Category Archives: Claim Construction

“Mountable” Given Meaning Consistent with Specification, and Not Broad Dictionary Definition

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In Profectus Technology LLC v. Huawei Technologies Co. Ltd.,  [2015-1016, 2015-1018, 2015-1019] (May 26, 2016), the Federal Circuit affirmed the district court’s construction of “mountable,” and thus summary judgment of non-infringement.

At issue was U.S. Patent No. 6,975,308, which discloses a mountable digital
picture frame for displaying still digital images, and in particular the claim language ““a mountable picture frame adapted to digitally display at least one still image thereon,” which Profectus as asserting against certain tablet devices with stands.  The district court concluded that “the picture frame or display must have some intrinsic mounting feature—not just a feature that could potentially render the frame or display capable of being mounted.”

Profectus argued on appeal that “mountable” meant capable of being mounted, while defendants argued that the fact that a device is capable of mounting does not make it “mountable.” The Federal Circuit agreed with defendant, noting that the term “mountable” is a modifying word in the claims: “mountable picture display,” “mountable picture frame,”  “wall mountable,” and “desk top mountable.”  The Federal Circuit observed that absent from the claims are words that embrace broader meaning, such as “capable of,” “adapted to,” or “configured to.” The claim language is tailored to, characterizes, and delimits the claimed “picture frame” and “picture display.” The Federal Circuit further noted that the specification does not disclose a bare embodiment in which the picture display or picture frame lacks a feature for mounting.

By noting that the picture display or frame must have some intrinsic mounting feature, the district court correctly, specification, that the picture display or frame must include something that may be used for mounting the device.

 

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

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In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No. 6,069,614 in ex parte reexamination.

The patent is directed to a remote control device for making selections on television or computer screens.  The examiner construed the claim term “adapted to be held by the human hand” in the patent broadly to include various “forms of grasp or grasping by a user’s hand,” such as the grasping of the mouse on a desk top.  The examiner similarly interpreted the claim term “thumb switch”  as “merely requir[ing] that a switch . . . be capable of being enabled/activated by a thumb but . . . not preclud[ing] another digit, i.e. index finger.”  Based upon these broad constructions, the reexamination examiner found the claims anticipated.  The PTAB affirmed emphasizing that appellant had not cited to a definition of ‘a body adapted to be held by the human hand’ or ‘thumb switch’ in the Specification that would preclude the Examiner’s broader reading.

The Federal circuit found that the intrinsic record fully determines the proper construction, so its review was de novo. Noting that in reexamination the Board must give the terms their broadest reasonable construction, this construction cannot be divorced from the specification and the record evidence.

The Federal Circuit said that the phrase “adapted to” generally means “made to,” “designed to,” or “configured to,” though it can also be used more broadly to mean “capable of” or “suitable for.”  The Federal Circuit found that “adapted to,” as used in the ’614 claims and specification, has the narrower meaning — that the claimed remote control device is made or designed to be held in the human hand and the thumb switch is made or designed for activation by a human thumb.

The Federal Circuit found support for this in the written description, including an express distinction between the claimed device and the deskbound devices in the applied prior art.  The Federal Circuit said: “The broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.” Based upon the language of the specification, the Federal Circuit rejected the Board’s unreasonably broad construction and construe “adapted to be held by the human hand” to mean “designed or made to be held by the human hand,” which it said excluded the desk-bound mouse of the prior art.

Similarly the Federal Circuit rejected the Board’s overly broad construction of “thumb switch being adapted for activation by the human thumb,” noting that the construction ignores the term “thumb” in “thumb switch., or in light of the specification.  The Federal Circuit reminded that the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification.  A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.

The Federal Circuit said that the Board’s broad construction of “thumb switch being adapted for activation by a human thumb” as being merely capable of activation by a human thumb is unreasonable in view of the specification’s clear teaching that the patentee intended a narrower meaning.

Because the Board’s anticipation rejection was based on erroneous claim constructions and the rejection is not supported under the proper constructions, the finding of anticipate was reversed.

 

 

 

A Plea for a Charitable and Common-Sensical Claim Construction

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All manner of boiler plate can be found in patent applications and issued patents, placed there by applicants and their counsel hoping to influence the future construction of their specification and claims, but the language in U.S. Patent No. 8,047,178, requests a “charitable and common-sensical” claim construction.  Unfortunately, that’s probably too much to ask for.

Charitable

Preference for Giving Each Claim Term Effect Does Not Overcome Meaning Apparent from the Specification

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In Simpleair, Inc. v. Sony Ericsson Mobile Communications AB, [2015-1251] (April 1, 2016), the Federal Circuit  vacated the jury verdict of infringement, and remanded with instructions to enter judgment of non-infringement.  At issue was the meaning of “data channel” in U.S. Patent No. 7,035,914 directed to a system and method for transmission of data.

