United States Court of Appeals for the Federal Circuit 

 2007-1539 

PREDICATE LOGIC, INC., 

Plaintiff-Appellant, 

v. 

DISTRIBUTIVE SOFTWARE, INC., 

Defendant-Appellee. 

Christopher S. Marchese, Fish & Richardson P.C., of San Diego, California, 

for plaintiff-appellant. With him on the brief were Seth M. Sproul and John A. 

Dragseth of Minneapolis, Minnesota. 

John C. Wynne, Duckor Spradling Metzger & Wynne, of San Diego, California, 

argued for defendant-appellee. With him on the brief was Bernard L. Kleinke. 

Appealed from: United States District Court for the Southern District of California 

Judge William Q. Hayes 
United States Court of Appeals for the Federal Circuit 

2007-1539 

PREDICATE LOGIC, INC., 

Plaintiff-Appellant, 

v. 

DISTRIBUTIVE SOFTWARE, INC., 

Defendant-Appellee. 

Appeal from the United States District Court for the Southern District of California in 

case no. 01-CV-1951, Judge William Q. Hayes. 

__________________________ 

DECIDED: October 9, 2008 

__________________________ 

Before NEWMAN, LOURIE, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

When the complexities inherent in the English language meet the peculiarities of 

patent jargon, the result can be the bane of many unsuspecting patentees. While claim 

language is generally the product of the patentee alone, the patentee’s drafting efforts 

are sometimes aided by the examiner. Usually, such collaborative efforts are 

constructive. On occasion, however, these efforts result in confusion, not clarity. In this 

case, there were two such occasions. The first was during the original prosecution—

when the patentee authored and the examiner allowed a claim with an arguably 

ambiguous limitation. The second was during reexamination—when the patentee and 

the examiner clarified the claim but failed to make an adequate record explaining the 

rationale for the amendment. Careful and straightforward claim drafting by prosecuting 
attorneys and agents, and rigorous application by examiners of the statutory standard to 

particularly point out and distinctly claim the subject matter regarded to be the invention, 

see 35 U.S.C. § 112, ¶ 2 (2000), serve an important public notice function. Here, the 

public notice function was not well served. Indeed, the controversy in this case might 

have been avoided had the claims been presented differently and accepted by the 

examiner only after more careful scrutiny. 

In this action, Predicate Logic, Inc. (“Predicate”) brought suit against Distributive 

Software, Inc. (“Distributive”) for infringement of U.S. Patent No. 5,930,798 (the “’798 

patent”). The ’798 patent relates to measurement and analysis technologies for use in 

software development. During the litigation, Distributive requested ex parte 

reexamination of the ’798 patent, and the claims were allowed as amended during 

reexamination. Distributive then argued to the district court that the asserted claims 

were invalid because the amendment during reexamination improperly broadened the 

claims. The district court agreed and granted Distributive’s motion for summary 

judgment of invalidity. Predicate Logic, Inc. v. Distributive Software, LLC, No. 01-CV1951, slip op. at 17 (S.D. Cal. Jan. 25, 2007) (“Jan. 25 Op.”); Predicate Logic, Inc. v. 

Distributive Software, LLC, No. 01-CV-1951, slip op. at 7-8 (S.D. Cal. July 12, 2007) slip 

op. at 7-8 (“July 12 Op.”). Because we disagree with the district court’s conclusion that 

the amendment substantively changed the scope of claim 1 of the ’798 patent, we 

reverse and remand. 

I. BACKGROUND 

The ’798 patent discloses a universal data measurement, analysis, and control 

method that can be used in the software development process. ’798 patent col.3 ll.34-

43. Measuring and forecasting the software development process is difficult because 

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multiple different programming languages may be used on a single project, and each 

programming language has different metrics. Id. col.1 ll.11-62. For example, in one 

programming language, the number of lines of code written may be a good metric to 

track programming progress, while in another programming language, code may not be 

organized into lines at all. Thus, the “lack of internally consistent data” makes it difficult 

to measure and forecast software development. Id. col.1 ll.24-28. 

