Network Commerce, Inc. v. Microsoft Corp.

United States Court of Appeals for the Federal Circuit

04-1445

NETWORK COMMERCE, INC.
and CRS, LLC,

Plaintiffs-Appellants,

v.

MICROSOFT CORPORATION,

Defendant-Appellee.

Robert E. Rohde, Rohde & Van Kampen PLLC, of Seattle, Washington, argued
for plaintiffs-appellants. Of counsel was Al Van Kampen.

J. Christopher Carraway, Klarquist Sparkman, LLP, of Portland, Oregon, argued
for defendant-appellee. With him on the brief was Jared S. Goff. Of counsel on the
brief were Stephen P. McGrath, Microsoft Corporation, of Redmond, Washington, and
Mark S. Parris, Heller Ehrman White & McAuliffe LLP, of Seattle, Washington.

Appealed from: United States District Court for the Western District of Washington

Judge Marsha J. Pechman
 United States Court of Appeals for the Federal Circuit

04-1445

NETWORK COMMERCE, INC.
and CRS, LLC,

Plaintiffs-Appellants,

v.

MICROSOFT CORPORATION,

Defendant-Appellee.

___________________________

DECIDED: September 8, 2005
___________________________

Before MAYER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and DYK, Circuit
Judge.

DYK, Circuit Judge.

Network Commerce, Inc. and CRS, LLC appeal from the judgment of the District

Court for the Western District of Washington holding that Microsoft Corporation

(“Microsoft”) did not infringe any claim of United States Patent No. 6,073,124 (the “’124

patent”) either literally or under the doctrine of equivalents. Network Commerce, Inc. v.

Microsoft Corp., No. 01-CV-1991 (W.D. Wash. Mar. 10, 2003) (“Network II”). We hold

that the district court was substantially correct in its construction of the term “download

component” and affirm its judgment of non-infringement. We also conclude that the

district court did not abuse its discretion by denying Network Commerce a Rule 56(f)

continuance.
 BACKGROUND

I

Network Commerce, Inc. was the assignee of the ’124 patent. CRS, LLC is the

successor in interest to Network Commerce in that respect. We refer to the appellants

collectively as “Network Commerce.”

The ’124 patent claims a method and system for purchasing electronic

information, such as software or audio files, over a computer network. The system and

method of the patent have two general embodiments reflected in independent claims 1,

7, 11, and 14. The simpler embodiment, reflected in independent claims 7, 11, and 14

of the ’124 patent, as well as dependent claims 10, 13, and 16, involves three

computers.1 A first computer (operated by the customer) sends a request for electronic

1
The independent claims read:

7. A method in a computer system for conducting electronic
commerce, including:
requesting a first web server to order electronic data;
receiving in response to the request a download component for
coordinating the download of the electronic data; and
under control of the download component, downloading from a second
web server the electronic data.

’124 patent, col. 26, ll. 55-62 (emphasis added).

11. A method in a store computer for coordinating electronic
commerce, the method including:
receiving from a client computer a request to purchase electronic data;
and
in response to receiving the request, sending to the client computer a
download component, the download component for coordinating
the download of the electronic data from a supplier computer to the
client computer, the supplier computer for downloading to the client
computer the electronic data when requested by the download
component.

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data to a second computer, which is the store computer of an online merchant, and, in

response, the second computer sends the first computer a download component. The

download component coordinates the download of the requested electronic data

(typically content such as software or audio files) from a third computer to the first

computer. The location of the third computer is not disclosed.

The more complex embodiment involves four computers. This embodiment is

claimed in independent claim 1 of the ’124 patent, as well as various dependent claims.2

Id. at col. 27, ll. 8-18 (emphasis added).

14. A first computer for coordinating electronic commerce, including:
means for receiving from a second computer a request to purchase
electronic data; and
means for, in response to receiving the request, sending to the second
computer a download component, the download component for
coordinating the download of the electronic data from a third
computer to the second computer, the third computer for
downloading to the second computer the electronic data when
requested by the download component.

