Function Media, L.L.C v. Google Inc. , 708 F.3d 1310 ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
FUNCTION MEDIA, L.L.C.,
Plaintiff-Appellant,
v.
GOOGLE INC.,
Defendant-Appellee,
AND
YAHOO! INC.,
Defendant.
______________________
2012-1020
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 07-CV-0279, Magistrate
Judge Charles Everingham IV.
______________________
Decided: February 13, 2013
______________________
JUSTIN A. NELSON, Susman Godfrey L.L.P, of Seat-
tle, Washington, argued for plaintiff-appellant. With him
on the brief were MAX L. TRIBBLE, JR. and JOSEPH S.
GRINSTEIN, of Houston, Texas.
CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart
& Sullivan LLP, of San Francisco, California, argued for
defendant-appellee. With him on the brief were AMY H.
2 FUNCTION MEDIA v. GOOGLE
CANDIDO and CARL G. ANDERSON; and EDWARD J. DE
FRANCO, of New York, New York.
______________________
Before RADER, Chief Judge, NEWMAN, and REYNA, Circuit
Judges.
REYNA, Circuit Judge.
In this patent case, Function Media, L.L.C. (“FM”)
appeals the district court’s invalidation of one of FM’s
patents as indefinite and the jury’s verdict that two other
FM patents are invalid and also not infringed. FM raises
several other issues on appeal, including a claim that the
district court abdicated to the jury its responsibility to
construe disputed claim terms, an argument that the
district court incorrectly denied its motion for a new trial
on the grounds that the verdict was against the great
weight of the evidence, and an argument that the verdicts
of infringement and invalidity are irreconcilable. For the
reasons explained below, we affirm.
BACKGROUND
FM sued Google, Inc. (“Google”)1 in the United States
District Court for the Eastern District of Texas for in-
fringing U.S. Patent Nos. 6,446,045 (the “’045 Patent”),
7,240,025 (the “’025 Patent”), and 7,249,059 (the “’059
Patent”). 2 The purpose of the invention disclosed in all
three patents is to facilitate advertising on multiple
advertising outlets such as newspapers and websites.
The specification characterizes the prior art as inefficient
because, among other reasons, it requires advertisers to
manually ensure that their ads conform to the differing
1 Yahoo!, Inc. and FM settled before trial.
2 The ’025 Patent is a continuation of the ’045 Patent
and they share identical specifications. The ’059 Patent is
a continuation-in-part of the ’045 Patent.
FUNCTION MEDIA v. GOOGLE 3
requirements of each advertising venue. ’025 Patent col.
1 ll. 36-47. For example, if one website required square
ads with red borders, while another required rectangular
ads with blue borders, the prior art systems required the
advertiser to manually create both ads. Id. The inven-
tion is designed to eliminate this inefficiency by automati-
cally formatting the ads to fit each publisher’s
requirements and sending them out for publication. Id.
col. 3 ll. 28-40.
In each of the patents, a “central computer” coordi-
nates interactions between sellers, media venues, and
buyers. A “seller” is an entity that wishes to place ads,
and is sometimes referred to as an “advertiser.” ’025
Patent col. 12 ll. 21-27. “Media venues” are locations
where ads can be placed, sometimes called “publishers”;
in this case, the publishers are websites. Id. col. 10 ll. 61-
67. “Buyers” are the targets of the ads, i.e., the people
viewing the websites. Id. col. 8 ll. 35-40. The central
computer hosts a number of databases and software
processes, including the presentation rules database and
the Presentation Generating Program (“PGP”). See ’025
Patent fig. 2a.
Claim 1 of the ’025 Patent is representative of the as-
serted claims:
1. A computer system for creating and publishing
customized electronic advertisements, for a
seller, to internet media venues owned or con-
trolled by other than the seller, comprising:
a first interface to the computer system through
which each of the internet media venues is
prompted to input presentation rules for the
internet media venue for displaying electronic
advertisements on the internet media venue;
4 FUNCTION MEDIA v. GOOGLE
a first database storing the presentation rules in-
put by the internet media venues through the
first interface;
a second interface to the computer system through
which a seller is prompted to input infor-
mation to select one or more of the internet
media venues and prompted to input infor-
mation to create an electronic advertisement
for publication to the selected internet media
venues;
a second database storing the information input
by the seller through the second interface; and
a computer controller of the computer system pro-
cessing and publishing the electronic adver-
tisement to one or more of the selected internet
media venues in compliance with the presen-
tation rules of the internet media venue,
whereby the electronic advertisement is dis-
played on each of the one or more of the se-
lected internet media venues in compliance
with the presentation rules of the internet
media venue.
’025 Patent col. 64 l. 59 to col. 65 l. 17 (emphases added).
Thus, the invention requires: rule setting by the media
venues to inform the system how the ads must be format-
ted; storage of the rules; inputting information to select
media venues where the ads will be displayed; inputting
information to create an ad; storing the ad information;
processing the ad; and publishing the ad to the internet
media venue. The disputed elements are the “creation
and processing,” “selection,” and “publishing” elements.
FM asserted that Google’s AdSense for Content and
AdSense for Mobile products infringed when used in
FUNCTION MEDIA v. GOOGLE 5
conjunction with Google’s AdWords interface. 3 AdSense
for Content is a system that selects relevant ads to dis-
play to buyers viewing web pages containing certain
embedded Google code. Every time a buyer visits a site,
the embedded code prompts Google’s system to run an
auction. Which ads are displayed is determined by a
proprietary Google algorithm that considers the amount
of money the seller (advertiser) is willing to spend per
click when weighed against the relevancy, or “quality,” of
the ad. Generally, to get a less relevant ad displayed, an
advertiser must bid more money than another advertiser
supplying a more relevant ad. Once the ad is chosen it is
sent directly to the buyer’s browser—not to the website
publisher—and is displayed in such a way that it appears
to be part of that webpage.
AdWords Front End is a site where sellers input the
content of an ad, how much they are willing to pay, key-
words with which the ad should be associated, and re-
quests for the ad to be placed on specific sites. Sellers
cannot customize the “look” of the ads, so all ads look the
same except for the actual text displayed. Sellers can
request placement on specific sites but they have no way
to guarantee they will be placed on those sites—they still
have to win the auction (even after requesting placement
on specific sites), be relevant, and be allowed to advertise
on the site by the publisher. See Transcript of Jury Trial
at 138, Function Media, L.L.C. v. Google, Inc., No. 2:07-
CV-279 (E.D. Tex. Oct. 9, 2009), 2009 WL 3260566 (ex-
plaining that Coca-Cola can prevent Pepsi from advertis-
ing on its site).
