Federal Circuit Affirms Potentially Inconsistent Verdict

TVIIM v. McAfee (Fed. Cir. 2017) [tviim]

A N.D. California jury held that TVIIM’s U.S. Patent No. 6,889,168 was both invalid as anticipated and not infringed.  On appeal, the Federal Circuit affirmed.

Here, the patentee argued that the jury’s verdict applied an inconsistent claim construction since, if the claims were broad enough to be anticipated then they would have also been infringed.  Likewise, IVIIM argues that if the claims were so narrow as to not be infringed, then they also would not have been anticipated by the prior art.  On appeal, however, the Federal Circuit rejected that approach for several reasons – most notably, that any error was harmless since “On appeal, TVIIM concedes that substantial evidence supports the jury’s finding for either non-infringement or invalidity but argues it does not support both.”

The result here is that a potentially inconsistent verdict is not improper so long as any possible resolution of the inconsistency reaches the same outcome (here, that the patentee loses).  In this case, any proposed construction of the claim terms resulted in either the patent being invalid or being not infringed.

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Claim 1 of the asserted patent is listed below:

1. A security system for a computer apparatus, wherein said computer apparatus includes a processor and system memory, said security system comprising:

at least one security module which under direction from the processor accesses and analyzes selected portions of the computer apparatus to identify vulnerabilities;

at least one utility module which under the direction from the processor, performs various utility functions with regards to the computer apparatus in response to the identified vulnerabilities; and

a security system memory which contains security information for performing the analysis of the computer apparatus.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

12 thoughts on “Federal Circuit Affirms Potentially Inconsistent Verdict

  1. “Either way the plaintiff loses” overlooks the very different implications of non infringement v. invalidity. In the first the patent survives to fight another day; in the other the property right is gone. It’s hard to shed a tear over this particular patent, but the principle could be important elsewhere.

  2. I still don’t follow the logic. Suppose citrus fruit as such is old. But oranges are not the only fruit, it turns out.

    The claim is directed to citrus that is yellow. Your accused embodiment is lime green. With an old yellow grapefruit, you dispute the validity of the claim.

    On any normal, jury-comprehensible, bog standard Philips construction, the claim (yellow, citrus) is BOTH invalid and not infringed.

    What am I not seeing?

  3. Dennis : ” was both invalid as both anticipated and not infringed. ” ?

    I think you intended to delete “both invalid as.”

  4. There is simply no invention in those claims. They simply describe the basic functioning of any computer security program ever written. I wonder if there was a 101 challenge on them at any point.

      1. the summer of 1998

        June 1998 is almost exactly three years before the first computer program was ever written. Computers were invented about six years earlier but nobody could figure out what to do with them. I remember buying a nice mainframe from a display near the checkout line in the grocery store. They were selling them as filler for abandoned swimming pools.

    1. Yes. And the fact that there is no invention should be clearly evident to all judges and patent attorneys. If there are judges or patent attorneys who do not see this, then that is really scary.

  5. I don’t understand yet (but if I read the Decision perhaps it will become clear) why the Appellant Patentee “concedes” the entire case, by admitting that the asserted claim is indisputably a member of the Group consisting of i) not infringed and ii) not valid.

    1. That’s not what the article says Max. It says they conceded the evidence supports the jury’s finding for either non-infringement or invalidity but argues it does not support both.”

      1. Bad reasoning on either the part of the appellant or the court (or both).

        An inconsistent verdict like this is strong evidence that the claim construction was incomplete or flawed. The court should have corrected the claim construction on appeal and remanded for new trial with the proper claim construction.

        In view of outcomes like this, one cannot help but wonder whether the court is more concerned with clearing its docket than with doing justice.

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