“AND” Can Mean “OR” Depending on the Context

In Kaufman v. Microsoft Corp., [2021-1634, 2021-1691] (May 20, 2022) the Federal Circuit affirmed the district court’s denial of Microsoft’s post-judgment challenges to a $7 million damage award for infringement of U.S. Patent No. 7,885,981, and reversed the district court’s denial of prejudgment interest.

The ’981 patent addresses the creation of user interfaces that permit users to interact with data in relational databases. One of the issues was whether the claim required the automatic generation of an end user interface. The word automatic did not appear on the body of the claim, but the preamble stated that the method involved a “processor for automatically generating and end-user interface.”

Microsoft moved for summary judgment, arguing that that the phrase “automatically
generating” found in the preamble of claim 1 is limiting, and means that “no human labor required,” and thus Microsoft product does not infringe. Microsoft argued that the district court erred in failing to clarify the reach of the “automatically” requirement for the jury, warranting a new trial under O2 Micro because a clarification could reasonably have led the jury to a different verdict. However, the Federal Circuit held that Microsoft failed to preserve its O2 Micro challenge.

The Federal Circuit noted that 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 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, it never clearly said that, apart from what “automatic” means, a construction was needed specifying what functions had to be automatic, i.e., the scope of the “automatically generating” requirement. Further, Microsoft never offered the district court a formulation of such a claim construction resolving that scope issue, including at the at the pre-trial hearing.

The Federal Circuit also rejected Microsoft’s argument, presented for the first time on appeal, that “automatically generating” should be construed broadly to require some defined set of steps beyond those recited by the claims in (a), (b), and (c) to be performed automatically. Microsoft never proposed such a construction to the district court.

Microsoft’s final argument was that there was insufficient evidence to support the jury’s finding infringement, but the Federal Circuit agreed with the district court correctly explained, the jury reasonably that the manual step identified by Microsoft were not part of the claim requirement that were required to be performed automatically.

Finding that 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, the Federal Circuit affirmed the jury’s finding that the accused processes come within the “automatically generating” limitation.

Microsoft also argued that the district court erred in the post-trial ruling when it concluded that “and” means “and/or,” contending 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 individual mode displays (for creating, retrieving, updating, and deleting) all three of the “processes for representing, navigating, and managing said relationships across tables.” The Federal Circuit agreed with the district court’s construction, noting that a claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support. The Federal Circuit noted that in the sole embodiment in the patent, a “retrieve” display lacks a “managing” process. The the Federal Circuit said that “and” must be construed as “and/or” so that the claim would cover the only disclosed embodiment.

The Federal Circuit recognized that it cannot redraft claims whether to make them operable or to sustain their validity, or to cause them to encompass the sole described embodiment, it said that that is not what it was doing here. The Court said where there is “only one reasonable construction,” it has recognized that, in certain contexts, the word “and” can reasonably be understood to denote alternatives, rather than conjunctive requirements.

Finally, the Federal Circuit addressed the denial of prejudgment interest. The district court provided two rationales for denying prejudgment interest to Kaufman: first, that the jury
verdict “subsumed interest,” and second, that Mr. Kaufman was responsible for “undue delay” in bringing the lawsuit, causing prejudice to Microsoft. The Federal Circuit said that the jury verdict cannot reasonably be understood to include interest, noting there was no testimony about how the interest would be calculated. The Federal Circuit also said that the district court also erred in finding Kaufman was responsible for undue delay justifying the denial of prejudgment interest. The Federal Circuit said that the fact that Mr. Kaufman
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 Federal Circuit said that Microsoft presented
no evidence as to why Kaufman’s delay was undue.

An Affirmative Claim Construction is not Always Needed, But it was Here

In Sound View Innovations, Inc., v. Hulu, LLC, [2021-1998] (May 11, 2022), the Federal Circuit, whille agreeing with the district court’s claim construction, the Federal Circuit disagreed with the district court’s application of that construction, so it vacated summary judgment of no infringement of U.S. Patent No. 6,708,213 on a “Method for Streaming Multimedia Information over Public Networks.”

