A District Court Need Not Construe Undisputed Claim Terms Before Issuing a Summary Judgment of Invalidity

Perfect Web Techs., Inc. v. InfoUSA, Inc., No. 2009-1105 (Fed. Cir. Dec. 2, 2009):

Holding:

A district court need not construe undisputed claim terms before issuing a summary judgment of invalidity. Slip op. at 14.

“Common sense” and “obvious to try” may be used as reasons to combine the prior art references to achieve the patented invention. Id. at 6, 12.

Relevant Facts:

Before it issued a formal claim construction order, the district court granted InfoUSA’s motion, assuming for summary judgment purposes that Perfect Web’s claim constructions were correct. Id. at 3. Perfect Web’s patent (USP 6,631,400) claims methods of managing bulk e-mail distribution to groups of targeted consumers using steps A-D. Id. at 1-2. Perfect Web concedes that the prior art teaches steps A-C, while InfoUSA concedes that step D, a step that repeats steps A-C, does not appear in the prior art. Id. at 5. InfoUSA, however, contends that step D is based on common sense, and it is obvious for one skilled in the art to try step D. Id. at 5-6. The district court agreed with InfoUSA. The Federal Circuit affirmed.

Comments:

Nothing is out of ordinary here. Citing KSR, the Federal Circuit found that it is permissible to use “common sense” and “obvious to try” in an obviousness analysis. Id. at 6, 12.

In addition, procedurally, the Federal Circuit held that although a court may not invalidate the claims of a patent without construing the disputed claim limitations and applying them to the prior art, a district court need not construe undisputed claim terms before issuing a summary judgment of invalidity. Id. at 13-14.