CAFC in Viatech v. Microsoft: a collection of files is a file, but no argument by footnote

The CAFC found D. Delaware erred in claim construction:


We agree with ViaTech that the district court’s construction
of “dynamic license database” is unsupported by
the ’567 patent specification. The district court construed
the term to mean “a database that resides in the digital
content file and that is programmed to accept modifiable
licenses.” ViaTech Tech. Inc., 2016 WL 3398025, at *5.

(...)

Microsoft argues that the preamble language of
Claims 1, 28 and 31, “comprising,” “containing,” and
“including” respectively, require that all the subsequent
recited claim elements “reside in” the claimed “digital
content file.” We do not agree. Doing so would render the
“embedded in” and “associated with” language in those
claims superfluous, and a “claim construction that gives
meaning to all the terms of the claim is preferred over one
that does not do so.” Merck & Co. v. Teva Pharm. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also In re
Power Integrations, Inc., 884 F.3d at 1376. In the context
of claim 1, the better reading of the final paragraph
relating to the “the dynamic license database” is that it
recites the required functional relationship between the
database and the digital content file, not that the database
necessarily resides in the digital content file.
We also do not agree with the district court’s conclusion
that “dynamic” in “dynamic license database” defines
the license rather than the database.



And, of the meaning of "file"


The district court construed file as “a collection of data
that is treated as a unit by a file system.” ViaTech
Tech. Inc., 2016 WL 3398025, at *6. The district court
then applied the construction to Microsoft Windows and
found that pre-installation, the disk image file version of
Windows is a “file,” but that post-installation, “Windows
is a collection of files, not a single file.” ViaTech Tech.
Inc., 2017 WL 2538570, at *5.
We do not agree that a collection of files cannot be a
“file” under the district court’s construction.

(...)

Both ViaTech and Microsoft agree that such “container
files” can be a “file” as the term is used in the ’567
patent. Appx2501–02 (Microsoft Expert Testimony);
Appx1172 (ViaTech Expert Testimony); Oral Arg. 23:59–
24:26 (Microsoft’s admission during appellate argument).
Microsoft’s expert’s analogy is illustrative: a large box
with smaller boxes in it would still be considered a single
package. Appx2502. Similarly, a file with multiple files
within it can still be “a collection of data treated as a unit
by a file system.”
This understanding of “file” does not require changing
the district court’s construction, only its application of
that construction. Thus, we uphold the district court’s
construction, but clarify that a “file” as claimed in the ’567
patent may be a collection of files.



BUT


A district court’s grant of summary judgment is reviewed
in accordance with the law of the regional circuit.
Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375,
1379 (Fed. Cir. 2016). The District of Delaware is in the
Third Circuit, which reviews a grant of summary judgment
de novo. Chimie v. PPG Indus., Inc., 402 F.3d 1371,
1376 (Fed. Cir. 2005). Here, Microsoft is “entitled to a
judgment as a matter of law” if ViaTech, as the party with
the burden of proving infringement, “has failed to make a
sufficient showing on an essential element of [its] case
with respect to which [it] has the burden of proof.” Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986).
Despite changing the construction of “dynamic license
database” and clarifying the district court’s construction
of “file” above, we find that these modifications do not
affect the reasoning or outcome of the district court’s
summary judgment order.



As to "argument by footnote"


Arguments that were not properly presented to the
district court are waived on appeal. Sage Prods., Inc. v.
Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997).
As a threshold matter, a single footnote is insufficient to
present a distinct infringement theory to the district
court. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006). Here, the footnote
did not even present a distinct alternative infringement
theory: there is no element by element analysis of a postinstallation
version of Windows, or even a statement that
the post-installation version is a file that infringes the
’567 patent too. And regarding the four unquoted, uncited
paragraphs of ViaTech’s 147 paragraph expert report,
ViaTech agrees that the district court was not obligated to
address theories presented in an expert report when the
theories were not raised or cited in briefing before the
court. Oral Arg. 13:04–13:58; see also Pandrol USA, LP v.
Airboss Ry. Prod., Inc., 320 F.3d 1354, 1366 (Fed. Cir.
2003) (“There is no onus on the district court to distill any
possible argument which could be made based on the
materials before the court. Presenting such arguments in
opposition to a motion for summary judgment is the
responsibility of the non-moving party, not the court.”)
(citation omitted).