       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

           SUPERIOR INDUSTRIES, INC.,
                Plaintiff-Appellant,

                           v.

                   MASABA, INC.,
                  Defendant-Appellee.
                ______________________

                      2013-1302
                ______________________

    Appeal from the United States District Court for the
District of Minnesota in No. 10-CV-0764, Judge Donovan
W. Frank.
                 ______________________

               Decided: January 16, 2014
                ______________________

   JOHN M. WEYRAUCH, Dicke, Billig & Czaja, PLLC, of
Minneapolis, Minnesota, argued for plaintiff-appellant.
With him on the brief were PAUL P. KEMPF and PETER R.
FORREST. Of counsel was PATRICK G. BILLIG.

   TIM R. SHATTUCK, Woods, Fuller, Shultz & Smith,
P.C., of Sioux Falls, South Dakota, argued for defendant-
appellee.    With him on the brief was SANDER J.
MOREHEAD. Of counsel on the brief was JEFFREY C.
2                    SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.



BROWN, Sapientia Law Group PLLC, of Minneapolis,
Minnesota.
              ______________________

     Before RADER, Chief Judge, CLEVENGER, and REYNA,
                      Circuit Judges.
    Opinion for the court filed by Circuit Judge CLEVENGER.
      Concurring opinion filed by Chief Judge RADER.
CLEVENGER, Circuit Judge.
     This case involves five patents that Appellant Superi-
or Industries, Inc. (“Superior”) has asserted against
Appellee Masaba, Inc. (“Masaba”). Following the district
court’s construction of several terms in these patents,
Superior conceded that it could not prevail on its in-
fringement claims against Masaba and successfully
moved for summary judgment of non-infringement and
dismissal of Masaba’s invalidity counterclaims. Although
the opinion and order granting summary judgment of
non-infringement recited Superior’s acknowledgment that
it could not establish infringement under the court’s claim
construction, it did not explain how the construction of
any particular term affected the infringement analysis.
    Superior expressly reserved the right to challenge the
district court’s claim construction on appeal, and does so
now. But because it is unclear from the record how the
disputed constructions relate to infringement, we vacate
the district court’s judgment and remand for further
clarification.
                        BACKGROUND
    On March 12, 2010, Superior asserted five patents
against Masaba in the United States District Court for
the District of Minnesota. Superior’s patents relate to
bulk material handling equipment and fall into two
SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.               3



categories, referred to by the parties as the “undercar-
riage patents” and the “unloader patents,” respectively.
                               I
    The undercarriage patents include U.S. Patent Nos.
7,470,101 (“the ’101 patent”) and 7,618,213 (“the ’213
patent”). These patents describe Superior’s support strut
system, or undercarriage, for a conveyer belt that carries
and deposits bulk material and is raised as the pile of
deposited material grows. Masaba manufactures and
sells conveyors of its own design that also use a support
strut system.
     After briefing and a Markman hearing, the district
court construed several terms in the undercarriage pa-
tents consistent with Masaba’s proposed constructions.
Two of these constructions are in dispute on appeal. The
first, “channel beam,” or “C-shaped channel beam,” ap-
pears in claims 1, 6, and 8 of the ’101 patent and claims 1,
7, 14, and 15 of the ’231 patent. The district court con-
strued this term as a metal beam with three full sides and
a fourth partial side.
    The second disputed term, “elongate opening,” ap-
pears in claims 1, 2, and 6 of the ’101 patent and claims 1,
7, 14, and 15 of the ’231 patent. The district court con-
strued this term as a slot defined by the partial fourth
side of the channel beam.
                               II
    The truck unloader patents include U.S. Patent Nos.
7,424,943 (“the ’943 patent”), 7,607,529 (“the ’529 pa-
tent”), and 7,845,482 (“the ’482 patent”). These patents
claim a system for handling bulk material unloaded from
a dump truck. In the claimed system, a truck drives up
an on-site ramp onto a prefabricated low-profile ramp,
material is dumped onto a grate, and the material is
taken up a conveyor belt. The system includes a support
4                 SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.



