## United States Court of Appeals for the Federal Circuit

2008-1263

NETCRAFT CORPORATION, Plaintiff-Appellant,

v.

EBAY, INC. and PAYPAL, INC., Defendants-Appellees.

Frank E. Scherkenbach , Fish & Richardson P.C., of Boston, Massachusetts, argued for plaintiff-appellant. With him on the brief were Robert E. Hillman and Craig R. Smith ; and Michael J. Kane and William R. Woodford , of Minneapolis, Minnesota. Morgan Chu , Irell & Manella LLP, of Los Angel es, California, argued for defendantsappellees. With him on the brief were Samuel K. Lu and C. Maclain Wells

. Appealed from: United States District Cour t for the Western District of Wisconsin Chief Judge Barbara B. Crabb

## United States Court of Appeals for the Federal Circuit

2008-1263 NETCRAFT CORPORATION, Plaintiff-Appellant,

v. EBAY, INC. and PAYPAL, INC., Defendants-Appellees. Appeals from the United States District Court for the Western District of Wisconsin in case no. 3:07-CV-00254, Chie f Judge Barbara B. Crabb.

__________________________ DECIDED: December 9, 2008

__________________________ Before BRYSON, LINN, and PROST, Circuit Judges

. PROST, Circuit Judge

. This is a patent infringement case involving internet billing methods. Plaintiff Netcraft Corporation sued eBay, Inc. and Pa yPal, Inc. (collectively “Defendants”) for infringement of two related patents: U.S. Patent Nos. 6, 351,739 (“’739 Patent”) and 6,976,008 (“’008 Patent”). The district cour t construed a phrase that appears in both patents, “providing a communications link th rough equipment of the third party,” to require “providing customers with internet access.” Netcraft Corp. v. Ebay, Inc. , No. 3:07-CV-00254, 2007 U.S. Dist. L EXIS 91806, at *2 (W.D. Wis. Dec. 10, 2007) (“Claim Construction Order ”). The parties agreed that Defendants do not provide internet access to customers, and the district c ourt therefore granted Defendants’ motion forsummary judgment of non-infringement. Bec ause we agree with the district court’s claim construction, we affirm. I. BACKGROUND The technology involved in this appeal generally relates to internet billing methods. PayPal offers online payment serv ices. eBay is the parent of PayPal, and offers online auction services. Plaintiff Ne tcraft sued eBay and PayPal in the United States District Court for the Western Distric t of Wisconsin, alleging infringement of the ’739 and ’008 Patents (collectivel y “the asserted patents”). The asserted patents are both entitled “Internet Billing Me thod.” They also both claim priority to the same parent pat ent—U.S. Patent No. 5,794,221 (“’221 Patent”)— and share a common specification. Both asserted patents are assigned to Netcraft. Andrew Egendorf—the president of Netcraft— is the named inventor on both patents. Representative Claim 1 of the ’739 Patent reads: 1. An Internet billing method for a plur ality of customers and a plurality of vendors of products or services for tr ansactions over the Internet between a purchasing customer of the pluralit y of customers and a selling vendor of the plurality of vendors, wherein, for each purchase transaction, a transaction amount is charged to t he purchasing customer, and an amount is remitted to the selling vendor, comprising the steps by a third party of: a) establishing a billing agreement with the purchasing customer, and a remitting agreement with the selling vendor, to bill the purchasing customer, and to remit to the selling vendor, for products and services purchased over the Internet by the purchasing customer from the selling vendor; b) providing a communications lin k through equipment of the third party between the purchasing cust omer and the selling vendor through which the purchasing cust omer obtains information from the selling vendor with respect to a purchase of a product or service by the purchasing customerfrom the selling vendor; c) obtaining at least one billing aut horization for the purchase;

2008-1263 2d) charging the transaction amount to the purchasing customer in accordance with the billing agreement; and e) remitting an amount related to the purchase to the selling vendor in accordance with the remitting agreement. ’739 Patent col.7 ll.21-48 (emphasis added). The phrase at issue in this appeal, “p roviding a communications link through equipment of the third party,” appears in all asserted claims of both asserted patents. Neither the term “communications link” northe phrase “communications link through equipment of the third party ” is found in the parent ’2 21 Patent or the common specification of the asserted patents. In construing this phrase, the district court first addressed the asserted claims themselves, noting that “the cl aim itself does not define ‘communications link’ the way defendants propose.” Claim Construction Orderat *3. While the district court reasoned that the “lay understanding of ‘communications link’ is much broader than ‘internet access,’” it recognized that “cour ts cannot look at the claims in isolation or at just the lay understanding of them, but must consi der the patent as a whole.” Id. The district court noted that “the specification ma kes it unmistakably clear that the invention requires that the third party provide internet access to the customer.” Id. at *4. It concluded that the phrase “communications link” is the only part of the claim that could incorporate this requirement, and construed the phrase “providi ng a communications link” as requiring “providing customer access to the internet.” Id. In support of its construction, the district court cited many portions of the common specification (i ncluding the Abstract and the Summary of the Invention), and stat ed that “[i]n countless instances, the specification refers to the third party as t he ‘provider,’ which plaintiff conceded at the claim construction hearing means ‘internet access provider.’” Id. at *5.