After the claim construction hearing, the district court
found the ’045 patent to be indefinite and therefore inva-
lid because the specification did not disclose sufficient
3 AdWords itself, which puts the familiar blue text
ads next to Google search results, is not alleged to in-
fringe.
6 FUNCTION MEDIA v. GOOGLE
structure for its sole independent claim’s means plus
function term, “means for transmitting.” Function Media
L.L.C. v. Google, Inc., No. 07-CV-0279, slip op. at 10-11
(E.D. Tex. Oct. 9, 2009), ECF No. 218 (“Markman Order”).
The court construed the other disputed terms and denied
Google’s motion for summary judgment of noninfringe-
ment. The case was tried to a jury on claims 1, 20, 37, 52,
63, 90, 179, and 231 of the ’025 Patent and claim 1 of the
’059 Patent, and the jury found these claims to be both
invalid and not infringed. 4 Function Media L.L.C. v.
Google, Inc., No. 07-CV-0279 (E.D. Tex. Jan. 26, 2010),
ECF No. 413 (“Verdict Form”).
After trial, FM filed for a motion for judgment as a
matter of law (“JMOL”) on validity and also moved for a
new trial on the grounds that the verdict was against the
great weight of the evidence and otherwise irreconcilable.
The district court granted JMOL for claims 52, 63, 90,
and 231 of the ’025 Patent, finding that Google had not
4 The asserted claims from these patents have re-
cently been held invalid by the United States Patent and
Trademark Office (“PTO”) during reexamination. Google
requested reexamination of the ’025, ’059, and ’045 pa-
tents, including all asserted claims. The examiner reject-
ed all claims, and the Board of Patent Appeals and
Interferences affirmed. Google requests that we take
judicial notice of this fact. It is proper to take judicial
notice of a decision from another court or agency at any
stage of the proceeding, even if it was not available to the
lower court. See Old Reliable Wholesale, Inc. v. Cornell
Corp., 635 F.3d 539, 549 (Fed. Cir. 2011) (“Although the
results of the PTO reexamination proceedings were not
available to the district court, this court can take judicial
notice [of them].”). The ’045 patent was invalid for indefi-
niteness but FM may be allowed to file an amendment,
while the other rejections have been appealed to this
court.
FUNCTION MEDIA v. GOOGLE 7
submitted sufficient evidence for the jury to find that
those claims were invalid. Function Media L.L.C. v.
Google, Inc., No. 07-CV-0279, slip op. at 1 (E.D. Tex. Oct.
9, 2011), ECF No. 492 (“Final Judgment”). Thus, of the
asserted claims, only these four remained valid, but none
of them were found to be infringed.
FM appeals, and Google does not cross-appeal the dis-
trict court’s JMOL regarding those four claims. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
STANDARD OF REVIEW
Claim construction and indefiniteness determinations
are reviewed without deference. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en
banc) aff’d, 517 U.S. 370 (1996); see also Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1383 (Fed. Cir.
2011). If there is an error in claim construction,
we independently construe the claim to determine
its correct meaning, and then determine if the
facts presented at trial can support the appealed
judgment. We may affirm the jury’s findings on
infringement or validity issues if substantial evi-
dence appears in the record supporting the jury’s
verdict and if correction of the errors in a jury in-
struction on claim construction would not have
changed the result, given the evidence presented.
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328
(Fed. Cir. 2002) (internal quotation marks and citations
omitted).
“For issues not unique to patent law, we apply the law
of the regional circuit in which this appeal would other-
wise lie. Thus, we apply Fifth Circuit law when review-
ing . . . denials of motions for JMOL or new trial.” i4i Ltd.
P’ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir.
2010), aff’d, 131 S. Ct. 2238 (2011). The Fifth Circuit
“review[s] the denial of a motion for new trial brought on
8 FUNCTION MEDIA v. GOOGLE
the ground that the verdict is against the great weight of
the evidence for abuse of discretion, which . . . mean[s]
that the denial will be affirmed unless there is a clear
showing of an absolute absence of evidence to support the
jury’s verdict.” Rivera v. Union Pac. R.R. Co., 378 F.3d
502, 506 (5th Cir. 2004) (internal quotation marks and
citations omitted).
DISCUSSION
FM raises several issues it maintains require a new
trial. First, FM argues that the district court incorrectly
found the ’045 patent’s means plus function limitation to
be indefinite. With regard to the claims that went to the
jury, FM contends that the district court’s claim construc-
tions were incorrect, and that the district court improper-
ly allowed claim construction disputes to be decided by
the jury. FM also argues that the jury’s verdict was
against the great weight of the evidence, was based upon
an incorrect statement of the law, and was irreconcilable.
Google responds that FM’s arguments are really factual
questions disguised as claim construction arguments, that
the district court did construe all of the disputed terms,
and that FM has waived many of its arguments.
I. The ’045 Patent: Indefiniteness
We begin with FM’s argument that the district court
erred in granting summary judgment that the ’045 patent
was invalid for indefiniteness because it did not disclose a
structure for the means plus function term “means for
transmitting.” FM agrees that the recited function here is
“transmitting said presentations to a selected media
venue of the media venues,” Markman Order, slip op. at 9,
and that the “means for transmitting” is the PGP, a piece
of software. FM disagrees with the district court’s conclu-
sion that, as in Blackboard, Inc. v. Desire2Learn, Inc., 574
F.3d 1371 (Fed. Cir. 2009), the specification of the ’045
patent “does not describe the means or steps taken to
accomplish the end result,” and that “the PGP is merely a
FUNCTION MEDIA v. GOOGLE 9
black box that accomplishes the claimed function.” J.A.
10.
It is axiomatic that claims must “particularly point[]
out and distinctly claim[] the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2
(2006). 5 Section 112, paragraph 6 allows for a limited
exception, permitting “a claim [to] state the function of
the element or step, and the ‘means’ covers the ‘structure,
material, or acts’ set forth in the specification and equiva-
lents thereof.” Typhoon, 659 F.3d at 1383. The trade-off
for allowing such claiming is that “the specification must
contain sufficient descriptive text by which a person of
skill in the field of the invention would ‘know and under-
stand what structure corresponds to the means limita-
tion.’” Id. at 1383-84 (quoting Finisar Corp. v. DirecTV
Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
It is well settled that “[s]imply disclosing software,
however, ‘without providing some detail about the means
to accomplish the function[,] is not enough.’” Noah Sys.,
Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012)
(quoting Finisar, 523 F.3d at 1340-41). When dealing
with a “special purpose computer-implemented means-
plus-function limitation,” we require the specification to
disclose the algorithm for performing the function. The
“specification can express the algorithm in any under-
standable terms including as a mathematical formula, in
prose, or as a flow chart, or in any other manner that
provides sufficient structure.” Id. Importantly, we have
said that “[w]hile it is true that the patentee need not
5 Since this suit was filed in 2007, Congress has
passed the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, 125 Stat. 284 (2011). The AIA refor-
matted the paragraphs of § 112 as subsections and made
other changes not relevant to this appeal. The citations to
§ 112 in this opinion refer to the statute as it existed prior
to the AIA.
