Digest of Vasudevan Software, Inc. v. Microstrategy, Inc., No. 2014-1094 (Fed. Cir. Apr. 3, 2015) (precedential). On appeal from N.D. Cal. Before Chen, Linn, and Hughes.
Procedural Posture: Patentee Vasudevan Software, Inc. appealed the District Court’s claim construction order and the District Court’s grant of summary judgment that the asserted claims of U.S. Pat. Nos. 6,877,006; 7,167,864; 7,720,861; and 8,082,268 were invalid for lack of enablement and written description. CAFC affirmed the claim construction and reversed the grants of summary judgment.
- Claim Construction: The CAFC agreed with the District Court in construing the term “disparate databases” as “databases having an absence of compatible keys or record identifier columns (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.” The CAFC first found that because the specification left uncertain the meaning of the term, the prosecution history was central to the proper claim construction. The CAFC then agreed with the District Court’s finding that the applicant’s use of the phrase “refers to” in the prosecution history operated as a clear and unmistakable definition of “disparate databases.” Taken in its entirety, the prosecution history was clear that the applicant was relying on the provided definition of “disparate databases” in distinguishing the prior art. The CAFC also agreed with the District Court that the term “incompatible databases of different types” was subject to the same construction as “disparate databases.”
- Section 112:
- Written Description: The CAFC found that, drawing all reasonable inferences in favor of the patentee, and in view of the specification and the testimony of patentee’s expert, there were genuine issues of material fact regarding whether the specification showed possession of how to achieve the functionality of accessing disparate databases. The CAFC reversed the District Court’s grant of summary judgment.
- Enablement: The CAFC found that there were genuine issues of material fact regarding whether the effort it took the inventor to reduce the invention to practice showed a lack of enablement and whether the specification provided a reasonable amount of guidance. The CAFC reversed the District Court’s grant of summary judgment.