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Collegenet,
Inc. v. Applyyourself, Inc.,
04-1202, -1222, 1251 (CAFC, August 2, 2005)
Claim
Construction:
The
US District Court for the District of Oregon, by jury, found
that Applyyourself infringed claims
2-8, 13-17, and 22-31 of CollegeNet, Inc.’s (CollegeNet) U.S. Patent No. 6,345,278
(the ’278 patent), and claims 1-39
and 41-44 of CollegeNet’s U.S. Patent No. 6,460,042 (the ’042
patent). On a motion for
judgment as a matter of law (JMOL), the district court granted
ApplyYourself’s motion for
noninfringement of the ’042 patent and alternative motion
for a new trial.
The
CAFC reversed the JMOL ruling and reinstating the jury verdict
of infringement on the grounds that the District Court
misconstrued the phrase "in a format specified by the
institution" in the '042 patent.
CollegeNet's
patents are directed to an online
service for reducing the amount of work required by applicants
and institutions in, respectively,
submitting and processing applications for admission. In a
common application of this online
service, a college applicant could access a site and fill out
an application to a particular
university or institution. The applicant’s data would then remain available to complete applications
for other universities and institutions. The applicant
could thus apply with greater ease to multiple institutions.
The CAFC agreed with CollegeNet that the district court
erred in construing the claim
limitation "a format specified by the institution"
to require an unlimited number of
formats. The district court improperly read the term
"format" to mean
"any file format." The specification and claims use
the word "format" in its customary
sense to mean the arrangement of data for storage or
display.
The CAFC found that at no point does the patent require
support for an "unlimited"
number of formats. Id., col. 3, ll. 52-54 ("[T]he
invention is not limited,however, to the processing of any
particular type of form or to the use of any particular network or database."). Thus, the
district court’s definition of "format" was
found to be unnecessarily narrow.
The CAFC also found that the
district court overlooked CAFC precedent on the meaning
of "a." "It is well
settled that the term ‘a’ or ‘an’ ordinarily means ‘one
or more.’" Tate Access Floors,
Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357,
1370 (Fed. Cir. 2002). The
district court replaced "a" with "any."
Contrary to the district court’s conclusion, the claim
language’s use of "a" contains
the limitation of one or more. The ’042 patent merely
requires the institution to specify
an acceptable format so it does not have to convert the data
to another format.
In summary, the CAFC found that the District Court
improperly held that "a format specified by the
institution" requires an unlimited
number of formats. The District Court therefore defined
"format" too narrowly by limiting it to
any "file format" and erroneously imported the term
"any" into the claim language, ignoring the ordinary
meaning of the term "a." The CAFC then
directed the District Court to reinstate the jury's verdict of
infringement.
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Freedman
Seating Company v. American Seating Company et al.,
04-1216, -1248 (CAFC, August 11, 2005)
Doctrine
of Equivalents, Claim Construction
Freedman Seating Company ("Freedman") sued
American Seating Company and Hi-Tech Seating Products for in
the US District Court for the Central District of California
for infringement of U.S. Patent No. 5,492,389 ("the ’389
patent") and for unfair competition in violation of the
Lanham Act, 15 U.S.C. § 1125
(2000). The district court granted summary judgment in favor
of Freedman both on the issue of
infringement under the doctrine of equivalents and on American
Seating’s counterclaim of invalidity by reason of
obviousness.
The court granted summary judgment in favor of American
Seating on Freedman’s Lanham Act claim. The district court
also granted summary judgment in favor of Freedman
on American Seating’s affirmative defense of
unenforceability based upon inequitable
conduct. The jury ultimately awarding Freedman $163,155.20 in
lost profits from American Seating
Company and $14,800.00 in royalties from Kustom Fit.
American Seating appealed all aspects of the district
court’s summary judgment
decision that were unfavorable to it. Freedman cross-appealed the
district court’s
ruling allowing American Seating to invoke the advice of
counsel defense to Freedman’s
charge of willful infringement, the jury’s finding of no
willful infringement and its
calculation of damages, and the district court’s refusal to
award costs and prejudgment
interest.
The CAFC reversed the district
court's judgment and remanded the case with instructions to enter
judgment of non-infringement in favor of American Seating on
the grounds that the judgment of infringement under the
doctrine of equivalents has the effect of vitiating a
limitation of the claims of the ’389 patent.
The subject matter of this patent controversy involves a
stowable seat for public transportation that can be moved out
of the way if a passenger needs access to the area by, for
example a wheelchair.
The invention claimed in the ’389 patent,
uses
a slider crank, which is described in part by a "slidably
mounted" claim limitation. The slider crank is used
instead of an aisle leg. The
EZ Fold, on the other hand, uses what is known as a
"fourth link" to support the seat instead of using
an aisle leg. The EZ Fold’s fourth link mechanism
provides the seatbase with fluid
translational motion, and thereby allows the seat to fold
between the deployed and stowed
positions. It does this through an extra set of revolute
joints located in the midsection
of its support member ("mid-joints").
The parties generally agreed that the
EZ Fold literally meets all of the
limitations of claim 1 except for the limitation requiring
that the movable end of the
support member be "slidably mounted" to the seatbase.
