Masterobjects, Inc. v. Meta Platforms, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
MASTEROBJECTS, INC.,
Plaintiff-Appellant
v.
META PLATFORMS, INC.,
Defendant-Appellee
______________________
2023-1097
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:21-cv-05428-WHA,
Judge William H. Alsup.
______________________
Decided: February 15, 2024
______________________
D ARRELL RAE ATKINSON, Hosie Rice LLP, San Fran-
cisco, CA, argued for plaintiff-appellant. Also represented
by S PENCER HOSIE, D IANE SUE RICE.
J EFFREY G. HOMRIG, Latham & Watkins LLP, Austin,
TX, argued for defendant-appellee. Also represented by
G ABRIEL K. BELL , RACHEL WEINER C OHEN , Washington,
DC; J OSEPH HYUK L EE, Costa Mesa, CA; D OUGLAS ETHAN
L UMISH , Menlo Park, CA.
______________________
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 2
Before L OURIE, REYNA , and CUNNINGHAM , Circuit Judges.
L OURIE, Circuit Judge.
MasterObjects, Inc. (“MasterObjects”) appeals from a
decision of the United States District Court for the North-
ern District of California granting summary judgment that
Meta Platforms, Inc. (“Meta”) did not infringe U.S. Patents
8,539,024 (the “’024 patent”); 9,760,628 (the “’628 patent”);
10,311,073 (the “’073 patent”); and 10,394,866 (the “’866
patent”) (collectively, the “asserted patents”). MasterOb-
jects, Inc. v. Meta Platforms, Inc., No. C 21-05428, 2022 WL
12039301 (N.D. Cal. Oct. 20, 2022) (“Decision”). For the
following reasons, we reverse and remand.
BACKGROUND
The asserted patents all descend from a common appli-
cation filed in 2001 that resulted in U.S. Patent 8,112,529
(the “’529 patent”). The ’024, ’628, and ’866 patents are
continuations of the ’529 patent and share its specification,
and the ’073 patent is a continuation-in-part. The patents
are directed to systems for querying that provide a user
with results as the user types, rather than waiting for the
user to submit the full search term. The specifications de-
scribe several embodiments, including the exemplary
“QuestObjects” system. For example, claim 1 of the ’024
patent is presented below:
1. A system comprising:
a server system, including one or more computers,
which is configured to receive query messages from
a client object, the server system asynchronously re-
ceiving and responding to the query messages from
the client object over a network;
the client object that, while a user is providing input
comprising a lengthening string of characters, sends
query messages to the server system;
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 3
whereby the query messages represent the lengthen-
ing string as additional characters are being input
by the user; and
wherein the server system, while receiving said
query messages, uses the input to query data avail-
able to the server system and send return messages
to the client object containing results in response to
the input; and
wherein, upon receiving a return message of the re-
turn messages from the server system, the client ob-
ject tests the usability of the results in the return
message by checking that the return message corre-
sponds to the latest query, and if usability is estab-
lished, the client object displays or returns at least
some result data to the user.
’024 patent col. 31 l. 52–col. 32 l. 7 (emphases added).
MasterObjects sued Meta for infringement of the as-
serted patents in the United States District Court for the
Western District of Texas, where the case was assigned to
Judge Albright. Meta moved to transfer the case to the
Northern District of California. Pursuant to Judge Al-
bright’s Standing Order at the time, the parties proceeded
with claim construction before any ruling on the Motion to
Transfer. Appellant’s Br. at 7. Three claim construction
disputes arose between the parties: (1) the construction of
“query message,” (2) the construction of “asynchronously,”
and (3) the collateral estoppel effect, if any, of a claim con-
struction order in a prior district court case involving the
’529 patent, MasterObjects, Inc. v. Google, Inc., No. C 11-
1054, 2013 WL 2319087 (N.D. Cal. May 28, 2013) (“Google
Order”), which we summarily affirmed in MasterObjects,
Inc. v. Google, Inc., 582 F. App’x 893 (Fed. Cir. 2014).
These issues are common to all of the asserted patents.
Meta argued that the specifications of the asserted pa-
tents limit the claims to systems that send only the
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 4
changes to a user input string since the last query was sent
to the server, rather than permitting characters to be re-
sent in consecutive queries. See J.A. 344. Meta argued
that each “query message” thus consists of “just the
changes” to the user input string, rather than the full par-
tial string including portions already sent to the server.
