NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

UNWIRED PLANET L.L.C.,

Plaintiff-Appellant

v.

GOOGLE, INC.,

Defendant-Appellee

______________________ 

2015-1966

______________________ 

Appeal from the United States District Court for the 

District of Nevada in No. 3:12-cv-00504-MMD-VPC, Judge 

Miranda M. Du.

______________________ 

Decided: November 21, 2016

______________________ 

PHILLIP AURENTZ, McKool Smith, PC, Dallas, TX, argued for plaintiff-appellant. Also represented by

THEODORE STEVENSON III; KEVIN LEE BURGESS, JOEL 

LANCE THOLLANDER, Austin, TX. 

GREGORY PAUL STONE, Munger, Tolles & Olson LLP, 

Los Angeles, CA, argued for defendant-appellee. Also 

represented by FRED ANTHONY ROWLEY, JR., ADAM R.

LAWTON, PETER GRATZINGER; PETER ANDREW DETRE, San 

Francisco, CA.
2 UNWIRED PLANET LLC v. GOOGLE, INC. 

______________________ 

Before WALLACH, HUGHES, and STOLL, Circuit Judges.

STOLL, Circuit Judge.

Unwired Planet, L.L.C. appeals from a stipulated 

judgment of noninfringement following adverse claim 

construction and indefiniteness rulings from the United 

States District Court for the District of Nevada. For the 

reasons that follow, we affirm-in-part, vacate the court’s 

grant of summary judgment, and remand for proceedings 

consistent with this opinion. 

BACKGROUND

Unwired originally asserted ten patents against 

Google, Inc. in the district court, although only three are

at issue here on appeal: U.S. Patent Nos. 6,662,016,

6,895,240, and 6,684,087. Following the court’s claim 

construction order concerning those patents and its invalidation of claims 17 and 31 of the ’087 patent for indefiniteness, Unwired stipulated to a judgment of 

noninfringement. 

The court granted the parties’ joint motion for summary judgment. The parties agreed that, with respect to 

the ’016 patent, the court’s construction of “server node” 

entitled Google to summary judgment of noninfringement 

for claims 1–5. J.A. 57. For the same patent and asserted 

claims, the parties further agreed that the court’s construction of “network location information regarding a 

mobile resource location” entitled Google to summary 

judgment of noninfringement with respect to its accused 

product My Location. J.A. 57. The parties further agreed 

that, with respect to the ’240 patent, the court’s construction of “proxy server” / “proxy server module” entitled 

Google to summary judgment of noninfringement for 

claims 1–3, 5, 6, 13, 15–18, 27, 28, and 30. J.A. 56. Also 

with regards to that patent, they agreed that the court’s 
UNWIRED PLANET LLC v. GOOGLE, INC. 3

construction of “user account” entitled Google to summary 

judgment of noninfringement for claims 6, 27, 28, and 30 

of the ’240 patent. J.A. 56. And finally, with respect to

the ’087 patent, the parties agreed that the court’s construction of “reduced image” entitled Google to summary 

judgment of noninfringement for claims 1, 17, 27, and 31. 

J.A. 57.

Unwired appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(1).

DISCUSSION

“The ultimate construction of the claim is a legal 

question and, therefore, is reviewed de novo.” Info-Hold, 

Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265 

(Fed. Cir. 2015). We review a district court’s claim construction based solely on intrinsic evidence de novo, while 

we review subsidiary factual findings regarding extrinsic 

evidence for clear error. Teva Pharm. USA, Inc. v. 

Sandoz, Inc., 135 S. Ct. 831, 841 (2015).

Claim construction seeks to ascribe the “ordinary and 

customary meaning” to claim terms as a person of ordinary skill in the art would have understood them at the 

time of invention. Phillips v. AWH Corp., 415 F.3d 1303, 

1312–14 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp. 

v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 

“[T]he claims themselves provide substantial guidance as 

to the meaning of particular claim terms.” Id. at 1314. In 

addition, “the person of ordinary skill in the art is deemed 

to read the claim term not only in the context of the 

particular claim in which the disputed term appears, but 

in the context of the entire patent, including the specification.” Id. at 1313. But “[w]hile we read claims in view of 

the specification, of which they are a part, we do not read 

limitations from the embodiments in the specification into 

the claims.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 

F.3d 1367, 1371 (Fed. Cir. 2014). 
4 UNWIRED PLANET LLC v. GOOGLE, INC. 

