United States Court of Appeals 

for the Federal Circuit ______________________ 

FUNCTION MEDIA, L.L.C.,

Plaintiff-Appellant,

v.

GOOGLE INC.,

Defendant-Appellee,

AND

YAHOO! INC.,

Defendant.

______________________ 

2012-1020

______________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in No. 07-CV-0279, Magistrate 

Judge Charles Everingham IV. 

______________________ 

Decided: February 13, 2013 

______________________ 

JUSTIN A. NELSON, Susman Godfrey L.L.P, of Seattle, Washington, argued for plaintiff-appellant. With him 

on the brief were MAX L. TRIBBLE, JR. and JOSEPH S.

GRINSTEIN, of Houston, Texas. 

CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart 

& Sullivan LLP, of San Francisco, California, argued for 

defendant-appellee. With him on the brief were AMY H.
2 FUNCTION MEDIA v. GOOGLE

CANDIDO and CARL G. ANDERSON; and EDWARD J. DE 

FRANCO, of New York, New York. 

______________________ 

 

Before RADER, Chief Judge, NEWMAN, and REYNA, Circuit 

Judges. 

REYNA, Circuit Judge. 

In this patent case, Function Media, L.L.C. (“FM”) 

appeals the district court’s invalidation of one of FM’s 

patents as indefinite and the jury’s verdict that two other 

FM patents are invalid and also not infringed. FM raises 

several other issues on appeal, including a claim that the 

district court abdicated to the jury its responsibility to 

construe disputed claim terms, an argument that the 

district court incorrectly denied its motion for a new trial 

on the grounds that the verdict was against the great 

weight of the evidence, and an argument that the verdicts 

of infringement and invalidity are irreconcilable. For the 

reasons explained below, we affirm. 

BACKGROUND

FM sued Google, Inc. (“Google”)1 in the United States 

District Court for the Eastern District of Texas for infringing U.S. Patent Nos. 6,446,045 (the “’045 Patent”), 

7,240,025 (the “’025 Patent”), and 7,249,059 (the “’059 

Patent”).2 The purpose of the invention disclosed in all 

three patents is to facilitate advertising on multiple 

advertising outlets such as newspapers and websites. 

The specification characterizes the prior art as inefficient 

because, among other reasons, it requires advertisers to 

manually ensure that their ads conform to the differing 

1 Yahoo!, Inc. and FM settled before trial. 

2 The ’025 Patent is a continuation of the ’045 Patent 

and they share identical specifications. The ’059 Patent is 

a continuation-in-part of the ’045 Patent. 

 
 FUNCTION MEDIA v. GOOGLE 3

requirements of each advertising venue. ’025 Patent col. 

1 ll. 36-47. For example, if one website required square 

ads with red borders, while another required rectangular 

ads with blue borders, the prior art systems required the 

advertiser to manually create both ads. Id. The invention is designed to eliminate this inefficiency by automatically formatting the ads to fit each publisher’s 

requirements and sending them out for publication. Id.

col. 3 ll. 28-40. 

In each of the patents, a “central computer” coordinates interactions between sellers, media venues, and 

buyers. A “seller” is an entity that wishes to place ads, 

and is sometimes referred to as an “advertiser.” ’025 

Patent col. 12 ll. 21-27. “Media venues” are locations 

where ads can be placed, sometimes called “publishers”; 

in this case, the publishers are websites. Id. col. 10 ll. 61-

67. “Buyers” are the targets of the ads, i.e., the people 

viewing the websites. Id. col. 8 ll. 35-40. The central 

computer hosts a number of databases and software 

processes, including the presentation rules database and 

the Presentation Generating Program (“PGP”). See ’025 

Patent fig. 2a.

Claim 1 of the ’025 Patent is representative of the asserted claims:

1. A computer system for creating and publishing 

customized electronic advertisements, for a 

seller, to internet media venues owned or controlled by other than the seller, comprising: 

a first interface to the computer system through 

which each of the internet media venues is 

prompted to input presentation rules for the 

internet media venue for displaying electronic 

advertisements on the internet media venue; 
4 FUNCTION MEDIA v. GOOGLE

a first database storing the presentation rules input by the internet media venues through the 

first interface; 

a second interface to the computer system through 

which a seller is prompted to input information to select one or more of the internet 

media venues and prompted to input information to create an electronic advertisement

for publication to the selected internet media 

venues; 

a second database storing the information input 

by the seller through the second interface; and 

a computer controller of the computer system processing and publishing the electronic advertisement to one or more of the selected internet 

media venues in compliance with the presentation rules of the internet media venue, 

whereby the electronic advertisement is displayed on each of the one or more of the selected internet media venues in compliance 

with the presentation rules of the internet 

media venue.

’025 Patent col. 64 l. 59 to col. 65 l. 17 (emphases added). 

Thus, the invention requires: rule setting by the media 

venues to inform the system how the ads must be formatted; storage of the rules; inputting information to select 

media venues where the ads will be displayed; inputting 

information to create an ad; storing the ad information; 

processing the ad; and publishing the ad to the internet 

media venue. The disputed elements are the “creation 

and processing,” “selection,” and “publishing” elements.

FM asserted that Google’s AdSense for Content and 

AdSense for Mobile products infringed when used in 
 FUNCTION MEDIA v. GOOGLE 5

conjunction with Google’s AdWords interface.3 AdSense 

for Content is a system that selects relevant ads to display to buyers viewing web pages containing certain 

embedded Google code. Every time a buyer visits a site, 

the embedded code prompts Google’s system to run an 

auction. Which ads are displayed is determined by a 

proprietary Google algorithm that considers the amount 

of money the seller (advertiser) is willing to spend per 

click when weighed against the relevancy, or “quality,” of 

the ad. Generally, to get a less relevant ad displayed, an 

advertiser must bid more money than another advertiser 

supplying a more relevant ad. Once the ad is chosen it is

sent directly to the buyer’s browser—not to the website 

publisher—and is displayed in such a way that it appears 

to be part of that webpage. 

AdWords Front End is a site where sellers input the 

content of an ad, how much they are willing to pay, keywords with which the ad should be associated, and requests for the ad to be placed on specific sites. Sellers 

cannot customize the “look” of the ads, so all ads look the 

same except for the actual text displayed. Sellers can 

request placement on specific sites but they have no way 

to guarantee they will be placed on those sites—they still 

have to win the auction (even after requesting placement 

on specific sites), be relevant, and be allowed to advertise 

on the site by the publisher. See Transcript of Jury Trial 

at 138, Function Media, L.L.C. v. Google, Inc., No. 2:07-

CV-279 (E.D. Tex. Oct. 9, 2009), 2009 WL 3260566 (explaining that Coca-Cola can prevent Pepsi from advertising on its site).

