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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Rejects Request to Review Infringement De Novo

Uniloc USA, Inc. v. Microsoft Corporation (Fed. Cir. Jan. 4, 2011)

Perhaps lost with the focus on major pronouncements on patent damages, Uniloc nevertheless touches on an important claim construction issue as well.  In this case, the Federal Circuit rejected Microsoft's request that infringement be reviewed de novo.  The patent at issue concerned a software registration system to deter copying of software, and the accused product was Microsoft's Product Activation feature that acts as a gatekeeper to Microsoft's Word XP, Word 2003, and Windows XP software programs.

On appeal, Microsoft argued that "because there is no dispute about how the accused products work, infringement should be reviewed de novo", citing the Federal Circuit's decisions in Athletic Alts., Inc. v. Prince Mfg. Inc., where the Court stated that "[w]here, as here, the parties do not dispute any relevant facts regarding the accused product but disagree over which of two possible meanings of Claim 1 is the proper one, the question of literal infringement collapses to one of claim construction, and should thus be reviewed de novo", as well as General Mills, Inc v. Hunt-Wesson, Inc.

The Federal Circuit responded that "The cases cited by Microsoft involve a procedural posture not present in this case … the infringement issue in General Mills collapsed into claim construction because 'the parties agreed with each other and the district court about how each of two competing claim constructions would apply to the undisputed structure of the accused invention.'  In other words, the parties conceded that under one claim construction there was infringement and under the other there was non, and were arguing only over which claim construction was appropriate.  The infringement issue in Athletic Alternatives also came to this Court with the same posture … this case presents the opposite procedural posture; the claim construction itself is not contested, but the application of that claim construction to the accused device is.  Thus, this court applies the traditional rule for review of jury verdicts of factual issues discussed above."