10 FUNCTION MEDIA v. GOOGLE
disclose details of structures well known in the art, . . .
the specification must nonetheless disclose some struc-
ture.” Default Proof Credit Card Sys., Inc. v. Home Depot
U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) (empha-
sis added) (explaining that even “the testimony of one of
ordinary skill in the art cannot supplant the total absence
of structure from the specification.”); see also Noah Sys.,
675 F.3d at 1313 (distinguishing between software means
plus function claims in which no algorithm is disclosed,
which are indefinite, and claims in which an algorithm is
disclosed, whose sufficiency is judged based on what a
person of ordinary skill in the art would have understood
them to disclose); Blackboard, 574 F.3d at 1384 (finding a
means plus function claim to be indefinite because the
specification language simply described the function to be
performed without explaining how the function was to be
performed).
Here, there is no specific algorithm disclosed in prose,
as a mathematical formula, in flow charts, or otherwise.
FM cites to several places in the specification that it
contends describe the software. These citations all ex-
plain that the software automatically transmits, but they
contain no explanation of how the PGP software performs
the transmission function. For example, the specification
states only that the PGP “either transmits the presenta-
tion to the appropriate destination or holds it for a publi-
cation date to be submitted for a particular deadline or
predetermined promotional market.” ’045 Patent col. 3 ll.
31-32; see also id. col. 51 ll. 16-23 (same); id. col. 17 ll. 7-
17 (noting vaguely that the PGP is involved in processing
and transmitting data); id. col. 20 ll. 23-28 (“[T]he Com-
munication and Transport Program 1760 monitors, di-
rects, and controls the receiving and transmitting of
messages . . . .”); id. col. 57 ll. 36-39 (“presenta-
tions . . . are automatically transmitted”). At most, the
’045 Patent specification discloses that the structure
behind the function of transmitting is a computer pro-
FUNCTION MEDIA v. GOOGLE 11
gram that transmits. Beyond the program’s function,
however, no algorithm is disclosed. As in Blackboard, the
PGP is “simply an abstraction that describes the function”
to be performed. 574 F.3d at 1383.
FM’s citation to the flow charts as sufficient structure
is similarly unavailing because the charts also do not
describe how the transmitting function is performed.
Both charts cited by FM indicate transmission with a line,
or lines, connecting the Central Processor to the Media
Interface. See ’045 Patent figs. 1a, 4f. These lines do not
explain how the software performs the transmission
function. And although FM acknowledges that the struc-
ture is software, not hardware, FM also recites as struc-
ture the types of connections over which the transmission
could occur, such as phone lines and data networks.
Appellant’s Br. 27 (citing ’045 Patent col. 13 l. 55 to col. 14
l. 2). But the issue is not whether the ’045 patent disclos-
es a physical structure over which the PGP transmits, it
is whether the patent discloses the algorithm by which
the PGP performs the transmission function. The flow
charts make no such disclosure.
Having failed to provide any disclosure of the struc-
ture for the “transmitting” function, FM cannot rely on
the knowledge of one skilled in the art to fill in the gaps.
FM argues that “‘in view of the existing knowledge in the
field of the invention,’ it is unnecessary and extraneous to
provide any more detail,” and that the disclosure “has
more than ‘sufficient structure for a person of skill in the
field to provide an operative software program for the
specified function.’” Appellant’s Br. 28 (quoting Typhoon,
659 F.3d at 1385). In Typhoon, however, the “means for
cross-referencing” was explained in prose as “entail[ing]
the matching of entered responses with a library of possi-
ble responses, and, if a match is encountered, displaying
the fact of the match, otherwise alerting the user, or
displaying information stored in memory fields associated
with that library entry.” 659 F.3d at 1386 (quoting U.S.
12 FUNCTION MEDIA v. GOOGLE
Patent No. 5,379,057 col. 3 ll. 43-48). Here, in contrast,
there is no explanation of how to transmit. Furthermore,
it is well established that proving that a person of ordi-
nary skill could devise some method to perform the func-
tion is not the proper inquiry as to definiteness—that
inquiry goes to enablement. See Blackboard, 574 F.3d at
1385. Simply put,
[a] patentee cannot avoid providing specificity as
to structure simply because someone of ordinary
skill in the art would be able to devise a means to
perform the claimed function. To allow that form
of claiming under section 112, paragraph 6, would
allow the patentee to claim all possible means of
achieving a function.
Id. “Section 112, paragraph 6, is intended to prevent such
pure functional claiming.” Id. (citing Aristocrat Techs.
Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328,
1333 (Fed. Cir. 2008)). We therefore affirm the district
court’s judgment that that claim 1 of the ’045 Patent is
invalid for indefiniteness.
II. Claim Construction
FM contends that the district court erred in constru-
ing the terms “ad creation/processing,” “selection,” and
“publishing,” and that these errors require a new trial.
We address each of these arguments in turn.
A. “Creating” and “Processing”
Claim 1 of the ’025 Patent recites an interface through
which a seller is “prompted to input information to create
an electronic advertisement.” ’025 Patent col. 65 ll. 4-7.
The parties stipulated that the “create” term means to
“create an electronic advertisement for publication in a
form customized to each of the selected internet media
venue’s presentation rules.” The system of claim 1 also
includes a controller that processes the advertisement in
compliance with the media venues’ presentation rules:
FUNCTION MEDIA v. GOOGLE 13
a computer controller of the computer system pro-
cessing and publishing the electronic advertise-
ment to one or more of the selected internet media
venues in compliance with the presentation rules
of the internet media venue, whereby the electron-
ic advertisement is displayed on each of the one or
more of the selected internet media venues in
compliance with the presentation rules of the in-
ternet media venue.
’025 Patent col. 65 ll. 10-17 (emphases added).
The parties disagreed on whether this claim requires
the system to take previously created ads and process
them in order to make them comply with the publishers’
rules, or whether the system processes raw information
entered by the seller in order to create compliant ads in
the first instance. FM proposed that processing meant
operating “upon the inputted information to create an
electronic advertisement customized for each selected
internet media venue in a form that complies with the
presentation rules set by that media venue.” Markman
Order, slip op. at 17 (emphasis added). Google proposed
that it meant operating “upon the electronic advertisement
to process it in compliance with the presentation rules of
the internet media venues.” Id. (emphasis added). The
district court ruled that the processing term means “exe-
cuting a systematic sequence of mathematical and/or
logical operations upon the customized electronic adver-
tisement to make it comply with the presentation rules of
the internet media venues.” Id. (emphasis added).
