Comaper Corporation (hereinafter “Comaper”) v. Antec is a case dealing with the Federal Circuit reversing the District Court’s JMOL.
Comaper is the owner of U.S. Patent No. 5,955,955 that is directed towards computer cooling devices. A representative claim at issue is reproduced below:
1. A cooling device for a computer, said computer having a drive bay region with at least one drive bay slot adapted to receive, said device comprising:
a case configured to mount within said drive bay slot of said computer such that said case occupies substantially the entire drive bay slot, said case having at least a first opening and at least a second opening, when mounted within said drive bay, said first opening being exposed to ambient air and said second opening being within said drive bay region of said computer;
at least one air movement device mounted within said case, said air movement device being configured in one of two ways, a first way in which said air movement device draws cooling air through said first opening and exhausts substantially all of said cooling air from said case though said second opening into said drive bay region, a second way in which said air movement device draws air into said case through said second opening from and drive bay region and exhausts it through said first opening; and
power supply means for supplying power to said air movement device.
The invention is a device that is inserted into a drive bay via the housing of the computer. Following a trial, a jury found that Antec did not prove invalidity of the independent claims of the ‘955 patent, and Antec moved for JMOL under 35 USC sections 102 and 103.
On review, the Federal Circuit stated that grants of JMOLs are only granted if viewing the evidence in the light most favorable to the nonmoving party, there is no question of material fact for the jury and any verdict other than the one directed would be erroneous under the governing law. Thus, only in rare circumstances with the jury’s verdict be overturned.
A major issue on Appeal was the court’s claim construction of several term, including the holding that “drive bay slot” means “the relatively narrow opening in the housing of the computer that leads to the drive bay.”
Despite this interpretation, the district court held in the JMOL order on appeal that no reasonable jury could find that the asserted claims were not anticipated by two prior 19-inch rack-mounted drive bay modules. In the 1980’s (when the ‘955 patent was filed), the standard in personal computers was for the personal computer to use disk drives that were about 5.25 wide, while some personal computers used separate racked modules for hard drives, tape drives, etc. Furthermore, in the District Court’s JMOL opinion the district court stated that the only difference between the claims of the ‘955 patent and the prior art was the size of the devices. The district court reasoned that because the size of the device was not found anywhere In the ‘955 patent, this difference did not preclude a finding of anticipation, and thus the district court held that each device anticipated the ‘955 patent.
The Federal circuit disagreed with the district courts holding, reasoning that the relative ize of the drive bay slot does matter in terms of the claim language, context, and meaning. The court specifically stated that:
The record, including photographs and testimony from Mr. Corcoran, shows that both prior art devices fit into an opening which extended virtually the entire width of the rack. See Appellees’ Br. 20; Appellant’s Br. 26, 30–31. Thus, neither prior art device had a relatively narrow opening in the housing of the computer. On that basis alone, substantial evidence supports the jury’s factual finding of a difference between the claimed invention and the prior art.
Therefore, the Federal circuit found that this difference would preclude anticipation and support the jury’s verdict.
PATENT ATTORNEY TAKE-A-WAYS:
- This case shows how the standard that specifications will be reviewed at the time they are filed is very important. The case hinged on whether a rack mounted “drive bay slot” would be synonymous with a drive bay slot of the housing of the personal computer. Because of personal computing housings in the 1980s were fairly standard, with less modular components, the modularity of “racks” did not hold to be synonymous art. However, if this case was to be brought today, when computer housings are fairly modular, it is likely the case would have turned a different way.
- Another important take a way in this case, is that the dimensions of an invention do not need to be explicitly recited in the patent application, unless of course the size and shape of the invention are important. As in this case, if your invention is directed towards computer components, and the patent attorney does not including the sizing of the components of the invention, the sizing of the components will be given the size of standard components in the art.