Predicate Logic, Inc. v. Distributive Software, Inc.

United States Court of Appeals for the Federal Circuit
2007-1539

PREDICATE LOGIC, INC.,

Plaintiff-Appellant,

v.

DISTRIBUTIVE SOFTWARE, INC.,

Defendant-Appellee.

Christopher S. Marchese, Fish & Richardson P.C., of San Diego, California,
for plaintiff-appellant. With him on the brief were Seth M. Sproul and John A.
Dragseth of Minneapolis, Minnesota.

John C. Wynne, Duckor Spradling Metzger & Wynne, of San Diego, California,
argued for defendant-appellee. With him on the brief was Bernard L. Kleinke.

Appealed from: United States District Court for the Southern District of California

Judge William Q. Hayes
 United States Court of Appeals for the Federal Circuit
2007-1539

PREDICATE LOGIC, INC.,

Plaintiff-Appellant,

v.

DISTRIBUTIVE SOFTWARE, INC.,

Defendant-Appellee.

Appeal from the United States District Court for the Southern District of California in
case no. 01-CV-1951, Judge William Q. Hayes.

__________________________

DECIDED: October 9, 2008
__________________________

Before NEWMAN, LOURIE, and LINN, Circuit Judges.

LINN, Circuit Judge.

When the complexities inherent in the English language meet the peculiarities of

patent jargon, the result can be the bane of many unsuspecting patentees. While claim

language is generally the product of the patentee alone, the patentee’s drafting efforts

are sometimes aided by the examiner. Usually, such collaborative efforts are

constructive. On occasion, however, these efforts result in confusion, not clarity. In this

case, there were two such occasions. The first was during the original prosecution—

when the patentee authored and the examiner allowed a claim with an arguably

ambiguous limitation. The second was during reexamination—when the patentee and

the examiner clarified the claim but failed to make an adequate record explaining the

rationale for the amendment. Careful and straightforward claim drafting by prosecuting
attorneys and agents, and rigorous application by examiners of the statutory standard to

particularly point out and distinctly claim the subject matter regarded to be the invention,

see 35 U.S.C. § 112, ¶ 2 (2000), serve an important public notice function. Here, the

public notice function was not well served. Indeed, the controversy in this case might

have been avoided had the claims been presented differently and accepted by the

examiner only after more careful scrutiny.

In this action, Predicate Logic, Inc. (“Predicate”) brought suit against Distributive

Software, Inc. (“Distributive”) for infringement of U.S. Patent No. 5,930,798 (the “’798

patent”). The ’798 patent relates to measurement and analysis technologies for use in

software development. During the litigation, Distributive requested ex parte

reexamination of the ’798 patent, and the claims were allowed as amended during

reexamination. Distributive then argued to the district court that the asserted claims

were invalid because the amendment during reexamination improperly broadened the

claims. The district court agreed and granted Distributive’s motion for summary

judgment of invalidity. Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV-

1951, slip op. at 17 (S.D. Cal. Jan. 25, 2007) (“Jan. 25 Op.”); Predicate Logic, Inc. v.

Distributive Software, LLC, No. 01-CV-1951, slip op. at 7-8 (S.D. Cal. July 12, 2007) slip

op. at 7-8 (“July 12 Op.”). Because we disagree with the district court’s conclusion that

the amendment substantively changed the scope of claim 1 of the ’798 patent, we

reverse and remand.

I. BACKGROUND

The ’798 patent discloses a universal data measurement, analysis, and control

method that can be used in the software development process. ’798 patent col.3 ll.34-

43. Measuring and forecasting the software development process is difficult because

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multiple different programming languages may be used on a single project, and each

programming language has different metrics. Id. col.1 ll.11-62. For example, in one

programming language, the number of lines of code written may be a good metric to

track programming progress, while in another programming language, code may not be

organized into lines at all. Thus, the “lack of internally consistent data” makes it difficult

to measure and forecast software development. Id. col.1 ll.24-28.