See J.A. 357–59, 5388. For example, under Meta’s con-
struction, if a user typed “cat,” the client could send “c,”
then “a,” then “t” to the server, with each character sent as
a separate message, or the client could send “c” then “at”
as two separate messages; the server then fuses the por-
tions of the input string together to form the word “cat.”
J.A. 341. Under Meta’s construction the client never
resends characters, such as by sending “c” then “ca” then
“cat.” See Id. MasterObjects argued that the claims were
not so limited, and that Meta was reading a specific embod-
iment into the claims. J.A. 1118–19. Meta also argued that
the Google Order collaterally estopped MasterObjects from
disputing Meta’s construction. J.A. 356. MasterObjects
opposed applying estoppel, arguing that the Google order
involved a different patent with different claims and terms.
J.A. 2118.
For the other disputed term, Meta argued that, based
on the patentee’s lexicography, “asynchronously” must be
construed to require the server be able to initiate commu-
nication with the client. J.A. 349. MasterObjects disa-
greed, arguing that “asynchronously” describes the timing
of communications between the server and client after ini-
tiation (i.e., by permitting them to speak over one another),
not the initiation itself, and that Meta was pointing to a
non-limiting embodiment as supposed evidence of lexicog-
raphy. J.A. 1136. Specifically, MasterObjects argued that
“asynchronously” should be construed as either (1) plain
and ordinary meaning, (2) “[e]ach side of the communica-
tion is free to communicate without waiting for the other
side,” or (3) “each side of the communication is free to com-
municate with the other side in a non-blocking matter,”
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 5
while Meta argued it should be construed as “[b]oth the cli-
ent and the server can initiate communications at any mo-
ment in time.” See J.A. 5388.
On November 29, 2020, the Texas court provided the
parties with its preliminary constructions tentatively
adopting MasterObjects’ proposed constructions. That is,
“query message” was given its plain and ordinary meaning
and “not limited to a message/string comprising only the
changes to an input string and may include the entire input
string,” and “asynchronously” was construed as “[e]ach side
of the communication is free to communicate without wait-
ing for the other side.” Id. Following oral argument on
claim construction, the Texas court, in a minute order with-
out written opinion, adopted its preliminary constructions
as final. See J.A. 2495. Meta did not file a motion for re-
consideration in the Texas court, and those constructions
were applied throughout fact and expert discovery.
On July 13, 2021, the Texas court granted Meta’s mo-
tion to transfer the case to the Northern District of Califor-
nia, where it was assigned to Judge Alsup. See J.A. 5357,
5363. Meta did not move for reconsideration of the Texas
court’s claim construction by the California court. How-
ever, upon the close of discovery, Meta moved for summary
judgment of noninfringement, reasserting its original
claim construction positions that had been rejected by the
Texas court. J.A. 6954. MasterObjects opposed the motion,
arguing that (1) the constructions previously decided by the
Texas court were correct, and (2) because Meta had not
moved for reconsideration of those constructions, the Cali-
fornia court was precluded from adopting different con-
structions. J.A. 8771.
Approximately three weeks before the scheduled trial
date, the California court granted Meta’s motion for sum-
mary judgment of noninfringement and entered judgment
in favor of Meta. The court first found that Meta did not
need to file a motion for reconsideration, or even satisfy a
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 6
motion-for-reconsideration standard, and that the court
was not precluded from “determining a different construc-
tion.” Decision at *3. The court pointed out that the origi-
nal constructions by the Texas court were finalized in a
minute order, providing “nothing on which to base [a mo-
tion for reconsideration] evaluation.” Id.
The California court also found that, in view of the
Google Order, collateral estoppel precluded MasterObject’s
construction of “query message.” Although the Google Or-
der construed a different term in the ’529 patent and re-
lated U.S. Patent 8,060,639 (the “’639 patent”), the court
noted that the asserted patents were in the same family
and that “they all share a common specification.” Id. at *4.
It found that the Google Order:
was based on the following passage from that com-
mon specification (emphasis added):
If the results are not found in the cache, the
Client Quester uses the Client Controller
to send the new input buffer to the Server
Quester, so that a new query can be exe-
cuted (step 611). To support this, the pro-
tocol of the present invention provides a
number of messages that allow the Client
Quester to send just the changes to the input
buffer, instead of sending the entire input
buffer[.]
(’024 patent 20:11–17).
