NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

CREATIVE INTERNET ADVERTISING 

CORPORATION, 

Plaintiff-Appellee, 

v. 

YAHOO!, INC., 

Defendant-Appellant. 

__________________________ 

2010-1215 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in case No. 07-CV-0354, Magistrate Judge John D. Love. 

___________________________ 

Decided: April 22, 2011 

___________________________ 

ANTHONY G. SIMON, The Simon Law Firm PC, of 

Saint. Louis, Missouri, argued for plaintiff-appellee. 

With him on the brief was TIMOTHY E. GROCHOCINSKI. Of 

counsel on the brief was MIKE SCHAENGOLD, Patton Boggs 

LLP, of Washington, DC. 
CREATIVE INTERNET v. YAHOO INC 2

CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart & 

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

defendant-appellant. With him on the brief were 

KATHLEEN M. SULLIVAN and KEVIN A. SMITH. 

__________________________ 

Before NEWMAN, CLEVENGER, and BRYSON, Circuit 

Judges. 

Opinion for the court filed by Circuit Judge BRYSON. 

Opinion dissenting-in-part filed by Circuit Judge 

CLEVENGER. 

BRYSON, Circuit Judge. 

This patent infringement case involves instant messaging technology that is adapted to display background 

advertisements and that provides each user the ability to 

opt out of displaying advertisements. Yahoo!, Inc., appeals the final judgment of the United States District 

Court for the Eastern District of Texas denying Yahoo!’s 

motions for judgment as a matter of law (“JMOL”) that 

U.S. Patent No. 6,205,432 (“the ’432 patent”) was invalid 

and not infringed by Yahoo! Messenger. We affirm the 

judgment with respect to validity but reverse with respect 

to infringement. 

I 

Creative Internet Advertising Corporation asserted 

claim 45 of the ’432 patent against Yahoo!. The ’432 

patent primarily describes a system in which references 

to advertisements are inserted at a server between end 

users of the instant messaging software.1 However, 

 1

 For example, the invention abstract refers to a 

message server in six out of eight sentences. The abstract 
3 CREATIVE INTERNET v. YAHOO INC

Yahoo!’s instant messaging product, Yahoo! Messenger, 

inserts references to advertisements on end users’ computers instead of on a server. The central dispute in this 

appeal is whether claim 45 reads on Yahoo!’s server-less 

system. Claim 45 recites the following (emphasis added): 

45. A computer program embodied on a computerreadable medium for inserting a background reference to a stored advertisement into an end user 

communication message, said computer program 

comprising: 

logic configured to receive an end user communication message from a first site; 

logic configured to insert a background reference 

to a stored advertisement into said end user communication message, wherein said logic configured to insert the background reference is further 

configured to insert said background reference responsive to an overwrite authorization; and 

logic configured to transmit said end user communication message with the background reference 

to a second site. 

Yahoo! sought a construction requiring the three elements of claim 45 to occur in the same sequence as written, i.e., first receive, then insert, then transmit. Creative 

contended that the claim did not require sequential action 

because it was an apparatus claim. Under Creative’s 

construction, claim 45 would read on a program that 

 

notes that the description is limited to “some embodiments,” and later on the patent describes a different, 

server-less embodiment using “integrated end user message software.” ’432 patent, col. 7, line 65, to col. 8, line 4. 
CREATIVE INTERNET v. YAHOO INC 4

inserted a background reference into a message, transmitted the message, and then received the message at 

another site. After a Markman hearing, the district court 

rejected Yahoo!’s proposed construction and construed 

claim 45 as a purely structural claim without any spatial 

or sequential limitations. The district court also construed “end user communication message” as “[a] set of 

data transmitted over a communication network,” and 

“overwrite authorization” as “[a]pproval to replace an 

existing background reference in an end user communication message.” 

The case proceeded to trial, but the parties still disputed whether claim 45 required all three elements to act 

on the same message. Yahoo! contended that an infringing program had to be configured to perform all three 

actions (receipt, insertion, and transmittal) on the same 

message. Accordingly, Yahoo! moved for supplementary 

claim construction of the term “said.” In an effort to 

convey that all three actions had to be performed on the 

same message, Yahoo! proposed the following jury instruction: 

The use of the word “said” in a claim refers to an 

earlier use of the term in the claim, and more specifically, refers to the first or initial use of the 

term found in the claim. In grammatical terms, 

“[g]enerally, a term refers to an antecedent by repeating the antecedent identically except for preceding it with the word ‘said’ instead of ‘a’ or 

‘the.’”

Creative disagreed with Yahoo!’s interpretation of the 

claim as requiring that all three actions be performed on 

the same message. It contended that the claim would be 

infringed by a program that performed all three actions, 
5 CREATIVE INTERNET v. YAHOO INC

even if all three actions were not performed on the same 

message.