On appeal, Unwired challenges seven claim constructions and the court’s indefiniteness ruling. Of the seven 

challenged constructions, we disagree with the district 

court on three and agree on four. We disagree with the 

court’s construction of the terms “marker info” and “server 

node” in the ’016 patent. We also disagree with its construction of “user account” in the ’240 patent. We agree 

with the remainder of the challenged constructions, 

including all of the challenged constructions in the ’087 

patent. Finally, we affirm the court’s ruling that claims 

17 and 31 of the ’087 patent are invalid as indefinite.

I.

We begin with Unwired’s argument that the district 

court misconstrued the terms “marker information,” 

“network location information,” and “server node” in the 

’016 patent.1 The ’016 patent describes technology for 

transmitting and displaying location information of a 

mobile device. The specification describes particular 

methods and systems for the “delivery of graphical location information regarding mobile resources.” ’016 patent 

col. 2 ll. 25–26. In the claimed method, a “server node” 

separately sends “mapping information” and “marker 

information” to a “client node,” which processes the “mapping information” and “marker information” to “generate 

a graphical display indicating said mobile resource loca-

 

1 We adopt the parties’ shorthand for the first two 

terms. The parties use the shorthand “marker information” to refer to the construed term “processing said 

network location information regarding said mobile 

resource location, at said server node, to generate marker 

information defining a graphical representation of said 

mobile resource location.” The shorthand “network location information” stands for “network location information 

regarding a mobile resource location.” 
UNWIRED PLANET LLC v. GOOGLE, INC. 5

tion.” Id. col. 12 l. 61 – col. 14 l. 4. Claim 1 is representative and is reproduced below: 

1. A method for use in providing location information regarding mobile resources in a data enabled network, comprising the steps of:

providing a server node associated 

with at least one wireless communication 

network assisted location finding system;

said server node being in selective 

communication with a client node via the 

data enabled network; 

receiving, at the server node, network 

location information regarding a mobile 

resource location, said network location information being obtained using said at 

least one network assisted location finding 

system, wherein said network location information is based on the location of said 

mobile resource in relation to at least one 

fixed ground-based wireless network 

structure having a known geographic location;

accessing at the server node, geographical mapping information for an area including said mobile resource location;

processing said network location information regarding said mobile resource 

location, at said server node, to generate 

marker information defining a graphical 

representation of said mobile resource location, wherein said marker information 

represents said network location information so as to permit graphical combination of said marker information with said 

mapping information; 
6 UNWIRED PLANET LLC v. GOOGLE, INC. 

first transmitting in a first message 

set, said mapping information from said 

server node to said client node;

second transmitting in a second message set, said marker information from 

said server node to said client node; and

wherein said mapping information 

and said marker information can be combined at said client node to generate a 

graphical display indicating said mobile 

resource location.

Id. col. 12 l. 57 – col. 14 l.4 (emphases added).

A.

Unwired argues that the court’s construction of 

“marker information” in the ’016 patent improperly 

imports a graphical output requirement into the claim, 

and we agree.2 The central dispute between the parties 

was whether marker information must be information 

“sufficient to render” a graphical marker on a screen, as 

Google argued, or whether the marker information simply

“permits rendering” of an identifier on a map, as Unwired 

proposed. Unwired Planet, LLC v. Google Inc., No. 3:12-

CV-00504, 2014 WL 7012497, at *27–28 (D. Nev. Dec. 12, 

2014). The court adopted Google’s construction of the 

term, finding that the claim requires the following: “at 

said server node, processing said network location infor-

 

2 The entire disputed “marker information” term 

requires “processing said network location information 

regarding said mobile resource location, at said server 

node, to generate marker information defining a graphical 

representation of said mobile resource location.” 

