       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

        ROTATABLE TECHNOLOGIES LLC,
               Plaintiff-Appellant,

                           v.

     MOTOROLA MOBILITY LLC, SAMSUNG
    TELECOMMUNICATIONS AMERICA, LLC,
  SAMSUNG ELECTRONICS AMERICA, INC., AND
               APPLE INC.,
            Defendants-Appellees.
           ______________________

                      2014-1042
                ______________________

   Appeal from the United States District Court for the
Eastern District of Texas in No. 2:12-CV-00265, Judge J.
Rodney Gilstrap.
                 ______________________

                Decided: June 27, 2014
                ______________________

   TIMOTHY T. WANG, Ni, Wang & Associates, PLLC, of
Dallas, Texas, argued for the plaintiff-appellant. With
him on the brief was HAO NI.

    JESSE J. JENNER, Ropes & Gray LLP, of New York,
New York, argued for all defendants-appellees. With him
on the brief were GENE W. LEE; and JANICE V. JABIDO, of
2   ROTATABLE TECHNOLOGIES LLC   v. MOTOROLA MOBILITY LLC



Chicago, Illinois, for Samsung Telecommunications Amer-
ica, LLC, et al. Of counsel on the brief were RODERICK M.
THOMPSON, EUGENE Y. MAR and DANIEL C. CALLAWAY,
Farella Braun + Martel LLP, of San Francisco, California,
for Motorola Mobility LLC; SUSAN K. KNOLL and KEANA
TAYLOR, Wong, Cabello, Lutsch, Rutherford & Brucculeri,
LLP, of Houston, Texas, for Apple, Inc.
                   ______________________

Before O’MALLEY, TARANTO, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
    Rotatable Technologies LLC argues that the preamble
term “selectively rotating” is not a claim limitation. A
preamble may limit the claimed invention if it recites
additional structure or steps that the specification under-
scores as important, or if it is clearly relied on during
prosecution to distinguish the claimed invention from the
prior art. Because the intrinsic record emphasizes the
importance of “selectively rotating” and because the
prosecution history shows that the patentee relied on the
term “selectively rotating” to distinguish the claimed
invention from prior art, the district court correctly de-
termined that “selectively rotating” is a claim limitation.
We affirm.
                            I.
    In the district court, Rotatable alleged that Motorola
Mobility LLC, Samsung Telecommunications America,
LLC, Samsung Electronics, Inc., and Apple Inc. infringe
claims 9, 11, 13, 14, 16, and 18 of U.S. Patent No.
6,326,978. The ’978 patent relates to a method of allow-
ing a user to selectively rotate a display window in a
graphical user interface, e.g., in Microsoft Windows. ’978
patent col. 1 ll. 6–21. Following the district court’s
Markman order, the parties stipulated to noninfringe-
ment. Rotatable appeals, among other things, that the
preamble term “selectively rotating” is not a claim limita-
ROTATABLE TECHNOLOGIES LLC    v. MOTOROLA MOBILITY LLC      3



tion and that, if the term is a claim limitation, the district
court erred in its construction of the term. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
                             II.
    “Claim construction is a legal statement of the scope
of the patent right” that we review de novo. Lighting
Ballast Control LLC v. Philips Elecs. N. Am. Corp., 744
F.3d 1272, 1276–77, 1284 (Fed. Cir. 2014) (en banc);
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.
Cir. 1998) (en banc). “[T]he words of a claim ‘are general-
ly given their ordinary and customary meaning.’” Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc) (citations omitted). But we will adopt an alterna-
tive meaning if the intrinsic record “shows that the pa-
tentee distinguished that term from prior art on the basis
of a particular embodiment, expressly disclaimed subject
matter, or described a particular embodiment as im-
portant to the invention.” Edwards Lifesciences LLC v.
Cook Inc., 582 F.3d 1322, 1329 (Fed. Cir. 2009) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366–67 (Fed. Cir. 2002)).
     Whether a preamble limits a claimed invention is a
question of law that we review de novo. Catalina Mktg.,
Int’l v. Coolsavings.com, 289 F.3d 801, 807–08 (Fed. Cir.
2002). A preamble may limit the invention if it “recites
essential structure or steps, or if it is ‘necessary to give
life, meaning and vitality’ to the claim.” Id. (quoting
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999)). When reciting additional structure
“underscored as important by the specification, the pre-
amble may operate as a claim limitation.” Id. at 808.
Moreover, “clear reliance on the preamble during prosecu-
tion to distinguish the claimed invention from the prior
art transforms the preamble into a claim limitation.” Id.
4    ROTATABLE TECHNOLOGIES LLC          v. MOTOROLA MOBILITY LLC



