In a recent decision construing claims to virtual memory space networking systems, the U.S. Court of Appeals for the Federal Circuit affirmed a pre-Phillips district court claim construction, reminding us that construing patent claims is not about the process, but about the result. Mangosoft, Inc. v. Oracle Corp. , Case No. 07-1250 (Fed. Cir., May 14, 2008) (Linn, C. J.).
Mangosoft is the owner of a patent covering computer networking systems that, in contrast to traditional networks with central data repositories, decentralize memory by storing data in a network of individual computers (or nodes) to form a "virtual memory space." Mangosoft sued Oracle, accusing its Real Applications Clusters (RAC) software of infringement. The sole point of contention was the meaning of the term "local" in the patent claims. Relying primarily on a technical dictionary, the district court held that the term "local" meant memory "directly attached to a single computer's processor." It rejected Mangosoft's proposed construction, that the term "simply requires a computer memory device that is somehow 'linked' to a computer (whether directly or indirectly)." Following claim construction, the district court on summary judgment held that Oracle's software did not infringe. Mangosoft appealed.
Mangosoft's principal argument on appeal was that the district court had erred by importing the "directly" attached requirement from a technical dictionary definition of "local." Mangosoft claimed that the district court wrongly applied the outmoded claim construction framework of Texas Digital, which taught that the claim construction process should begin and end with dictionary definitions unless those definitions were clearly inconsistent with the patent's use of the terms. In its 2005 en banc Phillips decision, the Federal Circuit essentially abrogated that approach, instead instructing courts that the claims themselves, the patent specification and the prosecution history (collectively the "intrinsic evidence") are the most reliable sources for determining claim scope. Since the district court's claim construction occurred prior to Phillips and used a framework that is now widely regarded to be obsolete, Mangosoft argued that the district court's construction must be reversed.
The Federal Circuit disagreed. First, it held that while the district court had apparently relied on a dictionary, "even Phillips recognized that reference to such sources is not prohibited so long as the ultimate construction given to the claims in question is grounded in the intrinsic evidence and not based upon definitions considered in the abstract." Second, the Court held "we review judgments, not opinions, and need not focus on the methodology used by the district court." The Court explained that "our de novo review means that we need not decide whether the logic or subsidiary definitions used by the district court to reach the correct construction were sound . ... We review only the district court's finished product, not its process. " Finally, conducting its own analysis, the Court held that the construction was supported by the intrinsic record (in addition to the dictionary). As the Court noted, "when considered in the context of and not divorced from the intrinsic evidence, there is nothing improper about referencing this [dictionary] definition in correctly construing the claim."
Practice Note: While case law sometimes depicts claim construction as a process, before challenging a claim construction, practitioners would be well advised to look beyond the hierarchies and canons employed and carefully consider the objective of the Markman/Phillips process, which Phillips described as defining what the patentee actually invented.
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