’016 patent col. 13 ll. 10–13. 
UNWIRED PLANET LLC v. GOOGLE, INC. 7

mation regarding said mobile device location to generate 

graphical location information sufficient to render an 

identifier and including coordinates indicating the position of said mobile device on a map.” Id. at *27, *29. In 

short, the court found that marker information defines a 

graphical representation and must include information 

sufficient to render a graphical identifier. We disagree.

The specification defines the term “marker” as the 

“cursor or other identifier, indicating the position of a 

mobile resource.” ʼ016 patent col. 1 ll. 41–42. In contrast, 

the specification describes “marker information” as including “information identifying the mobile resource 

location.” Id. col. 9 l. 66 – col. 10 l. 1. The specification 

states that “the marker information includes information 

sufficient to define a graphical representation of the 

mobile resource location” and that “such information may 

simply include coordinates which may be represented by a 

cursor, cross hairs, a point or other identifier or the 

location information may include coordinates which an 

uncertainty radius or other defined uncertainty region.” 

Id. col. 10 ll. 13–19. 

While “marker information” may include a graphical 

representation, the specification and prosecution history 

make clear that “marker information” need not always 

include graphical information. Rather, the intrinsic 

evidence confirms that “marker information” may be 

information about the mobile resource’s location, without 

graphical information. The specification describes, for 

example, non-graphical “marker information,” such as 

coordinates and uncertainties. Id. col. 10 ll. 14–19. The 

prosecution history further supports an interpretation of 

“marker information” that need not include a graphical 

representation. And in response to an office action, the 

applicant explained that marker information may simply 

reflect coordinates: “The marker information represents 

the network information so as to permit combination with 

the mapping data, e.g., the marker information may 
8 UNWIRED PLANET LLC v. GOOGLE, INC. 

reflect a longitude and latitude coordinate with an uncertainty parameter.” J.A. 2683. With these remarks, the

applicant explained unequivocally that marker information may simply represent coordinate values. 

Read in the context of the prosecution history and the 

specification, we conclude that marker information need 

not include a graphical representation. We thus disagree 

with the district court and adopt Unwired’s proposed 

construction, construing the term as follows: “at said 

server node, processing said network location information 

regarding said mobile device location to generate location 

information that permits rendering on the client node an 

identifier indicating the position of said mobile device on a 

map.” Unwired, 2014 WL 7012497, at *27. 

B.

Unwired also disputes the meaning of the term “network location information regarding a mobile resource 

location” in the ’016 patent. In the district court, the 

parties disputed whether location information may be 

general coordinates, i.e., from a GPS, or whether location 

information must provide the mobile resource’s location 

within a network. The district court found that the 

network location information must be “information 

providing the location of a mobile device within a network.” Unwired, 2014 WL 7012497, at *29–30. 

Unwired argues that, to the contrary, network information must only be “information relating to the location 

of a mobile resource” and that Google’s construction 

introduced redundancy into the claims. Id. at 29. We 

disagree. The district court correctly determined that 

network location information, as used in the patent

claims and specification, requires reference to the location’s device within a network. The prosecution history 

confirms this interpretation. There, the applicant distinguished the patented invention from a reference using 

GPS-based location systems. The applicant stated that, 
UNWIRED PLANET LLC v. GOOGLE, INC. 9

in contrast to GPS-based systems, the claimed “network 

location information provides a mobile resource location 

that is based at least in part upon the location of that 

mobile resource relative to one or more fixed groundbased wireless network structures that have a known 

geographic location.” J.A. 2683. The applicant therefore 

made clear that network location information must include information about a mobile resource within a network. It cannot now seek a different interpretation. 

Thus, we agree with the court’s construction.

C.

Finally, we turn to Unwired’s argument that the district court misconstrued “server node” in the ’016 patent

by improperly importing a limitation into the claims. On 

appeal, Unwired argues that the claim permits the server 

node to comprise one or more computers or programs. 

The district court construed the term “server node” as 

“one or more computers, each performing the receiving, 

accessing, processing, and transmitting services specified 

in the claims.” Unwired, 2014 WL 7012497, at *32. The 

court’s construction thus required that each computer

perform each and every one of the claimed functions—

receiving, accessing, processing, and transmitting. 

