       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

       CREATIVE INTERNET ADVERTISING
               CORPORATION,
               Plaintiff-Appellee,

                           v.
                   YAHOO!, INC.,
                 Defendant-Appellant.
              __________________________

                      2010-1215
              __________________________

    Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0354, Magis-
trate Judge John D. Love.
              ___________________________

                Decided: April 22, 2011
             ___________________________

   ANTHONY G. SIMON, The Simon Law Firm PC, of
Saint. Louis, Missouri, argued for plaintiff-appellee.
With him on the brief was TIMOTHY E. GROCHOCINSKI. Of
counsel on the brief was MIKE SCHAENGOLD, Patton Boggs
LLP, of Washington, DC.
CREATIVE INTERNET   v. YAHOO INC                          2


    CHARLES K. VERHOEVEN, Quinn Emanuel Urquhart &
Sullivan, LLP, of San Francisco, California, argued for
defendant-appellant.   With him on the brief were
KATHLEEN M. SULLIVAN and KEVIN A. SMITH.
              __________________________

   Before NEWMAN, CLEVENGER, and BRYSON, Circuit
                     Judges.
   Opinion for the court filed by Circuit Judge BRYSON.
    Opinion dissenting-in-part filed by Circuit Judge
                       CLEVENGER.

BRYSON, Circuit Judge.

     This patent infringement case involves instant mes-
saging technology that is adapted to display background
advertisements and that provides each user the ability to
opt out of displaying advertisements. Yahoo!, Inc., ap-
peals the final judgment of the United States District
Court for the Eastern District of Texas denying Yahoo!’s
motions for judgment as a matter of law (“JMOL”) that
U.S. Patent No. 6,205,432 (“the ’432 patent”) was invalid
and not infringed by Yahoo! Messenger. We affirm the
judgment with respect to validity but reverse with respect
to infringement.

                              I

    Creative Internet Advertising Corporation asserted
claim 45 of the ’432 patent against Yahoo!. The ’432
patent primarily describes a system in which references
to advertisements are inserted at a server between end
users of the instant messaging software. 1 However,

   1
      For example, the invention abstract refers to a
message server in six out of eight sentences. The abstract
3                             CREATIVE INTERNET   v. YAHOO INC


Yahoo!’s instant messaging product, Yahoo! Messenger,
inserts references to advertisements on end users’ com-
puters instead of on a server. The central dispute in this
appeal is whether claim 45 reads on Yahoo!’s server-less
system. Claim 45 recites the following (emphasis added):

    45. A computer program embodied on a computer-
    readable medium for inserting a background ref-
    erence to a stored advertisement into an end user
    communication message, said computer program
    comprising:

    logic configured to receive an end user communi-
    cation message from a first site;

    logic configured to insert a background reference
    to a stored advertisement into said end user com-
    munication message, wherein said logic config-
    ured to insert the background reference is further
    configured to insert said background reference re-
    sponsive to an overwrite authorization; and

    logic configured to transmit said end user commu-
    nication message with the background reference
    to a second site.

    Yahoo! sought a construction requiring the three ele-
ments of claim 45 to occur in the same sequence as writ-
ten, i.e., first receive, then insert, then transmit. Creative
contended that the claim did not require sequential action
because it was an apparatus claim. Under Creative’s
construction, claim 45 would read on a program that

notes that the description is limited to “some embodi-
ments,” and later on the patent describes a different,
server-less embodiment using “integrated end user mes-
sage software.” ’432 patent, col. 7, line 65, to col. 8, line 4.
CREATIVE INTERNET   v. YAHOO INC                          4


inserted a background reference into a message, trans-
mitted the message, and then received the message at
another site. After a Markman hearing, the district court
rejected Yahoo!’s proposed construction and construed
claim 45 as a purely structural claim without any spatial
or sequential limitations. The district court also con-
strued “end user communication message” as “[a] set of
data transmitted over a communication network,” and
“overwrite authorization” as “[a]pproval to replace an
existing background reference in an end user communica-
tion message.”

    The case proceeded to trial, but the parties still dis-
puted whether claim 45 required all three elements to act
on the same message. Yahoo! contended that an infring-
ing program had to be configured to perform all three
actions (receipt, insertion, and transmittal) on the same
message. Accordingly, Yahoo! moved for supplementary
claim construction of the term “said.” In an effort to
convey that all three actions had to be performed on the
same message, Yahoo! proposed the following jury in-
struction:

   The use of the word “said” in a claim refers to an
   earlier use of the term in the claim, and more spe-
   cifically, refers to the first or initial use of the
   term found in the claim. In grammatical terms,
   “[g]enerally, a term refers to an antecedent by re-
   peating the antecedent identically except for pre-
   ceding it with the word ‘said’ instead of ‘a’ or
   ‘the.’”

