Case: MySpace, Inc. v. GraphOn Corp., No. 2011-1149 (Fed. Cir. Mar. 2, 2012).
The district court granted summary judgment in favor of MySpace, Craigslist, and Fox Audience Network on the ground that all of GraphOn’s patent claims were invalid as either anticipated or obvious. While the patents claimed a method and apparatus for creating, modifying, and searching for data on a computer network, a system for organizing such data was at the core of this declaratory judgment action. One system, called the file system, stored data hierarchically; the other system, called a relational system, stored data relationally in compartments.
Claim Construction and Invalidity. The issue before the Federal Circuit boiled down to whether the district court erred in its construction of the patent claim term “database.” If, as the district court had found, “database” is construed broadly to include both file systems and relational systems, the prior art would invalidate GraphOn’s claims, as either anticipated under section 102 or obvious under section 103. If construed narrowly to cover only relational systems, a genuine issue of disputed fact would likely exist and summary judgment would be inappropriate. The Federal Circuit relied heavily on language in the written description, and inferences drawn therefrom, to conclude that nothing supports a conclusion that the claim term “database” should be limited to relational systems. With the claim construction issue resolved, the rest of the pieces fell into place, and the Federal Circuit affirmed the district court’s grant of summary judgment.
In resolving the claim construction issue, the Federal Circuit took a moment to discuss the suggestion that claim construction determinations “depend on the judges’ predilection for one of two approaches.” Slip Opinion at 8 (citation omitted). Under the “what was invented” approach, the court looks at what the patentee contributed to the art for guidance in construing claims. Under the “what exactly was claimed” approach, the court focuses on the claims and construes them by applying rules of construction.
The Federal Circuit sought to clarify this perceived dichotomy by declining to view these two approaches as mutually exclusive. Rather, because the approaches are complementary, both “what was invented” and “what exactly was claimed” are limiting factors in construing claims. “What was invented” determinations require looking “at the entire patent, with particular attention to the specification (the written description of the invention and the several claims made).” Slip Opinion at 8. “What exactly was claimed” determinations require focusing “on the precise words of the particular claim[(s)] . . . at issue; the written description and preferred embodiments are aids in understanding those words.” Slip Opinion at 8-9.
Patentable Subject Matter. The Federal Circuit seemed eager to address the section 101 patentable subject matter issue raised by the dissent. To be clear, the parties never raised and the district court never decided whether GraphOn’s patents claimed an unpatentable “abstract idea.” Rather, the case was decided on section 102 and section 103 grounds. However, because the dissent argued section 101 is an “antecedent question” and thus should be resolved before reaching sections 102 or 103, the court launched into a discussion of section 101.
According to the court, the problem with deciding whether a patent claims an unpatentable “abstract idea” is that formulating a rule that describes such an idea “in terms that are something less than abstract” is terribly difficult. Slip Opinion at 14 (footnote omitted). Indeed, the court acknowledged that “still we continue to disagree vigorously over what is or is not patentable subject matter.” Slip Opinion at 15 (citations omitted). The court believed that the better approach is to avoid the “murky morass that is [section] 101 jurisprudence” by following the trail blazed by Congress because it provides “a clear path for courts in deciding the question of patent validity.” Slip Opinion at 17, 15-16.
The “clear path” starts at section 282, which creates a presumption of validity for issued patents and lists sections 102 and 103, among others, as defenses available in any action involving the validity of patents. The court believes that both section 282 and a court’s “inherent power to control the processes of litigation” allow courts, as a matter of case management, to “insist that litigants initially address patent validity issues.” Slip Opinion at 17 (citation omitted). Such practices, according to the court, would conserve judicial resources and provide more certainty for patentees.
Dissent. The dissent appears to rely on the widespread use of the technology claimed in GraphOn’s patents to argue that the patents’ claims are “abstract.” In fact, according to the dissent, the patents are invalid under section 101 because they are “too useful and too widely applied to possibly form the basis of any patentable invention.” Slip Opinion at 4 (Mayer, J., dissenting). Given the “staggering” potential scope of GraphOn’s patents, allowing GraphOn to assert its patent rights “would preempt use of one of the ‘basic tools’ of modern social and commercial interaction.” Slip Opinion at 3, 5 (Mayer, J., dissenting).
Because “[a] robust application of section 101 is required to ensure that the patent laws comport with their constitutionally-defined objective,” slip opinion at 13 (Mayer, J., dissenting), and because the section 101 analysis cannot be “subsumed by the section 102 novelty and section 103 obviousness inquiries,” slip opinion at 10 (Mayer, J., dissenting), the dissent argued that courts must decide whether a patent claims an unpatentable “abstract idea” before proceeding to “subordinate issues” such as obviousness and anticipation. Slip Opinion at 2 (Mayer, J., dissenting).
Summary. This case is interesting for two reasons. First, it tries to reconcile two approaches to claim construction. Second, it discusses patentable subject matter in considerable depth even though neither the parties nor the district court raised or discussed section 101. Having listened to the oral argument recordings fromMayo Collaborative Services v. Prometheus Laboratories, Inc., I know that the Supreme Court also struggled with a related issue: whether the issue of patentable subject matter should be an isolated analysis, meaning courts should resist the urge to “peak” into other sections such as 102 and 103 in resolving the 101 issue. It will be interesting to see how that decision, once decided, will relate to this one.