Avid Technology, Inc. v. Harmonic, Inc. , 812 F.3d 1040 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
AVID TECHNOLOGY, INC.,
Plaintiff-Appellant
v.
HARMONIC, INC.,
Defendant-Appellee
______________________
2015-1246
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:11-cv-01040-GMS, Judge
Gregory M. Sleet.
______________________
Decided: January 29, 2016
______________________
GREGORY A. CASTANIAS, Jones Day, Washington, DC,
argued for plaintiff-appellant. Also represented by DAVID
B. COCHRAN, JOSEPH M. SAUER, Cleveland, OH; JOSHUA R.
NIGHTINGALE, Pittsburgh, PA.
BORIS FELDMAN, Wilson, Sonsini, Goodrich & Rosati,
PC, Palo Alto, CA, argued for defendant-appellee. Also
represented by JAMES C. YOON; ROBIN L. BREWER, San
Francisco, CA; GIDEON A. SCHOR, New York, NY.
______________________
Before REYNA, TARANTO, and STOLL, Circuit Judges.
2 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
TARANTO, Circuit Judge.
The jury in this case found that Harmonic, Inc. did
not infringe two patents asserted by Avid Technology, Inc.
On one of two claim elements that were the focus of the
dispute at trial, the district court gave the jury a narrow
construction based on what the court determined to be a
prosecution disclaimer. We hold that construction to be
incorrect. We also hold that the error on this central trial
issue requires setting aside the non-infringement ver-
dicts, which were general verdicts as to each patent,
because Harmonic has not argued that the evidence
compels a finding of non-infringement independently of
the construction error. Avid therefore is entitled to a new
trial on infringement, though satisfaction of this particu-
lar claim element is now settled because Harmonic has
not here disputed Avid’s contention that Harmonic’s
system satisfies this claim element when properly con-
strued. Avid has not, however, shown entitlement to
more than a new trial, i.e., to entry of a judgment of
infringement: the evidence does not compel a finding of
infringement of the other claim element in dispute—
which at present is without a claim construction. Accord-
ingly, we vacate the judgment and remand for a new trial.
BACKGROUND
Avid asserted two patents against Harmonic in this
case—U.S. Patent No. 6,760,808 and No. 7,487,309. Both
patents concern data storage systems that allow users to
store and retrieve large files such as movies. The systems
include three categories of components of particular
significance here: multiple storage units that store data; a
client application, which reads data from and writes data
to the storage units; and a central controller that can
perform various facilitative functions. A fourth compo-
nent is an option: a centralized repository of addresses of
data stored in particular units.
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 3
In the system described by Avid’s patents, when a cli-
ent wishes to store (“write”) a file, such as a movie, the
system splits the file into “segments.” ’309 patent, col. 8,
lines 57–58. The segments are distributed among various
storage units and stored in duplicate at different units
(one primary unit and one backup) chosen “from the list of
storage units available for storing the selected segment.”
Id., col. 9, lines 12–14. The client sends each segment to
two storage units. Id., col. 9, lines 65–66; id., col. 10, lines
1–3, 37–39.
The system creates and updates segment tables list-
ing file segments and their storage-unit locations. Id., col.
8, lines 46–52; id., col. 10, lines 21–23. “Segment tables
may be stored together, as a catalog. Catalogs may be
stored on a catalog manager 49, at individual clients, at a
central database, or may be distributed among several
databases or clients.” Id., col. 7, lines 35–39. “[C]atalogs
also may be treated as data of which copies of its seg-
ments are randomly distributed among the storage units.”
Id., col. 19, lines 21–23.
The referred-to “catalog manager” is a “database, ac-
cessible by the [client] applications,” containing “infor-
mation about the data available on the storage units.”
Id., col. 6, lines 54–57. (The catalog manager 49, in
Figure 1, may be combined with another database called
an “asset manager,” also shown as item 49 in Figure 1.
Id., col. 18, lines 51–55.) The catalog manager may play a
role in monitoring availability of storage units for storage
in the first place. “There are several ways to determine
whether storage units are available, including polling the
storage units, handling exceptions from the storage units,
or by the storage units periodically informing an applica-
tion or applications of their availability. In one embodi-
ment of the invention, in addition to maintaining a
catalog of segment tables for each file, the catalog manag-
er 49 or some other client may monitor which storage
4 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
units 42 are active in the system.” Id., col. 17, lines 52–
60.
