Lenovo Holding Company, Inc. v. Dodots Licensing Solutions LLC

Case: 21-1247 Document: 41 Page: 1 Filed: 12/08/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LENOVO HOLDING COMPANY, INC., LENOVO
(UNITED STATES) INC., MOTOROLA MOBILITY
LLC,
Appellants
v.
DODOTS LICENSING SOLUTIONS LLC,
Appellee
______________________
2021-1247, 2021-1521, 2021-1580
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00988, IPR2019-01278, IPR2019-01279.
______________________
Decided: December 8, 2021
______________________
MITCHELL G. STOCKWELL, Kilpatrick Townsend &
Stockton LLP, Atlanta, GA, argued for appellants. Also
represented by DAVID A. REED; JOHN C. ALEMANNI, Ra-
leigh, NC; STEVEN MOORE, San Francisco, CA.
PERRY GOLDBERG, Progress LLP, Los Angeles, CA, ar-
gued for appellee.
______________________
Case: 21-1247 Document: 41 Page: 2 Filed: 12/08/2021
2 LENOVO HOLDING COMPANY, INC. v.
DODOTS LICENSING SOLUTIONS LLC
Before NEWMAN, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge.
Lenovo Holding Company, Inc. (“Lenovo”) petitioned
for inter partes review of claims 1–16 of U.S. Patent No.
8,020,083 (the “’083 patent”), claims 1–10 and 12–15 of
U.S. Patent No. 9,369,545 (the “’545 patent”), and claims 1,
8–13, and 20–24 of U.S. Patent No. 8,510,407 (the “’407 pa-
tent”), owned by DoDots Licensing Solutions LLC (“Do-
Dots”). The United States Patent and Trademark Office
Patent Trial and Appeal Board (the “Board”), in three sep-
arate Final Written Decisions, found that Lenovo had
failed to show by a preponderance of the evidence that the
challenged claims were unpatentable. See Lenovo Holding
Co. v. DoDots Licensing Sols., LLC, Nos. IPR2019-00988
(Sept. 9, 2020), IPR2019-01279 (Jan. 5, 2021), IPR2019-
01278 (Jan. 19, 2021). Lenovo challenges the Board’s de-
cisions, arguing only that the Board erred in its construc-
tion of the claim term “NIM template.” We affirm.
BACKGROUND
I
The three patents at issue relate to a method for ac-
cessing and displaying Internet content in a graphical user
interface (“GUI”). In the prior art, users “typically ac-
cesse[d] the Internet by using a viewer application, such as
a browser[,] to view web content provided at a destination
address, typically a web page.” ’407 patent, col. 1, ll. 56–
59. Although the web page could be personalized so that
there could be a separate page for a specific topic, such as
“stock information, weather information[,] and sports in-
formation,” each page was assembled on a “full web page
and [] served through a full-screen browser.” Id. at col. 1,
l. 62–col. 2, l. 3. The problem with that construct, according
to the inventors, was that “[w]eb content and application
developers [] ha[d] limited control over the user experience”
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because “content [wa]s typically trapped within the frame
of the browser.” Id. at col. 2, ll. 3–5.
The inventors claimed to have invented a solution to “a
growing desire for individual users to fully control the ag-
gregation and presentation of content and web applications
that appear[] on a client computer.” Id. at col. 2, ll. 14–16.
The patents utilize what the inventors called a “Networked
Information Monitor (NIM)” and “NIM template,” ’545 pa-
tent, col. 2, ll. 35–36; id., col. 6, l. 35, 1 to allow users to ac-
cess web content outside of a web browser without the need
for developing custom client applications, see, e.g., ’083 pa-
tent, col. 12, ll. 45–48 (“Without the present invention, an
alternative available to the Internet content developer is to
develop a custom application that must be downloaded
each time it is changed or alternate content is desired to be
displayed.”).
Under the systems and methods disclosed by the pa-
tents, a user logs into a server by providing a login identi-
fier, which is used to obtain the user’s profile. The user
profile includes references to NIMs. A “NIM refers to a
fully configurable frame with one or more controls; the
frame through which content is optionally presented.” ’545
patent, col. 4, ll. 56–59. This “fully configurable frame . . .
stands in contrast to web browsers, which are branded by
the browser vendor and which have limited means by
which to alter the controls associated with the browser.”
Id., col. 4, ll. 59–63. An example of a NIM (or Dot) provided
in the figures of the three patents is Figure 5 of the ’083
patent:
1 Whereas the ’407 and ’545 patents speak exclu-
sively in terms of the NIM and NIM template, the ’083 pa-
tent also uses the analogous terms “Dot” and “Dot
definition.” See ’083 patent, col. 24, ll. 12–14.
