May 2015
Applicant’s Use of Phrase “Refers To” in Prosecution History Indicates Intention to Define Term
| Judges: Chen, Linn (author), Hughes |
| [Appealed from N.D. Cal., Judge Seeborg] |
In Vasudevan Software, Inc. v. MicroStrategy, Inc., Nos. 14-1094, -1096 (Fed. Cir. Apr. 3, 2015), the Federal Circuit affirmed the district court’s claim construction and judgment of noninfringement, reversed the district court’s grant of SJ of invalidity, and remanded for further proceedings.
Vasudevan Software, Inc. (“VSi”) owns U.S. Patent Nos. 6,877,006 (“the ’006 patent”); 7,167,864 (“the ’864 patent”); 7,720,861 (“the ’861 patent”); and 8,082,268 (“the ’268 patent”) (collectively
“the patents-in-suit”), all of which are directed to online analytical processing technologies capable of collecting and processing information from incompatible databases. The claims of the patents-in-suit recite a system that accesses either “disparate . . . databases” or “incompatible databases of different types.” VSi sued MicroStrategy, Inc. (“MicroStrategy”) for infringement of each of the patents-in-suit. In a separate suit, VSi sued TIBCO Software, Inc. (“TIBCO”) for infringement of the ’864 patent.
The parties disputed the construction of the term “disparate databases.” While the parties agreed that “disparate” means “incompatible,” the parties differed over how extensive the incompatibility must be. Relying on statements by VSi during prosecution, the district court held that the claim term “disparate databases” means a database lacks three elements: (1) compatible keys; (2) record identifier (“ID”) columns of similar value; and (3) record ID columns of similar format in the schemas or structures that would otherwise enable linking data. The district court also dismissed VSi’s proposed construction of “disparate databases.” The district court noted that while VSi’s proposed construction was supported by a stipulation VSi entered into with IBM and Oracle in a prior litigation involving the patents-in-suit, that stipulation did not bind the defendants. In view of the district court’s claim construction, the parties stipulated to noninfringement. The district court further granted TIBCO’s motion for SJ of invalidity of all of the claims of the patents-in-suit asserted against TIBCO for lack of written description support and enablement of the “disparate databases” limitation. The district court also granted MicroStrategy’s motion for SJ of invalidity of all of the claims of the patents-in-suit asserted against MicroStrategy for lack of enablement. VSi appealed.
On appeal, the Federal Circuit first considered the district court’s construction of the claim term “disparate databases.” The Court agreed with the district court that the prosecution history controls, as neither the specification nor the extrinsic evidence provided by VSi provides the precise scope and meaning of the term—that is, the degree of incompatibility required for a set of databases to qualify as “disparate databases.” In particular, the Court found that the specification, while referring to incompatible databases as being of different types and having different data, fails to describe how disparate or incompatible the claimed “disparate databases” must be. The Court also noted that VSi’s expert witness conceded that the meaning of “disparate databases” depends on the context and does not have a consistent use. The Court further held that the stipulated construction of the claim term in the prior litigation involving IBM and Oracle was of little relevance or probative value because IBM’s and Oracle’s accused products may have functioned in a manner for which the precise scope of the “disparate databases” limitation was immaterial. Moreover, the Court also agreed with the district court that, because the defendants were not parties to the IBM and Oracle stipulation, they were not bound by it.
“An applicant’s use of the phrase ‘refers to’ generally indicates an intention to define a term.” Slip op. at 12.
Turning to the prosecution history, the Federal Circuit found that VSi defined the meaning of the claim term “disparate database” during prosecution. The Court noted that VSi stated, inter alia, “[t]he disparate nature of the . . . databases refers to an absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases.” Slip op. at 10 (emphases added) (citation omitted). The Court noted that VSi’s statement is definitional, noting that the “use of the phrase ‘refers to’ generally indicates an intention to define a term.” Id. at 12. The Court also adopted a conjunctive interpretation of VSi’s statement—that is, the claim term “disparate database” requires the absence of all compatible keys, record IDs of similar value, and record IDs of similar format in the schemas or structures, rather than the absence of any one of these characteristics. The Court explained that the conjunctive interpretation is dictated by the manner in which VSi distinguished the cited prior art and is consistent with proper grammar. Moreover, the Court noted that a disjunctive reading would conflict with the applicant’s statements during reexamination and the testimony of VSi’s expert witness.
The Court also held that the claim term “incompatible databases” is synonymous with “disparate databases,” as VSi consistently argued that “disparate databases” meant “incompatible databases” and never provided an independent construction of the term “incompatible databases.” Accordingly, the Court affirmed the district court’s construction of the claim terms “disparate databases” and “incompatible databases.”
The Federal Circuit then addressed the district court’s grant of SJ of invalidity based on lack of written description. The Court disagreed with the district court that there was no question of material fact that the written description would not convey to one of skill in the art that VSi had possession of a means of accessing “disparate databases” at the time of filing. The Court first noted that the fact that the specification does not speak of accessing “disparate databases” using this exact phrase is not dispositive. The Court also found that the testimony of VSi’s expert witness, not challenged by any contrary expert testimony, at least raised a genuine issue of material fact regarding whether the
patents-in-suit disclose how to access disparate databases. In particular, the Court noted that VSi’s expert witness was able to point to specific portions of the ’006 patent as showing how to access disparate databases. Therefore, the Court reversed the district court’s grant of SJ on the ground of lack of written description.
Lastly, the Court addressed the district court’s grant of SJ of invalidity based on lack of enablement. The Court found that the effort it took the inventor to reduce the invention to practice did not conclusively show a lack of enablement. The Court noted that the time it took the inventor to make a commercial-grade embodiment was not, itself, determinative of nonenablement because “[t]itle 35 does not require that a patent disclosure enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment.” Id. at 21-22 (quoting CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003)). The Court also found there was a genuine issue of material fact regarding whether the ’006 patent specification provides a reasonable amount of guidance with respect to the direction in which experimentation should proceed. The Court noted that the existence of these genuine issues of material facts was sufficient to defeat SJ of invalidity. Thus, the Court reversed the district court’s grant of SJ that the asserted claims are invalid for lack of enablement.
