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The Federal Circuit affirmed the district court’s construction of the term “disparate databases,” which was based on the patentee’s statement in the prosecution history that the “disparate nature of the above databases refers to an absence of compatible keys. . .”  The court held that the a patent applicant’s use of the phrase “refers to” generally indicates an intention to define a term.  The court further reversed entry of summary judgment of invalidity for violations of the written description and enablement requirements.  As to written description, the court held that the patentee’s expert’s testimony, which was not conclusory (as it points to specific portions of the patent specification) was sufficient to create a genuine issue of material fact.  As to enablement, the court held that the fact that the inventor spent three years to create a commercial-grade software product does not conclusively show a lack of enablement, because the law does not require a person of ordinary skill to make and use a perfected,  commercially viable embodiment. 

Vasudevan Software, Inc. v. Microstrategy, Inc., Case No. 2014-1094 (April 3, 2015); Opinion by: Linn, joined by Chen and Hughes; Appealed From: District Court for the Northern District of California, Seeborg, J. Read the full opinion here.

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