Patentee Cannot “Cash In” on Computer Caching Patent
March 14, 2001
Last Month at the Federal Circuit - April 2001
Judges: Newman (author), Archer, and Clevenger (dissenting)
In Networld, LLC v. Centraal Corp., No. 99-1257 (Fed. Cir. Mar. 14, 2001), the Federal Circuit affirmed a SJ of noninfringement concerning U.S. Patent No. 5,764,906 (“the ‘906 patent”) concerning a system for locating and retrieving information on a distributed computer system or network, such as the Internet.
Networld, LLC (“Networld”) owns the ‘906 patent. Centraal Corporation (“Centraal”) sells accused systems having the brand name RealNames. In construing the claims, the district court construed claim 1 as directed to a system wherein a “local server computer” maintains a “cache” or limited data base of aliases, and “pulls” information when needed from a central registry computer. Networld argued that these interpretations impermissibly imported limitations into claim 1 from the specification and other claims.
Looking to the teachings of the specification, the Federal Circuit affirmed the district court’s claim construction of the claim element “local server computer” as requiring a limited data base of aliases that may be updated from a central registry computer.
As to infringement, the Court observed that the accused RealNames system includes two groups of resolver computers, one on the East Coast and one on the West Coast of the United States. Neither functions as an intermediary local server as in the ‘906 patent. Instead, each resolver group has a complete copy of the RealNames data base. The resolver computers do not request updated RealNames metadata from a central computer. Rather, a central computer updates the resolvers by periodically transmitting unsolicited data to the resolvers. Accordingly, the Federal Circuit agreed that the RealNames computer system does not contain a local server counterpart of the limited data base “caching” function or the “pulling” of information by the local server from a central registry. As to the DOE, the Federal Circuit concluded that the Centraal system resolver computers serve as copies of central registry, but do not serve as a local server computer or the equivalent thereof. Thus, the Centraal system does not meet the all-elements rule.
Concerning one evidentiary issue of interest, the Court ruled that an inventor’s communication to his patent attorney prior to the filing of the application is not dispositive of the scope of a later filed patent or the construction of the claims. The communication, however, if not asserted as privileged, may be given whatever weight its content and circumstances warrant.
Judge Clevenger dissented, arguing that it was improper for the majority to read the limitations into claim 1 in its claim construction because those limitations were recited in dependent claim 6. Moreover, Judge Clevenger found that the specification describes both “push down” and “pulling” periodic updating of information from a central registry.