Avid Technology, Inc. v. Harmonic, Inc.

Avid Technology, Inc. v. Harmonic, Inc.
815 F.3d 1040 (Fed. Cir. 2016)
Authored by Amanda Block

Statement of Facts: Avid Technology Inc. (“Avid”) asserted two patents against Harmonic, Inc. (“Harmonic”), U.S. Patent No. 6,760,808 and No. 7,487,309. Both patents protect data storage systems that allow users to store and retrieve large files. Avid’s patented systems have three significant components: multiple storage units; a client application that writes data on and reads data from the storage units; and a central controller.

In Avid’s patented data storage system, files are split into segments and stored in duplicates at separate units. The storage system keeps track of where the segments are stored in a tables, and those tableswhich are stored together as a catalog. When the client needs to find a certain segment of a file, the client finds the applicable storage unit and sends a request for a given segment to that unit. The storage unit then transmits the segment to the client, acting as an intermediary between the system and the client.

Harmonic’s system, MediaGrid, has a central controller that keeps track of file segments and monitors the storage unit location for each segment. To retrieve a needed segment, the client must obtain the identity of the applicable storage unit from the central controller. The client then deals directly with the storage unit to get the needed segments, and the central controller does not act as an intermediary in the data transfer.

Procedural History: Avid sued Harmonic in the United States District Court for the District of Delaware, claiming that Harmonic infringed two of their patents. At trial, there were two claim elements in dispute. Claim one, referred to as the “independent storage units” element, covers systems that have “a plurality of independent storage units for storing the data.” Avid Technology, Inc. v. Harmonic, Inc. No. 2015-1246, 2016 WL 363410, at *4 (Fed. Cir. Jan. 29, 2016). Claim two, referred to as the “in files” element, covers a system in which data is stored on a plurality of storage units in files that each include segments of data, and the data is stored in duplicate for each segment. The jury found that Avid’s two patents were valid, but that Harmonic did not infringe either patent. Avid appealed the non-infringement judgment to the Federal Circuit.

Questions Presented: Whether Harmonic’s data storage system infringed on Avid’s two patents in regards to the “independent storage unit” and the “in files” claim elements.

Holding: As to the “independent storage unit” claim element, the Federal Circuit held that the District Court erred by giving the jury a narrow construction of the claim. However, Harmonic did not present evidence showing how MediaGrid might not have “independent storage units” under a proper construction nor did it suggest an alternate claim construction. Accordingly, the Federal Circuit held this claim requirement to be settled and not re-tried on remand. In regard to the “in files” claim element, the court held that the jury instruction to use “plain and ordinary meaning” did not enable the jury to interpret the scope of the claim as applied to the Harmonic system. Id. at *15. The Federal Circuit set aside the general non-infringement verdicts and ordered the infringement claim to be re-tried with respect to the “in files” claim element only.

Reasoning: The Federal Circuit held that the claim construction was too narrow because disclaiming actions or statements made in a prior prosecution must be clear and unmistakable when constructing the claim based on prosecution history. A court will not find a prosecution disclaimer if the alleged disavowal is unclear or susceptible to more than one reasonable interpretation. In Avid’s past statements, the company claimed that a central controller is excluded if it performs two functions: identifying storage units that store data and issuing requests to storage units. This language does not clearly exclude controllers that perform just one of these functions. Therefore, the Federal Circuit reasoned that the District Court “read more into the passage than is clearly there” by instructing the jury that “independent storage units” are not centrally controlled and the memory addresses are not globally assigned. Id. at *10. Because Harmonic did not present evidence showing how MediaGrid might not have “independent storage units” under a proper construction or suggest an alternate claim construction, the Federal Circuit held this claim requirement was settled and should not be re-tried in the new trial.

Regarding the second claim, the Federal Circuit noted that the “in files” element went to the jury without clarification of the language. Although the District Court instructed the jury to use “plain and ordinary meaning” in interpreting the claim, the Federal Circuit found that the word “file” must be defined to enable the jury to interpret the claim of the scope and how that applies to the Harmonic system. Id. at *15. Harmonic presented evidence showing that their storage may not be considered “in files” or that it may not store files in a way that meets the other requirements of the claim element. Harmonic’s expert witness testified that the single segment of information stored in Harmonic’s system do not meet the requirements of a file under Avid’s patent. Avid’s patent states that a file “includes segments of data,” and the expert testified that Harmonic’s files are singular and not plural, and thus would fall outside the scope of the patent. Id. at *4. Based on this evidence, the Federal Circuit ordered a new trial.

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