Sound View alleged that, under Hulu’s direction, when an edge server receives a client request for a video not already fully in the edge server’s possession, and obtains segments of the video seriatim from the content server (or another edge server), the edge server transmits to the Hulu client a segment it has obtained while concurrently retrieving a remaining segment. The claim at issue specifies a method, involving a content server and intermediate servers (helper servers), to use when a client requests a streaming multimedia (SM) object.

The district court construed the limitation to require that the same buffer in the helper
server—host both the portion sent to the client and a remaining portion retrieved
concurrently from the content server or other helper server. With that claim construction, Hulu sought and obtained summary judgment of non-infringement, arguing that it was undisputed that, in the edge servers of its content delivery networks, no single buffer hosts both the video portion downloaded to the client and the retrieved additional portion. Sound View argued, in response, that there remained a factual dispute about whether “caches” in
the edge servers met the concurrency limitation as construed. The district court held, however, that a “cache” could not be the “buffer” that its construction of the downloading/
retrieving limitation required, and on that basis, it granted summary judgment of non-infringement.

The Federal Circuit citing theapplicant’s statements in the prosecution history, affirm the district court’s construction of the downloading/retrieving limitation, but rejected the district court’s determination that “buffer” cannot cover “a cache,” and therefore vacated the district court’s grant of summary judgment and remanded for further proceedings.

The Federal Circuit noted that all the district court did in construing “buffer” was to declare that it must exclude a “cache.” It said that the district court did not adopt an affirmative construction of what constitutes a “buffer” in the patent. Although there is no per se rule against negative constructions, which in some cases can be enough to resolve the relevant dispute, the Federal Circuit found the court’s construction was inadequate for the second step of an infringement analysis—comparison to the accused products or methods.

The Federal Circuit said that the district court did not decide, and the record does not establish, that “cache” is a term of such uniform meaning in the art that its meaning in the patent must be relevantly identical to its meaning when used by those who labeled the pertinent components of the accused edge servers. In the absence of such a uniformity-of-meaning determination, the district court’s conclusion that the patent distinguishes its buffers and caches is insufficient to support a determination that the accused-component “caches” are outside the “buffers” of the patent. The Federal Circuit said that what was needed was an affirmative construction of “buffer”— which could then be compared to the accused-component “caches” based on more than a mere name, and the district
court did not supply the needed construction.

The Federal Circuit noted an additional reason why an affirmative construction was needed: even in the patent the terms “buffer” and “cache” did not appear to be mutually exclusive,
but instead seem to have at least some overlap in their coverage.

Ordinary Meaning Can Be Broader than Disclosed Embodiments

In Evolusion Concepts, Inc. v. HOC Events, Inc., [2021-1963] (January 14, 2022) the Federal Circuit reversed the grant of summary judgment of non-infringement of U.S. Patent No. 8,756,845 on a “Method and Device for Converting Firearm with Detachable Magazine to a Firearm with Fixed Magazine,” , reversed the denial of summary judgment of direct infringement as to the independent claims 1 and 8, and remanded for further proceedings.

The district court held that the term “magazine catch bar” in the asserted claims of the ’845 patent excludes a factory installed magazine catch bar. Claim 15 requires removing “the factory installed magazine catch bar” and then installing “a magazine catch bar.” From this, the district the court concluded that the magazine catch bar that is installed must be “separate and distinct from the factory-installed magazine catch bar”; otherwise, “factory-installed” would be superfluous. Because a term that appears in multiple claims should be given the same meaning in all those claims, the court held that the term “magazine catch bar” in claims 1 and 8 similarly must exclude a factory-installed magazine catch bar. This claim construction precluded literal infringement because Juggernaut’s products use the factory-installed magazine catch bar. The court also determined that Juggernaut does not infringe under the doctrine of equivalents.

The Federal Circuit noted that the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if it is clear that the same phrase has different meanings in different claims. The Federal Circuit noted that while claim 15 was directed to a method, claims 1 and 8 claimed a firearm and a device, respectively. The Federal Circuit said that nothing in the language of claims 1 and 8 limits the scope of the generic term “magazine catch bar” to exclude one that was factory installed—specifically, as Juggernaut asserts, factory installed as part of an original
firearm with a detachable magazine.

