IP News

The two patents-in-suit, U.S. Patent 6,151,604 and U.S. Patent 6,163,775, are directed to a new logical model for computer databases, called a “self-referential” model. A logical model is a model for computer data that uses tables to explain how various elements of information relate to each other. The “self-referential” model can be understood best by contrasting it with the conventional “relational” model.

“Relational” models create multiple data tables, one table for each entity type that is modeled, for example, document, person, and company. For a specific document, the document table may refer to a person in the person table, the person table then referring to a company in the company table for that specific person, thereby relating the information between tables. Contrary to relational models, the patented “self-referential” model creates only a single data table for all the information. The self-referential table defines columns in the table using rows in the same table, thereby referring to itself. The benefits of this model design are faster searching of data, more effective storage of data, and more flexibility in configuring the database.

All Claims At Issue Are Patent Eligible Under '101

The Federal Circuit began its '101 analysis, as it routinely does, by citing case law from Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). Under Alice, the first step of the two-part inquiry is determining whether the claims are directed to a patent ineligible concept, such as a law of nature or abstract idea. Here, the court emphasized that the “directed to” inquiry is based on whether the character of the claims “as a whole is directed to excluded subject matter.” Slip Op. at 10, citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The Federal Circuit noted that not all improvements in computer-related technology or software are inherently abstract, and asked “whether the focus of the claims was on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool.” Slip Op. at 11. The answer to that question, the court held, was that the claims were focused on an improvement of the computer itself, and therefore were not an abstract idea within the meaning of Alice. Accordingly, the court never had to reach step two of the Alice analysis.

The district court concluded that the claims were directed to “the concept of organizing information using tabular formats,” which amounted to an abstract idea. Slip Op. at 14. However, the Federal Circuit found this, and Microsoft's similar argument, oversimplified and “untethered from the claims.” Slip Op. at 14. The Federal Circuit reasoned that the claims were directed to an improvement of existing computer technology and not an abstract idea because they were not simply directed to any form of storing tabular data, but specifically to a self-referential table for a computer database. Slip Op. at 14. The specification's teachings that the self-referential table functioned differently from conventional tables, and achieved increased flexibility, faster search times and had smaller memory requirements, weighed in favor of the Federal Circuit's conclusion.'Notably, the Federal Circuit stated that the invention's 'ability to run on a general-purpose computer,' and the lack of reference to physical components, do not doom the claims, since advancement in computer technology is often defined by logical structures and processes, and not physical features. Slip Op. at 17-18.'

In sum, the Federal Circuit found that the claims were not directed to an abstract idea because they were directed at a specific implementation of a solution to a problem in the software arts, rather than a fundamental economic practice or math algorithm with general computer components added post-hoc. Slip Op. at 18.

Claims 31 and 32 of Both Patents Are Not Anticipated Under '102

The district court found the claims anticipated by Microsoft's Excel 5.0 software, specifically the pivot table feature of the program. A pivot table is a table based off another table containing raw data, wherein if a row is added to the raw data table, a corresponding column is automatically created in the pivot table. This characteristic is similar to that of the patented self-referential table. However, the Federal Circuit reasoned that the pivot table feature is fundamentally not self-referential since the row of raw data is in one table and the corresponding column is in a separate table. The pivot table feature requires two tables instead of one, and the fact that both tables can be located on a single Excel spreadsheet makes no difference. Slip Op. at 23. Therefore, because the pivot table feature of Excel 5.0 lacked the “self-referencing” feature, the Federal Circuit found that Excel 5.0 does not anticipate the claims.

Microsoft's ADO.NET Product Does Not Infringe

Claim 17 of the '604 patent recites a “means for indexing data stored in said table,” which the district court found ADO.NET did not perform. Slip Op. at 25. Enfish argued on appeal that: 1) the district court erred in its claim construction of “means for indexing”; and 2) the district court improperly applied the construction to the ADO.NET product.

The “means for indexing” was interpreted by the district court to be the function of “indexing data stored in the logical table,” and accepted Enfish's proposed three-step algorithm as the structure of the element. However, on appeal, Enfish argued that the district court improperly required that all three steps be present, and that some steps were actually optional. The Federal Circuit reviewed the areas of the specification proffered by Enfish and concluded that the district court did not err in using Enfish's own three-step algorithm.

Enfish argued on appeal that the district court erred in finding that ADO.NET does not perform steps two and three of the algorithm. Step two required storing extracted phrases or words in an index. It was uncontested that ADO.NET does not store this information in an index, but instead stored references to the information's locations. Step three required that the logical table have pointers to entries in the index, and pointers in the index to the logical table. Again it was uncontested that ADO.NET does not have pointers from a logical table to an index, but instead had pointers from the logical table to other objects, then through a chain of pointers eventually to the index. Therefore, the Federal Circuit found that ADO.NET did not use identical or equivalent structure for the 'means for indexing' as disclosed in the patent.