2008-1263 3The district court was unconvinced by Ne tcraft’s attempts to show that the specification’s references to the provider c onnecting customers to the internet were just particular embodiments, as opposed to describ ing the invention as a whole. Id. at *5-6. It also rejected several claim different iation arguments made by Netcraft. Id. at *6-9. Finally, even though both parties advanced prosec ution history argumen ts in support of their respective claim construction positions, the district court determined that “it is unnecessary to consider those arguments when the patent itself is clear.” Id. at *9. Because the parties agreed that Defendant s do not provide internet access to customers, the district c ourt granted Defendants’ motion fo r summary judgment of noninfringement. Id. at 10. Netcraft appealed. We have jurisdiction ov er this appeal pursuant to 28 U.S.C. § 1295. II. DISCUSSION This appeal involves a single question of clai m construction. Precisely, we must decide whether the district court erred in construing “providing a communications link through equipment of the third party” to require that t he third party provide customers with internet access. Claim Construction Order at *2. We review a district court’s claim c onstruction de novo. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd. , 476 F.3d 1321, 1326 (Fed. Cir. 2007). As this court explained in Phillips v. AWH Corp. , “[i]t is a bedrock principl e of patent law that the claims of a patent define the invention to which the patentee is ent itled the right to exclude.” 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quotations omi tted). Claim terms are generally construed in accordance with the ordinary and customary meaning they would

2008-1263 4have to one of ordinary skill in the art. Id. at 1312-13. “[T]he pers on 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 c ontext of the entire patent, including the specification.” Id. at 1313. In addition to considering the specification, courts should consider the prosecution hist ory of an asserted pat ent if it is in evidence. Id. at 1317. “Although we have emphasized the importance of intrinsic evidence in claim construction, we have also authoriz ed district courts to rely on extrinsic evidence . . . .” Id. That being said, “while extrinsic evidenc e can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Id. (quotations omitted) . Mindful of these principles, we turn to the phrase at issue in the present case—“providing a communications link through equipment of the third party.” On appeal, Netcraft maintains that the claim language itself does not support the district court’s construction. It also argues that the specification does not support, and is in fact inconsistent wit h, the district court’s claim cons truction and that the district court erred by refusing to consider the prosecution history. We addre ss these arguments in
turn. With respect to the claim language, Netcra ft argues that the or dinary meaning of “communications link” is much broader than t he district court’s construction, and that neither the claim language nor ordinary meani ng supports including a requirement that the third party must provide internet acce ss. Defendants respond that the actual phrase construed by the district court was “pro viding a communications link through equipment of the third party,” not simply “communica tions link,” and that read in light of the

2008-1263 5specification this phrase must include a require ment that the third par ty provide internet

access. The asserted claims themselves do not ex pressly indicate whether “providing a communications link through equipment of the th ird party” requires that the third party provide internet access. Indeed, the term “c ommunications link” is never used in the parent ’221 Patent or the comm on specification of the asse rted patents. While the lay meaning of “communications link” st anding alone may be broaderthan “internet access,” we are not construing this term standing alone. See Phillips , 415 F.3d at 1321 (“Properly viewed, the ‘ordinar y meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.”). In order to properly determine the ordinary meaning of the entire phras e at issue in this case, we must consider the claim terms in light of the entire patent. As explained further below, based on a reading of the common specification in its entirety, along with the cited prosecution history, we conclude that the claim limitation “providing a communications link through equipment of the third party” requires providing customers with internet access. Construing the phrase in di spute to require providi ng customers with internet access is supported by the Summary of the Invention, which states: The main object of the present invention is to create a new business opportunity for telephone companies, cabl e television companies, existing Internet access providers, and compani es offering financial services by creating a way for them to offer to t heir subscribers a method of securely buying and selling goods and services of any value over the Internet. Another object of the present invention is an Internet billing method which is cost effective for transactions having transaction amounts ranging from pennies to a few dollars. Still another object of t he present invention is to provide a secure method of billing commercial transactions over the Internet.

