Intellectual Property > IP Newsflash > JMOL of No Invalidity May Not Be Based on New, Post-Verdict Construction of Claim Terms
12 Jan '16

In a January 8, 2016 decision, the Federal Circuit reversed a grant of judgment as a matter of law of no invalidity because the district court altered its construction of a key claim term after trial, and impermissibly based its JMOL determination on the new construction. Plaintiff Wi-LAN, Inc. sued Apple in the Eastern District of Texas for infringement of a patent directed to a system for wireless data communication. The asserted claims recited a “first computing means” which, according to the patent, randomizes the data to be transmitted using a “multiplier.” Multipliers can be either “real” or “complex,” and the parties agreed that the prior art taught randomizing data using only real multipliers. At trial, the jury found the two asserted claims invalid. The jury based its verdict on the court’s construction of the term “first computing means”—a construction that did not require complex multipliers—and determined that the claims were invalid as anticipated by the prior art. Wi-LAN moved for a JMOL of no invalidity, arguing that the asserted claims did, in fact, require complex multipliers.

The district court vacated the jury’s verdict of invalidity, holding that a reasonable jury would have understood that the claims required complex multipliers. Although the court acknowledged that its construction of the term at issue “does not specifically provide for a complex multiplier,” the court held that a complex multiplier was required because “throughout the trial, both sides took the position that the complex multiplier … was reasonably included in the Court’s construction.”

The Federal Circuit reversed. The court held that the district court’s addition of a “complex multiplier” requirement amounted to a new claim construction, which is impermissible at the JMOL stage. The court noted that a trial court may adjust claim constructions post-trial to clarify a meaning inherent in the previous construction, or make plain what should have been obvious to the jury. However, the court may not go so far as to adopt a new and more detailed interpretation of claim language: “[a]t the JMOL stage, the question for the trial court is limited to whether substantial evidence supports the jury’s verdict under the issued construction.” In this case, the Federal Circuit held that because the district court acknowledged that its original construction did not require a complex multiplier, adding such a requirement post-verdict impermissibly altered the scope of the original construction. Accordingly, the Federal Circuit reversed the district court’s JMOL determination of no invalidity.

Wi-LAN, Inc. v. Apple, Inc., 2014-1437, 2014-1485 (Fed. Cir. Jan. 8, 2016)