By Thomas Long, J.D.
In two related appeals, the U.S. Court of Appeals for the Federal Circuit has affirmed judgments of the Eastern District of Texas, upholding two juries’ verdicts that Apple and Google did not infringe five patents owned by ContentGuard Holdings, related to digital rights management (DRM) technology. The appellate court held that the district court correctly construed a key claim term, on which the noninfringement judgments against Apple and Google were based. The Federal Circuit also rejected ContentGuard’s argument that the district court allowed Google, over ContentGuard’s objection, to mount an improper "practicing the prior art"/prosecution disclaimer defense (ContentGuard Holdings, Inc. v. Apple Inc., July 12, 2017, Wallach, E.; ContentGuard Holdings, Inc. v. Google, Inc., July 12, 2017, Wallach, E.).
ContentGuard asserted that several defendants, including Apple and Google, infringed U.S. Patent Nos. 6,963,859 ("the ’859 patent"), 7,823,072 ("the ’072 patent"), 8,370,956 ("the ’956 patent"), 8,393,007 ("the ’007 patent"), and 8,001,053 ("the ’053 patent"), all of which related to DRM for computers and other devices.
After a jury trial, the jury determined that Apple did not infringe the patents-in-suit but that Apple did not prove that the patents were invalid. The district court denied post-trial motions filed by both parties. ContentGuard appealed the district court’s construction of the claim term "usage rights" and denial of its motion for a new trial. Apple conditionally cross-appealed, arguing that the district court should have found the asserted patent claims to be invalid.
In the case against Google, a jury determined that Google did not infringe the patents-in-suit. Both ContentGuard and Google filed renewed motions for judgment as a matter of law (JMOL) or, in the alternative, motions for a new trial, on the grounds that the jury lacked sufficient evidentiary support for its findings. These motions were denied, and ContentGuard and Google cross-appealed.
Claim construction. ContentGuard argued that a new trial against Apple was warranted because the district court erroneously construed the claim limitation "usage rights." The district court construed the limitation as requiring that usage rights be "attached, or treated as attached" to the digital content. ContentGuard argued that it was error for the district court to conclude that DRM systems relying on usage rights that were "associated with" content fell outside the scope of the patents. The Federal Circuit disagreed. Although claim 1 of the ’859 patent and claim 1 of the ’072 patent specified that the usage right was "associated with" digital content in some instances, most references to the usage right in the asserted claims were not followed by either "attached to" or "associated with." Because the claim language was not dispositive as to the meaning of the usage right limitation, the court turned to the specification and found that it removed all doubt that the usage right must be "attached to" the digital content. The specification made it clear that maintaining the attachment between the usage right and the content was a key feature of the invention. The patents repeatedly characterized the usage right limitation in this way. Accordingly, the Federal Circuit affirmed the claim construction and the determination of noninfringement by Apple.
Prior art/prosecution disclaimer defense by Google. The claim construction holding in the Apple decision applied to the Google decision, the court said. The sole issue remaining in the Google appeal was whether a new trial was warranted because the district court allowed Google, over ContentGuard’s objection, to mount an improper "practicing the prior art"/prosecution disclaimer defense." Specifically, ContentGuard contended that the district court improperly allowed Google to argue that the jury should find noninfringement if it concluded that a prior art reference taught a system "like the Google system," which was not a proper defense to literal infringement. The district court found that Google had not presented a "practicing the prior art" defense but rather had distinguished its system from the systems described in the patents-in-suit. The Federal Circuit held that the district court did not abuse its discretion.
The "practicing the prior art" defense typically referred to the situation where an accused infringer compared the accused infringing behavior to the prior art in an attempt to prove that its conduct was noninfringing because the accused conduct was simply practicing the prior art. Federal Circuit precedent made it clear that this was not a defense to literal infringement. According to the appellate court, the district court properly and specifically instructed the jurors that when answering the question of infringement, they were only to compare the accused products to the asserted claims, and were not to compare the accused products to the prior art. ContentGuard did not identify any evidence indicating that the jury misunderstood this explicit instruction. Therefore, the district court did not abuse its discretion in finding that Google had not asserted a practicing the prior art defense, the appellate court concluded.
Attorneys: Dirk D. Thomas (McKool Smith PC) for ContentGuard Holdings, Inc. Constantine L. Trela, Jr. (Sidley Austin LLP) for Apple Inc. Robert Unikel (Arnold & Porter Kaye Scholer LLP) and Dan L. Bagatell (Perkins Coie LLP) for Google, Inc. and Motorola Mobility LLC. Terry Duane Garnett (Loeb & Loeb LLP) for HTC America, Inc. Scott F. Partridge (Baker Botts LLP) for Huawei Device USA, Inc. Neil P. Sirota (Baker Botts, LLP) for Samsung Electronics America, Inc.
Companies: ContentGuard Holdings, Inc.; Apple Inc.; Google, Inc.; Motorola Mobility LLC; HTC America, Inc.; Huawei Device USA, Inc.; Samsung Electronics America, Inc.
MainStory: TopStory Patent TechnologyInternet FedCirNews
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