AUGME TECHNOLOGIES, INC., Plaintiff/Counterclaim Defendant-Appellant,
YAHOO! INC., Defendant/Counterclaimant-Appellee AND WORLD TALK RADIO, LLC, Counterclaim Defendant-Appellant,
[Copyrighted Material Omitted]
Appeals from the United States District Court for the Northern District of California in No. 09-CV-5386, Magistrate Judge Joseph C. Spero.
JENNIFER A. ALBERT, Goodwin Procter LLP, of Washington, DC, argued for all appellants. With her on the brief were, THOMAS J. SCOTT, JR., DAVID M. YOUNG, and ELEANOR M. YOST. Of counsel on the brief was GREGORY S. BISHOP, of Menlo Park, California.
AUGME TECHNOLOGIES, 2 INC. v. YAHOO! INC. DEANNE E. MAYNARD, Morrison & Foerster LLP, of Washington, DC, argued for defendant/counterclaimant-appellee. With her on the brief were DANIEL P. MUINO, and MARC A. HEARRON; and RACHEL KREVANS and RICHARD S.J. HUNG, of San Francisco, California.
Before MOORE, SCHALL, and REYNA, Circuit Judges.
Moore, Circuit Judge.
Augme Technologies, Inc. (Augme) sued Yahoo! Inc. (Yahoo!) alleging infringement of certain claims of U.S. Patent Nos. 6,594,691 and 7,269,636 (collectively, the Augme patents), and Yahoo! counterclaimed that Augme and World Talk Radio, LLC (collectively, Appellants) infringed certain claims of U.S. Patent No. 7,640,320. After claim construction, the court granted Yahoo! summary judgment of noninfringement. The district court also entered judgment that certain means-plus-function terms in claims 19 and 20 of Augme's '691 patent were indefinite. Finally, Appellants stipulated to infringement of the asserted claims of Yahoo!'s '320 patent based on the court's claim construction. This appeal followed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
On appeal, Augme challenges the district court's determination that Yahoo!'s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents and that claims 19 and 20 of the '691 patent are indefinite. We affirm the grant of summary judgment of no literal infringement and of no infringement under the doctrine of equivalents based on the " embedded" limitation. We also affirm the grant of summary judgment that claims 19 and 20 are indefinite.
Appellants appeal from the judgment that they infringe the '320 patent and challenge the district court's construction of the claim term " server hostname." Appellants also appeal from the district court's judgment that claim 7 of the '320 patent is not indefinite. We affirm the district court in all respects with regard to the '320 patent.
I. Summary Judgment of Yahoo!'s Non-Infringement of the Augme Patents
We review summary judgment decisions under regional circuit law. Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011). The Ninth Circuit reviews the grant of summary judgment de novo. Greater Yellowstone Coal. v. Lewis, 628 F.3d 1143, 1148 (9th Cir. 2010). Summary judgment is appropriate if " the movant shows that 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). At the summary judgment stage, we credit all of the nonmovant's evidence and draw all justifiable inferences in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The Augme patents share a common specification that discloses adding functionality, such as media or advertisements, to a web page. '691 patent col. 1 ll. 41-51, col. 14 ll. 18-22. The disclosed embodiments include two code modules. A first code module is embedded in a web page downloaded by a web browser. Id. col. 6 ll. 9-18. The embedded first code module issues a command to retrieve a second code module from a server. Id. The second code module contains the code for the added functionality and a " service response." Id. col. 12 ll. 38-55, col. 17 ll. 22-23. The
patents explain that the service response may indicate either a customized or predetermined service and include media that was requested. Id. col. 8 l. 22 - col. 9 l. 28, col. 12 l. 56 - col. 13 l. 3. However, if the web page content is objectionable or " unacceptable to be displayed with" the requested media, then the patents disclose returning a service response that indicates a denial of service. Id. col. 7 ll. 36-56. The service response may indicate a denial of service by displaying a " media appliance metaphor" with a slash through it, or by not displaying any media appliance metaphor at all. Id. col. 7 ll. 59-63.
Each asserted claim recites: (1) a " service response" contained in the second code module; and (2) an " embedded" first code module that " retrieves" or " initiates retrieval"  of the second code module. '691 patent claims 19-21, 25; '636 patent claims 1-3, 9, 14, 20, 25. Claim 1 of the '636 patent is representative (emphases added):
A method of operating a computer network to add function to a Web page comprising:
downloading said Web page at a processor platform, said downloading step being performed by a Web browser;
when said Web page is downloaded, automatically executing a first code module embedded in said Web page ;
said first code module issuing a first command to retrieve a second code module ;
assembling, in response to said issuing operation, said second code module having a service response ;
said first code module issuing a second command to initiate execution of said second code module; and
initiating execution of said second code module at said processor platform in response to said second command.
The accused Yahoo! systems distribute advertisements for display in web pages. For example, a web page publisher that wants to add advertisements to its web page may contract with Yahoo! to obtain " smart tags," which allow Yahoo!-distributed advertisements to be displayed in the web page. The smart tag (the alleged embedded first code module) is embedded into the developer's web page. Once the web page is downloaded, the browser executes the smart tag to download an intermediary piece of code called " smart code" from the Yahoo! server. The browser executes the smart code to send various parameters to the Yahoo! server and to request an " imp code" (the alleged second code module). The imp code returned to the browser includes an " ad code" (the alleged service response) that either includes an advertisement for display or is blank. For example, if the Yahoo! systems are able to locate a suitable advertisement for display based on parameters sent by the smart code, then an advertisement is included in the ad code. On the other hand, if the Yahoo! systems are unable to locate a suitable advertisement, a blank ad code is returned.
The district court granted summary judgment of noninfringement to Yahoo!. It held that the accused Yahoo! systems do
not meet the (1) " service response" or (2) " embedded first code module" limitations. We discuss each limitation in turn.
B. " service response"
The district court construed " service response" to be " a response that indicates whether the downloaded web page is permitted to have access to a requested function . . . ." Augme Techs., Inc. v. Yahoo!, Inc., C.A. No. 09-05386-JCS, at *34 (N.D. Cal. Sept. 27, 2011), ECF No. 192 ( Claim Construction Order ). It then granted summary judgment of noninfringement to Yahoo! because it determined, as a matter of law, that Yahoo!'s ad codes were not service responses. Augme Techs., Inc. v. Yahoo!, Inc., C.A. No. 09-05386-JCS, 2012 WL 3627408, at *7-9 (N.D. Cal. Aug. 8, 2012) ( Summary Judgment Order ). In particular, the district court ...