After the claim construction hearing, the district court 

found the ’045 patent to be indefinite and therefore invalid because the specification did not disclose sufficient 

3 AdWords itself, which puts the familiar blue text 

ads next to Google search results, is not alleged to infringe. 

 
6 FUNCTION MEDIA v. GOOGLE

structure for its sole independent claim’s means plus 

function term, “means for transmitting.” Function Media 

L.L.C. v. Google, Inc., No. 07-CV-0279, slip op. at 10-11 

(E.D. Tex. Oct. 9, 2009), ECF No. 218 (“Markman Order”). 

The court construed the other disputed terms and denied 

Google’s motion for summary judgment of noninfringement. The case was tried to a jury on claims 1, 20, 37, 52, 

63, 90, 179, and 231 of the ’025 Patent and claim 1 of the 

’059 Patent, and the jury found these claims to be both 

invalid and not infringed.4 Function Media L.L.C. v. 

Google, Inc., No. 07-CV-0279 (E.D. Tex. Jan. 26, 2010), 

ECF No. 413 (“Verdict Form”). 

After trial, FM filed for a motion for judgment as a 

matter of law (“JMOL”) on validity and also moved for a 

new trial on the grounds that the verdict was against the 

great weight of the evidence and otherwise irreconcilable. 

The district court granted JMOL for claims 52, 63, 90, 

and 231 of the ’025 Patent, finding that Google had not 

4 The asserted claims from these patents have recently been held invalid by the United States Patent and 

Trademark Office (“PTO”) during reexamination. Google 

requested reexamination of the ’025, ’059, and ’045 patents, including all asserted claims. The examiner rejected all claims, and the Board of Patent Appeals and 

Interferences affirmed. Google requests that we take 

judicial notice of this fact. It is proper to take judicial 

notice of a decision from another court or agency at any 

stage of the proceeding, even if it was not available to the 

lower court. See Old Reliable Wholesale, Inc. v. Cornell 

Corp., 635 F.3d 539, 549 (Fed. Cir. 2011) (“Although the 

results of the PTO reexamination proceedings were not 

available to the district court, this court can take judicial 

notice [of them].”). The ’045 patent was invalid for indefiniteness but FM may be allowed to file an amendment, 

while the other rejections have been appealed to this 

court. 

 
 FUNCTION MEDIA v. GOOGLE 7

submitted sufficient evidence for the jury to find that 

those claims were invalid. Function Media L.L.C. v. 

Google, Inc., No. 07-CV-0279, slip op. at 1 (E.D. Tex. Oct. 

9, 2011), ECF No. 492 (“Final Judgment”). Thus, of the 

asserted claims, only these four remained valid, but none 

of them were found to be infringed.

FM appeals, and Google does not cross-appeal the district court’s JMOL regarding those four claims. We have 

jurisdiction under 28 U.S.C. § 1295(a)(1).

STANDARD OF REVIEW

Claim construction and indefiniteness determinations 

are reviewed without deference. Markman v. Westview 

Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en 

banc) aff’d, 517 U.S. 370 (1996); see also Typhoon Touch 

Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1383 (Fed. Cir. 

2011). If there is an error in claim construction, 

we independently construe the claim to determine 

its correct meaning, and then determine if the 

facts presented at trial can support the appealed 

judgment. We may affirm the jury’s findings on 

infringement or validity issues if substantial evidence appears in the record supporting the jury’s 

verdict and if correction of the errors in a jury instruction on claim construction would not have 

changed the result, given the evidence presented.

Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 

(Fed. Cir. 2002) (internal quotation marks and citations 

omitted).

“For issues not unique to patent law, we apply the law 

of the regional circuit in which this appeal would otherwise lie. Thus, we apply Fifth Circuit law when reviewing . . . denials of motions for JMOL or new trial.” i4i Ltd. 

P’ship v. Microsoft Corp., 598 F.3d 831, 841 (Fed. Cir. 

2010), aff’d, 131 S. Ct. 2238 (2011). The Fifth Circuit 

“review[s] the denial of a motion for new trial brought on 
8 FUNCTION MEDIA v. GOOGLE

the ground that the verdict is against the great weight of 

the evidence for abuse of discretion, which . . . mean[s] 

that the denial will be affirmed unless there is a clear 

showing of an absolute absence of evidence to support the 

jury’s verdict.” Rivera v. Union Pac. R.R. Co., 378 F.3d 

502, 506 (5th Cir. 2004) (internal quotation marks and 

citations omitted). 

DISCUSSION

FM raises several issues it maintains require a new 

trial. First, FM argues that the district court incorrectly 

found the ’045 patent’s means plus function limitation to 

be indefinite. With regard to the claims that went to the 

jury, FM contends that the district court’s claim constructions were incorrect, and that the district court improperly allowed claim construction disputes to be decided by 

the jury. FM also argues that the jury’s verdict was 

against the great weight of the evidence, was based upon 

an incorrect statement of the law, and was irreconcilable. 

Google responds that FM’s arguments are really factual 

questions disguised as claim construction arguments, that 

the district court did construe all of the disputed terms, 

and that FM has waived many of its arguments. 

I. The ’045 Patent: Indefiniteness

We begin with FM’s argument that the district court 

erred in granting summary judgment that the ’045 patent 

was invalid for indefiniteness because it did not disclose a 

structure for the means plus function term “means for 

transmitting.” FM agrees that the recited function here is 

“transmitting said presentations to a selected media 

venue of the media venues,” Markman Order, slip op. at 9, 

and that the “means for transmitting” is the PGP, a piece 

of software. FM disagrees with the district court’s conclusion that, as in Blackboard, Inc. v. Desire2Learn, Inc., 574 

F.3d 1371 (Fed. Cir. 2009), the specification of the ’045 

patent “does not describe the means or steps taken to 

accomplish the end result,” and that “the PGP is merely a 
 FUNCTION MEDIA v. GOOGLE 9

black box that accomplishes the claimed function.” J.A. 

10. 

It is axiomatic that claims must “particularly point[] 

out and distinctly claim[] the subject matter which the 

applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2 

(2006).5 Section 112, paragraph 6 allows for a limited 

exception, permitting “a claim [to] state the function of 

the element or step, and the ‘means’ covers the ‘structure, 

material, or acts’ set forth in the specification and equivalents thereof.” Typhoon, 659 F.3d at 1383. The trade-off 

for allowing such claiming is that “the specification must 

contain sufficient descriptive text by which a person of 

skill in the field of the invention would ‘know and understand what structure corresponds to the means limitation.’” Id. at 1383-84 (quoting Finisar Corp. v. DirecTV 

Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). 

