Uniformity of Claim Construction is Important

Finisar Corp. v. The DirecTV Group, Inc., [2007-1023, -1024] (April 18, 2008) [RADER, Michel, Moore] The Federal Circuit vacated the verdict of infringement of U.S. Patent No. 5,404,505 because the district court incorrectly construed a vital term featured prominently in each asserted claim, and vacated and remanded validity, finding that the district court erred in ruling that the prior art did not anticipate claim 16.
BRIEF: Generally claim terms are given their ordinary and customary meanings, according to the customary understanding of an artisan of ordinary skill at the time of the invention. The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. When construing claims, the claims and the rest of the patent, along with the patent’s prosecution history (together, the intrinsic evidence of the meaning of the claims) are the primary resources; while helpful, extrinsic sources like dictionaries and expert testimony cannot overcome more persuasive intrinsic evidence.
Given the importance of uniformity in the treatment of a given patent, the Federal Circuit said it would be remiss to overlook another district court’s construction of the same claim terms in the same patent as part of this separate appeal. Thus, in the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent. The Federal Circuit determined that the Northern District of California’s construction of the claim terms was better.
Turning to the question of infringement, the Federal Circuit noted LOF: Literal infringement is a question of fact, reviewed for substantial evidence when tried to a jury. While some of the district court’s construction was harmless error, it was significant with respect to some infringement issues, so the Federal Circuit vacated and remanded
Turning to the question of validity, the Federal Circuit noted LOF: Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury. To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. But disclosure of each element is not quite enough—this court has long held that “[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” This question claim down to the interpretation of the reference, and the Federal Circuit fell back to conventional rules of grammar: “this court used general principles of English grammar for the proposition that “[r]eferential and qualifying words and phrases, where no contrary intention appears, refer solely to the last antecedent, which consists of ‘the last word, phrase, or clause that can be made an antecedent without impairing the meaning of the sentence’” for purposes of statutory construction. In contrast, “[w]hen a modifier is set off from a series of antecedents by a comma, the modifier should be read to apply to each of those antecedents.” The Federal Circuit observed that the rules of grammar not withstanding, in interpreting prior art it is ultimately what the reference means to a person of ordinary skill in the art, Finding the reference did anticipate claim 16, the Federal Circuit remanded for consideration of the validity of the other claims.
Regarding willful infringement, the Federal Circuit found no willfulness, noting that there is no requirement of considering both validity and infringement, since a a position of non-infringement is adequate to avoid willfulness.
Regarding the invalidity of claims under 35 USC §112, the Federal Circuit again addressed the level of disclosure needed to support means plus function claims under 35 USC §112, ¶ 6. The Federal Circuit agreed that the district court correctly determined that the structure recited in the specification does 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. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function, as required by 35 USC §112, ¶ 6.