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Don't change horses in midstream: Patentee held to claim construction position taken at lower court
February 20, 2007
The Federal Circuit ruled today that a patentee could not argue a different claim construction than that argued before the district court. Because of this, the court affirmed the lower court's grant of summary judgment of noninfringement against the patent holder. Also, the court held that the patent holder did have standing to bring the case. Issues relating to the chain of title of a patent are determined by state law, and the defendants had therefore not proven any defect in the plaintiff's ownership interest. More details of the case after the jump.MyMail, Ltd. asserted that several internet service providers (ISPs) infringed U.S. Patent number 6,571,290 relating to providing remote internet access to network customers. The asserted claims cover a method of connecting a user to a given NSP (Network Service Provider), such as an ISP, by:
  1. providing a network device user with an initial use set of log-in information for initially communicating with an access SP via an available NSP;
  2. storing in a database of the network device a hidden time shared set of log-in information supplied by said access service for accessing said given NSP; and
  3. causing the network device to reestablish communication with the network via said given NSP using the hidden set of log-in information.
The district court defined an NSP as "a party that provides a connection to the network and authenticates users for access to the network." Part of the reason for this construction is because before the district court, Mymail asserted that the NSP had to perform this "authentication," rather than the access service. Specifically, during the Markman hearing, MyMail's lawyers stated:
There is no dispute between the parties that it is part of what the NSP does to serve as an authentication gatekeeper. When the user dials into the network service provider, there has to be some authentication. That is one of the things that the network service provider [NSP] does. The claims, however, do not address where the database for that authentication is maintained. . . . So the specification tells us that the location of that database is not really important. It is important that the NSP has to do it, but it is clearly a remote database.
Based on this (as well as an analysis of the specification), the court affirmed the lower court's claim construction. The manner in which the defendants operated was not in dispute, so the question of infringement collapsed to one of claim construction. Because the undisputed facts showed that, based on this claim construction, the defendants did not infringe, the court affirmed the lower court's finding of infringement. Also, continuing with the current trend of addressing whether the plaintiff can even bring an infringement case, the court examined the standing argument raised by the defendants. Specifically, the defendants contended that the defendant's chain of title to ownership of the patent was defective. MyMail obtained the patent by assignment from an individual named Robert Darby. Mr. Darby, in turn, obtained the patent when it was still an application via a state court foreclosure action on a promissory note secured by the application. The defendants argued that the promissory note was fraudulent, thus destroying MyMail's chain of title. The court disagreed. Issues relating to who holds legal title to a patent is governed by state law. As a result, the defendants had to prove that the earlier foreclosure judgment was somehow faulty under the requirements of Texas law (where the judgment was rendered). Because they did not allege any of the acceptable grounds for vacating that earlier judgment, the court affirmed the lower court's decision that MyMail had standing to bring suit. To read the full decision in MyMail, Ltd. v. Am. Online, Inc., click here.
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