by Dennis Crouch
01 Communique Lab. v. Citrix Systems (Fed. Cir. 2018)
01Com’s U.S. Patent No. 6,928,479 is directed toward a software implemented private communication portal. The patentee sued Citrix for infringement back in 2006. Consider that — the lawsuit was filed before eBay limited injunctive relief, before KSR made it easier to invalidate a patent as obvious, before Nautilus raised the standard for indefiniteness, before Alice and Mayo opened the door to eligibility invalidation, and before Congress created the regime of AIA trials. The long delay in this case should also be a thing-of-the-past. Here, the district court stayed proceedings for seven years awaiting the outcome of an inter partes reexamination. The reexam was finally concluded in 2014 with a judgment confirming patentability of the challenged claims. Although unsuccessful before the PTAB, a 2016 jury sided with Citrix finding on infringement — finding none. (Note here that Citrix also unsuccessfully argued invalidity to the court and the jury).
On appeal, the Federal Circuit has affirmed — holding that a new trial is not warranted.
01Com’s basic argument on appeal was that Citrix attorneys used their weak invalidity argument to sway the jury on non-infringement — basically by arguing that what Citrix is doing now in its GoToMyPC product is a close continuation to its prior-art BuddyHelp product.
Practicing the Prior Art: The Federal Circuit has repeatedly ruled that there is no “practicing the prior art” defense to literal infringement. Although that argument makes logical sense, the court has ruled that it improperly conflates invalidity and infringement in a way that may allow defendants to skirt the requirements of either doctrine.
In Tate . . . [w]e explained that “literal infringement is determined by construing the claims and comparing them to the accused device, not by comparing the accused device to the prior art.” We noted, moreover, that while the issue of whether asserted claims read on the prior art is relevant to the question of invalidity, “accused infringers are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a ‘practicing [the] prior art’ defense to literal infringement under the less stringent preponderance of
the evidence standard.”
Here, unlike in Tate, the Federal Circuit ruled that the defendant had actually presented evidence of non-infringement (comparing the accused device with the patent claims) as well as invalidity (comparing the prior art with the patent claims).
Causing Prejudice or Improper Bias
The patentee here also argued that it was improper for a defendant to present testimony comparing the Citrix’s prior art version with its now-accused version because that evidence would cause undue prejudice in the eyes of the jury without actually helping prove any point of law or relevant fact.
On appeal, though, the Federal Circuit sided with the accused infringer by first holding that the full-triangle comparison may be useful to ensure that claim terms are treated in the same way across all aspects of the litigation. For this point, the court cited to its Amazon.com restatement of Justice Bradley’s 1886 “nose of wax” quote:
“A patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find 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 better off hearing the case as a whole even if it must answer distinct questions of invalidity and infringement. Here, in particular, the district court specifically advised the jury as to the law – noting that “[t]he determination of literal infringement depends on the presence of the claim elements in the accused product, not on similarities between the accused product and the prior art.” On appeal, the Federal Circuit found these instructions easily enough to overcome any argument for a new trial.
The patentee also complained that the district court prohibited it from telling the jury that Citrix (the defendant here) had been the one who had requested the reexamination. On appeal, the Federal Circuit sided with the trial court – finding no error and that the court’s judgment here likely aided in avoiding undue prejudice against the defendant.
= = = = =
I’ll note here as an aside that the nose of wax quote is apt once again in the context of inter partes review proceedings where the challenger asks for the broadest reasonable interpretation of claims during the IPR but then can substantially narrow its approach when back in-court discussing infringement.
I have actually had this situation in a district court case.
>>>The patentee here also argued that it was improper for a defendant to present testimony comparing the Citrix’s prior art version with its now-accused version because that evidence would cause undue prejudice in the eyes of the jury without actually helping prove any point of law or relevant fact.
I agree this can be done, but it depends how it is done and for what purpose.
