Intrinsic evidence supported pre-Phillips claim construction; finding of noninfringement affirmedMay 15, 2008

In a decision yesterday, the Federal Circuit affirmed a district court's finding of noninfringement. The only disputed issue was one of claim construction. Although the district court issued its claim construction ruling before the Federal Circuit's Phillips decision and relied exclusively on a definition from a technical dictionary for its construction of the relevant term, the Federal Circuit still upheld the finding of noninfringement. The Federal Circuit, applying a full Phillips claim construction analysis, held the district court's construction was correct, and as a result, the finding of noninfringement was proper. More detail of Mangosoft, Inc. v. Oracle Corp., after the jump. Mangosoft owns a patent directed to computer networking systems and methods to provide memory systems and services. The patent describes a "virtual memory space" where storage capacity of individual computers are pulled together on the network, and emphasizes the decentralized location of the storage. Mangosoft sued Oracle for infringement. In turn, Oracle counterclaimed seeking findings of invalidity, unenforceability, and noninfringement. The district court eventually held a Markman hearing to construe several claims terms at issue. The only claim brought on appeal by Mangosoft was the term "local."The district court construed "local" in the context of computer devices to mean a device "directly attached to a single computer's processor by, for example, the computer's bus." In construing the term, the court distinguished it from terms such as "shared," "networked," and "remote" in relation to memory devices. Mangosoft's sought a construction that would include any device "linked" to a computer (directly or indirectly). In coming to this construction, the district court relied on the definition of the term from a technical dictionary. After the district court construed the claims, Mangosoft amended its list of asserted claims and both parties filed motions for summary judgment. The district court granted Oracle's motion for summary judgment of noninfringement, leaving the other issues unresolved. After Oracle's counterclaims were dismissed without prejudice, Mangosoft appealed.On appeal, Mangosoft argued the district court failed to properly construe the term "local" because it derived its construction of the term exclusively from a technical dictionary, contrary to the teachings of Phillips. The Federal Circuit was unpersuaded, and affirmed the district court's construction. The Federal Circuit explicitly supported the district court's reference to a technical dictionary in light of Phillips by recognizing that claim construction can be based on a source such as a technical dictionary to the extent the "ultimate construction given to the claims in question is grounded in the intrinsic evidence and not based upon definitions considered in the abstract." The court held the district court's construction of "local" was supported by the intrinsic record of the patent. For example, claim 1 reads "a plurality of computers, each of said plurality of computers . . . including . . . a local persistent memory device coupled to said computer." The claim language itself therefore did not comport with Mangosoft's broad construction of the term that would not require direct connection. The claim construction was also supported by the specification, as the summary of the invention described memory devices that included a plurality of local persistent memory devices. The specification, figures and descriptions also represented "local" devices as being directly attached to individual computers, contrasting devices with network memory devices that are inherently remote. The Federal Circuit also found support for the district court's claim construction in the prosecution history of the patent. In amending its claims during prosecution to add, among other limitations, the "local" limitation, Mangosoft emphasized to the examiner that the addition of the term "local" was meant to connote association with an individual computer on the network. Specifically, Mangosoft argued to the examiner that the prior art did not "teach[] or suggest[] local . . . persistent memory devices (e.g., hard disks associated with each networked computer), having portions of a shared addressable memory space mapped thereon." The examiner allowed the claims in response to these amendments and arguments. Finally, the Federal Circuit emphasized they were reviewing the district court's final judgment in its claim construction of the word "local" and not the methodology used by the district court. Because the district court reached the correct result, the Federal Circuit affirmed its claim construction and the concomitant finding of noninfringement.To read the full decision in Mangosoft, Inc. v. Oracle Corp., click here.

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