Post-verdict claim construction by a district court altering the scope of a previous construction is not permissible

Wi-Lan, Inc. v. Apple, Inc., Nos. 2014-1427, 2014-1485 (Fed. Cir. Jan. 8, 2016)

The patentee claimed infringement of a wireless communication technique embodied in several modern wireless communication standards. The district court construed the claims. Having been instructed on the district court’s constructions, a jury found the patents valid but not infringed. The patentee moved for judgment as a matter of law (JMOL). The district court upheld the jury’s non-infringement verdict, but granted judgment as JMOL, finding no patent invalidity. The Federal Circuit reversed in part.  

Applying the Fifth Circuit’s de novo standard of review for JMOL, the Federal Circuit affirmed the district court’s denial of JMOL as to infringement because the jury’s verdict “was supported by substantial evidence.” The accused infringer presented sufficient evidence that its products did not infringe because the order in which they randomized and combined data differed from the claimed invention. The patentee argued, under the doctrine of equivalents, that infringement occurred regardless of the order of randomization and combination because the mathematical result was the same. The Federal Circuit noted that, while the patentee’s argument had merit, it was not enough to overcome the substantial evidence put forth by the accused infringer that supported the jury’s verdict.  

Thus, the district court granted JMOL and reversed the jury’s finding of invalidity, stating that a reasonable jury should have understood that the claimed invention necessarily used a “complex multiplier” because, although the court’s construction “does not specifically provide for a complex multiplier... throughout the trial, both sides took the position that the complex multiplier [was] necessarily included in the court’s construction.” On de novo review, the Federal Circuit found that the accused infringer had presented evidence that the court’s claim construction did not include a complex multiplier. The Federal Circuit reversed the granting of JMOL, finding that the district court’s post-verdict modification to include a complex multiplier went beyond “merely elaborating on a meaning inherent in the previous construction” and instead impermissibly “altered the scope of the original construction and undermined [the accused infringer’s] invalidity case post-verdict.”

A copy of the opinion can be found here