By Brian Craig, J.D.
In a lawsuit involving allegations that Citrix’s GoToMyPC remote computer connection service infringed a patent, the U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the federal district court in Ohio denying a new trial after a jury cleared Citrix of liability. The appeals court rejected the argument that Citrix improperly used the "practicing the prior art" defense with its own prior art product and recognized that there was no "practicing the prior art defense" to literal infringement. The court further held that the jury instructions were more than adequate to remedy any alleged prejudice (01 Communique Laboratory, Inc. v. Citrix Systems, Inc., April 26, 2018, Mayer, H.).
Plaintiff 01 Communique Laboratory, Inc. ("Communique") owned U.S. Patent No. 6,928,479 (the ’479 patent), entitled "System Computer Product and Method for Providing a Private Communication Portal." Communique brought suit against Citrix Systems, Inc. and Citrix OnLine, LLC (collectively "Citrix"), alleging that Citrix’s GoToMyPC remote computer connection service infringed the ’479 patent. After a jury trial, the jury concluded that Citrix’s GoToMyPC product did not infringe the patent. The district court denied Communique’s motion for a new trial. Communique appealed to the Federal Circuit. On appeal, Communique asserted that it was entitled to a new trial because Citrix resorted to "a well-known defendant’s trick," known as the "practicing the prior art defense." Citrix’s BuddyHelp product was listed in the prior art for the ’479 patent.
Invalidity defense. The court observed that Citrix’s infringement defense was firmly rooted in a limitation-by-limitation comparison between the asserted claims and the GoToMyPC product. Citrix also presented an alternative invalidity defense that focused on its own prior art called the BuddyHelp product. The Federal Circuit held that there was no "practicing the prior art" defense to literal infringement. With the "practicing the prior art" defense, an accused infringer forsakes any comparison between the asserted claims and the accused product, relying instead upon purported similarities between the accused product and the prior art.
The court held that an accused infringer cannot defeat a claim of literal infringement or establish invalidity merely by pointing to similarities between an accused product and the prior art. This does not, however, preclude a party from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art. Citrix’s infringement defense was firmly rooted in a limitation by limitation comparison between the asserted claims and the GoToMyPC product. The argument by Citrix did not rest on an improper "practicing the prior art" defense, but instead correctly recognized that claim terms must be construed the same way for both invalidity and infringement. Therefore, the court found that the district court did not err on the invalidity defense.
Prejudice; jury instructions. The appeals court also rejected Communique’s assertion that the comparisons Citrix made between GoToMyPC and BuddyHelp were "devastatingly prejudicial to the integrity of the trial." The Federal Circuit has never suggested that any comparison between an accused product and the prior art mandated a new trial. Although prejudice that affected the fairness of a proceeding could be grounds for a new trial, when such prejudice was cured by instructions given to the jury by the court, the motion for a new trial should be denied. In this case, the district court’s careful jury instructions were more than adequate to remedy any alleged prejudice or confusion resulting from comparisons between GoToMyPC and BuddyHelp, in the Federal Circuit’s view. The jury instructions made it abundantly clear that in assessing infringement, the jury was not to compare GoToMyPC with BuddyHelp. The record contained nothing to suggest that the jury misunderstood the trial court’s explicit instructions. As a result, the Federal Circuit found no prejudice warranting a new trial.
The case is No. 2017-1869.
Attorneys: Thomas Harry Shunk (Baker & Hostetler LLP) for 01 Communique Laboratory, Inc. Mark Christopher Fleming (Wilmer Cutler Pickering Hale and Dorr LLP) for Citrix Systems, Inc. and Citrix Online, LLC.
Companies: 01 Communique Laboratory, Inc.; Citrix Systems, Inc.; Citrix Online, LLC
MainStory: TopStory Patent TechnologyInternet FedCirNews
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