REAL wins remand in patent litigation over US 5,032,989

The technical area of the patent involved in the appeal to the CAFC
was real estate and claim 1 of US 5,032,989 stated:

A method using a computer for locating available
real estate properties comprising the steps of:

a) creating a database of the available real estate
properties;
b) displaying a map of a desired geographic area;
c) selecting a first area having boundaries within
the geographic area;
d) zooming in on the first area of the displayed
map to about the boundaries of the first area to
display a higher level of detail than the displayed
map;
e) displaying the zoomed first area;
f) selecting a second area having boundaries
within the zoomed first area;
g) displaying the second area and a plurality of
points within the second area, each point repre-
senting the appropriate geographic location of an
available real estate property; and
h) identifying available real estate properties
within the database which are located within the
second area.

Procedurally, the patentee REAL ESTATE ALLIANCE LTD. ["REAL"] was the
defendant in a declaratory judgment [DJ] action and the appellant
before the CAFC.

The outcome was that the patentee/appellant (represented by
Cadwalader, Wickersham & Taft, LLP, of New York, New York) won a
remand on claim construction issues.

Yes, IPBiz covered this case in 2005.

A patent impacting the real estate industry: US 5,032,989

At the CAFC, disavowal came up:

REAL also argues that the district court’s construc-
tion improperly limits “database” to databases having
tables and fields, and that the term database is broad
enough to encompass a sequential list database with no
tables or fields—e.g., a flat file. We agree. Nothing in the
specification limits the term database to any particular
type of database. “Absent a clear disavowal or contrary
definition in the specification or the prosecution history,
the patentee is entitled to the full scope of its claim lan-
guage.” Home Diagnostics, Inc. v. Lifescan, Inc., 381 F.3d
1352, 1358 (Fed. Cir. 2004). Nothing before us indicates
that the inventor disavowed any particular database
implementation. Accordingly, we conclude that step (a)
means creating a database containing data representingtwo or
more available real estate properties.

The scope of claims relative to the specification was mentioned:

Move’s position is that “selecting” encompasses causing a bound-
ary to be superimposed over the map (with an unspecified
tool) because the “‘claims cannot be of broader scope than
the invention that is set forth in the specification.’”
Appellee’s Br. 32 (quoting On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).
position is that “selecting” encompasses causing a bound-
ary to be superimposed over the map (with an unspecified
tool) because the “‘claims cannot be of broader scope than
the invention that is set forth in the specification.’”
Appellee’s Br. 32 (quoting On Demand Mach. Corp. v.
Ingram Indus., Inc., 442 F.3d 1331, 1340 (Fed. Cir. 2006)).

But REAL won the argument:

REAL further asserts that the
district court improperly imported these limitations from
the ’576 claims, which recite using the selection cursors to
define the selected areas, into the claim at issue which
does not have any such limitations. We agree.

MOVE lost the disavowal argument:

The characterization was
not made by REAL, nor did it acquiesce in the examiner’s
characterization. J.A. 998-99, 1007-09. Finally, Move’s
arguments relating to the prosecution of the ’576 patent
do not amount to a clear disavowal of claim scope for
claim 1 of the ’989 patent. While statements made during
prosecution of a parent can certainly limit a later applica-
tion, we conclude that the statements cited by Move in the
’576 prosecution pertained to very different patent claims
with different limitations. Claim 1 of the ’989 patent does
not contain the first area selection cursor limitation of the
’576 and the ’576 claims do not recite selecting an area.
We conclude that the prosecution history cited by Move
does not clearly disavow selecting an existing area.
Accordingly, we conclude that selecting an area having
boundaries does not require defining the boundaries.

REAL won on pinpointing:

We agree with REAL that the pinpointing limitation
should not be imported into the definition of an appropri-
ate geographic location. The claim recites no such limita-
tion. Furthermore, the specification gives us no reason to
conclude that every listing in the claimed database must
be entered by this create and update procedure.

Bottom line: For the forgoing reasons, we vacate the district court’s
judgment of noninfringement and remand for further
proceedings consistent with this opinion.