It is well settled that “[s]imply disclosing software, 

however, ‘without providing some detail about the means 

to accomplish the function[,] is not enough.’” Noah Sys., 

Inc. v. Intuit, Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) 

(quoting Finisar, 523 F.3d at 1340-41). When dealing 

with a “special purpose computer-implemented meansplus-function limitation,” we require the specification to 

disclose the algorithm for performing the function. The 

“specification can express the algorithm in any understandable terms including as a mathematical formula, in 

prose, or as a flow chart, or in any other manner that 

provides sufficient structure.” Id. Importantly, we have 

said that “[w]hile it is true that the patentee need not 

5 Since this suit was filed in 2007, Congress has 

passed the Leahy-Smith America Invents Act (“AIA”), 

Pub. L. No. 112-29, 125 Stat. 284 (2011). The AIA reformatted the paragraphs of § 112 as subsections and made 

other changes not relevant to this appeal. The citations to 

§ 112 in this opinion refer to the statute as it existed prior 

to the AIA.

 
10 FUNCTION MEDIA v. GOOGLE

disclose details of structures well known in the art, . . . 

the specification must nonetheless disclose some structure.” Default Proof Credit Card Sys., Inc. v. Home Depot 

U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) (emphasis added) (explaining that even “the testimony of one of 

ordinary skill in the art cannot supplant the total absence 

of structure from the specification.”); see also Noah Sys., 

675 F.3d at 1313 (distinguishing between software means 

plus function claims in which no algorithm is disclosed, 

which are indefinite, and claims in which an algorithm is 

disclosed, whose sufficiency is judged based on what a 

person of ordinary skill in the art would have understood 

them to disclose); Blackboard, 574 F.3d at 1384 (finding a 

means plus function claim to be indefinite because the 

specification language simply described the function to be 

performed without explaining how the function was to be 

performed). 

Here, there is no specific algorithm disclosed in prose, 

as a mathematical formula, in flow charts, or otherwise. 

FM cites to several places in the specification that it 

contends describe the software. These citations all explain that the software automatically transmits, but they 

contain no explanation of how the PGP software performs 

the transmission function. For example, the specification 

states only that the PGP “either transmits the presentation to the appropriate destination or holds it for a publication date to be submitted for a particular deadline or 

predetermined promotional market.” ’045 Patent col. 3 ll. 

31-32; see also id. col. 51 ll. 16-23 (same); id. col. 17 ll. 7-

17 (noting vaguely that the PGP is involved in processing 

and transmitting data); id. col. 20 ll. 23-28 (“[T]he Communication and Transport Program 1760 monitors, directs, and controls the receiving and transmitting of 

messages . . . .”); id. col. 57 ll. 36-39 (“presentations . . . are automatically transmitted”). At most, the 

’045 Patent specification discloses that the structure 

behind the function of transmitting is a computer pro-
 FUNCTION MEDIA v. GOOGLE 11

gram that transmits. Beyond the program’s function, 

however, no algorithm is disclosed. As in Blackboard, the 

PGP is “simply an abstraction that describes the function” 

to be performed. 574 F.3d at 1383. 

FM’s citation to the flow charts as sufficient structure 

is similarly unavailing because the charts also do not 

describe how the transmitting function is performed. 

Both charts cited by FM indicate transmission with a line, 

or lines, connecting the Central Processor to the Media 

Interface. See ’045 Patent figs. 1a, 4f. These lines do not 

explain how the software performs the transmission 

function. And although FM acknowledges that the structure is software, not hardware, FM also recites as structure the types of connections over which the transmission 

could occur, such as phone lines and data networks. 

Appellant’s Br. 27 (citing ’045 Patent col. 13 l. 55 to col. 14 

l. 2). But the issue is not whether the ’045 patent discloses a physical structure over which the PGP transmits, it 

is whether the patent discloses the algorithm by which 

the PGP performs the transmission function. The flow 

charts make no such disclosure. 

Having failed to provide any disclosure of the structure for the “transmitting” function, FM cannot rely on 

the knowledge of one skilled in the art to fill in the gaps. 

FM argues that “‘in view of the existing knowledge in the 

field of the invention,’ it is unnecessary and extraneous to 

provide any more detail,” and that the disclosure “has 

more than ‘sufficient structure for a person of skill in the 

field to provide an operative software program for the 

specified function.’” Appellant’s Br. 28 (quoting Typhoon, 

659 F.3d at 1385). In Typhoon, however, the “means for 

cross-referencing” was explained in prose as “entail[ing] 

the matching of entered responses with a library of possible responses, and, if a match is encountered, displaying 

the fact of the match, otherwise alerting the user, or 

displaying information stored in memory fields associated 

with that library entry.” 659 F.3d at 1386 (quoting U.S. 
12 FUNCTION MEDIA v. GOOGLE

Patent No. 5,379,057 col. 3 ll. 43-48). Here, in contrast, 

there is no explanation of how to transmit. Furthermore, 

it is well established that proving that a person of ordinary skill could devise some method to perform the function is not the proper inquiry as to definiteness—that 

inquiry goes to enablement. See Blackboard, 574 F.3d at 

1385. Simply put, 

[a] patentee cannot avoid providing specificity as 

to structure simply because someone of ordinary 

skill in the art would be able to devise a means to 

perform the claimed function. To allow that form 

of claiming under section 112, paragraph 6, would 

allow the patentee to claim all possible means of 

achieving a function. 

Id. “Section 112, paragraph 6, is intended to prevent such 

pure functional claiming.” Id. (citing Aristocrat Techs. 

Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 

1333 (Fed. Cir. 2008)). We therefore affirm the district 

court’s judgment that that claim 1 of the ’045 Patent is 

invalid for indefiniteness.

II. Claim Construction

FM contends that the district court erred in construing the terms “ad creation/processing,” “selection,” and 

“publishing,” and that these errors require a new trial. 

We address each of these arguments in turn. 

A. “Creating” and “Processing”

Claim 1 of the ’025 Patent recites an interface through 

which a seller is “prompted to input information to create 

an electronic advertisement.” ’025 Patent col. 65 ll. 4-7. 

The parties stipulated that the “create” term means to 

“create an electronic advertisement for publication in a 

form customized to each of the selected internet media 

venue’s presentation rules.” The system of claim 1 also 

includes a controller that processes the advertisement in 

compliance with the media venues’ presentation rules: 
 FUNCTION MEDIA v. GOOGLE 13

a computer controller of the computer system processing and publishing the electronic advertisement to one or more of the selected internet media 

venues in compliance with the presentation rules

of the internet media venue, whereby the electronic advertisement is displayed on each of the one or 

more of the selected internet media venues in 

compliance with the presentation rules of the internet media venue.

’025 Patent col. 65 ll. 10-17 (emphases added). 

The parties disagreed on whether this claim requires 

the system to take previously created ads and process 

them in order to make them comply with the publishers’ 

rules, or whether the system processes raw information 

entered by the seller in order to create compliant ads in 

the first instance. FM proposed that processing meant 

operating “upon the inputted information to create an 

electronic advertisement customized for each selected 

internet media venue in a form that complies with the 

presentation rules set by that media venue.” Markman 

Order, slip op. at 17 (emphasis added). Google proposed 

that it meant operating “upon the electronic advertisement

to process it in compliance with the presentation rules of 

the internet media venues.” Id. (emphasis added). The 

district court ruled that the processing term means “executing a systematic sequence of mathematical and/or 

logical operations upon the customized electronic advertisement to make it comply with the presentation rules of 

the internet media venues.” Id. (emphasis added).

