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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Specific Case Where Claims Need Not be Construed Before Determining Validity

Perfect Web Techs., Inc. v. InfoUSA, Inc. (Fed. Cir. Dec. 2, 2009)

In this case, the Federal Circuit affirmed the district court's summary judgment order regarding obviousness.  The patent at issue related to methods of managing bulk e-mail distribution to groups of targeted customers.  After the district court conducted a Markman hearing, but before issuing a formal claim construction order, the court held a summary judgment hearing.  The court then granted the defendant's motion for summary judgment of obviousness, assuming for purposes of the motion that the plaintiff's proposed claim constructions were correct.  On appeal, the plaintiff argued that the district court should have formally construed the claims before deciding validity.

The Federal Circuit, in an opinion by Judge Linn, noted that it has previously said "a court may not invalidate the claims of patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts … [h]owever, a district court need not construe undisputed claim terms prior to issuing a summary judgment of invalidity." (emphasis in original, internal citations omitted).  In this particular case, the parties disputed two claims terms found in the final step of the claimed four-step method.  However, both the district court and Federal Circuit found that "[n]either claim term was relevant" to the issue of obviousness (the issue being the repeating of the first three method steps).  The plaintiff offered no reasons why the constructions of these two terms would change the obviousness outcome.

Plaintiff also argued that the district court "adopted an improper 'claim construction' that oversimplified the claims" by referring to the final step of the claimed method as "try, try again" (the final step of the claimed method called for repeating the first three steps until a condition was satisfied).  The Federal Circuit disagreed, noting that "step (D) plainly calls for 'repeating steps (A)-(C),' and [plaintiff] identifies no construction that would change our analysis."