NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

MASTEROBJECTS, INC.,

Plaintiff-Appellant

v.

META PLATFORMS, INC.,

Defendant-Appellee

______________________ 

2023-1097

______________________ 

Appeal from the United States District Court for the 

Northern District of California in No. 3:21-cv-05428-WHA, 

Judge William H. Alsup.

______________________ 

Decided: February 15, 2024

______________________ 

DARRELL RAE ATKINSON, Hosie Rice LLP, San Francisco, CA, argued for plaintiff-appellant. Also represented 

by SPENCER HOSIE, DIANE SUE RICE. 

 JEFFREY G. HOMRIG, Latham & Watkins LLP, Austin, 

TX, argued for defendant-appellee. Also represented by 

GABRIEL K. BELL, RACHEL WEINER COHEN, Washington, 

DC; JOSEPH HYUK LEE, Costa Mesa, CA; DOUGLAS ETHAN 

LUMISH, Menlo Park, CA.

______________________ 

Case: 23-1097 Document: 41 Page: 1 Filed: 02/15/2024
2 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

Before LOURIE, REYNA, and CUNNINGHAM, Circuit Judges.

LOURIE, Circuit Judge. 

MasterObjects, Inc. (“MasterObjects”) appeals from a 

decision of the United States District Court for the Northern District of California granting summary judgment that 

Meta Platforms, Inc. (“Meta”) did not infringe 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”) (collectively, the “asserted patents”). MasterObjects, Inc. v. Meta Platforms, Inc., No. C 21-05428, 2022 WL 

12039301 (N.D. Cal. Oct. 20, 2022) (“Decision”). For the 

following reasons, we reverse and remand. 

BACKGROUND

The asserted patents all descend from a common application filed in 2001 that resulted in 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. The patents 

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 specifications describe several embodiments, including the exemplary 

“QuestObjects” system. For example, claim 1 of the ’024 

patent is presented below:

1. A system comprising:

a server system, including one or more computers, 

which is configured to receive query messages from 

a client object, the server system asynchronously receiving and responding to the query messages from 

the client object over a network; 

the client object that, while a user is providing input 

comprising a lengthening string of characters, sends 

query messages to the server system;

Case: 23-1097 Document: 41 Page: 2 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 3

whereby the query messages represent the lengthening string as additional characters are being input

by the user; and

wherein the server system, while receiving said 

query messages, uses the input to query data available to the server system and send return messages 

to the client object containing results in response to 

the input; and

wherein, upon receiving a return message of the return messages from the server system, the client object tests the usability of the results in the return 

message by checking that the return message corresponds to the latest query, and if usability is established, the client object displays or returns at least 

some result data to the user.

’024 patent col. 31 l. 52–col. 32 l. 7 (emphases added).

MasterObjects sued Meta for infringement of the asserted patents in the United States District Court for the 

Western District of Texas, where the case was assigned to 

Judge Albright. Meta moved to transfer the case to the 

Northern District of California. Pursuant to Judge Albright’s Standing Order at the time, the parties proceeded 

with claim construction before any ruling on the Motion to 

Transfer. Appellant’s Br. at 7. Three claim construction 

disputes arose between the parties: (1) the construction of 

“query message,” (2) the construction of “asynchronously,” 

and (3) the collateral estoppel effect, if any, of a claim construction order in a prior district court case involving the 

’529 patent, MasterObjects, Inc. v. Google, Inc., No. C 11-

1054, 2013 WL 2319087 (N.D. Cal. May 28, 2013) (“Google 

Order”), which we summarily affirmed in MasterObjects, 

Inc. v. Google, Inc., 582 F. App’x 893 (Fed. Cir. 2014). 

These issues are common to all of the asserted patents.

Meta argued that the specifications of the asserted patents limit the claims to systems that send only the 

Case: 23-1097 Document: 41 Page: 3 Filed: 02/15/2024
4 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

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. See J.A. 344. Meta argued 

that each “query message” thus consists of “just the 

changes” to the user input string, rather than the full partial string including portions already sent to the server. 

