Juxtacomm-Texas Software v. Tibco Software, et al. (Fed. Cir. 2013)
In this case the Federal Circuit only offered one paragraph of substantive analysis:
The decisions of the district court … , construing the relevant claim language of U.S. Patent No. 6,195,662 and granting the motion for summary judgment of invalidity based on 35 U.S.C. § 112 ¶ 2, are affirmed on the basis of the district court's opinions. The language of the claims controls their construction, and the invention set forth in the claims "is not what the patentee regarded as his invention." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).
Under Allen Eng'g, section 112 ¶ 2 requires that the patent "set forth what the applicant regards as his invention and … do so with sufficient particularity and distinctness." (Section 112 has now been rewritten and § 112 ¶ 2 is renumbered as § 112(b)). In most cases, 112 ¶ 2 challenges focus on the requirement of "sufficient particularity and distinctness" in the form of a definiteness challenge. However, this case focuses on the first portion of the provision and finds that the patentee failed to claim "what the applicant regards as his invention." And, that failure results in the relevant claims being held invalid. The district court wrote:
Section 112 ¶ 2 contains two requirements: "first, [the claim] must set forth what the applicant regards as his invention and second, it must do so with sufficient particularity and distinctness, i.e., the claim must be sufficiently definite." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed.Cir.2002) (internal quotes removed) (quoting Solomon v. Kimberly–Clark Corp., 216 F.3d 1372, 1377 (Fed.Cir.2000)). A claim is invalid under the first prong of 35 U.S.C. § 112 ¶ 2, when one of skill in the relevant art, reading the specification would not understand the invention set forth in a claim is what the patentee regarded as his invention.
Juxtacomm's basic problem in this case is that the plain interpretation of its asserted claims result in a system that the patent document itself does not describe. The patent here is directed to a data transformation system and all asserted claims include some form of a "script processor for utilizing metadata from [a] metadata database to control data transformation within [a] systems interface and [to control] movement of said data into and out of a distribution system." The claim includes a limitation that a "script processor" that is designed "to control data transformation within said system interface." However, Juxtacomm's specification does not describe data transformation within the system interface. Based upon that difference, the court found an "irreconcilable contradiction" between the specification and the claims that renders the claims invalid under § 112 ¶ 2.
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A major question left unaddressed by the court here is the overlap between, on the one hand, this § 112(b) issue of "irreconcilable contradiction" when comparing the specification with the patent claim and, on the other hand, the requirement of § 112(a) that the specification set forth a written description of the claimed invention. For its part, the district court here suggested in a footnote that the two doctrines have substantial overlap – writing that "the Court would [also] find it exceedingly difficult to preserve the validity of the ′662 in light of the requirements set forth in 35 U.S.C. § 112 ¶ 1 … [since] the specification simply does not disclose [the claimed] invention."
It appears to me that the overlap is likely complete. However, there is one important procedural distinction – that the inquiry under § 112(a) is generally seen as a question of fact while the inquiry under § 112(b) is a question of law. See Enzo Life Sciences, Inc. v. Digene Corp., 305 F.Supp.2d 406 (Fed. Cir. 2004). All things being equal, questions of law tend to be easier to resolve earlier in the case – such as on summary judgment. However, questions of law are also ordinarily more vigorously reviewed on appeal.
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