Tviim, LLC v. McAfee, Inc., 851 F.3d 1356

Background

TVIIM sued McAfee alleging Program Updates infringed U.S. Patent No. 6,889,168, which claims a security system that (1) detects vulnerabilities, (2) identifies corrective measures, (3) reports vulnerabilities and measures, and (4) can initiate corrective action.
McAfee’s Program Updates scans for installed third‑party programs, checks the National Vulnerability Database (NVD) and whether updates are available, and installs updates when available; it provides only a risk rating (“Critical” or “Recommended”) and no detailed vulnerability descriptions prior to installing updates.
Prior art: HostGUARD and S3 both detect and report detailed vulnerabilities to users but do not themselves take corrective action (they require the user to act).
At claim‑construction stage the district court adopted the parties’ agreed plain‑and‑ordinary meaning for “vulnerability” (an exploitable weakness) and declined further constructions; TVIIM did not seek construction of three disputed terms at trial.
A jury found McAfee did not infringe and that the ’168 patent was invalid; the district court denied TVIIM’s post‑verdict JMOL and new‑trial motions, finding the verdicts were not inconsistent and were supported by substantial evidence.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether jury verdicts of non‑infringement and invalidity are inconsistent under a single claim construction	The jury could not logically find both non‑infringement and invalidity because certain claim terms have multiple ordinary meanings	Same plain‑and‑ordinary meaning applies; evidence supports both non‑infringement and invalidity under a uniform construction	Verdicts are not inconsistent; substantial evidence supports both findings under a single construction
Construction and meaning of “as a result of/in response to” (causation requirement)	TVIIM argued Program Updates acts in response to detected vulnerabilities	McAfee showed Program Updates installs updates based on availability, not presence of vulnerabilities	Substantial evidence supports non‑infringement (no causal link) and also supports anticipation by prior art that does act in response to vulnerabilities
Scope of “various utility functions” (single function vs multiple functions)	TVIIM: Program Updates performs multiple utility functions (identify, access, download, install)	McAfee: Program Updates performs one function (updating) implemented via steps	Conflicting expert testimony; reasonable jurors could credit McAfee’s expert—substantial evidence supports non‑infringement and prior‑art performs multiple functions supporting invalidity
Meaning of “reporting the discovered vulnerabilities” (detailed report vs risk rating)	TVIIM: risk rating constitutes reporting vulnerabilities	McAfee: risk rating is not a report of discovered vulnerabilities (no specific descriptions or identifiers)	Jury could credit McAfee’s evidence—substantial evidence supports non‑infringement; prior art provides detailed reports supporting anticipation/invalidation

Key Cases Cited

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir.) (claim terms must be construed same for infringement and invalidity)
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (district court must construe terms with multiple ordinary meanings)
Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349 (Fed. Cir.) (parties may not raise new claim construction positions on appeal)
Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir.) (litigants cannot create new claim‑construction disputes after trial)
Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255 (Fed. Cir.) (jury verdict can be upheld as supported by substantial evidence despite competing expert testimony)
Senju Pharm. Co. v. Lupin Ltd., 780 F.3d 1337 (Fed. Cir.) (when patent is invalid, court need not decide non‑infringement)
MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159 (Fed. Cir.) (same principle: invalidity obviates need to resolve infringement issues)