See J.A. 357–59, 5388. For example, under Meta’s construction, if a user typed “cat,” the client could send “c,” 

then “a,” then “t” to the server, with each character sent as 

a separate message, or the client could send “c” then “at” 

as two separate messages; the server then fuses the portions of the input string together to form the word “cat.” 

J.A. 341. Under Meta’s construction the client never 

resends characters, such as by sending “c” then “ca” then 

“cat.” See Id. MasterObjects argued that the claims were 

not so limited, and that Meta was reading a specific embodiment into the claims. J.A. 1118–19. Meta also argued that 

the Google Order collaterally estopped MasterObjects from 

disputing Meta’s construction. J.A. 356. MasterObjects 

opposed applying estoppel, arguing that the Google order

involved a different patent with different claims and terms. 

J.A. 2118. 

For the other disputed term, Meta argued that, based 

on the patentee’s lexicography, “asynchronously” must be 

construed to require the server be able to initiate communication with the client. J.A. 349. MasterObjects disagreed, arguing that “asynchronously” describes the timing 

of communications between the server and client after initiation (i.e., by permitting them to speak over one another), 

not the initiation itself, and that Meta was pointing to a 

non-limiting embodiment as supposed evidence of lexicography. J.A. 1136. Specifically, MasterObjects argued that 

“asynchronously” should be construed as either (1) plain 

and ordinary meaning, (2) “[e]ach side of the communication is free to communicate without waiting for the other 

side,” or (3) “each side of the communication is free to communicate with the other side in a non-blocking matter,” 

Case: 23-1097 Document: 41 Page: 4 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 5

while Meta argued it should be construed as “[b]oth the client and the server can initiate communications at any moment in time.” See J.A. 5388.

On November 29, 2020, the Texas court provided the 

parties with its preliminary constructions tentatively 

adopting MasterObjects’ proposed constructions. That is,

“query message” was given its plain and ordinary meaning

and “not limited to a message/string comprising only the 

changes to an input string and may include the entire input 

string,” and “asynchronously” was construed as “[e]ach side 

of the communication is free to communicate without waiting for the other side.” Id. Following oral argument on 

claim construction, the Texas court, in a minute order without written opinion, adopted its preliminary constructions 

as final. See J.A. 2495. Meta did not file a motion for reconsideration in the Texas court, and those constructions 

were applied throughout fact and expert discovery. 

On July 13, 2021, the Texas court granted Meta’s motion to transfer the case to the Northern District of California, where it was assigned to Judge Alsup. See J.A. 5357, 

5363. Meta did not move for reconsideration of the Texas 

court’s claim construction by the California court. However, upon the close of discovery, Meta moved for summary 

judgment of noninfringement, reasserting its original 

claim construction positions that had been rejected by the 

Texas court. J.A. 6954. MasterObjects opposed the motion, 

arguing that (1) the constructions previously decided by the 

Texas court were correct, and (2) because Meta had not 

moved for reconsideration of those constructions, the California court was precluded from adopting different constructions. J.A. 8771. 

Approximately three weeks before the scheduled trial 

date, the California court granted Meta’s motion for summary judgment of noninfringement and entered judgment 

in favor of Meta. The court first found that Meta did not 

need to file a motion for reconsideration, or even satisfy a 

Case: 23-1097 Document: 41 Page: 5 Filed: 02/15/2024
6 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

motion-for-reconsideration standard, and that the court 

was not precluded from “determining a different construction.” Decision at *3. The court pointed out that the original constructions by the Texas court were finalized in a 

minute order, providing “nothing on which to base [a motion for reconsideration] evaluation.” Id.

