Michael Philip Kaufman v. Microsoft Corporation

United States Court of Appeals
for the Federal Circuit
______________________
MICHAEL PHILIP KAUFMAN,
Plaintiff-Cross-Appellant
v.
MICROSOFT CORPORATION,
Defendant-Appellant
______________________
2021-1634, 2021-1691
______________________
Appeals from the United States District Court for the
Southern District of New York in No. 1:16-cv-02880-AKH,
Judge Alvin K. Hellerstein.
______________________
Decided: May 20, 2022
______________________
RONALD ABRAMSON, ALEX G. P ATCHEN, Liston Abram-
son LLP, New York, NY, argued for plaintiff-cross-appel-
lant. Also represented by ARI J ASON J AFFESS .
CHRISTINA J ORDAN MCC ULLOUGH , Perkins Coie LLP,
Seattle, WA, argued for defendant-appellant. Also repre-
sented by D AN L. BAGATELL , Hanover, NH; T ARA L AUREN
K URTIS , Chicago, IL; AHMED J AMAL DAVIS , L EAH A.
EDELMAN, Fish & Richardson P.C., Washington, DC; J OHN
STEPHEN G OETZ, EXCYLYN HARDIN -SMITH , New York, NY;
J ASON W. WOLFF , San Diego, CA.
______________________
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KAUFMAN v. MICROSOFT CORPORATION 2
Before D YK, REYNA, and T ARANTO, Circuit Judges.
T ARANTO, Circuit Judge.
Michael Philip Kaufman owns now-expired U.S. Patent
No. 7,885,981, on which he is a co-inventor. The patent
describes and claims methods for using a computer to au-
tomatically generate an end-user interface for working
with the data in a relational database. Mr. Kaufman
brought the present action against Microsoft Corporation,
asserting infringement of claims of the patent by Mi-
crosoft’s making and selling of its Dynamic Data product.
A jury found Microsoft liable and awarded damages of $7
million to Mr. Kaufman. The district court upheld the ver-
dict against Microsoft’s post-judgment challenges, Kauf-
man v. Microsoft Corp., No. 1:16-cv-02880, 2021 WL
242672, at *1 (S.D.N.Y. Jan. 25, 2021) (JMOL Order), and
it also denied Mr. Kaufman’s motion to amend the judg-
ment to include prejudgment interest, Kaufman v. Mi-
crosoft Corp., No. 1:16-cv-02880, 2021 WL 260485, at *1
(S.D.N.Y. Jan. 25, 2021) (Prejudgment Interest Order).
Microsoft and Mr. Kaufman both appeal. We reject Mi-
crosoft’s challenges and thus affirm the denial of Mi-
crosoft’s post-judgment motions. But we agree with Mr.
Kaufman’s challenges and reverse the denial of prejudg-
ment interest.
I
A
The ’981 patent addresses the creation of user inter-
faces that permit users to interact with data in relational
databases, which store data in multiple tables that are re-
lated to each other in defined ways. For a particular data-
base, such an interface should permit the user to view and
manipulate the data according to the structure of the tables
and their relationships—i.e., the “data model” or “schema”
of the database. See ’981 patent, col. 2, lines 29–52. The
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KAUFMAN v. MICROSOFT CORPORATION 3
specification notes that in the prior art, the database soft-
ware itself and the user interface were typically developed
separately, and significant manual programming was
needed to create an interface that matched the data model
built into the database software. Id., col. 2, line 53, through
col. 3, line 4. An object of the invention, the patent indi-
cates, is to enable a developer to create “a complete and
fully functional user interface (UI) for any arbitrarily com-
plex or large database schema, without any custom soft-
ware programming.” Id., col. 3, lines 8–11.
Claim 1 of the ’981 patent is representative for pur-
poses of the issues before us. It recites:
1. A method for operating a server comprising
a processor for automatically generating an
end-user interface for working with the data
within a relational database defined within a rela-
tional DBMS whose data is stored in machine-read-
able media and which is accessible to said server,
wherein said relational database comprises a plu-
rality of tables, constraints and relationships
stored in said DBMS in accordance with a data
model comprising said tables and their column-
complements and datatypes, said constraints, and
the relationships across said tables, and wherein
said relational database may be of any arbitrary
size or complexity, said method comprising
(a) providing an output stream from said server, for
user display and input devices, defining a user in-
terface paradigm comprising a set of modes for in-
teracting with a given database table, said modes
comprising create, retrieve, update and delete, and
a corresponding display format for each mode;
(b) causing said server to scan said database
and apply a body of rules to determine the ta-
ble structures, constraints and relationships
of said data model, and store representations
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KAUFMAN v. MICROSOFT CORPORATION 4
thereof in machine-readable media accessible
to said server; and
(c) causing said server to use said representations
to construct a corresponding client application for
access through said user display and input devices,
wherein said client application provides a con-
nection to said database, provides displays of the
table contents of said database for each of said
modes in accordance with the display formats of
said paradigm, integrates into each said mode
display processes for representing, navi-
gating, and managing said relationships
across tables, for selecting among said modes, and
for navigating across said tables and interacting in
accordance the selected mode with the data in the
tables that are reached by said navigation, while
observing and enforcing relational interdependen-
cies among data across said tables.
