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Definition in Prosecution History Constitutes Narrowing Disclaimer; Expert Declaration Raises Issues of Fact on § 112 Defenses

April 6, 2015

Federal Circuit

Definition in Prosecution History Constitutes Narrowing Disclaimer; Expert Declaration Raises Issues of Fact on § 112 Defenses

April 6, 2015

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Vasudevan Software, Inc. v. Microstrategy, Inc., __ F.3d ___ (Fed. Cir. Apr. 3, 2015) (Chen, LINN, Hughes) (N.D. Cal.:  Seeborg) (2 of 5 stars)

Federal Circuit affirms non-infringement judgment and underlying claim constructions but reverses summary judgment of lack of written description and enablement.

Claim Construction:  The patents were directed to a processing cube capable of collecting and processing “live” data from multiple incompatible databases (also called “disparate databases”).  The term “disparate databases” was correctly construed to require an absence of compatible keys and record ID columns of similar value and similar format in the schemas or structures that would otherwise enable linking data.  Neither plain meaning nor the specification addressed how “disparate” the databases have to be.  Moreover, the plaintiff’s expert admitted the term had no “consistent” meaning, and both the plaintiff’s stipulation with other defendants to a broader construction and the current defendants’ marketing materials (which were not contemporaneous with the filing date) were irrelevant.

This left the prosecution history, which defined the disputed term by saying it “refers to” databases with the three features in district court’s construction.  This required disparate databases not to have any of the three features (rather than just to be lacking one or more), because, under proper grammar, “the phrase ‘not A, B, or C’ means ‘not A, not B, and not c.’”  Slip op. at 14.  Finally, the term “incompatible databases of different types” in other claims was synonymous with “disparate databases,” because the patentee waived any contrary argument.  Summary judgment was appropriate because the patentee stipulated to non-infringement under these constructions.

Written Description:  Fact issues precluded summary judgment on lack of written description for “accessing disparate databases.”  The specification referred to accessing “incompatible source databases,” which suggested the inventors had possession, even though it was not in haec verba support.  The inventor’s admissions that none of the figures showed accessing disparate databases “simultaneously” were irrelevant because the claims didn’t require “simultaneous” access.  Moreover, the patentee’s expert provided a non-conclusory explanation for how the specification showed possession of the invention, and the defendant had no contrary expert testimony.

Enablement:  Fact issues on several Wands factors precluded summary judgment.  There was conflicting evidence about how long it took the inventors to build an embodiment—some evidence suggested 1-man year, which an expert said was not “undue,” while other evidence suggested it took 3 years to make a commercial-grade system.  There were also, as with written description, disputes about how much guidance the specification provided.  Although the issue was “close,” these disputes prevent judgment that the Wands factors overall showed invalidity.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

Related Tags

CAFC Summary
Federal Circuit
claim construction (narrow)
disclaimer (yes)
written description (maybe)
enablement (maybe)

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Craig Countryman | Principal

Craig Countryman is a Principal in the Southern California office of Fish & Richardson and the Co-Chair of Fish’s Appellate Practice. Craig has been named a Law360 MVP for Appellate work, a Rising Star by Law360, and he has been selected for the “Top 40...

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