The California court also found that, in view of the 

Google Order, collateral estoppel precluded MasterObject’s 

construction of “query message.” Although the Google Order construed a different term in the ’529 patent and related U.S. Patent 8,060,639 (the “’639 patent”), the court 

noted that the asserted patents were in the same family

and that “they all share a common specification.” Id. at *4. 

It found that the Google Order: 

was based on the following passage from that common specification (emphasis added):

If the results are not found in the cache, the 

Client Quester uses the Client Controller 

to send the new input buffer to the Server 

Quester, so that a new query can be executed (step 611). To support this, the protocol of the present invention provides a 

number of messages that allow the Client 

Quester to send just the changes to the input 

buffer, instead of sending the entire input 

buffer[.] 

(’024 patent 20:11–17). 

Id. The court emphasized that the Google Order found 

“that the use of ‘the current invention’ here indicates that 

the description is intended to apply to the invention as a 

whole, and not just a single embodiment.” Id. (quoting 

Google Order at *12). The court therefore found that the 

claim construction issue in this case was “identical” to the 

one addressed in the Google Order: “whether the specification limits the claimed invention such that the client sends 

Case: 23-1097 Document: 41 Page: 6 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 7

‘just the changes’ to the server.” Id. It further found that

the asserted claims did “not differ substantively from the 

claims considered in Google such that collateral estoppel 

would not apply.” Id. The court therefore adopted Meta’s 

proposed “just the changes” construction of “query message.” Id. at *4–6. 

For “asynchronously,” the California court first

acknowledged that “[a]synchronous in the general, computer programming sense broadly refers to ‘something that 

is not depending on timing.’” Id. at *6 (citation omitted). 

It then found that, although it was “not bound to the construction adopted in Texas,” it “need not adjust the prior 

construction because it adequately captures the nature of 

the term.” Id. at *6. However, the court ultimately added

to the Texas court’s construction Meta’s previously rejected 

proposed requirement that “[b]oth the client and the server 

can initiate communications at any time.” Id. It relied primarily on language in the specification that “[t]he system

is bi-directional and asynchronous, in that both the Client 

and the Server can initiate communications at any moment 

in time.” Id. (quoting ’024 patent, col. 12 ll. 24–26) (emphasis added by the California court). MasterObjects argued 

that that language described a non-limiting embodiment

called “QuestObjects.” The court acknowledged that 

QuestObjects was “a preferred embodiment,” but found 

that the relevant passage of the specification was not embodiment-specific. Id. at *6. Based on that understanding, 

the court adopted a server initiation requirement for “asynchronously.” Id. at *6–9. 

In light of its new constructions, the California court 

granted summary judgment of noninfringement and entered judgment in favor of Meta accordingly. See id. at *9; 

J.A. 17. MasterObjects timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1). 

Case: 23-1097 Document: 41 Page: 7 Filed: 02/15/2024
8 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

DISCUSSION

We review a district court’s grant of summary judgment under the law of the regional circuit, in this case the 

Ninth Circuit. Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 974

(Fed. Cir. 2022). The Ninth Circuit reviews a district 

court’s grant of summary judgment de novo. Id.

I 

We first address whether or not MasterObjects is collaterally estopped from asserting that “query message” is 

not limited to “just the changes.” We review a district 

court’s application of collateral estoppel de novo. e.Digital 

Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir. 

2014). That review is guided by regional precedent, but we 

apply this Court’s precedent to any aspects that involve 

“substantive issues of patent law.” Ohio Willow Wood Co. 

v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (citing 

Aspex Eyewear, Inc. v. Zenni Optical, Inc., 713 F.3d 1377, 

1380 (Fed. Cir. 2013)). The Ninth Circuit also reviews a 

district court’s application of collateral estoppel de novo. 

Wolfson v. Brammer, 616 F.3d 1045, 1064 (9th Cir. 2010).

