The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending November 7, 2014. Pat Kartes, Tearra Vaughn and Wes Achey prepared this edition.
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The Patent Application: Claims: Indefiniteness
Claim Interpretation: Means-Plus-Function
Williamson v. Citrix Online, LLC, et al., No. 13-1130 (Fed. Cir. (C.D. Cal.) Nov. 5, 2014). Opinion by Linn, joined by Moore. Dissenting opinion by Reyna.
The Federal Circuit vacated the district court’s judgment of noninfringement and invalidity and remanded the case back to the district court. In doing so, the Federal Circuit determined that the district court erred in construing two limitations of the claims, erroneously requiring an additional feature in one claim limitation and erroneously determining that the term “distributed learning control module” constituted a means-plus-function limitation.
Richard Williamson (“Williamson”), the trustee for the At Home Corporation Bondholder’s Liquidating Trust, brought patent infringement suits against the appellees in the U.S. District Court for the Central District of California, asserting that all of the claims of U.S. Patent No. 6,155,840 (“the ’840 patent”) were infringed. The ’840 patent is directed to methods and systems for “distributed learning” that provides a “virtual classroom” environment that connects one or more presenters with geographically remote audience members.
The district court issued a claim construction order concluding that various graphical display limitations (“graphical display representative of a classroom” and a “first graphical display comprising . . . a classroom region”) each require “a pictorial map illustrating an at least partially virtual space in which participants can interact, and that identifies the presenter(s) and the audience member(s) by their locations on the map.” Additionally, the district court construed the term a “distributed learning control module” to be a means-plus-function term under 35 U.S.C. § 112, paragraph 6. Then, having determined that the specification failed to disclose the algorithms for performing the claimed functions of the “distributed learning control module,” the district court found that the claims containing that limitation were invalid for being indefinite under 35 U.S.C. § 112, paragraph 2. After conceding that, under the district court’s claim constructions, the accused products did not infringe any of the claims that were not invalidated, Williamson appealed to the Federal Circuit.
Reviewing the issues de novo, the Federal Circuit disagreed with the district court’s construction of the graphical display limitations as requiring a “pictorial map” and determined that there is no suggestion in the record that a pictorial map is required, pointing to all of the described embodiments of the pictorial map as merely “preferred.” Further, the Federal Circuit held that the appellees did not overcome the strong presumption that the term “distributed learning control module” is not subject to 35 U.S.C. § 112, paragraph 6. In doing so, the Federal Circuit determined that the district court erred in failing to appreciate structural connotations of the term “module,” placing undue emphasis on the word “module” separate from the remaining claim language, and failing to give proper weight to the surrounding context of the rest of the claim language and supporting text.
Claim Interpretation: Ordinary Meaning
Litigation Practice and Procedure: Jurisdiction: Standing
Azure Networks, LLC, et al. v. CSR PLC, et al., No. 13-1459 (Fed. Cir. (E.D. Tex.) Nov. 6, 2014). Opinion by Chen, joined by Reyna. Opinion dissenting in part by Mayer.
The Federal Circuit affirmed-in-part, vacated-in-part, and remanded the case back to the district court. In doing so, the Federal Circuit held that the district court improperly construed the claim term “MAC address” beyond its ordinary meaning at the time of the invention. The Federal Circuit did, however, affirm the dismissal of Tri-County Excelsior Foundation (“Tri-County”), concluding that an agreement between Tri-County and Azure Networks, LLC (“Azure”) constituted an effective assignment of all substantial rights from Tri-County to Azure for purposes of standing.
Azure and Tri-County brought suit against the appellees in the U.S. District Court for the Eastern District of Texas, alleging infringement of U.S. Patent No. 7,756,129 (“the ’129 patent”). The ’129 patent is directed to a network for wireless communications between a central hub device and a number of surrounding peripheral devices.
The appellees sought to dismiss Tri-County as a co-plaintiff for lack of standing, arguing that all substantial rights to bring the action transferred to Azure under an agreement that constituted an assignment, leaving Tri-County without rights to sue. The district court found that Azure had acquired significant rights in the ’129 patent, including the right to enforce, license, control litigation, and practice exclusively. The district court also found that Tri-County’s economic interests in receiving 33% royalties, limited termination rights, and unfixed revisionary interest with a limited time remaining on the patent did not demonstrate that it retained ownership sufficient for standing.
Additionally, the district court construed the claim term “MAC address” to be limited to only hub-generated addresses and not to include universally generated addresses. In construing the claim term, the district court found that the patentee acted as its own lexicographer and therefore departed from the plain and ordinary meaning generally attributed to the concept of a MAC address because the patentee used the term “Media Access (MAC) address” instead of the more common “Media Access Control (MAC) address.” Based on the claim interpretation adopted by the district court, Azure stipulated to a judgment of noninfringement. Azure and Tri-County then appealed to the Federal Circuit.
On appeal, the Federal Circuit agreed with the district court’s dismissal of Tri-County as a co-plaintiff, concluding that Tri-County had transferred all substantial rights in the ’129 patent to Azure through the aforementioned agreement. On the issue of claim construction, the Federal Circuit disagreed with the district court’s limited construction of “MAC address.” The Federal Circuit determined that the evidence relied on by the district court was insufficient to overcome the presumption that a claim term carries its ordinary meaning at the time of the invention. Instead, the Federal Circuit determined that scholars at the time of the invention often removed the term “Control” when spelling out “MAC address” and held that the specification did not clearly set forth a definition of the term. As such, the Federal Circuit vacated the district court’s claim construction of “MAC address” and remanded to the district court.
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