Expert Testimony on Claim Construction That is Not Directed to Technical Points is Ignored
Symantec Corp. v. Computer Assocs. Int’l Click here to download the case Date: April 11, 2008 Panel: Gajarsa, Linn, DYK Author: Dyk District Court: E.D. Mich. Trial Judge: Friedman Summary: Fed Cir vacates summary judgment of noninfringement and of validity, affirms summary judgment of no laches (but dismisses laches cross-appeal), and affirms summary judgment of no inequitable conduct and no incorrect inventorship. This is the patent from two prior Hilgraeve v. Symantec appeals (Symantec bought the patents after being a defendant in the prior cases), and involves scanning of incoming computer files (e.g., from the internet) before they are available to the computer, so that they cannot infect the computer if they are malicious. The main issues are claim construction: Preamble: “a method of screening the data as it is being transferred”: This preamble term, though added during prosecution, was added in combination with other similar language in the body and was not relied on by the patentee, so there was no reason to depart from the ordinary view that a preamble is not a limitation. Also, the warning against giving two claim terms the same meaning (so as to create superfluous language) does not apply when one instance of the term is in the preamble: “it is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims.” In any event, the district court’s construction was inconsistent with constructions of other terms from the Hilgraeve cases. (Expert testimony to the contrary was given no weight because it was based on legal claim construction principles rather than technical principles.) “computer”/”computer system”: The district court erred in limiting these terms to a single computer merely because the patent only disclosed a single computer, as opposed to a network of computers. Although the specification is the best guide to meaning, the specification here did not define the terms or suggest that the patentee had adopted a special meaning, and did not consistently refer to a single computer as being the invention. So the terms got their ordinary, dictionary meanings. Expert testimony was again directed to the experts’ reading of the specification, and not to any technical point: “Such expert testimony, which does not identify the ‘accepted meaning in the field’ to one skilled in the art, is unhelpful.” “destination storage medium”: The district court construed this term to exclude peripheral devices outside the computer, based on its construction of computer, so this construction falls with the construction of “computer.” Inducement: Because CA’s customers could only use the accused device in an infringing manner, there was no need for Symantec to show an actual instance of infringement by an actual customer. Statement’s in CA’s customer literature were sufficient circumstance evidence to create a factual dispute. The Fed Cir instructed the district court to consider the intervening DSU specific intent requirement on remand. Laches: This issue was improper as a cross-appeal because it would not alter the judgment of noninfringement. (But the invalidity, inequitable conduct, and inventorship cross-appeals were proper.) Laches was a legitimate alternative ground for affirmance, however, because the district court properly concluded that CA could add (tack) time of alleged infringement by a company it acquired to its own time only if it could show that the prior products were the same as or similar to the products-in-suit. (CA’s expert declaration that the products use the same “antivirus engine technology” was too general.) Inventorship: The putative inventor’s corroborating evidence was only a calendar entry from the named inventor indicating that the two had spoken about anti-virus technology. Also, evidence about the named inventor’s lack of technical expertise was not relevant to the issue of the putative inventor’s contribution (especially since the named inventor was not the only named inventor; cf. Ethicon). Inequitable Conduct: The district court properly found no inequitable conduct under three of CA’s assertions: (1) the named inventor did not lie in his declaration simply because he could not remember his inventive contribution at trial and because he was non-technical; (2) it was not false for the named inventor to state in a declaration that he had worked in the area of computer communications technology for 10 years, when he had been in marketing part of that time; it was also not false for him to declare that he set out to develop an algorithm even if his co-inventor ultimately developed the algorithm; and (3) another named inventor’s failure to understand the claim language (which was not a failure to understand the claim meaning) also was not a basis for inequitable conduct. [I don’t understand this last distinction.] Validity: The district court’s findings of validity were premised on its narrow, erroneous claim constructions, so the Fed Cir vacated here too.
“A Skilled Artisan Would Know From Reading the Patent That X Could Be Done” is Insufficient for Written Description Support
PowerOasis, Inc. v. T-Mobile USA, Inc. Click here to download the case Date: April 11, 2008 Panel: Newman, Schall, Moore Author: Moore District Court: D.N.H. Trial Judge: Barbadoro Summary: Fed Cir affirms summary judgment of invalidity that was premised on PowerOasis’s inability to show written description in an ancestor application. The patents cover vending machines that allow connection of laptops to data lines (e.g., at airports), and were asserted here against WiFi hot spots. The relevant claim term was “customer interface,” and the district court relied solely on language added in the CIP application to construe the term to cover interfaces that are located inside a user’s laptop. As an initial matter, the Fed Cir affirmed that the patentee bears the burden to prove entitlement to a priority claim for a CIP where the PTO did not address the issue. (Cf. Ralston (challenger has burden where PTO had considered the issue)) On the merits, the priority document showed a visual display and some other structures as part of a “user interface” on a unitary vending machine, which was not sufficient to support the claimed “customer interface” that was construed to cover an interface in a user’s laptop (one embodiment that showed a laptop actually showed the interface on the vending machine and not the laptop). PowerOasis’s expert declaration was irrelevant because it danced around the salient issues, stating that it would have been known that the interface could have been put in a laptop rather than the vending machine: “Obviousness simply is not enough; the subject matter must be disclosed to establish possession.”