                                  III.
    The preambles of claims 9 and 14 of the ’978 patent
recite “selectively rotating a computer display window.”
’978 patent col. 5 ll. 25–26, col. 6 ll. 11–12. Rotatable
appeals the district court’s determination that this term is
a claim limitation and that the term means “rotating a
computer display window such that any angle of orienta-
tion may be chosen.” Appellant’s Br. 2.
     “Selectively rotating” limits the claimed invention.
The specification is replete with references to “selectively
rotating,” underscoring the importance of the feature to
the claimed invention. See, e.g., Poly-America, L.P. v.
GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed. Cir.
2004). For example, the ’978 patent’s title, abstract,
background of the invention, summary of the invention,
description of the drawings, detailed description, and all
independent claims recite “selectively rotating.” See ’978
patent [54], [57], col. 1 ll. 1–2, col. 2 ll. 18–19, col. 2 l. 31,
col. 2 l. 47, col. 2 l. 58, col. 2 l. 66, col. 4 l. 56, col. 5 l. 8, col.
5 l. 25, col. 6 l. 11.
    Further, the prosecution history shows “clear reliance
on the preamble” to distinguish the claimed invention
from the prior art. Catalina, 289 F.3d at 808. The Exam-
iner rejected claims 9 and 14 as obvious in view of U.S.
Patent Nos. 6,016,145 (Horvitz) and 5,956,043 (Jensen)
because “Horvitz discloses a way to rotate a window and
Jensen discloses a way to coplanar rotate a window de-
fined pixel region.” J.A. 220. In response, the patentee
asserted:
    “[i]n all instances [as taught by Horvitz], the edg-
    es of the window always remain parallel to two of
    the three x-, y-, and z-axes.” By contrast, a win-
    dow that has been selectively rotated to an angle,
    other than 0, 90, 180, 270, and 360 degrees, as
    claimed will have none of its edges parallel to the
    three x-, y-, and z-axes. Thus, the suggested mod-
ROTATABLE TECHNOLOGIES LLC    v. MOTOROLA MOBILITY LLC     5



    ification would result in a change to the principle
    of operation of Horvitz. As a result, the teachings
    of the references are not sufficient to render the
    claims prima facie obvious.
Rotatable Techs. LLC v. Nokia, No. 2:12-CV-265-JRG,
2013 WL 3992930, at *7 (E.D. Tex. Aug. 2, 2013) (altera-
tions and emphases in original) (quoting an earlier
Amendment). Later, on appeal to the Board of Patent
Appeals and Interferences, the patentee repeated the
same argument, this time including quotation marks
around the phrase “selectively rotated.” J.A. 159. In light
of the foregoing, we affirm the district court’s determina-
tion that “selectively rotating” is a claim limitation.
     Rotatable argues that even if “selectively rotating” is
a limitation, the district court’s construction erroneously
excludes embodiments in which rotation is limited to
predetermined increments and preselected orientations.
The ’978 patent does state that “rotation may be freely
chosen or limited to selected angles.” ’978 patent col. 2 ll.
37–39 (emphasis added); see also id. col. 3 ll. 46–50, col. 4
ll. 15–17. But during prosecution, the patentee explained
that Horvitz discloses only embodiments in which the
edges of the rotated windows remain parallel to two of
three orthogonal axes, i.e., oriented at predetermined
angles of 0, 90, 180, 270, or 360 degrees to one another.
J.A. 159.      The patentee further stated that, unlike
Horvitz, “a window that has been ‘selectively rotated’ to
an angle, other than 0, 90, 180, 270, and 360 degrees, as
claimed will have none of its edges parallel to the three x-,
y-, and z-axes.” Id. (emphasis added). Given these state-
ments during prosecution, the district court correctly
construed “selectively rotating” as “rotating a computer
display window such that any angle of orientation may be
chosen.” Thus, we affirm the district court’s construction
of “selectively rotating.”
6   ROTATABLE TECHNOLOGIES LLC     v. MOTOROLA MOBILITY LLC



    The parties stipulated to noninfringement, agreeing
that none of the accused products practice the “selectively
rotating” limitation, as construed by the district court.
Because we affirm the district court’s determination that
“selectively rotating” is a claim limitation and the district
court’s construction of the term, we need not address
Rotatable’s remaining arguments.
                       AFFIRMED
    No costs.