The Federal Circuit said that Juggernaut was correct that the meaning of the term in claims 1 and 8 could well be informed by a meaning of the term made sufficiently clear in claim 15, but Juggernaut was incorrect that the use of “magazine catch bar” in claim 15 narrows the meaning of the term to support the
urged exclusion of factory-installed magazine catch bars. The Federal Circuit agreed that claim 15 required removing a factory installed magazine catch but it did not require discarding that catch bar, or installing a different catch bar. The Federal Circuit concluded that the specification supports the ordinary-meaning interpretation of “magazine catch bar.” The Federal Circuit said the specification nowhere limits the scope of a “magazine catch bar” to exclude factory-installed ones from the assembly that achieves the fixed-magazine goal.

Juggernaut argued that the disclosed embodiments do not illustrate OEM magazine catch bars, but the Federal Circuit said that cannot make a difference in this case. The Federal Circuit has repeatedly held that “it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.” The Federal Circuit thus construe the term “magazine catch bar” according to its ordinary meaning, which includes a factory installed magazine catch bar.

The Proper Claim Construction of a Term is Not Necessarily the Sum of its Parts

In Intel Corp. v. Qualcomm Inc., [2020-1664] (December 28, 2021), the Federal Circuit affirmed the final written decision of the originally challenged claims of U.S. Patent No. 8,229,043, but vacated and remanded as to the substitute claims.

The Federal Circuit addressed first considered the phrase “radio frequency input signal” in ’043 patent claims 17, 19, and 21. Intel argued that the term should be given its ordinary meaning, while Qualcomm argued for a more specific construction. The Federal Circuit noted that ‘[e]ven without considering the surrounding claim language or the rest of the patent document, . . .it is not always appropriate to break down a phrase and give it an interpretation that is merely the sum of its parts.” The Federal Circuit said that the surrounding language points in favor of Qualcomm’s construction, adopted by the Board. The Federal Circuit said the linguistic clues suggested that “radio frequency input signal,” to the relevant audience, refers to the signal entering the device as a whole, not (as Intel proposes) to any radio frequency signal entering any component. The Federal Circuit said that the specification provides further support for the Board’s reading.

The Federal Circuit concluded that in sum, while Intel’s interpretation may have superficial appeal, Qualcomm’s better reflects the usage of “radio frequency input signal” in the intrinsic record, and affirmed it.

On the question of obviousness, the Federal Circuit concluded that substantial evidence does not
support the Board’s determination that a skilled artisan would have lacked reason to combine the prior art to achieve substitute claims 27, 28, and 31. The Federal Circuit rejected the Board’s rationale for determining that it would not have been obvious to combine the references. The Federal Circuit noted that a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.

To Claim a Range, Make it Clear You are a Claiming a Range

In Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., [2020-2073, 2020-2142] (November 24, 2021), the Federal Circuit affirmed the PTAB’s decision in an IPR that claims 1–5, 7, and 9–14 are unpatentable, and that DRL failed to demonstrate unpatentability of claim 8.

The ’454 patent, which generally describes orally dissolvable films containing therapeutic agents. The ’454 patent issued as the fifth continuation of U.S. Patent Application 12/537,571, which was filed on August 7, 2009. This appeal involves the question whether Indivior can get the benefit of that 2009 filing date for the claims of the ‘454 patent, and in particular support for the claimed ranges:

Claim 1about 40 wt % to about 60 wt %
Claim 7about 48.2 wt % to about 58.6 wt %
Claim 8about 48.2 wt %
Claim 12about 48.2 wt % to about 58.6 wt %

Invidior pointed out that Tables 1 and 5 of the ‘571 application disclose formulations with 48.2 wt % and 58.6 wt % polymer, and discloses that “the film composition contains a film forming polymer in an amount of at least 25%
by weight of the composition.” Indivior argued that the combination of these disclosures encompasses the claimed ranges, and therefore provides a written description of them. DRL contended that a skilled artisan would not have discerned the claimed ranges because the ’571 application does not disclose any bounded range, only a lower endpoint and some exemplary formulations. DRL contended that a skilled artisan would not have discerned any upper range endpoint.

