Finding that a district court had erred in construing a vital claim term, the U.S. Court of Appeals for the Federal Circuit vacated the lower court's verdict of infringement and, with it, more than $100 million in judgments against DirecTV. Finisar Corp. v. The DirecTV Group, Inc., Case Nos. 07-1023, -1024 (Fed. Cir., April 18, 2008) (Rader, J.).
The patent-in-suit concerns an information broadcasting system that gives subscribers access to video and audio programs through high-speed satellite or cable links, utilizing an information database to track popular broadcasts and to anticipate user requests. At trial, the district court broadly construed the term "information database" as "a collection of computerized information which can be accessed." While conceding that the term "information database" in isolation suggested broad coverage, the Federal Circuit noted that the claim term appeared within a context requiring, in addition to accessing the database, referencing, embedding, assigning and transmitting portions thereof. These functions, the Federal Circuit held, further presupposed searchability and retrievability. To support this narrower reading, the Court turned to the specification, which analogized the invention to a large library. Seizing upon this analogy, the Court held that the indices of the information database were akin to a card catalog system, providing searchability to the information database, which the Federal Circuit likened to a library's collection of books. Indicating that it could not "envision carefully organizing each book's card catalog records, but then randomly heaping the books themselves into an inaccessible pile in the center of the library," the Federal Circuit narrowly construed the information database term to require the presupposed searchability and retrievability.
In its review of the U.S. District Court for the Eastern District of Texas' claim construction, the Federal Circuit considered the analysis of the U.S. District Court for the Northern District of California, which had construed the same claim terms differently than the Texas court in a later-filed action. While reiterating Markman's emphasis on uniformity in the treatment of a patent, the Federal Circuit nevertheless approvingly noted the California court's rejection of the Texas court's analysis, holding that the California court's claim construction was the more correct. In so doing, the Federal Circuit appeared to reserve to itself the safeguarding of the desired uniformity and to grant the district courts wide latitude in formulating their own claim constructions.
Practice Notes: Litigators should be aware that in view of the Federal Circuit's treatment of the competing claim constructions herein, district courts may feel free to be less deferential to each others' claim constructions. Patent prosecutors should be careful when attempting to clarify an invention with reference to the familiar by way of analogy, lest the limitations of the familiar unduly limit the claims, however broadly drafted.
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