When a client wishes to retrieve (“read”) a file, the cli-
ent determines which storage units have the needed
segments, and sends a request for a given segment to a
storage unit, which transmits it to the client. Id., col. 11,
lines 4–19; id., col. 20, line 52 through col. 21, line 21.
Claim 1 of the ’808 patent is illustrative of the claims:
1. A distributed data storage system for allowing
one or more client systems to access data, com-
prising:
a plurality of independent storage units for
storing the data;
wherein the data is stored on the plurality of
storage units in files, wherein each file includes
segments of data and redundancy information for
each segment, wherein each segment has an identi-
fier, and wherein, for each file, the segments and
the redundancy information for each segment are
distributed among the plurality of storage units;
wherein each storage unit comprises:
means for maintaining information associat-
ing the identifier of each segment stored on the
storage unit with the location of each segment on
the storage unit;
means for receiving a request from one of the
client systems for a segment of a file, wherein a
request includes the identifier of the segment of
the file; and
means, operative in response to a request
from one of the client systems for a segment of a
file, for retrieving the requested segment of the
file from the storage unit using the information
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 5
associating the identifier of each segment stored
on the storage unit with the location of each seg-
ment on the storage unit; and
means for sending the requested segment to
the client system.
Id., col. 28, lines 2–27 (emphases added). The two
phrases we have italicized became the focus of this case.
The parties have referred to the second italicized claim
element as the “in files” element.
The accused Harmonic system, called “MediaGrid,” is
a distributed data storage system in which various stor-
age units (ContentServers) store data with redundancy.
The system includes a central controller (ContentDirec-
tor), which keeps track of the storage units and what
segments of a file (slices) are stored on them, and storage
units keep track of segment addresses within their own
memories. J.A. 1881, 1876–77, 1883–84, 1909. A client
seeking to retrieve the segments must ask the ContentDi-
rector to identify the relevant storage units. Once the
client has that information, the client deals directly with
the identified ContentServers to obtain the segments,
with the ContentServers themselves finding the needed
segments within their memories and without the Con-
tentDirector acting as an intermediary for the data trans-
fer. See J.A. 2305, 2395, 2828.
In the prosecution history of Avid’s patents, one piece
of prior art played a role that is significant here—a patent
issued to Boll, U.S. Patent No. 5,644,720. Boll describes a
client interface (i.e., a central controller) that receives a
request from an application. ’720 patent, col. 2, lines 45–
58; id., col. 2, lines 20–23. That request includes “a list of
server attributes necessary to complete the transaction
request,” ranked in order of importance. Id., col. 4, lines
27–31. The central controller selects which storage unit
to use to fulfill the request. Id., col. 2, lines 54–58; id., col.
4, lines 20–23. The central controller sorts the available
6 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
storage units in order of preference. Id., col. 5, lines 14–
17. If only one storage unit meets the criteria, the central
controller transmits the storage-unit location to the
application. Id., col. 5, lines 47–50. If more than one
storage unit meets the criteria, the central controller
randomly chooses one of the storage units. Id., col. 5,
lines 50–61. The central controller then either allows the
application to communicate directly with the storage unit,
id., col. 3, lines 47–50; id., col. 7, lines 1–4, or “serve[s] as
an intermediate link” connecting the application to the
storage unit, id., col. 3, lines 50–52.
The district court gave the jury a claim construction of
the “independent storage unit” claim element, basing that
construction on statements Avid made in the prosecution
history. It is undisputed that Avid properly preserved its
objection to the construction. The other claim element at
issue, the “in files” element, went to the jury without a
clarifying construction, over neither party’s objection.
The jury rejected Harmonic’s validity challenge to Avid’s
patents and found that Harmonic did not infringe.
Avid challenged the non-infringement judgment by
post-trial motions. It argued that the claim construction
regarding the “independent storage unit” element was
incorrect and that, under a correct claim construction,
that claim element is clearly met. And it argued that
there was insufficient evidence for the jury to find non-
infringement of the “in files” element. It sought at least a
new trial on the first ground and judgment of infringe-
ment on the two grounds combined. Harmonic does not
dispute that Avid duly preserved those contentions. The
district court denied Avid’s post-trial motions. Avid
Tech., Inc. v. Harmonic Inc., 2014 WL 7206301 (D. Del.
Dec. 17, 2014).