frame beneath each ramp section that defines a barrier
between the pre-fabricated ramp and the on-site ramp.
    Masaba has created five different truck unloader de-
signs (models A, B, C, D, and E), and has manufactured
and sold one each of models A–D. Brief in Support of
Masaba’s Motion for Summary Judgment 5. The model
being manufactured and sold by Masaba today, model E,
unlike Superior’s claimed system, does not include a
support frame. Higman Affidavit Exhibit E.
    After the Markman hearing, the district court con-
strued multiple terms in the unloader patents consistent
with Masaba’s proposed constructions, including: “ramp
section,” “U-shaped frame,” “end frame member,” and
“drive-on ramp” in the ’482 patent; “ramp support frame,”
“defining a barrier,” “configured to support an earthen
ramp at a level even with the drive over surface,” and
“maintain[ing] support of the earthen ramp” in the ’529
patent; and “support frame,” “frame member [] configured
to support an end of an earthen ramp constructed against
the frame member,” “to provide a material transport
vehicle access to the first and second ramps,” and “to
maintain integrity of the earthen ramp” in the ’943 pa-
tent.
                           III
    Superior conceded that it could not prevail on its in-
fringement claims under the district court’s claim con-
structions and moved for summary judgment of non-
infringement subject to the right to appeal the construc-
tions. Superior also moved to dismiss Masaba’s invalidity
counterclaims, and Masaba cross-moved for summary
judgment of non-infringement.
    The district court granted Superior’s motions and
dismissed Masaba’s motion as moot. Superior Indus. LLC
v. Masaba, Inc., No. 10-764, 2013 WL461541, at *2–3 (D.
Minn. Feb. 7, 2013) (“Superior”). In its opinion and order
SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.               5



granting Superior’s motions, the district court noted
Superior’s acknowledgment that it could not establish
infringement for any of the asserted patents. Id. at *1.
For this reason, the court concluded that “under the
Court’s claim construction, there are no material facts in
dispute regarding Masaba’s alleged infringement of the
patents-in-suit,” id. at *2, and granted summary judg-
ment of non-infringement in favor of Masaba. The opin-
ion and order included no further analysis of Superior’s
infringement claims and no discussion of how the court’s
construction of any given term affected the infringement
analysis.
     Superior now appeals the district court’s construction
of thirteen claim terms in the undercarriage and unloader
patents.     We have jurisdiction under 28 U.S.C. §
1295(a)(1).
                       DISCUSSION
                               I
     When a judgment that comes to us on appeal suffers
from an ambiguity on the grounds for decision, we have
the authority to remand for further clarification. See
Bush v. Palm Beach County Canvassing Bd., 531 U.S. 70,
78 (2000). In particular, when asked to review a district
court’s claim constructions, we have remanded when the
record provided an insufficient basis for meaningful
review. Jang v. Boston Scientific Corp., 532 F.3d 1330
(Fed. Cir. 2008); Nazomi Commc’ns, Inc. v. ARM Hold-
ings, PLC, 403 F.3d 1364, 1371–72 (Fed. Cir. 2005).
     Our opinion in Jang is instructive. Following the dis-
trict court’s claim construction in Jang, the parties stipu-
lated that the patentee could not prove infringement. 532
F.3d at 1332–1333. Based on the stipulation, the district
court entered partial summary judgment of non-
infringement in favor of the alleged infringer. Id. Nei-
ther the stipulation nor the court’s judgment provided any
6                  SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.



detail about how the court’s construction affected the
infringement analysis. Id.
    When the patentee in Jang contested the district
court’s claim construction on appeal, we determined that
the court’s judgment suffered from two ambiguities justi-
fying remand. Id. at 1335–1336.
    First, we noted that it was “impossible to discern from
the stipulated judgment which of the district court’s claim
construction rulings would actually affect the issue of
infringement.” Id. at 1336. We explained that this pre-
sented a “risk [of] rendering an advisory opinion as to
claim construction issues that do not actually affect the
infringement controversy,” id., a risk that was of signifi-
cant concern given that Article III tribunals have no
jurisdiction to render such opinions.
    Second, we expressed our concern that “the stipulated
judgment provide[d] no factual context for the claim
construction issues presented by the parties.” Id. at 1337.
We explained that this missing context made it difficult
for us to understand the issues and provide meaningful
review.
   Because of the two ambiguities in Jang, we deter-
mined that remand for further clarification of the issues
was appropriate.
                            II
    The case before us implicates the same two concerns
that justified remand in Jang.
                            A
    First, the district court’s summary judgment opinion
and order does not explain how its construction of any
term would affect Superior’s infringement claims. The
opinion states only that, in light of the court’s claim
construction, “Superior acknowledges that it cannot
establish infringement of any of the claims of the patents-
SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.               7



in-suit.” Superior at *1. It is impossible for us to deter-
mine from this opinion which of the thirteen contested
claim constructions would “actually affect” the infringe-
ment analysis. This poses a risk that our review of at
least some of these constructions would amount to an
advisory opinion.
    Nor was this concern adequately addressed by the
briefing or at oral argument. In fact, the limited infor-
mation about infringement provided by the parties exac-
erbates this concern.
    With respect to the undercarriage patents, for exam-
ple, Superior contests the district court’s construction of
the term “channel beam.” The parties dispute whether
the term denotes a beam with three sides or whether it
denotes a beam that necessarily includes a partial fourth
side. 1 But in its brief, Masaba claims that the allegedly
infringing support strut system does not use a channel
beam at all. Appellee Br. 12 (“Masaba’s strut design lacks
a ‘beam’ with a ‘channel’[.]”). Masaba also asserted at
oral argument that its product does not use a channel
beam. Oral Argument at 21:36–21:43. If this is true,
then the question of whether the claimed channel beam
requires a partial fourth side is irrelevant to infringement
and any guidance we provide on this question would be
advisory. Although Superior contested Masaba’s charac-
terization of the allegedly infringing product at oral
argument, Oral Argument at 2:49–3:15, it is still far from
clear to us whether Masaba’s product uses a channel
beam. In this regard, there is no finding of fact in the
record to which we can turn for assistance. Id. at 26:26–
27:12. We thus cannot be certain that our review of the
district court’s construction would have any effect on the
infringement analysis.


