Federal Circuit No. 2015-1246
Claim construction ruling reversed where statements made during prosecution did not rise to disclaimer
The Federal Circuit issued an Opinion in Avid Technology, Inc. v. Harmonic, Inc. in which the judgment of the District Court was vacated, and the case was remanded for a new trial on infringement. The main issue was the District Court's reliance on alleged disavowing statements made during prosecution, which the Federal Circuit found improper. The Federal Circuit thus remanded for a new trial based on a different claim construction.
Avid asserted two patents against Harmonic, U.S. Patent No. 6,760,808 and No. 7,487,309. Both patents concern data storage systems that allow users to store and retrieve large files such as movies. In the system described by Avid's patents, when a client wishes to store ("write") a file, such as a movie, the system splits the file into "segments." The segments are distributed among various storage units and stored in duplicate at different units (one primary unit and one backup). When a client wishes to retrieve ("read") a file, the client determines which storage units have the needed segments, and sends a request for a given segment to a storage unit, which transmits it to the client.
The District Court gave the jury a claim construction of the "independent storage unit" claim element, basing that construction on statements Avid made in the prosecution history. The jury rejected Harmonic's validity challenge to Avid's patents, but found that Harmonic did not infringe. Avid challenged the non-infringement judgment by post-trial motions and argued that the District Court's claim construction regarding the "independent storage unit" element was incorrect and that, under a correct claim construction, that claim element is clearly met. Avid appealed the non-infringement judgment.
The District Court ruled that, during prosecution, Avid had disclaimed a system in which the central controller tells the client which storage unit the client should deal with during read and write operations. In particular, The District Court relied on the following passage from an Avid submission during the prosecution history:
[T]he claimed system, by virtue of the independent storage units, avoids using a central controller to access data. In particular, storage units "receiv[e] . . . request[s] from one of the client systems for a segment of a file." Clients do not issue requests to a central controller that in turn identifies storage units that store the data and issues requests to storage units.
The Federal Circuit found that the District Court misread this passage. In the Federal Circuit's opinion, the first portion does not itself say what exactly "access[ing] data" entails; it is the second portion that identifies what Avid means. What that portion says, by its terms, is that a central controller is excluded if it performs both of two functions: it "identifies storage units that store the data and issues requests to storage units." The language on its face does not exclude a central controller that performs only one or the other of the two stated functions -- which would have been the meaning if the phrase had used "or" rather than "and." In any event, it does not do so clearly, as would be required to find a disclaimer of a central controller that merely identifies the storage units.
The Federal Circuit noted that "for prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable." The Federal Circuit found no clear and unmistakable disclaimer of central controllers that provide storage-unit location information for retrieving segments. Thus, the Federal Circuit concluded that the jury instruction limiting "independent storage units" based on the alleged disclaimer was incorrect.
Further, while the Federal Circuit remanded for a new trial on infringement, it instructed that Harmonic could not argue that its products lacked the “independent storage unit” element. The Federal Circuit reached this conclusion because Harmonic did not present any argument as to how Harmonic’s products would not infringe under a proper claim construction of the “independent storage unit” term