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Recent Cases
United States
Court of Appeals for the Federal Circuit
03-1007
AKAMAI TECHNOLOGIES,
INC.
and MASSACHUSETTS
INSTITUTE OF TECHNOLOGY,
Plaintiffs-Appellees,
v.
CABLE &
WIRELESS INTERNET SERVICES, INC.,
Defendant-Appellant,
and
KINETECH, INC.
Defendant.
Mark
T. Banner, Banner & Witcoff, Ltd., of Chicago,
Illinois, argued for
plaintiffs-appellees. With him
on the brief were Pamela B. Krupka, of Washington,
DC; and Aimee M. Boss, of Chicago,
Illinois.
Arthur
B. Wineburg, Pillsbury Winthrop LLP, of McLean,
Virginia, argued for defendant-appellant. With him on the brief were Susan
T. Brown, Daniel E. Yonan, of McLean,
Virginia, and Brian J. Beatus,
of Palo Alto, California. Of counsel were Brian Siritzky,
Pillsbury Winthrop, LLP, of McLean, Virginia;
and Eileen M. Herlihy and John T. Bennett, Palmer & Dodge LLP, of Boston,
Massachusetts.
Appealed from: United
States District Court for the District
of Massachusetts
Judge Rya W. Zobel
United States Court of Appeals for the Federal Circuit
03-1007
AKAMAI TECHNOLOGIES, INC.
and MASSACHUSETTS
INSTITUTE OF TECHNOLOGY,
Plaintiffs-Appellees,
v.
CABLE & WIRELESS INTERNET SERVICES, INC.,
Defendant-Appellant,
and
KINETECH, INC.
Defendant.
______________________
DECIDED: September 15, 2003
______________________
Before NEWMAN, GAJARSA, and
DYK, Circuit Judges.
Opinion for the court filed
by Circuit Judge GAJARSA.
Concurring-in-part and dissenting-in-part opinion filed by Circuit
Judge NEWMAN.
GAJARSA, Circuit Judge.
Defendant-Appellant,
Cable & Wireless Internet Services, Inc. ("C&W"), appeals
the orders of the United States District Court for the District of
Massachusetts: (1) denying C&W's motion for judgment as a matter of law
challenging the jury verdict that claims 1, 3, 5, and 9 of U.S. Patent No.
6,108,703 ("the '703 patent") are valid and infringed; and (2)
granting a permanent injunction based upon the jury verdict. Akamai Techs., Inc. v. Cable
& Wireless Internet Serv., Inc., No. 00-CV-11851 (D. Mass.
May 24 and Aug. 21, 2002). Because claims 1 and 3, properly
construed, are anticipated by U.S. Patent No. 6,185,598 ("the '598
patent") and are therefore invalid under 35 U.S.C.
§ 102, we reverse the district court's denial of C&W's motion
for judgment as a matter of law with respect to claims 1 and 3 and vacate
that portion of the permanent injunction. We affirm the district court's
denial of C&W's motion for judgment as a matter of law with respect to
the validity of claims 5 and 9 because those claims, properly construed,
are not invalid. We also affirm
the district court's denial of C&W's motion for judgment as a matter of
law with respect to infringement of claim 9 because substantial evidence
supports the jury's verdict of infringement. In view of our holding, we
remand to the district court to review the scope of the permanent
injunction.
I. BACKGROUND
The present appeal concerns
technology for alleviating Internet congestion. To better understand the present
dispute, a general overview of the relevant technology follows. Generally, people share information,
i.e., "content," over the Internet through web pages. To look at web pages, a computer
user accesses the Internet through a browser, e.g., Microsoft Internet
Explorer® or Netscape Navigator®. These
browsers display web pages stored on a network of servers commonly referred
to as the Internet. To access
the web pages, a computer user enters into the browser a web page address,
or uniform resource locator ("URL"). The URL is typically a string of
characters, e.g., www.fedcir.gov. This URL has a corresponding unique
numerical address, e.g., 156.119.80.10, called an Internet Protocol
("IP") address.
When a user enters a URL into the browser, a domain name service
("DNS") searches for the corresponding IP address to properly
locate the web page to be displayed. The DNS is administered by a separate
network of computers distributed throughout, and connected to, the
Internet. These computers are
commonly referred to as DNS servers.