The district court did not resolve that dispute; instead, it linked the dispute to the construction of the term 

“an” preceding the first instance of “end user communication message” in the body of the claim. The district court 

decided to provide the jury with an additional paragraph 

at the end of the claim construction chart, which included 

standard constructions of the terms “an” and “said” along 

with its earlier ruling that claim 45 did not require sequential ordering. That paragraph stated: 

The use of the article “a” or “an” in a patent claim 

means “one or more” in claims containing the 

transitional phrase “comprising.” Use of the word 

“said” in the beginning of a phrase indicates that 

it is referring to a previous use of the same or 

similar phrase. Further, claim 45 is an apparatus 

claim, which means that the claim recites structure—logic or source code—comprising a computer 

program. The claim does not recite steps or processes that must take place in a particular order.

That paragraph was featured extensively in the parties’ closing arguments. In its initial summation, Creative asked the jury to refer to the court’s additional 

instructions regarding “an” to address whether claim 45 

requires a single message. Creative’s attorney told the 

jury, “You heard a lot about one message, this message, 

different message. ‘A’ or ‘an.’ So if you look in the Claim 

45, as defined by the Court, and it uses that phrase, it’s 

one or more.” Creative’s attorney later applied that 

multiple message theory to a discussion of the three 

elements of claim 45, telling the jury that “if the logic, the 

code in the computer program was capable of doing these 
CREATIVE INTERNET v. YAHOO INC 6

three things, it infringes.” He also proposed, as an alternative theory, that Yahoo! Messenger infringed even if 

the three claim elements “all have to be performed on the 

same message.” 

In Yahoo!’s summation, its attorney described two 

fundamental disagreements between the parties on 

infringement. First, must the “message or messages of all 

three limitations be the same?” Second, “are the individual messages separate messages or are they all just one 

message?” After discussing the three elements of claim 

45, he concluded his infringement discussion by asking 

and answering a claim construction question: “Must the 

messages of all three be the same? Absolutely. That’s 

what said means. There’s the linkage.”

Creative’s attorney responded to that contention at 

the very outset of his rebuttal closing argument. His first 

words in rebuttal were: 

Ladies and Gentlemen, everything you just 

heard, every noninfringement argument you just 

heard is contradicted by the instructions in the 

back of your book attached to the chart [referring 

to the supplemental paragraph]. 

What did he say, it’s got to be one message. 

His Honor gave you an instruction, put it in the 

back of your book yesterday, one or more messages. 

Following deliberations, the jury found that claim 45 

was not invalid, that it was infringed both literally and 

under the doctrine of equivalents, and that the infringement was willful. Yahoo! moved for JMOL on invalidity 

and noninfringement. Both motions were denied. The 
7 CREATIVE INTERNET v. YAHOO INC

district court enhanced the jury’s damages award and 

ordered an ongoing royalty despite Yahoo!’s efforts to 

design around the patent. 

II 

On appeal, Yahoo! contends that the district court’s 

claim construction was erroneous because it did not 

require that “each logical element operates on the same 

message.” Specifically, Yahoo! contends that “[u]nder the 

district court’s construction, Claim 45 is infringed by a 

system that receives a message from Albert to Brian, 

inserts a background reference into a second unrelated 

message from Carl to David, and transmits a third unrelated message from Edward to Frank.” 

Creative contends that Yahoo! waived its argument on 

appeal because it received the construction of the term 

“said” that it sought. However, the focus of Yahoo!’s 

appeal is not on the district court’s construction of the 

term “said,” but on the court’s failure to instruct the jury 

that “all the limitations must be configured to operate on 

the same message.” Appellant’s Br. at 30. Although 

Yahoo! presented that argument to the district court, the 

court refused to rule on the issue or instruct the jury 

directly on that point. 

When the issue arose at trial, counsel for Yahoo! argued that the claim language required that all three 

actions be performed on the same message. Counsel for 

Yahoo! explained, “It is one set of data. That’s the said 

data in both of the – in all three of the claim elements.” 

Counsel for Creative disagreed and argued that the 

accused program would infringe if the three actions 

operated on different messages. The trial court expressed 

skepticism that the claim required “the set of data where . 
CREATIVE INTERNET v. YAHOO INC 8

. . the receipt, the insertion, the transmit, that has to be 

the same.” The court asked why the claim would not read 

on a program that “receive[s] one set of data, inserts into 

another set of data, transmits maybe another set,” and 

told Yahoo!’s counsel, “you’ve got to persuade me that 

your position on this claim, that it’s the same set of data 

that’s received, inserted and transmitted can be correct.” 