The ’798 patent attempts to solve this problem with a “universal” system for data

measurement and analysis. Id. col.3 ll.34-37. Because software is typically organized

hierarchically, the invention of the ’798 patent uses a series of pre-defined rules to

generate one or more hierarchical indexes that serve as templates for the data to be

collected from all of the components of the project. Id. col.3 ll.59-64. The invention

then discloses selectively “instantiating” those hierarchical indexes—i.e., populating the

index fields with data from the project—and comparing the results of these

instantiations. Id. col.3 l.65-col.4 l.5.

Predicate brought suit against Distributive in 2001 alleging infringement of the

’798 patent. Jan. 25 Op. at 1. At Distributive’s request, the United States Patent and

Trademark Office initiated reexamination of the ’798 patent, and the district court stayed

the infringement action pending the outcome of the reexamination. Id. at 2. During

reexamination, the examiner initially found all claims anticipated by the reference that

was the basis for Distributive’s reexamination request, as well as obvious in light of that

reference combined with other art. Id. Following a response by Predicate, the

examiner withdrew the anticipation rejection but maintained the obviousness rejection.

Id. Predicate appealed to the Board of Patent Appeals and Interferences, but the

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examiner withdrew the obviousness rejection in light of Predicate’s brief to the Board.

Id. Additionally, the examiner issued an “Examiner’s Amendment” to claims 1 and 15—

the only independent claims of the ’798 patent. Id. The examiner did not give any

reason for the amendment. Id. The claims as amended were allowed. ’798 patent,

Reexamination Certificate, col.1 ll.17-18.

The amendment to claim 1 is at issue in this appeal. Claim 1, as amended, is as

follows:

1. A method of providing a universal data analysis, measurement and
control system for a variety of types of input data components comprising
data sets, the method being implemented in a programmed computer
comprising a processor, at least one data storage system, at least one
input device and at least one output device, the method comprising the
steps of:

generating, by means of the programmed computer, at least one
hierarchical index linked to each of the input data components, said
at least one index being generated under pre-defined formatting
rules and further including a description of each of the data sets,
each said data set description including at least one quantified
description of each data set;

storing said at least one index in at least one of the data storage
systems;

[instantiating said at least one index by means of the programmed
computer;]

first instantiating at least one said index by means of the
programmed computer;

second instantiating at least one said index by means of the
programmed computer;

storing said first and second instantiations of [said] at least one
said index in at least one of the data storage systems;

comparing at least one of the data sets linked to at least one of said
instantiated indexes to at least another of the data sets linked to at
least another of said instantiated indexes by means of the
programmed computer; and

2007-1539 4
 applying the output of said comparing to at least one of the output
devices.

Id. col.1 l.23-col.2 l.10 (brackets indicating deletions and emphasis indicating additions

made by amendment).

The infringement action resumed after the conclusion of the reexamination

proceeding. Distributive argued that the amendments during reexamination

substantively changed the claims and resulted in an improper broadening of claim

scope. The district court agreed and found that the ’798 patent was substantively

changed during reexamination in two respects. Jan. 25 Op. at 17. First, the district

court found that the amendment from “said at least one index” to “at least one said

index” broadened the scope of claim 1. Id. at 10-13. Second, the district court found

that the amendment deleting the “instantiating” step and replacing it with two steps—

“first instantiating” and “second instantiating”—substantively changed the claim by

narrowing it. Id. at 16. The district court granted summary judgment of invalidity in

favor of Distributive. July 12 Op. at 4, 7.

Predicate appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1)

(2000).

II. DISCUSSION

A. Amendment of “said at least one index” to “at least one said index”

Under 35 U.S.C. § 305, “[n]o proposed amended or new claim enlarging the

scope of a claim of the patent will be permitted in a reexamination proceeding.” Claims

that are impermissibly broadened during reexamination are invalid, and “a violation of

35 U.S.C. § 305 is an invalidity defense in a patent infringement action.” Quantum

Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995). “Whether amendments

2007-1539 5
made during reexamination enlarge the scope of a claim is a matter of claim

construction, which this court reviews de novo.” Creo Prods., Inc. v. Presstek, Inc., 305

F.3d 1337, 1344 (Fed. Cir. 2002).

