Erroneous Claim Construction of the Article “a” Results in Remand of Patent Suit
June 04, 2010
Last Month At The Federal Circuit - July 2010
Judges: Radar (author), Lourie, Prost
[Appealed from: W.D. Wis., Chief Judge Crabb]
In Silicon Graphics, Inc. v. ATI Technologies, Inc., Nos. 08-1334, -1353 (Fed. Cir. June 4, 2010), the Federal Circuit held that the district court erroneously construed two of three contested claim terms in U.S. Patent No. 6,650,327 (“the ’327 patent”), vacated the district court’s SJ of noninfringement with respect to claims in which only those two terms appear, and remanded for consideration in light of the correct construction. The Court also found that the district court erred with respect to the effect of a license between Silicon Graphics, Inc. (“Silicon Graphics”) and Microsoft Corp. (“Microsoft License”) on direct infringement. The Court affirmed the district court’s decisions in all other aspects.
Silicon Graphics owns the ’327 patent, which is directed to a graphics system and process that predominantly operates on a floating point format. ATI Technologies, Inc., ATI Technologies ULC, and Advanced Micro Devices, Inc. (collectively “ATI”) make and sell graphics chips and processors. Because all of the asserted claims of the ’327 patent require a display (or, in the case of the method claims, drawing the image for display on a display screen), Silicon Graphics asserted that ATI indirectly infringed through its sales of products to computer manufacturers and end-users.
The district court granted SJ of noninfringement of claims 1-6, 9-12, 15, and 16 of the ’327 patent in favor of ATI. At a jury trial on the validity of the ’327 patent following the SJ ruling, ATI unsuccessfully challenged the validity of claims 17, 18, 22, and 23. In its order directing entry of the judgment, the district court held that all of ATI’s counterclaims had been addressed, withdrawn, or abandoned, and denied ATI’s motions for JMOL and a new trial on the validity of claims 17, 18, 22, and 23, which ATI appealed. Silicon Graphics cross-appealed aspects of the district court’s claim construction as well as its conclusion that the Microsoft License authorized use of the invention claimed in the ’327 patent.
On appeal, the Federal Circuit reviewed the district court’s claim construction regarding three challenged terms in the ’327 patent: “a rasterization process” in claims 1-6, “scan conversion” in claims 1 and 9-16, and “s10e5” in claims 3 and 11. As to the first term, “a rasterization process,” the district court interpreted it to mean a process as a whole operating on a floating point format, and found that ATI’s products did not operate on a floating point format “as a whole.” Silicon Graphics proposed that when the claims refer to “a rasterization process,” they are referring to one of the subsets of rasterization (e.g., scan converting, color, texture, fog, shading) listed in the specification, and argued that not all of the rasterization processes need to be conducted in floating point format. The Federal Circuit found that Silicon Graphics’ proposed construction was supported by the language of the claims in context and the specification. The Court also pointed out that claims 1-6 recite “a rasterization process which operates on a floating point format . . . ,” not “the rasterization process.” According to the Court, the use of the indefinite article “a” in the claim, when coupled with the list of processes provided in the specification, makes it clear that the claims’ references to “a rasterization process” means “one or more rasterization processes.” Slip op. at 11. Accordingly, the Court held that the district court erred in concluding that the claims require rasterization to occur entirely with floating point values.
Considering the second term, “scan conversion,” the Court found that the specification supported the district court’s construction that the claims require “scan conversion” to be on an entirely floating point basis. The Court explained that the “general language in the specification permitting some operations to be done in fixed point does not work to contradict the specific language that requires scan conversion in floating point.” Id. at 13. The Court also took the exemplary statement from the “Summary of Invention” section of the ’327 patent, which states both that “all color values exist as floating point format” and “scan conversion is handled entirely on a floating point basis.”
Turning to the third term, “s10e5,” the Court rejected the district court’s construction. The Court found that the specification statement relied on by the district court was given as a part of one embodiment of the invention. The Court explained that a court’s reliance on the specification must not go so far as to import limitations into claims from examples or embodiments unless the specification makes clear that the patentee intended for the claims and the embodiments in the specification to be strictly coextensive. Reviewing the Abstract and the Summary of the Invention of the ’327 patent, the Court found that the specification did not suggest that the patentee intended to make that embodiment of s10e5 coextensive with the claims. The Court also noted that “[t]hose more general statements trump the definition found in the embodiment on which the district court relied.” Id. at 16.
After analyzing the district court’s claim constructions, the Federal Circuit affirmed the district court’s SJ ruling of noninfringement with respect to those claims that contain the term “scan conversion” (claims 1, 9-12, 15, and 16). In evaluating the Microsoft License only with respect to apparatus claims 2 through 6 of the ’327 patent, the Court found that the district court erred in enforcing the contract at the SJ stage because it relied on an erroneous assumption of what constitutes infringement of an apparatus claim. According to the Court, where a product includes the structural means for performing a claimed function, it can still infringe “separate and apart” from the operating system that is needed to use the product. The Court reasoned that even if the products cannot rasterize or store absent an operating system, they may include a rasterization circuit and a frame buffer for doing so. In that case, they infringe separate and apart from the operating system. The Court thus vacated the SJ ruling of noninfringement based on the Microsoft License and remanded for the district court to determine whether any genuine issues of material fact would allow ATI to continue to rely on the Microsoft License at trial.
Next, in reviewing the district court’s denial of a motion for JMOL of invalidity, the Court found that the district court correctly upheld the jury’s finding of no anticipation because sufficient evidence provided at trial supported the jury’s verdict. Further, applying the Seventh Circuit law in reviewing the district court’s denial of a motion for a new trial, the Court examined the propriety of the district court’s resolution of an order-of-steps question. Although the Court noted that “[a]n erroneous instruction on claim interpretation that affects the jury’s decision on anticipation is grounds for a new trial,” id. at 28 (quoting Seachange Int’l, Inc. v. C-Cor Inc., 413 F.3d 1361, 1381 (Fed. Cir. 2005)), the Court found that ATI failed to show prejudice to its position from the jury instructions. Instead, ATI only argued that it was prejudiced by Silicon Graphics’ attorney argument. Thus, the Court affirmed the district court’s denial of JMOL.
Finally, the Court evaluated whether ATI abandoned its invalidity claims raised in its counterclaims but not pursued at trial. The Court found that the district court appropriately characterized ATI’s jurisdictional arguments as addressing its invalidity counterclaims as a whole. The Court further noted that it is a claimant’s burden to keep the district court clearly apprised of what parts of its claim it wishes to pursue and which parts, if any, it wishes to reserve.
Summary authored by Hojung Cho, Ph.D., student associate at Finnegan.