       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

                  WEBZERO, LLC,
                  Plaintiff-Appellant,

                           v.
                   CLICVU, INC.,
                  Defendant-Appellee.
              __________________________

                      2009-1483
              __________________________

   Appeal from the United States District Court for the
Central District of California in case No. 08-CV-0504,
Judge Mariana R. Pfaelzer.
              ___________________________

                Decided: August 3, 2010
              ___________________________

   HARRY W.R. CHAMBERLAIN II, Buchalter Nemer, of Los
Angeles, California, argued for plaintiff-appellant. With
him on the brief were SHANNON KEAST, and ROBERT M.
DATO, of Irvine, California.

   MARC JONAS BLOCK, Kucker & Bruh, LLP, of New
York, New York argued for defendant-appellee.
             __________________________
WEBZERO   v. CLICVU                                      2


  Before BRYSON, SCHALL, and GAJARSA, Circuit Judges.
BRYSON, Circuit Judge.

     Plaintiff WebZero, LLC, appeals from an order grant-
ing summary judgment that defendant ClicVU, Inc., did
not infringe WebZero’s U.S. Patent No. 6,973,481 (“the
’481 patent”). WebZero also challenges the dismissal of
its unfair competition claim brought under section 17200
of the California Business and Professions Code. We
affirm.

                             I

     The ’481 patent is directed to a method and system for
creating an email forwarding address during an Internet
session in which a user is prompted to provide an email
address. The purpose of the invention is to help users
control unsolicited email (“spam”) and to change email
accounts easily. If a user does not wish to provide a
personal email address when prompted to do so by a web
page, the invention enables the user to create an email
forwarding address that can be provided instead. Email
from the entity affiliated with the prompting web page is
received at the new email address and then redirected to
the user’s personal, or “target,” email address. In the
described embodiments, the address-creation process is
initiated when the user activates a web control that
generates an “email forwarding address request,” which
“includes the web page address (URL) of the web page”
that prompted the user for information. Upon receipt of
the request, the system, without further user interaction,
creates an email forwarding address that is associated
with that web page. The email forwarding address is also
stored for future use with the same web page. If a user
begins receiving spam through the email forwarding
3                                        WEBZERO   v. CLICVU


address, the user can simply disable the new address
without affecting the user’s own target email address.

    WebZero asserted independent claims 1, 11, 18, and
30 of the ’481 patent, as well as a number of dependent
claims. Representative claim 1 of the ’481 patent is
reproduced below:

       During an Internet session where a user is
    viewing a web page that includes a prompt for an
    email address, a method of creating and forward-
    ing an email forwarding address to said user com-
    prising the steps of:
      creating and storing a unique email
         forwarding address for the user that
         is automatically associated with said
         web page, said email forwarding ad-
         dress being dedicated for use by an
         entity associated with said web page
         to enable said entity to send email
         messages to said user, email mes-
         sages directed to said email forward-
         ing address being re-directed to a
         target email address associated with
         said user; and
      sending said email forwarding address to
         said user to enable said user to use said
         email forwarding address to satisfy the
         email address prompt.
    Addressing several of the disputed claim terms used
in claim 1 as well as other claims, the district court con-
strued “web page” to mean “a single web page, which may
be part of a larger body known as a ‘website’”; it construed
“dedicated for use” to mean “solely and exclusively for
use”; it construed “unique email forwarding address” to
WEBZERO   v. CLICVU                                       4


mean “unique forwarding address only for this particular
user”; and it construed “automatically associated with” to
mean associated “without any additional user input or
interaction.” Based on the court’s construction of those
four terms, ClicVU moved for summary judgment of
noninfringement, asserting that its accused product did
not meet any of the disputed limitations as construed by
the trial court.