Avid appeals the non-infringement judgment. Har-
monic does not cross-appeal the judgment rejecting its
validity challenges; it also does not argue for vacatur of
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 7
the non-invalidity judgment if we agree with Avid’s claim-
construction position. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
DISCUSSION
We review the district court’s claim construction de
novo because it was based entirely on an intrinsic-
evidence determination about the meaning of the prosecu-
tion history, and not on any evidence about extra-patent
understandings of language or about other facts. See, e.g.,
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841 (2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
796 F.3d 1312, 1323 (Fed. Cir. 2015); Teva Pharm. USA,
Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015);
Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359,
1364 (Fed. Cir. 2015); Cadence Pharms. Inc. v Exela
PharmSci Inc., 780 F.3d 1364, 1368 (Fed. Cir. 2015);
MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1169
(Fed. Cir. 2015); Fenner Invs., Ltd. v. Cellco P’ship, 778
F.3d 1320, 1322 (Fed. Cir. 2015); In re Papst Licensing
Digital Camera Litig., 778 F.3d 1255, 1261 (Fed. Cir.
2015). Infringement is a factual question, InTouch
Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1338–
39 (Fed. Cir. 2014), and we review judgment-as-a-matter-
of-law determinations de novo, asking, as the district
court did, whether only one answer to that question is
reasonable given the evidence admitted at trial. See
Frolow v. Wilson Sporting Goods Co., 710 F.3d 1303, 1308
(Fed. Cir. 2013); InTouch Techs., 751 F.3d at 1338;
Graboff v. Colleran Firm, 744 F.3d 128, 134 (3d Cir.
2014).
A
The district court ruled that, during prosecution, Avid
had disclaimed a system in which the central controller
tells the client which storage unit the client should deal
with during read and write operations. J.A. 89–90 n.1.
On that basis, the court instructed the jury that “inde-
8 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
pendent storage units” means “storage units which are
not centrally controlled and whose memory addresses are
not globally allocated” and that “systems with independ-
ent storage units cannot use a central controller to access
data, and, in particular, cannot use a central controller
that identifies the storage unit on which data is stored in
response to client requests.” J.A. 39 (emphasis added); see
Avid, 2014 WL 7206301, at *3.
We conclude that the district court erred. The de-
manding standard for finding a disclaimer is not met. We
therefore reverse the claim construction given to the jury.
The prosecution history of a patent, though “less use-
ful for claim construction purposes” than the claim lan-
guage and written description, plays various roles in
resolving uncertainties about claim scope. Phillips v.
AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en
banc). When the prosecution history is used solely to
support a conclusion of patentee disclaimer, the standard
for justifying the conclusion is a high one. “[F]or prosecu-
tion disclaimer to attach, our precedent requires that the
alleged disavowing actions or statements made during
prosecution be both clear and unmistakable.” Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed.
Cir. 2003); see Storage Tech. Corp. v. Cisco Sys., Inc., 329
F.3d 823, 833 (Fed. Cir. 2003) (“We therefore do not
consider the applicants’ statement to be a clear and
unambiguous disavowal of claim scope as required to
depart from the meaning of the term provided by the
written description.”). Where the alleged disavowal is
ambiguous, or even “amenable to multiple reasonable
interpretations,” Cordis Corp. v. Medtronic AVE, Inc., 339
F.3d 1352, 1359 (Fed. Cir. 2003), we have declined to find
prosecution disclaimer. Omega Eng’g, 334 F.3d at 1325
(“[W]e have thus consistently rejected prosecution state-
ments too vague or ambiguous to qualify as a disavowal of
claim scope.”); Rheox, Inc. v. Entact, Inc., 276 F.3d 1319,
1327 (Fed. Cir. 2002).
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 9
The district court relied on two passages from an Avid
submission during the prosecution history:
[T]he claimed system, by virtue of the “independ-
ent” storage units, avoids using a central control-
ler to access data. In particular, storage units
“receiv[e] . . . request[s] from one of the client sys-
tems for a segment of a file.” Clients do not issue
requests to a central controller that in turn identi-
fies storage units that store the data and issues re-
quests to storage units.
J.A. 582 (alterations in original) (italics added to empha-
sis key sentence now at issue).