Google responds that extrinsic evidence supports the 

district court’s requirement that the server node consist of 

computers where each performs all of the claimed functions. It argues that, under Teva, we owe the district 

court deference on its factual findings. Appellee Br. 48 

(citing Teva, 135 S. Ct. at 842). While Google is correct 

that we owe deference to factual findings, the district 

court made no such findings here. In resolving the parties’ dispute as to the meaning of “server node,” the court 

discussed each party’s submitted evidence. Google offered 

a 1999 technical dictionary, and Unwired offered contrary

testimony concerning the implementation of the patented 

technology. Unwired, 2014 WL 7012497, at *32. The 
10 UNWIRED PLANET LLC v. GOOGLE, INC. 

court explained that these sources of evidence conflicted, 

but did not resolve this conflict of evidence. Indeed, the 

only other mention of extrinsic evidence came by way of 

the court’s concluding sentence: “Considering the intrinsic 

and extrinsic evidence, the Court adopts, in part, both 

parties’ proposed constructions.” Id. The court’s adoption-in-part of both parties’ constructions left the conflict 

between the parties’ extrinsic evidence unresolved. In 

turn, the district court’s opinion on this claim term contains no reviewable factual findings. So although we owe 

deference to the district court’s factual findings as a 

general matter, Teva, 135 S. Ct. at 842, we cannot lend 

such deference here. 

On the merits of the claim construction dispute, we 

agree with Unwired’s contention that the district court 

improperly imported a limitation into the claim. See HillRom Servs., 755 F.3d at 1371. The claim requires the 

server node to perform receiving, accessing, processing, 

and transmitting services. It does not specify that the 

node must be one or more computers with each performing every one of the computers’ functions. Nor does the 

claim rule out multiple computers or programs working in 

concert to operate as the claimed server node. The claim 

merely requires that a single server node perform every 

claimed function. 

Moreover, the specification does not require that the 

server node be a single computer, nor does it rule out an 

embodiment where the node consists of a collection of 

computers. For instance, figure 1 and its accompanying 

text describe a “server,” but none of this text describes a 

server or server node as consisting solely of a single 

computer. ’016 patent col. 9 ll. 14–61. The server acts as 

“a common platform for supporting services in various 

operating environments.” Id. col. 9 ll. 60–61. But the text 

does not limit this feature-set to a particular hardware 

configuration. And it certainly does not limit this featureset to one computer. Thus, the district court’s construc-
UNWIRED PLANET LLC v. GOOGLE, INC. 11

tion improperly imported a limitation into the claim. We 

agree instead with Unwired’s proposed construction, in 

which a server node is “one or more computers or programs that provide access to resources to client nodes.” 

II.

We turn next to the ’240 patent, where Unwired challenges the district court’s construction of “proxy server” 

and “user account.” The ’240 patent generally describes a 

system for facilitating communication between the wired 

internet and mobile phones, referred to by the specification as “landnet” and “airnet,” respectively. ’240 patent 

col. 4 ll. 36–39, col. 5 ll. 6–9. The specification provides an 

example of such a system in figure 1, reproduced below:

As shown in figure 1, landnet 100 communicates with 

airnet 102 through a proxy server 114. The specification 

explains that “[g]enerally, the communication protocol in 

airnet 102 is different from that in landnet 100.” 

’240 patent col. 5 ll. 33–34. For example, in one embodi-
12 UNWIRED PLANET LLC v. GOOGLE, INC. 

ment the communication protocol on the landnet is “the 

well known HyperText Transfer Protocol (HTTP) or 

HTTPS,” while the airnet’s protocol is “Handheld Device 

Transport Protocol (HDTP).” Id. col. 5 ll. 41–58. “Hence, 

one of the functions proxy server 114 performs is to map 

or translate one communication protocol to another, thereby mobile station 106 coupled to airnet 102 can 

communicate with any of the devices coupled to landnet 

100 via proxy server 114.” Id. col. 5 ll. 35–39. 