     ClicVU’s accused product, the SPAMEX disposable
email service, is a web-based system that creates email
forwarding addresses in response to user requests. When
a user on the Internet is prompted by a web page to
provide an email address, the user may request an email
forwarding address by launching the SPAMEX program
and clicking the “Create Address” button. The program
then displays a window containing an “Address Style”
field and a “Site Domain (optional)” field that is pre-
populated with the domain name of the web page that
prompted the user for information. For the “Address
Style” field, the user is given the option to input a custom
email forwarding address in place of the default “Ran-
dom” email forwarding address. For the “Site Domain
(optional)” field, the user is given the option to input
additional domain names to be associated with the cus-
tom email forwarding address. After either exercising
those options or declining to do so, the user clicks the
“Submit” button, which causes the system to create an
email forwarding address associated with the designated
domain name or names.

    The trial court held that ClicVU’s SPAMEX system
does not satisfy the “automatically associated with” and
“dedicated for use” limitations in the claims of the ’481
patent. See WebZero, LLC v. ClicVU, Inc., No. CV-08-
0504, slip op. at 6-9 (C.D. Cal. May 1, 2009). Specifically,
5                                          WEBZERO   v. CLICVU


in light of its construction of the phrase “automatically
associated with” to preclude “any additional user input or
interaction,” the court concluded that SPAMEX’s “associa-
tion can not be considered automatic, because the user
must perform at least two actions”: (1) clicking the “Cre-
ate Address” button and verifying the contents of the
fields; and (2) then clicking the “Submit” button. More-
over, the court ruled that SPAMEX does not create an
email forwarding address that is “dedicated for use” by an
entity, because a SPAMEX-generated address may be
shared by multiple entities and thus is not, as the court’s
claim construction required, “solely and exclusively for
use” by a single entity. The court declined to determine
whether SPAMEX satisfied the “web page” limitation of
the ’481 patent. Based on its claim construction, the court
held that the undisputed facts warranted judgment in
ClicVU’s favor.

     The district court dismissed WebZero’s unfair compe-
tition claim on the ground that “the Complaint offer[ed]
only conclusory allegations . . . and lack[ed] any specificity
or concrete facts” sufficient to meet the requisite pleading
standard of “reasonable particularity.” WebZero, LLC v.
ClicVU, Inc., No. CV-08-0504, slip op. at 9 (C.D. Cal. Apr.
4, 2008). Although the court granted WebZero’s request
for “leave to amend the Complaint to adequately support
the Second Count,” WebZero never amended the com-
plaint. Id. WebZero now appeals from the judgment as to
both claims.

                              II

    With respect to summary judgment of noninfringe-
ment, we agree with the district court that ClicVU’s
product does not infringe the ’481 patent as a matter of
law, although our analysis differs in some respects from
WEBZERO   v. CLICVU                                        6


that of the district court. The district court ruled that the
SPAMEX system does not infringe either the “automati-
cally associated with” limitation or the “dedicated for use”
limitation. As to the first, the court found that because
the SPAMEX system uses a two-step process (first click-
ing on “Create Address” and then, after reviewing the
options presented, clicking on “Submit”), it cannot be
considered “automatic” as that term is used in the patent.
We believe there is force to WebZero’s argument that
SPAMEX’s association of the new email address with the
designated domain name is “automatic,” even though the
user is given the option to input a custom email address
and even though the user is required to click a second
button in order to confirm the selected options. We there-
fore do not rest our affirmance of the district court’s
summary judgment on that ground.

     Instead, we sustain the district court’s decision based
on the second ground cited by the district court in support
of its summary judgment order—that the SPAMEX
system does not satisfy the “dedicated for use” limitation
because the forwarding addresses generated by the
SPAMEX system can be associated with more than one
web domain and therefore are not “solely and exclusively
for use” by a single entity. As the district court explained,
the phrase “dedicated for use” is an attribute of the email
forwarding address and not a step in the claimed method.
Thus, an email forwarding address that can be shared,
i.e., associated with more than one web domain, does not
meet that limitation. The court noted that the “dedicated
for use” limitation was added to the claims during prose-
cution to overcome a prior art reference (the Kennedy
patent) that, as the applicants described it, disclosed “a
system and method for populating forms with previously
used data values.” The applicants stated that “Kennedy
in no way teaches or suggests creating a unique email
7                                       WEBZERO   v. CLICVU