Collateral estoppel only applies if: “(1) the issue necessarily decided in the previous proceeding is identical to the 

one which is sought to be relitigated; (2) the first proceeding ended with a final judgment on the merits; and (3) the 

party against which collateral estoppel is asserted was a 

party or in privity with a party at the first proceeding.” 

e.Digital, 772 F.3d at 726 (citing Hydranautics v. FilmTec 

Corp., 204 F.3d 880, 885 (9th Cir. 2000)). 

As explained above, the Google Order involved the ’529 

patent, from which the asserted patents claim priority, and 

the related ’639 patent. The court in the Google Order considered the common construction of four phrases each using the term “additional characters.” Google Order at *11. 

The Google court adopting Google’s proposed construction 

that the “additional characters” phrases meant “only the 

Case: 23-1097 Document: 41 Page: 8 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 9

changes to the input string that were not sent in any previous consecutive query.” Id. at *12. In reaching that determination, the court focused on “the claim language 

itself,” finding that that the language “suggests that the 

‘lengthening string’ is formed by piecing together multiple 

smaller queries, rather than by receiving iteratively longer 

versions of the string.” Id. (quoting the ’529 patent claims). 

It went on to note that:

Claim 1 of the ’529 patent describes how “consecutive additional characters” are input at the client 

and sent as “consecutive queries” to the server, 

“wherein each of the corresponding consecutive 

queries lengthens the string by the additional characters, to form a lengthening string.” The server 

then “receiv[es] each of the corresponding consecutive queries that modify the lengthening string.” 

The words “lengthens” and “modify” suggest that 

the server is not wiping its slate clean with each 

new submitted query, but is instead combining the 

queries to form the “lengthening string.” 

Id. (quoting ’529 patent, claim 1). Only after considering 

the claim language did the court find that “[t]he specification confirms this understanding.” Id. (emphasis added).

It is not clear that the Google Order’s interpretation of 

the specification was essential to its construction. Although the Google Order suggests that portions of the common specification may limit the overall invention, it did not 

clearly find lexicography or disavowal. See Clark v. Bear 

Stearns & Co., 966 F.2d 1318, 1320 (9th Cir. 1992) (“The 

party asserting preclusion bears the burden of showing 

with clarity and certainty what was determined by the 

prior judgment.”). There is no mention of lexicography or 

disavowal in the Google Order, or even in the parties’ briefs 

to that court. See Appellant’s Reply Br. at 12–13. And the 

Google Order only relies on the specification to “confirm” 

its understanding of the disputed terms based on the 

Case: 23-1097 Document: 41 Page: 9 Filed: 02/15/2024
10 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

surrounding claim language. Google Order at *12. We 

summarily affirmed the Google Order without opinion, and 

thus without explaining whether the language in the specification was necessary for the affirmed construction. MasterObjects, 582 F. App’x 893; Fed. Cir. R. 36. Because the 

claim language may provide an independent basis for the 

construction, there is doubt that the Google Order’s interpretation of the specification was necessary to the judgment, as is required for collateral estoppel to apply. 

e.Digital, 772 F.3d at 726. 

Moreover, the Google Order’s focus on the specific claim 

language at issue is significant. The ’024, ’628, and ’866 

patents are continuations of the ’529 patent and share its 

specification, while the ’073 patent is a continuation-inpart. However, “a court cannot impose collateral estoppel 

to bar a claim construction dispute solely because the patents are related.” e.Digital, 772 F.3d at 727. Rather, we 

must consider whether or not the intrinsic record for each 

patent, including the claims, differs in a material way. The 

“additional character” phrases at issue in the Google Order 

do not appear in the claims of asserted patents here. And 

neither does any of the surrounding claim language considered in the Google Order, such as “lengthens” or “modify.” 