In the claimed system, a proxy server “enable[s]” 

communication between a wireless network and a landnet. Representative claim 1 is reproduced below: 

1. A system comprising:

a proxy server coupled to a wireless 

network, to enable a plurality of mobile 

stations on the wireless network to communicate with processing systems on a 

landnet, the proxy server communicating 

with the mobile stations over the wireless 

network; and

a fleet server coupled to communicate 

with the proxy server, to store and control 

access to fleet data, and to authenticate a 

request from a provisioning entity to push 

the fleet data to the plurality of the mobile 

stations;

wherein the proxy server pushes the 

fleet data to the plurality of mobile stations over the wireless network only if the 

request is authenticated by the fleet server.

Id. col. 13 ll. 49–62 (emphases added). Claim 6, which 

ultimately depends from claim 1, adds the requirement 

that “the proxy server comprises an account manager to 

manage a plurality of user accounts, each corresponding 
UNWIRED PLANET LLC v. GOOGLE, INC. 13

to one of the mobile stations, wherein the proxy server 

pushes the fleet data to the plurality of mobile stations 

over the wireless network only if the request is authenticated by the provisioning interface and verified by the 

account manager.” ’240 patent col. 14 ll. 22–28 (emphasis 

added). Claim 27 is an independent claim that similarly 

involves “verifying the plurality of the mobile stations 

against a plurality of user accounts using the fleet server.” 

Id. col. 16 ll. 16–28 (emphasis added).

A.

Unwired argues that the district court’s claim construction of “proxy server” improperly imported a limitation into the claims. The court construed “proxy server”3

to require “mapping or translation functions to enable 

communication between two networks that could otherwise not communicate.” Unwired, 2014 WL 7012497, at 

*7. Unwired concedes that the specification describes 

proxy servers as enabling otherwise incompatible networks to communicate. But Unwired argues that the 

proxy server need not be limited to this role. Rather, it 

contends the proxy server may connect two networks that 

use the same protocol. It explains that the specification 

does not rule out the airnet and landnet operating with

the same protocol. It argues that, while the specification 

states that “[g]enerally,” the communication protocols are 

different, id. col. 5 ll. 32–33, the use of the term “generally” implies that the landnet and airnet might employ the 

same communication protocol. 

 

3 During the Markman hearing, the parties agreed 

that the Court’s construction of “proxy server” would 

control the construction of “proxy server module.” Unwired, 2014 WL 7012497, at *1 n.3.
14 UNWIRED PLANET LLC v. GOOGLE, INC. 

We disagree with Unwired’s claim construction argument. The district court properly found that a person of 

ordinary skill would understand “proxy server,” as used in 

the context of the ’240 patent claims, to enable communication between otherwise uncommunicative networks. 

The claim expressly requires the “proxy server” to “enable 

a plurality of mobile stations on the wireless network to 

communicate with processing systems on a landnet.” Id. 

col. 13 ll. 50–52. If the wireless network and landnet 

were already able to communicate—i.e., without the proxy 

server—the claim language “enable communication” 

would have no meaning. The claims could have recited 

“facilitating communication” or “assisting communication,” but the patent owner instead limited the proxy 

server to enabling communication, which, in the context 

of the patent specification, requires mapping or translation functions. Indeed, as the specification describes, “one 

of the functions proxy server 114 performs is to map or 

translate one communication protocol to another, thereby 

mobile station 106 coupled to airnet 102 can communicate

with any of the devices coupled to landnet 100 via proxy 

server 114.” Id. at col. 5 ll. 35–36. 

Unwired nevertheless contends that the court’s construction renders claim 7 meaningless and thus violates 

the doctrine of claim differentiation. Appellant Br. 58 

(citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 

910 (Fed. Cir. 2004)). “As this court has frequently stated, the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in 

question is not found in the independent claim.” LiebelFlarsheim, 358 F.3d at 910. Claim 7, which ultimately 

depends from claim 1, adds a mapper that performs 

protocol mapping between a first and second communication protocol. The claim adds the following limitations: 

“wherein the proxy server comprises a mapper to perform 

protocol mapping from the first communication protocol to 

the second communication protocol and from the second 
UNWIRED PLANET LLC v. GOOGLE, INC. 15

communication protocol to the first communication protocol.” ’240 patent col. 14 ll. 29–33. Unwired argues that 

the court’s construction imports these limitations into 

claim 1. But Google responds that claim 7 also requires 

“a mapper,” a limitation not present in claim 1 or the 

district court’s construction. We agree. The district 

court’s construction, which we adopt, does not render 

claim 7 meaningless, as claim 7 does not simply require 

that the proxy server enable communications between two 

otherwise uncommunicative networks. At minimum, 

claim 7 adds a mapper requirement. 

