IP Law News - Predicate Logic, Inc. v. Distributive Software, Inc., Fed. Cir. 2008.

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Predicate Logic, Inc. v. Distributive Software, Inc., Fed. Cir. 2008.

By: Karin C. Khan

Predicate Logic, Inc. (“Predicate”) sued Distributive Software, Inc. (“Distributive) for infringement of its U.S. Patent No. 5,930,798 (the “’798 patent”) for measuring and analyzing technologies for use in software development. At some point during the litigation, Distributive requested that the ‘798 patent be reexamined, which resulted in the amendment of certain claims. After reexamination, Distributive brought a motion for summary judgment. Distributive argued that under 35 U.S.C. § 305, the amended claims were invalid because they were improperly broadened, and such was granted by the district court.

The ‘798 patent essentially involves forecasting software development by generating a hierarchical index that is then instantiated. Independent claim 1 of the ‘798 patent was at issue due to the amendment made during the reexamination. In particular, the amendment to Claim 1 that was discussed in detail in this opinion is as follows: “ … storing said first and second instantiations of [said] at least one said index in at least one of the data storage systems … .” In other words, the claim language was changed from “said at least one index” to “at least one said index.”

Based on the original claim language, the district court interpreted “said at least one index” as meaning that all of the generated indexes must also be instantiated. Based on the amended claim language, the district court interpreted “at least one said index” as meaning that not all of the generated indexes had to be instantiated. When the district court determined that the amended claim language was impermissibly broadened, it did so under a hypothetical situation involving a third-party’s program. In this hypothetical, a third-party’s program would generate four indexes, store the four indexes, instantiate two of the indexes, store the instantiation results, and then compare those results. The district court reasoned that no infringement would occur under the original claim language, but would occur under the amended claim language, thus rendering the amended language as impermissibly broadened.

However, the Court of Appeals viewed this hypothetical differently. First of all, the Court noted that the claim is an open-ended “comprising” claim, meaning that the “comprising” term allows for additional steps in the claim. Accordingly, even if the hypothetical provided for generating more than two additional indexes, all of the limitations of the original claim language were still met based on each step of the hypothetical used by the district court. Furthermore, the Court could not hypothesize any other situation in which the original claim language would not also be infringed. Based on this conclusion, the Court reversed the district court’s grant of summary judgment of invalidity.

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