Troutman Sanders Federal Circuit Review – October 24, 2014

Each week, Troutman Sanders' Federal Circuit review summarizes the Federal Circuit precedential patent opinions from the prior week.

This week:

Patentee's failure to argue infringement under adverse claim construction on appeal constitutes waiver of the infringement claim. A claim construction that naturally aligns with the problem and solution in the written description is most likely correct. The Government assumes infringement liability when it requires a private party to performed a quasi-governmental act that infringes on a patent. Patentee's failure to argue infringement under adverse claim construction on appeal constitutes waiver of the infringement claim.

Cardsoft, LLC v. VeriFone, Inc., No. 2014-1135, 2014 U.S. App. LEXIS 19976 (Fed. Cir. Oct. 17, 2014) (Hughes, J.).Click Here for a copy of the opinion.

Cardsoft sued VeriFone for infringing two patents relating to software for controlling a payment terminal. A jury found that VeriFone's devices infringed Cardsoft's patents, and that the claims were not invalid. VeriFone appealed the district court's construction of "virtual machine," and argued that under a correct construction, VeriFone was entitled to a judgment of non-infringement as a matter of law. The district court construed "virtual machine" to be a computer programmed to emulate a hypothetical computer. VeriFone argued that a proper construction would be computer software that "process[es] instructions expressed in a hardware/operating system-independent language."

The Federal Circuit looked to the specification, prosecution history, and extrinsic evidence of the state of the art at the time the application was filed. The specification indicated that the claimed invention enables creation of software in a hardware/operating system-independent way. Further, a year prior to filing, Sun Microsystems released the Java virtual machine, which enabled programmers to write one application software program, which could then be run on any operating system or hardware running the Java virtual machine. During prosecution of one of the patents, the applicant argued that the Java virtual machine was a "conventional" virtual machine, and that the claimed invention was an improvement upon it. Based on such evidence, the Federal Circuit agreed with VeriFone's proposed construction.

In its appeal brief, VeriFone argued that under a correct claim construction, it was entitled to a judgment of non-infringement as a matter of law. Cardsoft's...