In Boll, a client asks a centralized interface 24 to
provide access to a server and receives from this
interface an identity or connection data for a serv-
er to which the client is assigned. The client then
performs its transactions with the assigned serv-
er. In contrast, the present invention relates to a
distributed storage system in which data for a file
is distributed among multiple independent stor-
age units. Boll’s assignment of a client to a server
through a centralized interface for its transaction
in [sic] contrary to the claim limitations noted
above.
J.A. 583 (alteration in original). Those passages, howev-
er, are readily susceptible to a narrower reading than the
one needed to support the district court’s disclaimer
conclusion. 1
1 The district court mentioned an immediately pre-
ceding passage, in which Avid stated: “The claimed sys-
tem, by virtue of its ‘independent’ storage units, avoids
global allocation of the available storage. In particular,
the storage units are independent because clients are
10 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
In the first passage, Avid stated that its system
“avoids using a central controller to access data” and that
“clients do not issue requests to a central controller that
in turn identifies storage units that store the data and
issues requests to storage units.” J.A. 582. But the
district court misread that passage. The first portion does
not itself say what exactly “access[ing] data” entails; it is
the second portion that identifies what Avid means.
What that portion says, by its terms, is that a central
controller is excluded if it performs both of two functions:
it “identifies storage units that store the data and issues
requests to storage units.” Id. (emphasis added). The
language on its face does not exclude a central controller
that performs only one or the other of the two stated
functions—which would have been the meaning if the
phrase had used “or” rather than “and.” In any event, it
does not do so clearly, as would be required to find a
disclaimer of a central controller that merely identifies
the storage units.
In the second prosecution-history passage, Avid dis-
tinguished Boll, stating that “Boll’s assignment of a client
to a server through a centralized interface for its transac-
tion [is] contrary to the claim limitations noted above.”
J.A. 583. The district court read more into the passage
than is clearly there and thus departed from the high
standard for finding a disclaimer. Rather than disclaim-
ing a system in which the central controller tells the client
aware of ‘identifiers’ of segments and storage units on
which segments are stored. The ‘location of each segment
on [each] storage unit’ is maintained at the storage unit
on which the segment it is stored.” J.A. 582 (alteration in
original). The court read that passage as not clearly
evincing the disclaimer at issue. J.A. 89–90 n.1. In this
court, Harmonic does not rely on the passage as support-
ing the disclaimer at issue. We do not discuss it further.
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 11
which storage unit contains a given segment, the lan-
guage can easily be read to be distinguishing Boll on the
ground that each client application in Boll is connected to
only one storage unit and conducts all of its transactions
with that one storage unit. See ’720 patent, col. 3, lines
30–34; id., col. 5, lines 47–50. In contrast, as described
above, Avid’s patents contemplate implementing “redun-
dancy” by storing segments of a file on different storage
units. See ’390 patent, Fig. 1 (showing four segments (1–
4) distributed among four different storage units).
In short, there was no clear and unmistakable dis-
claimer of central controllers that provide storage-unit-
location information for retrieving segments. The jury
instruction limiting “independent storage units” in that
way was incorrect.
B
That error, undisputedly preserved for review, con-
cerned the legal standard (claim construction) for evaluat-
ing a central element of the infringement dispute:
whether MediaGrid’s ContentDirector, by supplying
storage-unit-location information to clients seeking data,
did too much for MediaGrid’s ContentServers to meet the
“independent storage units” requirement. The error
requires at least vacatur of the verdict and a remand for a
new trial unless we can conclude that the error was not
prejudicial, i.e., was harmless. Because there was no
separate jury determination of non-infringement on a
distinct ground, the error in the instruction governing this
central dispute at trial would be harmless only if a rea-
sonable jury would have been required by the evidence to
find non-infringement even without the error. See Ecolab,
Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1374 (Fed. Cir.
2002) (error is harmless if it “ ‘could not have changed the
result,’ ” i.e., if “ ‘the same verdict would necessarily be
reached absent the error’ ”); NTP, Inc. v. Research In
Motion, Ltd., 418 F.3d 1282, 1311–12 (Fed. Cir. 2005)
12 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
(abrogated on other grounds, see IRIS Corp. v. Japan
Airlines Corp., 769 F.3d 1359, 1361 n.1 (Fed. Cir. 2014));
Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1381
(Fed. Cir. 2005); Texas Digital Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1201 (Fed. Cir. 2002); Biodex Corp. v.
Loredan Biomedical, Inc., 946 F.2d 850, 853–54 (Fed. Cir.