Note: This decision appears to answer, in the negative, the question of whether the patentee could have asserted the earlier priority date before the Markman process, and had the claims construed using only the original disclosure in order to maintain that earlier date. Also, it is not entirely clear what would happen if the claim construction had depended in part on the old material and in part on the new material.
KEY WORDS: PRIORITY (NO), BURDEN OF PROOF, WRITTEN DESCRIPTION (NO), EXPERT TESTIMONY (NO)
No Bad Faith Assertion Where Non-Disclosed Findings Of Abandonment Were (Perhaps) Erroneous
Judkins v. HT Window Fashion Corp. Click here to download the case Date: April 8, 2008 Panel: Michel, Bryson, Kennelly Author: Kennelly District Court: W.D. Pa. Trial Judge: Lancaster Summary: Fed Cir affirms denial of preliminary injunction that would prevent patentee Judkins from sending letters about his patent to HT’s customers. HT argued the patent was clearly unenforceable because Judkins did not tell the PTO of two incidents: (1) a decision in an interference involving a child of the patent-in-suit where a 4-year delay in filing the patent-in-suit was found to be an abandonment, and (2) a decision in a litigation involving a different patent, that Judkins had abandoned by his delay. Judkins brought a district court action out of the interference, but the parties then settled and got the court to enter an judgment declaring that there was no suppression or concealment. First, the suit from the interference was not a sham, as Judkins had a right to seek review of the Board, and the settlement was not a sham either: “When genuine adversaries reach a mutually agreeable compromise and present their agreement in detail to the court, and no fraud or other problems militate against the agreement’s enforcement, public as well as private interests are best served by giving effect to the settlement.” As for the finding of abandonment in the litigation, it was not dispositive of bad faith (I guess Judkins could have believed it was wrong.). The district court also properly applied the “objective baselessness” test even if it did not use those exact words, and even if it talked of subjective intent (which is part of bad faith). Also, the evidence on intent was apparently not strong enough to shift the burden to Judkins. Finally, Judkins was not warranted fees for a frivolous appeal simply because the Fed Cir seldom reverses denials of preliminary injunctions.
Term Can Take Multiple Different Meanings in a Single Claim; Structure and Process Can Be Mixed Somewhat in Claims
Microprocessor Enhancement Corp. v. Texas Instruments Inc. Click here to download the case Date: April 1, 2008 Panel: Newman, Gajarsa, Dyk Author: Gajarsa District Court: C.D. Cal. Trial Judge: Stotler Summary: Fed Cir affirms summary judgment of noninfringement but reverses summary judgment of indefiniteness. The main claim recited a method of executing certain instructions on a microprocessor that comprises certain structural limitations, wherein the method comprises certain method steps. Indefiniteness: Although the claim mixed structural and process aspects, it was not indefinite because it was plain when the claim was infringed, i.e., only when a chip having the recited structure performed the recited method (cf. IPXL Holdings). On a separate definiteness issue, the claims were not required to use the term “condition code” consistently throughout a claim, even if an antecedent term connected the multiple uses (because lack of antecedent is merely a clue to indefiniteness and is not itself a violation of Section 112). Infringement: MEC admitted that “pipeline stage” had a locational and temporal limit when it was recited with certain limiting language, but argued that there should be no temporal limit when the term was used alone in the claims. The Fed Cir read the term narrowly in all circumstances because (1) the term was used in a temporal context in the claim, (2) the specification did not really point either way, (3) the unmodified use of the term was added during prosecution with antecedent basis that pointed to a newly added function having temporal limitations (and only this reading would cause the amendments to meet the examiner’s indefiniteness rejection); (4) a parent application used the language and the examiner noted that it was conventionally known in the art (with an apparent known meaning that included temporal limitations); and (5) extrinsic evidence in the form of microprocessor textbooks supported the construction.
KEY WORDS: INDEFINITENESS (NO), ANTECEDENT BASIS, CLAIM CONSTRUCTION (NARROW), RELATED APPLICATION (YES), EXTRINSIC EVIDENCE (YES)
Assignment Is Not the Only Way to Transfer Patent Ownership
Akazawa v. Link New Technologies Int’l, Inc. Click here to download the case Date: March 31, 2008 Panel: Newman, Archer, Linn Author: Archer District Court: C.D. Cal. Trial Judge: Selna Summary: Fed Cir vacates summary judgment of lack of standing. The district court had held that Section 261’s requirement for assignment by a written instrument trumped Japanese law that passes ownership from the inventor automatically at his death. That was wrong because, even if assignments must be in writing, assignment is not the only way to transfer ownership of a patent. More generally, state law, and not federal law, applies to patent ownership. The Fed Cir thus remanded for the district court to consider the issue under Japanese law.