Id., col. 377, lines 2–38 (emphases added). As described in
limitation (a), the interface created by the claimed method
uses a known “CRUD” paradigm for categorizing the uni-
verse of user operations as “creating,” “retrieving,” “updat-
ing,” and “deleting” records in the database. See, e.g., J.A.
5162 (Microsoft documentation describing the accused
product in terms of CRUD).
The ’981 patent describes in detail a single embodiment
of the claimed invention: an “implementation of the inven-
tion” called SCHEMALIVE™. ’981 patent, col. 4, lines 34–
38. The specification includes screen shots, id., Figs. 1–4,
7–8, 9A–9E, textual description, id., col. 4, line 51, through
col. 26, line 52, and source code, id., col. 27, through col.
376, describing SCHEMALIVE™, although certain fea-
tures that are described are not implemented in the code
included in the patent, id., col. 4, lines 44–46.
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KAUFMAN v. MICROSOFT CORPORATION 5
The patent claims priority to a provisional patent ap-
plication filed in October 2000, and it issued on February
8, 2011. Id., title page.
B
In 2016, Mr. Kaufman sued Microsoft for infringing the
’981 patent by making and selling certain “development
tools for its .NET Framework software platform,” which al-
legedly automate the generation of a software application
for interacting with a database based on the underlying
data model. J.A. 282–83 (Compl. ¶ 11). The complaint fo-
cuses on a Microsoft product called Dynamic Data, which,
the complaint says, “automatically generates” a Web appli-
cation for “viewing and editing data based on the schema
of the data.” J.A. 285 (Compl. ¶ 20) (citation omitted); see
J.A. 5162.
1
In 2019, Microsoft moved for summary judgment of
noninfringement. It argued that the phrase “automatically
generating” found in the preamble of claim 1 is limiting,
that “automatic” means “no human labor required,” that
limitation (b) (“causing said server to scan said database
and apply a body of rules . . . and store representations
. . .”) must be performed “automatically,” and that Mi-
crosoft does not infringe because “[t]he accused Dynamic
Data functionality requires significant developer effort to
‘scan said database’ and to complete the claimed steps.”
J.A. 2083–87. In opposing summary judgment, Mr. Kauf-
man stated that the human involvement Microsoft had
identified was “preliminary set-up by the user” that “does
not affect the automatic nature of the scanning.” J.A. 2334.
In reply, Microsoft stated that there was a “fundamental
legal dispute as to the meaning of ‘automatic[]’ in the
claims,” J.A. 2639, and it reiterated the “no human labor
required” meaning, but it did not propose a construction
that identified the line between what actions had to be au-
tomatic and what actions the developer could take
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KAUFMAN v. MICROSOFT CORPORATION 6
manually. J.A. 2640–41. Microsoft had previously argued
during claim construction that the plain and ordinary
meaning of “automatically” “permits some user interven-
tion.” J.A. 400 n.3.
Microsoft made a second argument in its summary-
judgment motion, independent of its argument based on
the claim’s “automatic” language. It argued that its Dy-
namic Data software does not meet limitation (c) because
that software does not integrate into each mode display in
the created user interface processes for representing, nav-
igating, and managing table relationships. J.A. 2088–89.
Microsoft cited Mr. Kaufman’s expert, Dr. Shasha, who had
admitted in his deposition that some Dynamic Data mode
displays do not have all three of those processes—specifi-
cally, the mode display corresponding to the “retrieve” and
“delete” modes does not include a “managing” process. J.A.
2144–45. Microsoft stated that, while “each” and “and”
carry their plain and ordinary meanings in the claim lan-
guage, “the parties dispute what that ordinary meaning is.”
J.A. 2088. Microsoft argued that the combination of “each”
and “and” required all three processes to be present in any
given mode display. J.A. 2089.
At the summary judgment motion hearing on January
16, 2020, which also served as the pretrial hearing, Mi-
crosoft stated that there was “a claim construction dispute
between the parties”—“a legal issue that needs to be re-
solved before trial under O2 Micro.” J.A. 2982. After some
discussion, the parties appeared to agree that “automatic”
means that “no separate developer input occurs.” J.A.
2987. When Microsoft stated, “[T]he issue is that the par-
ties have a fundamental disagreement as to the meaning
of . . . automatic and how that applies to the scanning and
each of these limitations here,” the district court stated its
belief that the parties did not disagree on the word auto-
matic, but rather “on when an automatic operation comes
into play and when it ends.” J.A. 2997. It then stated, “I
can’t tell you who is right, whether there is contemplated a
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KAUFMAN v. MICROSOFT CORPORATION 7
human selection that itself will then cause an automatic
generation of some other function or some other result or
whether everything has to be automatic.” J.A. 2998. After
Microsoft’s counsel asked, “Can we resolve the claim con-
struction issue?” the district court said, “You agreed on a
definition,” and Mr. Kaufman’s counsel said, “I think we
have resolved it.” J.A. 2998.