The district court concluded that shifting of the word “said” in the “instantiating”

step of claim 1 broadened the claim’s scope. Jan. 25 Op. at 10, 13. In the claim, the

first step of both the original and the amended versions requires “generating . . . at least

one hierarchical index.” ’798 patent, Reexamination Certificate, col.1 ll.30-31. In the

original claim, there is an “instantiating” step that requires “instantiating said at least one

index.” Id. col.1 l.39 (emphasis added). In the amended claim, each instantiation step

requires “instantiating at least one said index.” Id. col.1 l.41, l.43 (emphasis added).

The district court construed “said” to have its ordinary meaning of

“aforementioned,” and therefore reasoned that “said at least one index” of the original

claim must be the index or indexes that are generated in the “generating” step. Jan. 25

Op. at 11. The district court reasoned that, because the antecedent of “said at least one

index” in the “instantiating” step is the “at least one index” generated in the “generating”

step, all of the indexes that are generated in the “generating” step must be instantiated

in the “instantiating” step. Id. at 12. The district court then concluded that, by contrast,

the amended claim language—“instantiating at least one said index”—did not require

instantiation of all generated indexes. Id. The district court reasoned that, in the

amended claim, “at least one said index” refers to at least one of the indexes generated

in the “generating” step, but not necessarily all of the generated indexes. Thus, the

district court concluded that, after amendment, “[n]o longer are all of the generated . . .

indexes required to be instantiated.” Id. If four indexes are generated in the

2007-1539 6
“generating” step, only one of those indexes would have to be instantiated in each

“instantiating” step. Id. In the district court’s words:

[I]f a third-party’s program generated four indexes, stored four indexes,
instantiated only two of those indexes, stored the results of those
instantiations and then compared those results, the program would not
violate a patent with the terms of original claim 1, but would violate a
patent with the terms of amended claim 1. Hence, the amendments to
claim 1 broaden the scope of the patent, and therefore constitute a
substantive change.

Id. at 13.

In analyzing the breadth of the claim before and after amendment, the district

court was correct to ask whether any conceivable process would infringe the amended

claim, but not infringe the original claim. See Quantum, 65 F.3d at 1582 n.4 (“The test

for determining whether a reexamined claim is broader than an original claim under 35

U.S.C. § 305 is the same as that in 35 U.S.C. § 251, last paragraph, for determining

whether reissue claims filed more than two years after issuance of the original patent

are broader than the original claims.”); Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360,

1374 (Fed. Cir. 2006) (“A claim of a reissue application is broader in scope than the

original claims if it contains within its scope any conceivable apparatus or process which

would not have infringed the original patent. A reissue claim that is broader in any

respect is considered to be broader than the original claims even though it may be

narrower in other respects.” (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183

F.3d 1369, 1374 (Fed. Cir. 1999))). But the district court’s analysis in considering its

hypothetical infringing process was flawed.

The district court described its hypothetical infringing process as a process that

“generated four indexes, stored four indexes, instantiated only two of those indexes,

2007-1539 7
stored the results of those instantiations and then compared those results.” Jan. 25 Op.

at 13. For illustrative purposes, we depict this hypothetical infringing process as follows:

Hypothetical Infringing Process Illustration
generating four indexes
A B C D

storing four indexes
A B C D

instantiating only two of those
indexes A B C D

storing the results of those
instantiations A B C D

comparing the results
A B C D

This hypothetical process plainly infringes the amended claim. The “generating

. . . at least one hierarchical index” step of the amended claim is met by generating

indexes A, B, C, and D. The “storing said at least one index” step is met by storing

indexes A, B, C, and D. The “first instantiating at least one said index” step is met by

instantiating index A. The “second instantiating at least one said index” step is met by

instantiating index B. The “storing said first and second instantiations of at least one

said index” step is met by storing the instantiations of indexes A and B. And the

“comparing” step is met by comparing the data sets linked with A to the data sets linked

with B.