Id. at col. 28, ll. 4-14 (emphasis added).
2
Claim 1 reads:

1 A computer system for conducting electronic commerce, including:
a store computer that receives requests for electronic data from a
client computer and that, in response to receiving the request,
sends to the client computer a download component that
coordinates the download of the electronic data,
a supplier computer that receives a request from the download
component of the client computer to download the electronic data
and that, in response to receiving the request, sends the electronic
data and a licensing component to the client computer, the
licensing component for coordinating the licensing of the electronic
data, and
a licensing computer that receives a request from the licensing
component of the client computer to license electronic data and
that, in response to receiving the request, determines whether
access to the electronic data is to be allowed at the client computer,

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In this embodiment a first (customer) computer sends a request for electronic data to a

second (merchant) computer, and, in response, the second computer sends the first

computer a download component. The “download component” coordinates the

download of the electronic data (content) from a third computer to the first computer. In

addition, the third computer sends the first computer a licensing component. The

licensing component coordinates the licensing of the electronic data by requesting a

license from a fourth computer. If the fourth computer determines that access to the

electronic data is allowable, it sends a notification to the first computer permitting

access to the electronic data. The locations of the third and fourth computers are not

disclosed.

II

The accused products are Microsoft’s Windows Media® Player and metafiles.

Windows Media Player is a software program used to play digital audio and video

content files. Windows Media Player is a compiled program, meaning that its program

instructions have been preprocessed into machine language and are ready for

execution by the operating system. Users may obtain content files for play on Windows

Media Player in a number of ways, including through a computer network such as the

Internet. Metafiles are non-compiled text files that are interpreted by Windows Media

Player. “Window’s Media metafiles are data files that contain information that Windows

Media Player can use to obtain and play digital audio and video content files. That

information contained within the metafile can include the location or address of an

and when access is allowed, sends a notification that access is
allowed to the client computer.

Id. at col. 26, ll. 17-37 (emphasis added).

04-1445 4
associated content file.” (J.A. at 1210-11.) While compiled programs (such as

Windows Media Player) may be directly interpreted by the operating system of a

computer, text files (such as a metafile) must normally be interpreted by an intermediate

program first (such as Windows Media Player).

When used in conjunction with Windows Media Player, metafiles are capable of

directing Windows Media Player to a website. In one scenario, a user viewing a web

page on an Internet browser selects a link on the web page corresponding to a

particular content file. This causes the browser to download a metafile, which is passed

to Windows Media Player, which in turn reads the address contained in the metafile and

sends a request for the content file to the address in the metafile (that is, the address of

the computer that has the electronic content). The computer receiving the request

sends content to Windows Media Player, which then plays that content for the user.

Metafiles can also be used to perform more complex tasks, such as inserting

advertisements and setting the order of downloads in a playlist.

III

Network Commerce filed suit against Microsoft on December 6, 2001, alleging

infringement of one or more claims of the ’124 patent, including at least claims 1, 7, 11,

13, 14, and 16. The district court issued its claim construction order construing the

claims of the ’124 patent on October 29, 2002. “Download component” was one of the

terms construed by the district court.3 It rejected both parties’ proposed constructions

and found “that a ‘download component’ by the plain language of the claims requires an

executable file or program, but does not necessarily need to be merchandise-specific.”

3
The district court also construed the term “licensing component.” We
need not reach this construction issue due to our disposition of the case.

04-1445 5
Network Commerce, Inc. v. Microsoft Corp., No. 01-CV-1991, slip op. at 7 (W.D. Wash.

Oct. 29, 2002) (“Network I”). In reaching its construction, the district court reasoned that

the words “download” and “component” in combination “imply a part that downloads or a

part that plays an active role in downloading” and therefore must be “an executable file

or program.” Id. It also found that the “download component” must be an executable

file or program because it “‘coordinates’ or ‘controls’ the download of information” and

“makes requests for electronic content from a source computer.” Id. The district court

further found that the specification and prosecution history supported its interpretation of

download component. Id. at 8.

On March 10, 2003, the district court granted Microsoft’s motion for summary

judgment of non-infringement. First, the district court held that a download component

must independently “coordinate or control the download of information, [and] request

electronic content from a source computer.” Network II, slip op. at 6. Applying this test

to metafiles, the district court held that a metafile is not a download component because

“on their own [metafiles] are neither able to coordinate or control the download of

information, nor request electronic content from a source computer.” Id. (emphasis in

original).

Second, the district court held that a download component must be “downloaded

onto a client computer in response to a request for electronic content.” Id. It held that

Windows Media Player is not a download component because Network Commerce

failed to “set forth specific facts showing that . . . Windows Media® Player is

downloaded onto a client computer in response to a request for electronic content, or

that once installed the Windows Media® Player makes a request on its own for that

04-1445 6
content.” Id. Accordingly, the district court found no literal infringement and no

infringement under the doctrine of equivalents.