Regarding claim 1, the Federal Circuit agreed with the Board that there was no written description support in the ’571 application for the range of “about 40 wt % to about 60 wt %,” noting that the range was not expressly claimed in the ’571 application; and that the values of “40 wt %” and “60 wt %” are not stated in the ’571 application.

Regarding claims 7 and 12, the Federal Circuit also agreed with the Board that there is no written description support for the range of “about 48.2 wt % to about 58.6 wt %” in the ’571 application, noting that this range also does not appear in the ’571 application. While the endpoints of this “range” could be discerned from the Tables, the Federal Circuit said that constructing a range from this data “amounts to cobbling together numbers after the fact.” The Federal Circuit said that Indivior failed to provide persuasive evidence demonstrating that a person of ordinary skill would have understood from reading the ’571 application that it disclosed an invention with a range of 48.2 wt % to 58.6 wt %.

Because Indivior did not contest that the claims would be anticipated without the benefit of the 2009 filing date the court affirmed the invaldity of the challenged claims, except claim 8, whose single data point was supported by the disclosure of the ‘571 patent.

This result is of course concerning to chemical practitioners who have or may one day fine the need to construct a range from disclosed datapoints. The Federal Circuit’s assurances that each case is fact specific is of little comfort if one find themselves in this predicament. The bottom line is if ranges are intended, ranges should be mentioned. It is unlikely that Invidior ever contemplated that the invention only worked at selected points, and not in between, Invidior apparently needed to make explicit what it thought was implicit. The issue in Invidior is not a problem in claiming ranges, but a problem in making clear that you are claiming ranges.

An Army of Citation Footnotes Crouching in a Field of Jargon is no Substitute Explanation

In Traxcell Technologies, LLC v. Sprint Communications Company, LP, [2020-1852, 2020-1854] (October 12, 2021), the Federal Circuit agreed with the district court’s claim construction, and further that under that construction Traxcell failed to show a genuine issue of material fact as to infringement, and further that several of Traxcell’s claims were indefinite.

The case involves U.S. Patent Nos. 8,977,284, 9,510,320, 9,642,024, and  9,549,388 related to self-optimizing network technology for making “corrective actions” to improve communications between a wireless device and a network.

At issue was the claim limitation “means for receiving said performance data and corresponding locations from said radio tower and correcting radio frequency signals of said radio tower.” The parties agreed that this was a means-plus-function claim, and the corresponding structure was an algorithm identified in the specification.  Traxcell argued that Sprint’s accused technology included a structural equivalent to the disclosed structure under the function-way-result test.  The district court disagreed, reasoning that Traxcell failed to establish that Sprint’s accused technology operates in substantially the same “way.”

The Federal Circuit agreed, noting that the identified structure from the specification was a “very detailed” algorithm, including numerous steps necessary for its function. However, Traxcell neglected to address a significant fraction of that structure.  Accordingly, Traxcell didn’t provide enough evidence for a reasonable jury to conclude that the accused structure performs the claimed function in “substantially the same way” as the disclosed structure.

Also at issue was the limitation “location.”  The parties agreed, and the district court accepted, that “location” meant “location that is not merely a position in a grid pattern.”  However, under this construction Traxell lost.  On appeal Traxell insisted in retrospect that this construction was wrong. The Federal Circuit said that “having stipulated to it, Traxcell cannot pull an about-face.”

With respect to infringement by Sprint, the independent claims all require sending, receiving, generating, storing, or using the “location” of a wireless device.  The district court concluded that Traxcell simply hadn’t shown that the accused technologies used “location” as construed by the court, and the Federal Circuit agreed.  With respect to infringement by Ericson, the district court rejected Traxcell’s argument that the accused technology uses “location” because it collects “information regarding the distance of devices from a base station.”  The Federal Circuit agreed that this was not location information but information to calculate distance.

