Appeals from the United States District Court for the Western District of Washington in Nos. 13-CV-0263, 13-CV-0264, 13-CV-0265 and 13-CV-0266, Judge Marsha J. Pechman.
THOMAS C. GOLDSTEIN, Goldstein & Russell, PC, of Washington, DC, argued for plaintiff-appellant. Of counsel on the brief were MICHAEL HEIM, NATHAN J. DAVIS, and DOUGLAS R. WILSON, Heim, Payne & Chorush LLP, of Houston, Texas; JUSTIN A. NELSON, Susman Godfrey L.L.P., of Seattle, Washington, and MAX L. TRIBBLE, JR., of Houston, Texas.
J. MICHAEL JAKES, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Washington, DC, argued for all defendants-appellees. With him on the brief were GERALD F. IVEY, CORTNEY S. ALEXANDER, ROBERT L. BURNS, II, and ERIK R. PUKNYS, for AOL Inc.; ELIZABETH DAY, DAVID ALBERTI, and MARC C. BELLOLI, Feinberg Day Alberti & Thompson LLP, of Menlo Park, California, and BRIAN BERLINER, O'Melveny & Myers, LLP, of Los Angeles, California, for Apple Inc.; WARREN S. HEIT, CARMEN LO, and WENDI R. SCHEPLER, White & Case LLP, of Palo Alto, California, and KEVIN MCGANN and DIMITRIOS T. DRIVAS, of New York, New York, for Google Inc.; and DEANNE MAYNARD, Morrison & Foerster LLP, of Washington, DC, and MICHAEL A. JACOBS and MATTHEW I. KREEGER, of San Francisco, California, for Yahoo! Inc.
Before TARANTO and CHEN, Circuit Judges.[*]
Chen, Circuit Judge.
Interval Licensing LLC (" Interval" ) appeals from four stipulated final judgment orders of the United States District Court for the Western District of Washington. Each order granted: (1) final judgment of invalidity of claims 4-8, 11, 34, and 35 of U.S. Patent 6,034,652 (" the '652 patent" ) and claims 1-4 and 7-15 of U.S. Patent 6,788,314 (" the '314 patent" ), based on the court's determination that those claims are indefinite; and (2) final judgment of non-infringement of claims 15-18 of the '652 patent, based on the court's claim construction of the phrase " during operation of an attention manager." While we agree with the court's indefiniteness determination, we do not agree with the court's construction of " attention manager" and thus modify that construction. Additionally, we modify the court's construction of the term " instructions." For the reasons set forth below, we affirm the judgments of invalidity, vacate the judgments of non-infringement, and remand for further proceedings.
The '652 and '314 patents are directed to an " attention manager for occupying the peripheral attention of a person in the vicinity of a display device." The patents, which share a common specification, describe a system that acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images on a device. The patents explain that the term " image" is used " broadly here to mean any sensory stimulus that is produced from the set of content data, including, for example, visual imagery (e.g., moving or still pictures, text, or numerical information) and audio imagery (i.e., sounds)." '652 patent, 6:60-64. The content data presented in the images are " virtually limitless," and may include advertisements, video nature scenes, and radio talk shows. Id. at 7:26-38. As for the users of the attention manager, the patents contemplate that the system will typically occupy the attention of human users, but may also be used to occupy the attention of dogs, cats, and parrots. See id. at 29:32-40. The primary issues raised on appeal center on the manner in which the patented invention displays content data
--specifically, how the attention manager displays " images" so as to attract the peripheral attention of the user.
To engage the " peripheral attention" of a user in " the vicinity of a display device," the attention manager " [g]enerally . . . makes use of 'unused capacity' of the display device." Id. at 2:3-9. The specification discloses two primary approaches to utilizing " unused capacity." First, the specification describes a " screen saver embodiment" that displays images " automatically after detection of an idle period" or after activation of the screen saver by the user. Id. at 3:19-22, 9:24-36. The patents use screen savers--typically used for preventing screen burnout and for " aesthetic or entertainment value" --for the purpose of " display[ing] content from a remote location via a computer network." Id. at 1:39-67. The screen saver embodiment may be employed " while a primary interaction is ongoing, but during inactive periods (i.e., when the user is not engaged in an intensive interaction with the apparatus)." Id. at 6:35-38.
Second, the specification describes a wallpaper embodiment. " Wallpaper," the specification explains, is " a pattern generated in the background portions on a computer display screen." Id. at 1:51-52. The patents' " wallpaper embodiment" displays images " while the user is engaged in a primary interaction with the apparatus, which primary interaction can result in the display of an image or images in addition to the image or images generated from the set of content data." Id. at 3:25-31. The wallpaper embodiment makes use of the " unused" spatial capacity of a screen, displaying information in areas not used by the user's primary interaction. Id. at 6:38-51.
On August 27, 2010, Interval sued AOL Inc., Apple Inc., Google Inc., and Yahoo! Inc. (the " Defendants" ) in the Western District of Washington, alleging infringement of four patents, including the '652 and '314 patents. Interval's suit alleged that the Defendants infringe the patents through products and software that use " pop-up" notifications to present information to users. In early 2011, two of the Defendants filed a request for ex parte reexamination of the '652 patent, while another defendant filed are quest for inter partes reexamination of the '314 patent. The district court stayed the litigation pending the USPTO's reexaminations. Examiners found the asserted claims of both patents to be patentable in view of the cited prior art. The district court then lifted the stay with respect to the '652 and '314 patents, proceeding to claim construction.
Of the twenty-five claims Interval asserted in the '652 and '314 patents, all but four contain or depend on the phrase " in an unobtrusive manner that does not distract a user." Claim 1 of the '314 patent is representative:
A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:
providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;
providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the content display system;
wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data.
'314 patent, 29:53-30:18 (emphasis added).
Although all of the asserted claims in the '314 patent depend on the " unobtrusive manner" language, four of the asserted claims in the '652 patent do not. Representative claim 15 recites:
A computer readable medium encoded with one or more computer programs for enabling acquisition of a set of content data and display of an image or images generated from the set of content data on a display device during operation of an attention manager, comprising:
acquisition instructions for enabling acquisition of a set of content data from a specified information source;
user interface installation instructions for enabling provision of a user interface that allows a person to request the set of content data from the specified information source;
content data scheduling instructions for providing temporal constraints on the display of the image or images generated from the set of content data, wherein the content data scheduling instructions further comprise sequencing instructions that specify an order in which the images generated from a set of content data are displayed; and
display instructions for enabling display of the image or images generated from the set of content data.
'652 patent, 32:37-58 (emphasis added).
In its claim construction order, the district court found that " the terms 'in an unobtrusive manner' and 'does not distract' a user, whether used together or separately,"  are ...