FM now argues that the district court’s interpreta-
tions of “creating” and “processing” are internally incon-
sistent. According to FM, the central computer has the
final role in the creation and formatting of ads so that
they comply with the publisher’s requirements. FM
argues that by stating that the system processes a “cus-
tomized . . . advertisement,” the court has said, in essence,
14 FUNCTION MEDIA v. GOOGLE
that “processing” means to take an ad that already com-
plies with the publisher’s rules and change it so that it
complies with the publisher’s rules. Google responds that
the district court’s construction properly reflects that the
“processing” is performed on the “electronic advertise-
ment” rather than the “inputted information” because, as
the court pointed out, the “inputted information” lan-
guage from the creation element does not reappear in the
computer controller limitation. Id. 44-45.
We begin our analysis with the language of the claim.
See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc) (“[T]he claims themselves provide sub-
stantial guidance as to the meaning of particular claim
terms.”). “The words of a claim ‘are generally given their
ordinary and customary meaning,’” which “is the meaning
that the term would have to a person of ordinary skill in
the art in question at the time of the invention.” Id. at
1312-13 (internal citations omitted). “The claims, of
course, do not stand alone. Rather, they are part of ‘a fully
integrated written instrument,’ consisting principally of a
specification that concludes with the claims. For that
reason, claims ‘must be read in view of the specification,
of which they are a part.’” Id. at 1315 (quoting Markman,
52 F.3d at 978, 979).
The claim clearly states that the “processing” is done
to the “electronic advertisement,” not the inputted infor-
mation. It follows that the creation of the ad must hap-
pen before the processing begins. If “processing” included
“creating,” the act of processing would have been per-
formed on the inputted information, which would then
lead to the creation of the rule-compliant ad. The claim
terms themselves rule out the possibility that “processing”
is done to the inputted information because a custom ad is
created before the processing step. Thus, we find that the
court’s construction of taking the “customized” ad and
then “processing” it to make it comply with the presenta-
tion rules was correct.
FUNCTION MEDIA v. GOOGLE 15
This construction is consistent with the parties’ stipu-
lated definition for the term “create.” The parties agreed
that the “creation” limitation prompts the seller to “input
information to create an electronic advertisement for
publication to the selected internet media venues.”
Markman Order, slip op. at 8 (emphasis added). The
claims do not explicitly state whether it is the seller or
central computer that actually creates the ad. On one
hand, entering information to create the ad could mean
the seller creates the ad herself by entering the infor-
mation. On the other, the seller could simply be required
to enter information which is then used by the central
computer to create the ad itself. We conclude that the
district court correctly declined to interpret the claim as
requiring either, and that creation by either the seller or
the central computer would satisfy the claim terms. What
matters for our purposes is that either way, the ad is
created before it is processed.
FM’s citations to the portions of the specification deal-
ing with the PGP do not persuade us otherwise. The
specification says that the PGP, which is part of the
central controller and presentation processor, “utilizes the
information submitted by the Sellers and held in [various
databases] . . . to create the requested presentations for
the various . . . media . . . using the Presentation Rules
Database 1650 for style and control guidelines.” ’025
Patent col. 19 ll. 46-55 (emphasis added). FM argues that
this shows that the PGP is the entity that creates the ads.
However, the specification goes on to refer to the Seller
Interface described in Figure 2c, stating:
It should be noted that in the preferred embodi-
ment of the present invention, the same rules and
guidelines contained in the Presentation Rules
Database 1650 are also held in the Presentation
Rules Database 4650 Fig. 2c, which is part of the
Seller Interface 4000 Fig. 2c. With the same rules
and guidelines as those in the Presentation Rules
16 FUNCTION MEDIA v. GOOGLE
Database 1650 applied and enforced during data
input at the Seller Interface . . . no modification or
editing should be necessary at the Central Control-
ler and Presentation Processor 1000 Module.
Id. col. 19 ll. 55-65 (emphases added). The specification
then states that although the same rules are applied at
both the seller interface and central controller, “both
processes should be utilized to ensure consistency.” Id.col. 19 l. 65 to col. 20 l. 2. Thus, at least in the preferred
embodiment, the same rules are applied twice to ensure
compliant ads are created; no changes to the original ad
should be necessary when it reaches the point of pro-
cessing. These portions of the specification further sup-
port the district court’s interpretation, which requires the
ad to be created before it is “processed,” and illustrate
why it would be improper to read FM’s proposed limita-
tion into the claim. See Phillips, 415 F.3d at 1324 (cau-
tioning against “strictly limiting the scope of the claims to
the embodiments disclosed in the specification or divorc-
ing the claim language from the specification”). We
therefore affirm the district court’s construction of these
terms.
B. “Selection”
Claim 1 of the ’025 Patent also recites an interface
“through which a seller is prompted to input information
to select one or more of the internet media venues.” FM
proposed, and the district court accepted, that this means
“software that enables the seller user to interact with the
computer system through which the seller user is prompt-
ed to enter information to select one or more internet
media venues.” 6 Markman Order, slip op. at 12-14.
6 Similarly, the ’059 Patent states “the third party
professional is prompted to input information to select one
or more of the internet media venues.” ’059 Patent col. 88
l. 56-58. The court accepted FM’s construction, which
FUNCTION MEDIA v. GOOGLE 17
Google proposed that this term meant “software or hard-
ware at the seller location through which the seller is
prompted to enter information to the computer system to
enable the seller to select one or more internet media
venues,” a construction it urges us to adopt here. Under
Google’s proposed construction, there could be no in-
fringement, because the Google system—not individual
sellers—matches ads with media venues.
Although the district court accepted FM’s construction
of the “selecting” term, FM now argues that a new trial is
required because the court effectively applied a different
construction to the term at summary judgment. Prior to
the issuance of the district court’s Markman order, Google
moved for summary judgment of non-infringement, argu-
ing that in the asserted patents the sellers must be able to
choose the media venues and they cannot do so under the
Google system. FM responded that whether the sellers in
Google’s system have the final say on selection is irrele-
vant because the FM patents do not require the sellers to
have the final say. The district court denied summary
judgment, stating:
In Google’s placement targeting, advertisers re-
quest specific web pages on which their ads will
appear, but Google’s systems ultimately deter-
mine which advertisements appear on which
webpage. The court finds that there is a genuine
issue of material fact as to whether Google’s key-
words and placement targeting constitute infor-
mation to select. A reasonable jury may
determine that keywords identifying the adver-
tisement’s topic could be used as information to
select media venues on which to publish the ad-
tracks the construction for the ’025 Patent by stating “the
third-party professional is prompted to input information
to select one or more internet media venues.”
