Three Topics: Construing AND as OR; Preserving O2Micro demand; Denying interest

by Dennis Crouch

Michael Kaufman v. Microsoft Corp. (Fed. Cir. 2022)

Kaufman’s US7885981 has a 2000 priority date and claims a method of automatically creating a database front-end for user access.  Kaufman sued Microsoft–asserting that its Dynamic Data product infringed the claims.  A jury agreed, finding the patent claims valid and infringed and awarded $7 million in damages.  Both parties appealed.

The broadest claim has three steps that basically require

  • providing an output stream from from the server that defines a user interface paradigm (including user-interaction modes, such as “create, retrieve, update and delete” and display formats for each mode)
  • scanning the database to create a data model; and
  • using the data model to construct a client application also with the user interface paradigm.

‘918 patent.

The body of the claim does not include the an “automatic” requirement, but the preamble does: “A method for operating a server comprising a processor for automatically generating an end-user interface for working with the data within a relational database … , said method comprising …”


Much of Microsoft’s argument focuses on the term “automatic.” During claim construction, Microsoft had asked for the term to be construed as meaning “no human labor required.” At the summary judgment motion hearing, the Judge found no disagreement about the meaning of “automatic,” but rather concluded that the disagreement was about which parts of the process had to be automatic. Microsoft’s counsel then asked, “Can we resolve the claim construction issue?” and the district court responded , “You agreed on a definition.” At that point, Kaufman’s counsel agreed with the court “I think we have resolved it.”  There was no further briefing on the issue pre trial.

Preserving o2Micro Issue for Appeal: On appeal, Microsoft argued that the district court should have resolved the claim construction issue as required by O2Micro.  The Federal Circuit has refused to consider the argument — holding that Microsoft failed to preserve the issue.

Once litigation extends beyond pre-trial and into trial, claim construction should be seen as an issue of jury instructions.  In general, pre-trial objections made during the pleadings or summary judgment stage must be reiterated during trial in order to preserve those objections for appeal. FRCP Rule 51(c) requires a timely objection on the trial record to any jury instructions (or the failure to provide sufficient instructions).  Here, the Federal Circuit holds that same approach should apply to claim construction.

A proper claim construction provides a legal standard for the jury to apply, and so the requirement of clear, timely raising of an argument for a claim construction reflects the strong requirement of timely raising of distinct objections to jury instructions.

Kaufman, Slip Op.  One problem with this panel decision is that there are quite a few cases where the appellate court has permitted claim construction appeals despite the absence of on-point jury instruction objection.  Here, the appellate panel recognized that situation as “an exception to [the] requirement” that can apply when the issue was “sufficiently raised and settled earlier.”  In particular, as the Court wrote in 02Micro, the trial-objection requirement is only preserved in a situation where the claim construction arguments had been “made clear to the district court” and then “fully litigated in and decided” by the district court in such a way that further objection would be “futile [and] unnecessary.” Id.

On appeal, Microsoft also argued that the jury verdict of infringement was not supported by substantial evidence since its Dynamic Data program required substantial user input – and thus was not automatic.  On appeal though, the Federal Circuit concluded that claim language permitted some human actions (i.e., triggering the various operations).  And, the jury heard expert testimony that separated out the human actions of setting-up the operation from the claimed automatic steps of scanning”, etc.

And: One of the more litigated claim terms is the word “and.”  Here, the claims require several display modes: “create, retrieve, update and delete.”  Later, the claims require that “each said mode display processes for representing, navigating, and managing” data relationships.  The question here is whether the claims actually require each display mode provide the user all three options: represent, navigate, and manage.  Microsoft’s product includes some modes that do not display all the options  as required by the claims and so argues that it does not infringe.

The district court concluded in a post-verdict ruling that the term “and” should be construed as including “or.” On appeal, the Federal Circuit has affirmed. In its decision, the court particularly noted that the sole working embodiment described in the specification would only be covered by the claims under an “or” interpretation.  “A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” Epos Technologies Ltd. v.
Pegasus Technologies Ltd., 766 F.3d 1338 (Fed. Cir. 2014).  The court also noted that the specification repeatedly used the word “and” in ways that clearly included “or.”

Infringement Affirmed.

