Stay away from the Swamp; Decide §§102, 103 and 112 Issues First

Myspace, Inc. v. Graphon Corporation, [2011-1149] (March 2, 2012)[PLAGER, Newman, Meyer] The Federal Circuit affirmed summary judgment of invalidity.
DISCUSSION: Plaintiffs brought a declaratory judgment action that U.S. Patent Nos. 6,324,538, 6, 850,940, 7, 028, 034, and 7, 269, 591 relating to the creation, modification, and searching of databases.
DISCUSSION: At issue was the construction of the term "database", which was important to whether the the claims were anticipated, for which summary judgment is appropriate, or obvious, for which summary judgment is less appropriate. The Federal Circuit began with the ordinary meaning of the claim language itself in the context of the written description of the invention found in the patent and the prosecution history. The Federal Circuit addressed commentators who have pointed out two different approaches to claim construction: the first focusing on the invention disclosed in the patent, and the second focusing on the words used by the patent drafter. The Federal Circuit said it was an oversimplification to consider them competing theories, rather than complementary. Agreeing with the district courts' broad interpretation of "database" the Federal Circuit affirmed the invalidity of the claims.
The Federal Circuit also took time to comment on the minority position that the question of patentable subject matter under §101 should have been addressed first. The majority said that the courts should avoid the swamp of verbiage that is §101 and insist that litigants initially address patent invalidity issues under §§102, 103, and 112.