Id. The court emphasized that the Google Order found
“that the use of ‘the current invention’ here indicates that
the description is intended to apply to the invention as a
whole, and not just a single embodiment.” Id. (quoting
Google Order at *12). The court therefore found that the
claim construction issue in this case was “identical” to the
one addressed in the Google Order: “whether the specifica-
tion limits the claimed invention such that the client sends
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 7
‘just the changes’ to the server.” Id. It further found that
the asserted claims did “not differ substantively from the
claims considered in Google such that collateral estoppel
would not apply.” Id. The court therefore adopted Meta’s
proposed “just the changes” construction of “query mes-
sage.” Id. at *4–6.
For “asynchronously,” the California court first
acknowledged that “[a]synchronous in the general, com-
puter programming sense broadly refers to ‘something that
is not depending on timing.’” Id. at *6 (citation omitted).
It then found that, although it was “not bound to the con-
struction adopted in Texas,” it “need not adjust the prior
construction because it adequately captures the nature of
the term.” Id. at *6. However, the court ultimately added
to the Texas court’s construction Meta’s previously rejected
proposed requirement that “[b]oth the client and the server
can initiate communications at any time.” Id. It relied pri-
marily on language in the specification that “[t]he system
is bi-directional and asynchronous, in that both the Client
and the Server can initiate communications at any moment
in time.” Id. (quoting ’024 patent, col. 12 ll. 24–26) (empha-
sis added by the California court). MasterObjects argued
that that language described a non-limiting embodiment
called “QuestObjects.” The court acknowledged that
QuestObjects was “a preferred embodiment,” but found
that the relevant passage of the specification was not em-
bodiment-specific. Id. at *6. Based on that understanding,
the court adopted a server initiation requirement for “asyn-
chronously.” Id. at *6–9.
In light of its new constructions, the California court
granted summary judgment of noninfringement and en-
tered judgment in favor of Meta accordingly. See id. at *9;
J.A. 17. MasterObjects timely appealed. We have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 8
D ISCUSSION
We review a district court’s grant of summary judg-
ment under the law of the regional circuit, in this case the
Ninth Circuit. Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 974
(Fed. Cir. 2022). The Ninth Circuit reviews a district
court’s grant of summary judgment de novo. Id.
I
We first address whether or not MasterObjects is col-
laterally estopped from asserting that “query message” is
not limited to “just the changes.” We review a district
court’s application of collateral estoppel de novo. e.Digital
Corp. v. Futurewei Techs., Inc., 772 F.3d 723, 726 (Fed. Cir.
2014). That review is guided by regional precedent, but we
apply this Court’s precedent to any aspects that involve
“substantive issues of patent law.” Ohio Willow Wood Co.
v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (citing
Aspex Eyewear, Inc. v. Zenni Optical, Inc., 713 F.3d 1377,
1380 (Fed. Cir. 2013)). The Ninth Circuit also reviews a
district court’s application of collateral estoppel de novo.
Wolfson v. Brammer, 616 F.3d 1045, 1064 (9th Cir. 2010).
Collateral estoppel only applies if: “(1) the issue neces-
sarily decided in the previous proceeding is identical to the
one which is sought to be relitigated; (2) the first proceed-
ing ended with a final judgment on the merits; and (3) the
party against which collateral estoppel is asserted was a
party or in privity with a party at the first proceeding.”
e.Digital, 772 F.3d at 726 (citing Hydranautics v. FilmTec
Corp., 204 F.3d 880, 885 (9th Cir. 2000)).
As explained above, the Google Order involved the ’529
patent, from which the asserted patents claim priority, and
the related ’639 patent. The court in the Google Order con-
sidered the common construction of four phrases each us-
ing the term “additional characters.” Google Order at *11.
The Google court adopting Google’s proposed construction
that the “additional characters” phrases meant “only the
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 9
changes to the input string that were not sent in any pre-
vious consecutive query.” Id. at *12. In reaching that de-
termination, the court focused on “the claim language
itself,” finding that that the language “suggests that the
‘lengthening string’ is formed by piecing together multiple
smaller queries, rather than by receiving iteratively longer
versions of the string.” Id. (quoting the ’529 patent claims).
It went on to note that:
Claim 1 of the ’529 patent describes how “consecu-
tive additional characters” are input at the client
and sent as “consecutive queries” to the server,
“wherein each of the corresponding consecutive
queries lengthens the string by the additional char-
acters, to form a lengthening string.” The server
then “receiv[es] each of the corresponding consecu-
tive queries that modify the lengthening string.”
The words “lengthens” and “modify” suggest that
the server is not wiping its slate clean with each
new submitted query, but is instead combining the
queries to form the “lengthening string.”