FM now argues that the district court’s interpretations of “creating” and “processing” are internally inconsistent. According to FM, the central computer has the 

final role in the creation and formatting of ads so that 

they comply with the publisher’s requirements. FM 

argues that by stating that the system processes a “customized . . . advertisement,” the court has said, in essence, 
14 FUNCTION MEDIA v. GOOGLE

that “processing” means to take an ad that already complies with the publisher’s rules and change it so that it 

complies with the publisher’s rules. Google responds that 

the district court’s construction properly reflects that the 

“processing” is performed on the “electronic advertisement” rather than the “inputted information” because, as 

the court pointed out, the “inputted information” language from the creation element does not reappear in the 

computer controller limitation. Id. 44-45. 

We begin our analysis with the language of the claim. 

See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 

2005) (en banc) (“[T]he claims themselves provide substantial guidance as to the meaning of particular claim 

terms.”). “The words of a claim ‘are generally given their 

ordinary and customary meaning,’” which “is the meaning 

that the term would have to a person of ordinary skill in 

the art in question at the time of the invention.” Id. at 

1312-13 (internal citations omitted). “The claims, of 

course, do not stand alone. Rather, they are part of ‘a fully 

integrated written instrument,’ consisting principally of a 

specification that concludes with the claims. For that 

reason, claims ‘must be read in view of the specification, 

of which they are a part.’” Id. at 1315 (quoting Markman, 

52 F.3d at 978, 979). 

The claim clearly states that the “processing” is done 

to the “electronic advertisement,” not the inputted information. It follows that the creation of the ad must happen before the processing begins. If “processing” included 

“creating,” the act of processing would have been performed on the inputted information, which would then 

lead to the creation of the rule-compliant ad. The claim 

terms themselves rule out the possibility that “processing” 

is done to the inputted information because a custom ad is 

created before the processing step. Thus, we find that the 

court’s construction of taking the “customized” ad and 

then “processing” it to make it comply with the presentation rules was correct. 
 FUNCTION MEDIA v. GOOGLE 15

This construction is consistent with the parties’ stipulated definition for the term “create.” The parties agreed 

that the “creation” limitation prompts the seller to “input 

information to create an electronic advertisement for 

publication to the selected internet media venues.” 

Markman Order, slip op. at 8 (emphasis added). The 

claims do not explicitly state whether it is the seller or 

central computer that actually creates the ad. On one 

hand, entering information to create the ad could mean 

the seller creates the ad herself by entering the information. On the other, the seller could simply be required 

to enter information which is then used by the central 

computer to create the ad itself. We conclude that the 

district court correctly declined to interpret the claim as 

requiring either, and that creation by either the seller or 

the central computer would satisfy the claim terms. What 

matters for our purposes is that either way, the ad is 

created before it is processed.

FM’s citations to the portions of the specification dealing with the PGP do not persuade us otherwise. The 

specification says that the PGP, which is part of the 

central controller and presentation processor, “utilizes the 

information submitted by the Sellers and held in [various 

databases] . . . to create the requested presentations for 

the various . . . media . . . using the Presentation Rules 

Database 1650 for style and control guidelines.” ’025 

Patent col. 19 ll. 46-55 (emphasis added). FM argues that 

this shows that the PGP is the entity that creates the ads. 

However, the specification goes on to refer to the Seller 

Interface described in Figure 2c, stating: 

It should be noted that in the preferred embodiment of the present invention, the same rules and 

guidelines contained in the Presentation Rules 

Database 1650 are also held in the Presentation 

Rules Database 4650 Fig. 2c, which is part of the 

Seller Interface 4000 Fig. 2c. With the same rules 

and guidelines as those in the Presentation Rules 
16 FUNCTION MEDIA v. GOOGLE

Database 1650 applied and enforced during data 

input at the Seller Interface . . . no modification or 

editing should be necessary at the Central Controller and Presentation Processor 1000 Module. 

Id. col. 19 ll. 55-65 (emphases added). The specification 

then states that although the same rules are applied at 

both the seller interface and central controller, “both 

processes should be utilized to ensure consistency.” Id.

col. 19 l. 65 to col. 20 l. 2. Thus, at least in the preferred 

embodiment, the same rules are applied twice to ensure 

compliant ads are created; no changes to the original ad 

should be necessary when it reaches the point of processing. These portions of the specification further support the district court’s interpretation, which requires the 

ad to be created before it is “processed,” and illustrate 

why it would be improper to read FM’s proposed limitation into the claim. See Phillips, 415 F.3d at 1324 (cautioning against “strictly limiting the scope of the claims to 

the embodiments disclosed in the specification or divorcing the claim language from the specification”). We 

therefore affirm the district court’s construction of these 

terms.

B. “Selection”

Claim 1 of the ’025 Patent also recites an interface 

“through which a seller is prompted to input information 

to select one or more of the internet media venues.” FM 

proposed, and the district court accepted, that this means 

“software that enables the seller user to interact with the 

computer system through which the seller user is prompted to enter information to select one or more internet 

media venues.”6 Markman Order, slip op. at 12-14. 

6 Similarly, the ’059 Patent states “the third party 

professional is prompted to input information to select one 

or more of the internet media venues.” ’059 Patent col. 88 

l. 56-58. The court accepted FM’s construction, which 

 
 FUNCTION MEDIA v. GOOGLE 17

Google proposed that this term meant “software or hardware at the seller location through which the seller is 

prompted to enter information to the computer system to 

enable the seller to select one or more internet media 

venues,” a construction it urges us to adopt here. Under 

Google’s proposed construction, there could be no infringement, because the Google system—not individual 

sellers—matches ads with media venues.

Although the district court accepted FM’s construction 

of the “selecting” term, FM now argues that a new trial is 

required because the court effectively applied a different 

construction to the term at summary judgment. Prior to 

the issuance of the district court’s Markman order, Google 

moved for summary judgment of non-infringement, arguing that in the asserted patents the sellers must be able to 

choose the media venues and they cannot do so under the 

Google system. FM responded that whether the sellers in 

Google’s system have the final say on selection is irrelevant because the FM patents do not require the sellers to 

have the final say. The district court denied summary 

judgment, stating: 

In Google’s placement targeting, advertisers request specific web pages on which their ads will 

appear, but Google’s systems ultimately determine which advertisements appear on which 

webpage. The court finds that there is a genuine 

issue of material fact as to whether Google’s keywords and placement targeting constitute information to select. A reasonable jury may 

determine that keywords identifying the advertisement’s topic could be used as information to 

select media venues on which to publish the adtracks the construction for the ’025 Patent by stating “the 

third-party professional is prompted to input information 

to select one or more internet media venues.” 

