cases
the master media library database 330 will main-
tain a reference to the media asset that is stored by
a media source 100 and accessed by the portal 300
as needed to satisfy the needs of users.
’414 patent col.10 ll.35–40; see also col.5 ll.23–24 (“The
portal may interface to third party databases for access to
media assets.”). Thus, because the “references to the
media asset” are stored in the user account’s media li-
brary, access must be through the user account to retrieve
either the “media asset” itself or a “reference” to that
media asset, which may or may not be stored elsewhere.
The fact that iTunes provides a URL (a reference to the
media asset), and the file is ultimately downloaded from a
third party (a media source), meets this limitation.
But that is a distinction without a difference. Under
the district court’s construction, iTunes allows unauthor-
ized devices to access the media assets through the user
account and cannot infringe. Under ZapMedia’s alterna-
tive proposal of a more narrow “user account,” iTunes
does not download through the user account at all, and
thus cannot infringe. Either way, iTunes does not in-
fringe.
ZapMedia’s remaining arguments are not persuasive.
The construction of “user account” to require a
login/password is not necessary to decide on appeal be-
cause the failure to meet the authorizing limitations does
not turn on the use of a login/password, but on the access
of an unauthorized device. Even so, ZapMedia admitted
that the iTunes store account is a “user account” and
includes a username and password. J.A. 1776 (stating in
ZAPMEDIA SERVICES v. APPLE 14
ZapMedia’s claim chart the “[t]he iTunes store account is
a user account.”); J.A. 1545 (“The user account is, there-
fore, a ‘record,’ meaning a collection of user-related data,
including user credit card information, address informa-
tion, username and password.”). In addition, there is
ample support in the specification to require a user ac-
count to have such a password. E.g., ’414 patent col.10
ll.26–31(“[A] user . . . is issued a user-specific password,”
and “a virtual private media asset database is created and
associated with the user’s login account and password.”),
col.3, ll.15–17 (“Each user within the user family would
have his/her own identifier and password.”).
Taken together, the court correctly construed “author-
izing . . . a plurality of media player devices with the user
account” to mean “specifying two or more media players
in the user account, whereby referenced media assets can
be copied (and/or used) through the user account only by
those media players” and “a plurality of media player
devices as being authorized with the user account” to
mean “two or more media players specified in the user
account, whereby referenced media assets can be copied
(and/or used) through the user account only by those
media players.” While iTunes accesses media assets
“through the user account,” iTunes, by allowing unauthor-
ized devices to do so cannot meet the exclusive authoriz-
ing limitations and thus does not infringe.
CONCLUSION
We have considered ZapMedia’s remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, the judgment of the district court is
AFFIRMED