    Creative disagreed with Yahoo!’s interpretation of the
claim as requiring that all three actions be performed on
the same message. It contended that the claim would be
infringed by a program that performed all three actions,
5                            CREATIVE INTERNET   v. YAHOO INC


even if all three actions were not performed on the same
message.

    The district court did not resolve that dispute; in-
stead, it linked the dispute to the construction of the term
“an” preceding the first instance of “end user communica-
tion message” in the body of the claim. The district court
decided to provide the jury with an additional paragraph
at the end of the claim construction chart, which included
standard constructions of the terms “an” and “said” along
with its earlier ruling that claim 45 did not require se-
quential ordering. That paragraph stated:

    The use of the article “a” or “an” in a patent claim
    means “one or more” in claims containing the
    transitional phrase “comprising.” Use of the word
    “said” in the beginning of a phrase indicates that
    it is referring to a previous use of the same or
    similar phrase. Further, claim 45 is an apparatus
    claim, which means that the claim recites struc-
    ture—logic or source code—comprising a computer
    program. The claim does not recite steps or proc-
    esses that must take place in a particular order.

     That paragraph was featured extensively in the par-
ties’ closing arguments. In its initial summation, Crea-
tive asked the jury to refer to the court’s additional
instructions regarding “an” to address whether claim 45
requires a single message. Creative’s attorney told the
jury, “You heard a lot about one message, this message,
different message. ‘A’ or ‘an.’ So if you look in the Claim
45, as defined by the Court, and it uses that phrase, it’s
one or more.” Creative’s attorney later applied that
multiple message theory to a discussion of the three
elements of claim 45, telling the jury that “if the logic, the
code in the computer program was capable of doing these
CREATIVE INTERNET   v. YAHOO INC                         6


three things, it infringes.” He also proposed, as an alter-
native theory, that Yahoo! Messenger infringed even if
the three claim elements “all have to be performed on the
same message.”

    In Yahoo!’s summation, its attorney described two
fundamental disagreements between the parties on
infringement. First, must the “message or messages of all
three limitations be the same?” Second, “are the individ-
ual messages separate messages or are they all just one
message?” After discussing the three elements of claim
45, he concluded his infringement discussion by asking
and answering a claim construction question: “Must the
messages of all three be the same? Absolutely. That’s
what said means. There’s the linkage.”

    Creative’s attorney responded to that contention at
the very outset of his rebuttal closing argument. His first
words in rebuttal were:

       Ladies and Gentlemen, everything you just
   heard, every noninfringement argument you just
   heard is contradicted by the instructions in the
   back of your book attached to the chart [referring
   to the supplemental paragraph].

      What did he say, it’s got to be one message.
   His Honor gave you an instruction, put it in the
   back of your book yesterday, one or more mes-
   sages.

   Following deliberations, the jury found that claim 45
was not invalid, that it was infringed both literally and
under the doctrine of equivalents, and that the infringe-
ment was willful. Yahoo! moved for JMOL on invalidity
and noninfringement. Both motions were denied. The
7                           CREATIVE INTERNET   v. YAHOO INC


district court enhanced the jury’s damages award and
ordered an ongoing royalty despite Yahoo!’s efforts to
design around the patent.

                             II

    On appeal, Yahoo! contends that the district court’s
claim construction was erroneous because it did not
require that “each logical element operates on the same
message.” Specifically, Yahoo! contends that “[u]nder the
district court’s construction, Claim 45 is infringed by a
system that receives a message from Albert to Brian,
inserts a background reference into a second unrelated
message from Carl to David, and transmits a third unre-
lated message from Edward to Frank.”

    Creative contends that Yahoo! waived its argument on
appeal because it received the construction of the term
“said” that it sought. However, the focus of Yahoo!’s
appeal is not on the district court’s construction of the
term “said,” but on the court’s failure to instruct the jury
that “all the limitations must be configured to operate on
the same message.” Appellant’s Br. at 30. Although
Yahoo! presented that argument to the district court, the
court refused to rule on the issue or instruct the jury
directly on that point.

    When the issue arose at trial, counsel for Yahoo! ar-
gued that the claim language required that all three
actions be performed on the same message. Counsel for
Yahoo! explained, “It is one set of data. That’s the said
data in both of the – in all three of the claim elements.”
Counsel for Creative disagreed and argued that the
accused program would infringe if the three actions
operated on different messages. The trial court expressed
skepticism that the claim required “the set of data where .
CREATIVE INTERNET   v. YAHOO INC                           8


. . the receipt, the insertion, the transmit, that has to be
the same.” The court asked why the claim would not read
on a program that “receive[s] one set of data, inserts into
another set of data, transmits maybe another set,” and
told Yahoo!’s counsel, “you’ve got to persuade me that
your position on this claim, that it’s the same set of data
that’s received, inserted and transmitted can be correct.”

