Friday, March 02, 2012

Graphon loses to MySpace at CAFC: limitations from the specification issue and 101 issue

At issue was the meaning of "database":

The parties dispute what is covered by the term “da- tabase,” a term that is found in each of the 73 claims in the patents-in-suit. Although our precedent establishes that claim construction is an issue of law that we review without deference, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc), we weigh carefully the guidance provided by the trial court.


If the term “database” is understood to cover different types of data organization systems, including both file (hierarchical) and relational systems, then the MBB, which all parties concede is prior art and which taught the same basic approach as the patents-in-suit, would invalidate all the claims as either anticipated under 35 U.S.C. § 102 or obvious under § 103. If, on the other hand, “database” covers only relational systems as urged by GraphOn, it would not be so clear that the MBB in- validates the claims because the patents-in-suit would be understood to disclose and claim a differently-designed system to accomplish essentially the same end. At a minimum there would be a genuine issue of disputed fact on the question of invalidity, and summary judgment would be inappropriate.

Here, the patentee is urging a narrow scope to avoid invalidating prior art:

GraphOn argues that we should reverse the district court’s “database” construction and redefine it as limited to a relational database. In GraphOn’s view, the claims, written description, and file histories limit the term to relational databases. Thus, according to GraphOn, hierarchical databases, such as the file system used by the MBB, cannot be prior art.

At issue

But limitations from parts of the written description, such as the details of the preferred embodiment, cannot be read into the claims absent a clear intention by the patentee to do so. Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002).

It has been suggested that a reading of this court’s claim construction cases indicates that outcomes depend on the judges’ predilection for one of two approaches.2 One approach is to focus on the invention disclosed in the patent: “[t]ry to understand what the inventor has in- vented (what he says is his contribution in the art) and then choose the claim meaning that best fits the inven- tion.”3 The other is to focus on the words that the prose- cuting lawyer used to craft the claims and “then apply legal rules of construction to divine the meaning of the claim.”4 While this is insightful regarding the approaches highlighted in one or another of our cases, it is an over- simplification to suggest that these are competing theo- ries; rather, they are complementary. An inventor is entitled to claim in a patent what he has invented, but no more.5 He can, however, claim less, to avoid prior art or for any other reason. Therefore, in construing a claim there are two limiting factors—what was invented, and what exactly was claimed. To determine the former— what was invented—we look at the entire patent, with particular attention to the specification (the written description of the invention and the several claims made). To determine the latter—what exactly was claimed—the focus is on the precise words of the particular claim or claims at issue; the written description and preferred embodiments are aids in understanding those words. In the case before us, proper claim construction requires that we understand what the invention encompasses as well as how the claims are stated.


See Helmsder- fer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1383 (Fed. Cir. 2008) (“Our case law generally counsels against interpreting a claim term in a way that excludes the preferred embodiment from the scope of the invention.”).

Judge Mayer, in dissent, began:

The issue of whether a claimed method meets the subject matter eligibility requirements contained in 35 U.S.C. § 101 is an “antecedent question” that must be addressed before this court can consider whether particular claims are invalid as obvious or anticipated. In re Comiskey, 554 F.3d 967, 975 n.7 (Fed. Cir. 2009). GraphOn Corporation (“GraphOn”) owns four patents, U.S. Patent Nos. 6,324,538 (the “’538 patent”), 6,850,940, 7,028,034, and 7,269,591, which contain exceedingly broad claims to a system that allows users to exert control over the content of their online communications. This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable “abstract idea” before pro- ceeding to consider subordinate issues related to obvious- ness and anticipation. See Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (noting that whether claims are di- rected to statutory subject matter is a “threshold test”); Parker v. Flook, 437 U.S. 584, 593 (1978) (“Flook”) (em- phasizing that “[t]he obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious”); Comiskey, 554 F.3d at 973 (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non- obviousness under § 103.” (citations and internal quota- tion marks omitted)).


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