Court’s Construction Leaves Claims Invalid
September 15, 2003
Last Month at the Federal Circuit - October 2003
Judges: Gajarsa (author), Newman, and Dyk
In Akamai Technologies, Inc. v. Cable and Wireless Internet Services, Inc., No. 03-1007 (Fed. Cir. Sept. 15, 2003), the Federal Circuit found certain claims of U.S. Patent No. 6,108,703 (“the ’703 patent”) invalid and, therefore, affirmed-in-part and reversed-in-part the district court’s denial of JMOL on the issue and its grant of a permanent injunction,
and remanded the case.
Akamai Technologies, Inc. (“Akamai”) is the exclusive licensee of the ‘703 patent, which is assigned to the Massachusetts Institute of Technology. The ‘703 patent discloses and claims web-page content delivery systems and methods of using separate sets of origin servers and alternate servers to provide various aspects of a single web page. The origin servers provide standard aspects of a web page, which are often static, and the alternate servers provide embedded objects, which often change.
Cable and Wireless Internet Services, Inc. (“C & W”) is the owner of U.S. Patent No. 6,185,598 (“the ’598 patent”). The ‘598 patent discloses similar systems and methods for providing a web page to that of the ‘703 patent. The ‘598 patent was filed prior to the filing of the ‘703 patent and, thus, is prior art under 35 U.S.C. § 102(e). C & W marketed and sold product embodying the ‘598 patent under the name “Footprint” and “Footprint 2.0.” The relevant difference between the ‘598 patent and the ‘703 patent is a preferred embodiment of the ‘703 patent that discloses load-balancing software installed at domain-name service (“DNS”) servers.
On September 13, 2000, Akamai sued C & W, seeking an injunction and damages for infringement of the ‘703 patent. Akamai claimed that C & W’s Footprint 2.0 infringed apparatus claims 1, 3, 5, and 9 and method claims 17, 18, and 22 of the ‘703 patent. Claim 1 of the ‘703 patent recites, among other things, “wherein in response to requests for [a] web page, generated by the client machines the web page including [a] modified embedded object URL is served from [a] content provider server and [an] embedded object identified by the modified embedded object URL is served from a given one of . . . content servers as identified by . . . first level and second level name servers.” Claims 3, 5, and 9 depend from claim 1 with claims 5 and 9 reciting elements of the name servers.
A jury found that C & W infringed apparatus claims 1, 3, 5, and 9 and method claims 17, 18, and 22; upheld the validity of claims 1, 3, 5, and 9; and invalidated claims 17, 18, and 22 under sections 102 and 103(a) over the ‘598 patent and a related prior art product. The district court denied C & W’s motion for JMOL that claims 1, 3, 5, and 9 were invalid and not infringed, and entered a permanent injunction. C & W appealed the denial of JMOL and entry of the permanent injunction on the bases that claim 9 was not infringed and that claims 1, 3, 5, and 9 were invalid.
On appeal, the Federal Circuit disagreed with the district court’s claim construction, which affected the invalidity analysis. According to the Federal Circuit, the plain meaning of the claim limitations “identified by the modified embedded object URL” and “is served from a given one of the content servers as identified by the first and second level name servers” does not require a load-balancing mechanism at the DNS server. The Federal Circuit reasoned that the ordinary meaning of the term “identifying” covers standard DNS resolution without any sort of load balancing, and neither the written description nor the prosecution history demonstrated that the inventors imparted a novel meaning to “identifying” to include load balancing. Specifically, the Federal Circuit noted that the written description focuses on DNS servers performing special functions without references to “identifying.” Thus, the Federal Circuit concluded that “identifying” should be given its ordinary meaning, which does not encompass load balancing.
Having so construed these limitations, the Federal Circuit ruled that claims 1 and 3 are invalid as anticipated by the ‘598 patent because the claimed hierarchical DNS requirements are inherent in that patent.
With regard to claims 5 and 9, the Federal Circuit found that, based on the evidence presented to the jury, a reasonable jury could have found claims 5 and 9 nonobvious over the prior art. The Federal Circuit also found that the jury’s finding of infringement of claim 9 was supported by substantial evidence. Accordingly, the Federal Circuit affirmed the district court’s denial of JMOL with respect to claims 5 and 9, and affirmed the district court’s issuance of the permanent injunction with respect to those claims. The Federal Circuit remanded to the district court to review and redetermine the scope of the permanent injunction in light of its ruling of invalidity of claims 1 and 3.