In short, a DNS server translates the URL into the proper IP
address, thereby informing the user's computer where the host server for
the web page www.fedcir.gov is located, a process commonly referred to as
"resolving."
The user's computer then sends the web page request to the host
server, or origin server. An
origin server is a computer associated with the IP address that receives
all web page requests and is responsible for responding to such
requests. In the early stages
of the Internet, the origin server was also the server that stored the
actual web page in its entirety.
Thus, in response to a request from a user, the origin server would
provide the web page to the user's browser. Internet congestion problems quickly
surfaced in this system when numerous requests for the same web page were
received by the origin server at the same time.
This problem is exacerbated
by the nature of web pages. A
typical web page has a Hypertext Markup Language ("HTML") base
document, or "container" document, with "embedded
objects," such as graphics files, sound files, and text files. Embedded objects are separate
digital computer files stored on servers that appear as part of the web
page. These embedded objects
must be requested from the origin server individually. Thus, each embedded object often has
its own URL. To receive the
entire web page, including the container document and the embedded objects,
the user's web browser must request the web page and each embedded
object. Thus, for example, if a
particular web page has nine embedded objects, a web browser must make ten
requests to receive the entire web page: one for the container document and
nine for the embedded objects.
There have been numerous
attempts to alleviate Internet congestion, including methods commonly
referred to as "caching," "mirroring," and
"redirection."
"Caching" is a solution that stores web pages at various
computers other than the origin server. When a request is made from a web
browser, the cache computers intercept the request, facilitate retrieval of
the web page from the origin server, and simultaneously save a copy of the
web page on the cache computer.
The next time a similar request is made, the cache computer, as
opposed to the origin computer, can provide the web page to the user. "Mirroring" is
another solution, similar to caching, except that the origin owner, or a
third party, provides additional servers throughout the Internet that
contain an exact copy of the entire web page located on the origin
server. This allows a company,
for example, to place servers in Europe to handle
European Internet traffic.
"Redirection" is
yet another solution in which the origin server, upon a request from a
user, redirects the request to another server to handle the request. Redirection also often utilizes a
process called "load balancing," or "server
selection." Load balancing
is often effected through a software package designed to locate the optimum
origin servers and alternate servers for the quickest and most efficient delivery
and display of the various container documents and embedded objects. Load balancing software
locates the optimum server location based on criteria such as distance from
the requesting location and congestion or traffic through the various
servers.
Load balancing software was
also known prior to the '703 patent. For example, Cisco Systems,
Inc. marketed and sold a product by the name of “Distributed
Director, “ which included server selection software that located the
optimum server to provide requested information. The server selection software could
be placed at either the DNS servers or the content provider
servers. The Distributed
Director product was disclosed in a White Paper dated February 21, 1997 and in U.S. Patent No.
6,178,160 ("the '160 patent"). Both the White Paper and the '160
patent are prior art to the '703 patent. The Distributed Director product,
however, utilized this software in conjunction with a mirroring system in
which a particular provider's complete web page was simultaneously stored
on a number of servers located in different locations throughout the
Internet. Mirroring had many
drawbacks, including the need to synchronize continuously the web page on
the various servers throughout the network. This added extra expenses and
contributed to congestion on the Internet.
Massachusetts Institute of
Technology is the assignee of the '703 patent directed to a "global
hosting system" and methods for decreasing congestion and delay in
accessing web pages on the Internet.
Akamai Technologies, Inc. is the exclusive licensee of the '703
patent. The '703 patent was filed on May 19, 1999, and issued on August 22, 2000. The '703 patent discloses and claims
web page content delivery systems and methods utilizing separate sets of
servers to provide various aspects of a single web page: a set of content
provider servers (origin servers), and a set of alternate servers. The origin servers provide the
container document, i.e., the standard aspects of a given web page that do
not change frequently. The
alternate servers provide the often changing embedded objects. The '703 patent also discloses
use of a load balancing software package to locate the optimum origin
servers and alternate servers for the quickest and most efficient delivery
and display of the various container documents and embedded objects.