    Following that exchange, the district court took the
matter under advisement. After a recess, the court de-
cided to give the jury a supplementary instruction defin-
ing the words “a” or “an” and “said.” The court declined to
instruct the jury on whether the claim required all three
actions to apply to the same message; as to that issue, the
court stated, “That, in my estimation, is infringement—
the question of infringement, that’s for y’all to fight over
and for the jury to resolve.” Yahoo!’s counsel objected to
the court’s refusal to limit the scope of the claim to re-
quire that all the recited actions operate on a single
message, but the court overruled the objection.

     The district court’s refusal to instruct the jury on the
question whether the claim required all three elements to
operate on the same message had the effect of leaving a
critical question of claim construction to the jury. The
court erred in leaving a central question of claim con-
struction to the jury over Yahoo!’s objection. See O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521
F.3d 1351, 1360-62 (Fed. Cir. 2008).

    The closing arguments demonstrate that the district
court’s instruction linking the construction of “an” and
“said,” and not addressing the “same message” issue
raised by Yahoo! enabled Creative to argue to the jury
that all three claim elements do not have to operate on
the same message in order to infringe. After referring to
9                            CREATIVE INTERNET   v. YAHOO INC


the district court’s supplementary construction of “an” as
“one or more,” Creative told the jury “if the logic, the code
in the computer program was capable of doing these three
things, it infringes” without regard to whether all three
elements operate on the same message. Yahoo! then
urged the jury to find noninfringement based on the
premise that all three elements must operate on the same
message. Creative responded to that argument by again
citing the district court’s supplementary claim construc-
tion paragraph, contending that the elements can operate
on “one or more” messages and that Yahoo!’s position
violates the district court’s construction that the claim
elements need not be sequential.

    Creative’s broader claim construction is incorrect. Al-
though the antecedent phrase, “an end user communica-
tion message,” is broad enough to cover multiple
messages, each use of the phrase “said end user commu-
nication message” still refers to the antecedent phrase.
See Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
1338, 1342 (Fed. Cir. 2008) (“The subsequent use of
definite articles “the” or “said” in a claim to refer back to
the same claim term does not change the general plural
rule [of “an”], but simply reinvokes that non-singular
meaning.”). An infringing system must therefore contain
logic configured to insert a background reference into the
same messages that are received and transmitted by
other logic in the program. That does not necessarily
mean that the insertion logic must act on the message
after it is received. And it does not mean that the every
message in an infringing system must be received, in-
serted, and transmitted. Instead, it means that the claim
does not cover a system that only receives a message,
inserts a background reference into a different message,
and then transmits a third message. Although the dis-
sent adopts that interpretation, it is contrary to the claim
CREATIVE INTERNET   v. YAHOO INC                          10


language because it would render the word “said” a nul-
lity. See Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction
that gives meaning to all the terms of the claim is pre-
ferred over one that does not do so.”). The claim language
makes clear that all three logical elements must act, at
least once, on the same message or messages.

    By linking the construction of “said” to the construc-
tion of “an” and the ruling on sequential limitations, the
district court left that claim construction issue unresolved
and allowed Creative to invite the jury to find infringe-
ment on a theory that is contrary to the proper construc-
tion of the asserted claim. Because the jury may have
found infringement based on Creative’s broader and
incorrect theory of claim construction, it would be incor-
rect to rule that Yahoo! waived its right to challenge the
district court’s claim construction simply because Yahoo!
received the construction of the term “said” that it pro-
posed.

                             III

     Yahoo! also appeals the court’s denial of its motion for
JMOL of noninfringement. Yahoo! contends that under
the district court’s claim construction, as modified by our
discussion above, Yahoo! Messenger lacks the second
limitation of claim 45. That limitation requires the
following:

    logic configured to insert a background reference
    to a stored advertisement into said end user com-
    munication message, wherein said logic config-
    ured to insert the background reference is further
    configured to insert said background reference re-
    sponsive to an overwrite authorization.
11                          CREATIVE INTERNET   v. YAHOO INC


    The district court construed the term “end user com-
munication message” to mean “[a] set of data transmitted
over a communications network,” and the term “overwrite
authorization” to mean “[a]pproval to replace an existing
background reference in an end user communication
message . . . .” Based on those constructions, the second
limitation of claim 45 requires logic configured to insert a
background reference into a message responsive to an
approval to replace an existing background reference in a
message, where a message is a set of data transmitted
over a communications network. Because the evidence
would not permit a reasonable jury to find that Yahoo!
Messenger satisfied the second limitation of claim 45 as
properly construed, we reverse the district court’s judg-
ment with respect to infringement.

