Federal Circuit Summary
Before Prost, Bryson, and O’Malley. Appeal from the United States District Court for the Western District of Wisconsin.
Summary: (1) To uphold a jury verdict of infringement, evidence must support an inference that claim limitations are at least sometimes met by the accused product; and (2) when a patent repeatedly and consistently characterizes a claim term in a particular way, the term should be construed consistent with that characterization.
Wisconsin Alumni Research Foundation (“WARF”) sued Apple alleging that Apple’s processors infringed several claims of WARF’s patent. The claims are directed to a processor that executes instructions out-of-order to gain performance benefits, but must also detect and attempt to mitigate errors caused by the out-of-order execution. The district court granted summary judgment to WARF on the question of invalidity, ruling that the patent was not invalid, and a jury found infringement and awarded damages to WARF. Apple appealed both decisions to the Federal Circuit. The Federal Circuit reversed the jury’s verdict of infringement, but affirmed the district court’s grant of summary judgment.
The claims of WARF’s patent require that the processor make a prediction as to whether an error is likely that is “associated with the particular . . . instruction” in question. Apple’s processor makes predictions by using an algorithm to create an identifier for each instruction in the program, but the algorithm allows for different instructions to have the same identifier. A prediction is then made for each identifier. The Federal Circuit agreed with the district court that the term “particular” should be given its plain and ordinary meaning, requiring a prediction to be associated with a single load instruction. Applying that meaning, the Federal Circuit held that no reasonable juror could have found that Apple’s system makes a prediction “associated with the particular . . . instruction,” because each prediction is likely to be associated with multiple instructions. The Federal Circuit rejected as insufficient WARF’s “sparse” evidence that Apple’s load tags are sometimes associated with only a single load instruction. Thus, the Federal Circuit reversed the jury’s verdict of infringement.
Apple challenged the validity of WARF’s patent using a prior art reference that disclosed making “static” predictions, which do not update over time as the processor continues to operate. While the claims of the patent did not explicitly recite that the predictions must be “dynamic,” or able to update over time, WARF argued that the term “prediction” should be construed to include only dynamic predictions. The Federal Circuit agreed, reasoning that the specification only discussed examples of dynamic prediction, and the broader construction proposed by Apple would improperly expand the scope of the claims beyond anything described in the specification. Thus, the Federal Circuit upheld the district court’s grant of summary judgment that the claims were not invalid.