Following that exchange, the district court took the 

matter under advisement. After a recess, the court decided to give the jury a supplementary instruction defining the words “a” or “an” and “said.” The court declined to 

instruct the jury on whether the claim required all three 

actions to apply to the same message; as to that issue, the 

court stated, “That, in my estimation, is infringement—

the question of infringement, that’s for y’all to fight over 

and for the jury to resolve.” Yahoo!’s counsel objected to 

the court’s refusal to limit the scope of the claim to require that all the recited actions operate on a single 

message, but the court overruled the objection.

The district court’s refusal to instruct the jury on the 

question whether the claim required all three elements to 

operate on the same message had the effect of leaving a 

critical question of claim construction to the jury. The 

court erred in leaving a central question of claim construction to the jury over Yahoo!’s objection. See O2 

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 

F.3d 1351, 1360-62 (Fed. Cir. 2008). 

The closing arguments demonstrate that the district 

court’s instruction linking the construction of “an” and 

“said,” and not addressing the “same message” issue 

raised by Yahoo! enabled Creative to argue to the jury 

that all three claim elements do not have to operate on 

the same message in order to infringe. After referring to 
9 CREATIVE INTERNET v. YAHOO INC

the district court’s supplementary construction of “an” as 

“one or more,” Creative told the jury “if the logic, the code 

in the computer program was capable of doing these three 

things, it infringes” without regard to whether all three 

elements operate on the same message. Yahoo! then 

urged the jury to find noninfringement based on the 

premise that all three elements must operate on the same 

message. Creative responded to that argument by again 

citing the district court’s supplementary claim construction paragraph, contending that the elements can operate 

on “one or more” messages and that Yahoo!’s position 

violates the district court’s construction that the claim 

elements need not be sequential. 

Creative’s broader claim construction is incorrect. Although the antecedent phrase, “an end user communication message,” is broad enough to cover multiple 

messages, each use of the phrase “said end user communication message” still refers to the antecedent phrase. 

See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 

1338, 1342 (Fed. Cir. 2008) (“The subsequent use of 

definite articles “the” or “said” in a claim to refer back to 

the same claim term does not change the general plural 

rule [of “an”], but simply reinvokes that non-singular 

meaning.”). An infringing system must therefore contain 

logic configured to insert a background reference into the 

same messages that are received and transmitted by 

other logic in the program. That does not necessarily 

mean that the insertion logic must act on the message 

after it is received. And it does not mean that the every 

message in an infringing system must be received, inserted, and transmitted. Instead, it means that the claim 

does not cover a system that only receives a message, 

inserts a background reference into a different message, 

and then transmits a third message. Although the dissent adopts that interpretation, it is contrary to the claim 
CREATIVE INTERNET v. YAHOO INC 10

language because it would render the word “said” a nullity. See Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 

F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction 

that gives meaning to all the terms of the claim is preferred over one that does not do so.”). The claim language 

makes clear that all three logical elements must act, at 

least once, on the same message or messages. 

By linking the construction of “said” to the construction of “an” and the ruling on sequential limitations, the 

district court left that claim construction issue unresolved 

and allowed Creative to invite the jury to find infringement on a theory that is contrary to the proper construction of the asserted claim. Because the jury may have 

found infringement based on Creative’s broader and 

incorrect theory of claim construction, it would be incorrect to rule that Yahoo! waived its right to challenge the 

district court’s claim construction simply because Yahoo! 

received the construction of the term “said” that it proposed. 

III 

Yahoo! also appeals the court’s denial of its motion for 

JMOL of noninfringement. Yahoo! contends that under 

the district court’s claim construction, as modified by our 

discussion above, Yahoo! Messenger lacks the second 

limitation of claim 45. That limitation requires the 

following: 

logic configured to insert a background reference 

to a stored advertisement into said end user communication message, wherein said logic configured to insert the background reference is further 

configured to insert said background reference responsive to an overwrite authorization. 
11 CREATIVE INTERNET v. YAHOO INC

The district court construed the term “end user communication message” to mean “[a] set of data transmitted 

over a communications network,” and the term “overwrite 

authorization” to mean “[a]pproval to replace an existing 

background reference in an end user communication 

message . . . .” Based on those constructions, the second 

limitation of claim 45 requires logic configured to insert a 

background reference into a message responsive to an 

approval to replace an existing background reference in a 

message, where a message is a set of data transmitted 

over a communications network. Because the evidence 

would not permit a reasonable jury to find that Yahoo! 

Messenger satisfied the second limitation of claim 45 as 

properly construed, we reverse the district court’s judgment with respect to infringement. 