Also at issue were the limitations “first computer” and “computer.”  Construing these as referring to a single computer, the district court concluded that Traxell had not shown that these limitations were met, and the Federal Circuit agreed.  The Federal Circuit said that Traxell failed to particularize those conclusory assertions with specific evidence and arguments. Traxell argued it provided substantial evidence that the district court ignored, but the Federal Circuit said it was “an army of citation footnotes crouching in a field of jargon. What they lack is explanation.” The Federal Circuit concluded that Traxell’s showing was “simply too unexplained and conclusory.”  The Federal Circuit said that Traxcell has cited swaths of documents, but it Failed to explain how those documents support its infringement theory. It didn’t do so at the trial court, and it didn’t do so on appeal.

Traxcell’s remaining infringement arguments on appeal relied upon  the doctrine of equivalents. But the Federal Circuit concluded that Traxcell surrendered multiple computer equivalents during prosecution of these patents.

Turning to indefiniteness, Claim 1 of the ‘284 patent was found indefinite on two grounds: (1) lack of reasonable certainty about which “wireless device” the term “at least one said wireless device” referred to, and (2) lack of an adequate supporting structure in the specification for the claim’s means-plus-function limitation.  The Federal Circuit found that the claim was indefinite for lack of adequate supporting structure in the specification.

A means-plus-function claim is indefinite if the specification fails to disclose adequate corresponding structure to perform the claimed function.  While Traxcell cited an algorithm, the district court found that Traxcell’s explanation provided nothing more than a restatement of the function, as recited in the claim.  The Federal Circuit concluded that the claim was indefinite, without the need to reach the issue of “wireless device.”

As to infringement of the ‘388 patent, the claims required that the device’s location is (1) determined on the network, (2) communicated to the device, and (3) used to display navigation information.  The district court determined that Traxcell failed to show that the device location was determined by the network, and the Federal Circuit agreed.  Traxcell argued that the network provided data to the devices, but the court observed that it is not data from the network that the claims require. It is that the network itself determines location and transmits the location to the device. The Federal Circuit said that Traxcell has not shown that the network does so with anything but broad and conclusory scattershot assertions.

Footnote in Brief Doesn’t Count; Anyway Construction for Infringement Construction can’t be From Validity

In Commscope Technologies LLC v. Dali Wireless Inc., [2020-1817, 2020-1818] (August 24, 2021) the Federal Circuit reversed the district court’s denial of JMOL of no infringement of U.S. Patent No. 9,031,521, and affirmed denial of JMOL of invalidity.

U.S. Patent No. 9,031,521, relates to wireless communications with portable equipment and handsets, such as mobile phones.  The claim limitation at the center of the parties’ infringement dispute is the first step in the claimed operating phase: “switching a controller off to disconnect signal representative of the output of the power amplifier.”  On appeal CommScope argued that Dali failed to present evidence proving that the FlexWave meets the district court’s construction of the claim term “switching a controller off.” The Federal Circuit agreed.

Dali argued that the claim term “switching a controller off” meant “switching a controller to an off status,” and no further definition was needed.  CommScope, on the other hand, proposed that the claim term meant “[s]witching a controller to a nonoperating state.”  The district court agreed with CommScope, drawing a distinction between: (1) when the controller is turned off and (2) the effect on the system of turning the controller off.

Dali argued (in a footnote) that CommScope’s position was nonsense.  The Federal Circuit said that “an argument that is only made in a footnote of an appellant’s brief is forfeited.”  Further, even if the argument were in the body of the brief, it was insufficiently developed. Finally, and most importantly, the s irreconcilable with Dali’s statements in other portions of its brief.  Thus the Federal Circuit turned to the issue of infringement.  The Federal Circuit pointed out that Dali’s expert’s testimony never states that either the switch or the controller is rendered “nonoperating,” thus does not provide substantial evidence to support the jury’s finding that the accused product meets the district court’s claim construction.  Not only was there a lack of evidence to show that the accused product met the proper construction of the claims, there is unrebutted evidence showing the opposite.  CommScope points to the testimony of its expert, who testified that both the switch and the controller are continuously operating.

The Federal Circuit said that the burden is on a patent owner to show that “the properly construed claim reads on the accused device exactly.”  CommScope’s reliance on the claim terms as construed by the district court is not “hairsplitting,” as Dali argues, but instead properly shows that Dali failed to meet its burden at the district court and that no reasonable jury could have found otherwise.  Dali presented only a literal infringement case, and not a doctrine-of-equivalents alternative. Thus, Dali’s argument that the accused switch/controller is effectively “nonoperating” because it is not passing a feedback signal of the power amplifier of interest is irrelevant because Dali failed to produce evidence below to show that the accused controller is literally nonoperating, as the district court determined was required by the claim.

