Wednesday, February 13, 2013

Google prevails over FM at CAFC

The bottom line in FM v. Google is that FM lost:

In this patent case, Function Media, L.L.C. (“FM”) appeals the district court’s invalidation of one of FM’s patents as indefinite and the jury’s verdict that two other FM patents are invalid and also not infringed. FM raises several other issues on appeal, including a claim that the district court abdicated to the jury its responsibility to construe disputed claim terms, an argument that the district court incorrectly denied its motion for a new trial on the grounds that the verdict was against the great weight of the evidence, and an argument that the verdicts of infringement and invalidity are irreconcilable. For the reasons explained below, we affirm.

As to functional claiming:

Furthermore, it is well established that proving that a person of ordi- nary skill could devise some method to perform the func- tion is not the proper inquiry as to definiteness—that inquiry goes to enablement. See Blackboard, 574 F.3d at 1385. Simply put,
[a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function.
Id. “Section 112, paragraph 6, is intended to prevent such pure functional claiming.” Id. (citing Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)). We therefore affirm the district court’s judgment that that claim 1 of the ’045 Patent is invalid for indefiniteness.

On claim construction:

We see no error in the district court’s denial of summary judgment. The district court construed this term, adopting FM’s proposed construction. To the extent that FM raises a claim construction argument here, FM may not object to the court’s decision to instruct the jury to apply the claim construction that FM itself proposed. See Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly explained, ‘litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.’” (quoting Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir. 2008))). To the extent that FM attempts to couch as a claim construction issue the denial of summary judgment of infringement, we note that “a denial of summary judgment is not properly reviewable on an appeal from the final judgment entered after trial.” Glaros v. H.H. Roberson Co., 797 F.2d 1564, 1573 (Fed. Cir. 1986); accord Johnson v. Sawyer, 120 F.3d 1307, 1316 (5th Cir. 1997) (“[The Fifth Circuit has] held repeatedly that orders denying summary judgment are not reviewable on appeal where final judgment adverse to the movant is rendered on the basis of a subsequent full trial on the merits.”).

On an irreconciliable verdict:

We apply the law of the regional circuit to determine whether an argument that the verdict is irreconcilable has been waived. See Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1325 (Fed. Cir. 2001) (explaining that this court applies the law of the regional circuit to the issue of inconsistent verdicts because the issue is not unique to patent law). In the Fifth Circuit, a party need not object to the jury’s inconsistent verdict before the jury is dismissed in order to avoid waiver when the verdict is special and falls under Federal Rule of Civil Procedure Rule 49(a). Mercer v. Long Mfg. N.C., Inc., 671 F.2d 946, 947-48 (5th Cir. 1982) (“We know of no case in this Circuit holding that inconsistencies in special verdicts pursuant to Rule 49(a) are waived if not raised prior to release of the jury.”); see also id. at 948 n.1 (explaining waiver does not apply to verdicts under Rule 49(a), but it does apply to verdicts under Rule 49(b)). If the verdict falls under Rule 49(b), which covers general verdicts and general verdicts “with written questions on one or more issues of fact,” waiver applies if no objection is raised before the jury is dismissed. Stancill v. McKenzie Tank Lines, Inc., 497 F.2d 529, 533-35 (5th Cir. 1974) (“By failing to object to the form of the verdict and answers at the time they were announced by the jury, both parties waived any objection to inconsistencies under Rule 49(b).”).

Because FM failed to object to the verdict’s irreconcil- ability at the time the jury returned the verdict, FM can only avoid waiver if the verdict form is considered special. FM argues that the verdict was special because the ver- dict form asked the jury specific questions about validity and infringement. FM emphasizes that we have found similar forms to be “special” in Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1350 (Fed. Cir. 2010) and L&W, Inc. v. Shertech, Inc., 471 F.3d 1311, 1319 (Fed. Cir. 2006). Google urges that this verdict was general because it consisted of simple yes or no questions on infringement, anticipation, and obviousness. It says we have said such forms are general in i4i, 589 F.3d at 1265 and O2 Micro, 521 F.3d at 1358. It distinguishes the form in Comaper, which was labeled as a special verdict and included “special questions” such as whether the prior art was in public use before the critical date.

None of the cases cited by either party are helpful.


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