Symantec and Hilgraeve v. Computer Associates and Richard B. Levin (CAFC 2007-1201, -1239)

CA's initial pleadings denied infringement and asserted affirmative defenses and counterclaims for invalidity and non-infringement. Subsequently, CA amended its pleadings to add affirmative defenses (including a defense of laches) and counterclaims for unenforceability of the '776 patent due to inequitable conduct, and for invalidity of the '776 patent under 35 U.S.C. § 256 for failing to name alleged co-inventor Levin. The district court also granted Levin's motion to intervene as a party and assert a claim for co-inventorship of the '776 patent.

CA won claim construction in district court, leading again to summary judgment of noninfringement, though the patent withstood invalidity attack. Symantec also won on inequitable conduct, laches, and had dismissed Levin's claim of co-inventorship. Appeal and cross-appeal.

Claim Construction

Claim 1 had a preamble that could be construed to contain a limitation.

Because the disputed term appears in the preamble to claim 1, we must first determine whether it is in fact a separate limitation. In general, a preamble is construed as a limitation "if it recites essential structure or steps, or if it is 'necessary to give life, meaning, and vitality' to the claim." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble is not limiting, however, "'where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.'" Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). In Catalina, we identified several guideposts to aid in determining whether a preamble should be given limiting weight. For example, "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention." Id. Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble "generally is not limiting." Id. at 809. Thus, in general, the purpose of a claim preamble is to give context for what is being described in the body of the claim; if it is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), we do not construe it to be a separate limitation.

The CAFC overturned the district court construction, which was based on interpreting the file history.

The prosecution history fails to demonstrate "clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art."

An interesting exception to discerning different meaning from different terms is giving the preamble some slack to provide context for a claim.

CA argues alternatively that the district court's construction was nonetheless correct because the "as it is being transferred" term and the "prior to storage" term cannot have the same meaning--they must each be given a distinct construction. Although CA is correct that when construing terms in the body of a claim, the general assumption is that different terms have different meanings, Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006), the same generally is not true for terms in the preamble. The use of different language in the preamble than in the body of the claims does not suggest that the preamble imposes a limitation. Rather it is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history. Here, there is nothing in the claims, the specification or the prosecution history that suggests that the preamble language "as it is being transferred" has any different meaning than "prior to storage."

We conclude that the term "as it is being transferred" simply means "prior to storage."

Construction of the terms "computer" and "computer system" were disputed.

The dispute here centers on whether the term "computer system" is properly limited to a single computer, or whether it covers a network of multiple computers. The district court explained that its construction limited the term "computer system" to a single personal computer or workstation. The district court premised its construction on the preferred embodiment's use of a single computer, which as the court noted, "constitutes the complete description of the computer system." The district court also relied on expert testimony that the term "computer system," as used in the specification, referred to a single computer.

On appeal, Symantec contends that the district court improperly limited the claims to cover only the preferred embodiment. The specification does not limit the invention to the preferred embodiment, and the ordinary meaning of the term "computer system," according to Symantec, includes both a single computer and a system of multiple, interconnected computers.

We agree with Symantec that the district court's construction of the terms "computer" and "computer system" unduly limits the scope of the claims to a single personal computer. The claims "must be read in view of the specification, of which they are a part." Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). In Phillips, we characterized the specification as "the single best guide to the meaning of a disputed term." Id. We find nothing in the specification that would limit the meaning of the term "computer" or "computer system" to a single computer. The terms are not expressly defined in the specification, and there is nothing in the specification that suggests that it adopted a special definition of those terms.⁶

Expert testimony wasn't very expert.

Moreover, the expert testimony that the district court cites does not support the district court's construction. That testimony simply recites how each expert would construe the term "computer system" based on his own reading of the specification. Such expert testimony, which does not identify the "accepted meaning in the field" to one skilled in the art, is unhelpful. Sinorgchem, 511 F.3d at 1137 n.3 (according little or no weight to expert testimony about the meaning of specification terms where the expert failed to present evidence of the generally accepted meaning of those terms to persons of ordinary skill in the art).

⁶ Although the preferred embodiment utilizes a single computer, this is not a case where the specification consistently refers to the invention as involving a single computer. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1313 (Fed. Cir. 2007).

Failing definition in the spec, the court dipped into the dictionary for meaning.

Because the specification does not reveal any special definition for the terms "computer" or "computer system," we must construe those terms according to their ordinary meaning. In Phillips, we explained that "the words of a claim 'are generally given their ordinary and customary meaning.'" 415 F.3d at 1312. We clarified that the relevant meaning is "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Id. at 1313. Dictionaries are "among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention." Id. at 1318. Here, it is clear that the ordinary meaning of the terms "computer" or "computer system" as understood by a person of ordinary skill in the art at the time of the invention is not limited to a single computer or workstation. The Dictionary of Computing at that time defined the term "system," in relevant part, as:

Anything we choose to regard (a) as an entity and (b) as comprising a set of related components. In computing the word is widely used with many shades of meaning. Most commonly, however, it may refer to a related set of hardware units, or programs, or both. The hardware contents of a computer room may be spoken of as "the system," and so may a range of manufacturer's equipment[.]

Dictionary of Computing 375 (2d ed. 1986). By contrast, the same dictionary defined the term "stand-alone" as "[d]enoting a computer system or subsystem that is capable of operation without being connected to any other computer system or subsystem." Id. at 360. In other words, a stand alone computer is only one type of computer or computer system. We therefore conclude that the ordinary meaning of the terms "computer" and "computer system" to one of ordinary skill in the art in 1990 was not limited to a single, stand-alone computer or workstation and that the district court erred by unduly limiting its construction of those terms.

Claim construction in error, the noninfringement finding was vacated, and the case remanded.