Id. (quoting ’529 patent, claim 1). Only after considering
the claim language did the court find that “[t]he specifica-
tion confirms this understanding.” Id. (emphasis added).
It is not clear that the Google Order’s interpretation of
the specification was essential to its construction. Alt-
hough the Google Order suggests that portions of the com-
mon specification may limit the overall invention, it did not
clearly find lexicography or disavowal. See Clark v. Bear
Stearns & Co., 966 F.2d 1318, 1320 (9th Cir. 1992) (“The
party asserting preclusion bears the burden of showing
with clarity and certainty what was determined by the
prior judgment.”). There is no mention of lexicography or
disavowal in the Google Order, or even in the parties’ briefs
to that court. See Appellant’s Reply Br. at 12–13. And the
Google Order only relies on the specification to “confirm”
its understanding of the disputed terms based on the
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 10
surrounding claim language. Google Order at *12. We
summarily affirmed the Google Order without opinion, and
thus without explaining whether the language in the spec-
ification was necessary for the affirmed construction. Mas-
terObjects, 582 F. App’x 893; Fed. Cir. R. 36. Because the
claim language may provide an independent basis for the
construction, there is doubt that the Google Order’s inter-
pretation of the specification was necessary to the judg-
ment, as is required for collateral estoppel to apply.
e.Digital, 772 F.3d at 726.
Moreover, the Google Order’s focus on the specific claim
language at issue is significant. The ’024, ’628, and ’866
patents are continuations of the ’529 patent and share its
specification, while the ’073 patent is a continuation-in-
part. However, “a court cannot impose collateral estoppel
to bar a claim construction dispute solely because the pa-
tents are related.” e.Digital, 772 F.3d at 727. Rather, we
must consider whether or not the intrinsic record for each
patent, including the claims, differs in a material way. The
“additional character” phrases at issue in the Google Order
do not appear in the claims of asserted patents here. And
neither does any of the surrounding claim language consid-
ered in the Google Order, such as “lengthens” or “modify.”
See eBay Inc. v. MasterObjects, Inc., No. IPR2017-00740,
2017 WL 3209158, at *4 (P.T.A.B. July 27, 2017) (finding
in an Institution Decision that estoppel did not apply to the
construction of “query message” in the ’024 patent claims,
in part because the Google Order “construed the term ‘ad-
ditional characters’ in view of additional claim language,
‘lengthens’ and ‘modify,’” which did not appear in the ’024
patent claims). Rather, the claims at issue here include a
different term, “query message,” with different surround-
ing language, such as “corresponds” and “represents.” See,
e.g., ’024 patent, claim 1. Meta asks us to apply an estoppel
effect to a prior court’s construction of a different term in a
different patent with different surrounding claim lan-
guage. We decline to do so, as we do not find the issues to
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 11
be identical. See, e.g., Trading Techs. Int’l, Inc. v. Open E
Cry, LLC, 728 F.3d 1309, 1319–20 (Fed. Cir. 2013) (finding
that a prior decision that opined on the patent’s specifica-
tion “merely determined the best construction for a single
disputed claim term, a term that is absent from the
claims . . . now before us”).
Further, the ’073 patent is a continuation-in-part that
includes substantial new material in its specification while
incorporating the ’529 specification by reference. Although
we do not find applying estoppel appropriate for any of the
asserted patents, it would be particularly inappropriate to
apply estoppel effect to the ’073 patent, as the ’073 specifi-
cation differs in material ways from those at issue in the
Google Order. See e.Digital, 772 F.3d at 727 (“A continua-
tion-in-part, for instance, may disclose new matter that
could materially impact the interpretation of a claim, and
therefore require a new claim construction inquiry.”). For
example, it includes additional language, such as that, in
some embodiments, the server “does not remember infor-
mation . . . and does not combine the input requests” and
that “each request from the client . . . represents the full
information needed.” ’073 patent, col. 31 ll. 23–28, 46–49.
When considering a specification for purposes of claim con-
struction, it is important to consider it as a whole, which
the Google Order simply could not have done for the ’073
patent. See SanDisk Corp. v. Memorex Prods., Inc.,
415 F.3d 1278, 1285 (Fed. Cir. 2005) (“The court must al-
ways read the claims in view of the full specification.”);
Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379–80
(Fed. Cir. 2001) (“In construing terms used in patent
claims, it is necessary to consider the specification as a
whole . . . .”). The California court thus erred in not con-
sidering any potentially material differences in the disclo-
sures between the previously litigated patents and the ’073
patent.