Critical to infringement is whether a data channel was on line or off line.  Google presented some compelling simple diagrams showing the meaning on-line and offline, while Simpleair maintained that the district court correctly found that a channel simply meant a path for viewing a category of information, rather than the entire connection. The Federal Circuit found the district court’s construction was “incorrect”.

Google

 

 

The Federal Circuit noted that while “interpretations that render some portion of the
claim language superfluous are disfavored . . . [t]he preference for giving meaning to all terms, however, is not an inflexible rule that supersedes all other principles of claim construction.”  The Federal Circuit reiterated that that claims must always be read
in light of the specification, and in addition must be given meaning consistent with how they would have been understood at the time of invention by a person having ordinary skill in the art.

Looking to the specification, the Federal Circuit found a PHOSITA at the time of invention would understand that a key aspect of the invention is the ability of a remote device to receive notifications even when it is not connected to the Internet by traditional means.  The Federal Circuit further noted that the invention contemplates two distinct paths, which was consistent with Google’s interpretation, and contrary to the district court’s interpretation.

The Federal Circuit also rejected the argument that data channel should be construed to mean data feed, pointing out that data channel was a term added by amendment and used no where else in the specification, while data feed is a term used in the specification and claims.  The Federal Circuit said the choice to use “data channel” in claim 1 rather than “data feed,” notwithstanding use of the latter elsewhere in the patent, lends further support to the conclusion that “data feed” does not carry the same meaning as “data channel.”

Under the correct construction, the Federal Circuit agreed that the claims could not be infringed, and vacated the judgment and remanded the case for entry of a judgment of non-infringement.

Four canons of claim construction contributed to the construction in this case, including (1) every word in a claim should be given effect; (2) claims must always be read in light of the specification; (3) claims must be given meaning consistent with how they would have been understood at the time of invention by a person having ordinary skill in the art; and (4) different words in the claims should be given different meanings’  Although giving effect to every word in a claim was downgraded to a “preference”.

 

 

PTAB Can’t Rely on Anticipation Argument first Made during the Oral Hearing

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In Dell Inc, v, Acceleron, LLC, [2015-1513, -1514](March 15, 2016) the Federal Circuit affirmed the confirmation of claims, but remanded the cancellation of two claims for reconsideration in view of corrected claim construction.  At issue was the claim language “a microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.”  The Board concluded, that it is enough that there be an ethernet path that would provide a connection for polling if the microcontroller were configured for, and engaged in, remote polling of the three identified modules.  The Federal Circuit held that this construction runs counter to the claimconstruction principle that meaning should be given to all of a claim’s terms, denying any substantial meaning to “remotely poll.”

Also at issue was the anticipation of the claim limitation “caddies” which the Federal Circuit found was first identified in the reference during the oral argument before the Board.  The Federal Circuit vacated the finding of anticipation because the Board denied the patent owner notice and a fair opportunity to respond to this basis of cancellation.  The Federal Circuit explained that a patent owner is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection.  The Federal Circuit said that for a formal adjudication like the inter partes, the APA imposes particular requirements on the PTO. The agency must timely inform the patent owner of the matters of fact and law asserted (5 U.S.C. § 554(b)(3)), must provide all interested parties opportunity for the submission and consideration of facts and arguments and hearing and decision on notice, (5 U.S.C. § 554(c)), and must allow a party to submit rebuttal evidence  as may be required for a full and true disclosure of the facts, (5 U.S.C. § 556(d)). The Federal Circuit noted that the PTO has advised participants in its Board proceedings that, at oral argument, a party may only present arguments relied upon in the papers previously submitted, and that no new evidence or arguments may be presented at the oral argument.  However, the Federal Circuit found that the Board denied the patent owner its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after the patent owner could meaningfully respond.

Look at the Context, Sometimes “A” means “A”

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In In re Varma, [2015-1502, -1667] (March 10, 2016) the Federal Circuit reversed the PTAB’s cancellation of claims of U.S. Patent No. 6,349,291 in two inter partes reexamination proceedings. in one of the proceedings, the construction of ““a statistical analysis request corresponding to two or more selected investments” was at issue.  The Board held that this phrases embraces a request that calls for a statistical analysis of a single investment.  The Federal Circuit noted that the Board relied on the claims’ use of “comprising” as the transitional term, but found that this did not support the Board’s construction.  The Federal Circuit said that although the transitional term “comprising” indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended.  The Federal Circuit explained:

“Comprising” means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied.