Independent claim 1, which is
representative, reads:
1. A
distributed hosting framework operative in a computer network in which
users of client machines connect to a content provider server, the
framework comprising:
a routine for
modifying at least one embedded object URL of a web page to include a
hostname pretended to a domain name and path;
a set of
content servers, distinct from the content provider server, for hosting at
least some of the embedded objects of web pages that are normally hosted by
the content provider server;
at least one
first level name server that provides a first level domain name service
(DNS) resolution; and
at least one
second level name server that provides a second level domain name service
(DNS) resolution;
wherein in
response to requests for the web page, generated by the client machines the
web page including the modified embedded object URL is served from the
content provider server and the embedded object identified by the
modified embedded object URL is served from a given one of the content
servers as identified by the first level and second level name servers.
'703 patent, col. 17, ll. 17-37 (emphases added).
C&W
is the owner, by assignment, of the '598 patent. The '598 patent is directed to similar
systems and methods for increasing the accessibility of web pages on the
Internet. The '598 patent was
filed on February 10, 1998, and issued on February 6, 2001. Thus the '598 patent is prior art to
the '703 patent pursuant to 35 U.S.C. § 102(e). C&W marketed and sold products
embodying the '598 patent under the name "Footprint." The relevant difference between the
disclosure of the '598 patent and Akamai's preferred embodiment disclosed
in the '703 patent is the location of the load balancing software. Akamai's preferred embodiment has
the load balancing software installed at the DNS servers, while the '598
patent discloses installation of the load balancing software at the content
provider, or origin, servers.
The '598 patent does not disclose or fairly suggest that the load
balancing software can be placed at the DNS servers. It is now understood that placement
of the software at the DNS servers allows for load balancing during the
resolving process, resulting in a more efficient system for accessing the
proper information from the two server networks. Indeed, C&W later created a new
product, "Footprint 2.0," the systems subject to the permanent
injunction, in which the load balancing software was installed at the DNS
servers as opposed to the content provider servers. Footprint 2.0 replaced C&W's
Footprint product.
On September 13, 2000, Akamai
sued C&W seeking an injunction and damages for infringement of the '703
patent. Among other things,
Akamai asserted that C&W's Footprint 2.0 content delivery network
infringed apparatus claims 1, 3, 5, and 9 and method claims 17, 18, and 22
of the '703 patent.
C&W answered the
Complaint alleging that Footprint 2.0 did not infringe the claims of the
'703 patent and that the claims of the '703 patent were invalid under
35 U.S.C. §§ 102 and 103(a). In particular, C&W asserted that
the '598 patent anticipated the asserted claims and that the asserted
claims were obvious in light of the '598 patent in combination with Cisco's
Distributed Director product.
The district court conducted
a Markman hearing and entered its order construing the disputed
terms of the '703 patent (as well as two other patents that are not at
issue in this appeal). The
district court stated that "[a]t the time of the Markman hearing,
the parties . . . did not appear to have a common understanding as to which
additional claims were still in dispute. The parties' written and oral
presentations offer little assistance in this regard. I therefore limit my ruling to the
terms above." Notably, the
parties did not appear to dispute the construction of any terms in the
"wherein" clause of claim 1.
After a 19-day jury trial,
the jury determined that C&W infringed apparatus claims 1, 3, 5, and 9
and method claims 17, 18, and 22.
The jury upheld the validity of apparatus claims 1, 3, 5, and
9. The jury invalidated claims
17, 18, and 22 under 35 U.S.C. §§ 102 and 103(a) as either
anticipated by the '598 patent or obvious in light of the '598 patent in
view of Cisco's Distributed Director product. C&W filed its motion for
judgment as a matter of law in February 2002 asserting that claims 1, 3, 5,
and 9 were invalid and/or not infringed. The district court denied that
motion and permanently enjoined C&W from "making, using, selling,
offering for sale, or importing into the United States the patented
inventions claimed in claims 1, 3, 5, and 9 of the '703 patent," in an
Order that "extended to Footprint 2.0 service, as configured and
described at trial."