18 FUNCTION MEDIA v. GOOGLE
vertisement. A question of fact also exists regard-
ing Google’s placement targeting.
Order at 6, Function Media, No. 2:07-CV-278, 2009 WL
3260566, ECF No. 325. We understand the district
court’s statement to mean that there is a question of fact
as to whether the claims read on Google’s systems. But
FM contends that this passage “nullif[ied] the very claim
construction” the court had adopted, rendering the court’s
claim construction a “nullity” and requiring a new trial.
We see no error in the district court’s denial of sum-
mary judgment. The district court construed this term,
adopting FM’s proposed construction. To the extent that
FM raises a claim construction argument here, FM may
not object to the court’s decision to instruct the jury to
apply the claim construction that FM itself proposed. See
Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628
F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly
explained, ‘litigants waive their right to present new
claim construction disputes if they are raised for the first
time after trial.’” (quoting Broadcom Corp. v. Qualcomm
Inc., 543 F.3d 683, 694 (Fed. Cir. 2008))). To the extent
that FM attempts to couch as a claim construction issue
the denial of summary judgment of infringement, we note
that “a denial of summary judgment is not properly
reviewable on an appeal from the final judgment entered
after trial.” Glaros v. H.H. Roberson Co., 797 F.2d 1564,
1573 (Fed. Cir. 1986); accord Johnson v. Sawyer, 120 F.3d
1307, 1316 (5th Cir. 1997) (“[The Fifth Circuit has] held
repeatedly that orders denying summary judgment are
not reviewable on appeal where final judgment adverse to
the movant is rendered on the basis of a subsequent full
trial on the merits.”).
C. “Publishing”
Lastly, claim 1 requires “publishing the electronic ad-
vertisement to one or more of the selected internet media
venues.” ’025 Patent col. 65 ll. 10-17. The district court
FUNCTION MEDIA v. GOOGLE 19
construed this term to mean “placing or making available
the customized electronic advertisement within the
framework of and at each internet media venue so that it
is accessible by the end users, consumers, viewers, or
buyers.” Markman Order, slip op. at 15-16 (emphasis
added). FM argues that the district court erred by includ-
ing the “and at” language requested by Google, which it
believes improperly removes from the scope of the claim
any system (including Google’s systems here) which sends
ads directly to the buyer’s computers. Without those two
words, FM argues, the claim would encompass the pub-
lishing of ads directly to buyers so long as the displayed
ads look like they are “within the framework” of the
website.
We see no error in the district court’s construction.
Claim 1 requires “publishing the electronic advertisement
to one or more of the selected internet media venues . . .
whereby the electronic advertisement is displayed on each
of the one or more of the selected internet media venues.”
’025 Patent col. 65 ll. 11-16 (emphases added). Thus, the
terms of the claim require the ads to be sent to the inter-
net media venue, not simply made to look like they are on
the internet media venue on the buyer’s computer as in
Google’s system. And the claim language makes it clear
that internet media venues are different than the buyers’
web browsers. Claim 1 requires an interface for specify-
ing different presentation rules for each internet media
venue, not for each buyer or each web browser. Further-
more, the parties agreed that internet media venues are
“internet locations where presentations are placed or
made available” such that they may be “accessible by the
end users, consumers, viewers, or [b]uyers.” Markman
Order, slip op. at 8. The claim terms thus require ads to
be published to internet media venues, where they are
accessible to buyers using web browsers.
Although FM identifies various portions of the specifi-
cation that it claims show that the patent contemplates
20 FUNCTION MEDIA v. GOOGLE
delivering ads directly to buyers, we are not persuaded.
For example, FM relies on a sentence in the specification
stating that the PGP “creates presentations that can be
accessed by the buying public . . . through . . . the Buyers
Interface.” ’025 Patent col. 52 ll. 28-35. But the fact that
ads may be accessed in browsers does not remove the
requirement that they must be published to internet
media venues. FM also argues that figure 1b shows the
option of sending the ad directly to the buyer:
Figure 1b does not show ads going directly to the buy-
er. Instead, ads are made available through the “Inde-
pendent Presentation[s], Directories and Indexes or
Independent Standalone Presentations,” shown in box
3000. See ’025 Patent fig. 1b. Indeed, FM acknowledges
this—as it must—in its argument. Appellant’s Br. 39
(arguing that the path “from block 1000 to block 3000 and
corresponding line extending from block 5000 to block
3000” supported its theory that ads could be sent directly
to the web browser). But box 3000 does not include the
buyer’s web browser or computer. See id. col. 10 ll. 8-15
FUNCTION MEDIA v. GOOGLE 21
(limiting the definition of “Internet Browser” to “[c]lient-
side program[s] that reside[] on the [b]uyer [i]nterface
5000”). The specifications reinforce the district court’s
construction, not FM’s.
We affirm the district court’s construction of the “pub-
lishing” element because the addition of the word “at” to
the definition correctly indicates that the ads must be
sent to the internet media venues, not to buyers.
III. O2 Micro
In addition to arguing the district court’s claim con-
structions were incorrect, FM maintains that the court
improperly sent these constructions to the jury. FM
argues that this runs afoul of O2 Micro International v.
Beyond Innovation Technology Co., in which we said,
“[w]hen the parties present a fundamental dispute re-
garding the scope of a claim term, it is the court’s duty to
resolve it.” 521 F.3d 1351, 1362 (Fed. Cir. 2008). FM
raises these arguments for each of the three terms we
have construed above, and once again we address each in
turn.
FM makes two arguments in support of its contention
that the construction of the terms “create” and “pro-
cessing” was submitted to the jury. First, FM contends
that the district court’s order denying Google’s request for
summary judgment of non-infringement shows that there
was an unresolved dispute over claim scope that the
district court left to be decided by the jury. This argu-
ment has little merit. Even assuming FM may complain
about the denial of Google’s motion for summary judg-
ment, we have already explained that the subsequent jury
verdict renders the denial of this motion non-final and
non-appealable under Fifth Circuit law. We hold that the
denial of a pre-trial motion for summary judgment of non-
infringement does not, by itself, show that the district
court delegated claim construction to the jury. This is
22 FUNCTION MEDIA v. GOOGLE
especially true where, as here, the jury was instructed to
apply the district court’s claim constructions.
FM’s second argument focuses on a point during trial
when Google objected to the testimony of FM’s expert.
The expert testified that the customization step is sepa-
rate from the processing step; in Google’s view, this
statement ran afoul of the court’s claim construction.
FM’s counsel responded that it was Google that was
misstating the court’s construction. The court overruled
Google’s objection and indicated that it would check the
construction and would make correcting statements if the
witness was misstating the court’s claim construction.