 
18 FUNCTION MEDIA v. GOOGLE

vertisement. A question of fact also exists regarding Google’s placement targeting. 

Order at 6, Function Media, No. 2:07-CV-278, 2009 WL 

3260566, ECF No. 325. We understand the district 

court’s statement to mean that there is a question of fact 

as to whether the claims read on Google’s systems. But 

FM contends that this passage “nullif[ied] the very claim 

construction” the court had adopted, rendering the court’s 

claim construction a “nullity” and requiring a new trial. 

We see no error in the district court’s denial of summary judgment. The district court construed this term, 

adopting FM’s proposed construction. To the extent that 

FM raises a claim construction argument here, FM may 

not object to the court’s decision to instruct the jury to 

apply the claim construction that FM itself proposed. See

Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 

F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly 

explained, ‘litigants waive their right to present new 

claim construction disputes if they are raised for the first 

time after trial.’” (quoting Broadcom Corp. v. Qualcomm 

Inc., 543 F.3d 683, 694 (Fed. Cir. 2008))). To the extent 

that FM attempts to couch as a claim construction issue 

the denial of summary judgment of infringement, we note 

that “a denial of summary judgment is not properly 

reviewable on an appeal from the final judgment entered 

after trial.” Glaros v. H.H. Roberson Co., 797 F.2d 1564, 

1573 (Fed. Cir. 1986); accord Johnson v. Sawyer, 120 F.3d 

1307, 1316 (5th Cir. 1997) (“[The Fifth Circuit has] held 

repeatedly that orders denying summary judgment are 

not reviewable on appeal where final judgment adverse to 

the movant is rendered on the basis of a subsequent full 

trial on the merits.”). 

C. “Publishing”

Lastly, claim 1 requires “publishing the electronic advertisement to one or more of the selected internet media 

venues.” ’025 Patent col. 65 ll. 10-17. The district court 
 FUNCTION MEDIA v. GOOGLE 19

construed this term to mean “placing or making available 

the customized electronic advertisement within the 

framework of and at each internet media venue so that it 

is accessible by the end users, consumers, viewers, or 

buyers.” Markman Order, slip op. at 15-16 (emphasis 

added). FM argues that the district court erred by including the “and at” language requested by Google, which it 

believes improperly removes from the scope of the claim 

any system (including Google’s systems here) which sends 

ads directly to the buyer’s computers. Without those two 

words, FM argues, the claim would encompass the publishing of ads directly to buyers so long as the displayed 

ads look like they are “within the framework” of the 

website. 

We see no error in the district court’s construction. 

Claim 1 requires “publishing the electronic advertisement 

to one or more of the selected internet media venues . . . 

whereby the electronic advertisement is displayed on each 

of the one or more of the selected internet media venues.” 

’025 Patent col. 65 ll. 11-16 (emphases added). Thus, the 

terms of the claim require the ads to be sent to the internet media venue, not simply made to look like they are on 

the internet media venue on the buyer’s computer as in 

Google’s system. And the claim language makes it clear 

that internet media venues are different than the buyers’ 

web browsers. Claim 1 requires an interface for specifying different presentation rules for each internet media 

venue, not for each buyer or each web browser. Furthermore, the parties agreed that internet media venues are 

“internet locations where presentations are placed or 

made available” such that they may be “accessible by the 

end users, consumers, viewers, or [b]uyers.” Markman 

Order, slip op. at 8. The claim terms thus require ads to 

be published to internet media venues, where they are 

accessible to buyers using web browsers. 

Although FM identifies various portions of the specification that it claims show that the patent contemplates 
20 FUNCTION MEDIA v. GOOGLE

delivering ads directly to buyers, we are not persuaded. 

For example, FM relies on a sentence in the specification 

stating that the PGP “creates presentations that can be 

accessed by the buying public . . . through . . . the Buyers 

Interface.” ’025 Patent col. 52 ll. 28-35. But the fact that 

ads may be accessed in browsers does not remove the 

requirement that they must be published to internet 

media venues. FM also argues that figure 1b shows the 

option of sending the ad directly to the buyer: 

Figure 1b does not show ads going directly to the buyer. Instead, ads are made available through the “Independent Presentation[s], Directories and Indexes or 

Independent Standalone Presentations,” shown in box 

3000. See ’025 Patent fig. 1b. Indeed, FM acknowledges 

this—as it must—in its argument. Appellant’s Br. 39 

(arguing that the path “from block 1000 to block 3000 and 

corresponding line extending from block 5000 to block 

3000” supported its theory that ads could be sent directly 

to the web browser). But box 3000 does not include the 

buyer’s web browser or computer. See id. col. 10 ll. 8-15 
 FUNCTION MEDIA v. GOOGLE 21

(limiting the definition of “Internet Browser” to “[c]lientside program[s] that reside[] on the [b]uyer [i]nterface 

5000”). The specifications reinforce the district court’s 

construction, not FM’s.

We affirm the district court’s construction of the “publishing” element because the addition of the word “at” to 

the definition correctly indicates that the ads must be 

sent to the internet media venues, not to buyers.

III. O2 Micro 

In addition to arguing the district court’s claim constructions were incorrect, FM maintains that the court 

improperly sent these constructions to the jury. FM 

argues that this runs afoul of O2 Micro International v. 

Beyond Innovation Technology Co., in which we said, 

“[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to 

resolve it.” 521 F.3d 1351, 1362 (Fed. Cir. 2008). FM 

raises these arguments for each of the three terms we 

have construed above, and once again we address each in 

turn.

FM makes two arguments in support of its contention 

that the construction of the terms “create” and “processing” was submitted to the jury. First, FM contends 

that the district court’s order denying Google’s request for 

summary judgment of non-infringement shows that there 

was an unresolved dispute over claim scope that the 

district court left to be decided by the jury. This argument has little merit. Even assuming FM may complain 

about the denial of Google’s motion for summary judgment, we have already explained that the subsequent jury 

verdict renders the denial of this motion non-final and 

non-appealable under Fifth Circuit law. We hold that the 

denial of a pre-trial motion for summary judgment of noninfringement does not, by itself, show that the district 

court delegated claim construction to the jury. This is 
22 FUNCTION MEDIA v. GOOGLE

especially true where, as here, the jury was instructed to 

apply the district court’s claim constructions. 

FM’s second argument focuses on a point during trial 

when Google objected to the testimony of FM’s expert. 

The expert testified that the customization step is separate from the processing step; in Google’s view, this 

statement ran afoul of the court’s claim construction. 

FM’s counsel responded that it was Google that was 

misstating the court’s construction. The court overruled 

Google’s objection and indicated that it would check the 

construction and would make correcting statements if the 

witness was misstating the court’s claim construction. 

