Kaufman v. Microsoft Corporation

Background

Michael Philip Kaufman owned U.S. Patent No. 7,885,981, which describes an invention for automatically generating a user interface for working with relational databases of arbitrary size or complexity. The patent also covers create, retrieve, update, and delete functions and processes for working with relationships across database tables.

Kaufman sued Microsoft Corporation for direct, induced, contributory, and willful infringement. The court had previously dismissed the willful-infringement claim on summary judgment and denied Microsoft's other summary-judgment motions. At trial, Kaufman's expert testified that Microsoft's Dynamic Data application, particularly its scaffolding function, performed the claimed steps. Microsoft argued that the patent was not infringed and was invalid.

The jury found that Dynamic Data infringed the relevant claims of the patent, that Microsoft had not proved the patent invalid, and that Kaufman was entitled to $7 million in damages. Microsoft then moved for judgment as a matter of law under Federal Rule of Civil Procedure 50(b), or alternatively for a new trial under Rule 59.

Infringement

The court held that the jury had a legally sufficient evidentiary basis to find infringement. Microsoft argued that Dynamic Data did not operate automatically because a developer had to identify a database, proceed through dialogue boxes, modify code, and click a button. The court concluded that the jury could reasonably view those actions as preparation and follow-up, while treating the application's database scanning and interface-generation functions as automatic under the agreed definition of that term: no separate developer input was required for those functions.

Microsoft also argued that Dynamic Data lacked a separate display format for the delete function. The court rejected that argument, holding that the patent required each mode to be available in some display format, but did not require one exclusive display format for each mode.

The court further held that the patent's use of the word “and” could, in the context of the patent, be read as “and/or” regarding processes for representing, navigating, and managing relationships across tables. The evidence supported the jury's finding that Dynamic Data satisfied this requirement.

The court rejected Microsoft's argument that Dynamic Data could not work with databases of any arbitrary size or complexity. Kaufman's expert testified that the software was not limited by the number of tables or relationships because it worked with a current table and its neighbors. The court stated that the jury was entitled to credit that testimony.

The court also rejected Microsoft's argument that Kaufman had not shown that users performed the claimed steps in the United States. Although the scaffolding function was disabled by default and had to be activated, the parties stipulated that Dynamic Data had hundreds of unique users per month in the United States during the relevant period. The court held that jurors could reasonably infer that at least some users enabled the function.

Finally, the court held that Claim 5 did not require Microsoft to provide a preconfigured relational database with the computer-readable medium containing the accused software. The claim required instructions for working with qualifying databases, not the database itself. The fact that scaffolding was disabled by default also did not eliminate the instructions from the application.

Validity

Microsoft had the burden to prove by clear and convincing evidence that the patent was invalid. The jury found that Microsoft had not proved that the patent lacked an adequate written description or that it was anticipated or obvious in light of prior art.

The court rejected Microsoft's argument that its expert had been prevented from fully testifying. The court stated that the expert had provided extensive testimony about infringement and invalidity and had answered the question Microsoft claimed it was prevented from asking.

The court also upheld the jury's rejection of Microsoft's written-description argument. It held that the patent's description adequately supported the relevant processes and the delete capability, even though the specification used the term “capability” rather than “mode.” The court explained that a prior application need not use precisely the same words as the asserted claims.

The court rejected Microsoft's anticipation and obviousness arguments based on Microsoft Access 2000. The trial evidence allowed jurors to find differences between Access 2000 and the patented invention, including that Access 2000's lookup function had to be manually created rather than automatically managing relationships across tables. The court concluded that the jury's finding was not unreasonable.

Microsoft also argued that Claim 5 was indefinite under the patent statute's rule for certain means-plus-function claim limitations. The court held that the claim did not use the word “means,” Microsoft had not overcome the resulting presumption that the rule did not apply, and the claim described its structural operations in sufficient detail. The court added that, even if the rule applied, the patent specification disclosed adequate structure, including a prose explanation of how to implement the delete function.

Damages

Microsoft argued that Kaufman could not recover damages from before the complaint because he had not marked “patented” on a product advertised online. The court adhered to its earlier ruling that the website was not an offer for sale and was not a patented article, so marking was not required under the applicable statute.

Microsoft also challenged the sufficiency of Kaufman's damages evidence. The court held that Kaufman's damages expert provided a sufficient basis for the jury to estimate a reasonable royalty. The expert used comparable products, estimated the number of users using Google Trends, isolated the royalty attributable to the infringing function, and accounted for a possible decline in users over time. The court stated that these methods supported reasonable inferences rather than speculation.

Disposition

The court denied Microsoft's motion for judgment as a matter of law or, alternatively, for a new trial. The court directed the Clerk to close the open motion.