B.

Finally, Unwired challenges the court’s construction 

of “user account” in claims 6 and 27 of the ’240 patent. 

The court construed “user account” to mean “an established relationship between a user of a mobile device and 

a wireless carrier authorizing the mobile device to use the 

carrier’s network.” Unwired, 2014 WL 7012497, at *16. 

Unwired argues that a “user account” need not be limited 

to accounts of mobile devices with wireless carriers, but 

rather could include other accounts, such as those between mobile devices and corporations, businesses, or 

even individuals. 

Google defends the court’s construction on the basis 

that a person of ordinary skill in the art would understand the claims to describe user accounts associated with 

a wireless carrier. It reasons that the specification describes a verification process that ensures the mobile 

stations receive data sent over a wireless network. 

Google points to the specification’s description of an 

embodiment where a user account includes a “device ID” 

that is assigned to a mobile device, and a “subscriber ID” 

that is “typically initiated and authorized by a carrier in a 

proxy server device 240 as part of the procedures to 

activate a subscriber account for a mobile station.” 

’240 patent col. 8 l. 66 – col. 9 l. 2. The user ID enables 
16 UNWIRED PLANET LLC v. GOOGLE, INC. 

the system to determine whether the customer has an 

account with a wireless carrier before pushing the information out to that user. The specification further describes this process of verifying the user’s identification 

with the carrier. It explains that “the selected mobile 

stations are determined if all are authorized and serviced 

by the proxy server. Typically, the selected mobile stations are examined against their corresponding user 

accounts.” ’240 patent col. 13 ll. 25–28. Google argues 

that these embodiments suggest that a “user account” is 

limited to mobile accounts with wireless carriers. 

We agree with Unwired, however, that the district 

court’s claim construction improperly excludes at least 

one disclosed embodiment in the specification. For example, one embodiment describes corporations having mobile 

fleets that employ corporate user accounts. Id. col. 6 l. 66

– col. 7 l. 4. The specification explains that there will be 

times where corporations wish to directly communicate 

with particular mobile devices through these accounts. 

Id. col. 1 ll. 47–48. The corporation may wish, for example, “to update a call list to a selective group of [] mobile 

devices” or “to propagate an urgent proprietary message 

to its sales team.” Id. col. 1 ll. 47–58. In this embodiment, corporations directly communicate with mobile 

users by utilizing “user accounts.” This embodiment 

envisions user accounts that do not correspond to the 

relationship between the mobile user and the carrier. As 

such, the district court erred by incorrectly limiting the 

term “user account” to accounts with carriers. We instead 

adopt Unwired’s construction of “user account” as “an 

established account with a user of a mobile device.” 

III.

We turn last to Unwired’s contention that the district 

court misconstrued the terms “reduced image” and “key in 

the mobile device corresponding to a subarea in the 

reduced image” in the ’087 patent. The ’087 patent gen-
UNWIRED PLANET LLC v. GOOGLE, INC. 17

erally discloses a method of using a mobile device to 

display and navigate images having “larger dimensions 

than that of the [device’s] display screen.” ’087 patent 

col. 1 ll. 12–13. The patent discusses “transform[ing]” the 

image into a “reduced version that fits well into the 

screen,” and that “reduced version is displayed on the 

mobile device.” Id. col. 2 ll. 13–19. Claim 1 is reproduced 

below: 

1. A method for recursively displaying on a 

screen of a mobile device an image having dimensions much larger than the dimension of the 

screen; the method comprises:

displaying on the screen of the mobile 

device a reduced image forwarded from a 

server device, the reduced image transformed from the image with respect to a 

set of parameters associated with the 

screen;

generating a new request when a key 

in the mobile device corresponding to a 

subarea in the reduced image is activated; 

and

receiving a detailed image of the subarea from the server device when the 

server device renders the new request. 

