Are you curious to know what a certain address or location looks like in frontal or perspective view? So are the one billion regular users of Google’s Street View, a component of Google Maps that allows users to virtually navigate through 360° views and panoramic images of streets. Yet, Street View is also controversial. Since launching the feature in 2007, Google has been embroiled in privacy lawsuits from individuals, and from thirty-eight U.S. states and the District of Columbia. However, in recent years, companies have sued the tech giant, claiming that Street View infringed on their patents. Google seems determined to see the patent infringement claims filed by Vederi, LLC, through to the Supreme Court, and is presently awaiting a decision for grant or denial of writ of certiorari.
In October 2010, Vederi filed a suit against Google for patent infringement. The asserted claims from Vederi’s four patents all derived from the same specification. During the claim construction hearing, the parties proposed different constructions of a claim limitation that included the expression “the views being substantially elevations of objects.” While Vederi asserted that the court should take the expression to mean “front or side views” of objects, Google argued that the court should narrowly read the phrase as “vertical flat (as opposed to curved or spherical) depictions of front or side views” of objects. The district court adopted the latter construction, distinguishing Street View’s spherical panoramas from Vederi’s flat views, and granted summary judgment in favor of Google.
The Court of Appeals for the Federal Circuit (CAFC) later held that the district court had erred in its interpretation of “images depicting views of objects in the geographical area, the views being substantially elevations of the objects,” and overturned the district court’s decision. The CAFC concluded from the claim language, specifications, and prosecution histories that “images” encompassed “spherical and curved” representations, and rejected Google’s argument that Vederi had disclaimed “spherical and curved” images to avoid prior art during prosecution. Google petitioned for a rehearing en banc, which the CAFC denied.
Standards for Claim Construction
Claim construction (“Markman”) hearings are a crucial step of any patent infringement action because the judge-rendered interpretation of terms and words helps delineate claim scope and the patentee’s rights.
The CAFC has held that words in a claim should be read according to their “ordinary and customary meaning,” which is the interpretation that a “person of ordinary skill in the art” would give at the time of the invention. A court can determine such a meaning by consulting intrinsic evidence (the claim language, the specification, and the prosecution history) and extrinsic sources (“expert and inventor testimony, dictionaries, and learned treatises”). The prosecution history “limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.” The CFAC has also cautioned that to obtain a dependable interpretation of patent claim scope, courts must examine extrinsic evidence “in the context of the intrinsic evidence.”
The Supreme Court has recently held that appellate courts must review claim construction based on intrinsic evidence de novo, but must defer to the trial judge’s resolution of “subsidiary factfinding” such as extrinsic evidence, unless the judge has made a clear error.
The Pending Petition
In its petition for writ of certiorari, Google requested that the Supreme Court clarify:
Whether, when an applicant for a patent amends a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.
Google compared CAFC and Supreme Court cases to argue that although the Supreme Court’s stance was to “strictly construe” such claims amendments “against the inventor and in favor of the public,” the CAFC “repeatedly” espoused an opposing view. Google insisted that by requiring a “clear and unmistakable” disclaimer of the original claim scope, the CFAC enabled patent applicants to have it both ways, i.e. obtain a patent with narrowed claims while retaining the right to assert a broad claim scope in litigation. Google contended that the CAFC’s standard “undermine[d] the integrity” of the PTO’s examination process, and impeded clarity in prosecution by promoting “gamesmanship by patent applicants and overbroad claim constructions by courts.”
Vederi discounted Google’s claims in an opposing brief, contending that neither the CAFC examples Google provided, nor the present case were inconsistent with Supreme Court decisions cited in the petition. Vederi asserted that the amendment of “non-aerial view of objects” to “views being substantially elevations of objects” distinctly narrowed the claim scope, which was not recaptured by the CAFC’s claim construction. Further, Vederi rejected Google’s assertions that the CAFC used a “clear and unmistakable” standard to determine the scope of the prior-amended claim.
What Lies Ahead
As evidenced by the amici brief filed in support of Google’s petition for writ of certiorari, there is a call for the Supreme Court to reaffirm the necessity of reviewing all of the intrinsic evidence, including prosecution history, when construing claims. The nine amici, which include Dell, EBay, and QVC, contend that the CAFC’s “clear and unmistakable” standard departs from the Supreme Court’s precedents, gives “overbroad interpretations to patent claims,” and should therefore be addressed.
Legal commentators have stated that in addition to encouraging vague and ambiguous claims that compromise the character of the PTO’s prosecution procedure, the CAFC’s “clear and unmistakable” standard undermines the “public-notice function of claims”, and violates Nautilus’s requirement that claims be “reasonably clear.”
On January 12, 2015, the Supreme Court called for the view of the Solicitor General on whether Google must defend the claims of patent infringement. While Google abandoned Street View in Germany due to persistent privacy lawsuits, it remains uncertain whether U.S. users may have to bid adieu to the feature because of patent infringement issues.