= = =

Although Kaufman won at trial, he appealed the district court’s denial of pre-judgment interest that could potentially double the award.  The patent statute particularly identifies interest as an element of compensation:

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

35 U.S.C. § 284. “Generally, prejudgment interest should be awarded from the date of infringement to the date of judgment.” Nickson Industries, Inc. v. Rol Mfg., 847 F.2d 795 (Fed. Cir. 1988). The Supreme Court interpreted this provision in its 1983 General Motors case, concluding that prejudgment interest is “typically” awarded in patent cases.  The Supreme Court also noted that the statute indicates interest is “fixed by the court” and may be denied by a district court based upon “some justification.”  General Motors Corp. v. Devex Corp., 461 U.S. 648 (1983).  In Nickson the Federal Circuit found that undue delay by the patentee in bringing the lawsuit could justify denying interest. See also, Crystal Semiconductor Corp. v. Tritech Microelectronics International, Inc., 246 F.3d 1336 (Fed. Cir. 2001).

Here, the district court gave two reasons for denying the award of pre-judgment interest.

  1. The jury verdict took into account the interest (because the instructions asked the jury to provide an award “discounted to present value”).
  2. Kaufman was responsible for undue delay in bringing the lawsuit.

On appeal, the Federal Circuit found the denial of interest a clear abuse of discretion.  The discounting portion of the verdict was tied to testimony regarding standard discount rates, but did not include any evidence or basis for the jury to also calculate or award interest.

Regarding undue delay, the district court identified a delay, but did not identify evidence that the delay was “undue,” i.e,. that it caused some prejudicial impact on the defendant.  In particular, Microsoft indicated that it “could have” altered its product back in 2011, but did not produce evidence that it “would have” done so.

On remand, the district court will need to add up that interest (and, likely add post-judgment interest as well based upon the appeal).

14 thoughts on “Three Topics: Construing AND as OR; Preserving O2Micro demand; Denying interest

  1. 4

    Off topic. But did you guys see this? link to

    Patent lawyers suck at con law and should not be arguing cases like Oil States. Indeed, how does not PTAB strip the right to jury trial (the very holding in Markman). Ugg.

    1. 4.1

      How is this a matter of “Patent lawyers suck at con law“…?

      Sure, the Court does seem to delve into the Oil States case (circa pages 33-36), but was that something the NON-PATENT ATTORNEY George R. Jarkesy did?

    2. 4.2

      George Carlin filter….?

      Your comment is awaiting moderation.

      May 23, 2022 at 11:02 am

      How is this a matter of “Patent lawyers s[u]**ck at con law“…?

      Sure, the Court does seem to delve into the Oil States case (circa pages 33-36), but was that something the NON-PATENT ATTORNEY George R. Jarkesy did?

      ** – A cut and paste gets filtered out?

    3. 4.4

      iwasthere: can you tell us why patent lawyers “s u c k” based on this opinion?

      1. 4.4.1

        I think that what IWT is getting at is that a non-patent lawyer managed to convince the CA5 that Oil States was wrongly decided, while a patent lawyer did not convince the SCOTUS of the same conclusion. In other words, he is suggesting that a better lawyer could have turned Oil States around in front of the SCOTUS.

        I am skeptical that this is so much a case of better lawyering in front of the CA5. To my eye, this looks more like a case of the CA5 being a tribunal much more welcoming to those sorts of arguments than was the SCOTUS during Oil States.


          Context and judicial predispositions CLEARLY have a larger impact than whether or not a patent attorney was involved.

          Not one of iwasthere’s better posts.

    4. 4.5

      Patent Lawyers are Constitutional Lawyers. It’s right there in Article I, Section 8 of the US Constitution.

      1. 4.5.1

        I chuckle at your false use of “logic.”

        As ALL law must find its way back to the Constitution, your “logic’ places even ambulance chasers as being Constitutional Lawyers.

        (I do hope that you merely misplaced your “/s” sign)

  2. 3

    After looking at Kaufman’s US7885981 claims I wondered why an Alice-type alleged “abstraction” unpatentable subject motion was not effectively made and preserved for appeal in this case?

    1. 3.1

      Same thought here. The appellate opinion mentions that the jury found the patent “valid and infringed,” which suggests that validity was contested. Many of the judgments and orders below, however, are quite cursory, so I cannot figure on what grounds the validity challenges were made. There is reference to an IPR, but that was as much as I can sleuth out.

  3. 2

    I am speechless. With this panel giving this opinion? I may have to modify my mostly negative opinion of these three judges somewhat.

  4. 1

    Taranto wrote the opinion for a unanimous panel that also included Dyk & Reyna. Imagine facing that murderer’s row of an appellate panel, and the small-entity patentee still won. Truly amazing.

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