The jury’s verdict of non-infringement in this case turned on the meaning of two claim terms: “independent storage unit” and “in files.”  The Federal Circuit held that the district court erred in construing the term “independent storage unit” based on an alleged prosecution disclaimer. The court held that the alleged disclaimer was insufficiently clear and unmistakable to warrant applying the alleged disclaimer to the construction.  The court, however, would not grant a new trial on the infringement issue with respect to this claim term, because Avid argued that there was infringement under the correct construction, but Harmonic failed to argue that the jury was required to find non-infringement on any grounds, let alone under the correct construction.  Instead, Harmonic argued that the jury could reasonably find that this element is not met under the correct construction.  Accordingly, as Harmonic presented no argument contrary to Avid’s argument that, under the correct construction, the “independent storage unit” element is met, the court refused to remand this issue to the district court, holding instead that this element is met by Harmonic.

As to the second term, “in files,” the district court merely instructed the jury that this term has its “plain and ordinary” meaning.  The Federal Circuit, however, in examining the specification of the patent, gleaned two possible, inconsistent interpretations for this term, i.e, a file can be what the client treats as the file (the scene from a movie), or a file can be a feature of an organization system of the storage units themselves.  Given these two possible meanings and the fact that the court could not glean from the jury’s verdict which meaning it applied, the court vacated the non-infringement verdict and remanded with instructions to consider whether to construe the term “in files” (but without instructions to retry the “independent storage units” term). 

Avid Technology, Inc. v. Harmonic, Inc., Case No. 2015-1246 (January 29, 2016); Opinion by: Taranto, joined by Reyna and Stoll; Appealed From: United States District Court for the District of Delaware, Sleet, J.  Read the full opinion here.

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