FM urges that the court should have stepped in to correct
any misunderstanding at that point because the proper
interpretation of “creation” was unresolved. As additional
evidence of the confusion, FM asserts that after FM
rested its case, Google’s expert pursued differing interpre-
tations of the “creation” element depending on whether he
was offering testimony on infringement or anticipation.
As a preliminary matter, we must address Google’s
argument that FM has waived this issue. Citing Lazare,
628 F.3d at 1376, Google argues that FM waived any
complaint about Google’s trial tactics by failing to object.
Google asserts that FM may not claim Google’s objection
as its own, and that if FM believed that the claim con-
struction order or any other order created ambiguity, it
was FM’s responsibility to object.
We disagree. In Lazare, the parties stipulated to the
meaning of a claim term but presented differing argu-
ments at trial about what it meant to satisfy that term.
628 F.3d at 1375. Nevertheless, this court found that the
issue had been waived because neither party had ad-
vanced its O2 Micro argument until after trial. See 628
F.3d at 1376 (finding waiver when “[u]nlike O2 Micro
where the appellant presented its claim construction
argument to the district court during a Markman hearing,
FUNCTION MEDIA v. GOOGLE 23
Lazare first asserted the claim construction argument it
presses on appeal in a post-trial motion”). Lazare is
distinguishable because in this case, the dispute was
brought to the district court’s attention during trial and
the court heard arguments from both sides. It would
hardly make sense to require FM to object to its own
testimony on a point that was in accord with the claim
construction that it had proposed and that the court had
adopted.
On the merits, Google responds with a single argu-
ment covering all three of the O2 Micro problems alleged
by FM: that this is not a case, like O2 Micro, in which the
parties disputed the scope of the claims, but rather a post-
trial attempt to re-characterize improper arguments as
issues of claim construction, like Verizon Services Corp. v.
Cox Fibernet Virginia, Inc., 602 F.3d 1325 (Fed. Cir.
2010).
In O2 Micro, the parties disagreed during claim con-
struction about whether the term “only if” included two
specific exceptions. 521 F.3d at 1361-62. The “district
court acknowledged that this dispute over the scope of the
asserted claims ‘boil[ed] down to whether . . . there can be
an exception,’” but refused to construe the term and
determine whether there were exceptions because “only
if” “ha[d] a well-understood definition, capable of applica-
tion by both the jury and this court in considering the
evidence submitted in support of an infringement or
invalidity case.” Id. at 1361. Because the district court
did not settle the dispute, the parties presented their
arguments to the jury. Id. at 1362. Examining these
arguments, this court concluded that “the parties disput-
ed not the meaning of the words themselves, but the scope
that should be encompassed by this claim language.” Id.
Because “determining the meaning and scope of the
patent claims” is a question that “the court, not the jury,
must resolve,” id. at 1360, we held that the submission of
these differing claim scope arguments to the jury was
24 FUNCTION MEDIA v. GOOGLE
error and remanded for the district court to construe the
claim in the first instance. Id. at 1363.
In Verizon, a patent owner relied on O2 Micro to sup-
port its argument that a new trial was required. The
relevant claims had been construed before trial, and
neither party argued that the constructions were incor-
rect. 602 F.3d at 1332. After trial, the owner sought an
instruction that the scope of the claim terms did not
depend on the subjective intent of the inventor in using
those terms. Id. As grounds for this request, the owner
pointed to “places where [defense] counsel and its experts
referred to statements of the inventors and then distin-
guished [the defendant’s] system from the asserted claims
based on those statements.” Id. This court distinguished
O2 Micro in two ways: (1) that the parties did not bring a
dispute about claim scope to the district court’s attention
prior to the close of evidence, and (2) that the parties did
not “not invite the jury to choose between alternative
meanings of technical terms or words of art or to decide
the meaning of a particular claim term.” Id. at 1334. We
concluded that “[w]hile [the owner] attempts to character-
ize the issue as one of claim construction, its argument is
more accurately about whether [the defendant’s] argu-
ments to the jury . . . were improper.” Id. In other words,
Verizon presented a question of improper attorney argu-
ments, not an O2 Micro problem. See id.We conclude that, as in Verizon, this issue in this case
is whether there were improper arguments, not whether
questions of claim scope were submitted to the jury. As in
Verizon, the jury was explicitly told by the court to use
only the court’s claim constructions. Additionally, like the
appellant in Verizon, FM had the opportunity to object
during trial or request limiting instructions, but never did
so. See 602 F.3d at 1335. The only difference here is that
during its closing arguments, FM accused Google of
playing “word games.” J.A. 19172-74, 19213. Nearly
every patent case will involve some amount of “word
FUNCTION MEDIA v. GOOGLE 25
games,” because claims and claim constructions are, after
all, just words. But FM’s argument, if accepted, would
make almost every case in which the parties’ arguments
did not directly quote the court’s claim construction ripe
for remand and new trial. We are confident that such
situations should be rare. See Kinetic Concepts, Inc. v.
Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1019 n.4 (Fed.
Cir. 2009) (“While [O2 Micro] permits a remand for fur-
ther claim construction, it does not require one.”).
As with the “creation” and “processing” terms, FM al-
so argues that the court left the “selection” term for the
jury. As evidence, FM cites a situation similar to what
happened with the “creation” and “processing” terms in
which Google objected to the form of FM’s expert’s testi-
mony on claim construction grounds, the judge overruled
the objection, and the judge did not revisit its construction
later. FM suggests that Google’s objections “forced” FM to
argue claim differentiation to the jury by questioning
Google’s expert on claim 90 and its relationship to the
other claims.
FM also argues the claim construction problem went
to the jury because Google argued in closing that “the
Court has said that the ad must be displayed on each of
the selected media venues” which “does not happen on the
Google system.” Appellant’s Br. 50 (quoting J.A. 19198-
99).
These arguments too are belied by our decision in Ver-
izon. The court accepted FM’s proposed claim construc-
tion and FM neither identified a problem with the
construction nor requested further interpretation during
trial. See Verizon, 602 F.3d at 1334 (“Unlike O2 Micro,
where the scope of a specific claim term was in dispute
beginning at the Markman hearing and continuing
throughout the trial, [the appellant] never identified at
any time during the proceedings before the district court
any specific claim term that was misconstrued or that
26 FUNCTION MEDIA v. GOOGLE
needed further construction.”). FM’s complaint about
Google’s closing is irrelevant because that statement had
to do with whether ads are published, not which entity
selects where ads are published. Thus, FM is not entitled
to a new trial when it failed to request further construc-
tion of the “selection” term. See Cordis Corp. v. Boston
Scientific Corp., 561 F.3d 1319, 1338-39 (Fed. Cir. 2009)
(finding waiver when the party failed to ask for further
construction of a term within a previously construed
element).
