{"id":2035,"date":"2018-04-26T12:18:28","date_gmt":"2018-04-26T16:18:28","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2035"},"modified":"2018-04-27T01:04:31","modified_gmt":"2018-04-27T05:04:31","slug":"the-old-practicing-the-prior-art-defense","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2035","title":{"rendered":"The Old “Practicing the Prior Art” Defense"},"content":{"rendered":"

In 01 Communique Laboratory, Inc. v. Citrix Systems, Inc.<\/a>, [2017-1869] (April 26, 2018), the Federal Circuit affirmed the district court’s Order denying 01 Communique a new trial on the issue of infringement.<\/p>\n

The case involved U.S. Patent No. 6,928,479 on a\u00a0System Computer Product\u00a0and Method for Providing a Private Communication\u00a0Portal.\u00a0 The jury returned a split verdict.
\nIt concluded that Citrix had not established that\u00a0claims 24 and 45 were invalid, but that Communique had\u00a0not established that Citrix\u2019s GoToMyPC product infringed\u00a0those claims.\u00a0 01 Communique’s moved for a new trial\u00a0because Citrix\u00a0resorted to \u201ca well-known defendant\u2019s trick,\u201d known as the\u00a0\u201cpracticing the prior art defense.” which\u00a0\u201cwas improper, misleading, and devastatingly\u00a0prejudicial to the integrity of the trial.\u201d<\/p>\n

The Federal Circuit found that Citrix\u2019s infringement defense was firmly rooted in a
\nlimitation by limitation comparison between the asserted\u00a0claims and the GoToMyPC product.\u00a0 The Federal Circuit found that Citrix did\u00a0argued that under\u00a0the trial court\u2019s claim construction claims 24 and 45 were\u00a0valid, but not infringed, but that if\u00a0Communique attempted to expand the scope of its claims to include Citrix’s systems,\u00a0then the claims would be invalid in\u00a0light of the prior art.\u00a0 The Federal Circuit\u00a0has previously stated that \u201cthere is no \u2018practicing the\u00a0prior art\u2019 defense to literal infringement.\u00a0 The problem with such a defense is that it can potentially allow a defendant to skirt evidentiary hurdles and conflate the infringement and invalidity inquiries.\u00a0 While the\u00a0issue of whether asserted claims read on the prior art is relevant to the question of invalidity, “accused infringers are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a practicing prior art defense to literal infringement under the less stringent preponderance of the evidence standard.<\/p>\n

 <\/p>\n

While it is clear that\u00a0an accused infringer cannot defeat a claim of literal infringement or establish invalidity merely by pointing to similarities between an accused product and the prior art, this does not preclude a litigant from arguing that if a claim term must be broadly interpreted to read on an accused device, then this same broad construction will read on the prior art.\u00a0 The Federal Circuit found that Citrix\u00a0did not rest on an improper “practicing the prior art” defense, but instead correctly recognized that claim terms must be construed the same way for both invalidity and infringement.<\/p>\n

The Federal Circuit rejected the argument that comparisons between the accused device and the prior art is improper, and noted that any prejudice would be cured by the district court’s jury instructions.<\/p>\n

The Federal Circuit affirmed the denial of a new trial.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In 01 Communique Laboratory, Inc. v. Citrix Systems, Inc., [2017-1869] (April 26, 2018), the Federal Circuit affirmed the district court’s Order denying 01 Communique a new trial on the issue of infringement. The case involved U.S. Patent No. 6,928,479 on … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[16,77],"tags":[],"class_list":["post-2035","post","type-post","status-publish","format-standard","hentry","category-infringement","category-invalidity"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2035","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2035"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2035\/revisions"}],"predecessor-version":[{"id":2036,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2035\/revisions\/2036"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2035"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2035"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2035"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}