Finally, the district court denied Network Commerce a continuance pursuant to

Rule 56(f) of the Federal Rules of Civil Procedure to conduct further discovery even

though the original discovery period had not expired. The district court found that “[j]ust

because [Network Commerce] thinks evidence that supports its assertions may exist,

that alone is not a basis to grant it a continuance under Rule 56(f).” Id. at 8 (emphasis

in original). The district court also found that Network Commerce already had sufficient

time to conduct discovery and that Network Commerce’s delay of over two months in

requesting the continuance after receiving Microsoft’s summary judgment motion

weighed against granting the request. The district court entered judgment on June 15,

2004.

We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a grant of summary judgment without deference. C.R. Bard, Inc. v.

U.S. Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004). Claim construction is a matter

of law that we review without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d

1448, 1454-55 (Fed. Cir. 1998) (en banc). In construing the claims we follow our recent

decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

04-1445 7
 I

A

Network Commerce objects to the district court’s construction of the term

“download component” and appears to support the construction it argued to the district

court: “any part of a computer system – including a program, an application, or a data or

text file – that arranges for, or works together with one or more other parts of the system

to arrange for, the transfer or delivery of the requested electronic data from one

computer or server to another.” Network I, slip op. at 6. Under this construction,

Network Commerce argues that both the metafiles and the Windows Media Player

satisfy the claim limitation because each “works together with one or more other parts of

the system to arrange for, the transfer or delivery of the requested electronic data from

one computer or server to another.” We reject this proposed construction, and agree

substantially with the district court’s construction of the term.4

We start with the language of the claims. The ’124 patent has four independent

claims, all with similar requirements. Each independent claim of the ’124 patent (that is,

claims 1, 7, 11, and 14) uses the term “download component.” First, each independent

claim states that the download component is either sent to or received by a computer in

4
Network Commerce also argues that the district court changed its
construction of “download component” on summary judgment by requiring that the
download component coordinate or control the download of information on its own. We
reject this argument. The district court simply clarified its previous construction in the
summary judgment order, wherein it had already rejected the contention “that the
‘download component’ could possibly be a completely inactive data file or that the active
functions referred to in the claims could be carried out by some other component.”
Network Commerce, Inc. v. Microsoft Corp., No. 01-CV-1991, slip op. at 8 (W.D. Wash.
Oct. 29, 2002).

04-1445 8
response to a request for electronic data.5 Second, the download component must

coordinate the download of electronic data.6 Finally, the download component must

request electronic data from (or control the download of electronic data from) a

computer other than the computer from which the download component was sent or

received.7 Thus, the claims define how the download component is obtained and in

general terms what the download component does.

The claims also assume that the “download component” is a component of a

larger software system, that is, the download component does not alone direct the

computer hardware to perform the designated tasks. The difficulty is that the claim

language is not clear as to what other programs are to be used with the “download

component.” At oral argument (though unfortunately not in the briefs) the parties

agreed that the download component at least operates in conjunction with the

5
Claim 1, ’124 patent, col. 26, ll. 20-22 (“in response to receiving the
request [for electronic date], sends to the client computer a download component”);
claim 7, id. at col. 26, ll. 57-58 (“receiving in response to the request [to order electronic
data] a download component”); claim 11, id. at col. 27, ll. 12-13 (“in response to
receiving the request [to purchase electronic data], sending to the client computer a
download component”); and claim 14, id. at col. 14, ll. 9-10 (“in response to receiving
the request [to purchase electronic data], sending to the second computer a download
component”).
6
Claim 1, id. at col. 26, ll. 21-23 (“a download component that coordinates
the download of the electronic data”); claim 7, id. at col. 26, ll. 57-59 (“a download
component for coordinating the download of the electronic data”); claim 11, id. at col.
27, ll. 13-15 (“the download component for coordinating the download of the electronic
data”); and claim 14, id. at col. 28, ll. 9-11 (same).
7
Claim 1, id. at col. 26, ll. 24-25 (“a supplier computer that receives a
request from the download component of the client computer”); claim 7, id. at col. 26, ll.
61-62 (“under control of the download component, downloading from a second web
server the electronic data”); claim 11, id. at col. 27, ll. 16-18 (“the supplier computer for
downloading to the client computer the electronic data when requested by the download
component”); and claim 14, id. at col. 28, ll. 12-14 (“the third computer for downloading
to the second computer the electronic data when requested by the download
component”).