Contrary to the conclusion reached by the district court, the hypothetical process

also infringes the original claim. The “generating . . . at least one hierarchical index”

step is met by generating indexes A and B. Although the accused process also

2007-1539 8
generates two additional indexes—C and D—those indexes are extraneous and do not

affect the infringement analysis because the claim is an open-ended “comprising” claim.

See, e.g., Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“The

transition ‘comprising’ in a method claim indicates that the claim is open-ended and

allows for additional steps.” (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d

1364, 1368 (Fed. Cir. 2003))). The “storing said at least one index” limitation is met by

storing indexes A and B—the “said” indexes that were generated in the generating step.

Again, the fact that the hypothetical process also stores indexes C and D does not

affect the infringement analysis. The “instantiating said at least one index” step is met

by instantiating indexes A and B—the “said” indexes that were generated in the

generating step. The “storing said instantiation of said at least one index” step is met by

storing the instantiations of indexes A and B. And the “comparing” step is met by

comparing the data sets linked with A to the data sets linked with B.

Thus, the hypothetical infringing process described by the district court would

infringe not only the claim as amended, but also the original claim. The hypothetical

process does not demonstrate that the claim was broadened. Moreover, we can

imagine no conceivable process—and the parties have identified none—that would

infringe the amended claim but would not infringe the original claim. We therefore

conclude that the amendment of “said at least one index” to “at least one said index” did

not broaden the scope of claim 1.

B. Amendment of “instantiating” to “first instantiating” and “second instantiating”

Although our conclusion concerning the shifting of “said” alone requires that we

reverse the district court’s grant of summary judgment, we nonetheless address the

district court’s conclusion that the amendment of “instantiating” to “first instantiating” and

2007-1539 9
“second instantiating” was a substantive change. We do so because that issue will

continue to be important to the ultimate disposition of the case on remand. See

Commonwealth Scientific & Indus. Research Organisation v. Buffalo Tech. (USA), Inc.,

No. 2007-1449, slip op. at 4 (Fed. Cir. Sept. 19, 2008) (addressing issue of infringement

after vacating and remanding on issue of validity, because infringement issue “will

continue to be important to the ultimate disposition of the case”).

The district court did not find, and Distributive does not argue, that the

amendment of “instantiating” to “first instantiating” and “second instantiating” broadened

the scope of claim 1 of the ’798 patent. Rather, the district court found that the

amendment effected a “substantive change” by narrowing the claim. Jan. 25 Op. at 16.

Under 35 U.S.C. § 307, a claim that is amended in reexamination has the same effect

as a claim that is amended in reissue proceedings under 35 U.S.C. § 252. 35 U.S.C.

§ 307(b) (2000) (“Any proposed amended or new claim determined to be patentable

and incorporated into a patent following a reexamination proceeding will have the same

effect as that specified in section 252 of this title for reissued patents on the right of any

person who made, purchased, or used within the United States, or imported into the

United States, anything patented by such proposed amended or new claim, or who

made substantial preparation for the same, prior to issuance of a certificate under the

provisions of subsection (a) of this section.”). Correspondingly, under 35 U.S.C. § 252,

a reissued patent is enforceable against infringing activity that occurred after the

issuance of the original patent, “to the extent that its claims are substantially identical” to

the claims of the original patent. Thus, “[u]nless a claim granted or confirmed upon

reexamination is identical to an original claim, the patent can not be enforced against

2007-1539 10
infringing activity that occurred before issuance of the reexamination certificate.” Bloom

Eng’g Co., Inc. v. N. Am. Mfg. Co., Inc., 129 F.3d 1247, 1250 (Fed. Cir. 1997).