1991); 11 Charles Alan Wright, Arthur R. Miller, Mary
Kay Kane, Richard L. Marcus, Adam N. Steinman, Fed-
eral Practice & Procedure §§ 2558, 2886 (3d ed. 2015). 2
But Harmonic does not even argue for that conclusion.
Nowhere in its brief does Harmonic argue that the jury
was required to find non-infringement—on any ground—
even if the “independent storage units” element permits a
central component that supplies storage-unit-location
information to a client wishing to retrieve data from
storage units. In particular, it does not argue that the
evidence required a non-infringement finding based on
the other claim element in dispute, the “in files” element;
its only argument regarding the second at-issue element
is that the jury could reasonably find that element not to
be met by MediaGrid. Harmonic Br. 1, 49–64. That is not
enough, because we cannot infer that the jury did so find.
Similarly as to the “independent storage units” element
itself: Harmonic nowhere argues that, even if the con-
2 The well-established standard for judging harm-
lessness of legally incorrect jury instructions, and thus
determining whether a verdict must be set aside and a
new trial ordered, differs from the equally well-
established standard governing whether a verdict loser is
entitled to a judgment in its favor as a matter of law
(whether the evidence can reasonably support the ver-
dict). See Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d
728, 737 (Fed. Cir. 2002); Weinar v. Rollform Inc., 744
F.2d 797, 810 (Fed. Cir. 1984); Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984).
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 13
struction given to the jury was wrong, the evidence still
required a finding that MediaGrid lacks the required
independent storage units, whether because of what the
MediaGrid ContentDirector does or for any other reason.
Harmonic argues only that the construction was correct
and the non-infringement verdict was supported by
substantial evidence. Id. at 1, 30–49. In short, Harmonic
makes no argument under the proper legal standard to
answer Avid’s argument that the instructional error was
prejudicial, requiring a new trial.
Avid actually takes its argument one step further. It
contends that, once the legally erroneous narrowing of the
claim construction is reversed, the evidence not only
permits but requires a finding that the MediaGrid system
meets the “independent storage units” claim element.
Avid Br. 46–50. Harmonic presents no argument to the
contrary. Once one puts aside the incorrect conclusion
that a central unit’s informing clients of which storage
units contain desired segments makes the ContentServers
not “independent,” no argument has been presented to us
for how MediaGrid could, under a proper claim construc-
tion, be found not to have the required “independent
storage units.” The patent’s contemplated role for a
central “catalog manager,” as discussed above and reflect-
ed in claim 19, makes it anything but apparent how
MediaGrid would fall outside this claim element without
the legally erroneous construction. Given that, in re-
sponse to Avid’s argument, Harmonic has simply not
suggested an alternative claim construction on this point,
or argued that any such alternative claim construction
could be found not to reach MediaGrid, satisfaction of this
claim requirement is now settled. While infringement as
a whole is to be retried, Harmonic’s assertion of non-
infringement based on this claim element is not, thus
14 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
narrowing the scope of issues for the new trial on re-
mand. 3
C
What remains is Avid’s argument that it is entitled to
more than a new trial—that it should be granted judg-
ment as a matter of law. Avid Br. 51–62. Avid contends
that, on the only other claim element in dispute, the “in
files” element, the evidence does not allow a reasonable
finding of non-infringement. We reject the contention.
The case went to the jury without a construction of the
key “in files” language, and Avid has not met its burden of
showing that it has the only reasonable view of the claim
element as long as it is un-construed.
In the claimed systems, “the data is stored on the plu-
rality of storage units in files, wherein each file includes
segments of data and redundancy information for each
segment, wherein each segment has an identifier, and
wherein, for each file, the segments and the redundancy
information for each segment are distributed among the
plurality of storage units.” ’808 patent, col. 28, lines 6–12
(emphasis added). See also ’309 patent, col. 28, lines 58–
65. On its face, the “file” language might refer to what
the client treats as a “file,” such as a scene from a movie,
to be broken up into segments that are then distributed
among storage units. J.A. 1943; J.A. 2327. Alternatively,
the word “file” might refer to a feature of an organization
system of the storage units themselves, perhaps with a
single “file” at the storage-unit level including segments
coming from different client files, i.e., from different
3 The jury rejected both direct and indirect in-
fringement. Our vacatur covers all of those verdicts,
because the indirect-infringement verdicts could have
rested on the jury’s finding of no underlying direct in-
fringement.