2008-1263 6A further object of t he present invention is an Internet billing method which is simple to use from both the customer ’s point of view and that of vendors on the Internet. Yet another object of t he present invention is a billing method which can be used by a large number of existing Internet users without requiring major changes in how the user s customarily behave and conduct commercial transactions. These and other objects of the present invention are achieved by an Internet billing method in accor dance with the present invention . A provider establishes an agreement with a customer, and a second agreement with a vendor, w herein the provider agr ees with the customer and the vendor to bill for products and services purchased over the Internet by the customer from the vendor. Associated with the customer agreement are one or more billing acc ounts to which purchases may be charged. Associated with the vendor agreement are one or more methods of remitting funds to the vendor. T he provider creates access to the Internet for the customer through the provider’s equipment . When the customer orders a product or service ov er the Internet from the vendor, the provider obtains transactional information transmitted between the customer and the vendor including a transaction amount relating to the ordered product or servic e and the provider then bills the transaction amount to a customer billing acc ount and remits a portion of the transaction amount to the vendor. ’739 Patent col.1 l.61–col.2 l.34 (emphases added). Netcraft argues that there is no “general rule that any us e of ‘the present invention’ in the specificat ion automatically limits the cl aims, as Defendants seem to believe.” Appellant’s Reply Br. 22; see also id. at 19 (“Defendants contend that the case law supports the draconian result that any use of the phrase ‘present invention’ limits the claims to the embodi ment described.”). We agree wit h Netcraft that use of the phrase “the present invention” does not “automatically” limit the meaning of claim terms in all circumstances, and that such language mu st be read in the context of the entire specification and prosec ution history. See Rambus Inc. v. Infineon Techs. AG , 318 F.3d 1081, 1094 (Fed. Cir. 2003). For the reas ons below, however, we agree with the district court that the comm on specification’s repeated use of the phrase “the present

2008-1263 7invention” describes the in vention as a whole, see Claim Construction Orderat *6, and, as will be discussed further below, that the prosecution history does not warrant a contrary result. The first two sentences of the Abstra ct also support the district court’s construction. These sentences read: “An Internet billing method comprises establishing an agreement between an Internet access provider and a customer . . . . The provider creates access to the Internet for the customer.” ’739 Patent, at [57]. Netcraft attempts to minimi ze the significance of this language by noting that the asserted patents’ Abstract is the same as the or iginal Abstract in the parent ’221 Patent. It submits that “[b]ecause the ’221 patent cl aims are directed to a third party that provides Internet access to customers, t he original Abstract naturally includes a discussion of this aspect.” Appellant’s Reply Br. 17. According to Netcraft, “[t]his does not mean . . . that every clai m in the entire patent family should be limited to the features of the common Abstra ct as Defendants suggest.” Id. at 17-18. Netcraft’s arguments on this point, however, illustrate the following underlying problem with its claim construction position: the common specification, including the Abstract, consistently describes the invention in terms of a third party provid ing internet access to
customers. While Netcraft concedes that “the third par ty in the [asserted] patents’ detailed examples is an Internet access provider,” it claims that other embodiments do not require that the third party provide customers with internet access. Id. at 16. Specifically, Netcraft points to Figs. 2 and 3 of the asserted patents, and argues that the use of the language “Connect Customer to Inte rnet” in Fig. 2, step 12, should be

2008-1263 8differentiated from the use of the language “Customer Connects to Internet” in Fig. 3, step 22. Id. at 16-17. Thus, Netcraft claims that the difference in language between Fig. 2, step 12, and Fig. 3, step 22, “expressly demonstrates that the invention does not require providing Internet access to the customer.” Id. at 17. We disagree. There is no language in the s pecification, much less express language, indicating that the words “Customer Connects to Internet ” used in Fig. 3, step 22, were meant to disclose an alternative embodiment not requiri ng that the third party provide internet access to customers. In fact, there ar e other differences bet ween Figs. 2 and 3, including steps 11 and 21 respectively, whic h more clearly differentiate the two methods. Additionally, we not e that the specification appear s to describe the methods shown in Figs. 2 and 3 in context of t he system illustrated in Fig. 1. See ’739 Patent col.5 ll.58-66. In that contex t, while the specification indicates that certain vendors may access the internet directly using their own equipment, the only way for customers to access the internet is through the equipment of the provider. Accordingly, we reject Netcraft’s arguments that the specificati on includes additional embodiments that do not involve the provision of internet a ccess to customers by the third party. Moreover, as Defendants argue, the district court’s construction is further supported by the language of the phrase at issue, which requires that the “communications link” be provided “through equi pment of the third party.” The common specification consistently uses the term “equipment” in reference to equipment that enables internet access. For example, the Su mmary of the Invention states that “[t]he provider creates access to the Internet for the customer through the provider’s equipment.” ’739 Patent col.2 ll.26-28; see also id. col.1 ll.23-26 (“These providers