C&W appealed the denial
of its motion for judgment as a matter of law and the district court's
entry of a permanent injunction on the bases that claim 9 was not infringed
and that claims 1, 3, 5 and 9 were invalid for anticipation and/or
obviousness. C&W did not
appeal the infringement of claims 1, 3, and 5. We have jurisdiction over this
appeal pursuant to 28 U.S.C. §§ 1292(a), (c)(1), and
1295(a)(1).
II. DISCUSSION
We
review the denial of a motion for judgment as a matter of law following a
jury verdict by reapplying the district court's standard of review. Catalina Lighting, Inc. v. Lamps
Plus, Inc., 295 F.3d 1277, 1284 (Fed. Cir. 2000); Stryker Corp. v.
Davol, Inc., 234 F.3d 1252, 1257 (Fed. Cir. 2000); Tec Air, Inc. v.
Denso Mfg., 192 F.3d 1353, 1357 (Fed. Cir. 1999). Thus, we review claim
construction, an issue of law, de novo. Sibia Neurosciences, Inc. v.
Cadus Pharm. Corp., 225 F.3d 1349, 1354 (Fed. Cir. 2000).
With regard to factual
findings, we must presume that the jury resolved all factual disputes in
favor of the prevailing party, and we must leave those findings undisturbed
as long as they are supported by substantial evidence. Id. A factual finding is supported by
substantial evidence if a reasonable jury could have found in favor of the
prevailing party in light of the evidence presented at trial. Tec Air, 192 F.3d at
1358. "Substantial
evidence is more than a mere scintilla. It means such relevant evidence as
a reasonable mind might accept as adequate to support a
conclusion." Consol.
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Thus, substantial evidence review
involves an examination of the record as a whole, taking into consideration
evidence that both justifies and detracts from the decision of the fact-finder. In re Gartside, 203 F.3d
1305, 1312 (Fed. Cir. 2000); Nat’l Presto Indus., Inc. v. W. Bend
Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996) (holding that a jury verdict
must be sustained if it is supported by substantial evidence based on a
review of the entirety of the record).
In reviewing the record, we must draw all reasonable inferences in
favor of the prevailing party, and not make credibility determinations or
substitute our view of the conflicting evidence for that of the jury. Sibia, 225 F.3d at 1355
(citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546
(Fed. Cir. 1983)). If, however,
after reviewing all of the evidence in a light most favorable to the
prevailing party, this court is convinced that a reasonable jury could not
have found in that party's favor, we must reverse the denial of a motion
for judgment as a matter of law.
Id.
A. Anticipation
C&W appeals the jury
finding that claims 1 and 3 were valid as not anticipated by the disclosure
of the '598 patent. The first
step in any invalidity analysis is claim construction, an issue of law this
court reviews de novo.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed.
Cir. 1998) (en banc). The second step, determining
whether a prior art reference discloses each and every limitation of the
claim expressly or inherently, Scripps Clinic & Research Found. v.
Genentech, Inc., 927 F.2d 1565, 1576-77 (Fed. Cir. 1991), is a factual
question reviewed for substantial evidence. Eaton Corp. v. Rockwell Int'l
Corp., 323 F.3d 1332, 1343 (Fed. Cir. 2003). This factual question is contingent
upon the proper claim construction.
Id. at 1344.
A claim limitation is inherent in the prior art if it is
necessarily present in the prior art, not merely probably or possibly
present. Rosco v. Mirror
Lite, 304 F.3d 1373, 1380 (Fed. Cir. 2002). "[T]he dispositive question
regarding anticipation is whether one skilled in the art would reasonably
understand or infer from the prior art reference's teaching that every
claim [limitation] was disclosed in that single reference." Dayco
Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir.
2003) (internal quotation marks and alterations omitted).
Through trial and on appeal,
the parties have narrowed the disputed issues of validity to a single point
of contention—the placement of the load balancing software at either
the DNS servers or the origin server. Therefore, our initial focus
in the anticipation analysis is on the construction of claims 1 and 3, in
particular whether claims 1 and 3 require the presence of load
balancing software at the DNS servers.
The issue before us is thus a relatively self-contained one. On the one hand, if claims
1 and 3 require load balancing at the DNS servers, the claims are not
anticipated. On the other hand,
if the claims do not require this limitation, they are anticipated by the
'598 patent. The only disputed
limitation of claims 1 and 3 reads:
wherein in response to requests
for the web page, generated by the client machines the web page including
the modified embedded object URL is served from the content provider server
and the embedded object identified by the modified embedded object URL
is served from a given one of the content servers as identified by the
first level and second level name servers.
