Unwired Planet, LLC v. Google, LLC, 3:12-cv-00504

Unwired Planet sued Google for patent infringement involving multiple patents; disputed here are Claim 16 of U.S. Patent No. 6,292,657 (ʼ657) and Claims 1, 17, 27, 31 of U.S. Patent No. 6,684,087 (ʼ087).
Claim 16 of the ʼ657 includes the phrase: “executing said request to cause said fleet data pushed by said proxy server module to the plurality of the mobile stations,” which the parties dispute as garbled/ambiguous.
The ʼ087 claims’ preambles describe “an image having dimensions much larger than the dimension of the screen,” a phrase Google argues is indefinite because “much larger” and “dimension of the screen” are unclear.
Google moved for summary judgment of indefiniteness on these claims; the parties briefed and had a Markman hearing; the court previously declined to correct Claim 16 during claim construction but construed other terms in the ʼ087 patent (including “reduced image”).
The court held Claim 16 of the ʼ657 indefinite because multiple reasonable textual corrections produce materially different claim scopes (push vs. receive) and no single correction is plainly correct; decision on the ʼ087 claims was deferred pending supplemental briefing about the effect of the court’s construction of “reduced image.”

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Claim 16 of the ʼ657 Patent is indefinite due to a garbled phrase	The phrase contains a typographical error; court may correct to read “to be pushed,” making scope clear	The phrase is ambiguous and cannot be reliably corrected; produces different meanings	Claim 16 is invalid for indefiniteness because multiple reasonable corrections yield different scopes
Whether the preamble phrase “image having dimensions much larger than the dimension of the screen” renders Claims 1, 17, 27, 31 of the ʼ087 indefinite	Preambles are nonlimiting or, if limiting, “much larger” can be understood as at least twice screen width/height	Preambles limit claims and the patent fails to teach how to measure “much larger” or which screen dimension applies	Deferred: court ordered meet-and-confer and supplemental briefing to address effect of its “reduced image” construction on indefiniteness

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (patent claims must inform with reasonable certainty those skilled in the art)
Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) (burden of proving invalidity; factual aspects require clear and convincing evidence)
Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) (court may correct typographical errors only when correction is not subject to reasonable debate)
Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standards)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (genuine dispute and materiality standards for summary judgment)