     Yahoo! Messenger is end user software that must be
installed on the computer of every end user. It gives
users the option of selecting IMVironments, which are
advertisements that can be inserted behind the chat
window. Two users in a conversation can select IMVi-
ronments only if both users have enabled them. If IMVi-
ronments are enabled, a user can select an IMVironment
(such as an advertisement for “Honda” or an advertise-
ment for “Army”). When IMVironments are enabled, a
corresponding IMV-ID (such as 1 or 7) will be inserted
into the IMV-ID field of the outgoing message. Other
fields in the message include user1, user2, IMV Flag
(which indicates whether the sending user has enabled
IMVironments), and the text of the message.

    Yahoo! contends that Yahoo! Messenger does not in-
fringe for two reasons. First, Messenger never inserts a
background reference (or IMV-ID) into an existing mes-
sage; instead, it just creates new messages and populates
them with an IMV-ID. Second, Messenger does not insert
CREATIVE INTERNET   v. YAHOO INC                         12


background references responsive to an approval to
replace existing background references; instead, the
approval is to put background references in the message
in the first place. The accused “approval” functionality in
Messenger is a checkbox that allows users to disable the
insertion of the advertising backgrounds.

    Creative contends that claim 45 requires only “condi-
tional insertion” and that Yahoo! Messenger conditions
insertion of IMV-IDs on an end user’s selection of the
checkbox that enables IMVironments. Claim 45, however,
requires the insertion to be more than “conditional.” The
insertion must be responsive to an approval to replace an
existing background reference in an end user communica-
tion message. The burden was on Creative, therefore, to
identify evidence demonstrating that the checkbox in
Yahoo! Messenger enables IMVironments to serve as the
approval to replace an existing background reference in a
message instead of merely the approval to insert back-
ground references in new messages.

     In its brief, Creative focuses on one scenario purport-
edly demonstrating that Yahoo! Messenger contains logic
configured to insert a background reference responsive to
such an approval. Creative asks the reader to assume
that two users, identified as “Randi” and “Millie,” are
having a conversation using Yahoo! Messenger and that
both users have enabled IMVironments. If Randi sends
Millie a message with the “Army” IMVironment chosen,
his outgoing buffer will be populated with “Randi” as the
Sender ID, “Millie” as the Recipient ID, “Army” as the
IMV-ID, and “Enabled” as the IMV Flag. Once Randi
sends the message, Millie’s incoming buffer will contain
the same values. If Randi then changes his IMVironment
to “Honda” without sending a new message, the IMV-ID
field in his outgoing buffer, which previously contained
13                           CREATIVE INTERNET   v. YAHOO INC


“Army,” will be replaced with “Honda.” Randi can make
such a change only if Millie continues to have IMViron-
ments enabled. Creative thus contends that Millie’s
choice to enable or disable IMVironments is an approval
to replace an existing background reference in an end
user communication message. This scenario is depicted in
the following demonstrative that Creative used at trial:




     Creative’s infringement scenario fails because it nulli-
fies the third limitation of claim 45, which requires “logic
configured to transmit said end user communication
message with the background reference to a second site.”
To satisfy the third limitation, the message that is trans-
mitted must contain the background reference that was
inserted responsive to Millie’s approval in the second
limitation. The message that was initially transmitted
did not contain the background reference that was in-
serted (“Honda”); instead, it contained the background
reference that was replaced (“Army”).
CREATIVE INTERNET   v. YAHOO INC                         14


    Creative alternatively contends that Messenger could
satisfy the third limitation when Randi sends out a new
message containing the inserted background reference to
“Honda.” That scenario fails because the “Honda” mes-
sage that is transmitted is a different message than the
“Army” message into which the IMV-ID was inserted.

      Creative’s last literal infringement theory focuses on
Millie’s incoming buffer. Creative contends that the
insertion logic is located on the receiving computer when
the previous IMV-ID in the buffer is replaced with the
new IMV-ID. Such replacement is not insertion into a
message because the entire buffer is overwritten when a
new message is received. Creative also contends that the
IMV-ID is replaced in a second memory location on the
recipient computer that is used to keep track of the cur-
rent IMV-ID to be displayed. That replacement, however,
is not an insertion into a message, because the IMV-ID
has been separated from the rest of the message and
stored in a separate location on the computer. In finding
that the jury had sufficient evidence to “find that a re-
placement occurs,” the dissent overlooks the fact that the
claim language requires not “replacement” but “logic
configured to insert a background reference to a stored
advertisement into said end user communication message
. . . in response to an overwrite authorization.” 2

    Having concluded that all of Creative’s literal in-
fringement theories fail, we turn to infringement under
the doctrine of equivalents. Yahoo! contends that there

   2
         Although the district court construed “overwrite
authorization” as “[a]pproval to replace an existing back-
ground reference in an end user communication message
[with another background reference],” that construction
did not alter the meaning of “insert” in the second limita-
tion of the claim.
15                           CREATIVE INTERNET   v. YAHOO INC


was insufficient evidence to support a jury determination
that Yahoo! Messenger has the equivalent of logic config-
ured to “insert said background reference responsive to an
overwrite authorization.” Appellant’s Br. at 41. To
support a finding of infringement under the doctrine of
equivalents, a patentee must provide particularized
testimony and linking argument with respect to the
“function, way, result” test. Tex. Instruments Inc. v.
Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67 (Fed.
Cir. 1996). Creative’s only particularized testimony and
linking argument supporting infringement under the
doctrine of equivalents is the following testimony from its
expert, David Klausner:

     Q: Now, did you review the patent in forming your
        opinions?

