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DOE Not Precluded by Amended Limitation

January 06, 2005

Decision icon Decision

Last Month at the Federal Circuit - February 2005

Judges: Rader (author), Schall, and Prost

In Business Objects, S.A. v. Microstrategy, Inc., No. 04-1009 (Fed. Cir. Jan. 6, 2005), the Federal Circuit affirmed a SJ of noninfringement for three claims of U.S. Patent No. 5,555,403 (“the ‘403 patent”) but vacated the SJ for one claim of the ‘403 patent and remanded for determination of infringement of that claim under the DOE.

The ‘403 patent claims an improvement for searching relational databases. Specifically, the ‘403 patent claims a method that allows end users to query a relational database without knowing a query language or understanding the structure of the relational database. Microstrategy, Inc. (“Microstrategy”) uses a more sophisticated approach to generating queries than the invention of the ‘403 patent.

The district court had determined that the disputed amended claim language narrowed the scope of the defined functions and was made for purposes of patentability, thereby raising a Festo presumption. As to the relevant claim language of claim 4 of the ‘403 patent, the Federal Circuit concluded that the term in dispute, “predetermined,” was implicitly contained in the original claim language such that the amendment adding this term expressly to the claim did not narrow the scope of the claim. Accordingly, the patentee is not precluded from claiming equivalence for this claim limitation.