’087 patent col. 9 ll. 27–39 (emphases added). 

A.

The district court construed “reduced image” to mean 

“an uncropped version of the image with smaller dimensions.” Unwired, 2014 WL 7012497, at *24. The court 

adopted this construction over Unwired’s proposed construction, which would have defined “reduced image” as

“a version of the image with smaller dimensions.” Id. 

at *23. The court explained that, while the patent does 
18 UNWIRED PLANET LLC v. GOOGLE, INC. 

not explicitly define the term “reduced image,” “the claims 

and specification discuss a reduced image in the context of 

preprocessing or transforming an original image for 

display on a mobile device.” Id. (internal quotation marks

and alterations omitted). The court found that “[t]he 

intrinsic evidence, however, does not specify whether a 

reduced image may be produced by cropping an original 

image.” Id. The court then looked to extrinsic evidence in 

the form of an inventor’s testimony as to the scope of the 

term. The inventor testified that “reduced image” did not 

mean cropping. Id. at *24. In light of both the extrinsic 

and intrinsic evidence, the court adopted Google’s proposed construction. 

We first note that the district court wrongly relied on 

the inventor’s testimony about his subjective understanding of the meaning of “reduced image.” “[I]nventor testimony as to the inventor’s subjective intent is irrelevant to 

the issue of claim construction.” Howmedica Osteonics 

Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1347 

(Fed. Cir. 2008). Because this testimony is irrelevant as a 

matter of law, we do not review the court’s findings on 

this evidence. 

We nevertheless agree with the district court that the 

correct construction of “reduced image” is “an uncropped 

version of the image with smaller dimensions.” Unwired, 

2014 WL 7012497, at *24. We find that the claims and 

specification make clear that the image cannot be reduced 

by cropping. As the court noted, the claimed method 

reduces the size of a large image so that the mobile device 

can display the reduced image. The specification describes transforming the size of an image by “preprocessing . . . to reduce or decimate [the] image” to a smaller 

pixel size. ’087 patent, col. 7 ll. 17–18. This transformation shrinks a larger image for display on a small 

screen, but it does not crop out portions of that image. 

Read in the context of the specification, we find no indication that the term “reduced image” incorporates a cropped 
UNWIRED PLANET LLC v. GOOGLE, INC. 19

image. See Phillips, 415 F.3d at 1313. We thus agree 

with the district court’s construction of “reduced image.” 

B.

The court also construed “key in the mobile device 

corresponding to a subarea in the reduced image” as 

Google had suggested, requiring it to be “a button, either 

physical or depicted on the screen, corresponding to 

a subarea of the reduced image.” Unwired, 2014 WL 

7012497, at *24. Unwired argued that, to the contrary, 

the key should simply be “a button or touch input corresponding to a subarea of the reduced image.” Id. But the 

district court explained that the specification describes 

keys as buttons, rather than touch inputs generally. It 

quoted portions of the specification stating that “some of 

the mobile devices sometimes have no physical keys at all, 

such as those palm-size computing devices that . . . use 

soft keys or icons for users to activate them by using a 

finger or a pseudo-pen.” ’087 patent col. 4 ll. 40–43. The 

court then explained that “[t]he specification goes on to 

clarify that ‘unless otherwise specifically described, keys 

or buttons are generally referred to as either the physical 

keys or soft keys.’” Unwired, 2014 WL 7012497, at *24 

(quoting ’087 patent col. 4 ll. 43–45). The court concluded 

that, “[a]lthough these statements indicate that ‘key’ 

covers more than a physical button or physical key, they 

do not suggest that a ‘key’ includes any form of touch 

input, as Unwired contends.” Id. Thus, the court adopted 

Google’s construction for this term. We agree with the 

court’s construction. 

C.

Finally, with respect to the ’087 patent, Unwired challenges the district court’s judgment that claims 17 and 31 

are invalid as indefinite under 35 U.S.C. § 112. The court 

held the preamble term “an image having dimensions 

much larger than the dimension of the screen” indefinite. 

