Federal
Circuit Vacates Judgment Of Noninfringement
In Richard A.
Williamson v. Citrix Online LLC, Citrix Systems Inc., (Appeal No.
2013-1130), the Federal Circuit vacated the district court’s claim
construction.
The
district court issued a claim construction order, construing “graphical
display representative of a classroom” and “first graphical display
comprising . . . a classroom region” (collectively, the “graphical display”
limitations). The district court held that these terms 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.”
The district court additionally concluded that the
limitation “distributed learning control module,” was a means-plus-function
term under 35 U.S.C. § 112, para. 6. The district court then evaluated the
specification and concluded that it failed to disclose the necessary
algorithms for performing all of the claimed functions. The district court
thus held the claims reciting this limitation invalid as indefinite under §
112, para. 2. Based on these claim
construction, the plaintiff stipulated to judgment of no infringement and
appealed.
On appeal, the Federal Circuit held that the district
court erred in construing the “graphical display” limitations as requiring a
“pictorial map.” The Federal Circuit
reasoned that the claim language itself contains no such “pictorial map”
limitation. “While the specification
discloses examples and embodiments where the virtual classroom is depicted as
a “map” or “seating chart,” nowhere does the specification limit the
graphical display to those examples and embodiments.” There was no suggestion in the intrinsic
record that the applicant intended the claims to have the limited scope
determined by the district court. Accordingly, the Federal Circuit held that
the district court incorrectly construed the graphical display terms to have
a “pictorial map” limitation, and further held that the graphical display”
limitations were to be properly construed as “a graphical representation of
an at least partially virtual space in which participants can interact.”
The
Federal Circuit also held that the district court erred in concluding that
“distributed learning control module” is a means-plus-function claim
term. Referring to dictionaries, the
Federal Circuit ruled that the definitions all show that the term “module”
has a structure connoting meaning to persons of ordinary skill in the
computer arts.”
Accordingly,
because the district court erred in construing the “graphical display”
limitations and the “distributed learning control module” limitation, the
stipulated judgment of non-infringement and the judgment of invalidity were
vacated and the case was remanded to the district court.
Federal Circuit Affirms Invalidity
Under 35 U.S.C. § 251
In Antares Pharma v. Medac Pharma (Appeal No. 2014-1648), the
Federal Circuit affirmed the district court’s denial of Antares’s motion for
preliminary injunction holding that the asserted claims in a Reissue patent
violated the recapture rule.
Antares filed a motion for
preliminary injunction against Medac Pharma asserting infringement of Reissue
Patent RE 44,846 (“the ‘846 patent”) which reissued from U.S. Patent No.
7,776,015 (“the ‘015 patent”). During
prosecution of the ‘015 patent, the applicants repeatedly distinguished their
invention from the prior art by focusing on the “jet injector” limitation
present in the claims but not the prior art. All of the originally issued
claims recited the “jet injection” limitation.
The district court found that Antares
had broadened its reissue claims which no longer recited the “jet injection”
limitation, and now covered any “injection device.” The district therefore
held that the reissue claims were invalid because they violated the original
patent requirement and the recapture rule.
On appeal, the Federal Circuit
noted that generally, the recapture rule prohibits applicants from claiming on
reissue claim scope surrendered during the course of the original prosecution.
The Federal Circuit agreed with the district court that the claims had been
improperly broadened, and affirmed the district court’s denial of Antares’
preliminary injunction holding that the claims on appeal were invalid for
failure to satisfy the original patent requirement of 35 U.S.C. § 251.
Federal Circuit Affirms Invalidity
Under 35 U.S.C. § 101
In Ultramercial v. Hulu
and WildTangent (Appeal No. 2010-1544), the Federal Circuit affirmed the
district court’s granting of a motion to dismiss on the ground that the
patent-in-suit did not claim patent-eligible subject matter under 35 U.S.C. §
101.
Originally,
the district court granted a motion to dismiss under Fed. R. Civ. P. 12(b)(6)
on the grounds that the patent-in-suit did not claim patent-eligible subject
matter under 35 U.S.C. § 101. On appeal, the Federal Circuit reversed,
concluding that the district court erred in granting the motion to
dismiss. WildTangent then filed a
petition for a writ of certiorari,
requesting review by the Supreme Court.
The
Supreme Court granted the petition, vacated the Federal Circuit’s decision,
and remanded the case for further consideration in light of its decision in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. __, 132 S. Ct.
1289
(2012). On remand, the Federal Circuit again reversed, concluding that the
district
court erred in granting WildTangent’s motion to dismiss for failing to claim
statutory subject matter. WildTangent filed another petition for certiorari again requesting review by
the Supreme Court. While WildTangent’s
petition was pending, the Supreme Court issued its decision in Alice Corp. v. CLS
Bank International,
573 U.S. __, 134 S. Ct. 2347 (2014).
In
the Alice case, the Supreme Court
affirmed the Federal Circuit’s judgment that method and system claims directed
to a computer-implemented scheme for mitigating settlement risk by using a
third party intermediary were not patent-eligible under § 101 because the
claims “add nothing of substance to the underlying abstract idea.” The Supreme
Court in Alice made
clear that a claim that is directed to an abstract idea does not move into §
101 eligibility territory by “merely requir[ing] generic computer implementation.”
Subsequently,
the Supreme Court granted WildTangent’s petition for a writ of certiorari, vacated the Federal
Circuit’s decision, and remanded the case for further consideration in light
of Alice.
Upon
further review of the patent-in-suit and the standards adopted by the
Supreme Court, the Federal Circuit concluded that the patent-in-suit did
not claim patent eligible subject matter. Accordingly, the Federal Circuit affirmed the district court’s grant
of WildTangent’s motion to dismiss. |