The ’798 patent attempts to solve this problem with a “universal” system for data 

measurement and analysis. Id. col.3 ll.34-37. Because software is typically organized 

hierarchically, the invention of the ’798 patent uses a series of pre-defined rules to 

generate one or more hierarchical indexes that serve as templates for the data to be 

collected from all of the components of the project. Id. col.3 ll.59-64. The invention 

then discloses selectively “instantiating” those hierarchical indexes—i.e., populating the 

index fields with data from the project—and comparing the results of these 

instantiations. Id. col.3 l.65-col.4 l.5. 

Predicate brought suit against Distributive in 2001 alleging infringement of the 

’798 patent. Jan. 25 Op. at 1. At Distributive’s request, the United States Patent and 

Trademark Office initiated reexamination of the ’798 patent, and the district court stayed 

the infringement action pending the outcome of the reexamination. Id. at 2. During 

reexamination, the examiner initially found all claims anticipated by the reference that 

was the basis for Distributive’s reexamination request, as well as obvious in light of that 

reference combined with other art. Id. Following a response by Predicate, the 

examiner withdrew the anticipation rejection but maintained the obviousness rejection. 

Id. Predicate appealed to the Board of Patent Appeals and Interferences, but the 

2007-1539 3
examiner withdrew the obviousness rejection in light of Predicate’s brief to the Board. 

Id. Additionally, the examiner issued an “Examiner’s Amendment” to claims 1 and 15—

the only independent claims of the ’798 patent. Id. The examiner did not give any 

reason for the amendment. Id. The claims as amended were allowed. ’798 patent, 

Reexamination Certificate, col.1 ll.17-18. 

The amendment to claim 1 is at issue in this appeal. Claim 1, as amended, is as 

follows: 

1. A method of providing a universal data analysis, measurement and 

control system for a variety of types of input data components comprising 

data sets, the method being implemented in a programmed computer 

comprising a processor, at least one data storage system, at least one 

input device and at least one output device, the method comprising the 

steps of: 

generating, by means of the programmed computer, at least one 

hierarchical index linked to each of the input data components, said 

at least one index being generated under pre-defined formatting 

rules and further including a description of each of the data sets, 

each said data set description including at least one quantified 

description of each data set; 

storing said at least one index in at least one of the data storage 

systems; 

[instantiating said at least one index by means of the programmed 

computer;] 

first instantiating at least one said index by means of the 

programmed computer; 

second instantiating at least one said index by means of the 

programmed computer; 

storing said first and second instantiations of [said] at least one 

said index in at least one of the data storage systems; 

comparing at least one of the data sets linked to at least one of said 

instantiated indexes to at least another of the data sets linked to at 

least another of said instantiated indexes by means of the 

programmed computer; and 

2007-1539 4
applying the output of said comparing to at least one of the output 

devices. 

Id. col.1 l.23-col.2 l.10 (brackets indicating deletions and emphasis indicating additions 

made by amendment). 

The infringement action resumed after the conclusion of the reexamination 

proceeding. Distributive argued that the amendments during reexamination 

substantively changed the claims and resulted in an improper broadening of claim 

scope. The district court agreed and found that the ’798 patent was substantively 

changed during reexamination in two respects. Jan. 25 Op. at 17. First, the district 

court found that the amendment from “said at least one index” to “at least one said 

index” broadened the scope of claim 1. Id. at 10-13. Second, the district court found 

that the amendment deleting the “instantiating” step and replacing it with two steps—

“first instantiating” and “second instantiating”—substantively changed the claim by 

narrowing it. Id. at 16. The district court granted summary judgment of invalidity in 

favor of Distributive. July 12 Op. at 4, 7. 

Predicate appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) 

(2000). 

II. DISCUSSION 

A. Amendment of “said at least one index” to “at least one said index” 

Under 35 U.S.C. § 305, “[n]o proposed amended or new claim enlarging the 

scope of a claim of the patent will be permitted in a reexamination proceeding.” Claims 

that are impermissibly broadened during reexamination are invalid, and “a violation of 

35 U.S.C. § 305 is an invalidity defense in a patent infringement action.” Quantum 

Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995). “Whether amendments 

2007-1539 5
made during reexamination enlarge the scope of a claim is a matter of claim 

construction, which this court reviews de novo.” Creo Prods., Inc. v. Presstek, Inc., 305 

F.3d 1337, 1344 (Fed. Cir. 2002). 