See eBay Inc. v. MasterObjects, Inc., No. IPR2017-00740, 

2017 WL 3209158, at *4 (P.T.A.B. July 27, 2017) (finding 

in an Institution Decision that estoppel did not apply to the 

construction of “query message” in the ’024 patent claims, 

in part because the Google Order “construed the term ‘additional characters’ in view of additional claim language, 

‘lengthens’ and ‘modify,’” which did not appear in the ’024 

patent claims). Rather, the claims at issue here include a 

different term, “query message,” with different surrounding language, such as “corresponds” and “represents.” See, 

e.g., ’024 patent, claim 1. Meta asks us to apply an estoppel 

effect to a prior court’s construction of a different term in a 

different patent with different surrounding claim language. We decline to do so, as we do not find the issues to 

Case: 23-1097 Document: 41 Page: 10 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 11

be identical. See, e.g., Trading Techs. Int’l, Inc. v. Open E 

Cry, LLC, 728 F.3d 1309, 1319–20 (Fed. Cir. 2013) (finding 

that a prior decision that opined on the patent’s specification “merely determined the best construction for a single 

disputed claim term, a term that is absent from the 

claims . . . now before us”). 

Further, the ’073 patent is a continuation-in-part that 

includes substantial new material in its specification while 

incorporating the ’529 specification by reference. Although 

we do not find applying estoppel appropriate for any of the 

asserted patents, it would be particularly inappropriate to 

apply estoppel effect to the ’073 patent, as the ’073 specification differs in material ways from those at issue in the 

Google Order. See e.Digital, 772 F.3d at 727 (“A continuation-in-part, for instance, may disclose new matter that 

could materially impact the interpretation of a claim, and 

therefore require a new claim construction inquiry.”). For 

example, it includes additional language, such as that, in 

some embodiments, the server “does not remember information . . . and does not combine the input requests” and 

that “each request from the client . . . represents the full 

information needed.” ’073 patent, col. 31 ll. 23–28, 46–49. 

When considering a specification for purposes of claim construction, it is important to consider it as a whole, which 

the Google Order simply could not have done for the ’073 

patent. See SanDisk Corp. v. Memorex Prods., Inc., 

415 F.3d 1278, 1285 (Fed. Cir. 2005) (“The court must always read the claims in view of the full specification.”); 

Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379–80 

(Fed. Cir. 2001) (“In construing terms used in patent 

claims, it is necessary to consider the specification as a 

whole . . . .”). The California court thus erred in not considering any potentially material differences in the disclosures between the previously litigated patents and the ’073 

patent. 

We therefore reverse the decision of the California 

court and hold that collateral estoppel does not apply to the 

Case: 23-1097 Document: 41 Page: 11 Filed: 02/15/2024
12 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

construction of the term “query message” based on the 

Google Order. 

II

We next turn to the construction of the disputed terms 

“query message” and “asynchronous.” We review “a district 

court’s claim construction and its interpretations of intrinsic evidence de novo” and “any subsidiary fact findings 

based on extrinsic evidence for clear error.” Apple, 25 F.4th 

at 967. “Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.” Luminara 

Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 

(Fed. Cir. 2016). In order for a patentee to act as its own 

lexicographer, it must “clearly set forth a definition of the 

disputed claim term” and “clearly express an intent to redefine the term.” Thorner v. Sony Comput. Ent. Am. LLC, 

669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal quotation 

marks and citation omitted). Likewise, disavowal occurs 

only when there is a clear and unmistakable intent to exclude a particular feature from the claimed invention. Luminara, 814 F.3d at 1353. 

A. “Query Message” Construction

MasterObjects argues that, as the Texas court found, 

“query message” should be given its plain and ordinary 

meaning such that it is “not limited to a message/string 

comprising only the changes to an input string, and may 

include the entire input string.” Appellant’s Br. at 17. 

Meta argues that, as the California court found, “[e]ach 

query consists of only the changes to the input string that 

were not sent in any previous consecutive query.” Appellee’s Br. at 34–35. Meta does not argue that any claim language limits “query message” in such a manner, but rather 

points to a passage of the specification, which provides: 

“[T]he protocol of the present invention provides a number 

of messages that allow the Client Quester to send just the 

changes to the input buffer, instead of sending the entire 

input buffer.” Id. (quoting ’024 patent, col. 20 ll. 14–17). 