Microsoft’s counsel then moved on to the next issue: the
construction of “and” in limitation (c). J.A. 2998–99. Mi-
crosoft summarized the parties’ positions as follows: “Mr.
Kaufman’s position is that it means and/or, meaning that
each said mode does not need to have all three . . . pro-
cesses. And Microsoft’s position is that each [mode] must
have each process: Representing, navigating, and manag-
ing. . . . There is no factual dispute on this issue.” J.A.
2999. The district court stated, “I can’t define this further.
We have the terms as they are, and they are not susceptible
to further definition.” J.A. 3001. It then orally denied the
motion for summary judgment with respect to the nonin-
fringement argument based on “and.” J.A. 3002.
On January 22, 2020, the district court issued an order
denying Microsoft’s summary-judgment motion with re-
spect to both noninfringement arguments. Kaufman v. Mi-
crosoft Corp., No. 1:16-cv-02880, 2020 WL 364136, at *3
(S.D.N.Y. Jan. 22, 2020). It reiterated its belief that “[t]he
parties do not dispute the plain and ordinary meaning of
automatic, but they do dispute what steps actually com-
prise the process of ‘scan[ning] said database and ap-
ply[ing] a body of rules,’ as well as whether those steps are
‘automatic[]’ in Dynamic Data and related tools.” Id.
2
On January 27, 2020, trial began. Mr. Kaufman testi-
fied about the patent. Of relevance to the limitation (c) is-
sue, he explained that Figure 2 of the patent depicted a
“search screen” in his preferred embodiment, which was a
part of the “retrieve” mode, and that the depicted screen
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KAUFMAN v. MICROSOFT CORPORATION 8
does not “incorporate functionality for managing the data”
because there was no data to manage in that mode. J.A.
3292–95.
Mr. Kaufman also called his expert, Dr. Shasha, to tes-
tify about Dynamic Data. Dr. Shasha demonstrated the
process of using Dynamic Data to generate a client appli-
cation from a database. See J.A. 3414–20; J.A. 3437–42.
Before scanning the database, he opened a “Dynamic Data
template” inside a program called Visual Studio, clicked to
“add[] an entity data model” to the project and identify the
database for which he would be building an interface, ac-
cepted some default selections, including one to have the
interface cover all the tables from the database, and then
clicked “Finish.” J.A. 3414–18. Upon clicking “Finish,” the
Dynamic Data software scanned the database and “created
a whole bunch of files” and “code . . . that will eventually
enable the application [the created user interface] to go
fetch data from the database and allow the user to modify
the data.” J.A. 3418–19. When the scanning was com-
pleted, Dr. Shasha changed “five lines” in a “particular file
called global.asax” to point the Dynamic Data software to
the output generated by the “scanning” step, J.A. 3438–40,
and to enable the “scaffolding” feature of Dynamic Data,
J.A. 3439–41; see J.A. 5162 (“Scaffolding refers to the Dy-
namic Data elements that automatically generate Web
pages for each table in a database.”). Then, Dr. Shasha
clicked one more button to “bring up the Web interface to
this database,” i.e., to open the newly created user interface
for the database on the screen in front of him. J.A. 3441.
He testified that what he had done was “automatic,” even
though he had to identify the database, establish its name,
and change five lines of the program, explaining that those
steps were “setup” and “independent of the number of ta-
bles, the number of relationships,” and “the part that’s au-
tomatic is actually generating the interface.” J.A. 3446.
Microsoft called Mr. Hunter, the Microsoft developer
who had created Dynamic Data, to testify about the
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KAUFMAN v. MICROSOFT CORPORATION 9
product. Mr. Hunter walked through the steps required to
use Dynamic Data to create a user interface, J.A. 3591–95,
and testified that even though Microsoft marketing mate-
rials said that Dynamic Data was “a way to automatically
generate web pages for each table in the database,” the
software did not do so “without any developer input,” J.A.
3597.
Regarding damages, Mr. Kaufman sought only a rea-
sonable royalty, and the parties stipulated that they would
have “entered into a lump sum license agreement at the
February 2011 hypothetical negotiation” of that royalty.
J.A. 3845. Mr. Kaufman’s expert, Mr. Dies, testified that
the royalty calculation would start with a determination
that Mr. Kaufman would be entitled to $16.8 million in
payments from February 2011 to patent expiration in 2021
if the royalty were a running one, but that stream of pay-
ments would be discounted to a 2011 “present value,” J.A.