FM urges that the court should have stepped in to correct 

any misunderstanding at that point because the proper 

interpretation of “creation” was unresolved. As additional 

evidence of the confusion, FM asserts that after FM 

rested its case, Google’s expert pursued differing interpretations of the “creation” element depending on whether he 

was offering testimony on infringement or anticipation. 

As a preliminary matter, we must address Google’s 

argument that FM has waived this issue. Citing Lazare, 

628 F.3d at 1376, Google argues that FM waived any 

complaint about Google’s trial tactics by failing to object. 

Google asserts that FM may not claim Google’s objection 

as its own, and that if FM believed that the claim construction order or any other order created ambiguity, it 

was FM’s responsibility to object. 

We disagree. In Lazare, the parties stipulated to the 

meaning of a claim term but presented differing arguments at trial about what it meant to satisfy that term. 

628 F.3d at 1375. Nevertheless, this court found that the 

issue had been waived because neither party had advanced its O2 Micro argument until after trial. See 628 

F.3d at 1376 (finding waiver when “[u]nlike O2 Micro

where the appellant presented its claim construction 

argument to the district court during a Markman hearing, 
 FUNCTION MEDIA v. GOOGLE 23

Lazare first asserted the claim construction argument it 

presses on appeal in a post-trial motion”). Lazare is 

distinguishable because in this case, the dispute was 

brought to the district court’s attention during trial and 

the court heard arguments from both sides. It would 

hardly make sense to require FM to object to its own 

testimony on a point that was in accord with the claim 

construction that it had proposed and that the court had 

adopted. 

On the merits, Google responds with a single argument covering all three of the O2 Micro problems alleged 

by FM: that this is not a case, like O2 Micro, in which the 

parties disputed the scope of the claims, but rather a posttrial attempt to re-characterize improper arguments as 

issues of claim construction, like Verizon Services Corp. v. 

Cox Fibernet Virginia, Inc., 602 F.3d 1325 (Fed. Cir. 

2010). 

In O2 Micro, the parties disagreed during claim construction about whether the term “only if” included two 

specific exceptions. 521 F.3d at 1361-62. The “district 

court acknowledged that this dispute over the scope of the 

asserted claims ‘boil[ed] down to whether . . . there can be 

an exception,’” but refused to construe the term and 

determine whether there were exceptions because “only 

if” “ha[d] a well-understood definition, capable of application by both the jury and this court in considering the 

evidence submitted in support of an infringement or 

invalidity case.” Id. at 1361. Because the district court 

did not settle the dispute, the parties presented their 

arguments to the jury. Id. at 1362. Examining these 

arguments, this court concluded that “the parties disputed not the meaning of the words themselves, but the scope

that should be encompassed by this claim language.” Id. 

Because “determining the meaning and scope of the 

patent claims” is a question that “the court, not the jury, 

must resolve,” id. at 1360, we held that the submission of 

these differing claim scope arguments to the jury was 
24 FUNCTION MEDIA v. GOOGLE

error and remanded for the district court to construe the 

claim in the first instance. Id. at 1363.

In Verizon, a patent owner relied on O2 Micro to support its argument that a new trial was required. The 

relevant claims had been construed before trial, and 

neither party argued that the constructions were incorrect. 602 F.3d at 1332. After trial, the owner sought an 

instruction that the scope of the claim terms did not 

depend on the subjective intent of the inventor in using 

those terms. Id. As grounds for this request, the owner 

pointed to “places where [defense] counsel and its experts 

referred to statements of the inventors and then distinguished [the defendant’s] system from the asserted claims 

based on those statements.” Id. This court distinguished 

O2 Micro in two ways: (1) that the parties did not bring a 

dispute about claim scope to the district court’s attention 

prior to the close of evidence, and (2) that the parties did 

not “not invite the jury to choose between alternative 

meanings of technical terms or words of art or to decide 

the meaning of a particular claim term.” Id. at 1334. We 

concluded that “[w]hile [the owner] attempts to characterize the issue as one of claim construction, its argument is 

more accurately about whether [the defendant’s] arguments to the jury . . . were improper.” Id. In other words, 

Verizon presented a question of improper attorney arguments, not an O2 Micro problem. See id. 

We conclude that, as in Verizon, this issue in this case 

is whether there were improper arguments, not whether 

questions of claim scope were submitted to the jury. As in 

Verizon, the jury was explicitly told by the court to use 

only the court’s claim constructions. Additionally, like the 

appellant in Verizon, FM had the opportunity to object 

during trial or request limiting instructions, but never did 

so. See 602 F.3d at 1335. The only difference here is that 

during its closing arguments, FM accused Google of 

playing “word games.” J.A. 19172-74, 19213. Nearly 

every patent case will involve some amount of “word 
 FUNCTION MEDIA v. GOOGLE 25

games,” because claims and claim constructions are, after 

all, just words. But FM’s argument, if accepted, would 

make almost every case in which the parties’ arguments 

did not directly quote the court’s claim construction ripe 

for remand and new trial. We are confident that such 

situations should be rare. See Kinetic Concepts, Inc. v. 

Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1019 n.4 (Fed. 

Cir. 2009) (“While [O2 Micro] permits a remand for further claim construction, it does not require one.”). 

As with the “creation” and “processing” terms, FM also argues that the court left the “selection” term for the 

jury. As evidence, FM cites a situation similar to what 

happened with the “creation” and “processing” terms in 

which Google objected to the form of FM’s expert’s testimony on claim construction grounds, the judge overruled 

the objection, and the judge did not revisit its construction 

later. FM suggests that Google’s objections “forced” FM to 

argue claim differentiation to the jury by questioning 

Google’s expert on claim 90 and its relationship to the 

other claims. 

FM also argues the claim construction problem went 

to the jury because Google argued in closing that “the 

Court has said that the ad must be displayed on each of 

the selected media venues” which “does not happen on the 

Google system.” Appellant’s Br. 50 (quoting J.A. 19198-

99). 

These arguments too are belied by our decision in Verizon. The court accepted FM’s proposed claim construction and FM neither identified a problem with the 

construction nor requested further interpretation during 

trial. See Verizon, 602 F.3d at 1334 (“Unlike O2 Micro,

where the scope of a specific claim term was in dispute 

beginning at the Markman hearing and continuing 

throughout the trial, [the appellant] never identified at 

any time during the proceedings before the district court 

any specific claim term that was misconstrued or that 
26 FUNCTION MEDIA v. GOOGLE

needed further construction.”). FM’s complaint about 

Google’s closing is irrelevant because that statement had 

to do with whether ads are published, not which entity 

selects where ads are published. Thus, FM is not entitled 

to a new trial when it failed to request further construction of the “selection” term. See Cordis Corp. v. Boston 

Scientific Corp., 561 F.3d 1319, 1338-39 (Fed. Cir. 2009) 

(finding waiver when the party failed to ask for further 

construction of a term within a previously construed 

element). 