     A: Yes.

     Q: And did you take a look at the patent to determine
        what the function of the overwrite authorization
        was?

     A: I have.

     Q: And what portion of the patent was that?

     A: I think it's column 9, lines 35 through 48.

     Q: Is that the part highlighted here?

     A: Yes.

     Q: Now, this says, “If the approval configuration in-
        dicates that background references are not to be
        overwritten for a particular message, step 4-12 in-
        dicates the background references insertion proc-
CREATIVE INTERNET   v. YAHOO INC                        16


       ess terminates and then it says, “An approval con-
       figuration file is maintained” - in one embodiment
       - “in order to enable end user recipients to config-
       ure the background reference system and whether
       or not to overwrite existing background references
       in messages received by them.”
       Is that the part you relied on?

   A: Yes.

   Q: What -- using that, what's the function of the
      overwrite authorization?

   A: It's to provide approval for a replacement as His
      Honor has told us.

   Q: Now, if we could go to Exhibit 112, please, the en-
      able button. I'm showing you the references [sic]
      box for the enable IMVironments button. What is
      the function of the enable IMVironments check
      box in the Yahoo Messenger program?

   A: To approve the replacement of the background
      reference.

   Q: Okay. And what is the way that the overwrite au-
      thorization in Claim 45 is achieved in a [sic] ’432
      patent?

   A: Well, also substantially the same way, by having
      program code written that will look at the condi-
      tion and determine whether it's enabled or not.

   Q: And then what's the result with respect to the
      overwrite authorization in Claim 45?
17                            CREATIVE INTERNET   v. YAHOO INC


     A: It is to have the program logic -- a logic code in the
        program to enable the approval to replace the
        background reference.

     Q: All right. Do you have an opinion on whether or
        not the overwrite authorization element of Claim
        45 is found under the doctrine of equivalence in
        Yahoo!'s Messenger program?

     A: I do.

     Q: And what is that opinion?

     A: It is found - it's substantially the same function in
        substantially the same way with substantially the
        same result, and any difference between the claim
        as construed by His Honor and the accused prod-
        uct are insubstantial.

    That testimony addresses only whether the IMViron-
ments checkbox is equivalent to the overwrite authoriza-
tion. It does not address the broader issue of whether
Yahoo! Messenger has the equivalent of logic configured
to “insert said background reference responsive to an
overwrite authorization.” For reasons addressed in our
discussion of literal infringement, Yahoo! Messenger does
not insert background references into existing messages. 3

     3
        The dissent contends that we are adopting a dif-
ferent rationale than that presented by Yahoo! on appeal.
However, Yahoo! appealed infringement under the doc-
trine of equivalents because Yahoo! Messenger lacks a
“pre-existing background reference in the message to
overwrite” and “does not use a message server to intercept
the message packet and replace a pre-existing back-
ground reference with an IMV-ID.” An infringement
finding must be supported by evidence for each limitation,
and Creative failed to submit evidence demonstrating
CREATIVE INTERNET   v. YAHOO INC                         18


By reciting “logic configured to insert,” the claims require
replacement of existing background references in mes-
sages, and the only way the specification describes such
replacement occurring is by intercepting the messages
with a server. It is undisputed that Yahoo!’s system does
not alter existing messages and does not intercept them
with a server. Thus, there was insufficient evidence for a
reasonable jury to conclude that Yahoo! Messenger in-
fringed claim 45 under the doctrine of equivalents.

                             IV

    Yahoo! also appeals the district court’s denial of its
motion for JMOL of invalidity based on the prior art
references known as Goldschmitt and the Gold Guide.
We conclude that the evidence was sufficient to support
the jury’s conclusion that neither Goldschmitt nor the
Gold Guide disclosed inserting a background reference
into a message responsive to an overwrite authorization.
Both references described inserting background adver-
tisements whenever they were available to be inserted.
Neither reference disclosed a system that let users selec-
tively receive advertisements.

    Yahoo! places great weight on the following statement
in Goldschmitt: “When the user commands to read the
stored mail, the center 18 appends an advertisement, if
any, to the message and transmits the message to the
user.” We conclude that a reasonable jury could interpret
that statement as disclosing no more than that adver-
tisements would invariably be inserted if any suitable
advertisements were available. On that view, the state-


that Yahoo! Messenger inserts background references into
existing messages either literally or under the doctrine of
equivalents.
19                           CREATIVE INTERNET   v. YAHOO INC


ment does not disclose a system that allows users to
selectively receive advertisements. Yahoo! further con-
tends that Goldschmitt’s insertion was responsive to an
“overwrite authorization” because users authorized the
insertion of background advertisements by signing up for
the service. However, a system in which users opt in to
the advertising-supported service does not disclose the
second limitation of the claim, which requires “logic
configured” to insert background references responsive to
an overwrite authorization. Because neither of the refer-
ences disclosed inserting a background reference into a
message responsive to an overwrite authorization, the
district court correctly denied Yahoo!’s motion for JMOL
as to invalidity.

     Each party shall bear its own costs for this appeal.

     AFFIRMED IN PART and REVERSED IN PART
       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
               __________________________

       CREATIVE INTERNET ADVERTISING
               CORPORATION,
               Plaintiff-Appellee,

                            v.
                    YAHOO!, INC.,
                  Defendant-Appellant.
               __________________________

                       2010-1215
               __________________________

    Appeal from the United States District Court for the
Eastern District of Texas in case No. 07-CV-0354, Magis-
trate Judge John D. Love.
               __________________________

CLEVENGER, Circuit Judge, dissenting-in-part.

    First, a few words about the claim in suit. Claim 45 is
drawn to a computer program which contains logic con-
figured to do things to an “end user communication mes-
sage.” The “things” for which the logic is configured are:
(a) receipt of “an” end user communication message from
a first site; (b) insertion of a background reference to a
stored advertisement in “said” end user communication
message, with the logic further configured for insertion of
the background reference in response to an overwrite
CREATIVE INTERNET   v. YAHOO INC                          2


authorization; and (c) transmission of “said” end user
communication message with the background reference to
a second site.
    Yahoo! sought unsuccessfully to have the claim
treated in essence as a method claim, with the things for
which the logic is configured necessarily being performed
as steps in the order claimed. The district court instead
held that the claim is to an apparatus with no require-
ment for sequential configuration of the required logic.
Yahoo! also sought to have “end user communication
message” be construed to mean “a written communication
intended for an end user.” The district court disagreed,
and defined the term as “a set of data transmitted over a
network.” Yahoo! does not appeal either point.

    Coming back to claim 45, the “end user communica-
tion message” is just “a set of data transmitted over a
network.” And an infringing computer program need only
have logic configured to permit (a) receipt of a set of data
from a first site; (b) insertion of the claimed background
reference in a set of data in response to an overwrite
authorization; and (c) transmission of a set of data with
the background reference to a second site. The logic does
not have to be executed in any particular order.

    The jury heard testimony that Yahoo!’s Messenger
computer program has logic configured to do each of the
three things called for by claim 45. Nonetheless, the
majority reverses the jury verdict of infringement on two
grounds. First, the majority revises the district court’s
claim construction to require the limitations of claim 45 to
act upon a single message. Second, the majority reverses
the jury’s finding of infringement under the doctrine of
equivalents. I respectfully disagree with the majority’s
3                            CREATIVE INTERNET    v. YAHOO INC


reasoning and conclusion on both grounds. 1 We should
sustain the jury’s verdict of literal and equivalents in-
fringement.

                               I

     Yahoo! hinges its appeal on a single claim construc-
tion argument and asks the Court “[w]hether the district
court erred in construing the phrase ‘said end user com-
munication message.’” Appellant Br. at 1. Yahoo!’s
argument relies upon reading the phrase “said end user
communication message,” used in the second and third
limitations of claim 45, as dependent upon the phrase “an
end user communication message” used in the first limita-
tion. Yahoo! argues that the use of the word “said” means
that the end user communication message (or “set of data”
as construed by the district court) referenced in the sec-
ond and third limitations of claim 45 must be the exact
same set of data that is received over the network in the
first limitation. The majority sides with Yahoo!.

    Yahoo! understands that the district court’s interpre-
tation of “said” in connection with “a” or “an” in claim 45
means that the claimed logic configurations need not be
performed on the same set of data. That is why Yahoo!
bases its appeal on whether the district court erred in
construing the “said end user communication message”
limitation. The majority misrepresents Yahoo!’s argu-
ment when it contends that “the focus of Yahoo!’s appeal
is not on the district court’s construction of the term ‘said,’
but on the court’s failure to instruct the jury that ‘all the
limitations must be configured to operate on the same
message.’” Maj. Op. at 7. Yahoo!’s argument on appeal is

        1   I agree with the majority’s reasoning and con-
clusion on the validity issue.
CREATIVE INTERNET   v. YAHOO INC                           4


exactly that the use of the phrase “said end user commu-
nication message” in connection with the phrase “an end
user communication message” requires each limitation to
act upon the same message.