3920, resulting in a 2011 lump sum payment of between
$5.5 million and $10.5 million (assuming a discount rate of
between 10% and 30%), J.A. 3927–28. Dr. Stec, for Mi-
crosoft, testified that the lump-sum royalty would have
been just $230,000. J.A. 4025. Mr. Hunter, for Microsoft,
also made a point relevant to damages, stating that, hypo-
thetically, it would have cost less than $10,000 to disable
the functionality within Dynamic Data that enabled auto-
matic creation of a representation of the data model provid-
ing the structure of a database. J.A. 3750–53.
3
The jury found all asserted claims valid and infringed,
J.A. 4267–68, and then returned a damages verdict of $7
million for Mr. Kaufman, J.A. 4299. Mr. Kaufman, as rel-
evant here, moved for the inclusion of pre-judgment inter-
est. J.A. 6607–21. Microsoft moved for judgment as a
matter of law and for a new trial. In particular, Microsoft
argued that the district court had failed to resolve claim-
construction disputes before trial with regard to
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KAUFMAN v. MICROSOFT CORPORATION 10
“automatically” and “and,” entitling it to a new trial under
O2 Micro International, Ltd. v. Beyond Innovation Technol-
ogy Co., 521 F.3d 1351 (Fed. Cir. 2008), and that under the
correct claim constructions, it was entitled to a judgment
of noninfringement as a matter of law. J.A. 6665–79; J.A.
6683–85.
The district court denied both motions. Regarding pre-
judgment interest, the court concluded that the present
case was an exception to the general rule that successful
patent plaintiffs were entitled to prejudgment interest be-
cause the jury verdict “subsumed interest,” based on the
facts that the verdict form asked generally, “How much has
Mr. Kaufman proved he is entitled to recover?” and that
the jury was instructed to compute a lump sum payment
“discounted to present value.” Prejudgment Interest Order,
2021 WL 260485, at *1. Regarding Microsoft’s motion, for
the “automatic” limitation, the district court held that the
jury could reasonably find that the manual steps identified
by Microsoft at trial “were preparatory and follow-up steps,
and not a replacement for the automatic steps claimed,”
and it reasoned that the application of the court’s definition
of “automatic” (“no separate developer input is required”)
to the operation of Dynamic Data was an issue of fact.
JMOL Order, 2021 WL 242672, at *3. As to the “and” lim-
itation, the district court held that “and” in the context of
this patent means “and/or,” so Microsoft’s noninfringement
challenge failed. Id. at *4.
Microsoft and Mr. Kaufman each appeal the denials of
their respective post-trial motions. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
II
Microsoft argues that the district court erred in deny-
ing its motion for judgment as a matter of law and for a
new trial. We follow the regional circuit on the non-patent-
specific standards governing such motions and governing
our review of the district court’s denial. Raytheon Co. v.
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KAUFMAN v. MICROSOFT CORPORATION 11
Indigo Sys. Corp., 895 F.3d 1333, 1338 (Fed. Cir. 2018).
Under Second Circuit law, the denial of a motion for judg-
ment as a matter of law is reviewed de novo, and the denial
is proper unless “there is such a complete absence of evi-
dence supporting the verdict that the jury’s findings could
only have been the result of sheer surmise and conjecture,
or the evidence in favor of the movant is so overwhelming
that reasonable and fair minded persons could not arrive
at a verdict against it,” Ashley v. City of New York, 992 F.3d
128, 138–39 (2d Cir. 2021) (cleaned up), an assessment
made “consider[ing] the evidence in the light most favora-
ble to the non-movant and giv[ing] that party the benefit of
all reasonable inferences that the jury might have drawn
in their favor,” id. at 139. A denial of a new trial is re-
viewed for abuse of discretion, which is present if the dis-
trict court “has (1) based its ruling on an erroneous view of
the law, (2) made a clearly erroneous assessment of the ev-
idence, or (3) rendered a decision that cannot be located
within the range of permissible decisions.” Manganiello v.
City of New York, 612 F.3d 149, 165 (2d Cir. 2010) (cleaned
up).
A
Microsoft presents three arguments on appeal with re-
spect to the phrase “automatically generating,” which is
found in the preambles of the asserted claims. First, Mi-
crosoft argues that the district court erred in failing to clar-
ify the reach of the “automatically” requirement for the
jury, warranting a new trial under O2 Micro because a clar-
ification could reasonably have led the jury to a different
verdict. Microsoft Opening Br. 43–44. Second, Microsoft
argues that the “automatically” requirement extends to the
entire function of “generating an end-user interface,” in-
cluding any unrecited steps included in the accused
method, id. at 32–33, and that it is entitled to judgment of
noninfringement as a matter of law because of the undis-
puted evidence that the developer must take certain ac-
tions in order for Dynamic Data to run successfully, id. at
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KAUFMAN v. MICROSOFT CORPORATION 12
38–44. Finally, Microsoft argues that “[e]ven under the
district court’s claim construction in which only claimed
steps (a), (b), and (c) must be performed automatically,” it
does not infringe because its software does not perform the
scanning step automatically. Id. at 44–46. We discuss
these arguments in turn, though they are closely related.
