shutterstock_174393956In a case involving Google’s “very cool”1 Street View technology, Google convinced the district court that its technology did not infringe four Verderi’s patents.2 But Google’s victory was short lived. The Federal Circuit disagreed with the district court on claim construction, and remanded the case to the district court to determine infringement based on the Federal Circuit’s own claim construction. Google applied for, and was recently denied, Supreme Court review.3

Like many patent disputes, the heart of this case involved claim interpretation. The twist here is that the disputed term was amended during prosecution and the Federal Circuit did not find a “clear and unambiguous disavowal of spherical or curved images, [i.e., the Google technology] that would support the district court’s construction.”4 In applying for certiorari, Google argued that the Federal Circuit used a standard that conflicts with Supreme Court precedent. Instead, Google asserted that an amended term “operates as a disclaimer” and “must be strictly construed against [the applicant] and in favor of the public.”5 Verderi, on the other hand, argued that the Federal Circuit’s standard did not conflict with precedent.6

Most of us are familiar with Google Street View, a navigation application that allows users to explore street-level imagery by viewing a spherical panorama.7 A user can look up-and-down and all around as though he was virtually standing at a specific street location.8

The contested limitation was “images depicting views of objects in the geographic area, the views being substantially elevations of the objects.”9 Central to the claim construction dispute was the phrase “substantially elevations.” Vederi construed the phrase to mean “front, back, or side views,”10 whereas Google asserted that the phase referred only to “vertically flat depictions” of such views,11 which the Street View product would not infringe.12

The district court adopted Google’s construction since Street View did not display “vertically flat” images, and on summary judgment, the court found no infringement.13

Focusing on the claim language itself, the Federal Circuit ruled that the lower court’s claim construction was incorrect, because it failed to “give[] meaning to all the terms of the claim” by essentially ignoring the word “substantially.”14 The Federal Circuit “discern[ed] no clear and unambiguous disavowal of spherical or curved images” from the prosecution history.15 Because the reference cited against the claims during prosecution was directed to “map images” but not “images depicting views that are substantially elevations of objects,” there was no disavowal of the Google technology, i.e., curved or spherical images.16 So the Federal Circuit found that the “views being substantially elevations of the objects” did “not exclude curved or spherical images.”17

In its petition for certiorari, Google argued that construing claim amendments against the applicant was an important principle for public policy,18 and the Fed-eral Circuit’s ruling had turned the principle “on its head” by refusing to recognize the narrowing effect of a claim amendment on the claim’s scope.19

Vederi’s opposition brief asserted that Google had confused prosecution disclaim-er (which applies in claim construction) with prosecution history estoppel (which applies in doctrine of equivalent analysis) in its legal analysis.20 Regarding the claim amendment from “non-aerial view” to “views being substantially elevations,” Vederi clarified that the amendment was about the type of views rather than the images being flat or curved.21

The United States filed an amicus brief agreeing with the Federal Circuit.22 It opined that “in considering the prosecution history [for claim construction], a court must first determine whether any claim amendment was intended to address an interpretive issue that is relevant to the parties’ dispute. If that is so, the court must not construe the claim to encompass the subject matter that the amendment was intended to disclaim.”23 But nevertheless a “patentee is entitled to a fair construction of the terms of his claim as actually granted”24

1 Vederi, LLC v. Google, Inc., No. 2:10-CV-07747-AK-CW, 2012 WL 4511424 at *2 (C.D. Cal. 2012).
2 Id. at *1.
3 Google, Inc. v. Vederi, LLC, No. 14-448, 2015 WL 2473390 (2015).
4 Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1384 (Fed. Cir. 2014).
5 Petition for Writ of Certiorari, 2 (citing Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942)).
6 Brief in Opposition to Petition for Writ of Certiorari, 1.
7 Vederi,. 2012 WL 4511424 at *1; Street View – Google Maps,, (last visited Jul. 13, 2015).
8 Vederi, 2012 WL 4511424 at *2.
9 See, e.g., U.S. Patent No. 7,982,720, claim 1 (filed May 16, 2005).
10 See Plaintiff Vederi, LLC’s Opening Claim Construction Brief, 19:9-20:13.
11 See Google’s Opening Claim Construction Brief, 17:4-19:18.
12 Vederi, 2012 WL 4511424 at *3.
13 Id.
14 Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382-83 (citing Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).
15 Id. at 1384 (citing Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003))
16 Id.
17 Id.
18 See Petition for Writ of Certiorari, 22-26.
19 Id. at 16.
20 Brief in Opposition to Petition for Writ of Certiorari, 10-12.
21 Id. at 20-22.
22 Brief for the United States as Amicus Curiae, 22-23.
23 Id. at 9 (citing Hubbell v. United States, 179 U.S. 77 (1900)).
24 Brief for the United States as Amicus Curiae, (citing Hubbell, 179 U.S. at 80))