CAFC Upholds Amazon District Court Decision On Building Claim
“The district court interpreted the claims as lacking a hierarchical structure and determined that the cross-appeal defendants had not breached, and the CAFC agreed.”
Last week, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the final judgment of the United States District Court for the Northern District of California of non-infringement of the SpeedTrack patent (plaintiff-appellant) US Patent No. 5,544,360 (the ‘360 patent). SpeedTrack sued online retailers AMAZON.COM, BESTBUY.COM, LLC, OFFICEMAX, INC., MACY’S, INC., MACYS.COM, LLC and many others for violating its categorization system. The final decision weighed on the interpretation of the claims by the district court and whether or not the ‘360 patent had a hierarchical structure. The district court interpreted the claims as lacking a hierarchical structure and determined that the cross-defendants-appellants did not infringe. The CAFC, with Judge Prost writing for the tribunal, agreed.
‘360 patent reveals non-hierarchical computer filing system
The ‘360 patent discloses a “computer filing system for accessing files and data according to user defined criteria”. ‘360 Patent Summary. The patent explains that prior art systems emulate common physical filing systems where a document is stored in a file, itself in a file folder. According to the ‘360 patent, this system can become cumbersome when the number of files becomes too large or a file can logically be stored in several folders at the same time.
The prior art had solutions, but according to the ‘360 patent, the previous solutions were clumsy. The ‘360 patent discloses a method which uses “hybrid” folders, which “contain files whose contents overlap more than one physical directory“. Claim 1 of the ‘360 patent sets out a three-step method. First, a “category description table” containing “category descriptions” is created. Category descriptions have no hierarchical relationship between them. Second, a “file information directory” is created because the category descriptions are associated with the files. Finally, a “search filter” is created, which allows you to search for files using their category descriptions.
In one embodiment, a user can find a file by clicking on a category description in a selection list (the category description table disclosed in claim 1). Once the first category description is selected, the picklist refines its list to include only the category descriptions that would produce a file taking the first selection into account. This process can be repeated to restrict the selection to the desired file or list of files.
District Court: The construction of the claim should be read in light of the construction during a previous dispute
In September 2009, SpeedTrack sued various retailers, including Amazon, BestBuy, OfficeMax, Macy’s and many more, alleging infringement of the ‘360 patent. The tribunal de grande instance ruled on the construction of the claim for hierarchical limitation. It adopted the construction proposed by SpeedTrack, namely that category descriptions do not have a predefined hierarchical relationship. The court took into account the waivers made during the proceedings, as well as the interpretations presented in previous litigation. The court rejected the construction proposed by the appellant’s counterclaim, which added a requirement that “[a] data field and its associated values have a predefined hierarchical relationship. During SpeedTrack’s request, which was in part aimed at “clarifying the district court’s interpretation of the criminal record disclaimer”, the court clarified: “” Predefined “means that a field is defined. as a first step and that a value associated with the data files is entered in the field as a second step. After clarifying the definitions, SpeedTrack stipulated non-infringement because the offending products and services use a hierarchical relationship of scope and value, as defined in the modified construction of the Court. As soon as the district court rendered a final judgment for non-infringement, SpeedTrack appealed in a timely manner.
CAFC agrees that disclaimers made during prosecution carry over to subsequent construction of the claim
It was not disputed that the cross appellants did not violate the clarified interpretation of the district court. Therefore, the CAFC only had to determine if the construction was correct. They concluded that it was.
The words of a claim are generally given their plain and ordinary meaning as interpreted by a person of ordinary skill in the art. The claims will also be read in light of the specification. An applicant can refuse certain interpretations during patent prosecution, which narrows the scope more than would normally be interpreted. The CAFC reviews the construction of claims using a de novo standard.
SpeedTrack acknowledged that ‘360 patent applicants added hierarchical limitation during prosecution to overcome U.S. Patent No. 5,047,918 (“Schwartz”). The parties did not agree, however, as to the effect of its history on the scope of the claim; in particular, they dispute whether the claims cover predefined hierarchical relationships of field and value. The CAFC has determined that it is not.
In the prosecution’s remarks, the ‘360 patent applicants distinguished their invention from Schwartz, “a system which’ assigns user-definable attributes to. . . data files “, where each attribute has” a user-defined name “, such as” author “, and where” a user can assign a value to the file attribute “, such as” Smith[.]“Unlike Smith, the Applicant explained that his invention does not require the ‘two-part hierarchical relationship between fields or attributes, and the associated values for those fields or attributes’. Applicants have explained that the present invention covers a non-hierarchical filing system which allows “free” reference of category descriptions to files regardless of “rigid definitions of distinct fields containing values”. The CAFC noted that “[i]It is important to note that there is also a “hierarchical” relationship between values and fields. That is, each value MUST correspond to an associated field type.
Applicants differentiated their invention from Schwartz by proposing a hypothesis. In this case, if the word “Language” was presented as a field, the possible values could be “French” or “English”. From this structure, the value “French” MUST refer to the language, the domain to which it is associated. It cannot correspond to other characteristics of the terrain “such as type of food, culture, travel, etc.”. In the ‘360 patent, “French” could correspond to a multitude of these predefined characteristics without needing to belong to a rigid domain. The invention is described by the applicant as “fieldless”, instead the descriptions of the categories are applied directly to the dossier.
CAFC determines that prosecution history disclaimers may apply to litigation
“The prosecution disclaimer can arise both from amendments to the claim and from arguments,” the CAFC wrote, citing Technology. Accessories. Ltd. V. Huawei Tech. Co., 849 F.3d 1249, 1357 (Fed. Circ. 2017). The court agreed with the district court that the two had been presented in this case. The claimant definitely argued that Schwartz’s hierarchical relationship between fields and values was outside the scope of the amended claims. Therefore, the claims excluded the predefined field and value relationships, as explained by the district court. SpeedTrack disputed this interpretation. SpeedTrack stated that applicants simply indicated that the “category descriptions” of the ‘360 patent are not Schwartz’s domains and that the hierarchical limitation excluded predefined hierarchical relationships only between category descriptions. The CAFC was not persuaded by this argument because the applicant “has repeatedly pointed to predefined hierarchical field and value relationships as a difference between Schwartz and the ‘360 patent”.
Counterclaims have also pointed to SpeedTrack’s prior conflicting statements in other litigation. In a motion, SpeedTrack stated that:
This amendment further distinguished “category descriptions” from “fields” / “attributes”, which, as the inventors explained, have a “hierarchical” relationship between fields and their values.[.]
SpeedTrack disputed that the litigation statements “are not inventors’ claims of prosecution” and therefore did not demonstrate a criminal record disclaimer. Although the CAFC ultimately did not decide the case on this issue, they noted that the ultimate purpose of the criminal record disclaimer is to ensure that claims are not read from. one way to get an allowance and in a different way against accused offenders.
For the above reasons, the CAFC found that the interpretations of the District Court’s request were correct and therefore upheld the final non-infringement judgment.
Butch Laker is a 2L student at UNH Franklin Pierce Law School. He is also the Managing Director of the On-Campus Patent Law Forum. Prior to law school, he attended Purdue University, where he majored in physics. He hopes to combine his passions for science and law while pursuing a career in patent law.