Federal Circuit: In Claim Construction Analysis, Plain Term Meanings and Presumption of Claim Differentiation Get Outweighed By Intrinsic Evidence and Prosecution History

On May 12, 2016, a Federal Circuit panel of Circuit Judges O'Malley, Plager, and Wallach issued a unanimous opinion, authored by Judge Plager, in Howmedica Osteonics Corp. and Stryker Ireland Ltd. v. Zimmer Inc., Case Nos. 2015-1232, 2015-1234, and 2015-1239. The panel affirmed the district court's grant of summary judgment of non-infringement.

The Stryker Patent

The patent-in-suit, U.S. Patent 6,475,243, is directed to a socket assembly for prosthetic hip implants. More specifically, the patent relates to acetabular cup assemblies implanted in the patient's pelvic bone, which secures a bearing member for reception of the femoral head of a prosthetic hip joint. The mechanism by which the bearing is secured to the cup depends on the type of bearing chosen by the physician. The bearing may be secured by a rib-recess securement or by complementary tapered surfaces. Additionally, a metallic sleeve member between the cup and the bearing may be involved in some instances. Regardless of the presence of a sleeve, the patented shell contains both a recess and a taper to accommodate either type of securing mechanism. Slip Op. at 4.

The District Court's 'Essentially Midway' Construction Was Affirmed

The district court's Markman opinion construed the claims to require that 'the recess securement is essentially midway along the taper such that the effectiveness of each is not compromised,' and that 'the internal taper of the shell mates with the external taper of a metallic securing member (i.e., sleeve) secured to and separate from the bearing member.' Slip Op. at 9. On appeal, Stryker contested the 'essentially midway' and 'sleeve' constructions by the district court. However, the Federal Circuit discussed only the 'essentially midway' construction, as it was dispositive. Slip Op. 12.

Each claim specified that the recess and taper be ”juxtaposed' or in 'juxtaposition' with one another and 'placed at relative locations such that the effectiveness' of each is 'maintained while in the presence of the other.” Slip Op. at 12. The claims did not describe how these goals are achieved, and the written description contained only two relevant passages. Both passages, as well as the visual appearance of the patent's figures, placed the recess 'essentially midway' along the taper. Slip Op. at 13.

Stryker urged the Federal Circuit to focus on the plain language of the claims, and dictionary definitions for 'juxtaposed' and 'juxtaposition.' However, the Federal Circuit stated that focusing on plain ordinary meanings of just these claim terms ignored other elements of the claim, and failed to identify just where the recess and taper were located relative to each other, thereby failing to resolve the dispute. Therefore, construing the claim terms in light of the written description was the proper claim construction technique. Slip Op. 13-14.

Stryker argued that the district court's construction was improper for two additional reasons. First, Stryker argued that 'essentially midway' concerned only preferred embodiments, and that the claims should not be limited to those. However, as the Federal Circuit noted, the sentences cited for support by Stryker, which used the language 'in a preferred embodiment,' related to the angle of the taper and not the location of the taper relative to the recess. Additional sentences cited by Stryker at the beginning and end of the written description which state that the descriptions and figures of preferred embodiments are examples do not limit the section, as that would create questions about whether the written description requirement was met.

Second, Stryker argued that the district court's construction violated the doctrine of claim differentiation, as dependent claims 25 and 32 recited 'essentially midway,' and dependent claims are presumed to be of narrower scope than their independent claims. However, claim differentiation is a rebuttable presumption. Indeed, the Federal Circuit found the presumption rebutted because of the lack of other locations given for the recess and taper in the written description, and because prosecution history showed that the 'essentially midway' language of dependent claims 25 and 32, the claim language at issue in claims 20 and 27, and similar language in the written description, were all added simultaneously.

The District Court Did Not Abuse Its Discretion Precluding Stryker from Arguing DOE

The district court applied its local rules to preclude Stryker from arguing infringement under the doctrine of equivalents. The district court's Local Patent Rules required that patentee's infringement contentions state whether each limitation of each asserted claim is literally present, or present under the DOE. Although Stryker reserved its right to assert the DOE arguments, it only asserted literal infringement, and never included a DOE theory in any of its infringement contentions. Additionally, Stryker had an opportunity to amend its infringement contentions after claim construction, but did not. Stryker presented various arguments on this issue, but the Federal Circuit found them unpersuasive. In light of the record, the Federal Circuit found no abuse of discretion by the district court in applying its Local Patent Rules.'

Howard J. Shire is Editor-in-Chief of this newsletter and a Partner in the New York office of Kenyon & Kenyon LLP. Daniel Shea is an associate at the firm.