     Yahoo!’s argument is barred by our case law. We
have made clear that the use of an indefinite article such
as “a” or “an” carries the meaning of “one or more.” See
KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
(Fed. Cir. 2000). The “one or more” construction is a
bedrock rule of patent law, with very limited exceptions,
none present in this case. See Baldwin Graphic Sys., Inc.
v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). We
have also clarified that “[t]he subsequent use of definite
articles ‘the’ or ‘said’ in a claim to refer back to the same
claim term does not change the general plural rule, but
simply reinvokes that non-singular meaning.” Id. Thus,
the use of the term “said” does not require, or even imply,
that each limitation must execute upon a single message
when the claimed apparatus is used. Instead, “said end
user communication message” merely references “one or
more” end user communication messages. “Said” is an
anaphoric phrase that merely refers back to the initial
antecedent phrase. Baldwin Graphic, 512 F.3d at 1343
(“Because the initial phrase carries no definitive numeros-
ity, the anaphoric phrases do not alter that meaning in
the slightest.”). Yahoo!’s claim construction argument on
the meaning of the term “said” fails under our precedent.
Indeed, the district court carefully and precisely in-
structed the jury as to what “an end user communication
message” means in claim 45 under Baldwin Graphic: the
second and third limitations can be performed on any set
of data, not necessarily the set of data that is received in
the first limitation.
5                            CREATIVE INTERNET   v. YAHOO INC


    The majority wrongly accuses the district court of
dereliction of duty for failing to instruct the jury that all
three logical elements must operate on the same message.
First, in the context of claim 45, Baldwin Graphic prohib-
its such an instruction. And, indeed, the district court
instructed the jury exactly to the contrary, namely that
the claim does not require all three logical elements to
operate on the same message. When the district court
told the jury that “said end user communication message”
merely refers back to “an end user communication mes-
sage,” which means one or more end user communication
messages, the jury and the parties knew that the three
logical elements need not be performed on a single mes-
sage.

    In addition to discounting Baldwin Graphic and erro-
neously revising the district court’s claim construction,
the majority fails to confront that claim 45 reads as an
apparatus claim on its face. Instead, the majority repeat-
edly treats the claim as a method claim with steps that
must be performed for infringement. See, e.g., Maj. Op. at
10 (“The claim language makes clear that all three logical
elements must act, at least once, on the same message or
messages.”). However, requiring a concerted execution of
the claimed logic upon a single message is not the proper
test for infringement of an apparatus claim. Instead, the
proper question for infringement is whether the accused
computer program contains logic configured to meet each
limitation, regardless of how or when the claimed logic is
used.

    Yahoo! appeals the jury’s finding that Yahoo! Messen-
ger meets the second limitation of claim 45 which requires
insertion of a background reference into an end user
communication message. Yahoo! argues that Yahoo!
Messenger cannot infringe because it never “replaces” or
CREATIVE INTERNET   v. YAHOO INC                          6


“overwrites” a pre-existing background reference in a
message; instead Yahoo! claims that Yahoo! Messenger
always creates a new message when an IMV-ID is se-
lected. However, at trial, Creative used the concept of
message buffers to demonstrate that Yahoo! Messenger
contains logic configured to replace a background refer-
ence in a set of data. 2

    Dr. Goldberg, Yahoo!’s technical expert, explained to
the jury that a message buffer is a set of data contained at
a location in computer memory. He further explained to
the jury that when a so-called “new instant message” is
sent or received by Yahoo! Messenger at least some of the
data in the buffers can be replaced. He stated:

   Q. The message, when it’s received, sits in memory,
      and then it’s overwritten by the next message,
      correct?

   A. Yes. It’s no longer accessible.

   Q. But it’s overwritten by the next message, is my
      question.

   A. Let’s be clear. Computers have incoming message
      buffers, the memory that when an incoming mes-
      sage comes in, that’s where it goes, okay? And the
      computer can then use that data that came in.

       2   While the majority appears to find a distinc-
tion between the words “insert,” “overwrite,” and “re-
place,” I note that the parties used these terms
interchangeably when referring to the second limitation of
claim 45. This is because the “insertion” occurs into a
message responsive to an “overwrite authorization.”
Thus, the “insertion” can also be referred to as a “re-
placement” or “overwrite” and the jury was instructed
accordingly.
7                          CREATIVE INTERNET   v. YAHOO INC


       The next message coming in is likely to be put
       right where that previous message was. It may or
       may not. But it could overwrite it. So the first
       message comes in, the next message comes in and
       overwrites it. And so the first message is gone.

    Q. Right. It’s overwritten.

    A. I think it’s fair to say in that memory, the first
       message is overwritten by the second one. Yeah, I
       have no problem with that.