Unwired limits its dispute on appeal to the district court’s 
20 UNWIRED PLANET LLC v. GOOGLE, INC. 

determination that this term has patentable weight. It 

does not dispute that this term renders the claim indefinite if it has patentable weight. Claim 17 is reproduced 

below: 

17. A method for recursively displaying on a 

screen of a mobile device an image having dimensions much larger than the dimension of the 

screen, the mobile device having a keypad including a number of keys; the method comprises:

fetching the image from a resource on 

a landnet according to a request from the 

mobile device; the request comprising an 

address identifier identifying the resource; 

generating from the image an image 

hierarchy starting with a reduced image 

equally divided into a number of subareas, 

each of the subareas pointing to a detailed 

version thereof; and

forwarding the reduced image to the 

mobile device for display.

’087 patent col. 10 l. 61 – col. 11 l. 6 (emphases added). 

Claim 31 is reproduced below: 

31. An apparatus for recursively displaying on 

a screen of a mobile device an image having 

dimensions much larger than the dimension of 

the screen; the mobile device having a keypad 

including a number of keys; the apparatus 

comprises:

a memory for storing code for a server 

module; and

a processor coupled to the memory executing the code in the memory to cause 

the server module to:
UNWIRED PLANET LLC v. GOOGLE, INC. 21

fetch the image from a resource on a 

landnet according to a request from the 

mobile device; the request comprising an 

address identifier identifying the resource;

generate from the image an image hierarchy starting with a reduced image 

equally divided into a number of subareas, 

each of the subareas pointing to a detailed 

version thereof; and

forward the reduced image to the mobile 

device for display.

’087 patent col. 12 ll. 25–42 (emphases added). 

As we have explained, a term has patentable weight 

where it “recites essential structure or steps, or if it is 

necessary to give life, meaning, and vitality to the claim.” 

Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 

1372 (Fed. Cir. 2014) (internal quotation marks omitted). 

Here, the preamble introduces the term “an image.” The 

term provides antecedent basis for a term in the body of 

the claims, “the image.” As the claims describe, an apparatus fetches the image from the landnet and then, from 

the image, generates an image hierarchy that includes a 

reduced image that is forwarded to the mobile device for 

viewing. As the district court noted, without the preamble term, there is no requirement in the claims that the 

image be much larger than the dimension of the screen. 

The court explained that, absent the term, “[t]he claims

fail to indicate that the image hierarchy—or the reduced 

image that it starts with—is a smaller version of the 

image, or that the image had been reduced in size according to the mobile device’s screen.” Unwired Planet LLC v. 

Google Inc., 111 F. Supp. 3d 1120, 1128 (D. Nev. 2015). It 

explained that the term is “‘essential to understand 

limitations or terms in the claim body’—namely, the size 

difference between an image and the screen of a mobile 

device.” Id. (quoting Catalina Mktg. Int’l, Inc. v. Coolsav-
22 UNWIRED PLANET LLC v. GOOGLE, INC. 

ings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). We 

agree. Not only does “an image” provide antecedent basis 

for “the image” later in the claims, it also “recites particular structure or steps that are highlighted as important by 

the specification.” See Proveris, 739 F.3d at 1372. We 

thus agree with the court’s finding that this has patentable weight. 

Because Unwired does not challenge the court’s finding that the term is indefinite once given patentable 

weight, we affirm the court’s finding that claims 13 and 

17 of the ’087 patent are invalid as indefinite.

CONCLUSION

For the foregoing reasons, we modify the court’s constructions with regard to the “marker information” and 

“server node” terms in the ’016 patent and agree with the

district court’s constructions of the remaining challenged 

terms in that patent. We modify the district court’s 

construction of “user account” in the ’240 patent and 

agree with its construction of the remaining challenged 

terms. We agree with all of the court’s challenged constructions with regard to the ’087 patent. And we affirm 

the court’s finding that claims 17 and 31 of the ’087 

patent are invalid. Thus, we vacate the court’s grant of 

stipulated summary judgment and remand for proceedings consistent with this opinion. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs.