Jury Instruction On Meaning Of Claim Term Cannot Be Challenged After Agreed To By Parties

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Federal Circuit Review No. 76-2.
Jury Instruction On Meaning Of Claim Term Cannot Be Challenged After Agreed To By Parties

Akamai Techs., Inc. v. Limelight Networks, Inc., No. 2009-1372, 2009-1380, 2009-1416, 2009-1417, 2015 U.S. App. LEXIS 19848 (Fed. Cir. Nov. 16, 2015) (Before Linn, Moore, and Prost , CJ.) (Opinion for the court, Linn, J.). Click Here for a copy of the opinion.

In 2006, Akamai sued Limelight for infringing three patents. The district court’s claim construction of “tagging” in the ‘703 patent was “providing a ‘pointer’ or ‘hook’ so that the object resolves to a domain other than the content provider domain” such as a particular group of computers “from which an optimal server is to be selected.” This was the agreed construction by both parties and was read to the jury. Based on this construction, Limelight argued that a single optimal server must be selected, and Akamai argued that several servers could qualify as optimal. The district court construed optimal server as requiring the selection of a content server that is better than the other choices based on criteria established by the specification.

After the jury found infringement and awarded Akamai lost profits, royalties, and price erosion damages, the district court granted JMOL of no infringement. Both parties appealed, and the Federal Circuit reversed.   On appeal, Limelight argued alternative grounds for overturning the jury verdict and challenged the damages award.

According to Limelight, the district court’s construction of “tagging” was limited to using a “pointer” or “hook” to prepend or insert a virtual server hostname into a URL. The Court rejected “prepending” as a claim limitation because even though the ‘703 patent described prepending as a preference, there was no indication from the claims or prosecution history that tagging was limited to this preferred embodiment. The Court found no error in the jury instructions and held that Limelight was bound to the stipulated construction of “tagging” originally read to the jury.

The Court also held no error in the district court’s construction of “optimal server,” rejecting Limelight’s argument that “optimal” was restricted to a single “best” server. The district court properly relied on intrinsic evidence to construe “optimal server” as “one or more content servers that are better” based on certain criteria in the specification. The Court held the tagging system was not limited to serving from a single server that was the “aggregate best” of these criteria, but instead capable of choosing one or more servers based on any of the criteria.

There was also no error in the district court’s damages calculation, which was based on the lost-profits analysis of Akamai’s expert. The expert opined that Akamai and Limelight were direct competitors and Akamai maintained a dominant market share and that the demand for Akamai’s product was relatively inelastic, meaning the demand in quantity did not change significantly even if the price decreased by a certain percentage. Limelight argued that its customers were less likely to buy Akamai’s product since it sold at half of the price. In his calculation, the expert correctly adjusted market elasticity by 25% and excluded the lowest 25% of Limelight’s customers based on the assumption that Akamai’s product would be 25% less in demand than Limelight’s. Accordingly, the Court affirmed and also reinstated affirmance of the district court’s judgment of non-infringement of the remaining two patents-in-suit.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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