forwarding address for the user that is automatically
associated with the web page, with the email forwarding
address being dedicated for use by an entity associated
with the web page.” They added, “No unique email for-
warding address is created by Kennedy in response to a
web page email address prompt which results in email
being re-directed. Rather, a saved email address is sim-
ply re-used whenever an email address prompt is re-
ceived.”

    As explained by the district court, ClicVU’s undis-
puted evidence showed that the SPAMEX system enables
a user to associate a single email forwarding address with
numerous domains, each of which may be sponsored by a
different entity. Because the SPAMEX system does not
dedicate each email address for use “solely and exclu-
sively” by a single entity, the district court correctly
concluded that SPAMEX does not satisfy the “dedicated
for use” limitation of the ’481 patent. Moreover, because
the “dedicated for use” limitation was added during
prosecution to overcome close prior art that did not have
that feature, the district court correctly ruled that Web-
Zero could not invoke the doctrine of equivalents as a
theory of infringement.

    While that reasoning disposes of WebZero’s infringe-
ment claims under independent claims 1, 11, and 30 (and
their dependent claims), 1 claim 18 presents a complica-

    1   Independent claim 11, which is directed to a “sys-
tem for creating and forwarding email forwarding ad-
dresses,” is framed in the plural (“said email forwarding
addresses being dedicated for use by entities associated
with said web pages”), but it uses language that is di-
rectly parallel to that of the other independent claims.
For that reason, we conclude that while the system of
claim 11 may be employed to generate multiple “email
WEBZERO   v. CLICVU                                        8


tion, because it lacks the clause “said email forwarding
address being dedicated for use by an entity associated
with said web page to enable said entity to send email
messages to said user.” In light of the statement in the
prosecution history that “independent claim 49 [which
issued as claim 18] incorporates the subject matter of
claims 1, 8 and allowable claim 9,” it appears that the
omission of the quoted language may have been a scriv-
ener’s error. In any event, we conclude that it is appro-
priate to interpret claim 18 as similarly limited to a
system that dedicates an email forwarding address for
use by a single entity, for two reasons. First, the re-
quirement in claim 18 (as well as in the other independ-
ent claims) that the method create and store “a unique
email forwarding address for the user that is automati-
cally associated with said web page” can fairly be read to
require that the claimed method and system associate a
single, unique forwarding address with each new web
page that calls for an email address. Because each for-
warding address is created for use with only a single web
page, it follows that each such address is created for use
by only the single entity affiliated with that web page.
Second, any ambiguity in the text of that limitation is
resolved by reference to the prosecution history, which
makes clear that claim 18 was included among the claims
distinguished from the Kennedy reference, and that it
was distinguished on the same ground as the other inde-
pendent claims. We therefore uphold the district court’s
summary judgment of noninfringement.


forwarding addresses,” each of those addresses must be
“dedicated for use” (i.e., solely and exclusively for use) by
the single entity associated with the single web page that
prompted that user for information. That interpretation
of claim 11 is consistent with the other independent and
dependent claims, as well as the written description.
9                                        WEBZERO   v. CLICVU


                            III

     Because we hold that ClicVU’s SPAMEX system does
not infringe the ’481 patent as a matter of law, we also
affirm the district court’s dismissal of WebZero’s state law
unfair competition claim. WebZero’s unfair competition
claim was predicated on its claim for patent infringement
and thus rises or falls with the success of its infringement
claim. As such, our holding that summary judgment of
noninfringement is warranted necessarily bars WebZero’s
unfair competition claims.