Inducing Infringement

Symantec had accused inducing infringement, but having failed to sway the district court towards direct infringement, the inducing dog didn't hunt.

35 U.S.C. § 271(b) provides that "[w]hoever actively induces infringement of a patent shall be liable as an infringer." "In order to succeed on a claim of inducement, the patentee must show, first that there has been direct infringement," and "second, that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement." MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005) (quoting Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1304-05 (Fed. Cir. 2002)). We recently clarified en banc that the specific intent necessary to induce infringement "requires more than just intent to cause the acts that produce direct infringement. . . . [T]he inducer must have an affirmative intent to cause direct infringement." DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006) relevant section (en banc). Thus, "inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." Id.

But the CAFC was sympathetic to Symantec's argument, thus vacating and remanding on this count.

We find that there are genuine issues of material fact as to whether CA induced its customers to infringe the '776 patent. We agree with Symantec that CA encouraged customers to engage in direct infringement by using the EAV products in conjunction with a downloading program. This is not a case where the customers may be using the product in either an infringing way or a non-infringing way; CA's customers can only use the EAV products in an infringing way. Under these circumstances, Symantec has produced sufficient circumstantial evidence of direct infringement to create a genuine issue of material fact, even though Symantec has not produced evidence that any particular customer has directly infringed the '776 patent. Direct evidence of infringement, as opposed to circumstantial evidence, is not necessary. See Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1312 (Fed. Cir. 1998) (finding that Cardinal's advertisements conceded the ability of the accused device to practice the claimed method, and encouraged such use); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed. Cir. 1986) (rejecting the argument that "proof of inducing infringement or direct infringement requires direct, as opposed to circumstantial evidence").

Laches

The CAFC found CA's estoppel by laches improper, as it had nothing to do with the district court's noninfringement finding.

A cross-appeal may only be filed "when a party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary under the judgment." Bailey v. Dart Container Corp., 292 F.3d 1360, 1362 (Fed. Cir. 2002). Thus, a properly filed cross-appeal requires that, upon acceptance of appellee's argument, our determination would result in a reversal or modification of the judgment rather than an affirmance. See id.

However, we may consider CA's laches arguments as an alternative ground for sustaining the judgment of non-infringement. TypeRight Keyboard, 374 F.3d at 1160 ("Even though we lack jurisdiction over the cross-appeal, [the appellee] may still defend the judgment on other grounds."). We find that the district court did not err in dismissing CA's laches defense on summary judgment.

A defendant, in order to invoke the defense of laches, must prove: "(1) [that] the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant, and (2) [that] the delay operated to the prejudice or injury of the defendant." A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). A presumption of laches arises "upon proof that the patentee delayed filing suit for more than six years after actual or constructive knowledge of the defendant's alleged infringing activity." Id. at 1035-36.

CA's laches argument was based on Hillgraeve having sued another party, Innoculan, earlier, but not CA.

We agree that laches would only apply if the products were the same or similar, see Watkins v. Northwestern Ohio Tractor Pullers Association, Inc., 630 F.2d 1155, 1164 (6th Cir. 1980), and that CA has presented insufficient evidence that Inoculan is the same or similar to any of the products in suit.

Inventorship

Levin (and CA) asserts that he is an omitted co-inventor of the '776 patent.10 To show co-inventorship, Levin is required to prove his contribution to the conception of the claims by clear and convincing evidence. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). An alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony. Id. In Gemstar-TV Guide International, Inc. v. International Trade Commission, 383 F.3d 1352 (Fed. Cir. 2004), we explained that "[w]hether the co-inventor's testimony has been sufficiently corroborated is evaluated under a 'rule of reason analysis,' which requires that an 'evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor's story may be reached.'" Id. at 1382 (quoting Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). Corroborating evidence may be in the form of "records made contemporaneously with the inventive process," "[c]ircumstantial evidence of an independent nature," or "oral testimony from someone other than the alleged inventor." Id.

Levin had a declaration regarding a phone call with one of the named inventors, Matthew Gray, who agreed that a phone call had taken place regarding the technology.

Levin points out that Gray testified that the day planner entry that reflected his conversation with Levin was "relat[ed] to the '776 patent." J.A. at 10,064... The district court found that the day planner entry was insufficient as corroborating evidence. That entry, according to the district court, "at most shows only that [Levin and Gray] discussed the then-current state of the art"; it "fail[ed] to explicitly identify [Levin's] contribution." J.A. at 87-88.

The appeals court agreed.

Levin's declaration itself is insufficient because it lacks corroboration.

Inequitable Conduct

CA's inequitable conduct charge had multiple prongs. First was Gray's not declaring Levin's involvement. That went nowhere. The second was that Gray had overstated his qualifications. Gray was just a "marketing person, not a software person with technical expertise." That got a "so what" from the CAFC.

Finally, another inventor, Donald Wakelin, signed a statement that he had read and understood the specification and claims. But then Wakelin "testified that he only understood the claims in general terms, that "the statements in claim one are so vague as to be practically unintelligible," id. at 10006, and that he didn't "really understand what these claims are saying." Id. at 10007."

The district court found that, even if Wakelin did not fully understand the claims of the patent, that alone was not sufficient to establish a threshold level of materiality. We agree. As the district court stated, "Wakelin's failure to fully understand the language of the claim contents should not be confused for failure to understand the meaning of the claims, which would likely be considered material by a 'reasonable examiner.'" Id. at 124.

Prior Art Invalidity

The CAFC considered the district court record undeveloped on this point, and thus declined "to address the issue at this time."

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We hold that the district court erred in its construction of the claim terms "a method of screening data as it is being transferred," "destination storage medium," "computer," and "computer system." We therefore vacate and remand as to non-infringement and invalidity. We affirm the district court's decision on laches, inequitable conduct, and inventorship.