2008-1263 9invest in the equipment needed to provide access to the Internet for subscribers who pay the providers a fee for the access.”); id. col.1 ll.30-35 (“[A] party desiring to connect to the Internet by means of a provider ty pically connects via a modem over a telephone network to the provider’s equipment which then connects the party, through the provider’s equipment, to the Internet.”); id. col.3 ll.6-10 (“Once the prearrangements have been completed, using the provider’s serv ice to connect to the Internet typically involves calling a telephone number of the provider and being automatically connected through the provider’s equipment to the Internet.”). Turning to Claim 6 of the ’739 Patent, Ne tcraft makes several claim differentiation arguments. Claim 6 of the ’739 Patent reads: “The method according to claim 1, 2, 3, 4, or 5, wherein t he third party is an Internet access provider, a cable television company, a telephone company, or a company offering financial services.” Netcraft argues that “if claim 1 were tr uly limited to third parties t hat provide Internet access, claim 6 would be redundant in lis ting an ‘Internet access provider’ as a possible third party.” Appellant’s Br. 17. It also argues that within claim 6 the differentiation between internet access providers and the other possi ble third parties (i.e., a cable television company, a telephone company, or a com pany offering financial services) is inconsistent with requiring that all thir d parties provide internet access. As the district court obser ved, however, in several locations the specification contemplates the possibility that other companies, including cable television and telephone companies, will provide customers with internet access. Claim Construction Orderat *7-8 (citing ’739 Patent col.1 ll.29-30, col.2 ll.64-65). Additionally, as the district court noted, the following por tion of the Summary of the Invention distinguishes

2008-1263 10“existing” internet access providers from ot her entities who may also provide internet access: “The main object of the present invention is to create a new business opportunity for telephone companies, c able television companies, existing Internet access providers, and companies offeri ng financial services . . . .” Id. at *8-9 (quoting ’739 Patent col.1 ll.61-64). We agree with the district cour t that this passage suggests that the “new business opportunity” for companies, including financial services companies, involves the provision of internet access. 1 Id. at *9. Thus, we are not persuaded by Netcraft’s claim differentiation arguments. In addition, Netcraft attributes significanc e to the omission of financial services companies from the following por tion of the specification: “Such providers can be, for example, companies whose only business is to offer connection to the Internet, companies which offer on-line computer serv ices, one of which is connection to the Internet, cable television companies, or te lephone companies.” ’739 Patent col.2 ll.61- 65. As the district court determined, however, “[a]lthough the pat ent does not include financial service companies in its lists of examples of internet access providers, e.g. , ’739 pat., col. 2, Ins. 61-65, that does not mean that such companies cannot be providers. An invention is not limited to its examples.” Claim Construction Order at *8.

1 Furthermore, even if we agreed with Netc raft that the district court’s claim construction led to some redundancy, that alone would not necessarily warrant a different result in this case. While claim di fferentiation may be helpful in some cases, it is just one of many tools used by courts in the analysis of claim terms. See, e.g. , Nystrom v. Trex Co. , 424 F.3d 1136, 1142-43 (Fed. Cir. 2005) (construing the term “board” to mean a “piece of elongated construction material made from wood cut from a log,” even though principles of claim differentiation suggested t hat the term “board” should not be limited to wood cut from a log).

2008-1263 11Accordingly, we agree with the district cour t that the claims r ead in light of the entire specification indicate that “provi ding a communications link through equipment of the third party” requires provid ing customers with internet access. Our inquiry does not end here, however, as we still must cons ider the parties’ arguments based on the prosecution history. See Phillips , 415 F.3d at 1317 (stating that, in addition to considering the specification, courts should also consider t he prosecution history of an asserted patent, if it is in evidence). The parties offer conflicting explanations of the respective prosecution histories of both asserted patents and several related pat ents. Netcraft, for example, argues that the following portion of the ’739 Patent’s prosecution history supports its claim construction position: Claim 31 is the only independent clai m and recites an Internet billing method wherein “a communications lin k through equipment of the third party” is provided “between the pur chasing customer and the selling vendor” (claim 31(b)). This link can be made, for exampl e, by the third party re-sending data it receives from the customer or from the vendor to the other party, or by the third party hosting on its equipment an Internet presence of the vendor (e.g., a World- Wide-Web site of the vendor or an e-mail address of the vendor). J.A. 119. Netcraft maintains that the parenthet ical reference to examples of websites and email demonstrate ways to ma ke a communications link that do not require that the third party provide internet access. Defendants respond that these “are not alternative embodime nts, but optional additional functions. The method of providi ng a customer with access to the Internet and these additional functions (web page hosting and email) are not mutually exclusive.” Appellees’ Br. 54. They subm it that the following portion of the prosecution history of the ’221 Patent confirms t hat these examples are optional additional functions, as