The district court concluded that shifting of the word “said” in the “instantiating” 

step of claim 1 broadened the claim’s scope. Jan. 25 Op. at 10, 13. In the claim, the 

first step of both the original and the amended versions requires “generating . . . at least 

one hierarchical index.” ’798 patent, Reexamination Certificate, col.1 ll.30-31. In the 

original claim, there is an “instantiating” step that requires “instantiating said at least one

index.” Id. col.1 l.39 (emphasis added). In the amended claim, each instantiation step 

requires “instantiating at least one said index.” Id. col.1 l.41, l.43 (emphasis added). 

The district court construed “said” to have its ordinary meaning of 

“aforementioned,” and therefore reasoned that “said at least one index” of the original 

claim must be the index or indexes that are generated in the “generating” step. Jan. 25 

Op. at 11. The district court reasoned that, because the antecedent of “said at least one 

index” in the “instantiating” step is the “at least one index” generated in the “generating” 

step, all of the indexes that are generated in the “generating” step must be instantiated 

in the “instantiating” step. Id. at 12. The district court then concluded that, by contrast, 

the amended claim language—“instantiating at least one said index”—did not require 

instantiation of all generated indexes. Id. The district court reasoned that, in the 

amended claim, “at least one said index” refers to at least one of the indexes generated 

in the “generating” step, but not necessarily all of the generated indexes. Thus, the 

district court concluded that, after amendment, “[n]o longer are all of the generated . . . 

indexes required to be instantiated.” Id. If four indexes are generated in the 

2007-1539 6
“generating” step, only one of those indexes would have to be instantiated in each 

“instantiating” step. Id. In the district court’s words: 

[I]f a third-party’s program generated four indexes, stored four indexes, 

instantiated only two of those indexes, stored the results of those 

instantiations and then compared those results, the program would not 

violate a patent with the terms of original claim 1, but would violate a 

patent with the terms of amended claim 1. Hence, the amendments to 

claim 1 broaden the scope of the patent, and therefore constitute a 

substantive change. 

Id. at 13. 

In analyzing the breadth of the claim before and after amendment, the district 

court was correct to ask whether any conceivable process would infringe the amended 

claim, but not infringe the original claim. See Quantum, 65 F.3d at 1582 n.4 (“The test 

for determining whether a reexamined claim is broader than an original claim under 35 

U.S.C. § 305 is the same as that in 35 U.S.C. § 251, last paragraph, for determining 

whether reissue claims filed more than two years after issuance of the original patent 

are broader than the original claims.”); Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 

1374 (Fed. Cir. 2006) (“A claim of a reissue application is broader in scope than the 

original claims if it contains within its scope any conceivable apparatus or process which 

would not have infringed the original patent. A reissue claim that is broader in any 

respect is considered to be broader than the original claims even though it may be 

narrower in other respects.” (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 

F.3d 1369, 1374 (Fed. Cir. 1999))). But the district court’s analysis in considering its 

hypothetical infringing process was flawed. 

The district court described its hypothetical infringing process as a process that 

“generated four indexes, stored four indexes, instantiated only two of those indexes, 

2007-1539 7
stored the results of those instantiations and then compared those results.” Jan. 25 Op.

at 13. For illustrative purposes, we depict this hypothetical infringing process as follows: 

Hypothetical Infringing Process Illustration

generating four indexes 

storing four indexes 

instantiating only two of those 

indexes 

storing the results of those 

instantiations 

comparing the results 

A B C D 

A B C D 

A B C D 

B C D

A B C D 

A

This hypothetical process plainly infringes the amended claim. The “generating 

. . . at least one hierarchical index” step of the amended claim is met by generating 

indexes A, B, C, and D. The “storing said at least one index” step is met by storing 

indexes A, B, C, and D. The “first instantiating at least one said index” step is met by 

instantiating index A. The “second instantiating at least one said index” step is met by 

instantiating index B. The “storing said first and second instantiations of at least one 

said index” step is met by storing the instantiations of indexes A and B. And the 

“comparing” step is met by comparing the data sets linked with A to the data sets linked 

with B. 