   1    The district court construed the term as requiring
a partial fourth side.
8                  SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.



    There is similar uncertainty for several of the disput-
ed terms in the unloader patents. Many of these terms,
including “U-shaped frame,” “end frame member,” “ramp
support frame,” “defining a barrier,” “configured to sup-
port an earthen ramp at a level even with the drive over
surface,” “maintain[ing] support of the earthen ramp,”
“support frame,” and “frame member [] configured to
support an end of an earthen ramp constructed against
the frame member,” involve the support frame located
under the ramp sections in the claimed unloader system.
    Not all of Masaba’s accused unloader systems include
a support frame, however. At oral argument, the parties
agreed that Masaba’s “E” model unloader—the model that
Masaba manufactures and sells today—does not include a
support frame. Oral Argument at 4:20–4:32, 9:10–10:50,
25:30–25:49. Masaba also claimed at oral argument that
its unloader models A–D do not use a support frame, id.
at 25:30–26:15, although Superior apparently contests
this, id. at 4:20–4:32, 10:50–11:05.
    If none of the accused products includes a support
frame, then the multiple terms relating to the support
frame are irrelevant to the infringement analysis and our
review of the district court’s construction of these terms
would be an impermissible advisory opinion. The risk of
issuing such an opinion suggests that remand for clarifi-
cation is warranted here.
                             B
    Also implicated here is the concern of insufficient fac-
tual context. As in Jang, there is nothing in the district
court’s summary judgment order and opinion that “pro-
vides any context with respect to how the disputed claim
construction rulings relate to the accused products.” 532
F.3d at 1337. Although we may choose to review a judg-
ment with thin factual context if sufficient context can be
gleaned from the record, id. (citing Mass. Inst. Of Tech. v.
Abacus Software, 462 F.3d 1344, 1350 (Fed. Cir. 2006);
SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.                9



Lava Trading, Inc. v. Sonic Trading Mgmt., LLC, 445
F.3d 1348, 1350 (Fed. Cir. 2006)), this is not the case here.
As explained above, it is unclear for several disputed
terms whether a revised construction would have any
effect on the infringement analysis at all. Assuming that
a revised construction would affect the infringement
analysis for the remaining terms, it is still unclear what
this effect would be. A remand for clarification is neces-
sary to enable this court properly to exercise its appellate
jurisdiction. See Wilson Sporting Goods Co. v. Hillerich &
Bradsby Co., 442 F.3d 1322, 1326–27 (Fed. Cir. 2006).
                        CONCLUSION
    For the reasons provided above, we vacate the district
court’s judgment of February 7, 2013 granting summary
judgment of non-infringement to Masaba and remand for
further proceedings consistent with this opinion.
             VACATED AND REMANDED
                            COSTS
    Each side shall bear its own costs.
        NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                 ______________________

           SUPERIOR INDUSTRIES, INC.,
                Plaintiff-Appellant,

                            v.

                    MASABA, INC.,
                   Defendant-Appellee.
                 ______________________

                       2013-1302
                 ______________________

    Appeal from the United States District Court for the
District of Minnesota in No. 10-CV-0764, Judge Donovan
W. Frank.
                 ______________________

RADER, Chief Judge, concurring.
    I agree with, and join in, the majority opinion. How-
ever, in reviewing the claim constructions articulated by
the district court, I observe that it read a great deal into
the claims in the process of construing them. Thus, I
write separately to articulate a couple claim construction
principles that may assist the district court on remand
when it revisits its constructions. First, in claim con-
struction, one must not import limitations from the speci-
fication that are not part of the claim. Deere & Co. v.
Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012).
Indeed, claims generally are not limited to any particular
2                   SUPERIOR INDUSTRIES, INC.   v. MASABA, INC.



embodiment disclosed in the specification, even where
only a single embodiment is disclosed. Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d
1111, 1117 (Fed. Cir. 2004). Second, and relevant to this
case, a system claim generally covers what the system is,
not what the system does. Hewlett-Packard Co. v. Bausch
& Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see
also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inven-
tor of a machine is entitled to the benefit of all the uses to
which it can be put, no matter whether he had conceived
the idea of the use or not.”). Thus, it is usually improper
to construe non-functional claim terms in system claims
in a way that makes infringement or validity turn on
their function. Paragon Solutions, LLC v. Timex Corp.,
566 F.3d 1075, 1091 (Fed. Cir. 2009).