With regard to the final term, “publishing,” FM ar-
gues Google incorrectly argued throughout the trial that
the claims require the ad be published to the media
venue’s physical servers. We disagree with FM that claim
construction was decided by the jury because the district
court’s construction was correct, and the district court
never refused to construe any disputed terms. Moreover,
as with the other terms, FM never objected to any sup-
posed improper argument or testimony.
In Verizon, we turned to the relevant circuit’s law to
determine whether improper arguments to which no
objection was made required a new trial. 602 F.3d at
1334-35. In this case, we look to the law of the Fifth
Circuit, which has held that the “Court will consider
errors to which no objections were made at trial but will
exercise this power only in exceptional cases where the
interest of substantial justice is at stake. To reverse, this
Court must find plain error.” Shipman v. Cent. Gulf
Lines, Inc., 709 F.2d 383, 388 (5th Cir. 1983) (internal
citations omitted). FM has not demonstrated that mis-
statements during trial by Google’s counsel or witnesses
were sufficiently erroneous to make this case exceptional.
Nor has FM argued that substantial interests of justice
are at stake. Thus, we cannot say that the district court
plainly erred in denying a new trial.
FUNCTION MEDIA v. GOOGLE 27
We have evaluated FM’s arguments and find that
none of them compel us to remand for a new trial. The
district court correctly construed the terms and instructed
the jury to apply its constructions. FM has not persuaded
us that any issues of claim scope were submitted to the
jury, and we therefore conclude that no O2 Micro prob-
lems are present in this case.
IV. Irreconcilability
FM urges that the verdicts of non-infringement and
invalidity are irreconcilable. For example, it argues the
prior art references published ads directly to buyers, as
opposed to publishing them to the internet media venues
as required by the claims, and Google did not attempt to
reconcile this problem below despite arguing it did not
infringe because its technology also delivers ads straight
to the buyers. In other words, FM argues the jury had to
rely on differing claim constructions for infringement and
invalidity to reach its invalidity and noninfringement
decisions because Google’s technology works the same
way as the prior art. Google argues FM has waived any
argument on the basis of irreconcilability because FM did
not object to the jury’s verdict before the jury was dis-
missed.
We apply the law of the regional circuit to determine
whether an argument that the verdict is irreconcilable
has been waived. See Mycogen Plant Sci. v. Monsanto
Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (explaining that
this court applies the law of the regional circuit to the
issue of inconsistent verdicts because the issue is not
unique to patent law). In the Fifth Circuit, a party need
not object to the jury’s inconsistent verdict before the jury
is dismissed in order to avoid waiver when the verdict is
special and falls under Federal Rule of Civil Procedure
Rule 49(a). Mercer v. Long Mfg. N.C., Inc., 671 F.2d 946,
947-48 (5th Cir. 1982) (“We know of no case in this Circuit
holding that inconsistencies in special verdicts pursuant
28 FUNCTION MEDIA v. GOOGLE
to Rule 49(a) are waived if not raised prior to release of
the jury.”); see also id. at 948 n.1 (explaining waiver does
not apply to verdicts under Rule 49(a), but it does apply to
verdicts under Rule 49(b)). If the verdict falls under Rule
49(b), which covers general verdicts and general verdicts
“with written questions on one or more issues of fact,”
waiver applies if no objection is raised before the jury is
dismissed. Stancill v. McKenzie Tank Lines, Inc., 497
F.2d 529, 533-35 (5th Cir. 1974) (“By failing to object to
the form of the verdict and answers at the time they were
announced by the jury, both parties waived any objection
to inconsistencies under Rule 49(b).”).
Because FM failed to object to the verdict’s irreconcil-
ability at the time the jury returned the verdict, FM can
only avoid waiver if the verdict form is considered special.
FM argues that the verdict was special because the ver-
dict form asked the jury specific questions about validity
and infringement. FM emphasizes that we have found
similar forms to be “special” in Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010) and L&W, Inc.
v. Shertech, Inc., 471 F.3d 1311, 1319 (Fed. Cir. 2006).
Google urges that this verdict was general because it
consisted of simple yes or no questions on infringement,
anticipation, and obviousness. It says we have said such
forms are general in i4i, 589 F.3d at 1265 and O2 Micro,
521 F.3d at 1358. It distinguishes the form in Comaper,
which was labeled as a special verdict and included
“special questions” such as whether the prior art was in
public use before the critical date.
None of the cases cited by either party are helpful.
Google’s reliance on i4i and O2 Micro is unhelpful because
neither of those cases squarely addressed what is or is not
a special verdict. See i4i, 589 F.3d at 1265; O2 Micro, 521
F.3d at 1358. Similarly, the cases cited by FM provide
little guidance. In L&W, we held that the appellant had
waived its claim of inconsistency in the verdict by not
asserting it prior to the discharge of the jury. Because
FUNCTION MEDIA v. GOOGLE 29
Sixth Circuit law supported waiver regardless of whether
the verdict was general or special, we did not question the
parties’ assertions that the verdict was special. See 471
F.3d at 1314, 1318-19. Similarly, in Comaper, we accept-
ed without analysis that the “Special Verdict Form” was a
special verdict. See 596 F.3d at 1350. This court’s analy-
sis in those cases therefore does not compel the conclusion
that the simple verdict form used in this case must be
regarded as a special verdict.
“The theoretical distinction between general and spe-
cial verdicts is that general verdicts require the jury to
apply the law to facts, and therefore require legal instruc-
tion, whereas special verdicts compel the jury to focus
exclusively on its fact finding role.” Charles Alan Wright
& Arthur R. Miller, 9B Federal Practice and Procedure
§ 2503 n.1 (3d ed. 2008). Under the special verdict, the
jury finds the facts while the court applies the law, and it
is typically unnecessary to even instruct the jury on the
law. Id. § 2503. “The special verdict is thought to bring
the jury determination into the open, so that all can see
what has been done.” Id. In contrast, “[i]n a general
verdict, the jury announces only the prevailing party on a
particular claim, and may announce damages.” Id. § 2503
n.1. “[T]he general verdict accompanied by special inter-
rogatories gives the jury an opportunity to express itself
broadly through the general verdict—the historic medi-
um—while at the same time turning the jury’s attention
to important issues that should be resolved by responding
to particular questions before a general verdict is
reached.” Id. § 2503; see Fed. R. Civ. P. 49(b).