'703 patent, col. 17, ll. 31-37 (emphases added).
Claim 3 is dependent upon
independent claim 1 and includes the following additional limitation.
3. The
hosting framework as described in claim 1 further including a redundant
second level name server.
Id., col. 17, ll. 40-41.
Akamai contends that the '598
patent differs from claims 1 and 3 of the '703 patent in the placement of
the load balancing software. Indeed, in its brief on appeal,
Akamai stated:
The
significant difference between the prior art '598 patent and the
'703 patent claims on appeal was acknowledged and admitted by
everyone throughout the trial. . . . In particular, C&W counsel told
the jury the difference involves the fact that selection of the best
computer server to deliver the embedded objects of the web page is done in
the '598 prior art patent by "software . . . located at the origin
server" whereas selection of the best computer server to deliver the
content is done in the '703 patent "by software located at the DNS . .
. ."
C&W argues that the location of the load balancing
software is not a limitation in claims 1 and 3, and in the alternative,
that while the '598 patent does not explicitly disclose the placement of
load balancing software at the DNS servers, it is nevertheless inherent in
the Internet and the '598 patent.
We
agree that claims 1 and 3 do not include a load balancing limitation. While the written description
unquestionably contemplates the preferred location of the load balancing
software, claims 1 and 3 do not expressly require its presence. To support its reading of
independent claim 1, Akamai points only to the term "identifying"
in the "wherein" clause of claim 1 which states:
wherein in response to requests
for the web page, generated by the client machines the web page including
the modified embedded object URL is served from the content provider server
and the embedded object identified by the modified embedded object URL
is served from a given one of the content servers as identified by the
first level and second level name servers.
This language, however, requires only that the
embedded object is "identified by the modified embedded object
URL" and is "served from a given one of the content servers as
identified by the first and second level name servers." The plain meaning of the claim
language does not require any load balancing mechanism. Instead, it simply requires the
embedded object to be served from "the content servers as identified
by the first level and second level name servers." Load balancing, if required at
all, could be at either the DNS servers or the content provider
server. The ordinary meaning of
the term "identifying" in claims 1 and 3 covers standard DNS
resolution, without any sort of load balancing. Absent evidence that a
"patentee unequivocably imparted a novel meaning to [the] term[] or
expressly relinquished claim scope during prosecution," we give the
limitation its full ordinary and customary meaning. Omega Eng'g, Inc. v. Raytek Corp.,
334 F.3d 1314, 1323 (Fed. Cir. 2003); Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325-26 (Fed. Cir. 2002); CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed. Cir. 2002); Renishaw
PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir.
1998) ("Absent a special and particular definition created by the
patent applicant, terms in a claim are to be given their ordinary and
accustomed meaning.").
The only question that
remains is whether the written description or the prosecution history
unequivocally shows that the inventors imparted a novel meaning to the term
"identifying" to include load balancing. Omega Eng’g, 334 F.3d
at 1323; Teleflex, 299 F.3d at 1325-26. The written
description does not specifically define the term "identifying." Rather, the discussion with respect
to load balancing focuses on the DNS servers as performing "special
function[s]," e.g., load balancing functions, without any reference to
the term "identifying."
See, e.g., '703 patent, col. 9, ll. 31-48. Similarly, the parties have pointed
to nothing in the prosecution history with respect to the term
"identifying."
Akamai's only evidence that supports its special definition of the
term "identifying" is the testimony of one of the inventors,
Mr. Farber, of the '598 patent.
Mr. Farber stated that: "the DNS in our system are a
little different because we did the step of identifying
. . . which repeater should be used by the browser as part
of the, using [sic] the HTTP method instead of the DNS method." This extrinsic evidence is not the
unequivocal evidence, Omega Eng’g, 334 F.3d at 1323,
indicating the term "identifying" should take anything other than
its ordinary and accustomed meaning.
While this possibly suggests that the inventors believed the "identifying"
step included a load balancing function, "what the patentee subjectively
intended his claims to mean is largely irrelevant to the claim's objective
meaning and scope."
Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed.
Cir. 2000). It is also not
testimony that clearly supports the proposition that the term
"identifying" has a special meaning to one of ordinary skill in
the art.
Thus claim 1, as properly
construed, does not include the limitation of the placement of the load
balancing mechanism. The
parties agree that the '598 patent discloses all the remaining limitations
of claim 1. Because claim 1
does not require exact placement, it is therefore invalid as anticipated by
the '598 patent.
Claim 3 similarly does not
require placement of the load balancing software at the DNS servers. Claim 3 only includes the
additional limitation that the hosting framework as described in claim 1
further includes "a redundant second level name server." On appeal, Akamai's primary argument
echoes that of claim 1, namely that the load balancing software is located
at the DNS servers. Akamai's
only separate argument with respect to claim 3 is that "[b]ecause
[the] '598 patent did not even mention hierarchical DNS (i.e., more than
one level), clearly the jury was entitled to reject the notion that [the]
'598 [patent] also anticipated claim 3." This additional argument,
however, fails to address C&W's contention that hierarchical DNS is inherent
in any Internet system. Indeed,
C&W proffered documentary evidence and testimony at trial that
redundant domain name servers are inherent in any Internet-based
application. See Dayco,
329 F.3d at 1369. Akamai points
to no evidence whatsoever that contradicts the evidence presented to the
jury at trial. Accordingly, we
hold that any inference in favor of Akamai relating to the redundant second
level server in claim 3 is unsupported by substantial evidence. The addition of a redundant second
level DNS server does not save the validity of dependent claim 3. Claim 3 is therefore also invalid
under 35 U.S.C. § 102 as anticipated by the '598 patent.
B. Obviousness
C&W
next claims that it is entitled to judgment as a matter of law that claims
5 and 9 are obvious in light of the '598 patent in combination with
Cisco's Distributed Director product and are therefore invalid. Claims 5 and 9, which are dependent
on independent claim 1, include the following additional limitations.
5. The
hosting framework as described in claim 1 wherein the second level name server
includes a load balancing mechanism that balances loads across a subset of
the set of servers.
9. The
hosting framework as described in claim 1 wherein the first level name
server includes a network map for use in directing a request for the embedded
object generated by a client.
We review the ultimate
determination of obviousness de novo. Modine Mfg. Co. v. Allen Group,
Inc., 917 F.2d 538, 541 (Fed. Cir. 1990). This ultimate determination,
however, requires underlying factual findings, which this court reviews to
determine whether they are supported by substantial evidence and, if they
are, whether those findings support the legal conclusions which necessarily
were drawn by the jury in forming its verdict. Id. A claimed invention is unpatentable
due to obviousness if the differences between it and the prior art
"are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art." 35 U.S.C. §
103(a) (2000). While the
ultimate conclusion of obviousness is for the court to decide as a matter
of law, several factual inquiries underlie this determination. Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). These inquiries include the scope
and content of the prior art, the level of ordinary skill in the field of
the invention, the differences between the claimed invention and the prior
art, and any objective evidence of nonobviousness such as long-felt need
and commercial success. Id.
When a rejection depends on a combination of prior art references,
there must be some teaching, suggestion, or motivation to combine the
references. In re Geiger,
815 F.2d 686, 688 (Fed. Cir. 1987).
Although the suggestion to combine references may flow from the
nature of the problem, Pro-Mold & Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573
(Fed. Cir. 1996), the suggestion more often comes from the teachings of the
pertinent references, In re Sernaker, 702 F.2d 989, 994 (Fed. Cir. 1983), or from the ordinary
knowledge of those skilled in the art that certain references are of
special importance in a particular field, Pro-Mold, 75 F.3d at 1573 (citing Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
297 n.24 (Fed. Cir. 1985)).
Therefore, "[w]hen determining the patentability of a claimed
invention which combines two known elements, 'the question is whether there
is something in the prior art as a whole to suggest the desirability, and
thus the obviousness, of making the combination.'" In re Beattie, 974 F.2d 1309, 1311-12 (Fed. Cir.
1992) (quoting Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick
Co., 730 F.2d 1452, 1462
(Fed. Cir. 1984)).