Yahoo! Messenger is end user software that must be 

installed on the computer of every end user. It gives 

users the option of selecting IMVironments, which are 

advertisements that can be inserted behind the chat 

window. Two users in a conversation can select IMVironments only if both users have enabled them. If IMVironments are enabled, a user can select an IMVironment 

(such as an advertisement for “Honda” or an advertisement for “Army”). When IMVironments are enabled, a 

corresponding IMV-ID (such as 1 or 7) will be inserted 

into the IMV-ID field of the outgoing message. Other 

fields in the message include user1, user2, IMV Flag 

(which indicates whether the sending user has enabled 

IMVironments), and the text of the message. 

Yahoo! contends that Yahoo! Messenger does not infringe for two reasons. First, Messenger never inserts a 

background reference (or IMV-ID) into an existing message; instead, it just creates new messages and populates 

them with an IMV-ID. Second, Messenger does not insert 
CREATIVE INTERNET v. YAHOO INC 12

background references responsive to an approval to 

replace existing background references; instead, the 

approval is to put background references in the message 

in the first place. The accused “approval” functionality in 

Messenger is a checkbox that allows users to disable the 

insertion of the advertising backgrounds. 

Creative contends that claim 45 requires only “conditional insertion” and that Yahoo! Messenger conditions 

insertion of IMV-IDs on an end user’s selection of the 

checkbox that enables IMVironments. Claim 45, however, 

requires the insertion to be more than “conditional.” The 

insertion must be responsive to an approval to replace an 

existing background reference in an end user communication message. The burden was on Creative, therefore, to 

identify evidence demonstrating that the checkbox in 

Yahoo! Messenger enables IMVironments to serve as the 

approval to replace an existing background reference in a 

message instead of merely the approval to insert background references in new messages. 

In its brief, Creative focuses on one scenario purportedly demonstrating that Yahoo! Messenger contains logic 

configured to insert a background reference responsive to 

such an approval. Creative asks the reader to assume 

that two users, identified as “Randi” and “Millie,” are 

having a conversation using Yahoo! Messenger and that 

both users have enabled IMVironments. If Randi sends 

Millie a message with the “Army” IMVironment chosen, 

his outgoing buffer will be populated with “Randi” as the 

Sender ID, “Millie” as the Recipient ID, “Army” as the 

IMV-ID, and “Enabled” as the IMV Flag. Once Randi 

sends the message, Millie’s incoming buffer will contain 

the same values. If Randi then changes his IMVironment 

to “Honda” without sending a new message, the IMV-ID 

field in his outgoing buffer, which previously contained 
13 CREATIVE INTERNET v. YAHOO INC

“Army,” will be replaced with “Honda.” Randi can make 

such a change only if Millie continues to have IMVironments enabled. Creative thus contends that Millie’s 

choice to enable or disable IMVironments is an approval 

to replace an existing background reference in an end 

user communication message. This scenario is depicted in 

the following demonstrative that Creative used at trial: 

Creative’s infringement scenario fails because it nullifies the third limitation of claim 45, which requires “logic 

configured to transmit said end user communication 

message with the background reference to a second site.” 

To satisfy the third limitation, the message that is transmitted must contain the background reference that was 

inserted responsive to Millie’s approval in the second 

limitation. The message that was initially transmitted 

did not contain the background reference that was inserted (“Honda”); instead, it contained the background 

reference that was replaced (“Army”). 
CREATIVE INTERNET v. YAHOO INC 14

Creative alternatively contends that Messenger could 

satisfy the third limitation when Randi sends out a new 

message containing the inserted background reference to 

“Honda.” That scenario fails because the “Honda” message that is transmitted is a different message than the 

“Army” message into which the IMV-ID was inserted. 

Creative’s last literal infringement theory focuses on 

Millie’s incoming buffer. Creative contends that the 

insertion logic is located on the receiving computer when 

the previous IMV-ID in the buffer is replaced with the 

new IMV-ID. Such replacement is not insertion into a 

message because the entire buffer is overwritten when a 

new message is received. Creative also contends that the 

IMV-ID is replaced in a second memory location on the 

recipient computer that is used to keep track of the current IMV-ID to be displayed. That replacement, however, 

is not an insertion into a message, because the IMV-ID 

has been separated from the rest of the message and 

stored in a separate location on the computer. In finding 

that the jury had sufficient evidence to “find that a replacement occurs,” the dissent overlooks the fact that the 

claim language requires not “replacement” but “logic 

configured to insert a background reference to a stored 

advertisement into said end user communication message 

. . . in response to an overwrite authorization.”2

Having concluded that all of Creative’s literal infringement theories fail, we turn to infringement under 

the doctrine of equivalents. Yahoo! contends that there 

 2

 Although the district court construed “overwrite 

authorization” as “[a]pproval to replace an existing background reference in an end user communication message 

[with another background reference],” that construction 

did not alter the meaning of “insert” in the second limitation of the claim. 
15 CREATIVE INTERNET v. YAHOO INC

was insufficient evidence to support a jury determination 

that Yahoo! Messenger has the equivalent of logic configured to “insert said background reference responsive to an 

overwrite authorization.” Appellant’s Br. at 41. To 

support a finding of infringement under the doctrine of 

equivalents, a patentee must provide particularized 

testimony and linking argument with respect to the 

“function, way, result” test. Tex. Instruments Inc. v. 

Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed. 

Cir. 1996). Creative’s only particularized testimony and 

linking argument supporting infringement under the 

doctrine of equivalents is the following testimony from its 

expert, David Klausner: 

Q: Now, did you review the patent in forming your 

opinions? 

A: Yes. 

Q: And did you take a look at the patent to determine 

what the function of the overwrite authorization 

was? 

A: I have. 

Q: And what portion of the patent was that? 

A: I think it's column 9, lines 35 through 48. 

Q: Is that the part highlighted here? 

A: Yes. 

Q: Now, this says, “If the approval configuration indicates that background references are not to be 

overwritten for a particular message, step 4-12 indicates the background references insertion proc-
CREATIVE INTERNET v. YAHOO INC 16

ess terminates and then it says, “An approval configuration file is maintained” - in one embodiment 

- “in order to enable end user recipients to configure the background reference system and whether 

or not to overwrite existing background references 

in messages received by them.” 

 Is that the part you relied on? 

A: Yes. 

Q: What -- using that, what's the function of the 

overwrite authorization? 

A: It's to provide approval for a replacement as His 

Honor has told us. 

Q: Now, if we could go to Exhibit 112, please, the enable button. I'm showing you the references [sic] 

box for the enable IMVironments button. What is 

the function of the enable IMVironments check 

box in the Yahoo Messenger program? 

A: To approve the replacement of the background 

reference. 

Q: Okay. And what is the way that the overwrite authorization in Claim 45 is achieved in a [sic] ’432 

patent? 

A: Well, also substantially the same way, by having 

program code written that will look at the condition and determine whether it's enabled or not. 

Q: And then what's the result with respect to the 

overwrite authorization in Claim 45? 
17 CREATIVE INTERNET v. YAHOO INC

A: It is to have the program logic -- a logic code in the 

program to enable the approval to replace the 

background reference. 

Q: All right. Do you have an opinion on whether or 

not the overwrite authorization element of Claim 

45 is found under the doctrine of equivalence in 

Yahoo!'s Messenger program? 

A: I do. 

Q: And what is that opinion? 

A: It is found - it's substantially the same function in 

substantially the same way with substantially the 

same result, and any difference between the claim 

as construed by His Honor and the accused product are insubstantial. 

That testimony addresses only whether the IMVironments checkbox is equivalent to the overwrite authorization. It does not address the broader issue of whether 

Yahoo! Messenger has the equivalent of logic configured 

to “insert said background reference responsive to an 

overwrite authorization.” For reasons addressed in our 

discussion of literal infringement, Yahoo! Messenger does 

not insert background references into existing messages.3 

 3

 The dissent contends that we are adopting a different rationale than that presented by Yahoo! on appeal. 

However, Yahoo! appealed infringement under the doctrine of equivalents because Yahoo! Messenger lacks a 

“pre-existing background reference in the message to 

overwrite” and “does not use a message server to intercept 

the message packet and replace a pre-existing background reference with an IMV-ID.” An infringement 

finding must be supported by evidence for each limitation, 

and Creative failed to submit evidence demonstrating 
CREATIVE INTERNET v. YAHOO INC 18

By reciting “logic configured to insert,” the claims require 

replacement of existing background references in messages, and the only way the specification describes such 

replacement occurring is by intercepting the messages 

with a server. It is undisputed that Yahoo!’s system does 

not alter existing messages and does not intercept them 

with a server. Thus, there was insufficient evidence for a 

reasonable jury to conclude that Yahoo! Messenger infringed claim 45 under the doctrine of equivalents. 

IV 

Yahoo! also appeals the district court’s denial of its 

motion for JMOL of invalidity based on the prior art 

references known as Goldschmitt and the Gold Guide. 

We conclude that the evidence was sufficient to support 

the jury’s conclusion that neither Goldschmitt nor the 

Gold Guide disclosed inserting a background reference 

into a message responsive to an overwrite authorization. 

Both references described inserting background advertisements whenever they were available to be inserted. 

Neither reference disclosed a system that let users selectively receive advertisements. 

