Posted by: Paul A. Forsyth | March 21, 2014

Federal Circuit Reverses Alex Kozinski on Claim Construction in Google Street View Case

Chief Judge Alex Kozinski of the Ninth Circuit is something of a superstar in some quarters of the legal profession and blogosphere. He’s famous for his clear and quotable opinions — for example, his opinion in Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002), in which he wrote: “The parties are advised to chill” — and for his outgoing personality and humor.

Like some other federal appellate judges (who apparently don’t feel busy enough with their appellate work, I suppose), Judge Kozinski from time to time sits by designation as a trial court judge. He did so last year in a patent infringement case involving Google’s Street View feature. Plaintiff Vederi, LLC asserted that Google’s Street View feature infringed four related patents in Vederi’s portfolio.* Judge Kozinski held a Markman hearing, made a ruling on claim construction, and afterwards granted Google’s motion for summary judgment.

Plaintiff appealed, and last Friday (March 14), the Federal Circuit reversed, rejecting Kozinski’s claim construction and therefore vacating the grant of summary judgment. The Federal Circuit opinion is here (pdf, 14 pages).

Prof. Dennis Crouch of Patently-O has an overview of the case:

All of the asserted claims include a limitation that the views be “substantially elevations” Here, the term elevation appears derived from architectural usage meaning a flat representation of one façade of a structure and the Google Streetview images are better thought of as a perspective view. …

Judge Kozinski found that the Google Streetview images were not elevation views because they show images that are curved representation of the world.

On appeal, the Federal Circuit found that Kozinski’s view of something being substantially an “elevation” view was too limiting based upon the intrinsic evidence. In particular, the patent specification discloses the use of a fish-eye lens to create a photograph of the street in “substantially elevation” form. In the usual case, a fish-eye photo of a building will not be in elevation form but instead provide a curved representation of reality. The result then, according to the Federal Circuit, is that the “substantially” element of the claim provides substantial leeway on the meaning of elevation. The broader claim construction means that now Google may well infringe.

Here’s a key bit (at pp. 10-11) from the Federal Circuit opinion (by Chief Judge Rader, for a unanimous panel):

In this case, the claim language is a critical part of the record that shows the error in the trial court’s reading of the claims. The operative language in this case is “substantially elevations.” The district court’s construction requiring elevation, and “elevation” alone in the strict sense, gives no effect to the “substantially” modifier contained in the claims. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). By effectively reading “substantially” out the claims, the district court erred. The term “substantially” takes on important meaning in light of the rest of the intrinsic evidence in this record.

Google argues that the meaning of “substantially” merely reflects the fact that, as a practical matter, photographic images, such as those disclosed in the Asserted Patents, could not depict true elevations as that would require a camera lens as large as the object being photographed (here, buildings, cars, and the like). Indeed, Google concedes that using a camera to record an image of a true elevation is a “physical impossibility absent an absurdly large camera,” Appellee’s Br. 36. But under this interpretation, “substantially” has no independent operative effect other than to account for the specification’s disclosure of cameras as a means for capturing images. This interpretation would not allow the claims to cover the fish-eye lens embodiment. Thus, the district court’s confining claim construction does not account for important parts of the intrinsic record.

* U.S. Patent Nos. 7,239,760; 7,577,316; 7,805,025; and 7,813,596. All four patents share a common specification, and all claim ultimate priority to the same provisional application.


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