Case: 23-1097 Document: 41 Page: 12 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 13

Meta argues that, by using the language “the present invention,” that text applies to and limits the invention as a 

whole. Id. MasterObjects responds that that statement is 

limited to a specific embodiment, as evident from the permissive language, “allow,” and placement within the specification. Appellant’s Br. at 30–31.

We agree with MasterObjects that “query message” is 

not limited as Meta suggests. Claim construction “begins 

and ends . . . with the actual words of the claim.” Teleflex, 

Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 

2002) (quoting Renishaw PLC v. Marposs Societa’ per 

Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998); see also Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 

381 F.3d 1111, 1116–17 (Fed. Cir. 2004). Nothing in the 

claim language limits “query message” to “just the 

changes.” And even when a patent only describes a single 

embodiment, the claims are not necessarily construed as 

being limited to that embodiment. See Phillips v. AWH 

Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). We 

must avoid importing limitations from the specification 

into the claims. Id. Although Meta correctly observes that 

we have previously found statements including “the present invention” to indicate clear and unmistakable disavowal, see, e.g., Regents of Univ. of Minn. v. AGA Med. 

Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, 

Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 

2006), we have also found that the phrase “is not always so 

limiting,” Absolute Software, Inc. v. Stealth Signal, Inc., 

659 F.3d 1121, 1136 (Fed. Cir. 2011). In this case, the specification language Meta points to merely describes what is 

“allow[able].” ’024 patent, col. 20 ll. 14–17; see also id. col. 

11, ll. 57–61 (describing “sending single characters” as an 

“optimiz[ation]”). None of the passages Meta cites unambiguously makes clear that sending “just the changes” is 

required, to the exclusion of re-sending characters previously sent, and do not amount to clear and unmistakable 

disavowal of sending more than just the changes. See 

Case: 23-1097 Document: 41 Page: 13 Filed: 02/15/2024
14 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

Absolute Software, 659 F.3d at 1137 (relying on terms like 

“can” as indicating that a feature was “optional” when concluding that there was no disavowal); Cont’l Cirs. LLC v. 

Intel Corp., 915 F.3d 788, 797–98 (Fed. Cir. 2019) (similar).

Moreover, the only time the term “query message” is 

used in the specification, albeit in another context, it refers 

to sending a multiple-character string “ab”, after separately receiving, at the server, the letter “a” then the letter 

“b.” See id. col. 18 l. 45–col. 19 l. 2 (“send the appropriate 

query message ‘ab’”). This passage is not conclusive on its

own but provides further support for our conclusion that 

there was no clear and unmistakable disavowal. 

Because we do not find clear and unmistakable disavowal, we do not depart from the plain and ordinary meaning of the term. We therefore find that “query message” 

should be construed as not limited to a message/string comprising only the changes to an input string and may include 

the entire input string.

B. “Asynchronous” Construction

MasterObjects argues that the “asynchronous” terms 

should not require that the server be able to initiate communications, whereas Meta argues that both server and 

the client must be able to initiate communications. Meta

argues that the patentee acted as its own lexicographer 

and that the specification defines the claimed system as 

“bi-directional and asynchronous, in that both the Client 

and the Server can initiate communications at any moment 

in time.” Id. col. 12 ll. 24–26. It argues that the use of “in 

that” signifies what “asynchronous” means without limitation to a particular embodiment. Appellee’s Br. at 45. MasterObjects contends that that language was concerning a 

specific embodiment, QuestObjects, and is therefore nonlimiting. Appellant’s Br. at 41. 