Dr. Goldberg later confirmed that the buffer data is
replaced by each subsequent incoming or outgoing instant
message in Yahoo! Messenger.

    Q. Okay. And, in fact, in the other computer pro-
       gram, there’s memory that’s allocated once this
       chat session starts, and every message received is
       put in the same memory location and overwrites
       the previous message. You agree with that, don’t
       you?

    A. If the same location is being used every time for
       that buffer, the data coming in, then I agree with
       that.

    Q. Okay. And you said you think it’s likely in the
       Yahoo! Messenger program, it does happen that
       way?

    A. Yes, I do.

    Yahoo! argues that the jury misunderstood its expert’s
testimony and that each time any modification is made to
the message buffer it is the result of a new instant mes-
sage being created. However, Yahoo!’s argument is rooted
CREATIVE INTERNET   v. YAHOO INC                          8


in its proposed construction that “end user communication
message” means “a written communication intended for
an end user.” This construction was rejected by the
district court and Yahoo! does not appeal the rejection.
The district court’s unappealed construction states that
“an end user communication message” is merely “a set of
data transmitted over a network.” The record contains
sufficient evidence to allow a reasonable jury to find that
a replacement occurs within the set of data contained in
the message buffers.

    The majority additionally holds that the jury erred by
finding literal infringement of the third limitation in
claim 45. Yahoo!’s argument regarding the third limita-
tion is that because Yahoo! Messenger creates a new
instant message each time a user modifies a background,
it will never transmit an instant message on which the
“insertion” logic of the second limitation has already
executed. This argument is again rooted in Yahoo!’s
argument to the district court that “end user communica-
tion message” means “a written communication intended
for an end user” and further requires that claim 45 be
treated as a method claim with “steps” that must be
performed in the listed order.

    The third limitation of claim 45 requires “logic config-
ured to transmit said end user communication message
with the background reference to a second site.” As
previously discussed, Yahoo! does not appeal the construc-
tion of “end user communication message” as “a set of
data.” There is no factual dispute in the record that
Yahoo! Messenger in fact transmits sets of data with
background references to a second site and the majority
points to no evidence to suggest otherwise. Yahoo!’s
“ordered steps” argument must also be rejected. Claim 45
is an apparatus claim and the district court properly
9                           CREATIVE INTERNET   v. YAHOO INC


instructed the jury that the limitations of claim 45 do not
need to be performed in the listed order.

     For these reasons, we should affirm the jury’s finding
of literal infringement.

                             II

    I also dissent from the majority’s reversal of the jury
verdict of infringement under the doctrine of equivalents.
Because there can be no dispute that Yahoo!’s computer
program meets the first and third limitations in claim 45,
the only equivalents issue relates to the second limitation.
Yahoo! thus appeals from a jury verdict and denial of
judgment as a matter of law finding that the IMViron-
ments enable checkbox is equivalent to the “overwrite
authorization” in claim 45. Yahoo! contends that the jury
lacked sufficient evidence to decide that only insubstan-
tial differences separate Yahoo!’s enable checkbox from
the claimed overwrite authorization. See Appellant’s Br.
at 42 (“The district court’s decision was erroneous because
the differences between the IMVironments enable check-
box and an ‘overwrite authorization’ are substantial.”).

    The majority finds Creative’s expert testimony on the
doctrine of equivalents lacking, even though Creative’s
expert, Mr. Klausner, described in detail how the func-
tion, way, result test should be applied to both the “over-
write authorization” in claim 45 and the enable
IMVironments checkbox in Yahoo! Messenger. By any
measurement (other than the majority’s), Creative’s
equivalents evidence meets the relevant test. See Tex.
Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d
1558, 1567 (Fed. Cir. 1996) (“a patentee must [] provide
particularized testimony and linking argument as to the
‘insubstantiality of the differences’ between the claimed
CREATIVE INTERNET   v. YAHOO INC                          10


invention and the accused device or process, or with
respect to the function, way, result test when such evi-
dence is presented to support a finding of infringement
under the doctrine of equivalents”).

    While it appears that the majority finds Mr. Klaus-
ner’s testimony on the appealed issue sufficient, see Maj.
Op. at 17, the majority adopts a different rationale from
that presented by Yahoo! and suggests that Creative
erred by failing to introduce equivalents testimony re-
garding other aspects of the second limitation. There is
no basis in our case law for requiring particularized
testimony and linking argument on aspects of a limitation
that are not argued to be infringed under the doctrine of
equivalents. Of course this is so because it is precisely the
doctrine of equivalents argument — here whether the
IMVironments checkbox is equivalent to the “overwrite
authorization” — that needs particularized testimony, not
other aspects of the claim. The majority’s suggestion that
more is required is mistaken. There is certainly sufficient
particularized testimony and linking argument on the
“overwrite authorization.”