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4 LENOVO HOLDING COMPANY, INC. v.
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After the user is logged in and has clicked on the NIM,
an applications server retrieves a NIM definition (or tem-
plate) from a NIM template database. See, e.g., ’545 patent,
col. 20, ll. 26–30. A “NIM template” defines the character-
istics of a specific NIM, including fully configurable frame
characteristics, viewer and control characteristics, and
NIM content references. See id., col. 6, ll. 34–37. After the
user accesses the user profile and the NIM template de-
fines the characteristics of the NIM frame, the content is
placed in the NIM viewer defined by the frame for viewing.
Id. at col. 2, ll. 30–34. These steps are completed by a “cli-
ent parser application” (or “home NIM” or “Home Dot”)
that resides on the user’s client computing device. See, e.g.,
id., col. 10, ll. 8–10, 29–31.
II
Lenovo petitioned for inter partes review of claims 1–
16 of the ’083 patent, claims 1–10 and 12–15 of the ’545
patent, and claims 1, 8–13, and 20–24 of the ’407 patent,
arguing that they were rendered obvious by prior art. The
Board, in three Final Written Decisions, construed the
term “NIM template” as a “data structure which defines
the characteristics of a NIM, including the NIM frame,
view and control characteristics, and which excludes
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executable applications/compiled code.” J.A. 19; see also id.
at 55, 90. Based on that construction, the Board concluded
that Lenovo had failed to prove by a preponderance of the
evidence that the challenged claims were unpatentable
over the prior art.
Lenovo appealed. The sole question before us is
whether the Board erred in construing the term “NIM tem-
plate” in the challenged claims to exclude “executable ap-
plications/compiled code.” We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
“We review the Board’s claim construction[] de
novo and its underpinning factual determinations involv-
ing extrinsic evidence for substantial evidence.” Wasica
Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278
(Fed. Cir. 2017). Claim construction requires a determina-
tion as to how a person of ordinary skill in the art would
understand a claim term “in the context of the entire pa-
tent, including the specification.” Phillips v. AWH Corp.,
415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). 2 To under-
stand the meaning of the claim language, we look to the
entire intrinsic record, including “the words of the claims
themselves, the remainder of the specification, [and] the
prosecution history,” as well as to “extrinsic evidence con-
cerning relevant scientific principles, [and] the meaning of
2 We apply the Phillips standard because Lenovo
filed its IPR petitions after November 13, 2018, when the
PTO changed the claim construction standard to be the
“same claim construction standard that is used to construe
the claim in a civil action in federal district
court.” Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the Patent
Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct.
11, 2018) (codified at 37 C.F.R. § 42.100(b) (2020)).
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technical terms.” Id. (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
(Fed. Cir. 2004)).
Lenovo argues that the Board erred by importing a
negative limitation (that the NIM template excludes exe-
cutable applications/compiled code) from an embodiment in
the specification. Claims that include a “negative limita-
tion” must find support in “the words of the claim” or
through an “express disclaimer or independent lexicogra-
phy in the written description that would justify adding
that negative limitation.” Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003).
Claim 1 of the ’545 patent states in relevant part that
a NIM template comprises “a definition of a viewer [GUI]
within which content in a web browser-readable language
may be presented on the display of the client computing
device.” ’545 patent, col. 42, ll. 36–41. The term “NIM tem-
plate” has no plain and ordinary meaning. As the Board
observed, from the claim language it is clear only that a
NIM template “defines the characteristics of the viewer
and the content on the viewer.” J.A. 13. We thus turn to
the specification for guidance on the meaning of a term as
used in a particular patent. See Phillips, 415 F.3d at 1313;
see also id. at 1315 (explaining that the specification “‘is
always highly relevant’” and “‘[u]sually . . . dispositive; it is
the single best guide to the meaning of a disputed term.’”
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)); see also Trs. of Columbia
Univ. v. Symantec Corp., 811 F.3d 1359, 1362–63 (Fed. Cir.
2016) (applying Phillips).
The specification states that “NIMs allow a developer
to provide an application feel without developing custom
client applications.” ’545 patent, col. 26, ll. 33–35 (empha-
sis added); see also ’083 patent, col. 40, ll. 24–28 (“A Dot
developer can [] author a new Dot application by
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developing web content (HTML, GIF files, etc.) and by
packaging that content in a Dot Definition, eliminating the
need for compilers and consequently, downloading executa-
bles.” (emphasis added)). Figure 13 of the ’407 and ’545
patents “illustrates a data structure for a NIM definition.”
’545 patent, col. 21, l. 42. The accompanying discussion of
Figure 13 in the specification states:
In one embodiment, the NIM definitions are
defined using Extensible Markup Language
(XML), so that the NIM as a whole–the frame
and the content within the viewer––is advan-
tageously as flexible as standard web content.
