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Claim Amendment Made During Reexamination Neither Impermissibly Broadened nor Substantively Changed Claim Scope

07-1539
October 09, 2008
Bhushan, Anita

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Last Month at the Federal Circuit - November 2008

Judges: Newman, Lourie, Linn (author)

[Appealed from: S.D. Cal., Judge Hayes]

In Predicate Logic, Inc. v. Distributive Software, Inc., No. 07-1539 (Fed. Cir. Oct. 9, 2008), the Federal Circuit reversed and remanded the district court’s grant of SJ of invalidity, holding an amendment made to claim 1 of U.S. Patent No. 5,930,798 (“the ’798 patent”) during reexamination neither impermissibly broadened nor substantively changed the claim’s scope.

Predicate Logic, Inc. (“Predicate”) owns the ’798 patent, directed to a universal data measurement and analysis method used in software development processes. A single software development project may use many different programming languages that have different metrics, making it difficult to measure and forecast the development process. The ’798 patent solves this problem with a universal system for data measurement and analysis. Since software is typically organized hierarchically, the invention of the ’798 patent uses a series of predefined rules to generate one or more hierarchical indexes that serve as templates for data collected from all of the project’s components. The ’798 patent then discloses selectively “instantiating” these hierarchical indexes by populating the index fields with project data and comparing the instantiation results.

Predicate sued Distributive Software, Inc. (“Distributive”) for infringement of the ’798 patent. In response, Distributive requested, and the PTO granted, an ex parte reexamination of the patent-in-suit. The district court stayed the litigation pending resolution of the reexamination.

During the reexamination, the examiner issued an examiner’s amendment to claim 1 of the ’798 patent. Specifically, the examiner amended “instantiating at least one said index” to “first instantiating at least one said index” and “second instantiating at least one said index.” The examiner also amended “storing said instantiation of said at least one index” to “storing said first and second instantiations of at least one said index.” The claims as amended were allowed.

The infringement action resumed after the reexamination proceeding ended. The district court granted Distributive’s motion for SJ of invalidity of the ’798 patent, holding that the amendments during reexamination substantively changed the claims and improperly broadened the claim scope. First, the district court found that the amendment from “said at least one index” to “at least one said index” broadened the claim scope. The district court reasoned that the original claim required all of the indexes generated in the generating step to be instantiated in the “instantiating” step, but the amended claim did not. The district court concluded that generating four indexes, storing four indexes, instantiating only two of those indexes, storing the results of those instantiations, and comparing those results would infringe the amended claim, but not the original claim. Accordingly, the district court concluded that the amendment impermissibly broadened the claim scope. Additionally, the district court found that the amendment deleting the “instantiating” step and replacing it with two steps substantively changed the claim by narrowing it and, thus, the ’798 patent could not be enforced against infringing activity that occurred before the issuance of the reexamination certificate.

On appeal, the Federal Circuit held that the district court erred in concluding that the amendment of “said at least one index” to “at least one said index” broadened the claim scope. The Court reasoned that “[i]n analyzing the breadth of the claim before and after amendment, the district court was correct to ask whether any conceivable process would infringe the amended claim, but not infringe the original claim. But the district court’s analysis in considering its hypothetical infringing process was flawed.” Slip op. at 7 (citations omitted). Specifically, the Court found that the hypothetical process infringed both the amended and the original claim.

In finding that the district court’s hypothetical process infringed the original claim, the Federal Circuit reasoned that the hypothetical process met the original claim’s step of “generating . . . at least one hierarchical index” by generating two indexes. The Court emphasized the irrelevance of the hypothetical process’s generation of two additional indexes because they were extraneous and did not affect the infringement analysis since the claim used the open-ended transition phrase “comprising.” Similarly, the “storing said at least one index” limitation of the original claim was met by storing only two indexes regardless of whether the two additional indexes were also stored. The Court also found that the hypothetical process met the remaining steps of the original claim. Thus, the Federal Circuit held that the district court’s hypothetical infringing process would infringe both the claim as amended and the original claim. The Court, therefore, concluded that the amendment did not broaden the claim scope.

The Federal Circuit also held that the district court incorrectly concluded that the amendment of “instantiating” to “first instantiating” and “second instantiating” substantively changed the claim. In so holding, the Court reasoned that the original claim, like the amended claim, required two “instantiating” steps. The language of the “comparing” step of the original claim, requiring “comparing at least one of the data sets linked to at least one of said instantiated indexes to at least another of the data sets linked to at least another of said instantiated indexes” and the specification’s description of the “instantiating” and “comparing” steps necessitated this result. The district court’s analysis ignored this requirement and erroneously reasoned that the instantiating step in the original claim required only a single instantiation, whereas the corresponding step in the amended claim differed in scope by requiring two instantiations.

The Federal Circuit rejected the district court’s rationale that only one instantiation might occur in the “instantiating” step of the original claim, and that single instantiation would then be compared with a previously stored instantiation generated outside of the claimed process. The Court noted that the “comparing” step of the claim required comparing data sets linked to “one of said instantiated indexes” with data sets linked to “another of said instantiated indexes.” Critically, the use of “said instantiated indexes” indicated that the instantiated indexes found antecedent basis in the claim and thus were generated inside of the claimed process.

The Federal Circuit further rejected as unpersuasive the district court’s rationale that the comparing step might allow a comparison between data sets linked to two different instantiations of the same index rather than two instantiations of different indexes. The Court reasoned that although it agreed that the “comparing” step in both the original and amended claim permitted a comparison between data sets linked to either multiple instantiations of the same index, single instantiations of multiple indexes, or some combination, the “comparing” step still required that at least two instantiations take place. Because nothing in the amended claim suggested that the “first instantiating” and “second instantiating” steps must be performed on the same index or in data linked to different indexes, the Federal Circuit concluded that the district court’s rationale was unpersuasive. Accordingly, the Federal Circuit held that the amendment of the “instantiating step” to “first instantiating” and “second instantiating” steps did not result in a substantive change to claim 1 of the ’798 patent. The Court concluded that the original and amended claims were “identical” for purposes of 35 U.S.C. §§ 252 and 307, and thus the ’798 patent could be enforced against infringing activity that occurred before issuance of the reexamination certificate.