Finally, Dali’s arguments on infringement cannot stand in view of its arguments of no anticipation.  For these reasons, the Federal Circuit reversed the district court’s denial of CommScope’s motion for JMOL of no infringement of the ’521 patent and affirmed the judgment of the district court in all other respects.

Silence does not Support Claim Construction Excluding Prior Art

In Seabed Geosolutions (US) Inc., v. Magseis FF LLC, [2020-1237] (August 11, 2021), the Federal Circuit vacated and remanded the PTAB’s determination that U.S. Reissue Patent No. RE45,268 was not anticipated or obvious, becase if a error in the PTAB’s claim construction.

The ’268 patent is directed to seismometers for use in seismic exploration, and all of its claims required a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. The Board concluded that the prior art did not disclose this geophone requirement, and thus the claims had not been shown to be anticipated or obvious.

The Board construed “geophone internally fixed within [the] housing” to require a non-gimbaled geophone. It found, based entirely on extrinsic evidence, that “fixed” had
a special meaning in the relevant art at the time of the invention: “not gimbaled.” The Federal Circuit noted that

If the meaning of a claim term is clear from the intrinsic evidence, there is no reason
to resort to extrinsic evidence. The Federal Circuit concluded, based upon the intrinsic evidence, that the word fixed here carries its ordinary meaning, i.e., attached or fastened:

The adverb internally and the preposition within straddling the word fixed indicate that it specifies the geophone’s relationship with the housing, not the type of geophone. The plain
language therefore supports interpreting “internally fixed within” to mean mounted or fastened inside.

The Federal Circuit found the specification was consistent with its construction:

The specification describes mounting the geophone inside the housing as a key feature of the invention. By contrast, it says nothing about the geophone being gimbaled or non-gimbaled. Given that context, a skilled artisan would understand the claim term “geophone internally
fixed within [the] housing” merely specifies where the geophone is mounted and has nothing to do with gimbaling.

The Federal Circuit noted that “[t]he specification never mentions gimbaled or non-gimbaled
geophones, nor does it provide a reason to exclude gimbals.” The Court concluded “[t]hat silence does not support reading the claims to exclude gimbaled geophones.” The patentee conceded that gimballed geophones were known, and that the specification mentioned gimballed claims. The Federal Circuit reasoned that “[i]If the patentee had wanted to distinguish between gimbaled and non-gimbaled geophones, it knew how to do so and could have indicated as much in the specification. But it did not.”

The Federal Circuit said that the intrinsic evidence as a whole supports an interpretation of “geophone internally fixed within [the] housing” that does not exclude gimbaled geophones. The Court concluded that the Board erred in reaching a narrower interpretation, and vacated and remanded for further proceedings consistent with this opinion.

Claims are No Nose of Wax; Infringement Determined Under Same Construction as Validity

In Data Engine Technologies LLC v.  Google LLC, [2021-1050] (August 26, 2021) the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 5,590,259; 5,784,545; and 6,282,551 directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets.

The preamble of the claims at issue recited: “In an electronic spreadsheet system for storing and manipulating information, a computer-implemented method of representing a three-dimensional spreadsheet on a screen display.”  In defeating a prior 101 challenge, DET argued that the invention solved a problem unique to three-dimensional spreadsheets.  On remand, Google asked the district court for a determination whether the claim preamble was a limitation, and if so, what it meant.  The district court held that the preamble was limiting, and required a mathematical relation among cells on different spreadsheets, whereupon Google moved for summary judgment of non-infringement since its accused product was not a three-dimensional spreadsheet.  The district court granted summary judgment, and DET appealed.