With regard to the final term, “publishing,” FM argues Google incorrectly argued throughout the trial that 

the claims require the ad be published to the media 

venue’s physical servers. We disagree with FM that claim 

construction was decided by the jury because the district 

court’s construction was correct, and the district court 

never refused to construe any disputed terms. Moreover, 

as with the other terms, FM never objected to any supposed improper argument or testimony. 

In Verizon, we turned to the relevant circuit’s law to 

determine whether improper arguments to which no 

objection was made required a new trial. 602 F.3d at 

1334-35. In this case, we look to the law of the Fifth 

Circuit, which has held that the “Court will consider 

errors to which no objections were made at trial but will 

exercise this power only in exceptional cases where the 

interest of substantial justice is at stake. To reverse, this 

Court must find plain error.” Shipman v. Cent. Gulf 

Lines, Inc., 709 F.2d 383, 388 (5th Cir. 1983) (internal 

citations omitted). FM has not demonstrated that misstatements during trial by Google’s counsel or witnesses 

were sufficiently erroneous to make this case exceptional. 

Nor has FM argued that substantial interests of justice 

are at stake. Thus, we cannot say that the district court 

plainly erred in denying a new trial. 
 FUNCTION MEDIA v. GOOGLE 27

We have evaluated FM’s arguments and find that 

none of them compel us to remand for a new trial. The 

district court correctly construed the terms and instructed 

the jury to apply its constructions. FM has not persuaded 

us that any issues of claim scope were submitted to the 

jury, and we therefore conclude that no O2 Micro problems are present in this case.

IV. Irreconcilability

FM urges that the verdicts of non-infringement and 

invalidity are irreconcilable. For example, it argues the 

prior art references published ads directly to buyers, as 

opposed to publishing them to the internet media venues 

as required by the claims, and Google did not attempt to 

reconcile this problem below despite arguing it did not 

infringe because its technology also delivers ads straight 

to the buyers. In other words, FM argues the jury had to 

rely on differing claim constructions for infringement and 

invalidity to reach its invalidity and noninfringement 

decisions because Google’s technology works the same 

way as the prior art. Google argues FM has waived any 

argument on the basis of irreconcilability because FM did 

not object to the jury’s verdict before the jury was dismissed. 

We apply the law of the regional circuit to determine 

whether an argument that the verdict is irreconcilable 

has been waived. See Mycogen Plant Sci. v. Monsanto 

Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (explaining that 

this court applies the law of the regional circuit to the 

issue of inconsistent verdicts because the issue is not 

unique to patent law). In the Fifth Circuit, a party need 

not object to the jury’s inconsistent verdict before the jury 

is dismissed in order to avoid waiver when the verdict is 

special and falls under Federal Rule of Civil Procedure 

Rule 49(a). Mercer v. Long Mfg. N.C., Inc., 671 F.2d 946, 

947-48 (5th Cir. 1982) (“We know of no case in this Circuit 

holding that inconsistencies in special verdicts pursuant 
28 FUNCTION MEDIA v. GOOGLE

to Rule 49(a) are waived if not raised prior to release of 

the jury.”); see also id. at 948 n.1 (explaining waiver does 

not apply to verdicts under Rule 49(a), but it does apply to 

verdicts under Rule 49(b)). If the verdict falls under Rule 

49(b), which covers general verdicts and general verdicts 

“with written questions on one or more issues of fact,” 

waiver applies if no objection is raised before the jury is 

dismissed. Stancill v. McKenzie Tank Lines, Inc., 497 

F.2d 529, 533-35 (5th Cir. 1974) (“By failing to object to 

the form of the verdict and answers at the time they were 

announced by the jury, both parties waived any objection 

to inconsistencies under Rule 49(b).”). 

Because FM failed to object to the verdict’s irreconcilability at the time the jury returned the verdict, FM can 

only avoid waiver if the verdict form is considered special. 

FM argues that the verdict was special because the verdict form asked the jury specific questions about validity 

and infringement. FM emphasizes that we have found 

similar forms to be “special” in Comaper Corp. v. Antec, 

Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010) and L&W, Inc. 

v. Shertech, Inc., 471 F.3d 1311, 1319 (Fed. Cir. 2006). 

Google urges that this verdict was general because it 

consisted of simple yes or no questions on infringement, 

anticipation, and obviousness. It says we have said such 

forms are general in i4i, 589 F.3d at 1265 and O2 Micro, 

521 F.3d at 1358. It distinguishes the form in Comaper, 

which was labeled as a special verdict and included 

“special questions” such as whether the prior art was in 

public use before the critical date. 

None of the cases cited by either party are helpful. 

Google’s reliance on i4i and O2 Micro is unhelpful because 

neither of those cases squarely addressed what is or is not 

a special verdict. See i4i, 589 F.3d at 1265; O2 Micro, 521 

F.3d at 1358. Similarly, the cases cited by FM provide 

little guidance. In L&W, we held that the appellant had 

waived its claim of inconsistency in the verdict by not 

asserting it prior to the discharge of the jury. Because 
 FUNCTION MEDIA v. GOOGLE 29

Sixth Circuit law supported waiver regardless of whether 

the verdict was general or special, we did not question the 

parties’ assertions that the verdict was special. See 471 

F.3d at 1314, 1318-19. Similarly, in Comaper, we accepted without analysis that the “Special Verdict Form” was a 

special verdict. See 596 F.3d at 1350. This court’s analysis in those cases therefore does not compel the conclusion 

that the simple verdict form used in this case must be 

regarded as a special verdict.

“The theoretical distinction between general and special verdicts is that general verdicts require the jury to 

apply the law to facts, and therefore require legal instruction, whereas special verdicts compel the jury to focus 

exclusively on its fact finding role.” Charles Alan Wright 

& Arthur R. Miller, 9B Federal Practice and Procedure 

§ 2503 n.1 (3d ed. 2008). Under the special verdict, the 

jury finds the facts while the court applies the law, and it 

is typically unnecessary to even instruct the jury on the 

law. Id. § 2503. “The special verdict is thought to bring 

the jury determination into the open, so that all can see 

what has been done.” Id. In contrast, “[i]n a general 

verdict, the jury announces only the prevailing party on a 

particular claim, and may announce damages.” Id. § 2503 

n.1. “[T]he general verdict accompanied by special interrogatories gives the jury an opportunity to express itself 

broadly through the general verdict—the historic medium—while at the same time turning the jury’s attention 

to important issues that should be resolved by responding 

to particular questions before a general verdict is 

reached.” Id. § 2503; see Fed. R. Civ. P. 49(b).