Yahoo! places great weight on the following statement 

in Goldschmitt: “When the user commands to read the 

stored mail, the center 18 appends an advertisement, if 

any, to the message and transmits the message to the 

user.” We conclude that a reasonable jury could interpret 

that statement as disclosing no more than that advertisements would invariably be inserted if any suitable 

advertisements were available. On that view, the state-

 

that Yahoo! Messenger inserts background references into 

existing messages either literally or under the doctrine of 

equivalents. 
19 CREATIVE INTERNET v. YAHOO INC

ment does not disclose a system that allows users to 

selectively receive advertisements. Yahoo! further contends that Goldschmitt’s insertion was responsive to an 

“overwrite authorization” because users authorized the 

insertion of background advertisements by signing up for 

the service. However, a system in which users opt in to 

the advertising-supported service does not disclose the 

second limitation of the claim, which requires “logic 

configured” to insert background references responsive to 

an overwrite authorization. Because neither of the references disclosed inserting a background reference into a 

message responsive to an overwrite authorization, the 

district court correctly denied Yahoo!’s motion for JMOL 

as to invalidity. 

Each party shall bear its own costs for this appeal. 

AFFIRMED IN PART and REVERSED IN PART 
NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

CREATIVE INTERNET ADVERTISING 

CORPORATION, 

Plaintiff-Appellee, 

v. 

YAHOO!, INC., 

Defendant-Appellant. 

__________________________ 

2010-1215 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in case No. 07-CV-0354, Magistrate Judge John D. Love. 

__________________________ 

CLEVENGER, Circuit Judge, dissenting-in-part. 

 First, a few words about the claim in suit. Claim 45 is 

drawn to a computer program which contains logic configured to do things to an “end user communication message.” The “things” for which the logic is configured are: 

(a) receipt of “an” end user communication message from 

a first site; (b) insertion of a background reference to a 

stored advertisement in “said” end user communication 

message, with the logic further configured for insertion of 

the background reference in response to an overwrite 
CREATIVE INTERNET v. YAHOO INC 2

authorization; and (c) transmission of “said” end user 

communication message with the background reference to 

a second site. 

Yahoo! sought unsuccessfully to have the claim 

treated in essence as a method claim, with the things for 

which the logic is configured necessarily being performed 

as steps in the order claimed. The district court instead 

held that the claim is to an apparatus with no requirement for sequential configuration of the required logic. 

Yahoo! also sought to have “end user communication 

message” be construed to mean “a written communication 

intended for an end user.” The district court disagreed, 

and defined the term as “a set of data transmitted over a 

network.” Yahoo! does not appeal either point. 

Coming back to claim 45, the “end user communication message” is just “a set of data transmitted over a 

network.” And an infringing computer program need only 

have logic configured to permit (a) receipt of a set of data 

from a first site; (b) insertion of the claimed background 

reference in a set of data in response to an overwrite 

authorization; and (c) transmission of a set of data with 

the background reference to a second site. The logic does 

not have to be executed in any particular order. 

The jury heard testimony that Yahoo!’s Messenger 

computer program has logic configured to do each of the 

three things called for by claim 45. Nonetheless, the 

majority reverses the jury verdict of infringement on two 

grounds. First, the majority revises the district court’s 

claim construction to require the limitations of claim 45 to 

act upon a single message. Second, the majority reverses 

the jury’s finding of infringement under the doctrine of 

equivalents. I respectfully disagree with the majority’s 
3 CREATIVE INTERNET v. YAHOO INC

reasoning and conclusion on both grounds.1 We should 

sustain the jury’s verdict of literal and equivalents infringement. 

I 

Yahoo! hinges its appeal on a single claim construction argument and asks the Court “[w]hether the district 

court erred in construing the phrase ‘said end user communication message.’” Appellant Br. at 1. Yahoo!’s 

argument relies upon reading the phrase “said end user 

communication message,” used in the second and third 

limitations of claim 45, as dependent upon the phrase “an 

end user communication message” used in the first limitation. Yahoo! argues that the use of the word “said” means 

that the end user communication message (or “set of data” 

as construed by the district court) referenced in the second and third limitations of claim 45 must be the exact 

same set of data that is received over the network in the 

first limitation. The majority sides with Yahoo!. 

Yahoo! understands that the district court’s interpretation of “said” in connection with “a” or “an” in claim 45 

means that the claimed logic configurations need not be 

performed on the same set of data. That is why Yahoo! 

bases its appeal on whether the district court erred in 

construing the “said end user communication message” 

limitation. The majority misrepresents Yahoo!’s argument when it contends that “the focus of Yahoo!’s appeal 

is not on the district court’s construction of the term ‘said,’ 

but on the court’s failure to instruct the jury that ‘all the 

limitations must be configured to operate on the same 

message.’” Maj. Op. at 7. Yahoo!’s argument on appeal is 

 1 I agree with the majority’s reasoning and conclusion on the validity issue. 
CREATIVE INTERNET v. YAHOO INC 4

exactly that the use of the phrase “said end user communication message” in connection with the phrase “an end 

user communication message” requires each limitation to 

act upon the same message. 