On appeal there was no dispute that Google did not infringe under the district court’s construction of “three-dimensional spreadsheet,” the issue being whether the preamble is in fact limiting and, if so, whether the district court’s construction of three-dimensional spreadsheet was correct.  The Federal Circuit noted that DET’s assertion that the preamble term “three-dimensional spreadsheet” is not limiting effectively seeks to obtain a different claim construction for purposes of infringement than the Federal Circuit applied (at DET’s insistence) in holding the claims eligible under § 101.  Noting that a  claim is not a nose of wax, the Federal Circuit said a patentee relies on language found in the preamble to successfully argue that its claims are directed to eligible subject matter, it cannot later assert that the preamble term has no patentable weight for purposes of showing infringement. Thus the Federal Circuit concluded that the preamble term “three-dimensional spreadsheet” was limiting.

 Turning to the district court’s construction of “three-dimensional spreadsheet,” the parties agreed that a three-dimensional spreadsheet requires cells “arranged in a 3-D grid,” but not on whether it also requires “a mathematical relation among cells on different spreadsheet pages,” as required by the district court’s construction.  The Federal Circuit found that neither the claims themselves nor the prosecution history answered the question of whether a three-dimensional spreadsheet requires a mathematical relation among cells on different spreadsheets.  However, based upon the prosecution history, the Federal Circuit agreed with the district court that the preamble term “three-dimensional spreadsheet” requires a mathematical relation.  During prosecution of the application that led to the ’259 patent, the applicants provided an explicit definition of a “true” three-dimensional spreadsheet and distinguished prior art under this definition.  Giving effect to this express definition in the prosecution history, the Federal Circuit determined that the claims require a three-dimensional spreadsheet that “defines a mathematical relation among cells on the different pages.”  The Federal Circuit rejected DET’s arguments that the statements did not rise to the level or clear and unmistakable disclaimer,  noting that consistent with the public notice function of the prosecution history, the public is entitled to rely on these statements as defining the scope of the claims.

Definitions can be very helpful to the patent applicants in giving concrete meaning to the claims, but they can also be very limiting. It’s not that applicants should not use definitions, but that they should be used cautiously. A definition that seems harmless in one context, can be disasterous in another context.

PTAB Departure from Agreed Claim Construction Required Notice and Opportunity to be Heard

In Qualcomm Inc. v. Intel Corp., [2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593,
2020-1594] (July 27, 2021), the Federal Circuit vacated and remanded six inter partes review final written decisions determining that claims 1–15, 17–25, and 27–33 of U.S. Patent
No. 9,608,675 would have been obvious.

The ’675 patent relates to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously, using one power amplifier and one power tracking supply generator. During the IPR’s the parties never disputed that the signals were required to increase user bandwidth, and in the International Trade Commission, the Commission’s construction of the term also included the increased
bandwidth requirement.

The Board issued six final written decisions concluding that all challenged claims were unpatentable. In reaching its conclusion, the Board construed the term “a plurality of carrier aggregated transmit signals” in each asserted claim to mean “signals for transmission on multiple carriers,” omitting any requirement that the signals increase or extend bandwidth.

Qualcomm argued that it was not afforded notice of, or an adequate opportunity to respond to, the Board’s construction of “a plurality of carrier aggregated transmit signals,” and the Federal Circuit agreed. The Federal Circuit began by noting that “[a] patent owner in [an IPR] is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection,”
based on due process and Administrative Procedure Act (APA) guarantees.

The Board may adopt a claim construction of a disputed term that neither party proposes
without running afoul of the APA. Parties are well aware that the Board may stray from disputed, proposed constructions, however, but in the instant case the issue of whether increased bandwidth was a required part of the claim construction was not in dispute. The Federal Circuit noted that the patent owner owner agreed with the increased bandwidth requirement proposed by the petitioner. While the Board did not change theories midstream or depart from a construction it previously adopted, it is still difficult to imagine either party anticipating that this agreed-upon matter of claim construction was a moving target. The Federal Circuit said that unlike with disputed terms, it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction. Thus the Federal Circuit found that in the
the circumstances of this case, the Board needed to provide notice of, and an adequate opportunity to respond to, its construction. The Federal Circuit further found that Qualcomm did not receive notice or an opportunity to be heard regarding the Board’s construction that departed from the agreed-upon increased bandwidth requirement, and thus, the Board violated Qualcomm’s procedural rights under the APA.