To prevail,
C&W must therefore show that no reasonable jury could have found claims
5 and 9 nonobvious in light of the evidence presented. Tec Air, 192 F.3d at
1358. Here, C&W has not met
this burden. Namely, we are
unable to discern any suggestion or motivation to combine the references as
C&W suggests in the record before us. Indeed, when pressed on this issue
at oral argument, C&W could point only to Cisco's Distributed Director
product, which at best disclosed that load balancing software could be
placed at either the DNS servers or the origin servers for a
"mirroring" system.
In its brief, C&W pointed to the fact that the '598 patent, the
'703 patent, and Cisco's Distributed Director product all address the same
problem: Internet congestion.
Our review of the evidence
presented to the jury does not persuade us that no reasonable jury could
have found claims 5 and 9 nonobvious over the prior art, and we decline to
disturb the factual findings of the jury. Drawing all factual inferences in
favor of Akamai, we affirm the jury's verdict with respect to the validity
of claims 5 and 9 because there was no suggestion or motivation to combine
the references.
Additionally, the record
contains substantial evidence relating to secondary considerations
supporting the jury's verdict.
In particular, the record shows that C&W expended significant
effort to determine how Akamai's products worked. Once it was determined that Akamai
placed the server selection software at the DNS servers, C&W redesigned
its Footprint product, abandoning the embodiments in the '598 patent. The new Footprint 2.0 design
incorporated Akamai's placement of the load balancing mechanism at the DNS
server. This evidence of
copying is relevant to an obviousness determination. See Advanced Display Sys.,
Inc. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed. Cir. 2000); Vandenberg
v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984) ("The
copying of an invention may constitute evidence that the invention was not
an obvious one. . . . This
would be particularly true where the copyist had itself attempted for a
substantial length of time to design a similar device, and had
failed."). C&W's redesign process was documented in the record in
internal emails from C&W engineers discussing Akamai's approach,
identifying weaknesses in C&W's approach, and ultimately deciding to switch
to the Akamai system.
In sum, C&W has not shown
that the jury’s conclusion that claims 5 and 9 of the '703 patent are
nonobvious under 35 U.S.C. § 103(a) is unsupported by substantial
evidence.
Accordingly, we hold that claims 5 and 9 of the '703 patent are not
obvious in light of the '598 patent in view of Cisco's Distributed Director
product, and therefore affirm the district court's ruling denying C&W's
motion for judgment as a matter of law and affirm the grant of a permanent
injunction against C&W with respect to claims 5 and 9.
C. Infringement
of Claim 9
Having addressed validity of
the various claims of the '703 patent, we next turn to the jury's finding
of infringement with respect to dependent claim 9. We review the record as a whole to determine
whether substantial evidence exists to support the jury's finding that
claim 9 is infringed. C&W
objects to the jury verdict based on the fact that Dr. Bustavros's
expert report was limited to infringement under the doctrine of
equivalents. Akamai counters
with cites to the testimony of Dr. Bustavros, who testified that
C&W's Footprint 2.0 system included a network map routine and therefore
infringed claim 9, without any reference to a limitation under the doctrine
of equivalents. This dispute appears
to be one of interpretation and weight of a witness's testimony—one
for the jury to resolve. This
court generally does not tread on the jury's role in making these
determinations. Thus, we affirm
the jury's finding of infringement of claim 9 as supported by substantial
evidence, namely Dr. Bustavros's testimony at trial.
III.
CONCLUSION
For the foregoing
reasons, we hold that claims 1 and 3 of the '703 patent are anticipated by
the '598 patent and are invalid pursuant to 35 U.S.C. § 102. We therefore reverse the
district court's denial of C&W's motion for judgment as a matter of law
with respect to the validity of claims 1 and 3, and instruct the district
court to modify the permanent injunction accordingly. We also affirm the district court's
denial of C&W's motion for judgment as a matter of law with respect to
claims 5 and 9 and therefore affirm the district court's issuance of the
permanent injunction with respect to those claims. We remand to the district court to
review and redetermine the scope of the permanent injunction.
AFFIRMED-IN-PART, REVERSED-IN-PART AND REMANDED.
IV. COSTS
No
costs.
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