Yahoo!’s argument is barred by our case law. We 

have made clear that the use of an indefinite article such 

as “a” or “an” carries the meaning of “one or more.” See

KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 

(Fed. Cir. 2000). The “one or more” construction is a 

bedrock rule of patent law, with very limited exceptions, 

none present in this case. See Baldwin Graphic Sys., Inc. 

v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). We 

have also clarified that “[t]he subsequent use of definite 

articles ‘the’ or ‘said’ in a claim to refer back to the same 

claim term does not change the general plural rule, but 

simply reinvokes that non-singular meaning.” Id. Thus, 

the use of the term “said” does not require, or even imply, 

that each limitation must execute upon a single message 

when the claimed apparatus is used. Instead, “said end 

user communication message” merely references “one or 

more” end user communication messages. “Said” is an 

anaphoric phrase that merely refers back to the initial 

antecedent phrase. Baldwin Graphic, 512 F.3d at 1343 

(“Because the initial phrase carries no definitive numerosity, the anaphoric phrases do not alter that meaning in 

the slightest.”). Yahoo!’s claim construction argument on 

the meaning of the term “said” fails under our precedent. 

Indeed, the district court carefully and precisely instructed the jury as to what “an end user communication 

message” means in claim 45 under Baldwin Graphic: the 

second and third limitations can be performed on any set 

of data, not necessarily the set of data that is received in 

the first limitation. 
5 CREATIVE INTERNET v. YAHOO INC

The majority wrongly accuses the district court of 

dereliction of duty for failing to instruct the jury that all 

three logical elements must operate on the same message. 

First, in the context of claim 45, Baldwin Graphic prohibits such an instruction. And, indeed, the district court 

instructed the jury exactly to the contrary, namely that 

the claim does not require all three logical elements to 

operate on the same message. When the district court 

told the jury that “said end user communication message” 

merely refers back to “an end user communication message,” which means one or more end user communication 

messages, the jury and the parties knew that the three 

logical elements need not be performed on a single message. 

In addition to discounting Baldwin Graphic and erroneously revising the district court’s claim construction, 

the majority fails to confront that claim 45 reads as an 

apparatus claim on its face. Instead, the majority repeatedly treats the claim as a method claim with steps that 

must be performed for infringement. See, e.g., Maj. Op. at 

10 (“The claim language makes clear that all three logical 

elements must act, at least once, on the same message or 

messages.”). However, requiring a concerted execution of 

the claimed logic upon a single message is not the proper 

test for infringement of an apparatus claim. Instead, the 

proper question for infringement is whether the accused 

computer program contains logic configured to meet each 

limitation, regardless of how or when the claimed logic is 

used. 

Yahoo! appeals the jury’s finding that Yahoo! Messenger meets the second limitation of claim 45 which requires 

insertion of a background reference into an end user 

communication message. Yahoo! argues that Yahoo! 

Messenger cannot infringe because it never “replaces” or 
CREATIVE INTERNET v. YAHOO INC 6

“overwrites” a pre-existing background reference in a 

message; instead Yahoo! claims that Yahoo! Messenger 

always creates a new message when an IMV-ID is selected. However, at trial, Creative used the concept of 

message buffers to demonstrate that Yahoo! Messenger 

contains logic configured to replace a background reference in a set of data.2

Dr. Goldberg, Yahoo!’s technical expert, explained to 

the jury that a message buffer is a set of data contained at 

a location in computer memory. He further explained to 

the jury that when a so-called “new instant message” is 

sent or received by Yahoo! Messenger at least some of the 

data in the buffers can be replaced. He stated: 

Q. The message, when it’s received, sits in memory, 

and then it’s overwritten by the next message, 

correct? 

A. Yes. It’s no longer accessible. 

Q. But it’s overwritten by the next message, is my 

question. 

A. Let’s be clear. Computers have incoming message 

buffers, the memory that when an incoming message comes in, that’s where it goes, okay? And the 

computer can then use that data that came in. 

 2 While the majority appears to find a distinction between the words “insert,” “overwrite,” and “replace,” I note that the parties used these terms 

interchangeably when referring to the second limitation of 

claim 45. This is because the “insertion” occurs into a 

message responsive to an “overwrite authorization.” 

Thus, the “insertion” can also be referred to as a “replacement” or “overwrite” and the jury was instructed 

accordingly. 
7 CREATIVE INTERNET v. YAHOO INC

The next message coming in is likely to be put 

right where that previous message was. It may or 

may not. But it could overwrite it. So the first 

message comes in, the next message comes in and 

overwrites it. And so the first message is gone. 

Q. Right. It’s overwritten. 

A. I think it’s fair to say in that memory, the first 

message is overwritten by the second one. Yeah, I 

have no problem with that. 

Dr. Goldberg later confirmed that the buffer data is 

replaced by each subsequent incoming or outgoing instant 

message in Yahoo! Messenger.