04-1445 9
computer’s basic operating system, and that the operating system is not part of the

download component. The parties also agree that Windows Media Player and metafiles

taken together would constitute a “download component” if downloaded together from a

store computer. They differ, however, as to whether metafiles or Windows Media

Player standing alone constitutes a “download component.”

We construe a claim term as having its “ordinary and customary meaning,” that

is, “the meaning that the term would have to a person of ordinary skill in the art in

question at the time of the invention.” Phillips, 415 F.3d at 1313. In some cases, it is

possible to construe a claim term by applying “the widely accepted meaning of

commonly understood words.” Id. at 1314. “Download component” is not a claim term

amenable to construction in this manner because it has no commonly understood

meaning reflected in general dictionaries or similar sources. We may also rely on a

term’s “particular meaning in a field of art” when construing claims. Id. As the parties

seem to agree, the term “download component” does not have a specialized meaning in

the relevant art. Microsoft urges that “download component” does not have a particular

meaning in the computer art; and that the term does not appear in computer dictionaries

and treatises. Network Commerce also agrees that a definition of the term “download

component” as a whole does not exist, but invites the court to combine individual

dictionary definitions of “download” and “component.” Under that construction, any part

of a system involved in the transfer of data from one computer to another would be a

download component. This is not a tenable theory in light of the specification.

04-1445 10
 B

In general “the specification necessarily informs the proper construction of the

claims” and it is “appropriate for a court . . . to rely heavily on the written description for

guidance as to the meaning of claims.” Id. at 1317. Here, the specification does not

use the term “download component,” presumably because this claim terminology was

added during prosecution after the specification had been prepared. The specification

does describe a “download file.”8 It appears from the function and description of the

“download file” that this item corresponds most closely to the download component of

the claims. The specification explains that the download file resides in the computer of

an online merchant or is accessible to that computer. See ’124 patent at col. 9, ll. 34-37

& Fig. 3. When the merchant receives an online request for electronic content, the

online merchant “downloads and installs the download file” on the customer’s computer.

This file when downloaded into the customer’s computer “extracts [from the download

file] the executable boot program and component list.” See id. at col. 9, ll. 37-39.9 The

specification defines the capability of the boot program to include the ability to read “the

8
Network Commerce admits that “download component” appears nowhere
in the specification, but argues that since the word component is used broadly in the
specification to refer to all sorts of things, “download component” should be construed
just as broadly. This argument is unavailing. The specification’s broad usage of one
word from the claim term “download component” does not suggest that the phrase
“download component” has the same meaning as that one word.
9
The specification repeatedly states that the download file contains the
boot program. E.g., id. at col. 8, ll. 45-47 (“The download files. . . each contain an
executable boot program.”); id. at col. 15, ll. 55-57 (“[T]he download file . . . contains . . .
the boot program.”). The specification also makes clear that the boot program is
extracted from the download file. E.g., id. at col. 8, ll. 49-51 (“[T]he . . . download file is
processed to extract the executable boot program.”); id. at col. 15, l. 55-col. 16, l. 3
([T]he download file is a self-extracting file . . . . When the user indicates that the
download file is to be executed, the extraction code of the download file is executed,
which causes . . . the boot program . . . to be extracted.”).

04-1445 11
component list to determine what [electronic content] . . . to download . . . from the

appropriate contents supplier server,” and the ability to request the appropriate content

from the supplier server. Id. at col. 9, ll. 41-45. Thus, while the download file may

contain different things, the specification indicates that it must contain at least the boot

program.

The specification describes no programs mediating between the boot program

and the operating system. Moreover, figure 8 identifies the boot program as a file called

“SAFEboot.exe.” An “exe file” is a file in “binary code” and “a Windows exe file (e.g., the

Windows Media Player application) is an executable file because it is a sequence of bits

arranged in such a way that it can be executed by . . . the computer’s operating

system.” (J.A. at 1494-95.)

