After the district court broadly construed the claims, a jury found SeaChange to have willfully infringed the patent in suit, both literally and under the doctrine of equivalents, and awarded nCube double actual damages and its attorney fees. The U.S. Court of Appeals for the Federal Circuit has now upheld the district court’s claim construction and award. nCube Corp. v. SeaChange Int’l. Inc., Case Nos. 03-1341,-1366 (Jan. 9, 2006) (Radar, J.) (Dyk, J., dissenting).
The patent at issue was directed to a method and apparatus for scalable, high bandwidth storage retrieval and transportation of multimedia data on a network. The claim construction dispute centered on the key claim term of "upstream manager;" which the district court found to mean an element that routes messages by using either logical or physical addresses. In arriving at this construction, the district court construed the term to be broader than the single embodiment described in the specification, which did not describe the use of physical addresses. Based on its construction, the jury concluded that SeaChange willfully infringed the claim, both literally and by equivalents and the district court held the case to be "exceptional," awarding nCube multiple damages and attorney fees. SeaChange appealed.
The Federal Circuit affirmed the district court’s claim construction, reasoning that the meaning of the claim term was not "so amorphous that one of skill in the art can only reconcile the claim language with the inventor's disclosure by recourse to the specification." The Federal Circuit reasoned that the claim at issue was not limited to message routing using only logical addresses, refusing to read into the independent claim a limitation from a dependant claim, reasoning that to do so would be improper and would make the claims redundant. The Federal Circuit also found the district court’s construction was consistent with the prosecution history.
The Federal Circuit concluded that district court did not abuse its discretion, either in finding the case to be exceptional or in awarding attorney fees and double damages. The Federal Circuit reasoned that the case for literal infringement was not closed and the defendants deliberately copied the invention without investigating the scope of the patent. The Court concluded that defendant’s actions negated any good faith belief that could excuse the conduct.
Judge Dyk dissented as to the finding of infringement. Judge Dyk believed the majority broadened a poorly drafted patent to cover an invention that was not actually claimed or described in the invention; and that the term "upstream manager" should be limited to use of logical addresses. In his dissent, Judge Dyk cited the en banc decision in Phillips, noting that the specification plays a key role in claim construction, and that the specification of the patent at issue did not support the majority’s claim construction. Judge Dyk reasoned the single embodiment of the invention, using a logical address, was strong evidence that the claims should not encompass an essentially opposite structure; i.e., a physical address. Moreover, Judge Dyk reasoned that the unasserted claims, directed to logical addresses, evidenced the applicant’s intent to limit the patent. Thus, based on what he regarded as the correct (narrower) claim construction, Judge Dyk would reverse the verdict of infringement.
Practice Note
The claim construction in this case should be compared with the result in Lizard Tech v. Earth Res. Mapping, Inc. (discussed above) where the court found that a claim that was broader than the supporting disclosure to be invalid under the written description requirement of 35 U.S.C. § 112, ¶1.
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