Case No. 2011-1149 (Newman, Mayer, Plager)
Reasonable minds continue to differ over the specification?s role in claim construction and the process courts should take in engaging ? or avoiding ? ? 101 issues. In its treatment of claim construction and subject matter eligibility, MySpace v. GraphOn Corp. reflects a growing doctrinal individualization (some may say factionalism) on these issues at the Federal Circuit. Some basic lessons and cautions on claim construction can be drawn from this case as well.
GraphOn got ensnared in a declaratory judgment suit brought by MySpace and craigslist involving infringement of several of GraphOn?s related patents: 6,324,538; 6,850,940; 7,028,034; and 7,269,591. The patents deal with network-based database operations and systems executing the same; here?s a claim sample:
A method for providing a dynamically-updating pay-for-service web site comprising:
providing a web server coupled to a computer network having a database operatively disposed within and accessible on said network;
using an HTML front-end entry process;
creating and storing personal homepage content in a database for a owner;
receiving a fee from said owner for making said personal homepage accessible on said network; and
allowing said owner to update said personal homepage over said network.
As for claim construction, the district court interpreted ?database? under its plain meaning to include both hierarchical and relational systems, which in turn caused the claims to be anticipated by, or obvious over, prior art Mother of all Bulletin Boards that disclosed a hierarchical file system. GraphOn sought to have the Federal Circuit more narrowly construe the claims to interpret ?database? to include only relational system and thus reverse the anticipation and obviousness summary judgments.
The majority began with the usual bromides that claims are to be interpreted under their ordinary and customary meaning, with the written description of the specification being the best source for understanding, without limiting, such meanings. In a fascinating moment of quasi-introspection, the majority quoted patent litigator Bradford Lyerla?s argument that the Federal Circuit does not have a uniform approach to this claim construction regimen:
It has been suggested that a reading of this court?s claim construction cases indicates that outcomes depend on the judges? predilection for one of two approaches. One approach is to focus on the invention disclosed in the patent: ?[t]ry to understand what the inventor has invented (what he says is his contribution in the art) and then choose the claim meaning that best fits the invention.? The other is to focus on the words that the prosecuting lawyer used to craft the claims and ?then apply legal rules of construction to divine the meaning of the claim.?
Only to knock it down:
While this is insightful regarding the approaches highlighted in one or another of our cases, it is an over-simplification to suggest that these are competing theories; rather, they are complementary. An inventor is entitled to claim in a patent what he has invented, but no more. He can, however, claim less, to avoid prior art or for any other reason. Therefore, in construing a claim there are two limiting factors?what was invented, and what exactly was claimed. To determine the former?what was invented?we look at the entire patent, with particular attention to the specification (the written description of the invention and the several claims made). To determine the latter?what exactly was claimed?the focus is on the precise words of the particular claim or claims at issue; the written description and preferred embodiments are aids in understanding those words.
The majority then proceeded to recognize that the patents? shared specifications broadly describe ?databases.? Various portions of the patents also suggested hierarchical database functionality and a preferred embodiment that described both relational and hierarchical databases:
While this preferred embodiment does not itself limit the claims, it does suggest that the inventors intended that the invention encompass various database features, including those of hierarchical databases. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) (?Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention.?). Because the preferred embodiments describe features contained in multiple types of databases and the written description is devoid of a clear indication that the invention should be limited to one particular type of database, it would be improper to limit the construction to relational databases.
Having agreed with the district court?s broad construction of ?database? as inclusive of both hierarchical and relational databases, the majority affirmed summary judgment of invalidity over Mother of all Bulletin Boards. The district court had been a little sloppy in its ?? 102 and 103 analyses, matching prior art elements to individual claim limitations out of context with the remainder of the claim and failing to enumerate and analyze each Graham factor. While the majority reminded that claim arbiters should ?strive to connect those limitations to the context of the claim as a whole . . . [because] the statute and our cases make clear, patent claims are not judged solely by their individual limitations? and ?it would certainly assist the parties and the appeals court if the district court more clearly recited its reasoning regarding each of the Graham factors,? failure to follow these procedures here was harmless error in light of the clear claim invalidity. Summary judgment of invalidity affirmed.
Lessons: Although GraphOn wanted a narrow construction of ?database,? they followed good lessons for securing a broad construction of the term. Specifically, the patents use the claim term ?database? in the specification in connection with multiple types of functionality. I?ve previously pointed out that it is a good practice to specifically use claim terms in the specification in a manner that shows their breadth, and claim interpreters continue to accord claim terms breadth suggested by such use in the specification.
