Collegenet, Inc. v. Applyyourself, Inc.
| Decision Date | 02 August 2005 |
| Docket Number | No. 04-1251.,No. 04-1202.,No. 04-1222.,04-1202.,04-1222.,04-1251. |
| Parties | COLLEGENET, INC., Plaintiff-Appellant, v. APPLYYOURSELF, INC., Defendant-Cross Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
John D. Vandenberg, Klarquist Sparkman, LLP, of Portland, Oregon, argued for plaintiff-appellant. With him on the brief were Kristin L. Cleveland, Scott E. Davis and Michael N. Zachary.
J. Michael Jakes, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Washington, DC, argued for defendant-cross appellant. On the brief were Raymond C. Jones, Lawrence E. Carr III and Timothy R. Feely, Carr, Morris & Graeff, PC, of Washington, DC. Of counsel on the brief was Jeff E. Schwartz, Preston Gates Ellis & Rouvelas Meeds LLP, of Washington, DC. Of counsel was Kathleen C. Bricken, Garvey Schubert Barer, of Portland, Oregon.
Before LOURIE, RADER, and SCHALL, Circuit Judges.
In the United States District Court for the District of Oregon, a jury found that ApplyYourself, Inc. (ApplyYourself) infringed claims 2-8, 13-17, and 22-31 of CollegeNet, Inc.'s (CollegeNet) U.S. Patent No. 6,345,278 (the '278 patent), and claims 1-39 and 41-44 of CollegeNet's U.S. Patent No. 6,460,042 (the '042 patent). On a motion for judgment as a matter of law (JMOL), the district court granted ApplyYourself's motion for noninfringement of the '042 patent and alternative motion for a new trial. CollegeNet, Inc. v. ApplyYourself, Inc., 2003 WL 23778092 (D.Or. Dec.9, 2003). Because the district court misconstrued the phrase "in a format specified by the institution" in the '042 patent, this court reverses the JMOL and reinstates the jury verdict of infringement. This court also holds that the district court correctly dismissed without prejudice ApplyYourself's counterclaim and affirmative defenses that the '042 patent was invalid. In addition, this court holds the district court correctly construed the '278 patent's "automatic" limitation and correctly denied ApplyYourself's motion for a new trial on the claims relating to the '278 patent's "in a format specified by the institution" limitation.
The '042 patent (issued Oct. 1, 2002) is a continuation of the '278 patent (issued Feb. 5, 2002). Both patents share a common specification. The patents are directed to an online service for reducing the amount of work required by applicants and institutions in, respectively, submitting and processing applications for admission. In a common application of this online service, a college applicant could access a site and fill out an application to a particular university or institution. The applicant's data would then remain available to complete applications for other universities and institutions. The applicant could thus apply with greater ease to multiple institutions. At the same time, the system would allow the institutions to access the applicant's submitted information online and, in addition, allow the institutions to request delivery of the information in a particular format, thereby reducing the amount of work required by the institution in processing the application. As the '042 patent describes:
A forms engine allows data sharing between customizable on-line forms, such as college admissions applications. Before applying, an applicant opens an account with a third party application servicer. After the applicant completes an application for one institution, the data is saved in a data base and automatically populates fields in subsequent application forms. The form for each institution is created from a form description file. Each form is branded for its institution and forms for different institutions differ in appearance and content so that the presence of the third party servicer is transparent to the applicant.
'042 patent, Abstract (emphasis added).
The '278 patent is specifically directed to the data-sharing-component of the invention, i.e., the component that transfers common information — such as applicant name and date of birth — to multiple applications. Independent claim 1 is representative:
1. A method of creating and processing over a computer network forms representing applications to different higher education institutions, comprising:
creating in response to a request from an applicant for an application to a first institution a first application form customized in accordance with the preferences of the first institution, the first application form including first form data fields for entering applicant information;
providing to the applicant over a computer network the first application form;
entering the applicant information in the first form data fields;
posting the applicant information entered into the first form data fields of the first application form to a server;
storing the posted applicant information in a database having a database field structure defined by multiple database fields, the database including multiple records, each record capable of storing information corresponding to each of the database fields;
creating in response to a request from the applicant for an application to a second institution a second application form customized in accordance with the preferences of the second institution, the second application form including second form data fields for entering applicant information, at least one of the second form data fields corresponding to applicant information not entered into the first form data fields;
automatically inserting into some of the second form data fields applicant information from the database;
providing to the applicant over a computer network the second application form;
entering applicant information into the second form data fields into which information was not inserted from the data storage or into which the data inserted from the data storage is to be changed;
posting the applicant information entered into the second form data fields to the server; and
automatically storing the applicant information entered into the second form data fields into the database by adding new records to the database, the automatic storing of the applicant information not altering the database field structure, thereby allowing new form data fields corresponding to applicant information not previously requested to be added to an application form without requiring alterations of existing application forms or of programs that access the database, whereby customized applications to different institutions share data through common, extensible data storage.
'278 patent at col. 22, l. 34-col. 23, l. 14 (emphasis added).
The '042 patent, in turn, is directed to the portion of the invention that reduces the burdens imposed on institutions in processing applications for admission. In particular, the '042 patent claims a method in which the institution receives the application "in a format specified by the institution." Independent claim 16 is representative:
16. A method of processing over a computer network forms directed by multiple public forms users to multiple institutions, the forms being processed by a third party forms servicer that is neither one of the multiple institutions nor one of the public forms users, the method comprising:
presenting to a form user over a computer network by a third party forms servicer a form directed to one of the multiple institutions, the forms including fields for the forms user to enter user information;
receiving by the third party forms servicer over the computer network user information and electronic payment information entered by the user processing by the third party forms servicer an electronic payment associated with the form, the processed payment being from the user to the one of the multiple institutions to which the form is directed;
providing by the third party forms servicer the user information to the institution to which the form is directed in a format specified by the institution, the third party forms servicer thereby providing to public form user customized forms identified with institution of higher education and providing to the institutions custom-formatted data, while relieving the institution of the administrative burden of processing forms and payments.
'042 patent, col. 36, ll. 32-57 (emphasis added).
ApplyYourself offers online systems for processing application forms. Flagship was ApplyYourself's first online system. It includes a software component called "AIM" (ApplyYourself Information Manager) that offers a number of ways that an institution can specify a particular application format. ApplyYourself's second product, known as the i-Class system, delivers data to the institution in three general types of file formats — fixed-width, delimited, and XML. Each format type offered many variations.
On April 12, 2002, CollegeNet filed suit against ApplyYourself for infringement of the '278 patent. On October 1, 2002, CollegeNet filed a separate suit for infringement of the '042 patent. The district court consolidated the two cases and assigned them to the Honorable Dennis J. Hubel, United States Magistrate Judge, for trial. The district court ultimately granted CollegeNet summary judgment of infringement as to claims 1, 9, 10 and 21 of the '278 patent, but denied summary judgment on the '042 patent. With respect to the '042 patent, the court determined that there were genuine issues of material fact as to whether the Flagship or i-Class systems satisfied the "in a format specified by the institution" limitation, which the court had previously construed to mean "any file and other formats specified by that institution."
The issue of infringement of all of the claims of the '042 patent and the remaining claims of the '278 patent therefore proceeded to trial. The jury found infringement of all claims except claims 18-20 of the '278 patent. However, the district court subsequently granted ApplyYourself's motion for JMOL of noninfringement of the '042 patent and, in...
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