United States: Federal Circuit Review - Issue 30

Disclosures that do no more than recite functions cannot meet the "means-plus-function" requirements of §112 ¶ 6.

Robert Bosch, LLC v. Snap-on, Inc. & Drew Tech., Inc., No. 2014-1040, (Fed. Cir. Oct. 14, 2014) (Prost, CJ.). Click Here for a copy of the opinion.

 

Bosch sued Snap-On and Drew Technologies for infringing US patent no. 6,782,313. The district court held that the claim language "by means of the program recognition device" (likewise "program loading device") is indefinite under 35 U.S.C. §112 ¶ 6 ("means plus function" claims), for failing to disclose corresponding structure. Bosch appealed.

 

The Federal Circuit disagreed that "by means of" automatically triggered a "means plus function" analysis. However, it concluded that the district court's error was harmless and affirmed that "program recognition device" and "program loading device" nevertheless invoked §112 ¶ 6 for other reasons.

 

Specifically, the Federal Circuit asked "whether the claim language names particular structures or, instead, refers only to a general category of whatever may perform specified functions." The court concluded that the '313 specification "provide no structural guidance" and disclosures of "program recognition device" and "program loading device" are "solely functional." Because the claim terms invoked §112 ¶ 6, and because there was no "corresponding structure" in the specification, the Federal Circuit affirmed that "program recognition device" and "program loading device" are indefinite.

 

Attorney's fees to a "prevailing party" do not require a patentee to succeed on all of its infringement claims.

 

SSL Servs., LLC v. Citrix Sys. Inc. & Citrix Online, LLC, No. 2013-1419, -1420, 2014 U.S. App. LEXIS 19672, (Fed. Cir. Oct. 14, 2014) (O'Malley, J.). Click Here for a copy of the opinion.

 

SSL sued Citrix Systems and Citrix Online (collectively, "Citrix") for infringing US patent Nos. 6,061,796 and 6,158,011. SSL acquired the two patents from V-One in 2005. From 2000 – 2003, before SSL acquired the two patents, Citrix licensed these patents from V-One.

 

The district court conducted a Markman hearing and a jury trial. The jury found: (1) Citrix willfully infringed claims 2, 4, and 7 of the '011 patent and the claims are valid; and (2) Citrix did not infringe claim 27 of the '796 patent. The district court denied: (3) SSL's motion for a new trial regarding the '796 patent; (4) Citrix's motion for JMOL and for a new trial regarding the '011 patent; and (5) SSL's request for prevailing party status. SSL appealed and Citrix cross-appealed.

 

An issue on appeal was whether the district court properly construed the term "destination address" in the '796 patent as "the network address of a computer or server." Based on the claim language and the written description of the patent, the Federal Circuit agreed with the district court's interpretation and affirmed its denial of SSL's motion for a new trial. Specifically, "the non-infringement verdict stands" because the "network address limitation is not practiced by the accused products."

 

In a patent case, Federal Circuit law governs the determination of which party has prevailed. 35 U.S.C. § 285 ("The court in exceptional cases may award reasonable attorney fees to the prevailing party.") See also FRCP 54(d). A party has "prevailed" when it "received at least some relief on the merits," and when "that relief must materially alter the legal relationship between the parties by modifying one party's behavior in a way that 'directly benefits' the opposing party." The district court found that neither party prevailed because "both parties achieved some success and sustained some failure." The Federal Circuit disagreed and found that SSL is the prevailing party. SSL's judgment on the '011 patent against Citrix is a "relief on the merits that materially alters the legal relationship" of the parties, "even if it did not succeed on all of its infringement claims." Accordingly, the Federal Circuit vacated and remanded the district court's finding of no prevailing party.

 

With regards to Citrix's cross-appeal, the Federal Circuit affirmed the district court's ruling on all grounds. First, it found that "substantial evidence supports the jury's verdict of infringement" of the '011 patent. Citrix did not dispute the district court's claim interpretation of "encrypted files" as meaning "to render a set of data used by a program unintelligible without decrypting." Instead, it argued unsuccessfully that the jury's verdict is not supported by substantial evidence that it practices this limitation. Further, Citrix's JMOL motion for invalidity was appropriately denied because "Citrix did not show by clear and convincing evidence that the claims were invalid as obvious" over the cited reference.

 

The Federal Circuit also affirmed the district court's denial of Citrix's JMOL motion regarding willful infringement. The Federal Circuit determined that Citrix knew of the '011 patent, considered the patent in its agreements with V-One, and had access to the technology in the patent from V-One. The Federal Circuit also agreed with the district court that Citrix's non-infringement and invalidity arguments were unreasonable based on the substantial evidence in the record.

 

On evidentiary matters, the Federal Circuit affirmed the exclusion of Citrix's Chief Engineer's testimony at trial regarding his personal beliefs of non-infringement and invalidity based on a pending re-examination. The court found that "beliefs formed by a lay person without the benefit of the court's claim construction determinations rendered them of little probative value and potentially prejudicial." In addition, actions taken by the PTO have limited value to establish an infringer's good faith belief of invalidity. Furthermore, Citrix's effort to exclude the V-One agreements was rejected, because they were deemed to be "sufficiently probative of the circumstances which would surround a hypothetical negotiation to be admissible."

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