2008-1263 12opposed to alternatives: “[t]he present invent ion, by contrast, does not require the use of E-mail (because the Internet access prov ider is connected to the customer by a dedicated line), although E-mail may be us ed, if desired.” J.A. 1505. Defendants also argue that the prosecution history of the ’008 Patent supports the district court’s construction. Specifically, Defendants submit t hat, during prosecution of the ’008 Patent, Netcraft sought clai ms with the limitation “providing a communications link over the Internet ,” J.A. 1247 (emphasis ad ded), but the Examiner rejected these claims in light of the prior art, J.A. 1253. T hen, the Examiner allowed the claims after Netcraft changed the limitation to “providing a communications link through equipment of the third party .” J.A. 1266 (emphasis added). Thus, Defendants argue that Netcraft’s claim construction position mu st be rejected because the construction of the phrases “through equipment of the third party” and “over the Internet” must differ. Appellees’ Br. 56. Additionally, Defendants poi nt to the following statements, made in response to a rejection in li ght of U.S. Patent No. 5,826, 241 (“Stein reference”) during prosecution of the ’739 Patent, in support of the district court’s construction: Applicant respectfully submits that Stein et al neither discloses nor suggests providing a system for allowing access to the Internet. Specifically, the Stein et al system . . . assumes that the users 14 (buyers and sellers) are already connected to the Internet . . . there is no disclosure . . . that suggests that St ein et al will provide access to the Internet. . . . There is never a connec tion of a user to the Internet through the payment system 10. J.A. 1235. We have considered the cited prosecuti on history and conclude that it lacks the clarity of the specification regarding the meaning of the clai m terms at issue here, thus rendering it less useful for cl aim construction purposes. See Phillips , 415 F.3d at 1317

2008-1263 13(“[B]ecause the prosecution history repr esents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.”). For example, when the discussion of the Stein reference is read in context with the Examiner’s prior statements, it is not entirely clear whet her that discussion was meant to characterize the present invention as r equiring the provision of internet access, or whether it was meant to simply refute the Examiner’s prior assumption that the Stein reference involves the provision of internet access. Similarl y, considered in context of all of the cited prosecuti on history, it is unclear whether the website and email parenthetical examples are optional functions provided in addition to internet access, or whether they are offered as alternatives to the provision of internet access. 2 In sum, we conclude that the portions of the prosecution hi story cited by the parties are not particularly helpf ul to either party’s claim construction position. Thus, while we agree with Netcraft that the district court should have considered the prosecution history, its failure to do so was harmless error here because we reach the same result having considered it. 3 See Claim Construction Order at *9 (concluding that

2 Likewise, we have considered, but are not persuaded by either party’s arguments based on the prosecution hi stories of the related patents.

3 Finally, we reject Netcraft’s request t hat we rely on extrinsic evidence in the present case. Netcraft claims that pr ior to suit eBay “considered partnering with Netcraft, and clearly indicated to Mr. Egendorf t hat it was interested only in the ’739 and ’008 patents, and not interested in the patents where the clai ms were limited to third parties providing Internet access.” Appell ant’s Br. 24. Defenda nts respond, however, that they “never stated that the patents-in-suit cover entitie s not providing access to the Internet and, in fact, all of the documents to which Netcraft cites are communications from Netcraft to eBay .” Appellees’ Br. 43. Neverthe less, even if we assume that Netcraft’s factual description is correct, we woul d still conclude that it is insufficient to overcome the claim meaning discernable fr om the intrinsic record here. See Phillips ,
2008-1263 142008-1263 15 it was unnecessary to consider the prosec ution history because th e patent itself is clear). III. CONCLUSION Because we conclude that the phrase “p roviding a communications link through equipment of the third party” requires provid ing customers with internet access, we affirm the district court’s grant of Defendants’ motion fo r summary judgment of noninfringement.
AFFIRMED

415 F.3d at 1319 (“In sum, extrin sic evidence may be useful to the court, but it is unlikely to result in a reliable interpretati on of patent claim scope unless considered in the context of the intrinsic evidence.”).