“‘Identical’ does not mean verbatim, but means at most without substantive change. . . .

An amendment that clarifies the text of the claim or makes it more definite without

affecting its scope is generally viewed as identical . . . .” Id.

The district court concluded that the amendment replacing the step of

“instantiating said at least one index” with steps of “first instantiating at least one said

index” and “second instantiating at least one said index” changed the scope of claim 1.

Jan. 25 Op. at 16. Our review is de novo. Laitram Corp. v. NEC Corp., 163 F.3d 1342,

1346-47 (Fed. Cir. 1998).

As the district court correctly pointed out, the original “instantiating” step on its

face requires only a single instantiation, whereas the amended “instantiating” steps

clearly require two instantiations. Jan. 25 Op. at 14. However, as the district court also

acknowledged, the original “comparing” step required “comparing at least one of the

data sets linked to at least one of said instantiated indexes to at least another of the

data sets linked to at least another of said instantiated indexes.” ’798 patent col.14

ll.17-20 (emphases added). Thus, even in the original claim, the “comparing” step

requires two instantiations. This is entirely consistent with the specification’s description

of the “instantiating” and “comparing” steps. See id. col.3 l.65-col.4 l.2 (“Once this

formatted hierarchical index is created, the index is selectively instantiated at different

occasions. The present invention also may include a comparing step, where the

indexed data can be compared and analyzed to produce control data, if desired.”

(emphasis added)).

2007-1539 11
 Despite the “comparing” step’s requirement of two instantiations, the district court

found that the amendment changed the scope of the claim for two reasons. First, the

district court reasoned that, in the original claim, only one instantiation might occur

during the “instantiating” step, then that instantiation would be compared with a

previously stored instantiation, which was generated outside of the claimed process.

Jan. 25 Op. at 15. But critically, the “comparing” step does not compare data sets

linked to “an instantiated index” with data sets linked to “another instantiated index”; it

compares data sets linked to “one of said instantiated indexes” with data sets linked to

“another of said instantiated indexes.” The “said instantiated indexes” must be

instantiated indexes with an antecedent basis elsewhere in the claim—namely, the

indexes that are instantiated during the “instantiating” step. See, e.g., Baldwin Graphic

Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1343 (Fed. Cir. 2008) (noting that claim terms

using “said” are “anaphoric phrases, referring to the initial antecedent phrase”); see also

Jan. 25 Op. at 11 (district court construing “said” to have its ordinary meaning of

“aforementioned”). Thus, the district court was incorrect to conclude that the

instantiated indexes in the “comparing” step could be indexes other than those

generated as part of the claimed process.

Second, the district court reasoned that the “comparing” step might allow a

comparison between data sets linked to two different instantiations of the same index,

rather than two instantiations of different indexes. Jan. 25 Op. at 15. We agree that in

both the original and the amended claim, the “comparing” step permits a comparison

between data sets linked to either multiple instantiations of the same index, single

instantiations of multiple indexes, or some combination. But the “comparing” step still

2007-1539 12
requires that at least two instantiations (either of the same index, or of different indexes)

be performed, because of the language “one of said instantiated indexes” and “another

of said instantiated indexes.” There is nothing in the amended claim that suggests that

the “first instantiating” and “second instantiating” steps must be performed on data

linked to the same index; likewise, there is nothing in the amended claim that suggests

that the “first instantiating” and “second instantiating” steps must be performed on data

linked to different indexes. We therefore find the district court’s reasoning

unpersuasive.

We conclude that the amendment of the “instantiating” step to the “first

instantiating” and “second instantiating” steps did not result in a substantive change to

claim 1 of the ’798 patent. The original and amended claims are “identical” for purposes

of § 252 and, correspondingly, § 307. See Bloom, 129 F.3d at 1250.

III. CONCLUSION

For the foregoing reasons, the district court’s grant of summary judgment of

invalidity is reversed. We remand for further proceedings consistent with this opinion.

REVERSED and REMANDED

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