The US Court of Appeals for the Federal Circuit, finding errors in claim construction, overturned a jury verdict of infringement and affirmed a district court summary judgment determination that the claims at issue were not anticipated by the prior art. Wis. Alumni Research Found. v. Apple Inc., Case Nos. 17-2265, -2380 (Fed. Cir. Sept. 28, 2018) (Prost, CJ). Both issues involved hotly contested disputes as to the plain and ordinary meaning of key claim terms, and the Federal Circuit’s decision ultimately turned on how it defined those terms.
The Wisconsin Alumni Research Foundation (WARF) owns a patent directed to a data speculation decision circuit that uses predictions to help increase the efficiency of computer processing functions running in parallel. The claims require that a prediction be associated with a “particular” load instruction. WARF filed a patent infringement complaint against Apple asserting the patent.
Apple argued that it did not infringe the claims because the plain and ordinary meaning of “particular” requires that the claimed prediction be associated with a single load instruction, but each “prediction” in Apple’s accused product was tied to multiple load instructions. Apple’s expert offered opinions based on this meaning of “particular,” and WARF moved to exclude that testimony at trial. The district court denied WARF’s motion and agreed with Apple’s position about the meaning of “particular,” but declined to give the jury a specific instruction about the meaning of “particular.” The jury returned a verdict of infringement, and the district court denied Apple’s motion for judgment as a matter of law. WARF appealed.
On appeal, the Federal Circuit agreed with Apple’s position about the plain and ordinary meaning of the term “particular,” but did not provide any analysis or explanation of its reasoning, or cite to any evidence upon which it relied to reach that conclusion. Instead, the Court focused on the merits of the infringement issue under the construction the Court adopted. The Court considered and rejected several arguments by WARF that the accused products still infringed, even under Apple’s construction of “particular,” but the Court overturned the jury verdict of infringement.
The anticipation issue on appeal rested on another claim construction dispute, this time with respect to claim language including a “prediction” limitation. WARF contended that the claimed “prediction” must be dynamic and capable of receiving updates. Apple contended that the term was broad enough to include static predictions. The Federal Circuit adopted WARF’s definition because the patent as a whole “repeatedly and consistently” characterized a “prediction” as being capable of receiving updates, and because Apple could not point to any portion of the specification that described a static prediction. The Court found that construing “prediction” to encompass static predictions would expand the scope of the claims beyond what was supported by the specification. Finding that the prior art reference at issue did not disclose predictions that can receive updates, the Court affirmed the lower court’s grant of summary judgment that the claims were not anticipated.