1
We first hold that Microsoft failed to preserve its O2
Micro challenge. “The purpose of claim construction is to
‘determin[e] the meaning and scope of the patent claims
asserted to be infringed.’” O2 Micro, 521 F.3d at 1360
(quoting Markman v. Westview Instruments, Inc., 52 F.3d
967, 976 (Fed. Cir. 1995) (en banc), aff’d 515 U.S. 370
(1996)). “When the parties raise an actual dispute regard-
ing the proper scope of these claims, the court, not the jury,
must resolve that dispute.” Id. “There is not necessarily
an O2 Micro issue, however, whenever further claim con-
struction could resolve the parties’ dispute”—rather, a
party must “sufficiently request further construction of the
relevant limitation” to “raise an actual dispute.” LifeNet
Health v. LifeCell Corp., 837 F.3d 1316, 1322 (Fed. Cir.
2016); see also Eon Corp. IP Holdings v. Silver Spring Net-
works, 815 F.3d 1314, 1319 (Fed. Cir. 2016) (“[A] district
court’s duty at the claim construction stage is . . . to resolve
a dispute about claim scope that has been raised by the par-
ties.” (emphasis added)). If “[t]here is no indication” that
the court was “aware of the supposed dispute,” a party is
considered to have forfeited the O2 Micro issue and cannot
“resurrect” its argument on appeal by “pointing to ambigu-
ous statements in the record.” Lazare Kaplan Int’l, Inc. v.
Photoscribe Technologies., Inc., 628 F.3d 1359, 1376 (Fed.
Cir. 2010).
A proper claim construction provides a legal standard
for the jury to apply, and so the requirement of clear, timely
raising of an argument for a claim construction reflects the
strong requirement of timely raising of distinct objections
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KAUFMAN v. MICROSOFT CORPORATION 13
to jury instructions. See Fed. R. Civ. P. 51(c); see also, e.g.,
Emamian v. Rockefeller Univ., 971 F.3d 380, 387 (2d Cir.
2020); Ecolab, Inc. v. Paraclipse, Inc., 285 F.3d 1362, 1369–
70 (Fed. Cir. 2002). Sometimes, it is recognized, there is
an exception to that requirement: An issue sometimes need
not be re-raised in the specific setting of making proposals
for or airing objections to jury instructions if it was suffi-
ciently raised and settled earlier. See Emamian, 971 F.3d
at 387–88; Ecolab, 285 F.3d at 1370. We recognized the
application of that principle to claim construction in O2 Mi-
cro, referring to circumstances in which the claim-construc-
tion position of the appellant was “made clear to the district
court,” a further objection would have been “not only futile
but unnecessary,” and the issue was “fully litigated and de-
cided at the Markman stage of the litigation,” 521 F.3d at
1359 (discussing the law of several circuits).
In this case, Microsoft did not include a definition of the
scope of the “automatically” requirement in its proposed
jury instructions. Nor does Microsoft point to anything it
said in the charging conference that raised the issue. And
this is not a case where the exception noted in O2 Micro
applies.
In the original Markman proceeding, the parties did
not request a construction of the word “automatically” or
raise an issue of the scope of the “automatically generating”
requirement. During the motion for summary judgment
briefing, Microsoft, in its reply memorandum, described
the “human labor” involved in use of Dynamic Data, and it
asserted a need for a claim construction under O2 Micro,
but it said only that there was “a fundamental legal dispute
as to the meaning of ‘automatic[]’ in the claims.” J.A. 2639–
40. It never clearly said that, apart from what “automatic”
means, a construction was needed specifying what func-
tions had to be automatic, i.e., the scope of the “automati-
cally generating” requirement. And it never offered the
district court a formulation of such a claim construction re-
solving that scope issue.
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KAUFMAN v. MICROSOFT CORPORATION 14
Nor did Microsoft do so at the pre-trial hearing. As de-
scribed above, Microsoft said that “the issue is that the par-
ties have a fundamental disagreement as to the meaning
of . . . automatic and how that applies to the scanning and
each of these limitations here.” J.A. 2997. It never offered
a proposed construction of the second half of that issue.
And when the district court expressed uncertainty about
defining “when an automatic operation comes into play and
when it ends,” J.A. 2997; see also J.A. 2998, Microsoft’s
counsel asked, “Can we resolve the claim construction is-
sue?”; the district court said, “You agreed on a definition”;
Mr. Kaufman’s counsel said, “I think we have resolved it”;
and the court stated the agreed construction, “No separate
developer input is required,” J.A. 2998. Microsoft’s counsel
then moved on to the next issue.