We therefore reverse the decision of the California
court and hold that collateral estoppel does not apply to the
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 12
construction of the term “query message” based on the
Google Order.
II
We next turn to the construction of the disputed terms
“query message” and “asynchronous.” We review “a district
court’s claim construction and its interpretations of intrin-
sic evidence de novo” and “any subsidiary fact findings
based on extrinsic evidence for clear error.” Apple, 25 F.4th
at 967. “Absent lexicography or disavowal, we do not de-
part from the plain meaning of the claims.” Luminara
Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353
(Fed. Cir. 2016). In order for a patentee to act as its own
lexicographer, it must “clearly set forth a definition of the
disputed claim term” and “clearly express an intent to re-
define the term.” Thorner v. Sony Comput. Ent. Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012) (internal quotation
marks and citation omitted). Likewise, disavowal occurs
only when there is a clear and unmistakable intent to ex-
clude a particular feature from the claimed invention. Lu-
minara, 814 F.3d at 1353.
A. “Query Message” Construction
MasterObjects argues that, as the Texas court found,
“query message” should be given its plain and ordinary
meaning such that it is “not limited to a message/string
comprising only the changes to an input string, and may
include the entire input string.” Appellant’s Br. at 17.
Meta argues that, as the California court found, “[e]ach
query consists of only the changes to the input string that
were not sent in any previous consecutive query.” Appel-
lee’s Br. at 34–35. Meta does not argue that any claim lan-
guage limits “query message” in such a manner, but rather
points to a passage of the specification, which provides:
“[T]he protocol of the present invention provides a number
of messages that allow the Client Quester to send just the
changes to the input buffer, instead of sending the entire
input buffer.” Id. (quoting ’024 patent, col. 20 ll. 14–17).
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 13
Meta argues that, by using the language “the present in-
vention,” that text applies to and limits the invention as a
whole. Id. MasterObjects responds that that statement is
limited to a specific embodiment, as evident from the per-
missive language, “allow,” and placement within the spec-
ification. Appellant’s Br. at 30–31.
We agree with MasterObjects that “query message” is
not limited as Meta suggests. Claim construction “begins
and ends . . . with the actual words of the claim.” Teleflex,
Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir.
2002) (quoting Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998); see also In-
nova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1116–17 (Fed. Cir. 2004). Nothing in the
claim language limits “query message” to “just the
changes.” And even when a patent only describes a single
embodiment, the claims are not necessarily construed as
being limited to that embodiment. See Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). We
must avoid importing limitations from the specification
into the claims. Id. Although Meta correctly observes that
we have previously found statements including “the pre-
sent invention” to indicate clear and unmistakable disa-
vowal, see, e.g., Regents of Univ. of Minn. v. AGA Med.
Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l,
Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir.
2006), we have also found that the phrase “is not always so
limiting,” Absolute Software, Inc. v. Stealth Signal, Inc.,
659 F.3d 1121, 1136 (Fed. Cir. 2011). In this case, the spec-
ification language Meta points to merely describes what is
“allow[able].” ’024 patent, col. 20 ll. 14–17; see also id. col.
11, ll. 57–61 (describing “sending single characters” as an
“optimiz[ation]”). None of the passages Meta cites unam-
biguously makes clear that sending “just the changes” is
required, to the exclusion of re-sending characters previ-
ously sent, and do not amount to clear and unmistakable
disavowal of sending more than just the changes. See
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 14
Absolute Software, 659 F.3d at 1137 (relying on terms like
“can” as indicating that a feature was “optional” when con-
cluding that there was no disavowal); Cont’l Cirs. LLC v.
Intel Corp., 915 F.3d 788, 797–98 (Fed. Cir. 2019) (similar).
Moreover, the only time the term “query message” is
used in the specification, albeit in another context, it refers
to sending a multiple-character string “ab”, after sepa-
rately receiving, at the server, the letter “a” then the letter
“b.” See id. col. 18 l. 45–col. 19 l. 2 (“send the appropriate
query message ‘ab’”). This passage is not conclusive on its
own but provides further support for our conclusion that
there was no clear and unmistakable disavowal.
Because we do not find clear and unmistakable disa-
vowal, we do not depart from the plain and ordinary mean-
ing of the term. We therefore find that “query message”
should be construed as not limited to a message/string com-
prising only the changes to an input string and may include
the entire input string.
