Filewrapper-old

Two district courts, one correct claim construction; $103 million damage award vacated
April 25, 2008
In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction. The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent. The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.Finistar owns a patent directed to an information broadcasting system that gives subscribers access to video and audio programs through high-speed satellite or cable links. The claims are directed towards a system and method for scheduling transmission of database tiers on specific demand or at specific times and rate of repetition. Finistar sued DirecTV for infringement in the Eastern District of Texas. A jury found DirecTV willfully infringed, and the ultimate damages award was $103 million. DirecTV appealed.On appeal, the Federal Circuit considered the claim construction of the Texas court, as well as the U.S. District Court for the Northern District of California, both of which issued a Markman ruling regarding Finistar's patent, although in unrelated cases. Not surprisingly, the Texas and California courts construed the claims differently, with the Texas court giving a broader meaning than the California court. The Federal Circuit adopted the California's court interpretation of the claim phrase "information database" as meaning "a collection of computerized information which can be accessed and searched, and from which selected information can be retrieved, and where the search and retrieval capabilities are at least as specific as those of the hierarchically arranged set of indices." A second claim phrase "downloading into a memory storage device" was also construed in accordance with the California court, rather than the Texas court, as meaning not just the mere transfer of data but the retention of data into a memory storage device, as supported by the specification.

Using these claim interpretations, the Federal Circuit reviewed the jury's infringement finding, a question of fact. However, when the infringement verdict relied upon an incorrect claim construction, the appellate court may grant JMOL or order a new trial, depending upon the degree of difference between the incorrect construction and the correct construction.With respect to the "information database" claim limitation, the Federal Circuit concluded that its reversal of the district court's claim construction had no discernible effect on the jury verdict and thus the district court's construction was harmless. With respect to the claim limitation "downloading into a memory storage device," however, the correct interpretation was markedly different than the incorrect interpretation used by the jury. Thus, the Federal Circuit vacated the jury's verdict of infringement and remanded the case back to the district court.There was also an issue of the meaning of "each" as used in the claim limitation for the step of "assigning each selected portion of said information database one or more scheduled transmission times." The Federal Circuit concluded that this phrase did not require scheduling of all transmitted information, but rather only each part of the information database which was selected for transmission.The court next considered the question of validity of the broadest asserted claim, claim 16, in view of a prior art textbook. The interpretation of the textbook depended upon the principles of English grammar, including the location of a comma, and the doctrine of the last antecedent and its corollary, the rule of punctuation (concepts frequently used in statutory construction). The court noted that these are grammar guidelines, more than absolute rules (somewhat like the Pirate Code). The court explained that in order to avoid slipping into a realm of ambiguity that could render jury verdicts wholly unreviewable, it imputes an understanding of English grammar and usage to the jury, while consulting the overall context of the claim passage and how such passage would be interpreted by one of skill in the art.In opposition to the claim construction analysis where the Federal Circuit gave a narrow interpretation of the claims and then concluded infringement did not exist, for the validity analysis the court gave the textbook reference a broad interpretation, and then concluded that the broadest claim was invalid as anticipated. Thus, the court reversed the district court's denial of DirecTV's JMOL motion regarding invalidity of that claim, and remanded for further proceedings.The court then reviewed the jury's finding of non-obviousness of the remaining claims. This question of law is reviewed without deference, though the underlying facts are reviewed for substantial evidence. Since claim 16 was anticipated by the textbook, the Federal Circuit concluded as a matter of law that the elements of claim 16, arranged as in claim 16, were part of the scope and content of the prior art under the Graham analysis. Based on the revised scope and content of the prior art, the Federal Circuit vacated the district court's denial of a motion for JMOL of obviousness and remanded for further proceedings regarding the remaining claims.DirecTV also appealed the finding of willfulness by the district court, which had faulted DirecTV for not obtaining an attorney's opinion on invalidity, even though it had an opinion of noninfringement. However, the Federal Circuit noted that a competent opinion of counsel concluding either noninfringement or invalidity is a sufficient basis to avoid willfulness, which requires objectively reckless behavior.Finisar cross-appealed the district court's finding of invalidity of several claims as indefinite. 35 U.S.C. § 112, ¶ 2 requires that the claims "particularly point out and distinctly claim the subject matter which applicant regards as the invention." Here, the relevant claims required "means for generating and embedding indices in the information database." However, the specification disclosed very little about the purported structure corresponding to this "means" clause. The specification provided no algorithm or description of structure corresponding to the claimed function. The Federal Circuit explained that for computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm. Thus, the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6. The patentee may express the algorithm in any understandable terms, including a mathematical formula, prose, a flow-chart, or any other manner that provides sufficient structure. Here, the district court correctly determined that the structure recited in the specification did not even meet the minimal disclosure necessary to make the claims definite. Simply reciting software, without providing some detail about the means to accomplish the function, is not enough, citing another recent case (described in more detail in this post). The Federal Circuit noted that it does not impose a lofty standard for definiteness, but in this case, the claims were quite vague. Thus, the court affirmed the finding of indefiniteness.To read the full decision in Finistar Corp. v. DirecTV Group, Inc., click here.
Post has no comments.
Post a Comment




Captcha Image
Return to the Filewrapper Blog
  Newer Posts Older Posts  

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole

Connect with MVS

Enter your name and email address to receive the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.