Addressing an early Markman and summary judgment ruling the U.S. Court of Appeals for the Federal Circuit affirmed the district court's claim construction and summary judgment of non-infringement, remarking that the district court implemented a creative procedure designed to streamline the case. Parallel Networks, LLC v. Abercrombie & Fitch Co. et al., Case No. 12-1227 (Fed. Cir., Jan. 16, 2013) (Bryson, J.).
Plaintiff Parallel Networks filed four cases against 120 defendants in the U.S. District Court for the Eastern District of Texas. Across a variety of industries, the plaintiff accused the defendants of operating websites that infringed its patent directed to a method and apparatus for client-server communication using a limited capability client over a low-speed communications link. Responding to the plaintiff's strategy of trying to extract early settlements from defendants, the lower court conducted an early Markman hearing on three claim terms that would be case dispositive if the defendants prevailed on claim construction. With the aid of a technical advisor, the district court adopted the defendants' construction on one of the three terms and granted summary judgment of non-infringement for most defendants on this basis. Parallel Networks appealed.
The Federal Circuit affirmed the district court's claim construction, primarily on the basis that plaintiff's "position would, for instance, improperly bring distinguished prior art within the scope of the claims." The asserted patent was directed to a "dynamically generated, transient applet," a program typically dedicated to perform a specific task. The Federal Circuit observed that applets pre-dated the asserted patent. The intrinsic evidence distinguished prior art on the basis that the applet in the patent was generated in response to the client's request. Based on this intrinsic evidence, the Court affirmed the district court's construction of "dynamically generated by the server in response to the request" as "constructed at the server, by combining the requisite functionality with the necessary data, at the time of and in response to the client request." The Federal Circuit affirmed the district court's grant of summary judgment of non-infringement because the accused websites did not combine both the functionality and data in response to a client request.
The plaintiff also appealed the district court's denial of its motion to amend its infringement contentions following the district court's early Markman decision. The Federal Circuit affirmed this decision, relying on the plaintiff's decision to pursue a theory that allowed it to accuse a larger number of defendants. The Court found that plaintiff, having lost, may not initiate what would amount to a completely new infringement proceeding. The Federal Circuit observed that the plaintiff could have pursued a narrower infringement theory against fewer defendants before summary judgment was entered, and that the consequences of summary judgment by its pursuit of a broader infringement theory against a larger number of defendants was not unforeseen.
Practice Note: Early focused claim construction efforts may maximize the chance of early resolution. Further, a claim construction ruling does not necessarily justify later amendments to infringement contentions.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.