Although last week saw just four Federal Circuit opinions, they were all precedential ones and covered a range of interesting issues. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.
Precedential opinions: 4
Non-precedential opinions: 0
Rule 36: 0
Longest pending case from argument: Hyatt v. Hirshfeld, No. 18-2390 (481 days)
Shortest pending case from argument (non-Rule 36): Lynch v. McDonough, No. 20-2067 (56 days)
Case of the week: SpeedTrack, Inc. v. Amazon.com, Inc., Nos. 2020-1573 & 2020-1660
Panel: Judges Prost, Bryson, and Reyna, with Judge Prost writing the opinion.
You should read this case if: you have a matter involving claim construction after an alleged prosecution disclaimer.
If you’re wondering what disavowal of claim scope by prosecution disclaimer looks like, keep reading.
The primary claim at issue relates to a computer filing system (think virtual folders) and recites, “the category descriptions hav[e] no predefined hierarchical relationship with such list or each other” (emphasis added). SpeedTrack sued retail website operators for infringement. Thereafter and relying on prosecution disclaimers made by SpeedTrack, the district court construed “hierarchical relationship” to mean that category descriptions are ranked into levels of subordination based on predefined, hierarchical field-and-value relationships. In other words, “French” would be a value (i.e., a subordinate) of the field of “language.” Based on that construction, the district court found that using computer filing systems with defined field-and-value relationships does not infringe.
On appeal, the Federal Circuit acknowledged that its only job was to determine whether the district court’s claim construction was correct. If so, no infringement.
Reviewing the prosecution history, the Court found that SpeedTrack added the “hierarchical” limitation as an amendment during prosecution to overcome prior art. In attempting to distinguish itself from the prior art during prosecution, SpeedTrack explained that its invention is “essentially ‘fieldless’” and “‘free-form,’” whereas the prior art taught a hierarchical system based on user-defined, field-and-value relationships. Perhaps sealing its fate, SpeedTrack noted that the “hierarchical” limitation was added to capture the difference between its claimed system and that of the prior art. On appeal, SpeedTrack argued that it distinguished the prior art on other additional grounds, but the Court didn’t bite. Precedent dictated that distinguishing prior art on particular grounds can serve as a disclaimer of claim scope, even if the applicant also distinguishes the prior art on additional grounds.
SpeedTrack also made arguments during litigation to distinguish the prior art for reasons similar to its prosecution statements. SpeedTrack argued on appeal that the Court shouldn’t consider those litigation statements because they were not part of the intrinsic patent record and so cannot demonstrate prosecution disclaimer. It’s unclear what weight the Court ultimately gave to the litigation statements. While the Court admitted it’s “[t]rue enough” that the statements were not made during prosecution, the Court still noted that the statements provided further reason why SpeedTrack’s appeal arguments failed.
In the end, the Court reminded litigants that the doctrine of prosecution disclaimer is rooted in equitable concerns: claims shouldn’t be construed one way to achieve allowance and another way to determine infringement.