In this case, the portion of the verdict in which the ju-
ry applied facts to law on the question of obviousness was
clearly a general verdict because it is a legal question
resting on underlying factual questions. See Structural
Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 720
(Fed. Cir. 1984) (explaining that “a trial court may, with
proper instructions, . . . ask for a general answer on one or
30 FUNCTION MEDIA v. GOOGLE
more specific legal issues, such as obviousness, a practice
not specifically provided for in the Federal Rules”); Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1359 (Fed. Cir. 2012) (“Because the ultimate conclusion of
obviousness is a legal question, there is strength to the
argument that by including that question on its verdict
form the court chose to employ a general verdict with
answers to written questions governed by Rule 49(b).”).
The closer question is on the verdicts regarding anticipa-
tion and invalidity, in which the jury answered yes or no
questions on each asserted claim. For example, the jury
was asked, “Do you find that Google has proven, by clear
and convincing evidence, that any of the following claims
of the ’025 patent are invalid for the following reasons?
[Yes or No?] A. Because it was anticipated by the prior
art?” J. A. 17371. The form then listed each claim with a
line for the answer. Because anticipation and infringe-
ment are questions of fact, the question is whether the
jury returned special findings of fact on each claim.
We have previously set forth examples of what should
and should not be considered a special verdict. In Rail-
Road Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1516
(Fed. Cir. 1984), the jury was asked ten yes or no ques-
tions, two of which are very similar to those asked in this
case. The jury was asked, “Do you find that the plaintiff
has proved by clear and convincing evidence that [the
patent] is invalid on the ground of obviousness?” Id. app.
A question 1. It was also asked about anticipation: “Do
you find that plaintiff has proved by clear and convincing
evidence that [the patent] is invalid on the ground that
the invention claimed was known, in public use or on sale
more than one year prior to the effective date of the
patent application?” Id. question 3A. We explained that
although the verdicts did not state only the prevailing
party, the ten verdicts should properly be considered a
general verdict:
FUNCTION MEDIA v. GOOGLE 31
The jury’s responses were not special verdicts, be-
cause they were not simply “written finding[s] up-
on each issue of fact”. Rule 49(a), Fed. R. Civ. P.
Nor was there a single general verdict, per se, ac-
companied by “written answers” to “one or more
issues of fact the decision of which is necessary to
a verdict”. Rule 49(b) Fed. R. Civ. P. Nonetheless,
as above indicated, the parties have correctly
viewed the jury’s ten responses as the equal of a
general verdict . . . .
Id. at 1516. We hold similarly here.
It would be impossible for lay juries to determine
whether a claim is anticipated or infringed without some
legal instruction, as evidenced by our ample case law
addressing the correctness of jury instructions. See, e.g.,
Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629,
641-42 (Fed. Cir. 2011) (rejecting an argument that a jury
instruction on anticipation contained legal errors). Alt-
hough the jury was technically finding only “facts,” we
hold that the verdict is a general verdict because like the
questions in Railroad Dynamics, the questions on antici-
pation and validity require legal instruction, the applica-
tion of legal principles, and are more than “simply
‘written finding[s] upon each issue of fact.’” See id.;
Wright & Miller, § 2503 n.1 (“[G]eneral verdicts require
the jury to apply the law to facts, and therefore require
legal instruction.”). Indeed, the questions are so general
that they do not bring the jury process into the open so
that “all can see what has been done” as expected in a
special verdict, which is what makes reviewing a general
verdict for consistency so difficult. FM, therefore, waived
its argument in favor of irreconcilability by failing to
object to the verdict before the jury was dismissed.
Stancill, 497 F.2d at 535.
While it may seem harsh, requiring objections to be
made before the jury is dismissed is the only way to
32 FUNCTION MEDIA v. GOOGLE
efficiently cure potential inconsistencies when there is not
a detailed special verdict to review:
[To] allow a new trial after the objecting party
failed to seek a proper remedy at the only possible
time would undermine the incentives for efficient
trial procedure and would allow the possible mis-
use of [the Federal Rules of Civil Procedure] . . . to
implant a ground for appeal should the jury’s
opinion prove distasteful.
Howard v. Antilla, 294 F.3d 244, 250 (1st Cir. 2002)
(quoting Skillin v. Kimball, 643 F.2d 19, 19-20 (1st Cir.
1981)). It would be improper to allow FM to now argue
inconsistencies require an entirely new trial when it
failed to object at the only time when an inconsistency
could have been cured.
V. Motion for New Trial
FM argues that it is entitled to a new trial because
the jury’s non-infringement verdict was against the great
weight of the evidence under either its construction or the
court’s. The district court’s decision to deny FM’s motion
is reviewed for abuse of discretion and “will be affirmed
unless there is a clear showing of an absolute absence of
evidence to support the jury’s verdict.” Rivera, 378 F.3d
at 506 (internal quotation marks omitted).
The record contains evidence to support the nonin-
fringement verdict. “To prove infringement, the patentee
must show that the accused device contains each limita-
tion of the asserted claim, or an equivalent of each limita-
tion.” Bowers v. Baystate Techs., Inc., 320 F.3d 1317,
1334 (Fed. Cir. 2003) (citations omitted). We have af-
firmed the court’s construction of the term “publishing,”
which excludes publishing ads directly to the buyer. But
it is undisputed that Google’s systems sends ads directly
FUNCTION MEDIA v. GOOGLE 33
to the buyer, and the jury could properly find that Google
does not infringe on that basis. 7
FM also argues that the jury verdict is the result of a
misapprehension of law, specifically that claims can have
one meaning for infringement and another for anticipa-
tion. It argues that Google’s expert’s “contradictory”
testimony caused the jury to rely on differing construc-
tions for anticipation and infringement. As we have
already explained, FM has waived this argument. In any
event, this argument does not amount to “a clear showing
of an absolute absence of evidence to support the jury’s
verdict” of infringement, see Rivera, 378 F.3d at 506(internal quotation marks omitted), as it does not explain
which half of the allegedly irreconcilable verdict is incor-
rect. Nor has FM shown that the jury relied on an incor-
rect construction. Sufficient evidence supports the verdict
of non-infringement, and the district court did not abuse
its discretion when it denied FM’s motion for a new trial.
7 This is true for Ad Sense for Content and Ad Sense
for Mobile, except for certain types of older phones, which
do publish ads directly to internet media venues. Google
argues that FM never presented actual evidence of in-
fringement for the older phones so there can be no in-
fringement. FM does not contradict this claim in its
Reply Brief. Infringement requires specific instances of
direct infringement or a finding that every accused device
necessarily infringes. Ball Aerosol & Specialty Container,
Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed. Cir.
2009). FM has not carried that burden with respect to the
older phones so we affirm the district court’s denial of new
trial with respect to them as well.
34 FUNCTION MEDIA v. GOOGLE
CONCLUSION
As FM has not shown that reversible error occurred,
the decision of the district court is
AFFIRMED