In this case, the portion of the verdict in which the jury applied facts to law on the question of obviousness was 

clearly a general verdict because it is a legal question 

resting on underlying factual questions. See Structural 

Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 720 

(Fed. Cir. 1984) (explaining that “a trial court may, with 

proper instructions, . . . ask for a general answer on one or 
30 FUNCTION MEDIA v. GOOGLE

more specific legal issues, such as obviousness, a practice 

not specifically provided for in the Federal Rules”); Kinetic 

Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 

1359 (Fed. Cir. 2012) (“Because the ultimate conclusion of 

obviousness is a legal question, there is strength to the 

argument that by including that question on its verdict 

form the court chose to employ a general verdict with 

answers to written questions governed by Rule 49(b).”). 

The closer question is on the verdicts regarding anticipation and invalidity, in which the jury answered yes or no 

questions on each asserted claim. For example, the jury 

was asked, “Do you find that Google has proven, by clear 

and convincing evidence, that any of the following claims 

of the ’025 patent are invalid for the following reasons? 

[Yes or No?] A. Because it was anticipated by the prior 

art?” J. A. 17371. The form then listed each claim with a 

line for the answer. Because anticipation and infringement are questions of fact, the question is whether the 

jury returned special findings of fact on each claim.

We have previously set forth examples of what should 

and should not be considered a special verdict. In RailRoad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1516 

(Fed. Cir. 1984), the jury was asked ten yes or no questions, two of which are very similar to those asked in this 

case. The jury was asked, “Do you find that the plaintiff 

has proved by clear and convincing evidence that [the 

patent] is invalid on the ground of obviousness?” Id. app. 

A question 1. It was also asked about anticipation: “Do 

you find that plaintiff has proved by clear and convincing 

evidence that [the patent] is invalid on the ground that 

the invention claimed was known, in public use or on sale 

more than one year prior to the effective date of the 

patent application?” Id. question 3A. We explained that 

although the verdicts did not state only the prevailing 

party, the ten verdicts should properly be considered a 

general verdict: 
 FUNCTION MEDIA v. GOOGLE 31

The jury’s responses were not special verdicts, because they were not simply “written finding[s] upon each issue of fact”. Rule 49(a), Fed. R. Civ. P. 

Nor was there a single general verdict, per se, accompanied by “written answers” to “one or more 

issues of fact the decision of which is necessary to 

a verdict”. Rule 49(b) Fed. R. Civ. P. Nonetheless, 

as above indicated, the parties have correctly 

viewed the jury’s ten responses as the equal of a 

general verdict . . . .

Id. at 1516. We hold similarly here.

It would be impossible for lay juries to determine 

whether a claim is anticipated or infringed without some 

legal instruction, as evidenced by our ample case law 

addressing the correctness of jury instructions. See, e.g., 

Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 

641-42 (Fed. Cir. 2011) (rejecting an argument that a jury 

instruction on anticipation contained legal errors). Although the jury was technically finding only “facts,” we 

hold that the verdict is a general verdict because like the 

questions in Railroad Dynamics, the questions on anticipation and validity require legal instruction, the application of legal principles, and are more than “simply 

‘written finding[s] upon each issue of fact.’” See id.; 

Wright & Miller, § 2503 n.1 (“[G]eneral verdicts require 

the jury to apply the law to facts, and therefore require 

legal instruction.”). Indeed, the questions are so general 

that they do not bring the jury process into the open so 

that “all can see what has been done” as expected in a 

special verdict, which is what makes reviewing a general 

verdict for consistency so difficult. FM, therefore, waived 

its argument in favor of irreconcilability by failing to 

object to the verdict before the jury was dismissed. 

Stancill, 497 F.2d at 535.

While it may seem harsh, requiring objections to be 

made before the jury is dismissed is the only way to 
32 FUNCTION MEDIA v. GOOGLE

efficiently cure potential inconsistencies when there is not 

a detailed special verdict to review:

[To] allow a new trial after the objecting party 

failed to seek a proper remedy at the only possible 

time would undermine the incentives for efficient 

trial procedure and would allow the possible misuse of [the Federal Rules of Civil Procedure] . . . to 

implant a ground for appeal should the jury’s 

opinion prove distasteful.

Howard v. Antilla, 294 F.3d 244, 250 (1st Cir. 2002) 

(quoting Skillin v. Kimball, 643 F.2d 19, 19-20 (1st Cir. 

1981)). It would be improper to allow FM to now argue 

inconsistencies require an entirely new trial when it 

failed to object at the only time when an inconsistency 

could have been cured. 

V. Motion for New Trial

FM argues that it is entitled to a new trial because 

the jury’s non-infringement verdict was against the great 

weight of the evidence under either its construction or the 

court’s. The district court’s decision to deny FM’s motion 

is reviewed for abuse of discretion and “will be affirmed 

unless there is a clear showing of an absolute absence of 

evidence to support the jury’s verdict.” Rivera, 378 F.3d 

at 506 (internal quotation marks omitted). 

The record contains evidence to support the noninfringement verdict. “To prove infringement, the patentee 

must show that the accused device contains each limitation of the asserted claim, or an equivalent of each limitation.” Bowers v. Baystate Techs., Inc., 320 F.3d 1317, 

1334 (Fed. Cir. 2003) (citations omitted). We have affirmed the court’s construction of the term “publishing,” 

which excludes publishing ads directly to the buyer. But 

it is undisputed that Google’s systems sends ads directly 
 FUNCTION MEDIA v. GOOGLE 33

to the buyer, and the jury could properly find that Google 

does not infringe on that basis.7

FM also argues that the jury verdict is the result of a 

misapprehension of law, specifically that claims can have 

one meaning for infringement and another for anticipation. It argues that Google’s expert’s “contradictory” 

testimony caused the jury to rely on differing constructions for anticipation and infringement. As we have 

already explained, FM has waived this argument. In any 

event, this argument does not amount to “a clear showing 

of an absolute absence of evidence to support the jury’s 

verdict” of infringement, see Rivera, 378 F.3d at 506 

(internal quotation marks omitted), as it does not explain 

which half of the allegedly irreconcilable verdict is incorrect. Nor has FM shown that the jury relied on an incorrect construction. Sufficient evidence supports the verdict 

of non-infringement, and the district court did not abuse 

its discretion when it denied FM’s motion for a new trial.

7 This is true for Ad Sense for Content and Ad Sense 

for Mobile, except for certain types of older phones, which 

do publish ads directly to internet media venues. Google 

argues that FM never presented actual evidence of infringement for the older phones so there can be no infringement. FM does not contradict this claim in its 

Reply Brief. Infringement requires specific instances of 

direct infringement or a finding that every accused device 

necessarily infringes. Ball Aerosol & Specialty Container, 

Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 995 (Fed. Cir. 

2009). FM has not carried that burden with respect to the 

older phones so we affirm the district court’s denial of new 

trial with respect to them as well.

 
34 FUNCTION MEDIA v. GOOGLE

CONCLUSION

As FM has not shown that reversible error occurred, 

the decision of the district court is 

AFFIRMED