Speedtrack, Inc. v. amazon.com, Inc., 998 F.3d 1373

Background

The ’360 patent claims a computer filing system using a "category description table" whose entries "have no predefined hierarchical relationship," enabling "fieldless" or hybrid tagging of files.
Claim 1 requires creating the category table, associating category descriptions with files, and building a search filter that matches those descriptions.
During prosecution the applicants added the hierarchical limitation to distinguish the patent from prior art (Schwartz), emphasizing Schwartz’s predefined field-and-value (field/attribute → value) hierarchical structure.
The district court adopted a construction (based on SpeedTrack’s proposed language) and later clarified that the prosecution history disclaimed category descriptions based on predefined hierarchical field-and-value relationships (i.e., field/value systems).
SpeedTrack stipulated noninfringement under the clarified construction and appealed the claim construction; the Federal Circuit reviewed claim construction de novo and affirmed the district court’s construction and judgment of noninfringement.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the claims exclude predefined hierarchical field-and-value relationships due to prosecution disclaimer	SpeedTrack: the hierarchical limitation only bars hierarchical relationships among “category descriptions” (not field/value hierarchies); prosecution remarks do not clearly disclaim field/value systems	Cross-Appellants: applicants repeatedly distinguished Schwartz’s field/value hierarchical system and thus disclaimed such predefined field-and-value relationships	Court: prosecution history shows clear and unmistakable disavowal; claims exclude predefined hierarchical field-and-value systems; construction affirmed
Whether the district court improperly relied on prosecution statements to narrow claim scope	SpeedTrack: prosecution language referred only to distinguishing fields from category descriptions, so narrowing was unwarranted	Cross-Appellants: applicants explicitly described Schwartz as hierarchical (fields first, values second) and contrasted the invention as ‘‘fieldless’’	Court: prosecution arguments and amendments plainly differentiated Schwartz’s field/value hierarchy; disclaimer applies
Whether the court must address invalidity (patent-eligibility, indefiniteness) after affirming noninfringement	SpeedTrack: raised other possible issues in briefing	Cross-Appellants: had cross-appealed on invalidity but said they would dismiss if noninfringement affirmed and patent expired	Court: declined to reach validity issues because noninfringement affirmed and cross-appellants would dismiss cross-appeal

Key Cases Cited

Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim terms given ordinary and customary meaning and read in view of the specification)
Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (review standard for claim construction and review of factual findings)
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (prosecution disclaimer can surrender claim scope)
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) (court resolves fundamental disputes over claim scope)
Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353 (Fed. Cir. 2017) (doctrine of prosecution disclaimer prevents inconsistent claim interpretations)
Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007) (distinguishing prior art on particular grounds can operate as disclaimer)
Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349 (Fed. Cir. 2017) (prosecution disclaimer may arise from amendments and arguments)
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570 (Fed. Cir. 1995) (claims cannot be construed one way to obtain allowance and another against accused infringers)
Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993) (generally addressing when appellate courts must decide invalidity issues)