01 Communique Laboratory, Inc. (CL) v. Citrix Systems, Inc. et al.

Docket No. 2017-1869

April 26, 2018

Brief summary: DC order denying CL’s motion for a new trial regarding the alleged infringement of US 6,928,479 relating to “private communicaton portal[s]” by Citrix’s GoToMyPC product affirmed.

Summary: CL appealed DC order denying its motion for a new trial regarding the alleged infringement of US 6,928,479 relating to “private communicaton portal[s]” by Citrix’s GoToMyPC product. The DC stayed proceedings pending resolution of an inter partes reexamination of the ‘479 patent during which, the FC panel opinion explained, 01 CL’s “expert…asserted that the claims of the ‘479 patent differ from the prior art because they require that a ‘location facility’ create a communication channel between the remote and personal computers” (01 Communique, FC 2012). In 2013, the PTAB “confirmed the patentability of claims 24 and 45 over various prior art references, including Citrix’s BuddyHelp computer connection system” (affirmed by the FC in 2014). After the case returned to the DC, it construed the claims to require the “making or bringing into existence a communication channel between the remote compuer and the personal computer”)rejected Citrix’s arguments that the claims were directed to patent ineligible subject matter (§ 101) and “held that the reexamination record could be used in a limited manner at trial, but that Citrix could not be identified as the party that requested the examination” and that that parties “should ‘refer to the entirey of the proceedings before the PTO as the ‘prosecution history’” to avoid any jury bias against any of Citrix’s arguments that were rejected by the PTO. The jury “concluded that Citrix had not established that claims 24 and 45 were invalid, but the Communique had not established that Citrix’s GoToMyPC product infringed those claims.” The DC then denied CL’s motion for a JMOL of infringement and a new trial as unsupported by “specificity regarding the law and facts” (re: JMOL) and because “there was more than sufficient evidence…that GoToMyPC does not contain a location facility” (re: new trial, appealed here). The FC panel explained that it reviews a DC’s denial of a mtion for a new trial under regional law (Finjan, FC 2010; here, Smith, 6th Cir. (abuse of discretion), Baisley, 6th Cir. 2012 (“when a jury has reached a seriously erroneous result”)). CL argued “it is entitled to a new trial…because Citrix resorted to a ‘well-known defendant’s trick,’ known as the ‘practicing the prior art defense’” and the DC “improperly permitted Citrix to by-pass the required comparison between the asserted claims and the accused product and instead to focus on the similarities between Citrix’s current GoToMyPC product and its prior art BuddyHelp product” (“improper, misleading, and devastatingly prejudicial”). The FC panel disagreed with this argument because Citrix did argue that “GoToMyPC did not meet the claim limitation requiring” the “location facility”. The FC panel also found Citrix’s argument that if CL “expand[ed] the scope of its claims” in infringement argument “then the claims would be invalid in light of the prior art” to be proper (Tate Access, FC 2002 (cannot assert “practicing [the] prior art” defense without claim analysis); Liebel-Flarsheim, FC 2007 (“plaintiff must ‘beware of what [it] asks for’”); Amgen, FC 2003 (“claim terms must be ‘construed the same way for both invalidity and infringement’”); Amazon, FC 2001 (“A patent may not…be twisted one way to avoid anticipation and another to find infringement.”)). The FC panel also rejected CL’s prejudice arguments, explaining that it has “never suggested that any comparison between an accused product and the prior art mandates a new trial” (Cordance, FC 2011). It also concluded that the DC did not abuse its discretion in ruling that the jury could not be told Citrix was a party to the reexamination (Sprint, US 2008; Callaway, FC 2009). The DC decision was therefore affirmed.

This entry was posted in Infringement, Prosecution History Estoppel, Reexamination. Bookmark the permalink.

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