In Microsoft’s current view, that resolution did not re-
solve a claim-construction dispute about what human ac-
tions were permitted; the absence of such a resolution is
the very premise of Microsoft’s O2 Micro argument. But
the above colloquy suggests that the district court reason-
ably thought that the only adequately presented claim-con-
struction issue had been resolved. And in any event, if
there was a further claim-construction issue about what
human actions were permitted, Microsoft never defined a
claim construction that would accommodate certain human
actions Microsoft itself has acknowledged are permissible,
see Microsoft Reply Br. 9 (“Microsoft agrees that such pre-
invocation steps may require developer input . . . .”), and
that Mr. Kaufman and the district court could scrutinize
and address. In these circumstances, the failure to pursue
the matter at the jury-instruction stage constitutes a for-
feiture.
2
We also reject Microsoft’s second argument, presented
for the first time on appeal, that “automatically generat-
ing” should be construed broadly to require some defined
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KAUFMAN v. MICROSOFT CORPORATION 15
set of steps beyond those recited by the claims in (a), (b),
and (c) to be performed automatically. Microsoft never pro-
posed such a construction to the district court. And the fact
that the claims are “comprising” claims does not suggest
that all other, non-listed actions must be performed auto-
matically.
Microsoft itself concedes that it is permissible under
the claim for at least some steps to be taken by the devel-
oper, such as steps that involve placing the desired data-
base before the user-interface-generating software, so that
the latter may run on the former to generate the desired
user interface. Microsoft Reply Br. at 9–10 (“Microsoft
agrees that such pre-invocation steps may require devel-
oper input—without the developer identifying the data-
base-of-interest, the program has no starting point from
which to automatically generate the end-user interface.
The manual database-selection step that Mr. Kaufman
points to thus does not alter the automatic nature of the
claimed end-user-interface-generation process.”). Mi-
crosoft’s concession confirms that the claim language al-
lows humans to take steps needed to produce the user
interface. Notably, the preamble does not say that the en-
tire “method” of creating a final user interface must be au-
tomatic. It requires a “method for operating a server” and
says that the server being operated must have a “processor
for automatically generating an end-user interface.” ’981
patent, col. 377, lines 2–5. Those words distinguish the
method from a device the method uses, and they identify
the device used (a processor in a server) by a capability, not
by requiring a set of steps actually to be performed. More-
over, the words do not preclude human activities to config-
ure the processor for the desired generation, which must
then be automatic, and they do not define “generating” as
leaving no room for minor final human adjustments, after
the processor has done its work, to produce the final on-
screen interface. Similarly, the scanning limitation (b),
which has been the focus of the litigation, uses the phrase
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KAUFMAN v. MICROSOFT CORPORATION 16
“causing said server to scan . . . ,” distinguishing two ac-
tions—the server’s scanning and the developer’s actions
“causing” that to occur. Id., col. 377, lines 20–24. That lan-
guage permits at least some pre-scanning human actions.
3
Microsoft’s final argument with respect to the “auto-
matically generating” language is that, even if “automati-
cally” extends only to the steps of the claimed method
enumerated in limitations (a), (b), and (c), there was insuf-
ficient evidence to support the jury’s finding that use of Dy-
namic Data infringed limitation (b) of the claim. The
question is “whether substantial evidence supported the
verdict under the agreed” claim construction. Hewlett-
Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1320
(Fed. Cir. 2003).
Microsoft identified certain manual steps that a devel-
oper must take to operate Dynamic Data and claimed that
those steps fell within the enumerated limitations. But as
the district court correctly explained, the jury reasonably
could have found, based on Dr. Shasha’s testimony, that
each manual step identified by Microsoft was not part of
the “scanning” functionality itself. JMOL Order, 2021 WL
242672, at *3; see J.A. 3446. Rather, those steps—checking
various boxes, clicking certain buttons, and making basic
alterations to a single file—could be considered “prepara-
tory and follow-up steps” outside the scope of the “scan-
ning” itself, and therefore, their manual nature would not
defeat an infringement finding. JMOL Order, 2021 WL
242672, at *3.
Microsoft failed to establish that the district court
erred in its claim construction or that the jury’s verdict was
not supported by substantial evidence. Thus, we affirm the
jury’s finding that the accused processes involving use of
Dynamic Data come within the “automatically generating”
limitation.
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KAUFMAN v. MICROSOFT CORPORATION 17
B
Microsoft argues that the district court erred by not
providing a construction to the jury of the word “and”
within the limitation requiring integration of “processes for
representing, navigating, and managing said relationships
across tables” into each claimed mode display. Microsoft
also argues that the district court erred in the post-trial
ruling when it concluded that “and” means “and/or,” con-
tending that the phrase should be given the conjunctive
meaning, so that the client application (constituting the
end-user interface) must integrate into each of the individ-
ual mode displays (for creating, retrieving, updating, and
deleting) all three of the “processes for representing, navi-
gating, and managing said relationships across tables.”
Under that construction, Microsoft adds, it is entitled to
judgment of noninfringement because Dynamic Data un-
disputedly does not integrate all three types of processes
into each mode display.
