Doctrine of Claim Differentiation Cannot Broaden Claims Beyond Their Correct Scope
June 29, 2005
Last Month at the Federal Circuit - July 2005
Judges: Linn (author), Bryson, and Gajarsa
In Seachange International, Inc. v. C-COR Inc., No. 04-1375 (Fed. Cir. June 29, 2005), the Federal Circuit revised the district court’s claim construction of three terms, reversed a judgment of infringement, affirmeddenials of Defendant’s motions for JMOL on written description and anticipation by two references, vacated a denial of JMOL as to anticipation by a third reference, and reversed a denial of Defendant’s motion for new trial. The Court remanded for further proceedings on the issues of anticipation by the third reference and for a determination as to whether a new trial was warranted.
Seachange International, Inc. (“Seachange”) sued C-COR Inc. (“C-COR”), alleging that C-COR infringed U.S. Patent No. 5,862,312 (“the ‘312 patent”), which is directed to a method and apparatus for redundantly storing video data for video-on-demand systems. The claim at issue recites a method of redundantly storing data in a “distributed computer system having at least three processor systems,” where each of the processor systems are connected to each other by a “network for data communications.”
The Federal Circuit rejected the district court’s construction of “network for data communications” as allowing connection by “any kind of network” and construed the term to be limited to “direct, point-topoint, two-way channel interconnections.” The Court agreed with Seachange that neither the claim language nor the dictionary definition of “network” limits the term to point-to-point connections. It also found that because another independent claim was nearly identical but recited the narrower “point-to-point” connections, the doctrine of claim differentiation creates a presumption that the “network for data communications” limitation has a different, broader meaning and is not limited to “point-to-point” connections. The Court, however, found the presumption rebutted.
Specifically, although the Federal Circuit determined that the written description consistently refers to the network connections as point-to-point, this alone was not a sufficient basis to limit the term “network” to point-to-point connections because it was unclear whether the specification was describing one embodiment or describing the entire invention. Instead, the Court relied on arguments made during prosecution to limit the term “network” to point-topoint connections. In responding to a prior art rejection, the applicant had grouped the claim at issue with claims that had a “point-to-point” limitation and argued that the reference failed to disclose point-topoint connections. By not separately arguing the allowability of the claim at issue in this case, the applicant disclaimed any broader meaning for the term “network.”
The Federal Circuit also held that the district court had improperly imported a limitation into the claims by construing the “distributed computer system” to require that each processor be a “stand alone” unit where there was nothing in the specification to suggest that the processor must stand alone. Instead, the Federal Circuit construed the term to have its ordinary meaning, which the parties agreed is “a computer system in which several interconnected computers share computing tasks assigned to the system.” Similarly, the Court found that a “processor system” must have a CPU, but that there was nothing in the specification to support the district court’s construction requiring that the CPU be capable of running application software.
Seachange had conceded during briefing that if “network for data communications” required point-topoint connections, then C-COR would not literally infringe. As a result, the Federal Circuit only addressed infringement under the DOE. The Court held that because it had construed “network for data communications” to require direct point-to-point connections, allowing the scope of equivalents to cover indirect network connections would vitiate the requirement that the processors be directly connected point-to-point. It thus concluded that there was no infringement under the DOE because it would violate the “all elements” rule.
The Federal Circuit also affirmed a denial of C-COR’s motion for JMOL on written description because, under the revised claim construction, the premise of C-COR’s written description challenge ceased to exist. The district court’s denial of JMOL as to anticipation by the Frey and Mendelson references was also affirmed because the Federal Circuit agreed that the substantial evidence supported the jury’s verdict that those references do not anticipate the claim at issue. As to a third reference, Gardner, the Court’s revised claim construction, an incomplete record as to the disclosure of Gardner, and inconsistencies in the district court’s findings as to the disclosure of Gardner, led the Court to vacate the denial of C-COR’s motion for JMOL on anticipation by Gardner and remand for further proceedings on the issue.
Finally, the district court’s opinion included statements admitting that it failed to properly instruct the jury as to the meaning of “distributed computer system,” and that such failure would be prejudicial and require a new trial if the Federal Circuit revised the claim construction of the term. In light of these statements and the revised claim construction, the Court reversed the denial of C-COR’s motion for a new trial and remanded for further proceedings.