    Moreover, we agree with the district court that Web-
Zero’s allegations of unfair competition were not pleaded
with the requisite “reasonable particularity” required by
relevant California law. See, e.g., Qarbon.com Inc. v.
eHelp Corp., 315 F. Supp. 2d 1046, 1052-53 (N.D. Cal.
2004). WebZero failed to set forth the particular conduct
that ClicVU engaged in, or whether such conduct was
“unlawful,” “unfair,” or “fraudulent” under California
Business and Professions Code § 17200 et seq. While
WebZero was given an opportunity to amend its com-
plaint, it declined to do so. Because WebZero has failed to
allege its state law claims with reasonable particularity,
despite being afforded a chance to correct the deficiency,
the district court properly dismissed that claim.

                            IV

    Finally, we reject WebZero’s argument that we must
vacate the district court’s summary judgment ruling
under Rule 56(f) of the Federal Rules of Civil Procedure.
Rule 56(f) provides that a court may order a continuance
of discovery if a party opposing summary judgment
“shows by affidavit that, for specified reasons, it cannot
present facts essential to justify its opposition.” WebZero
WEBZERO   v. CLICVU                                       10


asserts that “[t]he scheduling of early summary judgment
motions . . . along with ClicVU’s failure to satisfy its
discovery obligations, deprived WebZero of the opportu-
nity to present facts essential to its opposition to ClicVU’s
motion for summary judgment.” As ClicVU points out,
however, WebZero failed to file a timely motion for con-
tinuance of discovery and failed to identify specific rea-
sons why discovery should have been continued.

    Under Ninth Circuit precedent, which governs this is-
sue, a Rule 56(f) motion must be filed before the hearing
on summary judgment. Ashton-Tate Corp. v. Ross, 916
F.2d 516, 520 (9th Cir. 1990). Mere “[r]eferences in
memoranda and declarations to a need for discovery do
not qualify as motions under Rule 56(f).” Brae Transp.,
Inc. v. Coopers & Lybrand, 790 F.2d 1439, 1443 (9th Cir.
1986). Instead, a proper Rule 56(f) motion “requires
affidavits setting forth the particular facts expected from
the movant’s discovery.” Id.

    WebZero never formally moved for a continuance of
discovery under Rule 56(f). Instead, WebZero merely
referenced Rule 56(f) in a footnote in its cross motion for
summary judgment, in a paragraph of an declaration
attached to that motion, and in its subsequent motion to
alter or amend the summary judgment order. The refer-
ences in the summary judgment motion (stating only that
summary judgment would be “premature”) and the decla-
ration (stating only the “belief” that discovery “will enable
WebZero to demonstrate genuine issues of fact”) were
insufficient to constitute a Rule 56(f) motion under Ninth
Circuit law. The references in the motion to alter or
amend the summary judgment order were untimely.

    Moreover, the Ninth Circuit has held that under Rule
56(f) “[t]he burden is on the party seeking additional
11                                      WEBZERO   v. CLICVU


discovery to proffer sufficient facts to show that the
evidence sought exists, and that it would prevent sum-
mary judgment.” Chance v. Pac-Tel Teletrac, Inc., 242
F.3d 1151, 1161 n.6 (9th Cir. 2001), citing Nidds v.
Schindler Elevator Corp., 113 F.3d 912, 921 (9th Cir.
1996). Here, WebZero’s submissions to the district court
did not describe the particular evidence that WebZero
expected to obtain from further discovery or how that
evidence would preclude summary judgment. As we have
noted before, a party seeking further discovery under
Rule 56(f) is “required to state with some precision the
materials he hope[s] to obtain with further discovery, and
exactly how he expect[s] those materials would help him
in opposing summary judgment. It is not enough simply
to assert, à la Wilkins Micawber, that ‘something will
turn up.’” Simmons Oil Corp. v. Tesoro Petroleum Corp.,
86 F.3d 1138, 1144 (Fed. Cir. 1996). Accordingly, we hold
that the district court did not abuse its discretion in
failing to order additional discovery.

                      AFFIRMED