 

The Federal Circuit also noted that the Board cited the indefinite article “a” before “statistical analysis request” to support its interpretation. However the Federal Circuit said that while “a” sometimes is non-restrictive as to number, permitting the presence of more than one of the objects following that indefinite article, context matters even as to whether the word has that meaning.  The Federal Circuit said the question is not whether there can be more than one request in a claim-covered system: there can. Rather, the question was whether “a” can serve to negate what is required by the language following “a”: a “request” (a singular term) that “correspond[s]” to “two or more selected investments.” The Federal Circuti said that it cannot. The Federal Circuit observed “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.

The Federal Circuit held that the Board applied an unreasonably broad interpretation, and remanded the applications to be reconsidered in light of the proper claim construction.

The Specification (Including the Title) Narrowed the Scope of the Claims

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In Ultimatepointer LLC v. Nintendo Co., Ltd., [201501297] (March 1, 2016), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. U.S. Patent 8,049,729 on a handheld pointing device.  At issue was whether the claims to a pointing device were covered the accused indirect pointing device, or were limited to direct pointing devices. i.e. devices for which the physical point-of-aim coincides with the item being pointed at.  The district court found that the claims were limited to direct pointing devices, and thus were not infringed, and the Federal Circuit agreed.

The Federal Circuit balanced the rule against importing limitations from the specification into the claims, with the fact that repeated criticisms often indicate that subject matter was not intended to be within the scope of the claims.

We have cautioned against importing limitations from the specification into the claims when performing claim construction, Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1370 (Fed. Cir. 2008); however, we have also recognized that “repeated derogatory statements” can indicate that the criticized technologies were not intended to be within the scope of the claims, Chicago Bd. Options Exch. v. Int’l Sec. Exch., 677 F.3d 1361, 1372 (Fed. Cir. 2012).

The Federal Circuit noted that he specification repeatedly emphasizes that the invention is directed to a direct-pointing system, and repeatedly called the hand held device a direct pointing device.  The Federal Circuit even pointed to the title,  “Easily-Deployable Interactive Direct Pointing System . . .” as indicating that the invention is limited to direct pointing systems, citing Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995).  The Federal Circuit also noted that the specification emphasized how direct pointing was superior to indirect pointing, and conversely how the written description disparaged indirect pointing.

The Federal Circuit said that taken together, the repeated description of the invention as a direct-pointing system, the repeated extolling of the virtues of direct pointing, and the repeated criticism of indirect pointing clearly point to the conclusion that the “handheld device” in the claims was limited to a direct-pointing device.

Broadest Reasonable Interpretation is Must be Consistent with the Specification and the Claims

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In PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC (Fed. Cir. 2016), the Federal Circuit vacated and remanded the PTAB’s Final Written Decision in IPR2013-00342, because the construction adopted by the PTAB for “reside around” was broad, but not reasonable.

To the Federal Circuit, it appears that the Board “arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein.”  The Federal Circuit said that while such an approach may result in the broadest definition, it does not necessarily result in the broadest reasonable definition in light of the specification. The Federal Circuit noted that the Board’s approach failed to account for how the claims themselves and the specification inform the ordinarily skilled artisan as to precisely which ordinary definition the patentee was using.

The Federal Circuit said that the fact that “around” had multiple dictionary meanings did not mean that all of these meanings are reasonable interpretations in light of the specification, and concluded that the interpretation selected by the Board was not reasonable.  The Federal Circuit rejected a test of reasonableness based upon inclusion of as many of the disclosed embodiments as possible, indicating that above all, the broadest reasonable interpretation “must be reasonable in light of the claims and specification.” The Federal Circuit observed that the fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.

Although the Federal Circuit did not explain the difference between the broadest reasonable interpretation and  the ordinary meaning constructions, it noted that the case is much closer under the broadest reasonable interpretation standard given the ordinary meanings attributable to the term at issue.

Patent Challenger Loses with Unreasonably Broad Claim Construction

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In Trivascular, Inc., v. Samuels, [2015-1631) (February 5, 2015), the Federal Circuit affirmed a rare PTAB determination in an IPR that the claims of U.S. Patent No. 6,007,575 were not shown to be invalid. The claims were directed to stents with an inflatable cuff for securing the stent in a blood vessel.

TriVascular argued that the Board erred in construing “circumferential ridges” to mean a “raised strip disposed circumferentially about the outer surface of the inflatable cuff,” contending that it should have been construed to mean “an elevated part of the outer surface disposed about the inflatable cuff that can be either continuous or discontinuous.”  The Federal Circuit found that TriVascular’s proposed interpretation was unreasonably broad, and that find the Board’s reliance on the dictionary definition of ridge when considered in the context of the written description and plain language of the claims was proper.

TriVascular further argued that the Board should have applied prosecution history disclaimer, and found that Samuels had disclaimed the narrower construction that the ridges must be continuous.  The Federal Circuit said that the same general tenets that apply to prosecution history estoppel apply to prosecution history disclaimer.  Both doctrines require that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process.  As applied to a disclaimer analysis, “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention.”   Disclaimer “ensures that claims are interpreted by reference to those that have been cancelled or rejected, but the party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a “clear and unmistakable” disclaimer that would have been evident to one skilled in the art.

TriVascular argued that the disclaimer arose when Samuels amended the claims to recite “continuously circumferential ridges,” but the claims that were later allowed did not have this requirement, but instead had other limitations defining over the prior art.  However the Federal Circuit did not find this sufficient to work a clear and unmistakable disclaimer.

Regarding obviousness, the Federal Circuit noted that Although the KSR test is flexible, the Board must still be careful not to allow hindsight reconstruction of references without any explanation as to how or why the references would be combined to produce the claimed invention.  The Federal Circuit found that the Board’s findings that a skilled artisan would neither have had the motivation to combine nor a reasonable likelihood of success in combining the references were supported by substantial evidence, and supported the Board’s conclusion on nonobviousness.

Finally the Federal Circuit rejected Trivascular’s complaint that the final written decision was inconsistent with the Board’s institution decision.  The Federal Circuit commented that this misguided theme pervaded TriVascular’s briefs, and said that contrary to TriVascular’s assertions:

 the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one, which we decline to do.

The Federal Circuit added that TriVascular’s argument also fails to appreciate that there is a significant difference between a petitioner’s burden to establish a “reasonable likelihood of success” at institution, and actually proving invalidity by a preponderance of the evidence at trial.

Regarding Beauregarding

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A Beauregard claim  is a claim to a computer program written as a claim to an article of manufacture: a computer-readable medium on which instructions are encoded for carrying out a process.  Beauregard appealed the rejection of his claims directed to software on a tangible storage medium.  The Court never approved this method of claiming software, because the Commissioner of Patents conceded that “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. § 102 and 103,” and dismissed the appeal In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

This worked well until In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), where the Federal Circuit held that signals were not patent eligible, because their ephemeral nature kept them from falling within the statutory categories of 35 U.S.C. § 101.  This undermined  Beauregard claims to computer programs electronically distributed.  In 2010, the USPTO advised applicants that, to avoid running afoul of In re Nuijten, software claims should be directed to non-transitory computer-readable media.

However, the USPTO’s wording may be problematic, because rewritable storage media such as flash drives, are regarded by at least some as “transitory.” To resolve this potential issue with the USPTO’s non-transitory computer-readable media, it may behoove the applicant to provide an explanation or definition of “non-transitory” that does not exclude legitimate tangible temporary storage media.  For example,  this language from recently issued U.S. Patent No. 9113131:

Generally speaking, a computer-accessible medium may include any tangible or non-transitory storage media or memory media such as electronic, magnetic, or optical media—e.g., disk or CD/DVD-ROM coupled to computer system 400 via bus 430. The terms “tangible” and “non-transitory,” as used herein, are intended to describe a computer-readable storage medium (or “memory”) excluding propagating electromagnetic signals, but are not intended to otherwise limit the type of physical computer-readable storage device that is encompassed by the phrase computer-readable medium or memory. For instance, the terms “non-transitory computer-readable medium” or “tangible memory” are intended to encompass types of storage devices that do not necessarily store information permanently, including for example, random access memory (RAM). Program instructions and data stored on a tangible computer-accessible storage medium in non-transitory form may further be transmitted by transmission media or signals such as electrical, electromagnetic, or digital signals, which may be conveyed via a communication medium such as a network and/or a wireless link.

U.S. Patent No. 9110963 explains:

The terms “tangible” and “non-transitory,” as used herein, are intended to describe a computer-readable storage medium (or “memory”) excluding propagating electromagnetic signals, but are not intended to otherwise limit the type of physical computer-readable storage device that is encompassed by the phrase computer-readable medium or memory. For instance, the terms “non-transitory computer readable medium” or “tangible memory” are intended to encompass types of storage devices that do not necessarily store information permanently, including for example, random access memory (RAM). Program instructions and data stored on a tangible computer-accessible storage medium in non-transitory form may further be transmitted by transmission media or signals such as electrical, electromagnetic, or digital signals, which may be conveyed via a communication medium such as a network and/or a wireless link.

A simpler explanation is provided in U.S. Patent  No. 9148676:

The term “non-transitory”, as used herein, is a limitation of the medium itself (i.e., tangible, not a signal ) as opposed to a limitation on data storage persistency (e.g., RAM vs. ROM).

When claiming software stored on a computer readable medium, explaining the claim terms may be important.