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 15
movies. See ’309 patent, col. 13, lines 61–65 (“The storage
unit may have its own file system which may be entirely
separate from the client file system. All of the segments
on a storage unit may be stored, for example, in a single
file at the storage unit.”); ’808 patent, col. 14, lines 1–5
(same); id., col. 28, lines 50–59 (“A file system for a com-
puter, enabling the computer . . . to read data stored in
one or more files on the storage units, wherein a file
includes segments of the data and redundancy infor-
mation for each segment . . . .”); see also id., col. 10, lines
37–46; id., col. 14, lines 20–22; ’309 patent, col. 10, lines
36–45; id., col. 14, lines 13–15 (“If the storage unit has its
own independent file system, the client file system also
need not know details of the storage mechanism of the
storage units.”).
The district court did not construe the phrase “in
files” or, therefore, tell the jury whether all of the other
requirements of the overall claim element must evaluated
by looking at client-perspective files or storage-unit-
organization files. J.A. 8. The court instructed the jury
simply to give the phrase its “plain and ordinary mean-
ing.” J.A. 8; J.A. 39. It is not clear to us what the jury
would have found “plain” and “ordinary” about this claim
element. It is not even clear to us whether Harmonic has
consistently argued for one interpretation or the other of
“files” in this claim element See Harmonic Br. 14–16, 21–
24; J.A. 2318–19; J.A. 2328–30. But with the question
framed without a clarifying construction, Avid has the
difficult task of showing, based simply on the words, that
the only reasonable view is that MediaGrid stores data in
“files” that have all the features required by the claim
element. We are not persuaded.
Harmonic presented evidence that MediaGrid’s stor-
ing of individual client-file segments on its ContentServ-
ers may be considered as either not storing them “in files”
or not doing so in a way that meets the other require-
16 AVID TECHNOLOGY, INC. v. HARMONIC, INC.
ments of the overall “in files” claim element quoted above.
Harmonic’s expert, Dr. Levy, testified:
Q. And why do you believe that a slice does not
meet the requirements of a file in the claim?
A. Well, first of all, the files stored in the Con-
tentServers include only a single slice or segment
of data. And in addition, what is stored in the
ContentServers does not include redundancy in-
formation for the segment.
Q. Let’s take that one step at a time. Looking at
the language of the claim, it says, wherein each
file includes segments of data. Do you see that?
A. Yes.
Q. And that is segments, plural?
A. Yes, it is.
Q. Is a single slice, does that meet the require-
ments of a file?
A. No. This requires segments, plural, so that is
not what is stored in the ContentServer.
J.A. 2326–27. Asked about a Harmonic document that
says, “slices will be saved as individual files,” which might
suggest that at least storage-unit-level “files” are being
used, Dr. Levy testified:
Q. And what does the claim require each file to
include?
A. It requires each file to include segments, plu-
ral, of data.
Q. Does an individual slice include multiple seg-
ments, sir?
A. No.
AVID TECHNOLOGY, INC. v. HARMONIC, INC. 17
J.A. 2401. See also A2738 (quoting from the testimony of
Dr. Levy) (“ ‘What is your basis for the statement data is
not stored on ContentServers in files?’ Answer: ‘Well, my
basis is that the ContentServer stores slices of data and it
does not store them in files in the manner in which the
claims require.’ ”).
Without a claim construction, we are not persuaded
by Avid that the foregoing testimony is insufficient for a
jury to find that the MediaGrid system does not satisfy
the “in files” claim element. That is enough to deny Avid
judgment of infringement as a matter of law. The case
therefore must return to the district court for a new trial
on infringement, within the limits already stated in this
opinion. On remand the district court may consider
whether the aim of claim construction—to give the finder
of fact an understandable interpretation of claim scope to
apply to the accused systems—would be advanced by
further construing the “in files” claim element. To avoid
confusion about our mandate but not as an affirmative
suggestion, we add that in remanding for a “new trial”
(with no retrying of the “independent storage units” claim
element), we are not foreclosing any pre-trial resolution of
the infringement issue that is otherwise appropriate
substantively and procedurally. Cf. Medisim Ltd. v.
BestMed, LLC, 758 F.3d 1352, 1361 (Fed. Cir. 2014).
CONCLUSION
The judgment of the district court is vacated, and the
case is remanded for further proceedings consistent with
this opinion.
Costs awarded to Avid.
VACATED AND REMANDED