Claim terms narrowed by prosecution record

Andrew Melick | April 23, 2015

Vasudevan Software, Inc., v. MicroStrategy, Inc.

April 3, 2015

Before: Chen, Linn and Hughes. Opinion by Linn.

Summary:

The claims of the patents at issue recite a system that accesses “disparate … databases.” The CAFC stated that while this term means “incompatible,” the plain meaning of the term and the specification do not explain how extensive that incompatibility must be. The district court analyzed statements in the prosecution history regarding this term and the arguments made for distinguishing the prior art to construe the term. The CAFC affirmed the district court’s claim construction. The CAFC also reversed the district court’s summary judgment of invalidity regarding written description and enablement, and remanded to the district court.

Details:

Vasudevan Software, Inc. (VSI) sued MicroStrategy, Inc. (“MicroStrategy”) and TIBCO Software, Inc. (“TIBCO”) in separate suits alleging infringement of various claims of several patents to an online analytical processing (OLAP) cube capable of collecting and processing live data from multiple incompatible databases. The cases were not consolidated, but the claim construction issues were considered together. VSI appealed a claim construction order in which VSI stipulated non-infringement by MicroStrategy and TIBCO. VSI also appealed the district court’s grant of summary judgment of invalidity for lack of enablement and written description. This review only discusses the claim construction issue.

The patents owned by VSI at issue in this case are U.S. Patent Nos. 6,877,006 (“the ‘066 patent”), 7,167,864 (“the ‘864 patent”), 7,720,861 (“the ‘861 patent”), and 8,082,268 (“the ‘268 patent”). The claims of three patents recite a system that accesses a plurality of “disparate digital databases,” and the claims of the fourth patent recite “incompatible databases of different types.”

The CAFC stated the rule for claim construction citing Phillips: “Claim terms are generally given their plain and ordinary meanings to one of ordinary skill in the art when read in the context of the specification and prosecution history.”

VSI argued that the ordinary meaning of “disparate databases” is “incompatible databases having different schemas.” VSI relied on expert testimony stating that incompatible databases are simply those with different schemas. VSI also pointed to a stipulation agreement in a different case against IBM and Oracle in which it was agreed that “disparate databases” means “incompatible databases having different schemas,” and VSI cited defendants’ own internal marketing materials for supporting their construction. VSI also argued that there are no statements in the prosecution history that rise to a clear disavowal or definition to warrant a narrower construction of the term.

The CAFC stated that the plain and ordinary meaning of “disparate databases” may be “incompatible databases having different schemas,” but the plain and ordinary meaning does not resolve the question of how “disparate” or “incompatible” the databases must be. The specification refers to incompatible databases being of different types and having different data but also does not explain how “disparate” or “incompatible” the databases must be. The CAFC stated that VSI’s expert conceded that the term depends on the context and does not have a consistent use. Regarding the stipulation with IBM and Oracle, the CAFC stated that this is of little relevance or probative value since IBM and Oracle’s accused products may have functioned differently such that the precise scope of the term was immaterial and because defendants of the current case were not a party to the stipulation, and thus, are not bound to it. Regarding defendants’ marketing materials, the CAFC also stated that this was also relatively immaterial because language directed to customers can mean something quite different to persons skilled in the art.

Next, the CAFC analyzed the prosecution history. The key statement made by the Applicant in describing the invention in response to a rejection was as follows:

The disparate nature of the above databases refers to an absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases.

An example of such a common key value is a social security number that would enable linking or relational databases “join operations” on an individual’s personnel data with his or her insurance plan. In embodiments of Applicant’s invention, such a common key value is not necessary. This disparate nature extends, for example, to the type of database (e.g. Oracle, IBM DB2, Microsoft SQL Server or Object Databases) and the structure, schema, and nature of the databases (i.e. type of data fields in various tables of the constituent databases).

This was held by the district court as a “clear” and “unmistakable” definition of “disparate databases.” In a Clarification Order by the district court, this statement was held to limit “disparate databases” to ones that have an absence of compatible keys; and an absence of record ID columns of similar value; and an absence of record ID columns of similar format in the schemas.

VSI argued that this is merely a list of examples of “disparate databases” and not a definition and that they did not rely on this statement to distinguish from the prior art. VSI also argued that the district court misconstrued the statement and that the statement means that two databases were disparate if they had an absence of compatible keys; or an absence of record ID columns of similar value; or an absence of record ID columns of similar format. And VSI argued that it is not “clear” that the applicant intended to define “disparate databases” as the district court did.

The CAFC stated that the use of the phrase “refers to” generally indicates an intention to define a term. In this case, applicants provided only one definition in the prosecution history and this definition is not in conflict with the plain and ordinary meaning. CAFC also stated that this statement was relied on for distinguishing the prior art Jones reference which further supports that it was definitional. In response to a rejection, Applicant amended the claims to recite “disparate databases,” and in the remarks, Applicant provided the statement above and distinguished the Jones reference based on the reference’s reliance on common keys. Thus, the CAFC stated that the district court properly found that the statement in the prosecution history was definitional.

Regarding VSI’s argument that the district court misconstrued the statement, the CAFC stated that the statement that “disparate databases” refers to an absence of compatible keys or record ID columns of similar value or format can be interpreted in two ways: (1) that the absence of any one of these characteristics makes databases disparate (“disjunctive” interpretation) or (2) that only the absence of all of these characteristics makes them disparate (“conjunctive” interpretation).

The CAFC stated that the “conjunctive” interpretation is required by the manner in which the applicant distinguished the Jones reference. Applicant stated that a common key value is not necessary in its invention, and that databases accessed by Jones relied on common keys without commenting on whether Jones disclosed databases lacking record ID columns of similar value or format. The CAFC concluded that “this indicates that the presence of common keys, alone, sufficed to make the databases in Jones distinguishable from the claimed “disparate databases.” The CAFC stated that this is only consistent with the “conjunctive” interpretation because with the “disjunctive” interpretation the presence of common keys alone would not necessarily preclude two databases from being disparate.

The CAFC also stated that the “conjunctive” interpretation is consistent with proper grammar because the phrase “not A, B, or C” means “not A, not B, and not C.” Thus, the CAFC agreed with the district court that “disparate databases” as described in the prosecution history as “an absence of [A] compatible keys or [B] record identifier (ID) columns of similar value or [C] format” is construed as “[A] an absence of compatible keys; and [B] an absence of record ID columns of similar value; and [C] an absence of record ID columns of similar format.

Comments:

During prosecution of a patent application, Applicants should be careful about statements made about the invention, claim terms and prior art distinctions. The phrase “refers to” with regard to a claim term can be taken as an indication of an intent to define the term instead of merely an example of the term. This case is a reminder that Applicants should try to minimize remarks on the prosecution record because statements in the record can be used to narrow claim terms, and the court may interpret statements in unintended ways. It does not appear “clear” that Applicants in this case intended the noted statements as the definition of the claim term as opposed to examples. And it really does not seem “clear” that Applicants intended the definition as adopted by the court.

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