Avid Technology, Inc. v. Harmonic, Inc.
812 F.3d 1040
| Fed. Cir. | 2016Background
- Avid sued Harmonic for infringing two patents (’808 and ’309) covering distributed data-storage systems that split files into segments stored redundantly across multiple storage units, with an optional central catalog/controller.
- Key claim language focused on two elements: (1) “independent storage units” (whether a central controller that identifies storage-unit locations defeats independence) and (2) data stored “in files” (whether MediaGrid’s storage of single “slices” satisfies the claim’s file/segments requirement).
- At trial the district court instructed the jury, based on prosecution-history disclaimer, that “independent storage units” excludes any central controller that identifies storage-unit locations to clients; the court gave no special construction to “in files.”
- The jury found Harmonic did not infringe and rejected invalidity contentions; the district court denied Avid’s post-trial motions.
- On appeal the Federal Circuit reviewed claim construction de novo, reversed the disclaimer-based narrowing of “independent storage units,” and vacated the non-infringement verdicts as prejudicial to Avid’s central trial issue.
- The court remanded for a new trial on infringement, holding (1) the “independent storage units” issue is resolved in Avid’s favor as to trial scope (Harmonic did not defend non-infringement under the correct construction), and (2) Avid was not entitled to JMOL on the unresolved “in files” element.
Issues
| Issue | Plaintiff's Argument (Avid) | Defendant's Argument (Harmonic) | Held |
|---|---|---|---|
| Whether prosecution history disclaimed systems where a central controller identifies storage-unit locations (narrowing “independent storage units”) | Prosecution statements clearly disavowed any central controller that provides storage-unit-location information; the district court’s construction was correct. | Prosecution statements were not a clear and unmistakable disavowal; MediaGrid remains outside the claimed scope only under a proper construction. | Reversed district court: no clear and unmistakable prosecution disclaimer; the given jury instruction was erroneous. |
| Whether the erroneous claim construction was prejudicial (necessitating vacatur/remand) | Even without the erroneous narrowing, evidence requires finding MediaGrid has independent storage units; Avid sought at least a new trial, alternatively JMOL of infringement. | Jury could reasonably have found non-infringement; the error was not necessarily prejudicial. | Error was prejudicial because Harmonic did not argue the evidence compels non-infringement under the correct construction; VACATE verdicts and REMAND for new trial (but independence issue effectively settled for retrial). |
| Whether Avid is entitled to JMOL of infringement on “in files” element | The evidence compels finding MediaGrid stores data “in files” as claimed; JMOL granted. | The record supports a reasonable jury finding non-infringement on the “in files” element (e.g., slices are single segments lacking redundancy and thus not files as claimed). | JMOL denied: reasonable fact dispute exists about the meaning of “in files”; remand for new trial on infringement (excluding relitigation of the independence element). |
| Scope of remand and preclusion of issues on retrial | Avid requested judgment of infringement; sought full relief. | Harmonic sought affirmation of non-infringement. | Remand for new trial on infringement; the court narrowed issues by resolving the independence element in Avid’s favor for trial scope but left “in files” open for resolution (court did not foreclose pretrial claim construction). |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims construed in view of intrinsic evidence).
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir. 2003) (prosecution disclaimer requires clear and unmistakable statements).
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction where factual findings are involved).
- Ecolab, Inc. v. Paraclipse, Inc., 285 F.3d 1362 (Fed. Cir. 2002) (harmlessness standard for instructional error).
- NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005) (error harmlessness and verdict impact analysis).
- Medisim Ltd. v. BestMed, LLC, 758 F.3d 1352 (Fed. Cir. 2014) (pretrial resolution and claim-construction considerations on remand).