MySpace, Inc. v. GraphOn Corp.
672 F.3d 1250
Fed. Cir.2012Background
- Plaintiffs MySpace and Craigslist sued GraphOn in the N.D. Cal. for invalidity and noninfringement of four GraphOn patents; GraphOn counterclaimed for infringement and asserted third-party claims against FOX.
- The district court granted summary judgment for the MySpace parties, finding the patents invalid under 102/103 based on the MBB prior art.
- The key legal issue was whether the term 'database' in the claims covers hierarchical (file system) as well as relational databases, affecting validity under 102/103.
- The court analyzed the patent specification and prosecution history, affirming that the term 'database' should be understood to encompass various database forms present at the time, including hierarchical structures.
- GraphOn appealed, and the Federal Circuit affirmed the invalidity ruling on 102/103 grounds, rather than addressing §101 eligibility.
- A dissent by Mayer argued §101 should be reached first, but the majority held §101 was not the proper path in this case.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| How should 'database' be construed in the claims? | MySpace argues it covers hierarchical and relational databases. | GraphOn argues it is limited to relational databases. | District court's broader construction upheld; 'database' includes hierarchical forms. |
| Are the claims invalid under §§102/103 in light of MBB prior art? | MySpace family contends MBB anticipates/obvious for all claims. | GraphOn contends the claims are not clearly anticipated/obvious. | Yes, the claims are anticipated or obvious under 102/103 based on MBB. |
| Should §101 subject matter eligibility have been addressed first? | Dissent argues §101 antecedent question before 102/103. | Majority says §101 analysis not needed here and 102/103 resolve validity. | Court declined §101 analysis, affirming validity decision under 102/103. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir. 2005) (claim terms informed by written description best source)
- Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313 (Fed.Cir. 2005) (written description aids claim construction)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed.Cir. 1998) (de novo review of claim construction)
- Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (U.S. 1966) (framework for obviousness analysis (Graham factors))
- Bilski v. Kappos, 130 S. Ct. 3218 (U.S. 2010) (abstract idea and subject-matter eligibility discussion)
- Diehr, Diamond v. Diehr, 450 U.S. 175 (U.S. 1981) (non-abstract process integration with conventional steps)
- Flook, Parker v. Flook, 437 U.S. 584 (U.S. 1978) (limits on patenting abstract ideas and algorithms implemented on computers)
- Gottschalk v. Benson, 409 U.S. 63 (U.S. 1972) (abstract mathematical concepts not patentable)