Id. The accused product does not
literally meet this limitation because the EZ Fold’s support
member is rotatably mounted, not slidably
mounted, to the seatbase.
It was also not disputed that the moveable end of the EZ
Fold’s support member is
rotatably mounted, not slidably mounted, to the seatbase.
While the moveable end of the EZ
Fold’s support member has the ability to rotate, it cannot
slide or otherwise move along the
seatbase. It is confined to a fixed location.
Freedman argued that the slider crank claimed in the ’389
patent and the fourth link
mechanism used in the EZ Fold function in the same way to
produce identical results.
Freedman asserted that this is because "[b]oth the infringing seat and the claimed structure
of the ’389 patent provide the moveable end of the
support member with both translational and rotational motion
relative to the seatbase."
The CAFC found that if taken to its logical conclusion, Freedman’s argument would mean that any
support member capable of allowing translational
and rotational motion would be equivalent to a support member
"slidably mounted to said
seatbase," which reads "slidably mounted"
completely out of the claims. This
is the precise type of overextension of the doctrine of
equivalents that the claim vitiation doctrine is intended to
prevent.
The CAFC then held that the district
court’s finding of infringement entirely vitiated the "slidably mounted" limitation
of the ’389 patent and they reversed the district court’s
grant of summary judgment and
remanded with instructions to enter judgment of
non-infringement in favor of
American Seating.
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AT&T
v. Microsoft Corporation, 04-1285 (CAFC, July 13, 2005)
"Supplying"
under 35 USC § 271(f)
Microsoft Corporation ("Microsoft") appealed from
the judgment of the United States
District Court for the Southern District of New York in favor
of AT&T Corp. ("AT&T"),
which held that Microsoft was liable for infringement of
AT&T’s United States Reissue
Patent 32,580 under 35 U.S.C. § 271(f) for copies of the
Windows® operating system that
had been replicated abroad from a master version sent from the
United States. The CAFC
affirmed the district court.
In this case, to facilitate
international distribution of its flagship product, Microsoft
supplied a limited number of
master versions of the Windows® software to foreign computer manufacturers and authorized foreign
"replicators," who, pursuant to their licensing agreements with Microsoft, replicated the
master versions in generating multiple copies of
Windows® for installation on foreign-assembled computers that
are then sold to foreign
customers. The master versions are created in the United
States and are sent abroad on
so-called "golden master" disks or via electronic
transmissions.
The first question the CAFC addressed was whether software
may be a "component" of a patented invention
under § 271(f). It answered: "[w]ithout question,
software code alone qualifies as
an invention eligible for patenting," citing Eolas Techs.
Inc. v. Microsoft Corp., 399 F.3d
1325 (Fed. Cir. 2005).
The next question was whether software
replicated abroad from a master
version exported from the United States—with the intent that
it be replicated—may be deemed "supplied" from the
United States for the purposes of § 271(f). That question
was one of first impression by the CAFC, and the answer to
which was determined based on statutory interpretation.
The statute at issue, 35 U.S.C. § 271(f), provides that:
(1) Whoever without authority supplies or causes to be
supplied in or from the
United States all or a substantial portion of the components
of a patented invention,
where such components are uncombined in whole or in
part, in such manner as to actively induce the combination of
such components outside of the
United States in a manner that would infringe the
patent if such combination occurred within the United States,
shall be liable as an infringer.
(2) Whoever without authority supplies
or causes to be supplied in
or from the United States any component of a patented
invention that is especially
made or especially adapted for use in the invention and not a staple article or commodity of commerce
suitable for substantial noninfringing
use, where such component is uncombined in whole or in part,
knowing that such component is so made or adapted and
intending that such component will
be combined outside of the United States in a manner
that would infringe the patent if such combination occurred
within the United States, shall be
liable as an infringer.
35 U.S.C. § 271(f) (2000) (emphases
added).
Not
surprisingly, Microsoft maintained
that no liability attaches under § 271(f) for foreign-replicated
copies of Windows® because they are not "supplie[d] or
cause[d] to be supplied in or from
the United States."
The
CAFC stated that the "supplying" of software
commonly involves generating a
copy, and provided the example, when a user downloads software
from a server on the Internet, the
server "supplies" the software to the user’s
computer by transmitting an exact copy. Uploading a single
copy to the server is sufficient to allow any number of exact
copies to be downloaded, and hence "supplied."
Copying, therefore, is part and
parcel of software distribution. Accordingly, for software "components," the CAFC held
that the act of copying is subsumed in the act of
"supplying," such that sending
a single copy abroad with the intent that it be replicated
invokes § 271(f) liability for
those foreign-made copies.
The CAFC, in support of its holding rationalized that if
they were we to hold that Microsoft’s supply by exportation
of the master versions of the
Windows® software—specifically for the purpose of foreign
replication—avoids infringement,
they would be subverting the remedial nature of § 271(f),
permitting a technical avoidance of the statute by ignoring
the advances in a field of technology—and its associated
industry practices—that developed after the enactment of §
271(f). It would be unsound to
construe a statutory provision that was originally enacted to encourage advances in technology by
closing a loophole, in a manner that allows the very
advances in technology thus encouraged to subvert that intent.