Contrary to the conclusion reached by the district court, the hypothetical process 

also infringes the original claim. The “generating . . . at least one hierarchical index” 

step is met by generating indexes A and B. Although the accused process also 

2007-1539 8
generates two additional indexes—C and D—those indexes are extraneous and do not 

affect the infringement analysis because the claim is an open-ended “comprising” claim. 

See, e.g., Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“The 

transition ‘comprising’ in a method claim indicates that the claim is open-ended and 

allows for additional steps.” (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 

1364, 1368 (Fed. Cir. 2003))). The “storing said at least one index” limitation is met by 

storing indexes A and B—the “said” indexes that were generated in the generating step. 

Again, the fact that the hypothetical process also stores indexes C and D does not 

affect the infringement analysis. The “instantiating said at least one index” step is met 

by instantiating indexes A and B—the “said” indexes that were generated in the 

generating step. The “storing said instantiation of said at least one index” step is met by 

storing the instantiations of indexes A and B. And the “comparing” step is met by 

comparing the data sets linked with A to the data sets linked with B. 

Thus, the hypothetical infringing process described by the district court would 

infringe not only the claim as amended, but also the original claim. The hypothetical 

process does not demonstrate that the claim was broadened. Moreover, we can 

imagine no conceivable process—and the parties have identified none—that would 

infringe the amended claim but would not infringe the original claim. We therefore 

conclude that the amendment of “said at least one index” to “at least one said index” did 

not broaden the scope of claim 1. 

B. Amendment of “instantiating” to “first instantiating” and “second instantiating” 

Although our conclusion concerning the shifting of “said” alone requires that we 

reverse the district court’s grant of summary judgment, we nonetheless address the 

district court’s conclusion that the amendment of “instantiating” to “first instantiating” and 

2007-1539 9
“second instantiating” was a substantive change. We do so because that issue will 

continue to be important to the ultimate disposition of the case on remand. See

Commonwealth Scientific & Indus. Research Organisation v. Buffalo Tech. (USA), Inc., 

No. 2007-1449, slip op. at 4 (Fed. Cir. Sept. 19, 2008) (addressing issue of infringement 

after vacating and remanding on issue of validity, because infringement issue “will 

continue to be important to the ultimate disposition of the case”). 

The district court did not find, and Distributive does not argue, that the 

amendment of “instantiating” to “first instantiating” and “second instantiating” broadened 

the scope of claim 1 of the ’798 patent. Rather, the district court found that the 

amendment effected a “substantive change” by narrowing the claim. Jan. 25 Op. at 16. 

Under 35 U.S.C. § 307, a claim that is amended in reexamination has the same effect 

as a claim that is amended in reissue proceedings under 35 U.S.C. § 252. 35 U.S.C. 

§ 307(b) (2000) (“Any proposed amended or new claim determined to be patentable 

and incorporated into a patent following a reexamination proceeding will have the same 

effect as that specified in section 252 of this title for reissued patents on the right of any 

person who made, purchased, or used within the United States, or imported into the 

United States, anything patented by such proposed amended or new claim, or who 

made substantial preparation for the same, prior to issuance of a certificate under the 

provisions of subsection (a) of this section.”). Correspondingly, under 35 U.S.C. § 252, 

a reissued patent is enforceable against infringing activity that occurred after the 

issuance of the original patent, “to the extent that its claims are substantially identical” to 

the claims of the original patent. Thus, “[u]nless a claim granted or confirmed upon 

reexamination is identical to an original claim, the patent can not be enforced against 

2007-1539 10
infringing activity that occurred before issuance of the reexamination certificate.” Bloom 

Eng’g Co., Inc. v. N. Am. Mfg. Co., Inc., 129 F.3d 1247, 1250 (Fed. Cir. 1997). 

