Federal Circuit Summaries

Before Newman, Mayer, and Stoll. Appeal from the U.S. District Court for the Northern District of Ohio.

Summary: While there is not a “practicing the prior art” defense to literal infringement, a litigant is not precluded from arguing that if a claim term is broadly construed to read on the accused product, then the same broad construction will read on the prior art.

In February 2006, Communique sued Citrix for infringement of two patent claims directed to a computer program for accessing a personal computer from a remote computer via the Internet. The accused product was Citrix’s GoToMyPC product. Citrix filed an IPR against the asserted claims, and the district court proceedings were stayed. In 2013, the PTAB confirmed the patentability of the asserted claims over the prior art, and on appeal the Federal Circuit affirmed.

At trial, the jury found that the asserted claims were valid, but that Citrix’s GoToMyPC product did not infringe. Communique moved for a new trial, arguing that Citrix had improperly compared its accused GoToMyPC product to its prior art BuddyHelp product when presenting its non-infringement defense. The trial court denied Communique’s motion for new trial, and Communique appealed.

The Federal Circuit found that the trial court did not abuse its discretion in denying a new trial. The Federal Circuit agreed that Citrix had properly argued non-infringement by comparing the GoToMyPC to the limitations of the asserted claims. Citrix also presented an invalidity defense that focused on its prior art BuddyHelp product. Citrix argued that if Communique attempted to expand the scope of the asserted claims to include the accused GoToMyPC, then the claims would be invalid in light of the BuddyHelp product. While there is not a “practicing the prior art” defense to literal infringement, a litigant is not precluded from arguing that if a claim term is broadly interpreted to read on the accused product, then the same broad construction will read on the prior art. Further, the Federal Circuit stated it has “never suggested any comparison between an accused product and the prior art mandates a new trial,” and the jury was instructed not to compare the accused product to the prior art BuddyHelp product. The Federal Circuit also dismissed Communique’s argument that the trial court abused its discretion in allowing the IPR record to be used at trial but not allowing the jury to hear that Citrix requested the IPR.