MySpace also illustrates another unfortunate aspect of Federal Circuit infringement jurisprudence: even if a plaintiff needs only a narrow claim construction to secure infringement, courts will often permit claims to be invalidated with broader constructions, putting the parties in generally reversed positions in arguing claim breadth. If faced with this dilemma, try leaning on Phillips for its citation to Rhine v. Cascio for what is left of the doctrine that claims should be construed to preserve their validity. This phenomenon also emphasizes the criticality of including several dependent claims having varying granularity, down to specific details of individual embodiments, in order to guard against invalidity that might arise from excrescent claim scope.
Comment: I do not find all that satisfying the majority?s attempt to portray Federal Circuit claim construction precedents as a monolithic, consistent body of law. The majority recognizes a schism over limiting claims to what is disclosed in the specification. But the opinion short-circuits this debate by reasoning that claim is always limited to the ?invention,? without particularly resolving what is the difference between the ?invention? and the subject matter disclosed in the specification. In pictorial form, the majority gives a bare assertion that claim scope is bounded by the ?invention? (Camp 1 below) and further limited by the claim?s plain language:
The debate, however, has been over where or how far the ?invention? line can be drawn apart from the written description line. Camp 2 (including Judge Lourie) suggests the ?invention? boundary must be collapsed into the written description?s, such that claim scope will always be limited to only what has been disclosed. The MySpace majority implicitly refutes this view and sides with Camp 1 (thus illustrating, rather than resolving, the debate) by treating the written description as a subset of the ?invention,? which includes ?the entire patent? including the written description and claims. Although siding with not limiting claims to what is disclosed, the majority?s formulation for determining claim scope boundaries vis-a-vis the written description is less than helpful, because it defines the boundary term ? claim scope ? with the term itself. I think drawing the ?invention? line at whatever is enabled and rendered obvious by the disclosure seems more definite and workable.
* * *
Bonus Feature: the majority and dissent spent another 20 pages arguing over whether the patents at issue recite statutory subject matter under ? 101, a position advanced by neither party nor relied on by the court below. Well, actually, only the dissent argues on the merits that the claims do not pass ? 101; the majority argues that resolution of the issue is unnecessary and not properly before the court. The majority observes that ? 101 jurisprudence is a mess and should be addressed only as a last resort:
Our opinions spend page after page revisiting our cases and those of the Supreme Court, and still we continue to disagree vigorously over what is or is not patentable subject matter. . . . Rather than taking the path the dissent urges, courts could avoid the swamp of verbiage that is ? 101 by exercising their inherent power to control the processes of litigation.
The majority author, Judge Plager, issued a similar view in dissent in Dealertrack, arguing that ? 101 issues should not be addressed by courts except when the abstractness is manifest (?if it is clear and convincing beyond peradventure?that is, under virtually any meaning of ?abstract??that the claim at issue is well over the line?). The majority further suggests suggesting that avoiding subject matter debates will prevent toss-in subject matter invalidity defenses, like what was seen in pre-Therasense inequitable conduct claims.
The dissent (Senior Judge Mayer) viewed the claims here as well over the abstractness line. All claims had ?staggering? potential scope, far worse than even the claims at issue in Bilski. With the usual cites to Benson, Flook, Diehr, and Bilski, concerns over the cost of bad business method patents on industry, and even some free speech issues (!), the dissent would have invalidated all claims at issue as essentially preempting any network-driven database updating technology.
Comment: No lessons here. Instead try checking out some other recent cases where a ? 101 issue was squarely briefed and addressed for guidance. I find the dissent to be a bit extreme here in provoking the ? 101 issue without it being raised and in arguing for summary invalidation of all claims on that basis, even involved apparatus claims. I also credit the majority for recognizing that judges have repeatedly poured Benson-Flook-Diehr-Bilski alloys and never fashioned any one clear and consistently-applicable tool for determining patentable subject matter from the same. By the same token, by refusing to address ? 101 boundaries, the opinion does not offer the USPTO any guidance for examining applications without a presumption of validity for subject matter eligibility.
The opinions cite to several scholarly works; I wonder why the court did not toss in a citation to Crouch and Merges? article recommending jurists avoid ? 101 issues when possible? It is dead-on for Judge Plager?s point.
Source: http://alleylegal.com/2012/03/myspace-v-graphon-corp-application-drafting-lessons/
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