In summary, the specification makes clear that the download component must

include a boot program, and that the boot program interacts directly with the operating

system of the computer without the assistance of any other program. Accordingly, we

construe “download component” to mean a file or program either sent to or received by

a computer in response to a request for electronic data that 1) requests (or controls the

download of) electronic data from a computer other than the computer from which the

program was sent or received; 2) coordinates the download of electronic data; and 3)

interacts directly with the operating system of the computer without another program

mediating between it and the operating system. This construction of the term

“download component” is similar to the definition of “application” adopted in Eolas

Technologies, Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005). There we

approved the district court’s construction of “application” to mean “‘a computer program,

04-1445 12
that is not the operating system or a utility, that is designed to allow an end-user to

perform some specific task.’” Id. at 1336. In addition, we see nothing in the prosecution

history that remotely suggests that our interpretation of “download component” is

incorrect.

Network Commerce relies on the declaration of its expert, Theodore Coombs, for

the proposition that the “download component” need not contain the boot program. In

his declaration, Coombs quotes various passages from the specification, and

concludes: “I understand [these passages] to mean that there are possible

embodiments of this invention that use a ‘download component’ that does not contain a

boot program or executable code.” (J.A. at 1035.) Coombs’ declaration provides scant

support for Network Commerce’s position. As we recently reaffirmed in Phillips,

“conclusory, unsupported assertions by experts as to the definition of a claim term are

not useful to a court.” Phillips, 415 F.3d at 1318. Here Coombs does not support his

conclusion with any references to industry publications or other independent sources.

Moreover, expert testimony at odds with the intrinsic evidence must be disregarded. Id.

(“[A] court should discount any expert testimony that is clearly at odds with the claim

construction mandated by . . . the written record of the patent.”) (internal quotations and

citation omitted). That is the case here.10

10
Network Commerce also argues that there is an embodiment of the
invention disclosed in the specification wherein the boot program already resides on the
customer’s computer when the download component is received by the customer
computer, and that the term “download component” should therefore not be construed
to include the boot program. In support of this argument, it points to language in the
specification stating that “a minimum number of components are downloaded” and that
“[e]mbodiments of the invention also support the secure execution of requested
merchandise and minimize the number of components needed to securely download,
license, and execute the requested merchandise.” ’124 patent, col. 4, ll. 64-65 & col. 8,

04-1445 13
 II

A

The district court found that neither Microsoft’s metafiles nor Windows Media

Player literally infringed the claims of the patent. Network Commerce argues on appeal

that summary judgment of literal infringement was not appropriate because there are

genuine issues of material fact. Specifically, it argues that metafiles are computer

programs that carry out the claimed functions, relying on the declaration of its expert,

Theodore Coombs. However, the download component must interact directly with the

operating system of the computer without another program’s mediating between it and

the operating system. Coombs stated in his declaration that metafiles perform the

functions of the download component, but he did not state that they can perform those

functions through direct interaction with the operating system. He conceded that

metafiles are interpreted by Windows Media Player, which then sends instructions

through the operating system to the microprocessor. Furthermore, Network Commerce

concedes in its appeal brief that “metafiles are ‘powerful tools for controlling Windows

Media Player.’” (Br. of Pls.-Appellants at 8 (quoting Microsoft documents with

approval).) Thus, even according to Network Commerce, a metafile is not a download

component as correctly construed. No genuine issues of material fact exist regarding

metafiles.

Network Commerce also argues that it presented facts showing that Windows

Media Player itself is the download component, and that those facts raise a genuine

ll. 17-20. However, the specification makes clear that the boot program must be
downloaded from the merchant computer in response to a request for electronic content
at least once. Download of the boot program is discussed repeatedly, and no other
method of obtaining the boot program is disclosed.

04-1445 14
issue of material fact sufficient to avoid summary judgment of no literal infringement.

Download component is construed, in part, as a file or program either sent to or

received by a computer in response to a request for electronic data. The district court

held that Windows Media Player is not a download component because Network

Commerce failed to “set forth specific facts showing that . . . Windows Media® Player is

downloaded onto a client computer in response to a request for electronic content, or

that once installed the Windows Media® Player makes a request on its own for that

content.” Network II, slip op. at 6. Network Commerce argues that Microsoft’s website

teaches how to direct a user to a webpage where Windows Media Player may be

downloaded, and that if Media Player were downloaded in response to a request for

electronic content, this would constitute infringement. It is not enough that Windows

Media Player alone is downloaded; it must be coupled with a metafile because on its

own Windows Media Player does not make requests. There was no evidence that

Windows Media Player was downloaded in response to a request for electronic content,

much less evidence that Windows Media Player and metafiles were downloaded

together in the required combination. Summary judgment was proper because Network

Commerce cannot prove infringement without such evidence.11

11
Even accepting Network Commerce’s argument that in some instances
the boot program is not downloaded in response to later requests for electronic content,
there can be no infringement under that theory because there is no evidence that
Windows Media Player was ever downloaded in response to a request for electronic
data.