We decide only the correctness of the district court’s
and/or construction. Because we agree with that construc-
tion, we do not address Microsoft’s other arguments. And
because it is undisputed that Dynamic Data integrates at
least one of the enumerated processes into each mode dis-
play, Microsoft’s noninfringement argument depends on its
claim-construction argument. Cf. Finjan, Inc. v. Secure
Computing Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010)
(“We may affirm the jury’s findings on infringement if cor-
rection of the errors in a jury instruction on claim construc-
tion would not have changed the result, given the evidence
presented.” (cleaned up)).
“A claim construction that excludes a preferred embod-
iment is rarely, if ever correct and would require highly
persuasive evidentiary support.” Epos Technologies Ltd. v.
Pegasus Technologies Ltd., 766 F.3d 1338, 1347 (Fed. Cir.
2014) (cleaned up); see also Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). A fortiori as to
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KAUFMAN v. MICROSOFT CORPORATION 18
excluding a sole embodiment. Microsoft does not dispute
that the sole embodiment described in the ’981 patent spec-
ification, the SCHEMALIVE™ program, does not include a
process for “managing said relationships across tables.”
See ’981 patent, Fig. 2; J.A. 3292–95 (explaining that Fig.
2, a “retrieve” display, lacks a “managing” process). Thus,
we evaluate the claim language with a strong presumption
that it encompasses the situation where a mode display in-
tegrates some, but not all, of the enumerated processes.
Microsoft cannot meet the high bar required to con-
clude that the patent excludes the only embodiment de-
scribed in the specification. Microsoft’s only meaningful
point is that “and” must carry its usual conjunctive mean-
ing. But, while we recognize that we may not “redraft
claims . . . whether to make them operable or to sustain
their validity,” Lucent Technologies, Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215 (Fed. Cir. 2008)—or, as here, to cause
them to encompass the sole described embodiment—this is
not a case where there is “only one reasonable construc-
tion,” id. Rather, we have recognized that, in certain con-
texts, the word “and” can reasonably be understood to
denote alternatives, rather than conjunctive requirements.
In Ortho-McNeil Pharmaceutical v. Mylan Laboratories,
we held that, in a patent that described two mutually ex-
clusive possibilities for the composition of a compound con-
nected by the word “and,” the claim language did not
“require their simultaneous existence.” 520 F.3d 1358,
1361 (Fed. Cir. 2008). We observed that the context of the
patent “[w]ithout question . . . shows use of the word and
to join alternatives.” Id. at 1362. We held that we were
not required to “interpret and according to its most com-
mon usage in the dictionary”; rather, we “must interpret
the term to give proper meaning to the claim in light of the
language and intrinsic evidence.” Id. at 1362–63.
With the claim term not foreclosing the and/or mean-
ing, that meaning is the correct one in context here. The
specification undisputedly illustrates in its sole
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KAUFMAN v. MICROSOFT CORPORATION 19
embodiment a mode display that does not integrate all the
enumerated processes. The specification repeatedly uses
the word “and” when describing the processes for “repre-
senting,” “navigating,” and “managing” relationships
across tables when describing the invention. ’931 patent,
col. 3, lines 43–47; id., col. 6, lines 46–57; id., col. 12, lines
24–29. And while Microsoft has noted that software could
be written to include all three processes in each display
mode, even a process that has no sensible place in a partic-
ular mode, Microsoft did not suggest, at least in its opening
brief in this court, any reason a skilled artisan would find
such inclusion even arguably sensible or, therefore, a plau-
sible reading of the claim language, especially when, so in-
terpreted, the language would read out the only
embodiment.
For those reasons, we agree with the district court’s
holding that the “proper meaning” of the claim in light of
the entire patent cannot require all three processes to be
integrated into all the mode displays. We therefore affirm
the jury’s finding of infringement with respect to this term.
III
On cross-appeal, Mr. Kaufman argues that the district
court erred in denying his motion to amend the judgment
to include prejudgment interest. We agree.
We review a district court’s denial of prejudgment in-
terest in patent cases for an abuse of discretion. Sanofi-
Aventis v. Apotex Inc., 659 F.3d 1171, 1177 (Fed. Cir. 2011).
“A district court abuses its discretion when its decision is
based on clearly erroneous findings of fact, is based on er-
roneous interpretations of the law, or is clearly unreasona-
ble, arbitrary or fanciful.” Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en
banc).
Damages awarded in patent-infringement cases must
be “adequate to compensate for the infringement, but in no
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KAUFMAN v. MICROSOFT CORPORATION 20
event less than a reasonable royalty for the use made of the
invention by the infringer, together with interest and costs
as fixed by the court.” 35 U.S.C. § 284 (emphases added).
The Supreme Court has explained that Congress intended
that “prejudgment interest should ordinarily be awarded
where necessary to afford the plaintiff full compensation
for the infringement.” General Motors Corp. v. Devex Corp.,
461 U.S. 648, 654 (1983). “In the typical case an award of
prejudgment interest is necessary to ensure that the patent
owner is placed in as good a position as he would have been
had the infringer entered into a reasonable royalty agree-
ment.” Id. at 655. The Court added, however, that because
interest is “fixed by the court,” a district court has some
discretion to decide whether to award prejudgment inter-
est, and “it may be appropriate to limit prejudgment inter-
est, or perhaps even to deny it altogether, where the patent
owner has been responsible for undue delay in prosecuting
the lawsuit,” among other potential, unnamed circum-
stances. Id. at 656–57. In any case, “some justification” is
required to withhold prejudgment interest. Id. at 657.
