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82.2 Federal Circuit Reiterates High Standard for Prosecution History Disclaimer
Avid Tech., Inc. v. Harmonic, Inc., No. 2015-1246, 2016 U.S. App. LEXIS 1439 (Fed. Cir. Jan. 29, 2016) (Before Reyna, Taranto, and Stoll, J.) (Opinion for the court, Taranto, J.). Click Here for a copy of the opinion.
In a January 29, 2016 decision, the Federal Circuit vacated a jury judgment of non-infringement and ordered the District of Delaware to conduct a new trial where construction of a claim term based on prosecution history disclaimer was found to be too narrow.
Plaintiff Avid Technology, Inc. asserted two data storage patents against defendant Harmonic, Inc. Both patents addressed retrieving data by breaking the data down into “segments” and saving copies of these smaller segments in a number of “independent storage units.” The district court gave the jury a claim construction of “independent storage unit,” based on statements Avid made in the prosecution history. The district court ruled that, during prosecution, Avid disclaimed a system in which the central controller tells the client which storage unit the client should deal with during read and write operations. On that basis, the court instructed the jury that “independent storage units” means “storage units which are not centrally controlled and whose memory addresses are not globally allocated” and that “systems with independent storage units cannot use a central controller to access data, and, in particular, cannot use a central controller that identifies the storage unit on which data is stored in response to client requests.” (emphasis in Opinion).
In rejecting the district court’s construction as too limiting, the Court emphasized the high standard for finding prosecution history disclaimer of claim scope. Examining the two prosecution history passages said to be a disclaimer, the Court found that each was readily susceptible to a narrower reading than the one needed to support the district court’s conclusion.
In the first prosecution history passage, Avid stated that its system “avoids using a central controller to access data” and that “clients do not issue requests to a central controller that in turn identifies storage units that store the data and issues requests to storage units.” Finding the district court misread that passage, the Court noted that “by its terms, [ ] a central controller is excluded if it performs both of two functions: it ‘identifies storage units that store the data and issues requests to storage units.’” Thus, the language on its face did not clearly exclude a central controller that performs only one or the other of the two stated functions.
In the second passage, Avid distinguished a prior art reference, noting that its “assignment of a client to a server through a centralized interface for its transaction [is] contrary to the claim limitations noted above.” Finding the district court read too much into this passage, the Court clarified that rather than disclaiming a system in which the central controller tells the client which storage unit contains a given segment, the language can easily be read to be distinguishing the reference on the ground that each client application in the reference is connected to only one storage unit and conducts all of its transactions with that one storage unit. Avid’s patents, in contrast, contemplate implementing “redundancy” by storing segments of a file on different storage units.
Finding “no clear and unmistakable disclaimer of central controllers that provide storage-unit location information for retrieving segments” the Court vacated the jury finding of non-infringement as based on an errant construction and remanded for a new trial.