Section 271(f), if it is to remain
effective, must therefore be interpreted in a manner that is
appropriate to the nature of the technology at issue.
(AT&T 04-1285 at page 8).
The dissent argued that infringement
that occurs overseas, should find its remedy according to the
laws in which the overseas infringement occurs.
Furthermore, copying and supplying are different acts, and one
act of "supplying" cannot give rise to liability for
multiple acts of copying.
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Ocean
Innovations, Inc. et al. v. Rick Archer et al.,
04-1528,
-1536 (CAFC, August 19, 2005)
Claim
Construction, Damages
Ocean Innovations, Inc. and Jet Dock Systems, Inc.
(collectively "Jet Dock") sued Rick
Archer and Zeppelin Marine, Inc. ("Zeppelin") for
infringement of U.S. Patent No. 5,682,833
("the ’833 patent") in the United States District
Court for the Northern District of Ohio. The district court
granted summary judgment of infringement in favor of Jet Dock. After conducting a bench trial on
the issue of damages, the court
awarded Jet Dock a reasonable royalty and permanently enjoined
Zeppelin from infringing the asserted claims. Zeppelin
appealed to the CAFC, arguing that the
district court erred when it granted summary judgment of
infringement. Jet Dock cross-appealed,
contending that the district court erred by awarding it a
reasonable royalty rather than
lost profits as the measure of damages. The CAFC reversed the
district court on the grounds that it misconstrued one of the
’833 patent’s disputed claim limitations.
Jet Dock’s ’833 patent discloses a "floating
drive-on dry dock" assembly for personal
watercraft, and a method for its use. The dock allows
watercraft to be stored out of water, and also allows the
users of the watercraft to get on
or off the craft without getting into the water.
Zeppelin's accused product, the Sport Port Ultra dock
("Ultra"), is also a floating dock for storing watercraft that keeps the hull of the
craft is above the waterline when it is on the dock.
On appeal Zeppelin argued that the district court erred in
construing two limitations of the
asserted method claims. Asserted independent claim 1 provides
in pertinent part as follows:
1. A method of placing a floating craft having a hull with
an upwardly curved bow onto a dry
dock comprising the steps of:
selecting a plurality of floatation
units from a first group of
floatation units having a first
buoyancy and a second group having a second buoyancy. . . .
assembling the selected units to form a dock having an
axial extent defining a
craft-receiving surface which is above the surface of the
water when the dock does not have
a craft on it, using flexible
joints between the
units which permit adjacent
units to flex downwardly with respect to each
other upon the imposition of a downward load, driving
the craft up and onto the dock . . . .
’833 patent, col. 7, l. 28 - col. 8,
l. 6. 2
Zeppelin challenged the district court’s construction of
the term "flexible joints between
the units." The district court construed the term to mean
"a point or position in the interval
or position separating the floatation units of the dock, which
point or position is capable of
bending or flexing." Zeppelin argued that the district
court erred in its construction
because the term "joint" in the claims must refer to
a tangible object, not merely a
"conceptual" "point." Zeppelin
proposed that the term "flexible joints between the
units" should be construed to mean "a configuration
or component connecting the flotation
units of the dock, which configuration or component is capable
of bending or flexing."
The CAFC disagreed with Zeppelin,
holding that Zeppelin’s proposed construction is incorrect
because the "flexibility"
referred to in the ’833 patent is not that the material
forming the joints itself is flexible,
but rather that the joints permit the floatation units to flex
and bend relative to each other.
Zeppelin also challenged the district court’s
construction of the term "floatation units."
The district court construed the term to mean "an
individual structural constituent of a whole
(i.e., the dry dock claimed in the ’833 patent) which is
buoyed on water." The district court
also determined that the "floatation units" must be
"airtight" but not necessarily "hollow."
The CAFC concluded that one skilled in
the art would understand the term "floatation units"
to be referring to units that are hollow as well as
airtight. In support of its conclusion, the CAFC
referred to characterization of the '883 patent as a
"floating, drive-on dry dock assembly for small craft
[that] is assembled from two kinds of hollow floatation
units." '833 patent, abstract (emphasis added). Also
in the '833 patent, the specification describes prior art as
having "hollow cubical units[.]" '833 patent
, col. 1, II. 21-24 (emphasis added).
Furthermore, and the CAFC added most
importantly, in the Summary of the Invention, the '833 patent
states: The dock is "assembled from a combination of tall
and short, hollow, air-tight floatation units."
Id. col 1, ll. 66-67 (emphasis added). And finally, in the
preferred embodiment "all of the
floatation units 12a-l and
14a-g are
hollow and air tight." Id. col. 3, ll. 27-28 (emphasis added).
As a result, the CAFC held that in
light of the patent's disclosure, one skilled in the art would
understand that the "floatation units" in the
claimed invention are hollow. Further, the CAFC
rejected Zeppelin's argument that to
construe the "floatation units" as hollow would be
importing a limitation into the claims
because the specification makes clear that hollowness is an
inherent characteristic of the
"floatation units" in the claimed invention.
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