03/13/14

Superior v Masaba: Claim Construction Appeal Remanded When Insufficient Information on How Claim Construction Affected Infringement Analysis


Category: Claim Construction   
 
 
 
By: Abby Lin, Contributor  
 
TitleSuperior Ind., LLC v. Masaba, Inc., No. 2013-1302 (Fed. Cir. Jan. 16, 2014).
Issue“[The District Court’s opinion and order] ”did not explain how the construction of any particular term affected the infringement analysis. [Can Superior appeal claim construction?]” Superior, at *2(text added).
Holding:“Superior expressly reserved the right to challenge the district court’s claim construction on appeal, and does so now. But because it is unclear from the record how the disputed constructions relate to infringement, we vacate the district court’s judgment and remand for further clarification.” Id. at *2.
 
Procedural History: “Following the district court’s construction of several terms in [five patents that Appellant Superior asserted against Appellee Masaba], Superior conceded that it could not prevail on its infringement claims against Masaba and successfully moved for summary judge of non-infringement and dismissal of Masaba’s invalidity counterclaims. [. . .] Superior expressly reserved the right to challenge the district court’s claim construction on appeal, and does so now.” Superior, at *2(text added).
 
 
Legal Reasoning (Clevenger, Rader, Reyna)
Background
Legal Standard“When a judgment that comes to us on appeal suffers from an ambiguity on the grounds for decision, we have the authority to remand for further clarification. See Bush v. Palm Beach County Canvassing Bd., 531 U.S. 70, 78 (2000). In particular, when asked to review a district court’s claim constructions, we have remanded when the record provided an insufficient basis for meaningful review. Jang v. Boston Scientific Corp., 532 F.3d 1330 (Fed. Cir. 2008); Nazomi Commc’ns, Inc. v. ARM Holdings, plc, 403 F.3d 1364, 1371-72 (Fed. Cir. 2005).”
Superior, at *5.
Analysis: Insufficient Information on How Claim Construction Affected Infringement Analysis
Similarities with Jang
"When the patentee in Jang constested the district court's claim construction on appeal, we determined that the court's judgment suffered from two ambiguities justifying remand."  Superior, at *6. "The case before us implicates the same two concerns that justified remand in Jang." Id.
First, [in Jang] we noted that 'it was impossible to discern from the stipulated judgment which of the district court's claim construction ruling would actually affect the issue of infringement.' We explained that this presented a 'risk [of] rendering an advisory opinion as to claim construction issues that do not actually affect the infringment controversey,' a risk that was of significant concern given that Article III tribunals ahve no jurisdiction to render such opinions. Id. at*6 (internal citations omitted, text added).
Second [in Jang], we expressed our concern that 'the stipulated judgment provide[d] no factual context for the claim construction issues presented by the parties.' We explained that this missing context made it difficult for us to understand the issues and provide meaningful review. Id. at*6 (internal citations omitted, text added).
No Guidance for Claim Construction
“[Here, in Superior,] [i]t is [also] impossible for us to determine from [the district court’s opinion, which lacks any explanation of claim construction, and the parties’ limited information about infringement presented in briefing and oral argument] which of the thirteen contest claim constructions would ‘actually affect’ the infringement analysis. This poses a risk that our review of at least some of these constructions would amount to an advisory opinion.” Id. at*7.
“As in Jang [in Superior's case], there is nothing in the district court’s summary judgment order and opinion that ‘provides any context with respect to how the disputed claim construction rulings relate to the accused products.’ . . . A remand for clarification is necessary to enable this court properly to exercise its appellate jurisdiction.” Id. at*8-9 (internal citations omitted, text added).
Conclusion
“For the reasonable provided above, we vacate the district court’s judgment of February 7, 2013 granting summary judgment of non-infringement to Masaba and remand for further proceedings consistent with this opinion.” Superior, at *9.
 
 
 
 
 
 
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