Q. Okay. And, in fact, in the other computer program, there’s memory that’s allocated once this 

chat session starts, and every message received is 

put in the same memory location and overwrites 

the previous message. You agree with that, don’t 

you? 

A. If the same location is being used every time for 

that buffer, the data coming in, then I agree with 

that. 

Q. Okay. And you said you think it’s likely in the 

Yahoo! Messenger program, it does happen that 

way? 

A. Yes, I do. 

Yahoo! argues that the jury misunderstood its expert’s 

testimony and that each time any modification is made to 

the message buffer it is the result of a new instant message being created. However, Yahoo!’s argument is rooted 
CREATIVE INTERNET v. YAHOO INC 8

in its proposed construction that “end user communication 

message” means “a written communication intended for 

an end user.” This construction was rejected by the 

district court and Yahoo! does not appeal the rejection. 

The district court’s unappealed construction states that 

“an end user communication message” is merely “a set of 

data transmitted over a network.” The record contains 

sufficient evidence to allow a reasonable jury to find that 

a replacement occurs within the set of data contained in 

the message buffers. 

The majority additionally holds that the jury erred by 

finding literal infringement of the third limitation in 

claim 45. Yahoo!’s argument regarding the third limitation is that because Yahoo! Messenger creates a new 

instant message each time a user modifies a background, 

it will never transmit an instant message on which the 

“insertion” logic of the second limitation has already 

executed. This argument is again rooted in Yahoo!’s 

argument to the district court that “end user communication message” means “a written communication intended 

for an end user” and further requires that claim 45 be 

treated as a method claim with “steps” that must be 

performed in the listed order. 

The third limitation of claim 45 requires “logic configured to transmit said end user communication message 

with the background reference to a second site.” As 

previously discussed, Yahoo! does not appeal the construction of “end user communication message” as “a set of 

data.” There is no factual dispute in the record that 

Yahoo! Messenger in fact transmits sets of data with 

background references to a second site and the majority 

points to no evidence to suggest otherwise. Yahoo!’s 

“ordered steps” argument must also be rejected. Claim 45 

is an apparatus claim and the district court properly 
9 CREATIVE INTERNET v. YAHOO INC

instructed the jury that the limitations of claim 45 do not 

need to be performed in the listed order. 

For these reasons, we should affirm the jury’s finding 

of literal infringement.

II 

I also dissent from the majority’s reversal of the jury 

verdict of infringement under the doctrine of equivalents. 

Because there can be no dispute that Yahoo!’s computer 

program meets the first and third limitations in claim 45, 

the only equivalents issue relates to the second limitation. 

Yahoo! thus appeals from a jury verdict and denial of 

judgment as a matter of law finding that the IMVironments enable checkbox is equivalent to the “overwrite 

authorization” in claim 45. Yahoo! contends that the jury 

lacked sufficient evidence to decide that only insubstantial differences separate Yahoo!’s enable checkbox from 

the claimed overwrite authorization. See Appellant’s Br. 

at 42 (“The district court’s decision was erroneous because 

the differences between the IMVironments enable checkbox and an ‘overwrite authorization’ are substantial.”). 

The majority finds Creative’s expert testimony on the 

doctrine of equivalents lacking, even though Creative’s 

expert, Mr. Klausner, described in detail how the function, way, result test should be applied to both the “overwrite authorization” in claim 45 and the enable 

IMVironments checkbox in Yahoo! Messenger. By any 

measurement (other than the majority’s), Creative’s 

equivalents evidence meets the relevant test. See Tex. 

Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 

1558, 1567 (Fed. Cir. 1996) (“a patentee must [] provide 

particularized testimony and linking argument as to the 

‘insubstantiality of the differences’ between the claimed 
CREATIVE INTERNET v. YAHOO INC 10

invention and the accused device or process, or with 

respect to the function, way, result test when such evidence is presented to support a finding of infringement 

under the doctrine of equivalents”). 

While it appears that the majority finds Mr. Klausner’s testimony on the appealed issue sufficient, see Maj. 

Op. at 17, the majority adopts a different rationale from 

that presented by Yahoo! and suggests that Creative 

erred by failing to introduce equivalents testimony regarding other aspects of the second limitation. There is 

no basis in our case law for requiring particularized 

testimony and linking argument on aspects of a limitation 

that are not argued to be infringed under the doctrine of 

equivalents. Of course this is so because it is precisely the 

doctrine of equivalents argument — here whether the 

IMVironments checkbox is equivalent to the “overwrite 

authorization” — that needs particularized testimony, not 

other aspects of the claim. The majority’s suggestion that 

more is required is mistaken. There is certainly sufficient 

particularized testimony and linking argument on the 

“overwrite authorization.”