B. “Asynchronous” Construction
MasterObjects argues that the “asynchronous” terms
should not require that the server be able to initiate com-
munications, whereas Meta argues that both server and
the client must be able to initiate communications. Meta
argues that the patentee acted as its own lexicographer
and that the specification defines the claimed system as
“bi-directional and asynchronous, in that both the Client
and the Server can initiate communications at any moment
in time.” Id. col. 12 ll. 24–26. It argues that the use of “in
that” signifies what “asynchronous” means without limita-
tion to a particular embodiment. Appellee’s Br. at 45. Mas-
terObjects contends that that language was concerning a
specific embodiment, QuestObjects, and is therefore non-
limiting. Appellant’s Br. at 41.
We agree with MasterObjects that the patentee did not
act as its own lexicographer. In order for a patentee to have
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 15
acted as its own lexicographer, it “must ‘clearly express an
intent’ to redefine the term.” Thorner, 669 F.3d at 1365
(quoting Helmsderfer v. Bobrick Washroom Equip., Inc.,
527 F.3d 1379, 1381 (Fed. Cir. 2008)). “It is not enough for
a patentee to simply disclose a single embodiment or use a
word in the same manner in all embodiments . . . .” Id. We
see no clear intent to define “asynchronous” as requiring
the server to be capable of initiating communication. Alt-
hough lexicography requires no formal phrases or magic
words, Astrazeneca AB, Aktiebolaget Hassle, KBI-E, Inc. v.
Mut. Pharm. Co., 384 F.3d 1333, 1339 (Fed. Cir. 2004),
Meta does not point us to any prior decision that has held
that “in that” signifies a clear intent to define a term, and
we decline to do so here. Further, the statement at issue is
not simply referring to “asynchronous” alone, but “bi-direc-
tional and asynchronous,” making the patentee’s intent
even less clear. ’024 patent, col. 12 ll. 24–26.
Moreover, the use of “Client” and “Server” with capital
letters supports our conclusion that the statement in ques-
tion is limited to the QuestObjects embodiment and does
not speak to the broader invention as a whole. Indeed,
Meta acknowledged during claim construction in the Texas
court that “[t]he common specification . . . proceeds to cap-
italize ‘Client’ and ‘Server’ when it speaks of a specific em-
bodiment.” See Meta’s Resp. Claim Constr. Br. at 13, J.A.
2126 (citing ’024 patent, col. 11 ll. 50–65). See also Master-
Objects, Inc. v. eBay, Inc., No. 3:12-cv-680, 2013 WL
1287428, at *4 (N.D. Cal. Mar. 28, 2013), and MasterOb-
jects, Inc. v. Yahoo!, Inc., No. C 11-02539, 2013 WL
6185475, at *4 (N.D. Cal. Nov. 26, 2013) (considering the
same portion of the specification and finding that it de-
scribed a specific embodiment, QuestObjects). As the Cal-
ifornia court recognized, QuestObjects is merely
exemplary, the “preferred embodiment.” Decision at *6.
The discussion of “asynchronous” in relation to that embod-
iment does not amount to a clear and unmistakable
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 16
disavowal. We therefore must apply the plain and ordinary
meaning of “asynchronous.” Luminara, 814 F.3d at 1353.
We agree with the California court that “[t]he language
of the claims does not indicate that only the client initiates
communications while the server lacks such functionality,”
Decision at *7, but it does not follow that the claims require
the server also be able to initiate communications. We
therefore construe “asynchronously” to mean that, after in-
itiation of communication, each side of the communication
(i.e., the client or server) is free to communicate without
waiting for the other side. The server need not be, but may
be, capable of initiating communication. That construction
is consistent with the specification and the California
court’s finding that “asynchronous” “in the general com-
puter programming sense broadly refers to ‘something that
is not depending on timing,’” with which we see no clear
error. Decision at *6.
III
MasterObjects argues that the California court should
not have revisited the issue of claim construction, particu-
larly without a motion for reconsideration and after the
close of discovery. Meta argues that a district court is free
to reassess constructions as a case proceeds, especially
when, like here, there was no written opinion explaining
the constructions. Because we reverse the California
court’s constructions on the merits (i.e., the constructions
and application of collateral estoppel), we need not reach
this issue.
CONCLUSION
Because the California court’s decision to grant sum-
mary judgment of noninfringement was based on its erro-
neous application of collateral estoppel and constructions
of “query message” and “asynchronous,” with which we dis-
agree, the summary judgment decision is reversed, and this
case is remanded for further proceedings.
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MASTEROBJECTS, INC. v. META PLATFORMS, INC. 17
REVERSED AND REMANDED
COSTS
Costs to appellant.
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