IP Law Daily, PATENT—Fed. Cir.: Summary judgment finding Meta Platforms did not infringe search patents reversed, (Feb 15, 2024)

By George Basharis, J.D.

District court had determined that collateral estoppel and construction of disputed terms warranted summary judgment in dispute over instant search patents.

The U.S. Court of Appeals for the Federal Circuit reversed a California district court’s grant of summary judgment of noninfringement in favor of Meta Platforms, Inc. in a patent case brought by MasterObjects, Inc. The case involved four patents related to systems for querying that provide a user with results as the user types, rather than waiting for the user to submit the full search term. The dispute centered on the construction of two key terms: “query message” and “asynchronous.” The Federal Circuit held that the district court erred in applying collateral estoppel to the construction of the term “query message” based on a prior claim construction order involving different patents and different claim language. The court also disagreed with the district court’s construction of the term “asynchronous” as requiring the server to be able to initiate communication with the client (MasterObjects, Inc. v. Meta Platforms, Inc., February 15, 2024, Lourie, A.).

The asserted patents, U.S. Patents 8,539,024 (the ’024 patent), 9,760,628 (the ’628 patent), 10,311,073 (the ’073 patent), and 10,394,866 (the ’866 patent), are directed to systems for querying that provide a user with results as the user types, rather than waiting for the user to submit the full search term. The patents claim a system comprising a server that “asynchronously” receives and responds to search queries, or “query messages,” from users. The query messages “represent the lengthening string as additional characters are being input by the user.”

The asserted patents share a common specification and claim priority to an earlier patent, U.S. Patent 8,112,529 (the ’529 patent). The ’024, ’628, and ’866 patents are continuations of the ’529 patent and share its specification, and the ’073 patent is a continuation-in-part. MasterObjects previously sued Google for infringement of the ’529 patent. The Google court determined that the term “query messages” was limited to “just the changes” in search inputs.

MasterObjects later sued Meta for infringement of the asserted patents. The case was initially filed in the Western District of Texas. The main dispute in the case was over the construction of the terms “query message” and “asynchronously” in the asserted claims. The parties also disagreed on the collateral estoppel effect of the prior claim construction order involving the ’529 patent.

Meta argued that the specifications of the asserted patents limited the claims to systems that send only the changes to a user input string since the last query was sent to the server, rather than permitting characters to be resent in consecutive queries. Therefore, according to Meta, each “query message” consisted of “just the changes” to the user input string, rather than the full string, which would include portions already sent to the server. Moreover, Meta contended that the Google court’s similar construction of “query message” in the ’529 patent collaterally estopped MasterObjects from disputing Meta’s construction.

For the other disputed term, Meta argued that, based on MasterObjects’ lexicography, “asynchronously” must be construed to require the server to be able to initiate communication with the client. MasterObjects disagreed, arguing that the “asynchronously” limitation did not prevent the user and server from speaking over one another.

The Texas court agreed with MasterObjects’ construction of both terms, finding “query message” could include the entire input string, not just changes, and “asynchronously” did not prevent either side of the communication from freely communicating without waiting for the other side to finish. The case was then transferred to the Northern District of California, where the court adopted Meta’s proposed constructions and granted summary judgment of noninfringement based on its new constructions and the application of collateral estoppel.

Reversing the California court’s summary judgment, the Federal Circuit determined that MasterObjects was not collaterally estopped from asserting that “query messages” were not limited to “just the changes.” Not only was it not clear from the Google court’s order that interpretation of the specification was essential to its construction, but the ’024, ’628, and ’866 patents were continuations of the ’529 patent, and collateral estoppel may not bar a claim construction dispute solely because the patents are related. Moreover, the ’073 patent was only a continuation-in-part that included substantial new material, making collateral estoppel especially inappropriate.

Moving to claim construction, the Federal Circuit found that nothing in the claim language limited “query messages” to “just the changes.” The court emphasized the importance of adhering to the principles of claim construction and avoiding importing limitations from the specification into the claims. Consequently, the court found that because MasterObjects had not clearly disavowed the plain and ordinary meaning of “query message,” the term could be construed to include the entire input string of a search and not “just the changes.”

The court also found that MasterObjects had not acted as its own lexicographer in regard to the term “asynchronous,” as a patentee must clearly express and intent to redefine a term. The Federal Circuit could not find a clear intent by MasterObjects to define the term as requiring the server to be capable of initiating communication. Applying the plain and ordinary meaning of “asynchronous,” the court found that both client and server are free to communicate without waiting on the other side, and the server may, but is not required to, initiate communication.

The Case is No. 23-1097.

Attorneys: Darrell Rae Atkinson (Hosie Rice LLP) for MasterObjects, Inc. Jeffrey G. Homrig (Latham & Watkins LLP) for Meta Platforms, Inc.

Companies: MasterObjects, Inc.; Meta Platforms, Inc.

Cases: Patent TechnologyInternet FedCirNews CaliforniaNews GCNNews