Financially speaking the most serious “nose of wax” problem may well be D.C.s that put off providing Markman claim interpretations until the eve of trial. Thus in quite a few cases causing years of very costly discovery and trial preparation on unreasonably broad claim assertions before the Markman claim interpretation generates a summary judgment of non-infringement which could have been decided much earlier and millions of dollars cheaper. Local rules requiring earlier Markmans could solve that problem.
You say “local rules” but you clearly mean something other than the local choices that “local” part of “local rules” entails…
(mind you, I am NOT disagreeing with the thrust of your suggestion, having made a similar suggestion myself quite awhile ago – re: the clamoring of Texas jurisprudence and all)
At the risk of highlighting my unseemly density, I do not get the point of the Don Draper look-alike photo. What does that photo have to do with anything in this blog entry?
I assume the connection is simply that one of the Drapers is a wax figure with a wax nose.
Ah, yes. I totally missed that, but it makes sense now that you say it. Thanks.
Interesting (implicit) suggestion here; it is not that a nose is made of wax that is problematic, it is when that nose of wax (meant to be malleable) is miss handled and the wax nose no longer reflects the “real” nose.
Possible hidden meaning: the wax nose in the different forum of a non-Article III forum should properly reflect and look like the non-wax nose of the different Article III forum.
Hmmm.
Nah.
“I’ll note here as an aside that the nose of wax quote is apt once again in the context of inter partes review proceedings where the challenger asks for the broadest reasonable interpretation of claims during the IPR but then can substantially narrow its approach when back in-court discussing infringement.”
Is it really apt?
Typically the nose of wax comment is meant for different treatment within a same forum – as opposed to different treatment in different forums.
I think that you might be diluting the “nose of wax” meaning without recognizing the “different forums have different rules which may lead to different results” without the more traditional view of “nose of wax” going on.
I’m with anon on this one. The Mario Franzosi “Angora cat” metaphor is much more apt than the notion of a “nose of wax”
An Angora cat has very long hair, which it can stand on end to scare away those who would intrude on its territory. The cat seems to be huge.
But if you want your scary cat to look harmless and tiny, just make it thoroughly wet. Then you see its body is tiny.
This is what patent owners do in jurisdictions like Germany that bifurcate the infringement and validity trials. When judging validity, the claim is so narrow, no prior art can touch it.
Senmed v. Richard Allan Medical and Southwall would appear to be two Fed. Cir. cases that use the nose of wax metaphor for different forums, prosecution before the USPTO and litigation in the courts. Are you suggesting that those two cases are atypical, or are you suggesting it’s OK for prosecutors to say one thing about a claim and litigators say something else entirely?
It depends entirely on whether the use of the metaphor is on point or is simply reflecting the different rules of the different forums.
My post was clear as to what “OK” is in regards to the term itself.
As to that term, I despise its use (as that term is understood with my post).
This too should be clear.
(as well, it should be clear that this is quite different than offering arguments in the alternative – we have not “gone there,” but I add this just in case your thoughts wander that way)
guest78,
Thanks for the case – I went back and read the Senmed case – which was very interesting with a (typical) interesting dissent by Newman (even going back to 1989, Newman was provided dissents with critical thinking).
I think that the emphasis that you supply vis a vis “different forums” is different than how I am using the term (judgments in different forums under different sets of judgement standards).
I think that your reference here is more in line with my comment above at 3.1.2.
I think that file history estoppel IS – and should be – real.
But I think that is not a “nose of wax” as to the law. As that term is used – in regards to the law – is a different context and thus, a different meaning.
No nose of wax, my @$$. As if juries actually understand the patents they pass judgment on.
Same comment for many judges (including all 9 on the nation’s highest court).
Exactly!
What some trial lawyers strongly assert is that what juries do seem to understand in cases like this is that if the defendant had a public product nearly identical to what the patent is about BEFORE that patent was filed it tends to remove jury suspicion that the defendant ‘copied” the invention from the patent or a later product of the patent owner. Hence, the desire to have the jury aware of such prior art before or along with infringement issues.
Excellent point, Paul.
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