Twisting the Nose of Wax

by Dennis Crouch

01 Communique Lab. v. Citrix Programs (Fed. Cir. 2018)

01Com’s U.S. Patent No. 6,928,479 is directed toward a computer software carried out personal interaction portal.  The patentee sued Citrix for infringement again in 2006.  Think about that — the lawsuit was submitted prior to eBay constrained injunctive reduction, prior to KSR designed it less complicated to invalidate a patent as noticeable, prior to Nautilus elevated the common for indefiniteness, prior to Alice and Mayo opened the doorway to eligibility invalidation, and prior to Congress created the routine of AIA trials.  The extensive hold off in this case should really also be a issue-of-the-past.  In this article, the district court stayed proceedings for seven a long time awaiting the result of an inter partes reexamination.  The reexam was eventually concluded in 2014 with a judgment confirming patentability of the challenged claims.  Despite the fact that unsuccessful prior to the PTAB, a 2016 jury sided with Citrix getting on infringement — getting none.  (Notice listed here that Citrix also unsuccessfully argued invalidity to the court and the jury).

On attraction, the Federal Circuit has affirmed — keeping that a new trial is not warranted.

01Com’s simple argument on attraction was that Citrix lawyers utilised their weak invalidity argument to sway the jury on non-infringement — essentially by arguing that what Citrix is executing now in its GoToMyPC merchandise is a close continuation to its prior-artwork BuddyHelp merchandise.

Practicing the Prior Artwork: The Federal Circuit has repeatedly ruled that there is no “practicing the prior art” defense to literal infringement. Despite the fact that that argument helps make reasonable perception, the court has ruled that it improperly conflates invalidity and infringement in a way that could permit defendants to skirt the demands of either doctrine.

In Tate . . . [w]e spelled out that “literal infringement is determined by construing the claims and evaluating them to the accused machine, not by evaluating the accused machine to the prior artwork.” We famous, moreover, that even though the problem of no matter if asserted claims examine on the prior artwork is suitable to the query of invalidity, “accused infringers are not free to flout the need of proving invalidity by obvious and convincing evidence by asserting a ‘practicing [the] prior art’ defense to literal infringement below the less stringent preponderance of
the evidence common.”

In this article, contrary to in Tate, the Federal Circuit ruled that the defendant experienced in fact introduced evidence of non-infringement (evaluating the accused machine with the patent claims) as perfectly as invalidity (evaluating the prior artwork with the patent claims).

Resulting in Prejudice or Improper Bias

The patentee listed here also argued that it was incorrect for a defendant to existing testimony evaluating the Citrix’s prior artwork version with its now-accused version because that evidence would cause undue prejudice in the eyes of the jury without having in fact assisting verify any stage of regulation or suitable point.

On attraction, though, the Federal Circuit sided with the accused infringer by initially keeping that the entire-triangle comparison could be helpful to guarantee that assert terms are dealt with in the very same way across all facets of the litigation.  For this stage, the court cited to its Amazon.com restatement of Justice Bradley’s 1886 “nose of wax” quote:

“A patent could not, like a nose of wax, be twisted one way to stay clear of anticipation and an additional to come across infringement.”

Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (citations and internal quotation marks omitted).  My interpretation of this is that the jury is greater off listening to the case as a entire even if it must answer distinctive questions of invalidity and infringement.   Here, in unique, the district court precisely encouraged the jury as to the regulation – noting that “[t]he dedication of literal infringement depends on the presence of the assert elements in the accused merchandise, not on similarities amongst the accused merchandise and the prior artwork.”  On attraction, the Federal Circuit found these directions simply enough to conquer any argument for a new trial.

The patentee also complained that the district court prohibited it from telling the jury that Citrix (the defendant listed here) experienced been the one who experienced asked for the reexamination.  On attraction, the Federal Circuit sided with the trial court – getting no mistake and that the court’s judgment listed here possible aided in steering clear of undue prejudice in opposition to the defendant.

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I’ll be aware listed here as an apart that the nose of wax quote is apt after yet again in the context of inter partes evaluate proceedings where by the challenger asks for the broadest fair interpretation of claims during the IPR but then can substantially narrow its method when again in-court discussing infringement.

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