NIMs are extremely flexible, because the def-
inition of the NIM is content, rather than com-
piled code. The NIM definition defines the
structure of the NIM, and everything that is
visible in a NIM is based on standard Internet
content, such as HTML, dHTML, or GIFs, and
is referenced or pointed to by the NIM defini-
tion. An “application”–type NIM, such as a
web calendar or web mail, may be changed by
the user, by the content provider, or by other
content, while advantageously avoiding the
need to distribute and support a hard-coded
compiled application. The definition of a NIM
thus includes everything that is needed for
the NIM to be rendered and filled with Inter-
net content.
Id., col. 21, l. 55–col. 22, l. 3 (emphasis added).
Lenovo argues that this language does no more than
describe a single embodiment implementing a NIM tem-
plate as XML rather than compiled code. That argument
is unpersuasive. The key language in the specification—
that “the definition of the NIM is content, rather than com-
piled code,” ’545, col. 21, ll. 59–60—is not limited to the “one
embodiment” in Figure 13. It defines, generally, what a
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8 LENOVO HOLDING COMPANY, INC. v.
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NIM is. 3 See Vitronics, 90 F.3d at 1582 (“The specification
acts as a dictionary when it expressly defines terms used
in the claims or when it defines terms by implication.”).
Lenovo contends that because Claim 1 in the ’083 pa-
tent states that a NIM template comprises “instructions
configured . . . to cause the first [NIM] to generate the
[GUI],” and further recites “one or more processors config-
ured . . . to execute the first [NIM] template,” that the NIM
template is plainly executable. Appellant’s Br. 18, 25. It
also points to the summary of the invention in each patent,
which includes reference to “executable modules,” includ-
ing a “second executable module” that “defines a NIM
frame for the NIM using the definition.” Appellant’s Br. 30
(quoting ’407 patent, col. 3, ll. 4–12). Since the “second ex-
ecutable module” “defines a NIM frame,” Lenovo contends,
“it is a NIM template under its plain and ordinary mean-
ing. And as an executable module, the NIM template can-
not exclude executable code.” Id.Each of Lenovo’s arguments takes the word “execute”
out of context. Lenovo fails to acknowledge that both
markup language, such as the XML described in Figure 13,
and programming language, such as the Java used by the
applications in the prior art, need to be “executed” in some
way. The Board observed that DoDots’s expert Dr. Sacer-
doti testified that “execute” with respect to a NIM template
has a different meaning than “execute” as used with re-
spect to an application. Because a NIM template is a data
structure, Dr. Sacerdoti explained, a skilled artisan would
understand that “execute/executing” references in the
3 Notably, Lenovo misleadingly represents the spec-
ification’s discussion of Figure 13, altering its meaning by
tweaking the quote from the specification to read “[i]n one
embodiment . . . the definition of the NIM is content rather
than compiled code.” Appellant’s Br. 28.
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specification would mean “use/using the information from
the NIM template in connection with specified operations.”
See, e.g., J.A. 2425 ¶ 66. Lenovo failed to submit any re-
buttal evidence on this point, and we find the Board’s deci-
sion to credit the testimony of Dr. Sacerdoti in these
respects was supported by substantial evidence.
Finally, Lenovo turns to prosecution history to support
its argument that “NIM template” includes executables.
During prosecution of a patent application related to the
three patents at issue, DoDots distinguished prior art as
not teaching “executing” the NIM template. The related
application—the ’874 application––shares a specification
with the parent of the three patents at issue. The pending
claims in the ’874 Application were the same in relevant
part to those of the ’083 patent, reciting “executing the first
[NIM] template on the one or more processors . . . .” Appel-
lant’s Br. 33 (quoting J.A. 2287–89). Following a prior art
rejection, DoDots distinguished the prior art on the basis
that it did “not teach or suggest executing, on a client de-
vice, a first [NIM] template.” Id. (quoting J.A. 2290); see
also Appellee’s Br. 22–23. Accordingly, Lenovo argues, Do-
Dots “understood the recited NIM template to be executa-
ble.” Appellant’s Br. 33. This is not helpful to Lenovo,
however, as it is merely a repackaging of the same argu-
ment we have already rejected, that the use of the word
“execute” informs the meaning of the word “executable.” In
the related prosecution, DoDots was using “executing” the
same way it uses it here: to mean “using.”
For the foregoing reasons, we conclude that the Board
did not commit legal error in construing the term “NIM
template.” Accordingly, we affirm the Board’s decision
finding that the challenged claims of the ’083, ’545, and
’407 patents were not shown to be unpatentable.
AFFIRMED