04-1445 15
 B

Network Commerce next argues that the district court erred in granting summary

judgment of non-infringement under the doctrine of equivalents because metafiles are

equivalent to the claimed device. Relying on Warner-Jenkinson, the district court

rejected Network Commerce’s equivalents argument and held that “[i]ncluding a

metafile as an equivalent to the download component would eliminate the requirement

that a download component include an executable file or program.” Network II, slip op.

at 7.

We need not reach the claim vitiation issue in this case. The evidence

supporting Network Commerce’s argument that metafiles, independent of Windows

Media Player, infringe under the doctrine of equivalents does not raise a genuine issue

of material fact. We have previously held that

a patentee must . . . provide particularized testimony and linking argument
as to the “insubstantiality of the differences” between the claimed
invention and the accused device or process, or with respect to the
function, way, result test when such evidence is presented to support a
finding of infringement under the doctrine of equivalents. Such evidence
must be presented on a limitation-by-limitation basis. Generalized
testimony as to the overall similarity between the claims and the accused
infringer’s product or process will not suffice.

Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir.

1996). The same rule applies in the summary judgment context. See PC Connector

Solutions LLC v. Smartdisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005) (“Having

presented the district court with only conclusory statements regarding equivalence,

without any particularized evidence and linking argument as to the ‘insubstantiality of

the differences’ between the claimed invention and the accused device, or with respect

to the ‘function, way, result’ test, PC Connector is now foreclosed from invoking the

04-1445 16
substantive application of the doctrine of equivalents. . . . “conclusory statements

regarding equivalence are not enough to warrant a remand on that issue, as they do not

raise any genuine issues of material fact.” (internal citations omitted)).

The expert declaration and other evidence relied on by Network Commerce

supporting infringement by equivalents are generalized and do not provide

particularized testimony and linking argument on a limitation-by-limitation basis. For this

reason the evidence did not raise a genuine issue of material fact. Summary judgment

of non-infringement under the doctrine of equivalents regarding metafiles was therefore

proper.

III

Finally Network Commerce contends that the district court abused its discretion

by denying Network Commerce a continuance to conduct further discovery under Rule

56(f) of the Federal Rules of Civil Procedure. Regional circuit law governs practice

under Rule 56(f) in this court. Q-Pharma, Inc. v. Andrew Jergens Co., 360 F.3d 1295,

1300 (Fed. Cir. 2004). The Ninth Circuit applies an abuse of discretion standard of

review to a district court’s decision denying additional discovery under Rule 56(f).

Qualls v. Blue Cross of Cal., Inc., 22 F.3d 839, 844 (9th Cir. 1994). Ninth Circuit law

holds that “the denial of a Rule 56(f) application is generally disfavored where the party

opposing summary judgment makes (a) a timely application which (b) specifically

identifies (c) relevant information, (d) where there is some basis for believing that the

information sought actually exists.” Visa Int’l Serv. Ass’n v. Bankcard Holders of Am.,

784 F.2d 1472, 1475 (9th Cir. 1986).

04-1445 17
 Network Commerce requested additional discovery on a number of issues, the

most significant of which was whether Microsoft or its customers downloaded Windows

Media Player to users in response to requests for electronic data. While we think that

the district court could not properly fault Network Commerce for delay in filing the Rule

56(f) motion during the bankruptcy proceeding, we do think the district court was correct

that Network Commerce had adequate time to conduct discovery before declaring

bankruptcy. Network Commerce had nearly 11 months to conduct discovery before it

declared bankruptcy. There is no requirement that the district court construe the claims

at any particular time, and thus the parties are under an obligation to conduct discovery

without the benefit of the district court’s construction. See Jack Guttman, Inc. v.

Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002) (“District courts may

engage in a rolling claim construction, in which the court revisits and alters its

interpretation of the claim terms as its understanding of the technology evolves.”). The

district court did not abuse its discretion by denying Network Commerce’s request for

additional discovery under Rule 56(f).

CONCLUSION

The district court’s summary judgment of non-infringement both literally and

under the doctrine of equivalents is affirmed. We also hold that the district court did not

abuse its discretion by denying Network Commerce’s request for a Rule 56(f)

continuance.

AFFIRMED.

COSTS

No costs.

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