30Mar 2016

Lessons Learned: Avid Technology, Inc. v. Harmonic by Silvia Salvadori, PhD{2:15 minutes to read} In Avid Technology, Inc. v. Harmonic, the Federal Circuit found that Harmonic did not infringe on the patent and that the district court—based on a statement made during the prosecution of the underlying patent—had erred in construing a claimed term too narrowly.

During prosecution, to distinguish the claimed subject matter over some prior art, the patentee stated 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.”

The District Court identifies the disclaimer as requiring one of the two functions:

1. Storing the data; or

2. Issuing requests to storage units.

The Federal Circuit disagreed with the District Court and considered that the District Court had read the statement too narrowly. According to the Federal Circuit, the statement made during prosecution required the performance of both functions (identifying the storage and issuing requests), not just one.

The Federal Circuit found that the District Court erred in claim construction because the standard for finding a disclaimer was not met. According to the Federal Circuit, for a prosecution disclaimer to be found, the standard is that the disavowing actions must be both clear and unmistakable. However, when the language is ambiguous, the precedent requires that the Court decline to find a prosecution disclaimer.

Applying the facts of this case, the Federal Circuit found no clear and unmistakable disclaimer in the language used during the prosecution of the underlying patent. Thus, the judgement was vacated and remanded for a new trial on infringement. I will continue to monitor developments of this case.


Contact me with questions or comments at silvia@salvadorilaw.com.


Silvia Salvadori, PhD

Silvia Salvadori, PhD

(212) 897-1938