We agree with MasterObjects that the patentee did not 

act as its own lexicographer. In order for a patentee to have 

Case: 23-1097 Document: 41 Page: 14 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 15

acted as its own lexicographer, it “must ‘clearly express an 

intent’ to redefine the term.” Thorner, 669 F.3d at 1365

(quoting Helmsderfer v. Bobrick Washroom Equip., Inc., 

527 F.3d 1379, 1381 (Fed. Cir. 2008)). “It is not enough for 

a patentee to simply disclose a single embodiment or use a 

word in the same manner in all embodiments . . . .” Id. We 

see no clear intent to define “asynchronous” as requiring 

the server to be capable of initiating communication. Although lexicography requires no formal phrases or magic 

words, Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v. 

Mut. Pharm. Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004), 

Meta does not point us to any prior decision that has held 

that “in that” signifies a clear intent to define a term, and 

we decline to do so here. Further, the statement at issue is 

not simply referring to “asynchronous” alone, but “bi-directional and asynchronous,” making the patentee’s intent 

even less clear. ’024 patent, col. 12 ll. 24–26.

Moreover, the use of “Client” and “Server” with capital 

letters supports our conclusion that the statement in question is limited to the QuestObjects embodiment and does 

not speak to the broader invention as a whole. Indeed, 

Meta acknowledged during claim construction in the Texas 

court that “[t]he common specification . . . proceeds to capitalize ‘Client’ and ‘Server’ when it speaks of a specific embodiment.” See Meta’s Resp. Claim Constr. Br. at 13, J.A. 

2126 (citing ’024 patent, col. 11 ll. 50–65). See also MasterObjects, Inc. v. eBay, Inc., No. 3:12-cv-680, 2013 WL 

1287428, at *4 (N.D. Cal. Mar. 28, 2013), and MasterObjects, Inc. v. Yahoo!, Inc., No. C 11-02539, 2013 WL 

6185475, at *4 (N.D. Cal. Nov. 26, 2013) (considering the 

same portion of the specification and finding that it described a specific embodiment, QuestObjects). As the California court recognized, QuestObjects is merely 

exemplary, the “preferred embodiment.” Decision at *6. 

The discussion of “asynchronous” in relation to that embodiment does not amount to a clear and unmistakable 

Case: 23-1097 Document: 41 Page: 15 Filed: 02/15/2024
16 MASTEROBJECTS, INC. v. META PLATFORMS, INC. 

disavowal. We therefore must apply the plain and ordinary 

meaning of “asynchronous.” Luminara, 814 F.3d at 1353. 

We agree with the California court that “[t]he language 

of the claims does not indicate that only the client initiates 

communications while the server lacks such functionality,” 

Decision at *7, but it does not follow that the claims require

the server also be able to initiate communications. We 

therefore construe “asynchronously” to mean that, after initiation of communication, each side of the communication 

(i.e., the client or server) is free to communicate without 

waiting for the other side. The server need not be, but may 

be, capable of initiating communication. That construction

is consistent with the specification and the California 

court’s finding that “asynchronous” “in the general computer programming sense broadly refers to ‘something that 

is not depending on timing,’” with which we see no clear 

error. Decision at *6. 

III

MasterObjects argues that the California court should 

not have revisited the issue of claim construction, particularly without a motion for reconsideration and after the 

close of discovery. Meta argues that a district court is free 

to reassess constructions as a case proceeds, especially 

when, like here, there was no written opinion explaining 

the constructions. Because we reverse the California 

court’s constructions on the merits (i.e., the constructions 

and application of collateral estoppel), we need not reach 

this issue.

CONCLUSION

Because the California court’s decision to grant summary judgment of noninfringement was based on its erroneous application of collateral estoppel and constructions 

of “query message” and “asynchronous,” with which we disagree, the summary judgment decision is reversed, and this 

case is remanded for further proceedings. 

Case: 23-1097 Document: 41 Page: 16 Filed: 02/15/2024
MASTEROBJECTS, INC. v. META PLATFORMS, INC. 17

REVERSED AND REMANDED

COSTS

Costs to appellant. 

Case: 23-1097 Document: 41 Page: 17 Filed: 02/15/2024