Vasudevan Software, Inc. v. MicroStrategy, Inc., No. 2014-1194, and Vasudevan Software, Inc. v. TIBCO Software, Inc., No. 2014-1096, 2015 U.S. App. LEXIS 5396 (Fed. Cir. Apr. 3, 2015) (Linn, CJ.). Click Here for a copy of the opinion.
Vasudevan Software, Inc. ("VSi") sued MicroStrategy, Inc. ("MicroStrategy") and TIBCO Software, Inc. ("TIBCO") (collectively, "defendants") in separate suits for infringing four U.S. patents. The patents shared a common specification related to online data processing from incompatible databases. The district court did not consolidate the suits, but considered the claim construction issues together.
An issue arose over the term "disparate . . . databases." The parties agreed that "disparate" means "incompatible," but differed over how extensive that incompatibility must be. VSi argued that the plain and ordinary meaning of "disparate databases" is "incompatible databases having different schemas." In support, VSi cited testimony from its expert, and a stipulation with IBM and Oracle agreeing to the same construction in a different litigation. The defendants contended that "disparate databases" meant "databases having an absence of compatible keys or record identifier (ID) columns of similar value or format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases." They cited a statement by VSi in the prosecution history for one or the patents. Specifically, VSi stated in response to an Office Action that the disparate nature "refers to" an absence of common keys or record IDS columns of similar value or format. The district court agreed with the defendants, determining that VSi's statement was a "clear" and "unmistakable" definition of "disparate databases." In a Clarification Order, the district court ruled that VSi's statement limits disparate databases to ones that have an absence of compatible keys; and an absence of record ID columns of similar value; and an absence of record ID columns of similar format in the schemas.
Based on this clarified claim construction, the parties stipulated to non-infringement. Then, TIBCO filed a motion for summary judgment ("SJ") of invalidity of all claims asserted by VSi based on a lack of written description and enablement. MicroStrategy filed a similar motion for SJ, citing lack of enablement. The district court granted the defendants' motions. VSi appealed the district court's claim construction and invalidity determinations.
The Federal Circuit affirmed the district court's claim construction and non-infringement determination, but reversed the district court's summary judgment of invalidity and remanded. The Court agreed that the "refers to" phrase in VSi's statement established an intention to define "disparate databases." The plain and ordinary meaning of "disparate databases" proposed by VSi leaves open the question of how "disparate" or "incompatible" the databases may be. Testimony of VSi's expert does not provide a clear definition, as the expert conceded that the meaning of "disparate databases" depends on the "context" and lacks a "consistent use." Further, a construction that was stipulated to by other parties in a different litigation "is of little relevance or probative value." Because the specification, expert testimony, and stipulation leave uncertain the meaning of "disparate databases," the district court correctly turned to the prosecution history. Further, the Clarification Order follows proper grammar, "where the phrase 'not A, B, or C' means 'not A, not B, and not C.'"
Regarding summary judgment, the Court found genuine issues of material fact for written description and enablement. VSi's expert cited support for his testimony within the specification, which arguably discloses how to access disparate databases to comply with the written description requirement. Also, the extensive effort taken by the inventor to reduce the invention to practice does not conclusively show a lack of enablement. The Court concluded that, while the Wands factors weigh heavily in favor of invalidity, the genuine issues of material facts are sufficient to defeat summary judgment.
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