Monday, January 09, 2006


DIVERGENT EMBODIMENT IN SPECIFICATION MAY BROADEN CLAIM SCOPE:

nCube Corp. v. SeaChange Int'l, Inc., January 9, 2006 (03-1341, -1366)

SeaChange appealed a district court's denial of a JMOL and request for new trial. In the lower court proceeding, SeaChange was found guilty of willful infringement of nCube's patent (US Patent 5,805,804), and was ordered to pay double the actual damages and 2/3 of nCube's attorney fees.

The '804 patent claims a "Method and Apparatus for Scalable, High Bandwidth Storage Retrieval and Transportation of Multimedia Data on a Network," where multimedia data is provided to clients flexibly connected to various multimedia sources over a network.

SeaChange argued that the district court should have interpreted the feature "upstream manager" to encompass all messages routed from clients bound for a server using logical addresses, because the sole embodiment in the specification describes the communication this way, and explicitly states that "all routing is accomplished based on logical addresses, not physical addresses."

The majority decision rejected these arguments, pointing to the portion of the specification which said "[i]t may be the case that some server process, under the direction of an external network control node, actually establishes contact with the client." While no more detail was provided in the specification, the Federal Circuit held that is was sufficient to show that other points of communication (not just those from the upstream manager) were covered in the claims.

With regard to logical addresses, the Federal Circuit engaged in a bit of claim differentiation, stating that the recitation of a "logical address" appeared in a dependent claim. Thus, importing this limitation into the term "upstream manager" would effectively render the dependent claim redundant. Ultimately, the court stated that the claim term "upstream manager" is not "so amorphous that one of skill in the art can only reconcile the claim language with the inventor's disclosure by recourse to the specification."

Dissent (Judge Dyk): Relying on Phillips, Judge Dyk found that the construction of "upstream manager" that most naturally aligns with the '804 patent's description of the invention requires the use of logical addressing. In fact, the patentee's use of the term "present invention" in the specification defines it as such:

Nowhere does the '804 patent disclose or suggest that the upstream manager routes messages from a client using physical, as opposed to logical addresses. Indeed, if the upstream manager could not route messages from the client using logical addresses, then the purpose of the invention--to substitute logical for physical addresses--would be defeated . . . The patentee here offered no expert testimony suggesting that those skilled in the art would not read the patent to include a device using logical addresses.

Although the majority appears to recognize that there is no reference in the specification to the use of physical addresses, the majority suggests that the specification's explicit statement that "all routing is accomplished based on logical addresses, not physical addresses" applies only to the preferred embodiment.

Here, the patentee clearly demonstrated that the upstream manager accomplishes routing by logical addressing. The specification characterizes the "present invention" as including the logical addressing limitation.
Willful Infringement: While SeaChange relied on opinion of counsel, the Federal Circuit agreed it was defective and opened the door for willful infringement. "The record shows that at least one important technical document was not supplied to SeaChange's opinion counsel. Thus, 'the best information [was] intentionally not made available to counsel during the preparation of the opinion, [so that] the opinion can no longer serve its prophylactic purpose of negating a finding of willful infringement.'"

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