“‘Identical’ does not mean verbatim, but means at most without substantive change. . . . 

An amendment that clarifies the text of the claim or makes it more definite without 

affecting its scope is generally viewed as identical . . . .” Id. 

The district court concluded that the amendment replacing the step of 

“instantiating said at least one index” with steps of “first instantiating at least one said 

index” and “second instantiating at least one said index” changed the scope of claim 1. 

Jan. 25 Op. at 16. Our review is de novo. Laitram Corp. v. NEC Corp., 163 F.3d 1342, 

1346-47 (Fed. Cir. 1998). 

As the district court correctly pointed out, the original “instantiating” step on its 

face requires only a single instantiation, whereas the amended “instantiating” steps 

clearly require two instantiations. Jan. 25 Op. at 14. However, as the district court also 

acknowledged, the original “comparing” step required “comparing at least one of the 

data sets linked to at least one of said instantiated indexes to at least another of the 

data sets linked to at least another of said instantiated indexes.” ’798 patent col.14 

ll.17-20 (emphases added). Thus, even in the original claim, the “comparing” step 

requires two instantiations. This is entirely consistent with the specification’s description 

of the “instantiating” and “comparing” steps. See id. col.3 l.65-col.4 l.2 (“Once this 

formatted hierarchical index is created, the index is selectively instantiated at different 

occasions. The present invention also may include a comparing step, where the 

indexed data can be compared and analyzed to produce control data, if desired.” 

(emphasis added)). 

2007-1539 11
Despite the “comparing” step’s requirement of two instantiations, the district court 

found that the amendment changed the scope of the claim for two reasons. First, the 

district court reasoned that, in the original claim, only one instantiation might occur 

during the “instantiating” step, then that instantiation would be compared with a 

previously stored instantiation, which was generated outside of the claimed process. 

Jan. 25 Op. at 15. But critically, the “comparing” step does not compare data sets 

linked to “an instantiated index” with data sets linked to “another instantiated index”; it 

compares data sets linked to “one of said instantiated indexes” with data sets linked to 

“another of said instantiated indexes.” The “said instantiated indexes” must be 

instantiated indexes with an antecedent basis elsewhere in the claim—namely, the 

indexes that are instantiated during the “instantiating” step. See, e.g., Baldwin Graphic 

Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1343 (Fed. Cir. 2008) (noting that claim terms 

using “said” are “anaphoric phrases, referring to the initial antecedent phrase”); see also

Jan. 25 Op. at 11 (district court construing “said” to have its ordinary meaning of 

“aforementioned”). Thus, the district court was incorrect to conclude that the 

instantiated indexes in the “comparing” step could be indexes other than those 

generated as part of the claimed process. 

Second, the district court reasoned that the “comparing” step might allow a 

comparison between data sets linked to two different instantiations of the same index, 

rather than two instantiations of different indexes. Jan. 25 Op. at 15. We agree that in 

both the original and the amended claim, the “comparing” step permits a comparison 

between data sets linked to either multiple instantiations of the same index, single 

instantiations of multiple indexes, or some combination. But the “comparing” step still 

2007-1539 12
2007-1539 13

requires that at least two instantiations (either of the same index, or of different indexes) 

be performed, because of the language “one of said instantiated indexes” and “another 

of said instantiated indexes.” There is nothing in the amended claim that suggests that 

the “first instantiating” and “second instantiating” steps must be performed on data 

linked to the same index; likewise, there is nothing in the amended claim that suggests 

that the “first instantiating” and “second instantiating” steps must be performed on data 

linked to different indexes. We therefore find the district court’s reasoning 

unpersuasive. 

We conclude that the amendment of the “instantiating” step to the “first 

instantiating” and “second instantiating” steps did not result in a substantive change to 

claim 1 of the ’798 patent. The original and amended claims are “identical” for purposes 

of § 252 and, correspondingly, § 307. See Bloom, 129 F.3d at 1250. 

III. CONCLUSION 

For the foregoing reasons, the district court’s grant of summary judgment of 

invalidity is reversed. We remand for further proceedings consistent with this opinion. 

REVERSED and REMANDED