The district court provided two rationales for denying
prejudgment interest to Mr. Kaufman: first, that the jury
verdict “subsumed interest,” and second, that Mr. Kauf-
man was responsible for “undue delay” in bringing the law-
suit, causing prejudice to Microsoft. Prejudgment Interest
Order, 2021 WL 260485, at *1. Neither rationale is sup-
portable on the record here.
The jury verdict cannot reasonably be understood to in-
clude interest. Consistent with the parties’ stipulation be-
fore the jury that “[t]he parties would have entered into a
lump sum license agreement at the February 2011 hypo-
thetical negotiation,” J.A. 3845, all the expert testimony at
trial discussed what amount Microsoft would have paid Mr.
Kaufman for a license in 2011, see J.A. 3918–28; J.A. 4025.
No testimony to which we have been pointed would have
given the jury any basis for calculating how to include in-
terest on the 2011 amount to the present.
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KAUFMAN v. MICROSOFT CORPORATION 21
The jury instructions reiterated that the jury should
“focus on what the expectations of the [parties] would have
been . . . had they entered into an agreement [in 2011].”
J.A. 4294. They also stated that “the parties have agreed
that a reasonable royalty in this case should take the form
of a single lump-sum payment for the life of the patent, dis-
counted to present value.” Id. That mention of “present
value” did not suggest to the jury that its calculation should
add interest accruing from the 2011 hypothetical negotia-
tion date to the present; rather, it was a reminder that—
consistent with the expert testimony, J.A. 3920–22—the
lump-sum royalty payment should incorporate the hypo-
thetical future royalty payments by using a discount rate
to calculate the 2011 value of the stream of such payments,
hence decreasing their numeral amounts. Finally, the
question asked on the verdict form, “What has Mr. Kauf-
man proved he is entitled to recover as a one-time royalty
payment for the life of the patent?”, J.A. 7250; see also J.A.
19 (district court referring to question, “How much has Mr.
Kaufman proved he is entitled to recover?”), even if it could
be interpreted as asking for an inclusion of interest, does
not direct the jury to include interest.
Given that all the testimony and the oral jury instruc-
tions assumed a 2011 hypothetical negotiation and pro-
vided no basis for calculating prejudgment interest, it was
unreasonable for the district court to conclude that the
damages figure provided by the jury subsumed interest.
The district court also erred in concluding that Mr.
Kaufman was responsible for undue delay justifying denial
of prejudgment interest. For one, the fact that Mr. Kauf-
man did not sue for five years after he became aware of
Microsoft’s potential infringement does not alone justify a
finding of undue delay. The district court relied on Crystal
Semiconductor Corp. v. Tritech Microelectronics Interna-
tional, Inc., 246 F.3d 1336 (Fed. Cir. 2001), but there the
court credited the defendant’s evidence that a two-year de-
lay was a “litigation tactic” that was “self-serving”: the
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KAUFMAN v. MICROSOFT CORPORATION 22
plaintiff had two years earlier sent letters to dozens of
other companies informing them of its patent rights but ex-
cluded the defendant. Id. at 1362. Here, Microsoft pre-
sented no such evidence as to why Mr. Kaufman’s delay
was undue.
In particular, to show that delay was undue, a defend-
ant must, at least generally, show that it was prejudiced.
See id. (“[A]bsent prejudice to the defendants, any delay by
Lummus does not support the denial of prejudgment inter-
est.”). Microsoft presented evidence that it could have al-
tered Dynamic Data in 2011 to not infringe the patent, J.A.
3750–53, but not evidence that it would have. And the dis-
trict court did not find otherwise, stating only that Mi-
crosoft “might” have altered Dynamic Data. Prejudgment
Interest Order, 2021 WL 260485, at *1. Additionally, Mi-
crosoft’s assertion—presented as evidence of a non-infring-
ing alternative design—was clearly not credited by the
jury, which found that Microsoft would have paid $7 mil-
lion to license the patent from Mr. Kaufman. The district
court lacked reasonable support for its determination that
Microsoft had demonstrated prejudice from the five-year
delay in bringing the lawsuit.
We conclude that the district court abused its discre-
tion in denying Mr. Kaufman’s motion to amend the judg-
ment to include prejudgment interest. We reverse the
district court’s denial of the motion.
IV
For the foregoing reasons, we affirm the district court’s
denial of Microsoft’s motion for judgment as a matter of law
or for a new trial, and we reverse the district court’s denial
of prejudgment interest to Mr. Kaufman.
Costs to Mr. Kaufman.
AFFIRMED IN PART AND REVERSED IN PART
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